E9-29207. Pilot Program for Green Technologies Including Greenhouse Gas Reduction

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is implementing a pilot program in which an applicant may have an application advanced out of turn (accorded special status) for examination, for applications pertaining to green technologies including greenhouse gas reduction (applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction). Currently, an application pertaining to environmental quality, or energy conservation, development of renewable energy resources or greenhouse gas reduction will not be advanced out of turn for examination unless it meets the requirements of the accelerated examination program. Under the Green Technology Pilot Program, applications pertaining to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction, will be advanced out of turn for examination without meeting all of the current requirements of the accelerated examination program (e.g., examination support document). The USPTO will accept only the first 3,000 petitions to make special in previously filed new applications, provided that the petitions meet the requirements set forth in this notice.

DATES:

Effective Date: December 8, 2009.

Duration: The Green Technology Pilot Program will run for twelve months from its effective date. Therefore, petitions to make special under the Green Technology Pilot Program must be filed before December 8, 2010. The USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.

FOR FURTHER INFORMATION CONTACT:

Pinchus M. Laufer and Joni Y. Chang, Senior Legal Advisors, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at 571-272-7726 or 571-272-7720; by facsimile transmission to 571-273-7726, marked to the attention of Pinchus M. Laufer; or by mail addressed to: Mail Stop Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

New patent applications are normally taken up for examination in the order of their United States filing date. See section 708 of the Manual of Patent Examining Procedure (8th ed. 2001) (Rev. 7, July 2008) (MPEP). The USPTO has a procedure under which an application will be advanced out of turn (accorded special status) for examination if the applicant files a petition to make special with the appropriate showing. See 37 CFR 1.102 and MPEP § 708.02. The USPTO revised its accelerated examination program in June of 2006, and required that all petitions to make special, except those based on applicant's health or age or the Patent Prosecution Highway (PPH) pilot program, comply with the requirements of the revised accelerated examination program. See Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination, 71 FR 36323 (June 26, 2006), 1308 Off. Gaz. Pat. Office 106 (July 18, 2006) (notice); see also MPEP § 708.02(a). Applications that are 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 (BPAI) and also in the patent publication process. See MPEP § 708.01 and 1309.

The USPTO is implementing a pilot program to permit applications pertaining to “green technologies” (i.e., applications pertaining to environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reduction) to be advanced out of turn without meeting all of the current requirements of the accelerated examination program set forth in item VIII of MPEP § 708.02(a) (e.g., examination support document). The USPTO will accept the first 3,000 petitions to make special under the Green Technology Pilot Program in previously filed new applications, provided that the petitions meet all of the requirements set forth in this notice. Upon receipt of more than 3,000 petitions, the USPTO may reevaluate the workload and resources needed to extend the pilot program.

Applications that are accorded special status under the Green Technology Pilot Program will be placed on an examiner's special docket prior to the first Office action, and will have special status in any appeal to the BPAI and also in the patent publication process. Applications accorded special status under the Green Technology Pilot Program, however, will be placed on the examiner's amended docket, rather than the examiner's special docket, after the first Office action (which may be an Office action containing only a restriction requirement).

Applicant may participate in the Green Technology Pilot Program by filing a petition to make special that meets all of the requirements set forth in this notice in a previously filed application. No fee is required. The $130.00 fee for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice. In addition, continuing applications will not automatically be accorded special status based on papers filed with a petition in a parent application. Each continuing application must on its own meet all requirements for special status.

Paperwork Reduction Act: This notice involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of information involved in this rule have been reviewed and approved by OMB under the emergency processing provisions of 5 CFR 1320.13. The USPTO will publish the notices required by 5 CFR part 1320 in due course.

I. Requirements: A petition to make special under the Green Technology Pilot Program may be granted in an application if the eligibility requirements set forth in section II or III and the following conditions are satisfied:

(1) The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371. The application must be previously filed before the publication date of this notice. Reexamination proceedings are excluded from this pilot program.

