Notice2022-11930
Climate Change Mitigation Pilot Program
Primary source
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Published
June 3, 2022
Issuing agencies
Commerce DepartmentPatent and Trademark Office
Abstract
As part of its ongoing efforts to incentivize more and inclusive innovation, including in key technology areas such as climate change, and to maximize that innovation's widespread impact, including by reducing greenhouse gas emissions, the United States Patent and Trademark Office (USPTO) is implementing 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. The program is intended to encourage research, development and innovation in the climate space and provide ready and equitable intellectual property protection to incentivize investment and bring those solutions to the country and world. The program aligns with and supports Executive Order 14008, dated January 27, 2021, and is part of the USPTO's efforts to secure an equitable economic future, reduce greenhouse gas emissions and mitigate climate change. Applications accepted into the pilot program will be advanced out of turn (accorded special status) for first action on the merits.
Full Text
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<title>Federal Register, Volume 87 Issue 107 (Friday, June 3, 2022)</title>
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[Federal Register Volume 87, Number 107 (Friday, June 3, 2022)]
[Notices]
[Pages 33750-33753]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-11930]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2021-0039]
Climate Change Mitigation Pilot Program
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: As part of its ongoing efforts to incentivize more and
inclusive
[[Page 33751]]
innovation, including in key technology areas such as climate change,
and to maximize that innovation's widespread impact, including by
reducing greenhouse gas emissions, the United States Patent and
Trademark Office (USPTO) is implementing 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. The program is intended to
encourage research, development and innovation in the climate space and
provide ready and equitable intellectual property protection to
incentivize investment and bring those solutions to the country and
world. The program aligns with and supports Executive Order 14008,
dated January 27, 2021, and is part of the USPTO's efforts to secure an
equitable economic future, reduce greenhouse gas emissions and mitigate
climate change. Applications accepted into the pilot program will be
advanced out of turn (accorded special status) for first action on the
merits.
DATES: Pilot Duration: The Climate Change Mitigation Pilot Program will
accept petitions to make special beginning June 3, 2022 until either
June 5, 2023 or the date the USPTO accepts a total of 1,000 grantable
petitions, whichever occurs first. The USPTO may, at its sole
discretion, terminate the pilot program depending on factors such as
workload and resources needed to administer the program, feedback from
the public, and the effectiveness of the program. If the pilot program
is terminated, the USPTO will notify the public. The USPTO will
indicate on its website the total number of petitions filed and the
number of applications accepted into the pilot program.
FOR FURTHER INFORMATION CONTACT: Kristie M. Kindred, Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patents, at <a href="/cdn-cgi/l/email-protection#b4ffc6ddc7c0ddd19affdddad0c6d1d0f4c1c7c4c0db9ad3dbc2"><span class="__cf_email__" data-cfemail="3e754c574d4a575b107557505a4c5b5a7e4b4d4e4a5110595148">[email protected]</span></a>; or Susy Tsang-
Foster, Senior Legal Advisor, Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patents, at <a href="/cdn-cgi/l/email-protection#7f2c0a0c06512b0c1e11185239100c0b1a0d3f0a0c0f0b1051181009"><span class="__cf_email__" data-cfemail="6a391f1913443e190b040d472c05191e0f182a1f191a1e05440d051c">[email protected]</span></a>. For questions on electronic filing, please contact
the Electronic Business Center at: 866-217-9197 during their operating
hours of 6 a.m. to midnight ET, Monday-Friday, or email at
<a href="/cdn-cgi/l/email-protection#86e3e4e5c6f3f5f6f2e9a8e1e9f0"><span class="__cf_email__" data-cfemail="2247404162575152564d0c454d54">[email protected]</span></a>. For questions relating to a particular petition, please
contact the Office of Petitions at 571-272-3282 during their operating
hours of 8:30 a.m. to 5 p.m. ET, Monday-Friday.
SUPPLEMENTARY INFORMATION: New patent applications are normally taken
up for examination in the order of their U.S. filing date or national
stage entry date. See Sec. Sec. 708 and 1893.03(b) of the Manual of
Patent Examining Procedure (MPEP) (9th ed., rev. 10.2019, June 2020).
