By James G. McEwen
With the average pendency for patent applications now 35.3 months and applicants waiting on average 25.7 months for even a first action, patent applicants have been searching for new ways to accelerate their applications in order to ensure that the patent protection that they need is acquired within the timeframe needed to protect their commercial embodiment. Such acceleration is performed by getting an application labeled as Special, which allows the Examiner to examine the application ahead of older applications. Thus, there is a strong incentive for applicants to find a mechanism to get their application designated Special.
However, the United States Patent and Trademark Office (USPTO) places strict limits on which applications can be designated Special. Specifically, outside of reissue applications and participants in the Patent Prosecution designated Special using a Petition to Make Special. While the Petition to Make Special can be an attractive option, the cost and risks of filing the Petition to Make Special (and particularly the cost and risks associated with filing the search document explaining the distinctions between the claimed invention and the prior art) usually outweigh the benefits of immediate examination. Thus, applicants have not typically used these Petitions except in very exceptional circumstances.
At the same time, there is an increased emphasis on creating and encouraging domestic development of green technologies. These technologies, however, are subject to the same patent pendency problem. Arguably, green technologies actually faired worse than average in regards to patent pendency. According to the USPTO, the “average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision.” As a result, the USPTO implemented a pilot program to accelerate the patenting of green technology, and thus “accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.”
In order to ovecome these problems, the USPTO first implimented a Pilot Program in December 8, 2009 to encourage technology investment in green technologies. While moderately successful initially, the USPTO has broadened the qualifications to now allow larger categories of applicants to participate in the program. The below article discusses both the original program, how the USPTO has broadened the qualification requirements, and how applicants can take advantage of these changes.
II. Original Requirements for Participation in Pilot Program for Green Technologies
When the Pilot Program was first announced, the United States Patent and Trademark Office had not yet indicated how the program was to be run, or even what technologies would be considered a “green technology.” This deficiency was resolved on December 29, 2009, when the United States Patent and Trademark Office published a Notice for the requirements for participation in the Pilot Program for Green Technologies.
In this Notice, the Pilot Program was limited to the first 3,000 Petitions for previously filed new applications, and is effective as of December 8, 2009 through December 8, 2010. Further, the application cannot contain more than one invention, and no more than twenty claims and three independent claims. However, the application can be amended with a Preliminary Amendment accompanying the Petition in order to comply with this requirement.
Scope of Green Technology
As set forth in the Notice, the scope of the program encompasses any green technologies which provide for greenhouse gas reduction. Specifically listed are technologies related to
- environmental quality,
- energy conservation,
- development of renewable energy resources, or
- greenhouse gas emission reduction.
The Notice specifically lists the patent classifications which are currently considered within these categories, which therefore define the scope of the Pilot Program. While technologies such as biofuels, wind turbines, fuel cells and solar cells are obviously included in the scope of green technologies, the Notice shows that the USPTO has taken a broad view of what constitutes a green technology. For instance, examples of Energy Conservation includes “Cathode ray tube circuits (USPC 315/150, 151, 199)”, “Commuting, e.g., HOV, teleworking (USPC 705/13),” and “Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32-46).” Thus, merely because a technology is not always thought of as a green technology does not mean that an applicant should not take a closer look to determine whether their pending applications qualify as a green technology for purposes of the Pilot Program.
General Petition Requirements
If a technology is a green technology, the applicant can file a Petition to Make special under the Green Technology Pilot Program. The Petition itself does not require a fee as the “$130.00 fee for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice.”
The Petition must be electronically filed prior to December 8, 2010 or prior to the first Office Action, whichever comes first. When filing electronically, the applicant needs to label the filing as “Petition for Green Tech Pilot”, and should use the newly-created form PTO/SB/420. However, applicant created forms can be used.
The Petition needs to include a request for early publication with accompanying fee. Further, the applicant needs to agree to elect between inventions pursuant to a telephone interview should the Examiner determine that the application contains more than one invention.
The Petition needs to include evidence as to how the technology meets one of the two Eligibility requirements. Specifically, the Petition or the underlying application must indicate how the invention is material to advancing green technology as defined under one of the Eligibility requirements. Ideally, an applicant should include such a statement in the Petition in order to ensure that the materiality is demonstrated even where the applicant believes that the application clearly indicates how the invention is material to the development of green technology.
Notably, neither Eligibility requirement requires the conducting of a pre-examination search and examination support document. Thus, the Petition should be cheaper and less risky to file as compared to where a Petition to Make Special is used.
The two Eligibility requirements are set forth below.
