With Pilot Past, How to Get Green Patents Fast

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With the U.S. Patent and Trademark Office Green Technology Pilot Program closed, it’s time to think outside the box (and outside the country)

The U.S. Patent and Trademark Office (USPTO) Green Technology Pilot Program is now history.

As of February 27, 2012 petition number 3,500 had been granted (see the most recent green_report), and the USPTO announced that the green fast track is closed.

So what do green patent applicants who want, need, crave, and/or yearn for accelerated examination in the USPTO do now?

The USPTO has two suggestions. First, try the office’s new Track One Prioritized Examination procedure.

Part of the recently-enacted America Invents Act, this new fast track affords a patent application special status and aims to provide a final disposition within a year of the grant of prioritized status.

But Prioritized Examination costs $2,400 for small entities and $4,800 for large entities.

Alternatively, the USPTO invites green patent applicants to take advantage of its established Accelerated Examination program.

This is the familiar Petition to Make Special based on particular circumstances such as infringement or the applicant’s age or specific technologies like those relating to HIV/AIDs, cancer, countering terrorism, and, to the point of this post, environmental quality and energy.

However, this program shifts the prior art search and evaluation burden (and cost) to the applicant. A complete Petition to Make Special requires a pre-examination search and submission of the material prior art.

The Accelerated Examination procedure also imposes the onerous requirement of preparing an Examination Support Document (ESD) explaining where each claim limitation can be found in the prior art and how each of the claims is patentable over the prior art.

The ESD has been nicknamed the Express Suicide Document for the potential inequitable conduct and other risks it can raise should a resulting patent be litigated down the road.

What about Patents for Humanity? This is not an accelerated examination procedure, but an awards competition in which patentees and licensees submit applications describing how they have used their patented technologies to address humanitarian needs.

Judges choose winners in four categories, one of which is clean technology. The winner is awarded a certificate for accelerated processing of one its patent applications.

To quote Dom DeLuise, as Emperor Nero in Mel Brooks’ History of the World, Part I, “Nice. Not thrilling, but nice.” Certainly not something anyone will incorporate into a regular filing strategy.

Allow me to make another suggestion.

Remember two things. First, the Patent Prosecution Highway (PPH) allows an applicant that receives allowed claims or an issued patent in the intellectual property office in which the patent application was first filed to accelerate examination of a corresponding patent application in a second intellectual property office where the application is subsequently filed.

The PPH is technology agnostic and comprises twenty-two participating jurisdictions, including significant ones without green fast tracks such as the European Patent Office.

Second, the Green Technology Pilot Program was only one of seven green patent fast track programs offered by various national IP offices around the world. Other countries that still provide accelerated examination for green patent applications are the UK, Canada, Australia, Japan, Israel, and Korea.

For applicants who are going to file in one or more of these countries anyway (typically later via the PCT international process and timeline), a good strategy is to file first in one of these countries, say Canada, and get on that country’s green tech fast track.

Once the applicant gets claims allowed by the Canadian Intellectual Property Office, you can take the allowed claims and use the PPH to have the corresponding U.S. patent application expedited at the USPTO (and/or many other intellectual property offices around the world).

So one can leverage one of the remaining green tech fast track programs and use it as an HOV lane to provide quick access to the PPH and get those green patent applications accelerated in many countries that don’t have green fast tracks.

Eric Lane is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at elane@luce.com.

About Author

Walter’s contributions to CleanTechies over the past 4 years have been instrumental in growing the publications social media channels via his ongoing editorial and data driven strategies. He is the founder and managing director of Sunflower Tax, a renewable energy tax and finance consultancy based in San Diego, California. Active in the San Diego clean technology community, participating in events sponsored by CleanTech San Diego, EcoTopics, and Cleantech Open San Diego, Walter has also been a presenter at numerous California Center for Sustainability (CCSE) programs. He currently serves as an adjunct professor at the University of San Diego School of Law where he teaches a course on energy taxation and policy.