The USPTO has procedures under which an application will be advanced
out of turn (accorded special status) for examination if the applicant
files (1) a petition to make special under 37 CFR 1.102(c) or (d) with
the appropriate showing, or (2) a request for prioritized examination
under 37 CFR 1.102(e). See 37 CFR 1.102(c)-(e) and MPEP Sec. Sec.
708.02, 708.02(a), and 708.02(b). The USPTO revised its accelerated
examination procedures effective August 25, 2006, requiring that all
petitions to make special comply with the requirements of the revised
accelerated examination (AE) program set forth in MPEP Sec. 708.02(a),
except those based on an inventor's health or age or the Patent
Prosecution Highway (PPH) Pilot Program. See Changes to Practice for
Petitions in Patent Applications To Make Special and for Accelerated
Examination, 71 FR 36323 (June 26, 2006).
The USPTO is implementing a new Climate Change Mitigation Pilot
Program. The program, which aligns with and supports Executive Order
14008, permits an application that claims certain products and/or
processes that mitigate climate change by reducing greenhouse gas
emissions to be advanced out of turn (accorded special status) for
first action on the merits without meeting all of the requirements of
the accelerated examination program set forth in MPEP Sec. 708.02(a)
(for example, examination support document) if the applicant files a
petition to make special under 37 CFR 1.102(d) meeting all of the
requirements set forth in this notice.
To qualify, applicants must file a petition to make special under
the pilot program, and the application must claim an invention directed
to certain technologies that are designed to reduce greenhouse gas
emissions. Applicants must also certify that (1) they have a good faith
belief that expediting examination of the application will likely have
a positive impact on the climate, and (2) 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 this program has been filed. Applications accepted into
the pilot program will be advanced out of turn (accorded special
status) for first action on the merits without meeting all of the
current requirements, including any extra fee payments, of the
accelerated examination program (for example, the requirement for an
examination support document) or the prioritized examination program
(for example, the prioritized examination fee or processing fee).
All other requirements of the accelerated examination program that
are not required by this notice, including the 37 CFR 1.17(h) fee for a
petition to make special under 37 CFR 1.102(d), are hereby waived based
upon the special procedure specified in this notice. The USPTO will
periodically evaluate the pilot program to determine whether and to
what extent its coverage should be expanded or limited.
No fees or requirements other than those discussed above are waived
by this pilot program.
Part I. Requirements To Participate
In addition to filing a nonprovisional patent application that is
ready for examination (including a specification, drawing(s) if
necessary, at least one claim, and payment of all fees associated with
the filing of an application), the patent application and the petition
to participate in this pilot program must meet the requirements that
follow.
(1) Types of Applications and Time for Filing Petition
The petition to make special under the pilot program must be filed:
(a) With the electronic filing of a noncontinuing original utility
nonprovisional application or entry into the national stage under 35
U.S.C. 371, or within 30 days of the filing date or entry date of the
application; or
(b) with the electronic filing of 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 or within 30 days of the filing date of
such application.
Definition
Noncontinuing application: A noncontinuing application is 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 CFR 1.78. See section 201.02 of the MPEP.
The pilot program is reserved for the nonprovisional applications
described above that have not received a first office action (including
a written restriction requirement). Any application that claims the
benefit of the
[[Page 33752]]
filing date of two or more prior filed applications that are
nonprovisional U.S. applications and/or international applications
designating the United States is not eligible for participation in the
pilot program. Claiming the benefit under 35 U.S.C. 119(e) of one or
more prior provisional applications or claiming a right of foreign
priority under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign
applications will not affect eligibility for the pilot program.
(2) Office Form Required for Filing Petition
Form PTO/SB/457, titled ``CERTIFICATION AND PETITION TO MAKE
SPECIAL UNDER THE CLIMATE CHANGE MITIGATION PILOT PROGRAM,'' is
required to be used to make the petition under the pilot. It is
available at <a href="https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012">https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012</a>. Form PTO/SB/457 contains
the necessary certifications for qualification to participate in the
pilot. Use of the form will enable the USPTO to quickly identify and
timely process the petition. In addition, use of the form will help
applicants understand and comply with the petition requirements of the
pilot program. Under 5 CFR 1320.3(h), form PTO/SB/457 does not collect
``information'' within the meaning of the Paperwork Reduction Act of
1995.
