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Locke Lord QuickStudy: Opportunity to Save Money on Expedited USPTO Review of Green Patents Ending Soon

1/19/2012

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Opportunity to Save Money on Expedited USPTO Review of Green Patents Ending Soon

The United States Patent and Trademark Office (“USPTO”) recently announced that its Green Technology Pilot Program (“GTPP”) will be closed down for good on March 30, 2012, or when 3,500 applications have been accepted for review in the program. Cleantech inventors and companies looking to save money while enjoying the benefits of expedited patent examination need to take action before the bargain runs out. According to the USPTO’s announcement in the Federal Register, there is room for 500 additional applications in the program. Around the time of the USPTO's December 5, 2011, announcement, this development received some attention in the Cleantech IP blogosphere, including in Green Patent Blog® and Sustainable Marks, but in light of the end of year diversions occupying most peoples interest, a reminder is warranted. Importantly, the petition for inclusion in the GTPP is free, though applicants may be responsible for fees related to early publication.

Since December 2009, the USPTO has offered expedited patent examination via the GTPP to interested applicants seeking patent protection on environmentally conserving or other sustainable technologies. The classification requirement for the GTPP was removed on May 21, 2010, and the program was initially extended on November 10, 2010. While the USPTO has kept practitioners and applicants on their toes with changes to the rules for participation and scope of the program over the years, the program has undoubtedly served as America's answer to the challenge, raised by other patent offices worldwide, of incentivizing “green” innovation through an expedited patent examination pathway. Valid criticisms of the limited scope and ambition of the GTPP aside, it has undoubtedly served as a vehicle, and a low-cost one at that, for applicants to jump the long line that is the usual wait for an initial Office Action — or initial substantive response from the PTO as to the merits of the filed application. The USPTO reports that “stakeholders participating in the Green Technology Pilot Program have obtained patents much more quickly,” and that a good number of applicants have seen patents issued in less than one year from filing following acceptance in the GTPP. Since the primary promised benefit of the GTPP is a quicker initial Office Action, it is unsurprising that the average time from acceptance in the GTPP and receipt of a first Office Action is “just 78 days.”

As noted above, the GTPP is a low-cost way of obtaining expedited examination from the USPTO. As a rationale for ending the program, the USPTO is suggesting that applicants seeking expedited examination for their green patent applications avail themselves of the USPTO’s Prioritized Examination Track I. The goal of Track I is to have “patent applications processed to final disposition within 12 months from prioritized status being granted” — though at a minimum of over $2,500 in additional fees, such attention does not come cheap. In light of the additional cost, it is difficult to see how the USPTO will continue to incentivize clean technology innovation by shelving the GTPP and pushing applicants to a higher cost, technology-agnostic, expedited examination scheme. Cleantech and other companies considering patent protection, particularly those with languishing pending applications that could benefit from inclusion in the GTPP, are advised to evaluate their portfolios and see whether there is an opportunity to save money on fees for expedited examination. The money saved could go to filing for additional patents, marketing or whatever else strikes the fancy. And after March 30, 2012, “green” patent applicants will need to strategically consider whether Track I is a viable alternative to expedited green patent examination programs in other countries. For green patent applicants, the USPTO has hung a “sale ending soon” sign.

For more information on the matters discussed in this Locke Lord QuickStudy, please contact the author: 

Gaston Kroub | T: 212-415-8585 | gkroub@lockelord.com