USPTO Implements Climate Change Mitigation Pilot Program

By Donald Zuhn —

In a notice published last week in the Federal Register (87 Fed. Reg. 33750), the US Patent and Trademark Office announced the implementation of the Climate Change Mitigation Pilot Program, “which is designed to positively impact the climate by accelerating the examination of patent applications for innovations that reduce greenhouse gas emissions” and “encourage research, development and innovation in the climate space.” Applications accepted under the pilot program will be advanced out of turn (ie., accorded special status) for a first action on the merits. Applications accepted under the pilot program will not, however, have to comply with all of the requirements of the accelerated examination program (eg., the requirement for an examination support document or the petition fee under 37 CFR § 1.17(h)) or the prioritized examination program (eg., the prioritized examination fee or processing fee).

The Office started accepting petitions to make special under the pilot program on June 3, 2022, and petitions will continue to be accepted under the pilot program until June 5, 2023 or when the Office has accepted 1,000 grantable petitions, whichever occurs first. The notice indicates that questions regarding a specific petition to make special should be directed to the Office of Petitions.

In order to participate in the pilot program, an Applicant must satisfy the following requirements:

• File a nonprovisional patent application that is ready for examination (including a specification, drawings, if necessary, at least one claim, and payment of all fees associated with the filing of the application). The application must claim a product and/or process that mitigate climate change by reducing greenhouse gas emissions. The notice states that a claimed invention covers a product or process that mitigates climate change “when an application includes a claim that would correspond to one or more of the technical concepts within subclass Y02A, Y02B, Y02C, Y02D, Y02E, Y02P, Y02T or Y02W in the Cooperative Patent Classification (CPC) system,” and provides an example of an eligible claim being one to a process to capture or dispose of methane, which would correspond to Y02C 20/20. The notice also indicates that the full schedule of Y02 class can be found here. When the petition is filed and throughout the pendency of the application, the application cannot contain more than 3 independent claims or more than 20 total claims and cannot contain any multiple dependent claims. The application or national stage entry must be electronically filed using a Patent Center, and the specification, claims, and abstracts must be submitted in DOCX format.

• File a petition to make special under the pilot program along with (a) a noncontinuing original utility nonprovisional application or entry into the national stage under 35 USC § 371 (that has been electronically filed), or within 30 days of the filing date or entry date of the application, or (b) an original utility nonprovisional application claiming the benefit of an earlier filing date under 35 USC §§ 120, 121, 365(c), or 386(c) of only one prior nonprovisional application or only one prior international application designating the United States (that has been electronically filed), or within 30 days of the filing date of such application. The notice defines a “noncontinuing application” as an application that is not a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 USC §§ 120, 121, 365(c), or 386(c) and 37 CFR § 1.78.

• Certify that (1) the claimed invention covers a product or process that mitigates climate change; (2) the product or process is designed to reduce greenhouse gas emissions; (3) 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) the inventor or any joint inventor has not been named as the inventor or a joint inventor on more than four other nonprovisional applications in which a petition to make special under the pilot program has been filed.

• Use Form PTO/SB/457 to comply with the petition and certification requirements. The PTO/SB/457 form must be filed electronically using Patent Center, and form must be filed using the document description indicated on the form.

Not file the application with a nonpublication request. If the application was previously filed with a nonpublication request, then a rescission of the nonpublication request must be filed no later than the time the petition to make special is filed.

• File an Application Data Sheet with the petition (unless previously filed with the application).

If a petition to make special under the pilot program does not comply with the above requirements, the Office will (in some circumstances) notify the Applicant of the deficiency and give the Applicant the longer than one month or 30 days to correct the deficiency (the deadline to respond to the notice is not extendable). The reply to that notice must be filed via Patent Center. Petitions filed for applications that do not contain an eligible claim; that claim the benefit of two or more prior filed applications that are nonprovisional US applications and/or international applications; or that were not filed within at least 30 days of a qualifying application will be dismissed without the opportunity to correct the deficiency.

If a petition under the pilot program is granted, the Office notes that the accepted application will be placed on an Examiner’s special docket until a first office action on the merits has been issued, and after the first action on the merits has been issued, the application will no longer be treated as special during examination and will be placed on the Examiner’s regular amended docket.

The notice indicates that if the Examiner makes a telephone restriction requirement, the Applicant must make an election without traverse to an invention that meets the program’s eligibility requirements. If the Applicant refuses to make an election, then the special status of the application will be terminated. The notice also indicates that if an amendment in response to a first action is filed that is not fully responsive, the Examiner may, at their discretion, provide a shortened statutory period of 2 months for the Applicant to supply a fully responsive reply. The notice states that while “[t]here is no provision for withdrawal from the pilot program,” an Applicant may abandon an application that has been granted special status under the pilot program in favor of a continuing application. The continuing application would have to independently qualify for participation in the pilot program, however.

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