(3) Required Certification
The petition to make special must certify: (1) That the claimed
invention covers a product or process that mitigates climate change;
(2) that the product or process is designed to reduce greenhouse gas
emissions; (3) that applicant has a good faith belief that expediting
patent examination of the application will likely have a positive
impact on the climate; and (4) that 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 this program has been filed. Form PTO/SB/457 contains
these certifications.
(4) Publication Requirement for Applications
If applicant files the petition to make special on the date of
filing of an application, the application may not be filed with a
nonpublication request. If applicant previously filed a nonpublication
request in the application, applicant must file a rescission of the
nonpublication request no later than the time the petition to make
special is filed. Applicant may use form PTO/SB/36 to rescind the
nonpublication request.
(5) Application Data Sheet Requirement
Unless previously filed in the patent application, the petition
must be accompanied by a properly signed application data sheet per 37
CFR 1.76 meeting the conditions specified in 37 CFR 1.53(f)(3)(i).
(6) Claim Limit and No Multiple Dependent Claims
When the petition is filed and throughout pendency, the application
must contain no more than 3 independent claims and 20 total claims and
no multiple dependent claims. The examiner may refuse entry of any
amendment filed in reply to an office action that, if entered, would
result in a set of pending claims that exceeds either of these claim
limits or adds a multiple dependent claim. See Part IV of this notice.
(7) Electronic Filing of Application and Petition Required
The petition to make special may only be made by filing form PTO/
SB/457, which must be filed electronically using the USPTO's Patent
Center (at <a href="https://patentcenter.uspto.gov/#!/">https://patentcenter.uspto.gov/#!/</a>). Applicants must file
the petition using the document description indicated on form PTO/SB/
457. In addition, the application or national stage entry must be filed
using Patent Center, and the specification, claims, and abstract must
be submitted in DOCX format. Prior to submitting the application for
filing, applicants will receive a feedback document. Applicants may
find it beneficial to review the feedback document and make corrections
to the application before filing the application. By making the
necessary corrections before filing, applicants may avoid delays that
can occur in the pre-examination process. For more information on DOCX
filing in Patent Center, please see <a href="https://www.uspto.gov/patents/docx">https://www.uspto.gov/patents/docx</a>.
(8) Filing Limitations
An applicant may file a petition to participate in the pilot
program if the inventor or any joint inventor has not been named as the
inventor or a joint inventor on more than four other nonprovisional
patent applications in which a petition to make special under this
program has been filed. Therefore, if the inventor or any one of the
joint inventors of the instant application has been named as the
inventor or a joint inventor on more than four other nonprovisional
applications in which petitions under this pilot program have been
filed, then the petition for the instant application may not be
appropriately filed.
Definition
Claimed invention covers a product or process that mitigates
climate change: This phrase is only met 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. For example, a claim to
a process to capture or dispose of methane would correspond to Y02C 20/
20. The full schedule of Y02 class is available at: <a href="https://www.uspto.gov/web/patents/classification/cpc/html/cpc-Y.html#Y02">https://www.uspto.gov/web/patents/classification/cpc/html/cpc-Y.html#Y02</a>.
Part II. Internal Processing of the Petition Under the Pilot Program
If applicant files a petition to make special under the pilot
program, the USPTO will decide the petition once the application is in
condition for examination. If the petition is granted, the application
will be accorded special status under the pilot program. The
application will be placed on an examiner's special docket until a
first office action on the merits. After the first action on the
merits, the application will no longer be treated as special during
examination, for example, if an amendment is filed, it will be placed
on the examiner's regular amended docket.
If the petition to make special under the pilot program does not
comply with the requirements set forth in this notice, the USPTO may
notify the applicant of the deficiency by issuing a notice. The notice
will give applicant only one opportunity to correct the deficiency. If
applicant still wishes to participate in the pilot program, applicant
must file a reply via Patent Center that includes appropriate
corrections and a properly signed petition form PTO/SB/457 within one
month or thirty days, whichever is longer, from the mailing/
notification date of the notice informing applicant of the deficiency.
