Protection of the intellectual property around a cleantech innovation can be crucial to the success of both start-up and established renewable energy companies. One hurdle that the patenting process currently offers to fast growing cleantech innovators is the long processing time it takes to get a patent from the U.S. Patent and Trademark Office (“USPTO”). The average time from filing a patent application to receiving an issued patent from the USPTO is over three years. This long period where no protection is available for a cleantech innovator can be challenging. The absence of clearly defined IP protection can be a barrier in attracting significant financial investment in the cleantech innovator or in being able to delineate the correct scope of the proprietary rights that the cleantech innovator will have in the marketplace. These barriers can make it difficult to strategize business decisions accordingly.
The USPTO has currently been working on a series of initiatives to help speed up the patenting process. One such program is the Green Technology Pilot Program, which allows an applicant with a renewable energy innovation to have their application examined out of turn and before other earlier filed technologies. Another more recent initiative is the recently announced “Full First Action Interview Pilot Program.”
When a patent application is filed with the USPTO, it is assigned to a patent examiner, who will examine the patent application against the backdrop of patent laws and prior art (i.e., pre-existing innovations) to determine if the patent application is allowable. Currently, it takes the examiner an average of 14-16 months after application filing to review the application and write a first examination report, called an Office Action, to the applicant with the findings of their examination. Most often, this Office Action contains rejections to some, if not all the subject matter of a patent application, at which point, the applicant and the patent examiner engage in a series of back and forth written arguments and amendments trying to come to an agreement on what, if any, subject matter in the patent application is patentable. These back and forth written arguments often take more than a year to reach a conclusion on an invention’s patentability.
With the new Full First Action Interview Pilot Program, an applicant can now discuss a patent application with the examiner in the form of an interview before the first Office Action. Typically, interviews only occur after prosecution begins and at the discretion of the examiner, however, in this program, participants are entitled to an interview at no extra cost before the first Office Action. An interview before the first Office Action provides the applicant the opportunity to discuss with the examiner the invention and any reasons why a patent may or may not be allowed. The interview can result in resolving issues with an application more quickly, as it provides the applicant a “head-start” on prosecution, which means, a patent may be granted on the invention in a shorter time frame. In fact, the USPTO reports that approximately 34 percent of patent applications participating in earlier versions of the program were allowed on the first Office Action as compared to about 11 percent of non-participating patent applications.
Furthermore, the Full First Action Interview Pilot Program can be used in combination with the USPTO’s Green Technology Pilot Program. The two programs, used together, should offer cleantech innovators a faster path to an issued U.S. Patent than was previously available.
Those with renewable energy innovations interested in using the above-discussed programs should consult with a patent attorney or patent agent regarding the details of the programs.