1. Eligibility Requirement for Applications Pertaining to Environmental Quality
For applications whose eligibility is related to Environmental Quality, the Petition needs to set forth how the technology will “materially enhance the quality of the environment under the conditions specified in item V of MPEP Sec. 708.02.” Under this standard, the Petition must specifically state that the Special status is appropriate since the invention “materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements.” The materiality standard can be met if the application itself clearly demonstrates the importance of the technology, or if there is a statement included in the Petition which demonstrates how the invention is material.
2. Eligibility Requirement for Applications Pertaining to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction
For applications whose eligibility is related to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction, the applicant needs to demonstrate that the invention “materially contribute” to the “The discovery or development of renewable energy resources; the more efficient utilization and conservation of energy resources; or the reduction of greenhouse gas emissions.”
A “renewable energy resource” includes “hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources.
For “energy conservation”, the invention must relate to reducing energy consumption in some form of system, including “combustion systems, industrial equipment, and household appliances.”
The reduction of greenhouse gas emissions includes technologies which advance nuclear power generation technology, or “fossil fuel power generation or industrial processes with greenhouse gas-abatement technology.” Moreover, the technologies need not be directed only to improvements in these technologies, and can also include “inventions that significantly improve safety and reliability of such technologies).”
Where the Petition relates to this second ground of Eligibility, the Petition needs to explain that the Special status is deserved by demonstrating how the materiality requirement is met for these categories. As with the first Eligibility requirement, where the materiality requirement is not evident from the application itself, the applicant needs to include in the Petition an explanation as to how the technology materially aids in the development of these categories of inventions.
III. NEW CHANGES
Recognizing that the Green Technology program was under performing, the USPTO enacted changes to help stimulate participation. Specifically, according to the USPTO’s own statistics, the technical requirements of the Petitions had allowed only 48% of all received petitions to be granted participation, whereas 35% were dismissed and 8% were denied. Indeed, the number of denied petitions exceeded the number of patents issuing under the program. To enhance participation to meet its own expectations, the USPTO has since expanded the program in three significant ways.
First, the USPTO withdrew the requirement that the application fit within pre-determined patent classifications as discussed above. As noted in the comments accompanying the change, the purpose of using the patent classifications had been to balance the workload within the USPTO, but the requirement had resulted in “denials of petitions for applications that are drawn to green technologies” even though the workload balance had been achieved. As such, the USPTO eliminated a procedural hurdle which was preventing full use of the program.
Second, the USPTO expanded the program by filing date requirement. As noted above, the original program only applied to applications filed prior to the start of the pilot program (i.e., filed prior to December 8, 2009). This change allowed applicants to ensure new inventions can participate in the program, and allows applicants whose petition was refused solely due to the filing date to renewed petition. The renewed petition was given “priority” over other petitions if the renewal was filed by December 10, 2010.
Third, the USPTO extended the duration of the program for another year. As such, the program will be closed after December 31, 2011, but will remain limited 3000 granted petitions. This extension was made to allow further participation in the program since, as of December 13, 2010, only 917 petitions had been granted and only 148 petitions were awaiting a decision.
Petitions to Make Special have traditionally been a way for the United States Patent and Trademark Office to ensure that the most important inventions are examined in advance of all inventions. With the costs and burdens associated with Petitions to Make Special, applicants are generally reluctant to file such Petitions. However, by making broad categories of green technologies available for Petitions to Make Special without the cumbersome pre-examination searches and supporting documentation, the United States Patent and Trademark Office has taken the unusual step of allowing entire categories of technology to be treated in advance at a relative low cost. Further, through removal of man of the procedural complexities which previously existed, such Petitions are now easier to obtain and simpler to prepare. Given the uniqueness of this opportunity, applicants would be well advised to review their pending applications to determine if their invention qualifies for this inexpensive mechanism to ensure that their technology is timely protected
 James G. McEwen is a partner at Stein McEwen, LLP. The opinions in this article do not represent the official positions of Stein McEwen, LLP.
 FY 2010 USPTO Performance and Accountability Report, Table 4: Patent Pendency Statistics (FY2010) (http://www.uspto.gov/about/stratplan/ar/2010/index.jsp) .
 MPEP 708.01.
 The U.S. Commerce Department’s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain green technology patent applications (December 7, 2009) http://www.uspto.gov/news/pr/2009/09_33.jsp.
 1349 Official Gazette 362
 USPTO, Green Petition Report Summary (December 13, 2010).
 Elimination of Classification Requirement in the Green Technology Pilot Program, 75 Fed. Reg. No. 98, p. 28554 (May 21, 2010).
 Expansion and Extension of the Green Technology Pilot Program, 75 Fed. Reg. No. 217, pp. 69049-50 (November 10, 2010).
 USPTO, Green Petition Report Summary (December 13, 2010).