The time period for reply is not extendable under 37 CFR 1.136(a). If
applicant fails to correct the deficiency indicated in the notice
within the time period set forth therein, the application will not be
accepted into the pilot program and will be taken up for examination in
accordance with standard examination procedures. In addition, the
petition will be dismissed without an opportunity for correction if it
is deficient in any of the following ways: (1) The application does not
contain a
[[Page 33753]]
claim that complies with the eligibility requirements of this notice
(that is, the claim does not cover a product or process that mitigates
climate change by reducing greenhouse gas emissions); (2) The
application claims the benefit of the filing date of two or more prior
filed applications that are nonprovisional U.S. applications and/or
international applications designating the United States; and (3) The
petition was not filed with the application or entry into the national
stage under 35 U.S.C. 371 or within 30 days of the application's filing
date or national stage entry date.
Part III. Requirement for Restriction
If the claims in the application are directed to multiple
inventions, the examiner may make a requirement for restriction or
unity of invention in accordance with current restriction practice. The
examiner will attempt to contact the applicant following the procedure
for the telephone restriction practice set forth in MPEP Sec. 812.01.
If a telephone restriction requirement is made, applicant must make an
election without traverse to an invention that meets the eligibility
requirements of this notice. If applicant refuses to make an election
(for example, by failing to reply to a request for a telephonic
interview within five business days of the examiner's request), the
special status of the application will be terminated and the examiner
may mail a written restriction requirement.
Part IV. Office Actions and Replies Under the Pilot Program
Applications that are accorded special status under the pilot
program will be placed on an examiner's special docket until a first
office action on the merits.
After the first office action on the merits, the application will
be placed on the examiner's regular docket.
A reply to an office action must be fully responsive to the
rejections, objections, and requirements made by the examiner. Any
amendment filed in reply to an office action may be treated as not
fully responsive if it attempts to: (1) Add claims that would result in
more than three independent claims or more than 20 total claims pending
in the application; (2) add any multiple dependent claim(s); or (3)
cancel all claims that meet the requirements of the pilot program (that
is, the application no longer contains any claims that cover a product
or process that reduces greenhouse gas emissions and thereby mitigate
climate change). If a reply to a nonfinal office action is not fully
responsive because it does not comply with the pilot claim requirements
but is a bona fide attempt to advance the application to final action,
the examiner may, at their discretion, provide a shortened statutory
period of two (2) months for the applicant to supply a fully responsive
reply. Extensions of this time period under 37 CFR 1.136(a) to the
notice of nonresponsive amendment will be permitted, but in no case can
any extension carry the date for reply to this notice beyond the
maximum period of SIX MONTHS set by statute (35 U.S.C. 133). However,
any further nonresponsive amendment typically will not be treated as
bona fide, and therefore, the time period set in the prior notice will
continue to run.
Part V. After-Final and Appeal Procedures
Any amendment, affidavit, or other evidence after a final office
action and prior to appeal must comply with 37 CFR 1.116. During the
appeal process, the application will be treated in accordance with the
normal appeal procedure (see MPEP Chapter 1200).
Part VI. Proceedings Outside the Normal Examination Process
If an application becomes involved in proceedings outside the
normal examination process (for example, a secrecy order, derivation
proceeding, or petitions under 37 CFR 1.181-1.183), the USPTO will
place the application in special status under the pilot program before
and after such proceedings. During those proceedings, however, the
application will not be under special status. For example, while under
a secrecy order, the application will be treated in accordance with the
normal secrecy order procedures and will not be in special status under
the pilot program. Once the proceeding outside the normal examination
process is completed, the application will continue in special status
as described above in this notice.
Part VII. Withdrawal From the Pilot Program
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.
However, a continuing application will not automatically be granted
special status based on the petition filed in the parent application.
Each application (including each continuing application) must, on its
own, meet all requirements for special status under the pilot program,
and be accompanied by its own petition as detailed in Part I (2) above.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-11930 Filed 6-2-22; 8:45 am]
BILLING CODE 3510-16-P
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