Accelerating Green Technology Patents, Dorsey & Whitney LLP Intellectual Property Update

The United States Patent and Trademark Office (“USPTO”), on December 8, 2009, implemented a pilot program to accord special status to applications pertaining to green technologies in order to accelerate the examination process for these applications.

United States patent applications, generally, are examined in the order in which they are filed with the USPTO.  Under the current patent system in the United States, patent applications may take several years to mature into a patent.  By treating an application as “special,” the patent application is advanced out of turn for examination and taken up for examination more quickly than under the traditional system.  A mechanism exists by which applicants may request “special status” for an application.  In order to qualify for special status, an applicant must file a petition to make the application special and the application or technology must meet certain USPTO enumerated requirements.

The USPTO’s Green Technology Pilot Program offers a new option for certain patent applicants to request special status.  Under the pilot program, the USPTO will accept the first 3,000 petitions to make special submitted before December 8, 2010 in previously filed new applications, provided that the petition and technology meet the specific green technology pilot program requirements.  While the Green Technology Pilot Program is currently set to accept a limited number of applications in a limited number of technologies, the USPTO has indicated that it may extend the pilot program depending upon the feedback from participants and its effectiveness.

As a general matter, to qualify for the pilot program a patent application must meet the following basic requirements:

1.                  The application must be a non-provisional utility application, or an international application that has entered the national stage in the United States.  Reexaminations and reissue applications are excluded from this pilot program.

2.                  The application must have been filed prior to December 8, 2009.

3.                  The application must be classified in one of the U.S. classifications listed in the attached table* at the time of examination.  While an applicant can suggest a classification, the USPTO makes the determination regarding classification.

4.                  The application must contain 3 or fewer independent claims, twenty or fewer total claims, and must not contain any multiple-dependent claims.  This requirement is not fatal, as an applicant may meet this requirement by filing a preliminary amendment canceling the excess claims at the time of filing the petition.

5.                  The claims must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to one of the following:

a.                   The discovery or development of renewable energy resources;

b.                  The more efficient utilization and conservation of energy resources; or

c.                   Greenhouse gas emission reduction.

6.                  The applicant must agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements in the event an examiner determines an application contains more than one claimed invention.

7.                  The petition to make special must be filed, electronically, before December 8, 2010, using EFS-Web, and selecting the document description of “Petition for Green Tech Pilot” and at least one day prior to the date that a first Office Action appears in the USPTO’s PAIR system.

8.                  The petition to make special must be accompanied by a request for early publication and the corresponding publication fee.

In addition to the foregoing a patent pending technology must qualify as a “green technology,” which the USPTO defines as relating to environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reduction.  To be an eligible application pertaining to environmental quality, the following conditions must also be met:  (Inventions which materially enhance the quality of the environment under the conditions specified in item V of MPEP Sec. 708.02).

1.                  The petition to make special must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements.

2.                  If the application does not clearly disclose that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement signed by the applicant, assignee, or a registered patent attorney/agent explaining how the materiality standard is met.

It is important to note that an applicant may not speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment, nor can an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.  See MPEP Sec. 708.02(V)

Similar to the environmental quality guidelines, certain eligibility requirements must be met to be considered an application pertaining to energy conservation, development of renewable energy resources, or greenhouse gas emission reduction.  For instance, an application must be for an invention that materially contributes to the discovery or development of renewable energy resources, which is defined to include hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, municipal solid waste, or transmission, distribution, or other services directly used in providing electrical energy from the referenced renewable energy sources.  An application directed to the more efficient utilization and conservation of energy resources includes: inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances.  Lastly, an application directed to the reduction of greenhouse gas emissions includes, but is not limited to, inventions that contribute to advances in nuclear power generation technology, or fossil fuel power generation, or industrial processes with greenhouse gas-abatement technology (such as inventions that significantly improve safety and reliability of such technologies).

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