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The United States Patent and Trademark Office (USPTO) Green
Technology Pilot Program has closed and is no longer accepting
additional applications. Applicants can no longer request advanced
examination for inventions related to green technologies without
paying additional government fees. The program officially closed
earlier this year upon acceptance of the 3,500th petition to enter
the program.
The pilot program began in December 2009 and ran for over two
years. During that time, patent applications within the program
were examined on an expedited basis, with applicants typically
receiving a first Office Action within 3 – 6 months and
final disposition within 12 months. The program was a remarkable
success, resulting in nearly 1,000 issued patents within the 2
years. In contrast, it typically takes about 2 years before a
patent application is first examined and a first Office Action
received, and it can often take another 1 – 3 years of
prosecution before receiving an issued patent.
Even though the USPTO's Green Technology Program has ended,
there are still other remaining options available to applicants who
are seeking expedited examination at the United States Patent
Office.
The first option is the Prioritized Examination (Track I)
Program, which was implemented last September as part of the
America Invents Act. However, the cost of participating in
this program is a hefty $4,800 USD in government fees (reduced to
$2,400 for a small entity).
Thankfully there is another cost-effective option for applicants
seeking patent protection in both Canada and the U.S. The Canadian
Intellectual Property Office (CIPO) has an ongoing Green Technology
initiative, which is free. This program offers advanced examination
of a Canadian patent application if an applicant submits a
Declaration indicating that the application relates to a
technology, which upon commercialization would help to resolve or
mitigate environmental impacts or to conserve the natural
environment and resources.
Similar to the U.S. program, substantive examination of a
Canadian Green Technology patent application usually begins within
about two months of receiving a request to enter the
program.1 Furthermore, once an application is allowed in
Canada, an applicant can leverage their allowed Canadian claims to
request expedited examination of their corresponding U.S. patent
application using the Patent Prosecution Highway (PPH). Unlike the
Prioritized Examination (Track I) Program, there are no additional
fees to utilize CIPO's PPH program.
While CIPO's Green Technology program has been available for
over a year, very few applicants have taken advantage of this
option and CIPO currently lists only about 50 green technology
applications. One possible reason for the initial lack of interest
is that applicants may have been concerned that filing the required
Declaration could provide a basis for invalidating their patent for
lack of good faith under section 73(1)(a) of the Patent
Act.2 However, in view of the recent decision in
Weatherford Canada Ltd. v. Corlac Inc.3, fears
that an issued patent can be invalidated on the basis of lack of
good faith during prosecution have largely been put to
rest.
Applicants interested in filing a patent application under any
of these advanced examination programs should consult a qualified
patent practitioner to discuss options, strategies, costs, and
risks, as these programs tend to be highly technical and are often
more complicated than a standard patent filing.
Footnotes
1 CIPO has set a two-month service standard for all
applications proceeding under the Green Technology Program. This
service standard applies to the first office action as well as all
subsequent office actions.
2 Previously, the decisions in G.D. Searle & Co. v.
Novopharm Ltd., 2007 FC 81, and Lundbeck Canada Inc. v.
Ratiopharm Inc., 2009 FC 1102 suggested that a patent could be
invalidated on the basis of retroactive deemed abandonment of a
patent application for lack of good faith under section
73(1)(a).
3 2011 FCA 228, leave to appeal denied March 29, 2012.
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guide to the subject matter. Specialist advice should be sought
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