In the rapidly developing solar technology space, companies are eager to secure intellectual property rights covering their inventions. Patent rights (i.e., the exclusive right to make, use, sell or license a product covered by the patent) only exist once a patent has been issued.
Patent rights (or a lack thereof) can affect a company's ability to license or sell its solar technology, secure funding from investors, or otherwise gain a competitive advantage in the marketplace.
Because of the examination backlog at the U.S. Patent and Trademark Office (USPTO), it can take several years (over three years, on average, for applications related to green technologies) to obtain an issued patent.
During this time, patent applicants have limited options for enforcing and limited leverage for monetizing their intellectual property rights. Fortunately, a number of options now exist for patent applicants with solar technologies to expedite the examination process at the USPTO.
- Three-Track Program: Track I. Track I is a component of a newly established three-track program proposed by the USPTO. Under Track I, patent applicants may request prioritized examination. The goal of prioritized examination is to complete the examination process within a year.
The examination process is deemed complete when, for example, the patent application is allowed or a request for continued examination is filed. The prioritized examination status expires once the examination process is completed. The requirements for receiving prioritized examination under Track I include filing a complete application via the USPTO's electronic filing system (EFS-Web), having no more than fourÂ independent claims and 30 total claims, and paying an additional fee of $4,000.
The USPTO is capping requests for prioritized examination under Track I at 10,000 patent applications for the first year and anticipates implementing the program in May or June. Track I is available only for patent applications filed on or after the date of implementation.
- Petition to Make Special (PTMS). The PTMS includes a number of options. For example, an application – regardless of the technology of the invention – may receive accelerated examination if at least one of the inventors is 65 years of age or older.
Other examples include prospective manufacture (capital and facilities to manufacture the invention are contingent on an issued patent covering the invention) and actual infringement. Depending on the petition, a minimal cost may be levied by USPTO, and additional documentation may be required to substantiate the basis for the PTMS.
- Green Technology Pilot Program (GTPP). The GTPP is a special program under PTMS and is open to solar technologies that are directed toward the development of renewable energy resources or energy conservation. The GTPP will close at the earlier of Dec. 31 or the acceptance of the 3,000th petition to the program.
As of Feb. 21, 1,332 petitions have been granted, and an additional 224 petitions are under review. The GTPP is open to new and non-published currently pending patent applications that have not received a first office action from the USPTO.
Further, the patent application must be filed using EFS-Web and may contain no more than three independent claims and 20 total claims. There is no cost to participate in the program, and the patent applicant is not required to provide any additional documentation.
- Accelerated Examination (AE). AE is another program implemented under the PTMS, and is essentially identical to the GTPP, with a few notable exceptions. Specifically, under AE, the patent applicant is required to provide an AE support document to the USPTO.
In exchange for the support document, the USPTO prioritizes the examination of the patent application throughout the entire prosecution of the patent application. The document must include (i) a statement that a prior art search was performed by the patent applicant, (ii) a listing of references that the patent applicant deems most closely related to the invention, (iii) an analysis of which parts of the invention each reference teaches, and (iv) an explanation of why the invention is patentable over each of the references.
This support document will become a public record once the patent issues and may present challenges during enforcement of the issued patent. While the cost to perform the necessary search and prepare the support document varies, patent applicants should anticipate approximately $5,000 in additional search and legal fees to prepare the support document.
For solar technology companies that have not yet filed a patent application with the USPTO, the PTMS and GTPP should be considered first. These programs provide patent applicants with prioritized examination at no additional cost. If the PTMS and GTPP are unavailable, patent applicants should balance the potential enforcement risks related to preparing a support document required under AE with the limited prioritized examination under Track I.
Finally, for patent applications that have already been filed with the USPTO (but have not received the first action), patent applicants should consider petitioning to the GTPP to accelerate the examination process.
Tim M. Smith and Kelly McKinney are both patent attorneys at Osha Liang LLP. Smith can be contacted at firstname.lastname@example.org. McKinney can be contacted at email@example.com.
Photo credit: U.S. Department of Energy's National Renewable Energy Laboratory