The United States Patent and Trademark Office (USPTO) announced this month that it will implement a Pilot Program to expedite examination of certain green technology inventions patent applications. While eligibility is currently limited to applications filed before December 8, 2009, the USPTO has hinted about expanding the program if successful. Expedited examination will reduce the time it takes to patent these inventions by an average of one year, compared to the current average time of 40 months to a final decision for green technology inventions.

The announcement was made by U.S. Secretary of Commerce Gary Locke during a press conference timed to coincide with the UN's Climate Change Conference in Copenhagen, Denmark and was tied to job creation and growth in the clean energy sector. The Pilot Program will be limited to the first 3,000 of the “most promising inventions” and could be expanded if proved successful. Examples of promising discoveries that may benefit from the Pilot Program include a “light-weight battery for automobiles,” “a safe and affordable way to capture carbon from coal plants,” and “a cheap and effective way to store power from the wind and sun.”

There are numerous petition requirements, and requirements for eligible patent applications include:

  • The application must be a non-reissue, non-reexamination, and non-provisional utility application
  • The application must be classified in one of 79 “green technology” patent classifications
  • The application must contain three or fewer independent claims and 20 or fewer total claims, without any multiple dependent claims
  • The claims must be directed to a single invention that materially 1) enhances the quality of the environment, 2) contributes to the discovery or development of renewable energy resources, 3) contributes to the more efficient utilization and conservation of energy resources, or 4) contributes to greenhouse-gas emission reduction

There are about 25,000 patent applications eligible for consideration under the Pilot Program. While the popularity of the Pilot Program is yet to be determined, applicants interested in the Pilot Program should consider whether any pending applications could qualify as one of the 3,000 expedited applications. Some applicants will want to file the petition to make special as soon as possible to obtain maximum benefit from the faster pace of the “special” status provided by the Pilot Program. Applications that fall into this group may describe inventions that are directed to more mature commercial areas or inventions that are directed to particular products and well-defined feature sets. Other applicants, however, will choose not to participate in the Pilot Program. Some applications, for example, may describe inventions that are directed to more forward-looking commercial areas or inventions that are not yet directed to any particular product.

One possible strategy to leverage the Pilot Program, particularly if the application on file currently includes more than three independent claims, 20 total claims, or claims directed to multiple inventions, is to file a preliminary amendment to cancel some claims and to file a continuation directed to the cancelled claims. Because the first claimed invention may be constructively elected by the examiner if the applicant is unavailable to make a telephone election, a preliminary amendment also may be used to reorder the claims or to otherwise ensure that the applicant's favored invention is claimed first. Further, because the application is removed from the special docket after the first office action under the Pilot Program, one strategy might be to cancel the broadest and most forward-looking claims while petitioning for the relatively narrow claims or claims directed to a particular commercial product to be considered for the Pilot Program. The continuation would be filed toward the cancelled broad or forward-looking claims. The narrow claims might have a better chance at a reduced number of office actions and prompt allowance, maximizing the usefulness of the Pilot Program. Similarly, an application that was accepted into the Pilot Program might be a good candidate for early examiner interviews, making narrowing amendments early, or taking other steps that might reduce the number of office actions. An opposite strategy might be to prosecute the broad claims under the Pilot Program to obtain an expedited appeals process.