Pilot Error: Sarah Tran Critiques the USPTO Green Patent Fast Track


In a new article, Sarah Tran, a professor at Southern Methodist University School of Law, provides the first (to my knowledge) academic review and critique of the U.S. Patent and Trademark Office’s (USPTO) Green Technology Pilot Program (GTPP).

Entitled “Expediting Innovation:  The Quest for a New Sputnik Moment,” and soon to be published in the Harvard Environmental Law Review, the article provides an interesting take on how the USPTO should promote innovation and commercialization of “high priority” technologies.

Tran lays out her thesis as follows:

My basic thesis is that the PTO should reduce the obstacles that prevent applications involving beneficial green technologies from being expedited and collaborate with other agencies to select more categories of high-priority technologies for accelerated review.  By reviewing more types of patent applications at a rate proportional to their social value, the PTO could better optimize the constitutional patent bargain while responding to critical public needs.

Tran believes the USPTO should take steps to expedite review of patent applications relating to “socially valuable” technologies, including green technologies, and examines the GTPP as a useful but flawed model for such reform.

The two major flaws, according to Tran, are insufficient benefits for applicants that participate in the program and the difficulty of meeting the eligibility requirements for the program.

Tran says the USPTO inflated the value of the GTPP by exaggerating the average pendency of a green tech patent application, observing that the average pendency for applications in the most common green tech art units was 34.6 months instead of the 40-month benchmark cited by the USPTO.

Thus, waiting 26 months for a final decision in the GTPP is less significant given the lower actual average pendency and does not provide sufficient benefit for applicants to bear the extra burdens of petitioning to enter the program.

I suspect, however, that the 26-month figure has been skewed due to the initial requirement that limited eligibility to already pending applications and may improve as a result of the USPTO’s elimination of the requirement in November 2010 as more newly-filed applications enter the program.

Tran also calls the eligibility requirements for the GTPP excessive, reciting the list of restrictions relating to claims and types of eligible applications. 

As a practitioner, I think the concerns here are overstated.

The requirements that the claims number twenty or fewer with three or fewer independents and the need to agree to a telephonic election of a single invention are fairly benign and, in effect, not much different from what happens in the ordinary patent application process.

I suspect that excluding reissues, provisionals, reexaminations and design applications from the program has little impact as well.

The two most onerous restrictions of the program – the technology class requirement and the above-mentioned limitation to pending applications - have been eliminated by the USPTO.

Finally, Tran thinks the limited one-year duration of the program prevents it from providing sufficient incentive for green innovation.  One year “is insufficient time for an inventor to conceive of an idea, reduce it to practice, and prepare an application for invention.”

I wholeheartedly agree with Tran’s call to make the GTPP permanent in order to foster green innovation:

unless the program is put into some long-term or permanent form that would enable inventors to gain a reward for their investment of time and resources in inventing green technologies, the program cannot be expected to “fuel further innovation.”

Recent comments by a key USPTO official about the chances the program will be extended provide a glimmer of hope that Tran’s vision of a long-term extension will be fulfilled.

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.