U.S.P.TO. Launches Green Tech Pilot Program to Speed Green Patenting
Last week the U.S. Patent and Trademark Office (PTO) announced an expedited examination procedure for clean tech patent applications.
The Green Technology Pilot Program allows applications relating to improving environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions to be advanced out of turn for substantive examination.
Applicants that wish to participate in the program need to file a petition with the PTO requesting participation and indicating that their patent application complies with the program requirements.
The window of opportunity is nominally one year: the program launched on December 8, 2009, and petitions must be filed before December 8, 2010. However, only the first 3,000 petitions will be accepted.
The basic eligibility requirements are as follows:
the application is a non-reissue, non-provisional utility application filed before December 8, 2009 for which a first office action has not been issued;
the invention is classified in one of the specific technological classes approved as a “green technology” class;
the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);
the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and
the applicant must request early publication of the application.
Compared to the established procedure for expedited examinations, the pilot program has the tremendous advantage that it does not shift much of the examination workload to the applicant by requiring submission of prior art analysis in an onerous Examination Support Document.
The PTO joins at least the U.K. Intellectual Property Office and the Korean Intellectual Property Office in creating a procedure to expedite green patenting.
December 14th, 2009 at 10:39
There are already provisions (called the “Patent Prosecution Highway”) for getting patent examination accelerated in one country if allowable subject matter has been found in another country. Therefore, I believe it is already possible to get accelerated examination in the US based on speedy foreign examination. Unfortunately, the system is relatively new, and the bugs haven’t been fully worked out yet. I’ve seen mixed results.
Aslo, people forget that the US used to have a system for accelerated examination of green patents (I think they were defined as inventions offering “environmental benefit”). The system was abandoned several years ago. It never really was successful. You had to file a “Petition to Make Special” showing why the case should be accelerated. Often, the Patent Office took so long to decide the Petition that it equaled the normal waiting time of the application sitting in the queue for regular examination! The Patent Office got rid of this “selective” accelerated examination system, and decided that any patent application can now be accelerated - but you have to pay a fee, and submit a search report characterizing the references. Many people are still resistant to doing this. However, some people have found this system to be very successful (especially for technologies that take several years to be examined). Here’s a paper I did 2 years ago on “Accelerated Examination” http://www.gordonrees.com/publications/viewPublication.cfm?contentID=780
December 15th, 2009 at 11:23
David,
You’re right about the Patent Prosecution Highway, but the U.S. applicant still has to wait until the other country’s patent office decides to allow some claims, which could take a while.
I think the U.S. expedited examination procedure still exists for, inter alia, inventions having environmental benefits, but the Examination Support Document makes it onerous and expensive.
So I think the new pilot program is an improvement on both of those established procedures.
Eric