A quarterly newsletter from the Intellectual Property Practice Group at Thompson Coburn LLP
TC’s inside IP
Green Tech Gets the Green Light By William Holtz, Ph.D.
In December 2009, the United States Patent and
Trademark Office (USPTO) implemented a pilot pro-
gram to accelerate the examination of certain patent
applications pertaining to green technologies. These
technologies include improving environmental quality,
energy conservation, renewable energy resources
and reducing greenhouse gas emissions.1 In a news
release announcing the Green Technology Pilot Pro-
gram, the USPTO stated “The new initiative, coming
days before the United Nations Climate Change Con-
ference in Copenhagen, Denmark, will accelerate the
development and deployment of green technology,
create green jobs, and promote U.S. competitiveness
in this vital sector.”2 U.S. Commerce Secretary Gary
Locke was quoted as saying “by ensuring that many
new products will receive patent protection more
quickly, we can encourage our brightest innovators
to invest needed resources in developing new tech-
nologies and help bring those technologies to market
more quickly.”
The goal of the Green Technology Pilot Program is
to decrease the pendency of previously filed appli-
cations. According to the USPTO, it currently takes
about 30 months for applications in green technology
areas to receive a first office action and 40 months
to receive a final decision. The pilot program allows
applicants to petition to have their green technology
applications examined out of turn, thus reducing the
time it takes to obtain a patent by about one year.
Under the pilot program, the USPTO will accept the
first 3,000 petitions to make special for non-provi-
sional utility applications filed before December 8,
2009, that have not yet received a first office action.3
The program does not include applications filed after
December 8, 2009, and thus is not necessarily an
incentive to file new green technology applications.
Petitions to make special under the pilot program
must be filed before December 8, 2010. Eligible
applications must be ones assigned to an approved
art classification.4 Although the eligible classifications
currently do not cover all areas of green technologies,
depending on the effectiveness of the pilot program
and the resources available, the program may be
extended to include more classifications in the future.
Petitions to make special must be accompanied by
a request for early publication and an early publica-
tion fee if the application has not been published.
Eligible applications may contain a maximum of three
independent and twenty total claims. Claims may be
amended or canceled to meet this requirement. The
USPTO has also indicated that for applications cur-
In This Issue
Green Tech Gets the Green Light by William Holtz, Ph.D. ............................................................ 1
Federal Circuit “Messes with Texas” on Motions to Transfer by Jason M. Schwent ....................... 3
Lowering the Bar for Filing Declaratory Judgment Actions: Triggering Declaratory
Judgment Jurisdiction by Pamela M. Miller ...................................................................................5
Are Test Results Required to Show the Utility of an Incredible Pharmaceutical Invention?
by Steven M. Ritchey and Charles P. Romano Ph.D. ..........................................................................6
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