Patent Office Pilot Fast-Tracks Green Tech Applications

January 2011

By: Keith J. Wood

This article appeared in the January 2011 edition of WPI Venture Forum's Vantage Newsletter

What should come first – the intellectual property portfolio or the outside investment, the “VC” or the “IP”?  Most any technology entrepreneur has faced this dilemma head on.  More funding is needed for further product development. On the other hand, outside investors see issued patents as the only way a startup can put up any sort of barrier to market entry by competitors. Patents are therefore viewed as a critical way to protect a start-up investment. But there is often not enough seed money to develop a strong patent position.

Even if funds and expertise are available to file patent applications, the U.S. Patent and Trademark Office (PTO) seems to have an interminable backlog of unexamined applications. It is not unusual for patents to issue four or even five years after the initial financing round.  With these delays to patent grant come uncertainty in the ability to attract additional funding and even loss of market opportunities.

How is a start-up to face this “chicken or egg” scenario?  

Unbeknownst to many, the PTO actually does have a number of different programs to expedite the examination of certain kinds of patent applications.  These programs can be applied to inventions in the area of recombinant DNA, superconductivity, HIV/AIDS or cancer treatment, and countering terrorism. One such program applies to all biotechnology inventions, if the invention can be considered a “major asset” of the applicant business entity. Yet another program is generally applicable to all inventions, if the inventor is willing to make certain statements about the prior art and limit the number of patent claims. 

One new avenue to expedited examination, initially announced last year, is the PTO’s “Green Technology Pilot Program.”   This Program allows patent applications relating to certain green technologies to be advanced for examination ahead of other applications. The original pilot program of December 2009 only applied to non-provisional applications that were already on file as of December 8, 2009 and was initially planned to last for only one year. Under revisions to the program announced last month, patent applications filed on or after December 8, 2009 are also eligible for consideration, thereby allowing more patent applicants to participate in the faster examination process for green technologies.  In addition, the PTO has extended the pilot program for another year, until December 31, 2011.

The PTO plans to accept the first 3,000 petitions filed under the pilot Program. As of November 2010, only about 800 applications had been accepted, so there is plenty of room left for other inventors to take advantage of it.

According to PTO statistics, participants in the program have already seen much faster examination than other applicants. As of last month, the average time between approval of a green technology petition and the first action on the application was just 49 days. Several patent applications in the program since just 2009 have now already issued within a year of their filing date.

In order to participate in the pilot program, the applicant must file a “petition to make special” that satisfies several requirements. The application must contain or be amended to contain three or fewer independent claims and twenty or fewer total claims. The applicant must file a statement stating a willingness to restrict the claims to a single invention.  And the applicant must also state as a basis for special status that the claimed invention “materially” pertains to one of the enumerated “clean technology” subject matter areas, that is, technology that enhances the quality of the environment, contributes to the discovery or development of renewable energy resources, more efficient utilization or conservation of energy resources, or the reduction of greenhouse gas emissions.  

More details concerning the Program are in the Federal Register notice.

We encourage patent applicants to consider the Green Technology Pilot Program while it remains available.

About

January 2011

By: Keith J. Wood

This article appeared in the January 2011 edition of WPI Venture Forum's Vantage Newsletter

What should come first – the intellectual property portfolio or the outside investment, the “VC” or the “IP”?  Most any technology entrepreneur has faced this dilemma head on.  More funding is needed for further product development. On the other hand, outside investors see issued patents as the only way a startup can put up any sort of barrier to market entry by competitors. Patents are therefore viewed as a critical way to protect a start-up investment. But there is often not enough seed money to develop a strong patent position.

Even if funds and expertise are available to file patent applications, the U.S. Patent and Trademark Office (PTO) seems to have an interminable backlog of unexamined applications. It is not unusual for patents to issue four or even five years after the initial financing round.  With these delays to patent grant come uncertainty in the ability to attract additional funding and even loss of market opportunities.

How is a start-up to face this “chicken or egg” scenario?  

Unbeknownst to many, the PTO actually does have a number of different programs to expedite the examination of certain kinds of patent applications.  These programs can be applied to inventions in the area of recombinant DNA, superconductivity, HIV/AIDS or cancer treatment, and countering terrorism. One such program applies to all biotechnology inventions, if the invention can be considered a “major asset” of the applicant business entity. Yet another program is generally applicable to all inventions, if the inventor is willing to make certain statements about the prior art and limit the number of patent claims. 

One new avenue to expedited examination, initially announced last year, is the PTO’s “Green Technology Pilot Program.”   This Program allows patent applications relating to certain green technologies to be advanced for examination ahead of other applications. The original pilot program of December 2009 only applied to non-provisional applications that were already on file as of December 8, 2009 and was initially planned to last for only one year. Under revisions to the program announced last month, patent applications filed on or after December 8, 2009 are also eligible for consideration, thereby allowing more patent applicants to participate in the faster examination process for green technologies.  In addition, the PTO has extended the pilot program for another year, until December 31, 2011.

The PTO plans to accept the first 3,000 petitions filed under the pilot Program. As of November 2010, only about 800 applications had been accepted, so there is plenty of room left for other inventors to take advantage of it.

According to PTO statistics, participants in the program have already seen much faster examination than other applicants. As of last month, the average time between approval of a green technology petition and the first action on the application was just 49 days. Several patent applications in the program since just 2009 have now already issued within a year of their filing date.

In order to participate in the pilot program, the applicant must file a “petition to make special” that satisfies several requirements. The application must contain or be amended to contain three or fewer independent claims and twenty or fewer total claims. The applicant must file a statement stating a willingness to restrict the claims to a single invention.  And the applicant must also state as a basis for special status that the claimed invention “materially” pertains to one of the enumerated “clean technology” subject matter areas, that is, technology that enhances the quality of the environment, contributes to the discovery or development of renewable energy resources, more efficient utilization or conservation of energy resources, or the reduction of greenhouse gas emissions.  

More details concerning the Program are in the Federal Register notice.

We encourage patent applicants to consider the Green Technology Pilot Program while it remains available.

Back to the Top