December 10, 2009

The Grass Is Greener at the PTO: USPTO Launches a New Pilot Program for “Green” Technology

3 min

UPDATE: November 22, 2010 - Please see this article for an update on the Green Technology Pilot Program.

UPDATE: December 14, 2009 - The USPTO changed its stance with respect to the applicability of the Green Technology pilot program to pending PCT applications, to be more applicant-friendly. PCT applications which were pending as of December 8, 2009 but had not yet entered the National Stage may be applicable for the Green Technology pilot program as long as they enter the U.S. National Stage before December 8, 2010. PCT applicants should therefore consider entering national stage early if they want to participate in the pilot program.

Effective on December 8, 2009, the United States Patent and Trademark Office launched a new pilot program to accelerate prosecution of patent applications involving “Green” technology. To qualify, the invention claimed in a patent application must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources, (2) the more efficient utilization and conservation of energy resources, or (3) greenhouse gas emission reduction (Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. 64666). The program applies only to U.S. non-provisional utility patent applications, including U.S. National Stage applications that were pending on December 8, 2009, but not to provisional applications or PCT international applications that have not yet entered the U.S. National Stage. Participants in the pilot program will have their applications advanced out of turn for quicker examination.

To participate, the applicant must file a petition to enter the program at least one day before a first Office Action. A restriction requirement, as well as an Official Action on the merits, is considered a first Office Action under this program. There must be no more than 20 claims, no more than three independent claims, no multiple-dependent claims, and the application must be directed to a single invention. Preliminary amendments can be filed with the petition to comply with these requirements. The eligible technologies are classified under the following primary categories: (A) Alternative Energy Production; (B) Energy Conservation; (C) Environmentally Friendly Farming; and (D) Environmental Purification, Protection, or Remediation. There are numerous subcategories listed under each primary category. The pilot program is set to end after acceptance of the first 3,000 patent applications that cover this technology, although it may be expanded. Innovators have long complained that the pendency for patent applications is unreasonably long, and this program is intended to solve that problem for technologies recognized to be of competitive significance for the U.S. economy. Obtaining speedy patent issuance may bring significant commercial advantages for patent owners, for example by increasing the valuation of the company, improving leverage in licensing negotiations, and allowing for judicial enforcement against infringers. Those who might be affected should review their patent portfolios and consider entering the green technology pilot program promptly due to the time constraints and application cap.

Henry J. Daley is a partner in Venable's Patent Prosecution Group. He can be reached at 202.344.4362 or Michael A. Gollin is a partner in Venable's Patent Prosecution Group. He can be reached at 202.344.4072 or Justine A. Gozzi is an associate in Venable's Patent Prosecution Group. She can be reached at 202.344.8279 or