Qualifying Barriers Lower for "Green Technology" Patent Applications

Barriers have been lowered significantly for what now qualifies as "Green Technology" subject matter for patent applications pending before the U.S. Patent and Trademark Office ("Patent Office"). In order to allow accelerated examination of even more pending patent applications, the Patent Office recently expanded its definition of "Green Technology" under the Green Technology Pilot Program ("Program").¹ To qualify for accelerated examination, and in an attempt to balance workload and gauge available resources, the Patent Office originally required that a pending patent application be classified under one of a select list of "Green Technology" classifications, namely Alternative Energy Production, Energy Conservation, Environmentally Friendly Farming, Environmental Purification, Protection, or Remediation. The Patent Office, however, has dropped the classification requirement and is now allowing accelerated examination for any applications that are drawn toward its definition of "Green Technologies" (i.e., 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). Notwithstanding the above, the Program is still only available to the first 3,000 applicants and ends on December 8, 2010.²

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.³ Applications that qualify for acceleration under the 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 Program, the application must be:

• a non-reissue, non-provisional utility application filed prior to December 8, 2009;
• in compliance with claim requirements;⁴
• directed to a single invention⁵ 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.⁶

The Patent Office estimates that approximately 25,000 of the currently pending patent applications meet the requirements listed above. As the Program is limited to the first 3,000 that apply, it is imperative for applicants to act quickly. Applicants should carefully weigh the Program's benefits against the requirements noted above--most notably, claim limitations, abbreviated restriction practice, and early publication. Additionally, if a previously filed petition to make special was denied solely on the basis that the application did not meet the classification requirement, a subsequent petition will be given priority as of the date of the original petition as long as the renewed petition is filed by June 21, 2010.

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¹ See Elimination of Classification Requirement in the Green Technology Pilot Program, 75 Fed. Reg. 28554-55 (May 21, 2010).

² To date, more than 950 requests have been filed by applicants, with approximately 350 having been allowed. The Patent Office notes that a majority of the applications denied thus far would now be eligible with the elimination of the classification rule.

³ 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.").

⁴ 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. 

⁵ Applicant also must agree to make an election without traverse over the telephone if the Patent Office asserts there is more than one invention.

⁶ See Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. at 64667-68 (Dec. 7, 2009).