On December 8, 2009, the United States Patent Trademark Office (USPTO) announced a clean technology pilot program that allows an applicant to have a qualifying patent application advanced out of turn for expedited examination.
Clean technology is of fundamental importance to sustainable development and economic growth. The deployment of this vital technology is delayed by backlogs of patent applications awaiting examination at the USPTO and the lengthy examination process. Recognizing this, USPTO director David Kappos established the pilot program with the goal to reduce the time required to obtain a patent for a clean technology innovation by an average of twelve months.
Normally, new patent applications are examined in the order of their U.S. filing date and generally it takes three to four years to obtain a patent. Applications that are accepted into the pilot program will be placed on the Examiner’s special fast track docket and will also be granted special appeal status.
An applicant with a pending application may participate in the pilot program by filing a petition to make special, provided all program requirements are met.
The claimed invention must materially enhance the quality of the environment, or materially contribute to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. In addition, the application must fall into one of the eligible classifications, which are generally described as: alternative energy production and development, energy conservation, environmentally friendly farming, and environmental purification, protection, or remediation. However, the classification scheme may not provide definitive guidance, as the application may not have been assigned a classification at the time expedited examination is requested.
The pilot program is open to the first 3,000 pending applications until December 8, 2010. If successful, it may be extended and expand to additional classifications.
The Canadian Intellectual Property Office (CIPO”) does not have a fast-track program specific to clean technologies. However, all applicants have the option to request accelerated examination by showing that failure to advance the application is likely to prejudice the applicant’s rights and by paying the associated fee. In addition, the Patent Prosecution Highway (PPH) provides a means of accelerating examination if an applicant receives allowance from certain foreign patent offices, including the USPTO. Under the PPH, if claims of an application have been found to be allowable by a first intellectual property office, a corresponding application may be advanced out of turn at a second intellectual property office.
Other national patent offices are adopting clean technology patent initiatives.
The Korean Intellectual Property Office (KIPO) launched a fast track examination process for clean technology patent applications, under which a first office action will be issued within one month of the request date. The program requires that an applicant submit its own prior art search and a statement comparing the invention and the prior art. KIPO also participates in the PPH program with CIPO.
The UK Intellectual Property Office (UKIPO) has a similar program for fast tracking patent applications with an environmental benefit and estimates that a patent application can be processed under this program in nine months.
Fast track examination programs will serve to spur the trend of increasing clean technology patenting. Click here to read "Clean" Technology Patents on the Rise by Isis E. Caulder & Maya Medeiros.
Given the continued increase of clean technology patent issuance, proactive clean technology innovators should carefully consider the risk of related litigation and develop a patent strategy.