(2) The application must be classified in one of the U.S. classifications listed in section VI of this notice at the time of examination. See section VI for more information.

(3) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must not contain any multiple dependent claims. For an application that contains more than three independent claims or twenty total claims, or multiple dependent claims, applicants must file a preliminary amendment in compliance with 37 CFR 1.121 to cancel the excess claims and/or the multiple dependent claims at the time the petition to make special is filed.

(4) 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; or (3) greenhouse gas emission reduction (see the eligibility requirements of sections II and III of this notice). The petition must include a statement that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements in section II or III of this notice and is classified in one of the U.S. classifications listed in section VI of this notice. See section V of this notice for more information.

(5) The petition to make special must be filed electronically before December 8, 2010, using the USPTO electronic filing system, EFS-Web, and selecting the document description of “Petition for Green Tech Pilot” on the EFS-Web screen. Applicant should use form PTO/SB/420, which will be available as a Portable Document Format (PDF) fillable form in EFS-Web and on the USPTO Web site at http://www.uspto.gov/​web/​forms/​index.html. Information regarding EFS-Web is available on the USPTO Web site at http://www.uspto.gov/​ebc/​index.html.

(6) The petition to make special must be filed at least one day prior to the date that a first Office action (which may be an Office action containing only a restriction requirement) appears in the Patent Application Information Retrieval (PAIR) system. Applicant may check the status of the application using PAIR.

(7) 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).

II. Eligibility Requirements—Applications Pertaining to Environmental Quality: Patent applications for inventions which materially enhance the quality of the environment under the conditions specified in item V of MPEP § 708.02 will be eligible for the Green Technology Pilot Program. For an application pertaining to environmental quality, the petition to make special must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements. If the application does not clearly disclose that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, in accordance with 37 CFR 1.33(b) explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment. See MPEP § 708.02 (item V).

III. Eligibility Requirements—Applications Pertaining to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction: Patent applications are also eligible for the Green Technology Pilot Program if the applications are for inventions that 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. The term “renewable energy resources” for purposes of the procedure specified in this notice includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources. The second category would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances. The third category listed above would include, but is not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).

The petition to make special for an application directed to development of renewable energy or energy conservation, or directed to greenhouse gas emission reduction, must state the basis for the special status (i.e., whether the invention materially contributes to (1) development of renewable energy resources or energy conservation, or (2) greenhouse gas emission reduction). If the application disclosure is not clear on its face that the claimed invention materially contributes to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, in accordance with 37 CFR 1.33(b) explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, nor does the standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction. See MPEP § 708.02 (item VI).

IV. Decision on Petition to Make Special Under the Green Technology Pilot Program: If applicant files a petition to make special under the Green Technology Pilot Program, the USPTO will decide on the petition once the application is in condition for examination. If the petition is granted, the application will be accorded special status under the Green Technology Pilot Program. The application will be placed on the examiner's special docket prior to the first Office action, and will have special status in any appeal to the BPAI and also in the patent publication process. The application, however, will be placed on the examiner's amended docket, rather than the examiner's special docket, after the first Office action (which may be an Office action containing only a restriction requirement).

If applicant files a petition to make special under the Green Technology Pilot Program that does not comply with the requirements set forth in this notice, the USPTO will notify the applicant of the deficiency by issuing a notice and applicant will be given only one opportunity to correct the deficiency. If applicant still wishes to participate in the Green Technology Pilot Program, applicant must file a proper petition and make appropriate corrections within one month or thirty days, whichever is longer. The time period for reply is not extendable under 37 CFR 1.136(a). If applicant fails to correct the deficiency indicated in the notice within the time period set forth therein, the application will not be eligible for the Green Technology Pilot Program and the application will be taken up for examination in accordance with standard examination procedures.

