by Ben Armitage
Many companies involved in developing Greentech products or services become discouraged upon learning that the process to obtain a United States patent can take upwards of 2-4 years (depending on the “art group” and other factors). In that time, competitors may enter their space, investors may have come and gone and products may have evolved past their original idea. One option that is available to hasten the issuance of a U.S. patent is through the use of a Petition to Make Special (37 CFR 1.102).
A successful Petition to Make Special allows the applicant to “cut in line” and have their patent application examined ahead of others in the queue. In order to qualify for such a petition, an applicant must show that they meet one of the following criteria: advanced age or poor health of the inventor or that the invention materially enhances the quality of the environment, contributes to the development or conservation of energy resources or contributes to countering terrorism. In the case of Greentech companies, their ideas may be eligible under the environmental or energy clauses.
A Greentech applicant must show that their invention “materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements” or contribute to “the discovery or development of energy resources” or to “the more efficient utilization and conservation of energy resources” (MPEP 708.02). For many companies working in this sector, these requirements may not be difficult to meet.
Sounds great, right? Here’s the catch: since 2006, applicants for Petitions to Make Special are further subject to the requirements under Accelerated Examination procedures (MPEP 708.02(a)). The Accelerated Examination procedure requires that the applicant conduct their own prior art search, including an identification of the field of search, subclasses searched, date of search, databases searched and search logic. The search must include U.S. patents, published applications, foreign patent documents and non-patent literature. Additionally, the applicant must provide the citations in each reference provided as to where the claimed elements are disclosed, how each claim is patentable over each reference and where each claim has support in the specification of the patent application.
Without even considering the “upfront” cost of having a patent attorney meet those requirements at the time of filing, the idea that an applicant has to do the patent examiner’s job for them is daunting enough. A patent attorney’s task is to obtain the broadest possible scope of invention in an issued patent, while at the same time adding as little written analysis and conclusions in the file history as is reasonable. The more written history in the file that exists, the more chances a litigator has to argue possible errors or mistakes made that could potentially invalidate your patent in a future infringement trial. By using a Petition to Make Special, an applicant is forced to do both the searching and complete analysis of the invention which becomes part of the file history. If that patent is ever litigated, the chances that the applicant or the applicant’s attorney performed a perfect search or perfect analysis is slim, which results in a high chance the patent will be deemed invalid.
For Greentech companies, the use of a Petition to Make Special was a very valid path a few years ago, but in light of today’s requirements, it is a path that must be tread with the utmost of care or not tread at all.