UPDATED: US fast-tracks green tech under new scheme

With the pressing need for countries to meet climate change targets, the US Patent and Trademark Office (USPTO) is inviting applicants to join a scheme that promises to fast-track the examination of certain green-tech patent applications.

The aim is to accelerate the development of clean and green energy technologies. USPTO director Kathi Vidal wrote in a  blog: “It’s essential to protect these transformative energy innovations with IP. Innovation is a primary driver of the US economy, and IP is the bridge between an idea and bringing that innovation to market.”

And in an address at an  energy innovation summit in Colorado on May 24, Vidal said that green tech development is “booming”, with the Patent Tech Center receiving 40,000 patent applications last year, “constituting almost 7% of yearly patent applications across all fields of technology”.

Under the  new scheme, applicants will not incur the usual ‘Petition for Accelerated Exam’, which can range between $2,000 and $4,000 per application. And it is limited to 1,000 applicants, who can only file one ‘parent’ and one ‘child’ application.

Darren Jiron, managing partner of the London office at Finnegan, says: “This is a pretty interesting requirement, which means that in addition to you being the first person to come to the patent office, and the first application that we file as a ‘parent’...you can actually take advantage of the programme for a ‘child’ application for one of these continuing applications.

“But it can only be the first one. Once you do it for one child application, you can't then do it for any others. I suspect the reason is that it prevents any one entity from taking too much of their share or too much advantage of it.”

The key requirements are: “(1) That the claimed invention covers a product or process that mitigates climate change; (2) that the product or process is designed to reduce greenhouse gas emissions; (3) that the applicant has a good faith belief that expediting patent examination of the application will likely have a positive impact on the climate; and (4) that the inventor or any joint inventor has not been named as the inventor or a joint inventor on more than four other non-provisional applications in which a petition to make special under this programme has been filed.”

Fast-track pros and cons

Jiron believes that the scheme will be of “gigantic benefit” to applicants. He explains that it can ordinarily take one or two years to obtain a first office action—or the start of the examination process. This happens within a few months when an application is fast-tracked, for example with the USPTO’s Track One accelerated examination scheme.

“It's not uncommon to go from filing an application to grant of a patent in a year or even less,” he explains. “In many cases I've had, it's been six to 10 months or so.”

But David Walsh, partner at UK-based Appleyard Lees, is more sceptical. While he concedes that the US pilot offers the clear benefit of “preferential treatment”, he argues that it isn’t as broad as the UK’s  Green Channel, which he says fast-tracks a broader selection of technology that is environmentally beneficial.

And Walsh—who was one of the main drivers behind an Appleyard Lees  green innovation report last year—says that while the main benefit of an accelerated programme could help to secure funding, he questions the wider benefits.

“What advantage is it to actually have your examination report issued earlier?” he asks. “The obvious advantage is that you may be able to secure funding if you've got a granted patent. Certain investors might be more nervous about having only a pending patent application.

“But a lot of investors are a bit more savvy than they used to be, and realise that the patenting process takes a while, and they're going to do their own due diligence anyway.”

Tani Chen, a shareholder at Wolf Greenfield, chimes with Walsh’s concerns over the scheme’s restrictions. “It is limited to relatively new technologies that have been recently filed, and it is restricted to only certain categories of clean technologies.

“For example, more efficient energy production techniques or recycling processes may not be covered. There may be some early-stage companies that have the right technologies and timing to fit within their framework, but companies developing other types of cleantech, and more developed companies, may not benefit as much.

“More developed companies are likely to be more reliant on earlier-filed IP that cannot be included in this programme.”

Chen adds that there are a number of other procedural hurdles similar to those in other USPTO fast-track schemes. “For instance, some of them have to do with filing the application via the Patent Center in ‘.docx’ format,” he explains.

“However, one of the bigger hurdles will be being able to certify that the cleantech clearly falls within the specified categories.”

Jiron agrees, though, with Walsh’s point about funding: “While we have this pilot that gives us access more quickly to potential patent grants, it's really important to develop a claim strategy so that the patents actually perform the function that the applicant intends. And really, that's the number one goal of all patents.

“The way I think about them is that we want to develop claims that impact potential competitors, because those claims are going to be valuable to the inventor or the company that is putting forth the application, therefore, a higher likelihood of getting a good return on the investment.”

Impact on innovation

These claims are not only valuable to the company or the inventor, but they also become more valuable to the technology space as a whole because of their impact on competitors, says Jiron, who thinks fast-track examinations “will encourage more rapid innovation from everyone”.

“I can take advantage of the purpose of this pilot programme, I can get a patent granted very quickly. But if it doesn't have claims that are important to any of the players in the field, then [those claims are] not going to cause any development and innovation, and they're not going to provide their applicant with value.

“So it's really important to have a strategy in mind and to get claims that serve their purpose on both of those goals,” he adds.

The other advantage, says Walsh, to having an accelerated scheme is “you can sue for infringement because you get a patent a little bit quicker.”

But he is unconvinced that for green technology, getting a patent granted quickly would have specific benefits over other technology areas.

“In pharmaceuticals, it can be important, but there are only certain products that you need to have a granted patent for very quickly. It's quite marginal though. You might have a device that is going to go to market quite quickly and you're likely to enforce it quite quickly. It's not a typical business plan; a typical business plan is that a patent gets granted before it's infringed,” says Walsh.

The long view

Could this scheme have a long-term future? Jiron believes it’s possible. “[The USPTO] is pretty innovative when it comes to different programmes. For example,  Track One was actually put out as a pilot, just like this climate change one is a pilot. So, depending upon the response, it could grow and become a permanent fixture.”

Chen believes the new scheme should be expanded, arguing that it is unlikely to significantly benefit many cleantech companies.

“Some cleantech companies may find that their technologies are in the wrong areas and thus cannot qualify.

“It would be most interesting to an early-stage company in the right technology space that could benefit from quick prosecution in order to raise money or develop partnerships, etc. However, as entering the programme also requires additional costs (for example, in needing to prosecute the patents more quickly), a lot of early stage companies may also not be interested in entering this programme until they have stabilised their funding situation.”

Jeff Whittle, Womble Bond Dickinson partner and energy and natural resources sector co-lead in Houston, Texas, agrees that there are benefits in providing a quicker route to examination and potential patent grant. He adds: “It allows applicants potential early protection for the green technology advancements and enhances potential commercialisation and investment opportunities in these innovations.”

But the scheme could be improved yet, he says: “Because the special status appears to only apply to the first examination and not the whole examination process like Track One provides, the programme [could] be improved by making it more similar to Track One for the entire examination process and to applicable related applications.

“Although welcomed and currently beneficial in its present form, additional Track One-type speed to examination and speed to grant provisions, and a larger number of accepted applications, would provide even greater commercialisation and investment opportunities for applicants and spur on the economic engines and activities in this growing and developing space.”

But Jiron maintains that the climate change mitigation pilot is a great opportunity.

“There are no downsides,” says Jiron. “If you qualify, then you are getting a really terrific benefit for no extra costs. So, the only obstacles that I would perceive for an applicant are just to adhere to the requirements of the programme, so that you ensure you get accepted.”

The  application window opened on June 3 and will close on June 5 2023.