V. Requirement for Restriction: If the claims in the application are directed to multiple inventions, the examiner may make a requirement for restriction in accordance with current restriction practice prior to conducting a search. The examiner will contact the applicant and follow the procedure for the telephone restriction practice set forth in MPEP § 812.01. Applicant must make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements in section II or III of this notice and that is classified in one of the U.S. classifications listed in section VI of this notice. See items 2 and 4 of section I of this notice. If the examiner cannot reach the applicant after a reasonable effort or applicant refuses to make an election in compliance with item 4 of section I of this notice, the examiner will treat the first claimed invention that meets the requirements in section II or III and section VI as constructively elected without traverse for examination.

VI. Classification Requirement: The classification requirement set forth in this section of the notice will assist the USPTO to balance the workload and gauge resources needed to achieve the goals of the Green Technology Pilot Program. The USPTO recognizes that certain patent applications pertaining to green technologies may be excluded by this requirement. After the twelve-month duration of the pilot program, the USPTO may extend the pilot program to include more classifications depending on the effectiveness of the pilot program and the resources availability.

In order to be eligible for the Green Technology Pilot Program, the application must be classified in one of the U.S. patent classifications (“USPCs”) listed below at the time of examination. The classification descriptions are provided as helpful information, and they will not be used in determining whether an application is eligible. An applicant may suggest a classification for the application, but the applicant may not know the classification of the application at the time of filing a petition to make special under the Green Technology Pilot Program. The USPTO will determine whether this requirement is satisfied once the application is in condition for examination and the petition is being decided.

The following is a list of the eligible classifications:

