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Idea for green tech patents gets mixed reviews

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A federal plan to boost green technology innovation by dramatically cutting the patent processing time is drawing mixed reaction from intellectual property attorneys in Indiana as they wonder whether the pilot program will help or hurt their clients.

The United States Patent and Trademark Office late last year launched what it calls the Green Technology Pilot Program. The one-year trial program is aimed at encouraging more inventors to apply for patents relating to green technology by fast-tracking those applications.

Indiana attorneys practicing in the intellectual property area say it’s too soon to get a full picture of how successful the program is, but the response so far doesn’t show the interest that the USPTO has referred to in talking about the program.

“The lackluster response to this program is just a part of how the overall patent office operates with so many nuances,” said Barnes & Thornburg attorney Shawn Bauer, a partner in the firm’s IP section. “Everything comes with advantages and disadvantages in this process, but to me the downside outweighs the upside right now.”

Announced just before the United Nations Climate Change Conference in Denmark, the green technology program is designed to encourage development of businesses with products that reduce use of fossil fuels and protect the environment. Often, these green-tech products are incremental improvements on existing techniques from multiple fields, such as circuits within software or a larger product aimed at an environmental purpose.

Patents for inventions relating to environmental quality, energy conservation, renewable energy development, or greenhouse gas emission reduction are allowed to be reviewed without meeting the usual federal requirements. Regular review times range from 18 to 48 months. If they meet certain pilot program criteria, those patent applications are placed on a special docket at the front of the line with a goal to cut the time to about 34 months, on average.

“This will permit more applications to qualify for the pilot program, thereby allowing more inventions related to green technologies to be advanced out of turn for examination and reviewed earlier,” David Kappos, director of the patent office, said in a filing in the Federal Register.

edward courtney Courtney

The program allows the first 3,000 patents to get this special status. But it initially limited applications to certain classifications, which meant many submitted proposals were rejected. Because a large number of submitted petitions didn’t meet those classifications, the office expanded the scope so more patents would be eligible for the project.

The USPTO reported that as of early June, 1,015 requests for accelerated review had been received and only 373 had been granted. Seventy-seven were still awaiting a decision, 502 had been dismissed, and 63 were denied.

Indiana has had only 18 green petitions granted, according to spokeswoman Jennifer Rankin Byrne. The leading cities with at least one listed inventor are Pendleton with nine petitions; Noblesville with six; Anderson with five; Fishers and Indianapolis each with four; and Greenfield with three, figures show.

With about 1.2 million patents pending in the office, attorneys say the overall scope of this project is small and hasn’t garnered the interest some thought it might.

At Indianapolis IP firm Woodard Emhardt Moriarty McNett & Henry, partner Ed Courtney III said he hasn’t had any clients sign on to the program, and he’s not sure how to gauge the success at the halfway point.

Some clients have expressed an interest, but they have backed away when learning the program is more directed at already-filed and pending patent petitions, Courtney said. He hopes the federal agency considers applying the program rules to all future projects so that any business that might want to get involved could sign on with a new filing.

“My initial reaction is that this is a good and beneficial thing, to have applications go through this process more quickly,” he said. “It is exciting and you hope that as a pilot program maybe they’ll think about doing this permanently. That would be a huge carrot for clients to get into this for your IP.”

chuck schmal Schmal

One of Courtney’s colleagues has had more exposure to the pilot program, but even Chuck Schmal – past chair of the Indianapolis Bar Association’s IP Section – said he hasn’t had a chance to apply it to any client petitions. He’s presented seminars on the issue in recent months, discussing it with other IP attorneys statewide.

“By nature, patent attorneys are pretty conservative, and so this hasn’t caught on just yet,” the longtime attorney said. “I’ve recommended it, but no one’s bought into it. There are some concerns that it can slow the process, and so some attorneys just aren’t choosing to move on this. But I do think it’s a good thing and can help the backlog of patent petitions.”

Other attorneys who’ve been more intimately involved with the patent agency process say there are hidden dangers to the project that are preventing more inventors from getting involved. Bauer said it illustrates how attorneys view the USPTO as a tradeoff that must always be evaluated before particular petitions are submitted.

For example, one aspect of the traditional USPTO process is getting an 18-month period of secrecy before a filed patent petition becomes public, he said. The pilot program requires applicants to waive this publication period, meaning they’ll have early publication of the proposed patent and give the public a glimpse of what’s being worked on. This might not mean anything to smaller startup companies that don’t have anything to lose and might need capital to launch development, but more established companies may want to protect their bottom line and not get involved in this, Bauer said.

“Really, this targets startup companies and they’ll find the benefit. That’s been a big issue for clients and is a disincentive for them to get involved,” he said. “But anyone involved with the office knows the whole patent system is a tradeoff. Here, you’re putting information into the public’s hands and enabling others to see that art that goes into the invention while taking away that monopoly to the patent holder.” •

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  1. The practitioners and judges who hail E-filing as the Saviour of the West need to contain their respective excitements. E-filing is federal court requires the practitioner to cram his motion practice into pigeonholes created by IT people. Compound motions or those seeking alternative relief are effectively barred, unless the practitioner wants to receive a tart note from some functionary admonishing about the "problem". E-filing is just another method by which courts and judges transfer their burden to practitioners, who are the really the only powerless components of the system. Of COURSE it is easier for the court to require all of its imput to conform to certain formats, but this imposition does NOT improve the quality of the practice of law and does NOT improve the ability of the practitioner to advocate for his client or to fashion pleadings that exactly conform to his client's best interests. And we should be very wary of the disingenuous pablum about the costs. The courts will find a way to stick it to the practitioner. Lake County is a VERY good example of this rapaciousness. Any one who does not believe this is invited to review the various special fees that system imposes upon practitioners- as practitioners- and upon each case ON TOP of the court costs normal in every case manually filed. Jurisprudence according to Aldous Huxley.

  2. Any attorneys who practice in federal court should be able to say the same as I can ... efiling is great. I have been doing it in fed court since it started way back. Pacer has its drawbacks, but the ability to hit an e-docket and pull up anything and everything onscreen is a huge plus for a litigator, eps the sole practitioner, who lacks a filing clerk and the paralegal support of large firms. Were I an Indiana attorney I would welcome this great step forward.

  3. Can we get full disclosure on lobbyist's payments to legislatures such as Mr Buck? AS long as there are idiots that are disrespectful of neighbors and intent on shooting fireworks every night, some kind of regulations are needed.

  4. I am the mother of the child in this case. My silence on the matter was due to the fact that I filed, both in Illinois and Indiana, child support cases. I even filed supporting documentation with the Indiana family law court. Not sure whether this information was provided to the court of appeals or not. Wish the case was done before moving to Indiana, because no matter what, there is NO WAY the state of Illinois would have allowed an appeal on a child support case!

  5. "No one is safe when the Legislature is in session."

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