USPTO Implements Climate Change Mitigation Pilot Program | McDonnell Boehnen Hulbert & Berghoff LLP

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In a notice published last week in the Federal Register (87 Fed. Reg. 33750), the U.S. Patent and Trademark Office announced the implementation of the Climate Change Mitigation Pilot Program, “which is designed to have a positive impact on 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 round (that’s to say., special status) for a first appeal on the merits. Applications accepted under the pilot program will not, however, have to comply with all of the requirements of the expedited review program (for example., the requirement for an examination support document or the petition fee under 37 CFR § 1.17(h)) or the Priority Review Program (for example., the priority examination fee or the processing fee).

The Bureau began 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 Bureau accepts 1,000 eligible petitions, whichever comes first. The notice states that questions regarding a specific petition to be made special should be directed to the Petitions Office.

In order to participate in the pilot program, an applicant must meet the following requirements:

• File a non-provisional patent application ready for examination (including a specification, drawings, if applicable, at least one claim, and payment of all fees associated with filing the application). The application must claim a product and/or process that mitigates 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 of subclass Y02A, Y02B, Y02C, Y02D, Y02E, Y02P, Y02T or Y02W in the Cooperative Patent Classification (CPC) system’, and provides an example of an allowable claim to a process for capturing or removing methane, which would correspond to Y02C 20/20 The notice also states that the full Y02 class schedule can be found here When the petition is filed and throughout the duration of the petition, the petition cannot contain more than 3 independent claims or more than 20 claims in total and may not contain any multiple dependent claims.The national stage application or entry must be filed electronically using the Patent Center, and the description, claims and abstract must be submitted in DOCX format.

• File a petition to make special under the pilot program with (a) a non-provisional application of non-continuing original utility or entry into the national scene under 35 USC § 371 (which was filed electronically) , or within 30 days of the filing date or date of entry of the application, or (b) an original non-provisional utility application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120 , 121, 365(c) or 386(c) of a single prior non-provisional application or only a prior international application designating the United States (which was filed electronically), or within 30 days of the date of submission of this request. The notice defines a “non-continuing application” as an application that is not a continuation, divisional, or continuation application in part filed under the terms 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 believes in good faith that expediting the patent examination of the application is likely to have a positive impact on the climate; and (4) the inventor or any co-inventor was not named as an inventor or co-inventor in more than four other non-provisional applications in which a special creation application under the pilot program was filed.

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

Not file the application with a request for publication ban. If the application has already been filed with a request for publication ban, a cancellation of the request for publication ban must be filed no later than the time the special request petition is filed.

• File an application data sheet with the request (unless it has already been filed with the application).

If a Special Creation Request under the Pilot Program does not meet the above requirements, the Office will (under certain circumstances) notify the requester of the deficiency and allow the longer period of one month or 30 days to correct the deficiency (the notice response time is not extendable). Response to this Notice must be filed through the Patent Center. Petitions filed for applications that do not contain an eligible application; that claim the benefit of two or more previously filed applications that are non-provisional U.S. applications and/or international applications; or that have not been filed within at least 30 days of an eligible request will be rejected without an opportunity to correct the defect.

If an application under the pilot program is granted, the Bureau notes that the accepted application will be placed on the special list of an examiner until a first Bureau decision 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 upon review and will be placed on the examiner’s regular amended record.

The notice indicates that if the examiner imposes a telephone restriction requirement, the applicant must make a choice without going through an invention that meets the program’s eligibility criteria. If the applicant refuses to make a choice, the special status of the application will be terminated. The Notice also states that if an Amendment in Response to a First Action is filed that is not fully compliant, the Examiner may, at its discretion, grant a shortened statutory time limit of 2 months for the Applicant to provide a fully compliant response. . The notice states that if “[t]there 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 should independently qualify to participate in the pilot program, however.

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