A. Alternative Energy Production

1. Agricultural waste (USPC 44/589).

2. Biofuel (USPC 44/605; 44/589).

3. Chemical waste (USPC 110/235-259, 346).

4. For domestic hot water systems (USPC 126/634-680).

5. For passive space heating (USPC 52/173.3).

6. For swimming pools (USPC 126/561-568).

7. Fuel cell (USPC 429/12-46).

8. Fuel from animal waste and crop residues (USPC 44/605).

9. Gasification (USPC 48/197R, 197A).

10. Genetically engineered organism (USPC 435/252.3-252.35, 254.11-254.9, 257.2, 325-408, 410-431).

11. Geothermal (USPC 60/641.2-641.5; 436/25-33).

12. Harnessing energy from man-made waste (USPC 75/958; 431/5).

13. Hospital waste (USPC 110/235-259, 346).

14. Hydroelectric (USPC 405/76-78; 60/495-507; 415/25).

15. Industrial waste (USPC 110/235-259, 346).

16. Industrial waste anaerobic digestion (USPC 210/605).

17. Industrial wood waste (USPC 44/589; 44/606).

18. Inertial (e.g., turbine) (USPC 290/51, 54; 60/495-507).

19. Landfill gas (USPC 431/5).

20. Municipal waste (USPC 44/552).

21. Nuclear power—induced nuclear reactions: processes, systems, and elements (USPC 376/all).

22. Nuclear power—reaction motor with electric, nuclear, or radiated energy fluid heating means (USPC 60/203.1).

23. Nuclear power—heating motive fluid by nuclear energy (USPC 60/644.1) Photovoltaic (USPC 136/243-265).

24. Refuse-derived fuel (USPC 44/552).

25. Solar cells (USPC 438/57, 82, 84, 85, 86, 90, 93, 94, 96, 97).

26. Solar energy (USPC 126/561-714; 320/101).

27. Solar thermal energy (USPC 126/561-713; 60/641.8-641.15).

28. Water level (e.g., wave or tide) (USPC 405/76-78; 60/495-507).

29. Wind (USPC 290/44, 55; 307/64-66, 82-87; 415/2.1).

B. Energy Conservation

1. Alternative-power vehicle (e.g., hydrogen) (USPC 180/2.1-2.2, 54.1).

2. Cathode ray tube circuits (USPC 315/150, 151, 199).

3. Commuting, e.g., HOV, teleworking (USPC 705/13).

4. Drag reduction (USPC 105/1.1-1.3; 296/180.1-180.5; 296/181.5).

5. Electric lamp and discharge devices (USPC 313/498-512, 567-643).

6. Electric vehicle (USPC 180/65.1; 180/65.21; 320/109; 701/22; 310/1-310).

7. Emission trading, e.g., pollution credits (USPC 705/35-45).

8. Energy storage or distribution (USPC 307/38-41; 700/295-298; 713/300-340).

9. Fuel cell-powered vehicles (USPC 180/65.21; 180/65.31).

10. Human-powered vehicle (USPC 180/205; 280/200-304.5).

11. Hybrid-powered vehicle (USPC 180/65.21-65.29; 73/35.01-35.13, 112-115, 116-119A, 121-132).

12. Incoherent light emitter structure (USPC 257/79, 82, 88-90, 93, 99-103).

13. Land vehicle (USPC 105/49-61 (electric trains); 180/65.1-65.8 (electric cars)).

14. Optical systems and elements (USPC 359/591-598).

15. Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32-46).

16. Static structures (USPC 52/309.1-309.17, 404.1-404.5, 424-442, 783.1-795.1).

17. Thermal (USPC 702/130-136).

18. Transportation (USPC 361/19, 20, 141, 152, 218).

19. Watercraft drive (electric powered) (USPC 440/6-7).

20. Watercraft drive (human powered) (USPC 440/21-32).

21. Wave-powered boat motors (USPC 440/9).

22. Wind-powered boat motors (USPC 440/8).

23. Wind-powered ships (USPC 114/102.1-115).

C. Environmentally Friendly Farming

1. Alternative irrigation technique (USPC 405/36-51).

2. Animal waste disposal or recycling (USPC 210/610-611; 71/11-30).

3. Fertilizer alternative, e.g., composting (USPC 71/8-30).

4. Pollution abatement, soil conservation (USPC 405/15).

5. Water conservation (USPC 137/78.2-78.3; 137/115.01-115.28).

6. Yield enhancement (USPC 504).

D. Environmental Purification, Protection, or Remediation

1. Biodegradable (USPC 383/1; 523/124-128; 525/938; 526/914).

2. Bio-hazard, Disease (permanent containment of malicious virus, bacteria, prion) (USPC 588/249-249.5).

3. Bio-hazard, Disease (destruction of malicious virus, bacteria, prion) (USPC 588/299).

4. Carbon capture or sequestration (USPC 95/139-140; 405/129.1-129.95; 423/220-234).

5. Disaster (e.g., spill, explosion, containment, or cleanup) (USPC 405/129.1-129.95).

6. Environmentally friendly coolants, refrigerants, etc. (USPC 252/71-79).

7. Genetic contamination (USPC 422/1-43).

8. Hazardous or Toxic waste destruction or containment (USPC 588/1-261).

9. In atmosphere (USPC 95/57-81, 149-240).

10. In water (USPC 210/600-808; 405/60).

11. Landfill (USPC 405/129.95).

12. Nuclear waste containment or disposal (USPC 588/1-20, 400).

13. Plants and plant breeding (USPC 800/260-323.3).

14. Post-consumer material (USPC 264/36.1-36.22, 911-921; 521/40-49.8).

15. Recovery of excess process materials or regeneration from waste stream (USPC 162/29, 189-191; 164/5; 521/40-49.8; 562/513).

16. Recycling (USPC 29/403.1-403.4; 75/401-403; 156/94; 264/37.1-37.33).

17. Smokestack (USPC 110/345; 422/900).

18. Soil (USPC 405/128.1-128.9, 129.1-129.95).

19. Toxic material cleanup (USPC 435/626-282).

20. Toxic material permanent containment or destruction (USPC 588/all).

21. Using microbes or enzymes (USPC 435/262.5).

Dated: November 30, 2009.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.