The Problem with the PTO Pilot Program to Accelerate Examination of “Green Technologies”

by Mark Malek

Back in December, the USPTO announced a pilot program to accelerate examination of patent applications directed to “green technologies.”  Oddly enough, this announcement came just before the United Nations Climate Change Conference in Denmark.  I will refrain from ranting about the politics of this, but I only wonder if the USPTO will decide to accelerate examination of those technologies that may have an impact on any other upcoming international conferences.  I think national defense and anti-terrorism are pretty big topics nowadays, but I still have not seen anything in the Federal Register about accelerated examinations of patent applications in those fields.  Well, enough of that.

The pilot program aims to decrease the pendency time for patent applications in certain green technologies.  The current pending time (i.e., number of months between filing an application and receiving a final decision), according to the article, is about 40 months – with an average of 30 months passing before a first Office Action is mailed to the applicant.  By my count, that’s not bad compared to several other technological fields.  I represent some clients that have patent applications which have been pending for going on four years.  The pilot program is open to the first 3000 patent applications related to green technologies in which a proper petition is filed.

I am not completely knocking this.  Clearly, the USPTO recognizes that in order for many of these technologies to get off the ground, the inventors likely need some investment capital.  In this economy, there are fewer investors than ever who are willing to take a big plunge on a new technology that may not even be patentable.  In other words, the filing of a patent application is no guarantee that a patent will eventually issue.  If these inventors are waiting around for close to three years just to get an initial Office Action which, incidentally is a rejection most times, then for the most part, it will be extremely difficult for them to begin developing and testing the invention.

So what’s the problem with this new initiative by the USPTO?  Where are they going to get the examiners to handle the extra load?  The answer is easy – there will be no additional examiners.  At the current time, the budget for the USPTO does not allow for the hiring of additional examiners.  Maybe they will move some examiners from different art units to handle the additional load.  Whatever the case may be, this boils down to a simple numbers game.  If one is going to attempt to cram more examinations into a shortened period of time, one of three things has to happen: (1) more examiners are hired; (2) examiners put in overtime hours to handle the extra load; or (3) more applications will not be examined – instead the pendency of applications that have not been granted special status will be increased.  Of the three options above, I suggest that the third option, unfortunately, is the likely scenario.

I suspect if one were to analyze the pendency time frame for green technologies about a year from now, and excluded those applications for which special status has been granted, the pendency rate will be increased far beyond 30 months.  Although the pilot program has its flaws, it is a step in the right direction.  This is a field of technology that should have some spotlight and should be prioritized.  My only problem is that green technologies should not be prioritized to the detriment of other technologies.

There is a solution to this problem – HIRE MORE EXAMINERS.  The budget of the USPTO is based, almost exclusively, on fees.  Anyone familiar with the patent system know that there is a fee for everything – filing fee, publication fee, issue fee, maintenance fee, fee for paying a fee fee, etc.  Surprisingly, however, the USPTO generally runs at a profit.  That is a bit misleading.  The USPTO is given a particular budget.  Any funds that are collected in fees in excess of that budget, however, are siphoned off and sent back to the U.S. Treasury, perhaps to fund some ridiculous new bill, like the health care bill, for example (there, the cats out of the bag – I was against the health care reform bill).  If more examiners are hired, then more applications can be processed in a shorter period of time, which means more fees can be generated, and so on and so forth.  Seems like common sense, eh?  Maybe I’m just oversimplifying the situation.