December 9, 2009

A New U.S. Patent Office Program to Accelerate Examination of “Green Technology” Applications

On December 7, the U.S. Patent & Trademark Office announced a pilot program to accord “special status” to patent applications claiming “green technologies” relating to environmental quality, energy conservation, development of renewable energy, and greenhouse gas emission reduction. The effect of special status is to accelerate examination, by placing the application on a patent examiner’s special docket throughout the course of its examination, as well as special status in appeals and interferences before the Board of Appeals and Interferences.

The specific requirements and procedures for the program are described in a Notice published December 8, 2009, at 74 FR 64666.  To qualify, an application must have been filed before the date of the notice, but have not yet received a first Office Action (restriction requirement or substantive examination).  The application must be for an invention classified one of the specific technology class/subclasses listed in the Notice.  The Notice organizes the classifications into 79 technology descriptors, in four general areas:  (1) alternative energy production, e.g., biofuels, fuel cells, geothermal, hydroelectric, nuclear power, and solar cells; (2) energy conservation, e.g., electric vehicles, and energy storage or distribution; (3) environmentally friendly farming, e.g., animal waste disposal, and pollution abatement, and (4) environmental purification, protection, or remediation, e.g., bio-hazard containment, plants and plant breeding, and recycling.

Examination is accelerated under this program without some of the potentially onerous requirements of the procedures that are otherwise available for accelerated examination.  Of particular note, the new program for green technologies does not require a pre-examination search by the applicant or submission of an examination support document.  However, the green technology program limits an application to a single invention with twenty or fewer claims, no more than three of which can be independent.  The petition to make special must also include a request for early publication.

Petitions for an application to be made special under this program must be filed electronically by December 8, 2010.  Subject to further review by the USPTO, the program will be terminated after filing of the first 3,000 petitions.

According to the Patent Office press release, the program is said to “… accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.” The timing for the announcement appears to be coordinated with the U.N. Climate Change Conference now in progress in Copenhagen, Denmark.  Accelerated examination may not necessarily be of benefit for all “green technology” applicants or corporations, however.  Accelerated examination can be helpful if the applicant is aware of a potential infringer, or desires the certainty of having an issued patent for purposes of licensing or seeking funding.  On the other hand, accelerated examination will expose the technology to competitors earlier (due to the early publication aspect of the program), accelerate the costs for prosecution, and may require decisions regarding prosecution strategy when less is known about the commercial landscape for the technology.