U.S. Patent and Trademark Office Announces its New Green Technology Pilot Program
by Kathleen T. Petrich ,
December 11, 2009
On December 7, 2009, the U.S. Patent and Trademark Office (“PTO”) announced, in conjunction with the United Nations Framework Conference on Climate Change being currently held in Copenhagen, Denmark, an expedited procedure for pending “Green Technology” patent applications called the Green Technology Pilot Program (“Pilot Program”). This announcement was greeted with a bit of fanfare and eager anticipation, as the normal pendency for examination of the application can be up to 30 months. But the pilot program is limited to the first 3000 petitions. Here are the specifics:
- Must have a pending patent application as of December 8, 2009 (effective date of Pilot Program)
- The subject invention must be for a “Green Technology,” which includes applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction)
- The normal government petition fee of $130 is waived
- Do not need to meet all of the requirements to make the application “special for purposes of expedited
- All petitions must be filed by December 8, 2010 or until the first 3000 petitions are received
- The petition must be filed through the PTO’s electronic filing system (PAIR)
- Petition must be filed meeting the following:
- Pending non provisional application (not a reissue)
- Must meet the technology classification
- Cannot contain more than 3 independent claims and a total of 20 claims
- No multiple dependent claims
- Can concurrently file a preliminary amendment to cancel claims to the required 3 independent/20 claims total limit
- Claims must be directed to a single invention
- Must include a statement regarding restriction practice
- Petition must state how the invention materially enhances the environment
- Petition must be filed at least one day prior to the date of an Office Action issuing (restriction requirement counts)
- Petition must be accompanied with a request for early publication and payment of publication fee (currently $300), but then publication fee not charged at Issue Fee time
- The PTO has suggested that the Pilot Program may be extended if successful.
The petition is a great thing if the invention clearly falls in the correct technology classifications, directed to a unitary invention, and has no greater than the maximum claim set allowed for the petition. If the petition to make special is approved, the Application will be examined out of turn on a fast track basis. This can cut a significant amount of time off an otherwise long few years of waiting for examination.
An applicant will need to contact its patent counsel as soon as possible to review the application and to see whether the application meets the requirements or if a preliminary amendment to cancel claims makes sense. While the U.S. Government has graciously waived the petition fee, the Applicant should expect a fair fee from counsel to review/counsel/prepare and file such a petition. Plus, there will be a government fee of $300 for the request of early publication, but this fee would have to be paid in any event. But under current practice, the Applicant is generally not hit with this fee until the Issue Fee is paid, thereby knowing that the application has been allowed. Thus, the PTO would get its publication fee early whether the patent application is allowed or not. Still, it may be a fair trade off for obtaining a patent in a green technology on a fast track.
For more information on the newly announced Pilot Program, go to: http://www.uspto.gov/news/pr/2009/09_33.jsp or http://www.uspto.gov/patents/law/notices/2009.jsp . For counseling regarding whether it makes sense to file a petition, contact your Patent Attorney.
