USPTO Announces Expedited Examination of Green Technology Patent Applications

08 December 2009 Publication
Author(s): John M. Lazarus

Legal News Alert: Green Energy Technologies

USPTO Announces Expedited Examination of Green Technology Patent Applications

On December 7, 2009, the USPTO announced that it will implement a pilot program (Pilot Program) to expedite the examination of patent applications directed to certain green technology inventions. While eligibility is currently limited to applications filed before December 8, 2009, the USPTO has hinted toward expanding the program if successful.

The USPTO’s press release stated that the expedited examination will reduce the time it takes to patent these inventions by an average of one year. The USPTO contrasted this pendency reduction with the current average time of 40 months to a final decision for green technology inventions.

The announcement was made by Secretary of Commerce Gary Locke during a press conference timed to coincide with the UN’s Climate Change Conference in Copenhagen, Denmark. The Pilot Program was explained by Secretary Locke as a part of President Barack H. Obama’s plan to create job growth in the clean energy sector.

Secretary Locke indicated that the Pilot Program is starting immediately but will be limited to the first 3,000 of the “most promising inventions.” Despite this initial limit, Secretary Locke stated that the program could be expanded if proved successful. As three examples of promising discoveries that may benefit from the Pilot Program, Secretary Locke offered “a new light-weight battery for automobiles,” “a safe and affordable way to capture carbon from coal plants,” and “a cheap and effective way to store power from the wind and sun.”

Program Details

On December 8, 2009, a Federal Register notice (Vol. 74, No. 234) (Docket No. PTO-P-2009-0038) was published by the USPTO listing the details and requirements for participation in the Pilot Program. It states that applicants must petition for participation in the Pilot Program by filing a petition to make special. The USPTO will accept only the first 3,000 petitions to make special in previously filed applications. Petitions to make special must be filed during the one-year term of the Pilot Program, from December 8, 2009 to December 8, 2010.

Accepted petitions will result in the associated application being placed on a USPTO examiner’s special docket prior to the first office action. After the first office action, however, any action items will be docketed to the examiner’s amended docket (the regular docket for cases that have received a non-final rejection) rather than the special docket. The application will again have special status in an appeal to the Board of Patent Appeals and Interferences (BPAI) or during the publication process.

Pilot Program Requirements

While the USPTO has a standing accelerated examination program under 37 CFR 1.102, the Pilot Program for green technologies advantageously allows an application to be advanced out of turn without meeting certain requirements of the standing accelerated program. Significantly, for example, a petition for entry into the Pilot Program does not require an examination support document. Further, a petition for entry into the Pilot Program does not require payment of a fee.

The following summary provides an overview of the requirements for participation under the Pilot Program; the Federal Register notice should be consulted prior to preparation of any actual petition to make special.

Patent Application Requirements 

  • The application must have been filed prior to December 8, 2009.
  • The application must be a non-reissue, non-reexamination, and non-provisional utility application.
  • The application must be classified in one of 79 “green technology” patent classifications. The list of classifications is included in the Federal Register notice, Section VI.
  • 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.
  • A preliminary amendment must be filed at or prior to the time the petition to make special is filed to reduce the number of claims below the threshold requirements or to cancel multiple dependent claims.
  • The application must meet a materiality requirement, i.e., 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
  • Materially contributes to greenhouse gas emission reduction

Petition Requirements

  • The petition must state the basis for the special status (e.g., that the invention materially contributes to greenhouse-gas emission reduction).
  • If the application does not clearly show that the invention meets the materiality requirement, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO explaining how the materiality requirement is met.
  • The petition should not speculate as to how an end user might apply the invention or focus on a minor aspect of the invention in an attempt to meet the materiality requirement.
  • The petition must include a statement that, if the USPTO determines that the claims are directed to multiple inventions (via a restriction requirement), the applicant will agree to make an election without traverse in a telephonic interview of an invention that meets the eligibility requirements of the program. The Federal Register notice states that if the examiner cannot reach the applicant to receive such an election, the examiner will treat the first claimed invention as constructively elected without traverse for examination.
  • The petition must be filed electronically and according to particular filing instructions included in the Federal Register notice.
  • 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 petition must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d) — currently $300.
  • The applicant may suggest a classification for the application.
  • An examiner will notify the applicant of petition deficiencies by issuing a notice stating that the applicant will be given only one non-extendible opportunity to correct the deficiency.

Considerations for Entities Interested in Pilot Program Participation

Secretary Locke stated that there are about 25,000 patent applications eligible for consideration under the Pilot Program. While the popularity of the Pilot Program is yet to be determined, applicants interested in the Pilot Program should consider whether any pending applications could qualify as one of the 3,000 expedited applications. Some applicants will want to file the petition to make special as soon as possible to obtain maximum benefit from the faster pace of the “special” status provided by the Pilot Program. Applications that fall into this group may describe inventions that are directed to more mature commercial areas or inventions that are directed to particular products and well-defined feature sets. Other applicants, however, will choose not to participate in the Pilot Program. Some applications, for example, may describe inventions that are directed to more forward-looking commercial areas or inventions that are not yet directed to any particular product.

One possible strategy to leverage the Pilot Program, particularly if the application on-file currently includes more than three independent claims, 20 total claims, or claims directed to multiple inventions, is to file a preliminary amendment to cancel some claims and to file a continuation directed to the cancelled claims. Because the first claimed invention may be constructively elected by the examiner if the applicant is unavailable to make a telephone election, a preliminary amendment also may be used to reorder the claims or to otherwise ensure that the applicant’s favored invention is claimed first. Further, because the application is removed from the special docket after the first office action under the Pilot Program, one strategy might be to cancel the broadest and most forward-looking claims while petitioning for the relatively narrow claims or claims directed to a particular commercial product to be considered for the Pilot Program. The continuation would be filed toward the cancelled broad or forward-looking claims. The narrow claims might have a better chance at a reduced number of office actions and prompt allowance, maximizing the usefulness of the Pilot Program. Similarly, an application that was accepted into the Pilot Program might be a good candidate for early examiner interviews, making narrowing amendments early, or taking other steps that might reduce the number of office actions. An opposite strategy might be to prosecute the broad claims under the Pilot Program to obtain an expedited appeals process.

Foley will continue to track any additional information distributed by the USPTO regarding the Green Technologies Pilot Program. If you would like to review the full listing of details, the Pilot Program notice can be found at

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:

John Lazarus
Senior Counsel and Chair, Green Energy Technologies Practice
Milwaukee, Wisconsin

Karl Reichenberger
Milwaukee, Wisconsin

J. Steven Rutt
Partner and Vice-Chair, Nanotechnology Industry Team
Washington, D.C.