November 12, 2010Blog

PTO Expands Program Expediting Green Tech Patents

On November 10, the USPTO extended and significantly expanded the Pilot Program for Green Technologies, a trial program offering fast-track patenting for green tech innovations. The program had been set to expire on December 8, 2010. The patent office has extended the Pilot Program another year, to December 31, 2011, and expanded eligibility to include newly filed applications.

The Pilot Program aims to promote green technology innovation and investment by cutting pendency—the often lengthy interval between filing a patent application and receiving a patent. According to the USPTO, the Pilot Program’s expedited review process should trim the current 40-month average pendency by a full year, potentially speeding the financing, development, and commercial deployment of new green technologies. Petitioning to enter the program is straightforward and requires no fee.

The Pilot Program originally launched on December 8, 2009, but, despite the program’s obvious appeal, first-year participation fell short of expectations. Various factors, particularly the program’s initial rigid eligibility requirements, have contributed to the slow petition rate. In response, the patent office has initiated several changes to widen the program’s scope. In May 2010, the office removed restrictions that had limited eligibility by technology classification. And the current changes extend eligibility for the first time to include newly filed applications.

This latest change significantly enhances the Pilot Program’s practical utility, allowing green technology inventors to plan ahead for participation in the program and maximize pendency savings by seeking expedited review immediately upon filing a patent application. The patent office has retained the Pilot Program’s original participation limit of 3,000 applications, however, and the program’s renewed appeal may put those spaces at a premium. As a consequence, those with new or forthcoming green tech patent applications should apply for participation as soon as possible to take advantage of valuable pendency savings before the Pilot Program reaches capacity.

Latest Changes to the Pilot Program

As noted, the November 10 changes to the Pilot Program will (1) prolong the program an additional year, through December 31, 2011, and (2) open the program to new and existing applications filed after December 8, 2009.

Extending eligibility to new applications should boost participation considerably. The Pilot Program launched with an initial one-year term and open to the first 3,000 qualified applications. But after nearly eleven months, according to the USPTO’s latest statistics, only 1,595 petitions were filed and a mere 790 had been granted. Removing the barrier to new applications will greatly expand the program’s scope and appeal. The previous rules had restricted eligibility to an ever narrowing cohort of pending applications—those filed before December 8, 2009 but yet to generate an office action. Furthermore, because all such applications predated the Pilot Program, each had been prepared and filed without knowledge of the program. For many, participating thus would have required changes to settled plans, probably dampening enthusiasm even within the limited pool of eligible applicants. The new rules will address these problems.

Petitioning Procedures and Eligibility Requirements

As noted, the USPTO’s newest changes to the Pilot Program mean that patent applicants may be eligible to participate regardless of their initial filing date. But the preexisting subject matter restrictions remain in force—eligible applications must disclose an invention that materially (1) enhances environmental quality, (2) contributes to discovery or development of renewable energy resources, (3) contributes to energy efficiency/conservation, or (4) contributes to reducing greenhouse gas emissions.

Applicants that meet the eligibility criteria may petition the USPTO to enter the Pilot Program. The petition must be filed before the first office action and must state which of the four accepted subject-matter categories applies. Most applicants should also submit a statement signed by the applicant, assignee, or prosecuting attorney/agent explaining how the invention meets the materiality standard for advancing the stated technological objective.

Participation offers valuable savings in pendency through expedited review, as discussed. But the Pilot Program also offers substantial advantages over analogous mechanisms for seeking accelerated review. For example, most other such requests incur a $130 petition fee, but the Pilot Program waives this cost. In addition, the Pilot Program eliminates the usual requirement that applicants perform a pre-examination search and submit a detailed discussion of patentability in view of the resulting references. Overall, the Pilot Program offers a remarkably easy, safe, and inexpensive means for cutting pendency at the patent office.

Final Remarks

The Pilot Program for Green Technologies presents a tremendous opportunity for qualified applicants—a simple, no-cost means for expediting patent decisions at the USPTO. These time savings not only translate into a longer effective term for any issued patent, but also allow inventors to move more swiftly with fundraising efforts and business decisions, potentially accelerating both product launches and eventual investment returns. By extending the program and expanding eligibility to new applications, the latest changes to the Pilot Program should boost participation considerably. Despite the expected rise in petition rate, however, the patent office has retained its original cap on participation. As a result, the Pilot Program may reach its capacity well before the new scheduled expiration date of December 31, 2011. Green technology innovators with planned or recent patent applications should therefore apply to the Pilot Program as soon as possible to take advantage of this opportunity.

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