McHale Slavin NewsletterMchale Slavin

March 15, 2012

GREEN TECHNOLOGY PILOT PROGRAM NOW CLOSED: EXPANSION WIDENED SCOPE OF GREEN INVENTIONS TO STIMULATE DEVELOPMENT, JOBS AND AMERICAN PRIDE


By Reg Miller, McHale & Slavin, P.A.


         The United States Patent and Trademark Office is no longer accepting Petitions to Make Special under the Green Technology Pilot Program. In addition, no requests for reconsideration based solely on a defective original petition will be considered. According to the USPTO, the program will meet its limit based on petitions that were previously filed and are awaiting decision.


        Under the program that ran from December 2009 through early March 2012, the Green Technology program reached its maximum of 3500 such applications before the date restricted cut-off date of March 30, 2012. Pending petitions will be taken in turn, as set forth in the original notice on applications deemed in condition for examination. The USPTO indicates it will treat any pending petition in an application that is in condition for examination on or before the cut-off date (the date the 3500th application was in condition for examination). Pending requests for reconsideration based on a defective original petition will only be considered if they were filed on or before the cut-off date. Requests for reconsideration based solely on an erroneous decision may continue to be filed and will be considered.


        A revision to the United States Patent and Trademark Office Green Technology Test Program has allowed more qualifying green technology patent applications to move through the process much quicker, and provided for applications to get to initial examination at least a year ahead of applications in the traditional pipeline. McHale & Slavin, P.A. has successfully prosecuted patent applications under this special Green Technologies initiative offered by the USPTO which has resulted in the accelerated examination and issuance of these applications.


           What began as a restrictive program in December of 2009 was broadened to include more green technology sub-classes. Qualifications remained strict; however, as applications only pertaining to acceptable green technologies, among other important provisos were considered.


Historical Recap of the Green Technology Test Program Guidelines:


- The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. § 111(a), or an international application (“PCT”) that has entered the national stage. The application must have been filed before December 8, 2009. Re-examination proceedings are excluded.


- The application must apply to green technologies, including greenhouse gas reduction (applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction) and meet other requirements specified in the Green Technology Notice.


- The application must contain three (3) or fewer independent claims, twenty (20) or fewer total claims, and may not contain any multiple dependent claims. For applications exceeding these parameters, applicants must file a preliminary amendment to cancel the excess claims and/or multiple dependent claims at the time the petition to “make special” is filed.


- The claims must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; and (3) greenhouse gas emission reduction. The petition must include a statement that, if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephone interview.


- The petition must have been filed at least one day before a first Office Action appears in PAIR.

          The USPTO accepted only the first 3,500 petitions to make special in new applications, providing that the petitions met the requirements set forth in the notice published on December 8, 2009, in the Federal Register, as modified by the Federal Register notices published on May 21, 2010, November 10, 2010, and December 15, 2011. (Above Requirements Source: USPTO)

          The USPTO expanded the eligibility for the pilot program to include applications filed on or after December 8, 2009, in addition to applications filed before December 8, 2009.  On December 15, 2011 the USPTO announced that the program was extended until March 30, 2012, or the date that 3,500 applications have been accorded special status under this program. The maximum restriction of 3500 applications has been reached. There is no indication from the USPTO that the program will resume.


           The accelerated examination or out-of-turn Special Status designation for pending green applications allowed for the filing to progress ahead of conventional applications. The USPTO expedited treatment will shave at least one year off the normal pendency period. Additionally, the USPTO states applications accorded Special Status are generally placed on the examiner’s special docket throughout its entire course of prosecution before the examiner, and have special status in any appeal to the Board of Patent Appeals and Interferences, and also in the patent publication process.


          The overarching benefit would be acceleration in the deployment of green technology, as well as the creation of more jobs in the green sector. U.S. Commerce Secretary Gary Locke hopes the expedited processing will encourage the Nation’s brightest innovators to invest the needed resources to bring “… green technologies into use much sooner…and promote U.S. competitiveness in this vital sector.” USPTO Director David Kappos believes, “Expanding the eligibility criteria for this program will further accelerate the development of critical green technologies while creating new jobs.”


           The Green Technology Pilot Program designed to promote development of green technologies proved beneficial for a number of applications filed by McHale & Slavin, P.A.


           McHale & Slavin, P.A. has a practice group that includes attorneys and agents who possess legal, technical and scientific credentials, as well as industry and government experience. The McHale & Slavin, P.A. staff includes a former USPTO examiner with tenure of more than 35 years.