Green technology patent owners will have something extra to be thankful for this coming holiday season. Based on the overall past success and positive feedback of the Green Technology Pilot Program ("Green Program"), Director David Kappos of the U.S. Patent and Trademark Office ("Patent Office") has continued his commitment to green technology by deciding to expand the Green Program to include more recent patent application filings and to extend the deadline for filing a petition to December 31, 2011.1 With only a limited number of Green Program petitions available, however, patent owners should review their options promptly to make sure they are not left out in the cold this holiday season.
As we previously noted,2 the rules under the original program only applied to applications within a very specific classification3 and were already pending with the Patent Office before December 8, 2009.4 On May 21, 2010, the Patent Office then removed the classification requirement and significantly broadened the definition of Green Technologies5 in an attempt to increase participation.6 Now, in addition to extending the deadline to file a petition from December 8, 2010 to December 31, 2011, this newest version of the Green Program has now expanded the eligibility to include applications filed on or after December 8, 2009. Put simply, this new change allows pending provisional applications, as well as new applications, to benefit under the Green Program.
Under normal Patent Office procedures, new patent applications are taken up for examination in the order in which they are filed, with the average pendency for applications in these fields being approximately two and a half years until the first Office Action.7 Applications that qualify for acceleration under the Green Program, however, will be placed on a special fast track, which will likely result in applications seeing their first Office Action in approximately 16 months.
In order to participate under the new rules of the Green Program, the application must be:
- a non-reissue, non-provisional utility application;
- in compliance with claim requirements;8
- directed to a single invention9 and have claims that materially enhance the quality of the environment, or that materially contribute to: (a) the discovery or development of renewable energy resources, (b) the more efficient utilization and conservation of energy resources, or (c) greenhouse gas emission reduction;
- filed electronically;
- filed prior to issuance of a first Office Action; and
- accompanied by a request for early publication.10
As of early November 2010, there were approximately only 2,000 spots left available. Because many more applications are now eligible than before, it is imperative for patent owners to act quickly. Patent owners should carefully weigh the Green Program's benefits against the requirements noted above - most notably, claim limitations, abbreviated restriction practice, and early publication.
1 See Expansion and Extension of the Green Technology Pilot Program, 75 Fed. Reg. 69049-50 (November 10, 2010).
3 Original "Green Technology" classifications included: Alternative Energy Production, Energy Conservation, Environmentally Friendly Farming, Environmental Purification, Protection, and Remediation.
4 See Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. at 64667-68 (Dec. 7, 2009).
5 Any application having claims that: materially enhance the quality of the environment; or that materially contribute to the discovery or development of renewable energy resources, the more efficient utilization and conservation of energy resources, or greenhouse gas emission reduction.
7 See Press Release from the Patent Office, located here ("Patent applications are normally taken up for examination in the order that they are filed. 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.").
8 The application must have three or fewer independent claims and 20 or fewer total claims. A preliminary amendment can be made to bring an application into compliance with this requirement.
9 Patent owners also must agree to make an election without traverse over the telephone if the Patent Office asserts there is more than one invention.
10 See Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. at 64667-68 (Dec. 7, 2009).© 2013 Bracewell & Giuliani LLP