Accelerating the Growth of Your Greentech Patent Portfolio
The U.S.P.T.O. has recently outlined a new pilot program that allows a Applicant to have a patent application examined out of turn if the application relates to “green technologies” (December 8th Federal Register, 74 Fed. Reg. 64666, http://www.uspto.gov/patents/law/notices/2009.jsp). For an application to be eligible, it must have been a non-reissue, U.S. non-provisional application or U.S. national stage entry that was filed before Dec. 8th 2009. In addition, there are a number of requirements in regard to the number of pending claims (and their format), the number of pending inventions (and limitations on an Applicant’s options for responding to any restriction requirement), and the timing of the filing of the petition (at least one day before a first office action and before Dec. 8, 2010).
In addition, Applicants must also file a request for early publication of the application.
In addition to these procedural requirements, the subject matter of the application must pertain to “green technologies.” The U.S.P.T.O. has basically set forth two requirements in this regard. First, the application must be classified as one of a set of designated U.S. patent classifications (suggesting that there may be substantial value in requesting a classification change with the U.S.P.T.O.). Second, the invention must either 1) materially enhance the quality of the environment by contributing to the restoration or maintenance of basic life-sustaining natural elements or 2) materially contribute to at least one of the following: a) improved energy conservation, b) development of renewable energy resources, or c) greenhouse gas emission reduction. Thus, assuming that an application is correctly classified, there appears to be a wide variety of ways that an invention could meet this subject matter requirement. While there are a number of conditions that must be met for an application to be applicable for this pathway, as a whole, the requirements are generally procedural and much simpler, cheaper, and less risky than the standard accelerated examination option.
Once these conditions are met, the application will be placed on the Examiner’s special docket and will have special status in any appeal to the B.P.A.I. Interestingly, after the first action (which includes a restriction requirement) the application will be shifted to the Examiner’s amended docket rather than the Examiner’s special docket. Thus, the U.S.P.T.O. is clearly encouraging Applicants to avoid any restriction requirement or any prolonged prosecution between the Applicant and the Examiner, suggesting that this pathway might be ideal for focused, picture claim type applications.
At this point, the U.S.P.T.O. will only accept the first 3000 petitions that are filed for this accelerated path; however, depending upon available resources and the success of the pathway, the U.S.P.T.O. has left open the possibility that the number of applications could be extended in the future, as well as an expansion in the selection of specified U.S. classifications.
Please feel free to contact us to discuss how this new pathway might influence your and your competitor’s patent portfolios, including options for adjusting your claim strategy in light of these requirements, identifying inventions in present applications that meet the subject matter requirements, and reclassifying the subject matter of your application.
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