McHale Slavin NewsletterMchale Slavin

February 25, 2011


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

A revision to the United States Patent and Trademark Office Green Technology Test Program will allow more qualifying green technology patent applications to move through the process much quicker, allowing 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 has been broadened to include more green technology sub-classes. Qualifications are still strict; however, as applications must pertain to acceptable green technologies, among other important provisos.

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 USPTO has expanded eligibility for the pilot program to include applications filed on or after December 8, 2009, in addition to applications 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 to “make special” must be filed electronically before December 8, 2011.
The petition must have been filed at least one day before a first Office Action appears in PAIR.
The petition to ‘make special” must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d).
(Above Requirements Source: USPTO)

The USPTO has a targeted end date of December 8, 2011 and a cap of 3,000 special status applications. The special program may be extended or expanded, but there are no guarantees at this time. McHale & Slavin, P.A. believes applicants would be well advised to file a petition to qualify for the Green Technology Pilot Program as quickly as possible, if they would like to take advantage of the USPTO accelerated examination process.

The accelerated examination or out-of-turn Special Status designation for pending green applications allows 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 former USPTO examiners with a combined tenure of nearly 100 years.

USPTO’s normal application processing is based on date of filing. However, the Green Technologies Pilot Program allows for Special Status if an applicant’s petition conforms to its guidelines. To take advantage of this limited opportunity by the USPTO and determine if your intellectual property qualifies, contact the McHale & Slavin, P.A. Green Technologies Group by selecting the following link and completing the Contact form.