On November 10, 2010, the United States Patent and Trademark Office (“USPTO”) announced it will expand its Green Technology Pilot Program to include applications filed on or after December 8, 2009. In addition, the USPTO will extend the pilot program to December 31, 2011, from its previously scheduled expiration date of December 8, 2010.

Under the pilot program, which was first announced on December 8, 2009, the USPTO expedites its review of eligible patent applications for “green technologies” ahead of other applications with the goal of enabling patents to issue within a year on average, as opposed to three years for non-accelerated applications. The USPTO also waives the typical US$130 petition fee for an expedited review. Under the “green technology” requirement, the application must be for an invention that materially enhances the quality of the environment, or materially contributes to one of the following “green technologies”:

  • The discovery or development of renewable energy resources
  • The more efficient utilization and conservation of energy resources
  • The reduction of greenhouse gas emissions

The USPTO initially limited the program to applications classified in one of the 79 listed US patent classifications.

The USPTO also initially limited the pilot program to the first 3,000 qualifying petitions filed by December 8, 2010; as of November 2, the USPTO granted 790 out of the 1,595 petitions filed. The USPTO subsequently removed the classification requirement that narrowed the scope of “green technology” applications. As a result of the recent announcement, the program will now run until December 31, 2011 or until the USPTO receives 3,000 qualifying petitions, whichever occurs earlier, and applications filed on or after December 8, 2009, including new applications, now also qualify for the pilot program.

The other requirements for eligibility remain, including (i) the required relationship to “green technology,” (ii) the maximum of three (3) independent claims and twenty (20) total claims; (iii) the absence of any multiple dependent claims; (iv) the absence of any existing Office Actions, which are communications from the patent examiner in response to the application. Further, the application may not be a reissue or provisional utility application and must include only one single invention unless the applicant agrees to elect one of the inventions during the review process, without reserving the right to appeal. Finally, international applications that have entered the national stage under 35 U.S.C. § 371, as well as divisional and continuation applications meeting on their own the eligibility requirements, may qualify. Applications for design patents will not qualify.

Early patent issuances are strategically important in rapidly developing sectors such as renewable energy or consumer electronics; they enable a company to leverage its intellectual property right away instead of waiting for years for the patents to issue. Thus, companies should examine their patent portfolio to see if any of its patent applications qualify for the accelerated examination program.

While the deadline has been extended to the end of 2011, it is anticipated that the 3,000-petition limit will be reached well in advance of the deadline given the concurrent expansion of the pilot program. If you have any patent applications pending with the USPTO and have any questions regarding the Green Technology Pilot Program, please contact us as soon as possible to ensure compliance with these procedural rules.