Authored by Chuck Holland (Palo Alto)
Yes you can … get expedited patent examination under a new pilot program if your application qualifies and you file a petition to accelerate examination. Commerce Secretary Gary Locke announced the Green Technology Pilot Program on December 8, 2009 for accelerated examination of patent applications claiming inventions which:
- "materially enhance[] the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements"; or
- "materially contribute to (1) the discovery or development of renewable energy resources, (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions."
This is especially good news for start-up companies, which can benefit significantly from early patent protection. Patent and claiming strategy should therefore be reviewed and potentially changed to take advantage of the Patent and Trademark Office’s pilot program.
The pilot program does not make it easier to obtain an issued patent – the same standards apply to assess claim patentability. The pilot program hastens the arrival of the first Office Action, the document that the patent examiner sends to alert the patent applicant to multiple inventions claimed in the application or to the examiner’s conclusions of claim patentability.
The pilot program dispenses with certain requirements under the existing process of petitioning for accelerated examination. The existing process requires that the patent applicant submit an "examination support document," which can be subject to various attacks in litigation that can render a patent and related patents unenforceable. The pilot program is therefore a welcome development for cleantech industries that need strong patents early to defend and develop their businesses and to raise funds.
The pilot program applies to only the first 3000 applications that qualify, and there are a number of requirements. Some of the key requirements include:
- patent application was filed before Dec. 8, 2009 and petition to accelerate is filed before Dec. 8, 2010
- patent application is not already being examined
- application is classified in one of several technology classifications for patent applications (see 74 Fed. Reg. 234 pp. 64668-9 (Dec. 8, 2009)
- applicant must agree to early application publication.
One suggestion: If you have an application that meets the requirements above, consider adjusting your patent strategy to include expedited prosecution to improve your company’s competitive position sooner.
