Patenting Green Technology in the U.S.

It is not surprising then that there are various government programs in a number of countries that promote the development and use of environmentally friendly technologies. Some of these programs provide excellent opportunities for businesses. An example of this is a recent initiative announced by the U.S. Patent and Trademark Office (USPTO).

A word of caution, the patent examination process can be highly complex, complicated and a very drawn out process, especially at times of significant backlog at the patent office. The USPTO believes this new program promises to significantly reduce processing times for qualifying inventions and could be useful to those companies and individuals that are considering patenting green technologies and are eager to obtain a U.S. patent relatively quickly.

In December of 2009, the USPTO announced a pilot program for accelerating the examination procedure for patent applications related to green technology, which includes technology that relates to "energy conservation, development of renewable energy resources, or greenhouse gas emission reduction."

To give some perspective on what an accelerated examination procedure means to a patent applicant, consider the basic steps involved in obtaining a patent.

The applicant (or more likely the applicant’s patent agent) first drafts a patent application. They then file the application at the patent office. Some time after that, a patent Examiner picks up the patent application and the examination procedure begins. If the application successfully passes the examination procedure, it then issues to patent.

Depending on the backlog at the USPTO, for non-accelerated applications, it could be well over a year from the time at which one files a patent application to the time at which the Examiner picks up the application and begins the examination procedure. In addition, the examination procedure itself can last for well over a year. In other words, it can sometimes take several years to obtain an issued patent.

Under normal circumstances, patents are examined in the order in which they are filed. However, an accelerated patent application is given priority and examined out of turn. The director of the USPTO has stated that this new pilot program will reduce the processing time for qualifying patent applications by an average of 12 months, which is a significant reduction in the overall time required to receive an issued patent.

For the time being, the pilot program is available to only the first 3,000 applications for which entry into the program is successfully requested prior to December 8, 2010, though the USPTO has indicated that it may extend the program.

In order to encourage participation in the program, the USPTO has waived the fee that is normally associated with requesting accelerated examination, as long as it is done under the Green Technologies pilot program. There are other grounds under which one can request accelerated examination in the U.S. but they generally require the payment of an extra fee and the submission of additional documents, which generally requires a significant amount of work and further adds to the cost.

There are several requirements that a patent application must meet in order to be eligible for the pilot program:

As stated in the official notice announcing the program, which was published in the Federal Register Vol. 74, No. 234, one of the requirements is that "the claims [of the patent application] must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to: the discovery or development of renewable energy resources; the more efficient utilization and conservation of energy resources; or greenhouse gas emission reduction."

In the same notice, the USPTO indicated that an application that claims an invention that has only either a minor aspect that may enhance the quality of the environment, or some hypothetical minor environmental application, would not be eligible under the program.

It is important to note that the notice refers to the claims of the application and not the application as a whole. The claims are the numbered sentences that appear at the back of a patent or patent application. Each claim is essentially a legal definition of the invention. Accordingly, it appears from the notice that the invention itself must relate to green technology in a non-tangential way and that it is not enough that the application be drafted such that it puts a "green" or environmentally friendly spin on the invention.

Alexander Anishchenko, B.A.Sc. (Elec. Eng.), MBA, J.D., is an associate lawyer with Bereskin & Parr LLP. He can be reached in Toronto at 416.364.7311 or aanishchenko@bereskinparr.com.