April 20, 2010

USPTO Program Allowing for Expedited Review of Green Tech Patent Applications May Be Extended

In November 2009, as part of its Green Tech Pilot Program, the United States Patent and Trademark Office (“PTO”) announced it would give expedited treatment to the first 3,000 pending “green tech” patent applications that met certain procedural requirements.  To date, the PTO has accelerated the examination of slightly less than 300 patent applications, suggesting that this pilot program may be extended through its scheduled expiration date of December 8, 2010.

The PTO issued a report at the end of March indicating it had received almost 900 requests for acceleration and had granted about one-third of those requests, dismissing or denying most of the other requests.  The opportunity to accelerate pending green tech patent applications is still available to interested patent applicants, but it should be acted on soon and special care should be taken to comply with the PTO’s procedural requirements: 

  • The application must have already been on file with the PTO as of December 8, 2009, when the requirements for the pilot program were published.  The application can be a U.S. utility patent application or the national stage of an international patent application filed under the PCT, but it cannot be a reissue application or an issued patent in a pending reexamination proceeding.
  •  The application must have been classified by the PTO into one of 89 eligible technology classifications.  Loosely speaking, the 89 classifications fall into four categories: (i) alternative energy production, (ii) energy conservation, (iii) environmentally friendly farming and (iv) environmental purification, protection or remediation.
  •  The application must have less than three independent claims and less than 20 claims in total.
  • The claims must concern a single invention that materially: (i) enhances the quality of the environment, (ii) contributes to renewable energy resource discovery or development, (iii) contributes to more efficient utilization and conservation of energy resources or (iv) contributes to the reduced emission of greenhouse gases.  If the PTO cannot independently determine that the application satisfies one of these categories, then the petition must include a statement indicating how this requirement is met. 

Although these requirements may seem straightforward, there are a few considerations that should be taken into account before a petition to accelerate is filed.  If the PTO considers the petition to be defective, then the petition will be rejected and the applicant will be given one chance to correct it.  In particular: 

  • The petition must be filed electronically, preferably using the PTO’s own special form for acceleration, and must be filed before the PTO issues the first Office action for the application.
  •  The application cannot be accelerated unless it falls into one of the 89 technology classifications, but timing may require that the petition be filed before the application has been classified by the PTO.  An application data sheet can be used to suggest a classification for the application, or a preliminary amendment can be used to revise the claims to try to obtain a favorable classification, but neither of these acts is guaranteed to obtain the desired classification.
  • A preliminary amendment can also be used to reduce the number of claims pending in the patent application, if they exceed the numerical limits discussed above.
  • If the PTO determines that the claims concern more than one invention, then the applicant must agree in the petition to choose those claims that concern a single invention that is otherwise eligible for acceleration.
  • The petition for acceleration also requires that the application be published by the PTO as soon as possible, and the PTO’s form for requesting acceleration includes a request for early publication.

The benefit of requesting accelerated examination is that an accelerated green tech application will receive attention from the PTO sooner than other non-accelerated applications, which can linger for years before receiving a first review on the merits.

It is not clear whether applications accelerated under the pilot program will be allowed at a rate comparable to patent applications accelerated under the PTO’s other programs for accelerated examination.  In particular, the program does not require the applicant to prepare and file an Examination Support Document, which many believe significantly expedites the PTO’s treatment of a pending patent application.  It also remains to be seen whether the program will be extended beyond its original term and, if so, whether it will be extended in its current form or broadened to include additional subject matter classifications.