United States: USPTO’s Expansion of Green Technologies Pilot Program Broadens Expedited Examination Opportunities

As of November 10, 2010, the USPTO has further expanded the scope of its Pilot Program for expediting the handling of patent applications for environmentally friendly technologies. In particular, the Green Technologies Expedited Examination Pilot Program (Pilot Program) will now include applications filed on or after December 8, 2009. The Pilot Program was previously limited to applications filed before December 8, 2009. The expansion also includes a duration extension until December 31, 2011, rather than the prior December 8, 2010 deadline.

Although the expansion will allow applicants to strategically request expedited examination for newly filed applications, the original 3,000 application limit of the Pilot Program has not been expanded. Those interested in the Pilot Program should file petitions for inclusion as soon as possible.

Elimination of Filing Date Restrictions

When the USPTO launched the Pilot Program on December 8, 2009, it limited eligibility to applications filed prior to December 8, 2009. This filing date restriction prevented new applications or new continuing applications from being eligible for the Pilot Program's expedited examination. In the November 10, 2010 Federal Register notice (Vol. 75, No. 217) (Docket No. PTO-P-2010-0083) regarding the Pilot Program's expansion, the USPTO makes clear that it will now accept petitions to make special "irrespective of the filing date of the application."

Overview of the Expedited Examination Pilot Program

Petitions accepted under the Pilot Program result in the associated application being placed on a USPTO examiner's special docket prior to the first office action. USPTO statistics made available in June 2010 indicated that this docketing treatment resulted in a significant reduction in the number of days to a first examiner action. Specifically, mid-year USPTO statistics indicated that accepted petitions could result in receiving a first office action in less than three months from the filing of a petition for expedited examination under the Pilot Program. This acceleration might provide applicants with a significant overall pendency reduction. Foley's 2010 Cleantech Energy Patent Landscape Report (http://bit.ly/dsT6xr), reveals that the average number of days from filing a cleantech application until the grant of a patent is 1,090 days or 36.3 months. While much of this delay can be the result of arguing with the examiner, the Report noted a relatively high first action allowance rate for cleantech patent applications.

Applications accepted for expedited examination under the Pilot Program are also accorded special status in an appeal to the Board of Patent Appeals and Interferences (BPAI) and during the publication process.

Remaining Requirements for Participation in the Pilot Program

With the elimination of the filing date restriction and the USPTO's May 21, 2010 elimination of a technology classification requirement, the Pilot Program requirements are relatively short. The remaining requirements are:

• The application must be a non-reissue, non-reexamination, and non-provisional utility application.
• The petition must be filed at least one day prior to the date that a first office action appears in the USPTO's Patent Application Information Retrieval (PAIR) system.
• The application must contain three or fewer independent claims.
• The application must contain 20 or fewer total claims.
• The application must not include any multiple dependent claims.
• The petition to make special must be accompanied by a request for early publication and the publication fee set forth in 37 CFR § 1.18(d). If the application has already published, a request for early publication need not be filed, but the fee in 37 CFR § 1.18(d) is still required to be submitted with the petition to make special. A separate petition fee under 37 CFR § 1.102 is not required.
• The application must meet a materiality requirement; that is, the claims must be directed to a single invention that:
• • Materially enhances the quality of the environment;
  • Materially contributes to the discovery or development of renewable energy resources;
  • Materially contributes to the more efficient utilization and conservation of energy resources; or
  • Materially contributes to the reduction of greenhouse gas emissions.
• The petition must state the basis for the special status. For example, the petition must state whether the invention relates to a greenhouse gas emission reduction or to enhancing the quality of the environment.
• If the application is not clear on its face as to the basis for the special status, the applicant must provide a statement explaining how the materiality standard is met.

The USPTO provides a relatively simple one-page form for petitions to make special under the Pilot Program, available at http://www.uspto.gov/forms/sb0420.pdf.  

Notably missing from the above list of requirements are some of requirements associated with the USPTO's standard accelerated examination program. Significantly, for example, a petition for entry into the Pilot Program does not require an examination support document.

Additional requirements, rules, and materials for those interested in participation in the Pilot Program can be found at http://www.uspto.gov/patents/init_events/green_tech.jsp. Applicants should work with their patent attorneys to discuss the consequences and particular mechanics of filing a petition for expedited examination under the USPTO's expanded Green Technology Pilot Program.

Considerations in Light of the Pilot Program's Expansions

Although the Pilot Program has not yet been highly utilized (USPTO statistics indicate that only 1,595 petitions under the Pilot Program have been filed as of November 2, 2010), the elimination of any filing date restriction should allow for more strategic participation in the Pilot Program and an increased rate of petition filings. The filing date restriction prevented new continuation or divisional applications from being eligible for the expedited examination provided by the Pilot Program. With the removal of any filing date restriction, new applications, continuations, and divisionals could be drafted and filed with claim sets strategically selected for expedited examination. For example, assuming broad claim coverage in a currently filed application in or nearing examination, the Pilot Program may be used to expedite one or more child applications having claims drawn to narrower embodiments, particular commercial products, or simply to present applications of varying scope. Rather than approaching such an application family in a serial fashion, the expedited examination provided by the Pilot Program may allow an applicant to work toward obtaining a family of applications in parallel.

One possible reason for the unpopularity of the original Pilot Program might have been an incompatibility between realities associated with important applications and the Pilot Program's requirements. For example, many important patent applications often include more than three independent claims and 20 total claims. Coupled with the previous filing date restrictions, applicants having important applications that might benefit the most from the program would have been forced to cancel excess claims via preliminary amendment. With the filing date restrictions removed, an applicant could use a child application having three independent claims and 20 total claims for expedited examination, without affecting the base application.

Applicants are sometimes unaware of the potential scope of patent claims until an application enters examination. Once more aware of the scope and content of the prior art, applicants sometimes use the strategy of drafting continuing applications having directed claim sets. With the filing date restrictions previously in place, drafting informed and focused claims in a continuation for expedited examination under the Pilot Program was impossible unless the continuation was already on file. Under the expanded Pilot Program, applicants might be able to use the expedited examination provided by the Pilot Program to obtain fast allowance of focused claim sets that have been informed by active prosecution of a parent application.

Many other strategic possibilities for the expedited examination provided by the Pilot Program might exist and be used by applicants.

Timing Considerations

Although the Pilot Program is now scheduled to run until December 31, 2011, the expanded scope of the Pilot Program might cause the 3,000 application limit to be reached prior to the deadline. As of November 2, 2010, of the 1,595 petitions filed, 790 petitions for acceptance into the Pilot Program had been granted.

Applicants whose petitions were dismissed solely on the basis that their patent applications were not filed prior to December 8, 2009 may file a renewed petition. The application will be given examination priority as of the date the applicant filed the original petition if the renewed petition is filed by December 10, 2010, one month from the date of the Federal Register's recent notice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.