Concerns about global warming and government efforts to make chemicals more environmentally friendly are driving the pharma and biopharma industries to bio-based chemical technologies. One such effort was recently announced by U.S. Commerce Secretary Gary Locke just prior to the United Nations Climate Change Conference in Denmark. The United States Patent and Trademark Office (USPTO) has now implemented a Green Technology Pilot Program in which an applicant may have a patent application advanced out of turn—i.e., accorded special status—for examination if the application is directed to certain "green" technologies such as environmental quality, energy conservation, development of renewable energy resources and greenhouse gas emission reduction.
Previously, an application relating to such technologies was not advanced out of turn for examination unless it met the burdensome and expensive requirements of the accelerated examination program, which included the preparation of an examination support document that identifies and summarizes the prior art and specifically distinguishes the claimed invention.
Who Can Qualify?
In order to qualify under the Green Technology Pilot Program, the patent application must be a non-provisional or international application filed prior to December 8, 2009 and be classified in one of the fifty-eight eligible pre-chosen U.S. patent classifications. Of those, the USPTO will accept only the first 3,000 petitions to make special, provided that the petitions meet the requirements set forth in the following Notice published on December 8, 2009, in the Federal Register. (Note: The Program's limited applicability may be due to the USPTO's fear that there would be a huge influx of new applications and petitions, and they would not be able to handle them quickly and defeat the purpose of the program. Hopefully after the first year and/or 3000 petitions, the program will be extended and new examiners can be hired.)
There is good news, however. The USPTO has recently indicated that it will be lifting the class/subclass restrictions on the Pilot Program soon, which will open the program up to more pharma technologies/companies.
At the Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting held March 2, 2010 at the USPTO, Blaine Copenheaver (Supervisory Patent Examiner, Technology Center 1700) gave a presentation on the new Green Technology Pilot Program, which included recent statistical data on petition grant/denial rates as well as common pitfalls to avoid in the petition process. The presentation can be found here.
As of March 1, 2010, eight hundred (800) petitions had been filed under the Program with only two hundred twenty three (223) being granted. Thirty five (35) of the petitions had been filed in Technology Center 1600 (Biotechnology and Organic Chemistry), whereas two hundred seventy five (275) had been filed in Technology Center 1700 (Chemical and Materials Engineering). It was also indicated in the presentation that greater than 80% of the four hundred thirty seven (437) dismissals were due to failure to meet the U.S. patent classification requirement.
The Green Technology Pilot Program will run for twelve months from its effective date; therefore, petitions to make special under the Program must be filed before December 8, 2010. The USPTO may extend the Program (with or without modifications) depending on the feedback from the participants and the effectiveness of the Program. Given that the average pendency of patent applications examined in turn is about thirty five (35) months compared to two hundred ninety six (296) days for applications entitled to accelerated examination, pharma and biopharma companies should carefully consider taking advantage of this new procedure to quickly bring their new green technologies to market.
About the Author
Peter A. Jackman is a Director at Sterne, Kessler, Goldstein & Fox PLLC, an intellectual property law firm based in Washington, DC. He can be contacted at [email protected].