Deadline Quickly Approaching to File Renewed Petitions in USPTO's Recently Extended Green Technologies Program

The USPTO is continuing its efforts to expedite the handling of patent applications for environmentally friendly technologies. In particular, the USPTO recently broadened the scope of technologies that are entitled to consideration for such expedited handling. If an applicant’s petition under the USPTO’s Green Technologies Expedited Examination Pilot Program (Pilot Program) was denied prior to May 21, 2010 for having an improper classification, the recent elimination of the classification requirement now enables applicants to file a renewed petition until June 21, 2010, to be given priority relative to newly filed petitions.

Although the classification elimination greatly broadens the number of eligible applications, the 3,000-application limit of the Pilot Program has not been expanded. Therefore, those interested in the Pilot Program — as well as those applicants whose petitions were dismissed solely on the basis of an improper classification — should file petitions for inclusion in the Pilot Program as soon as possible.

Elimination of Classification Requirement
When explaining its decision to expand the Pilot Program, the USPTO noted that the low grant rate of petitions (only 342 of 950 requests were granted) was “primarily because many of the inventions weren’t in classifications that were eligible.” The original Pilot Program was limited to a list of 79 eligible classifications. With more than 450 total USPTO classifications, the elimination of the Pilot Program’s classification requirement should allow for many more applications that relate to green technology to be accepted for expedited examination. For example, USPTO class 236 (“automatic temperature and humidity regulation”) was not included in the original 79 Pilot Program classifications. However, a brief review of recent publications from class 236 reveals a number of applications directed to systems and methods for reducing the energy consumed by temperature and humidity controls. Such applications will now at least have an opportunity to be considered for the expedited examination offered by the Pilot Program.

Due to the elimination of the classification requirement, the USPTO has provided an updated and simplified form for petitions to make special under the Green Technology Pilot Program. As stated above, applicants whose petitions were denied or dismissed for lack of a proper classification can file a renewed petition until June 21, 2010, to be given priority as of the date of the original filing. Such priority may expedite consideration of the renewed petition and may further expedite examination relative to applications accepted later. If the 3,000-application limit of the Pilot Program is not met first, the USPTO is scheduled to stop accepting new petitions on December 8, 2010.

Significant Potential for Pendency Reduction
Statistics on the USPTO’s Web site for the Green Technologies Pilot Program indicate that the current average delay between filing the petition for expedited examination and the receipt of a decision is 37 days. The current average delay between a granted petition and a USPTO examiner’s first action is only 44 days. Accordingly, based on the current averages, applicants interested in the program may be able to achieve a first office action in less than three months by filing a petition for expedited examination under the Pilot Program. Such expedition might provide a significant overall pendency reduction. Recent research results reflected in Foley’s 2010 Cleantech Energy Patent Landscape Report, reveal that the average number of days from filing an application until grant of a patent across the cleantech fields covered by the Report is 1,090 days or 36.3 months (graph from the Report reproduced below). Although, in some cases, much of this time is spent arguing with the examiner, the Report noted a relatively high first action allowance rate for cleantech applications. Contrasted with a reduced likelihood of petition denial, the expansion of the Pilot Program should provide applicants with a good opportunity for significant patent application pendency reduction.

Remaining Requirements
With the elimination of the classification requirement, the Pilot Program requirements are relatively short. The remaining requirements are:

• 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 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 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 also must provide a statement explaining how the materiality standard is met.

USPTO Resources
For additional information, the USPTO has provided applicants with information and resources regarding the program at http://www.uspto.gov/patents/init_events/green_tech.jsp. The USPTO’s Web site includes links to the Federal Register notices and press releases, a set of frequently asked questions, statistics regarding the program, and a link to the petition form discussed above.

Applicants should work with their patent attorneys to discuss the pros, cons, and particular mechanics of filing a petition for expedited examination under the USPTO’s expanded Green Technology Pilot Program.

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
Chair, Green Energy Technologies Practice
Milwaukee, Wisconsin
414.297.5591
jlazarus@foley.com

Karl Reichenberger
Associate
Milwaukee, Wisconsin
414.319.7347
kreichenberger@foley.com