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Robert J. Sayre
Robert J. Sayre
Cambridge, MA,
United States

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You May Now Obtain a "Green" Patent Via Accelerated Examination

  
  
  
  

by Robert J. Sayre

Finse NorwayUnder a new United States Patent and Trademark Office pilot accelerated examination program, "green" patents can now receive a boost in examination at the United States Patent and Trademark Office. According to the USPTO, green patent applications that are accepted into the program and that are ultimately allowed will be issued by the USPTO about a year faster than without the program. The average pendency in green technology areas is approximately 30 months to a first action and 40 months to a final decision.

"By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovators to invest needed resources in developing new technologies and help bring those technologies to market more quickly," explained U.S. Commerce Secretary Gary Locke. Adding to Locke's comments, USPTO Director David Kappos further explained why this program is needed. "Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs."

Only the first 3,000 petitions will be accepted into the pilot program (and, unless extended, the program will expire no later than December 7, 2010). Director Kappos estimates that about 25,000 applications are eligible, so act fast.  Unlike the USPTO's previously existing accelerated examination program, this pilot program for green technologies does not require a dreaded "examination support document" and no separate petition fee is required.

Applications accepted into the accelerated pilot program will be placed on an examiner's accelerated docket (i.e., the examiner's "special docket") prior to issuance of a first Office Action, which should shorten the delay between filing and substantive examination, and the application will have special (accelerated) status on Appeal, if Appeal is needed.

Principal Requirements:

  1. Your application must be a US non-reissue, non-provisional utility patent application filed before December 8, 2009, or the national stage of a PCT application that enters the US before that date.
  2. Your petition must be filed before the examiner issues a first Office Action.
  3. Your petition must be among the first 3,000 filed at the United States Patent and Trademark Office.
  4. Your application must include no more than three independent claims, 20 claims total and no claims in multiple-independent format. You can amend your claims via preliminary amendment to meet these requirements.
  5. Your application must be directed to a single invention that falls within one of the categories listed below, and your application must be classified in one of the 79 green technology classifications listed on pages 3 and 4 the Federal Register Notice.

Green Categories:

  1. Inventions that materially enhance the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements; or
  2. Inventions that materially contribute to (a) the discovery or development of renewable energy resources [including hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources]; (b) the more efficient utilization and conservation of energy resources (in combustion systems, industrial equipment, and household appliances); or (c) greenhouse gas emission reduction [including, but not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)].

Additionally, in your petition, you must pledge that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), you will agree to make an election without traverse in a telephonic interview. Your petition must also be filed via the United States Patent and Trademark Office's Electronic Filing System, and the petition to make special must be accompanied by a request for early publication (and payment of the $300 publication fee). Further still, If the application does not clearly disclose that the claimed invention falls within one of the above green categories, the petition must be accompanied by a statement signed by the applicant, assignee, or a patent attorney/agent explaining how the materiality standard is met.

The petition form provided by the United States Patent and Trademark Office is a simple one-page document.

Beyond the advantage of potentially obtaining an issued patent much faster, I see at least a couple other less obvious advantage of taking advantage of this program.  If your application is accepted into this green technology accelerated examination program, it (a) tells the examiner that you are serious about getting your green technology on the market to help save our environment and that you are anxious to obtain your patent, which can help establish a favorable rapport and (b) provides an imprimatur from the USPTO that your invention is a green technology worthy of accelerated attention to serve the nation's key goals in protecting our environment, which may impress judges, juries, investors, licensees, customers, etc.

Robert J. Sayre of Modern Times Legal has a keen interest in sustainability and green technologies and has experience in many of these fields.  Joining the USPTO in promoting green technologies, Modern Times is offering a corollary special deal for green patent applications:  Bob will gladly offer a free consultation for existing and potential new clients alike to help you evaluate whether to file a Petition for Accelerated Examination.  Contact Bob now to find out if your patent application may be eligible.

Above author's photo shows clean air and water in Finse, Norway (2008), accessible via train from Oslo to Bergen. 

Remarkable story of African small-scale renewable energy independence

  
  
  
  

by Robert J. Sayre

Occasionally, you come across a story that makes your day and inspires you. The construction of power-generating windmills by Malawi's self-taught William Kamkwamba (starting at the age of 14) is beyond inspiring. I don't think you'll regret for a moment watching this six-minute clip:

 
This young innovator with little education, little money and almost no tools powers his family's home with renewable energy and makes them energy-independent. Meanwhile, in America, with all our resources and with the benefits being clearly evident for decades, we still cannot muster the discipline and will to make the sacrifices needed to make ourselves energy independent.
 
Ultimately, though, what attracts me most to this story is that it reminds me of what I love about Africa. While William's talents are indeed exceptional, this remarkably resourceful, ambitious, eager-to-learn and determined drive to improve one's lot and to better one's community is found all over the continent. Indeed, I have met at least one other windmill innovator in my travels (an inventor in Ethiopia). In Wiliam's case, "[a] windmill meant more than just power," he wrote, "it was freedom." Many Africans are remarkably resourceful in solving problems with limited resources. This is the Africa that I think gets far too little attention in the west. We are far more likely to see reports of suffering and famine, though that is a very small part of what Africa is about.
 
With the WIPO/ARIPO patent-drafting training program, we help to build a core group of trained patent professionals who can provide a platform to better enable African innovation to compete in world markets. Though it will be Africans such as William who will lead Africa as the next great frontier of development (post-Asia). If you have not heard that forecast before, recognize now that you are likely see remarkable changes and development in Africa in the next couple decades. In Africa today, you will find both hope and despair, though I find the sense of hope (no matter the suffering) to be the more powerful and resilient force.
 
