By Donald Zuhn —

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 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 (i.e., 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 (e.g., the requirement for an examination support document or the petition fee under 37 C.F.R. § 1.17(h)) or the prioritized examination program (e.g., 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 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 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 Patent Center, and the specification, claims, and abstract 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 U.S.C. § 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 U.S.C. §§ 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 U.S.C. §§ 120, 121, 365(c), or 386(c) and 37 C.F.R. § 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 of 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 U.S. 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.

By Donald Zuhn —

USPTO Terminates Rospatent as ISA and IPEA for International Applications

In a News Brief issued last week, the U.S. Patent and Trademark Office announced that it had notified the Russian Federal Service for Intellectual Property, ​Patents and Trademarks (Rospatent) of the USPTO's intent to terminate ​its agreement concerning Rospatent functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications received by the USPTO as a Receiving Office under the Patent Cooperation Treaty (PCT).  The USPTO noted that the termination will take effect on December 1, 2022.  In announcing the termination, the USPTO suggested that "[i]n the interim, applicants filing international applications under the PCT are advised to exercise caution before selecting Rospatent as an ISA or IPEA."

Patent Docs readers will recall that in March, the USPTO announced the termination of engagement with Rospatent (and also with the Eurasian Patent Organization (EAPO) and National Center of Intellectual Property (NCIP) in Belarus), and then announced that it would no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when such requests were based on work performed by Rospatent as an Office of Earlier Examination under the GPPH, and then advised Applicants filing international applications under the Patent Cooperation Treaty (PCT) to exercise caution before selecting Rospatent as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

USPTO Unveils New Patent Quality Metrics Webpage

In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced the launch of a new quality metrics webpage (see below), which shares the metrics that the Office uses to gauge patent examination quality.  In unveiling the new webpage, the Office noted that it is committed to "advancing a patent system that works for the public good," and as such was "focusing on [its] mission to issue robust and reliable patents that incentivize and protect innovation and investments."  The Office declared that "[t]he first step in that process is looking at patent quality, processes, and perceptions."  According to the Office's email, the new webpage reveals how the Office assesses the quality of its processes and measures stakeholder perceptions.  The Office notes that moving forward, it will use the data on the webpage, as well as internal, Patent Public Advisory Committee, and other stakeholder input, to guide patent examination improvements.  The Office also noted that it is soliciting and considering quality measures and changes, and asked that feedback or questions about the Office's patent quality metrics be sent to qualitymetrics@uspto.gov or patentquality@uspto.gov.  The quality metrics webpage can also be accessed through the Office's Patents Data Visualization Center webpage.

USPTO Reopens Facilities to the Public

In a News Brief distributed to stakeholders last month, the U.S. Patent and Trademark Office announced that it had entered Phase 3 and had reopened its facilities to the public.  The Office noted that on May 25, it had "fully reopened all locations to employees and resumed some in-person events and appointments for the public."  The Office noted that visitors should review its health questionnaire prior to entering one of the Office's locations, and may not enter facilities if they answer "yes" to any of the following questions on the questionnaire:

1.  In the last 10 days, have you tested positive for COVID-19 or been told by a healthcare provider that you are presumed positive?
2.  In the last 48 hours, have you experienced any of the below symptoms that cannot be explained by something other than COVID-19?
3.  If you have recently traveled (internationally or domestically), are you currently subject to any federal, state, tribal, or local quarantine or isolation requirements (requirements may vary depending on your vaccination status)?
4.  In the last 10 days, have you been in close contact (6 feet or closer for a cumulative total of 15 minutes over a 24-hour period) with an individual who tested positive or is presumed positive for COVID-19, or has any health official or medical provider informed you that you have potentially been exposed to COVID-19? [The last question applies to visitors who "are not up to date on [their] COVID-19 vaccinations and have not had COVID-19 within the last 90 days".]

The Office noted that its continues to monitor local conditions for all of its locations as determined by the Center for Disease Control's (CDC) COVID-19 community levels, and that such levels can be low, medium, or high.  In communities with low or medium transmission levels, wearing a mask in the Office's buildings is optional, and in communities with high transmission levels, wearing a mask in the Office's buildings is mandatory.  The Office's locations are:  Alexandria, VA; Dallas, TX; Denver, CO; Detroit, MI; and San Jose, CA.  Additional information on the USPTO's COVID-19 protocols can be found at the Office's COVID-19 webpage.