Read more about William at African Dynamo on the good.is/blogs and hear more from him at this presentation from the TEDGlobal Conference:
 
 
Thanks to my friends at EGG-Energy in Tanzania/Cambridge for introducing me to this remarkable story.

Prominent VC's on energy storage investments

  
  
  
  

by Robert J. Sayre

Bob Metcalfe

At MIT yesterday, venture capitalists Bob Metcalfe (left) and Hemant Tenaja as well as Peter Diamandis of the X PRIZE Foundation offered interesting insights on promoting the development of energy storage breakthroughs in America.

Developing improved devices for storing energy presents a critical ongoing challenge in expanding the use of sustainable energy sources and building a "smart" electrical grid and is a field that will be subject to many more innovations and patents. Whether by batteries, capacitors, chemistry, etc., a variety of options are available depending on energy/power needs and operational contexts. Today, we see an intense push to build better batteries for laptops and other portable electronics; and local companies, such as A123 Systems (which is moving toward an IPO) and Boston Power, are among the leading American companies, though energy storage is needed in a wide variety of contexts.

Policy --> Capital --> Innovation 

Hemant Teneja (managing director or General Catalyst Partners) framed the path to innovation on this front as beginning with government policy leading to investment and the flow of capital to fund innovation. Teneja indicated, however, that he believes that this cycle toward innovation will take longer than expected, given that Congress is now so focused on health care reform. Meanwhile, developing markets, such as China, are moving much faster by throwing lots of money at energy-storage R&D. America's comparative lag may threaten our competitiveness (Tom Friedman at the New York Times often writes about the criticality of establishing leadership in clean energy technology).

Path to a Smart Grid may Mirror Path to the Internet 

Bob Metcalfe (founder of 3Com and now general partner at Polaris Ventures) views advances in energy storage in comparison with the development of the internet, where breakthrough developments in electronic memory paved the way to shared, distributed computing. Likewise, in the context of energy, breakthrough advances in energy storage to provide distributed storage capacity will pave the way to a "smart" distributed power grid. In particular, distributed micro-storage media (such as that provided by Polaris-backed Infinite Power Solutions) will enhance the distribution and locality of energy storage to the furthest reaches of our automated world. Metcalfe also emphasized the need to look toward a wide range of potential solutions (beyond lithium-ion storage); Metcalfe's Polaris Ventures also is an investor in MIT Professor Daniel Nocera's Sun Catalytix, which aims to store energy by splitting the hydrogen and oxygen atoms from water using solar energy.

Future for Cars 

Metcalfe also boldly forecast that within his lifetime (he is 63), (a) all cars will be electric; (b) people will no longer drive the cars, as driving will be automated; and (c) we will no longer own cars (Zipcar for everyone?).

Challenges of Investing in Energy/Materials Technologies 

Teneja also highlighted the challenges of investing in energy technologies, where a $300-$400 million investment may be needed to develop a new technology, which may provide a 20% improvement against a high risk of failure and against intense global competition that may present alternative leapfrog technologies at any time. In the face of these challenges, Teneja noted that General Catalyst had not yet made any investments in energy storage companies, though he indicated they are still looking for the right opportunity.

Teneja correctly noted that the challenge of energy storage is largely a materials science challenge--finding materials system with the desired power/energy storage density. When asked what level of improvement we should be targeting, Metcalfe pitched in that we could shoot as high as a million-fold improvement if we could leap beyond the energy stored in chemical bonds and instead store energy in nuclear bonds (e.g., via uranium). Might we someday see desktop cold fusion as a means for energy storage--who knows? Though Metcalfe noted that there is a researcher in Acton currently working on nuclear fusion in his garage (I hadn't heard this before, so I am not sure who this person is).

One of the issues with materials science innovations is that they often take at least a decade to develop (MIT materials science professor Gerd Ceder once told me that twenty years is a reasonable timeline for developing many innovations in materials science, which incidentally is the standard term for a patent, measured from filing date), which is at odds both with the urgent near-term focus of our government in addressing these problems and with the two-to-three-year time frame with which VC's were spoiled when sponsoring internet startups. Wheres internet startups often require comparatively little cash, may offer little risk and provide quick payback, innovations in the realm of materials science rarely offer any of these advantages. Consequently, there tyipically are fewer venture capitalysts interested in funding companies pursuing innovations in materials.

Nevertheless, Metcalfe noted that Polaris had backed American Superconductor, one of the leading companies focused on high-temperature superconductors, which may have been the biggest innovation in materials (or at least in the field of high-tech ceramics) of the 1980's. "We did American Superconductor, . . . and 20 years later, we regret it," quipped Metcalfe.

Will Energy Investment Ecosystem Mirror That for Drug Discovery? 

Metcalfe noted, however, that a different model ecosystem for such high-capital, long-term investments already exists--the model for discovery, which also may have a 20-year timeline and may cost a billion dollars. The drug discovery ecosystem relies heavily on partnering, acquisitions and mergers to move from one stage to the next. Perhaps a similar model can develop for carrying far-flung approaches for improving energy storage along the long and difficult road of development.

A New Apollo Program

Starting with proper policies advanced by federal legislation, Peter Diamandis (Chairman & CEO of the X PRIZE Foundation) urged that we should adopt a long-term mission similar to the Apollo program for placing a man on the moon in terms of audicity and commitment. Diamandis asked, what if the Bush administration (in 2000) invested the money that was spent in the wars in Afghanistan and Iraq on instead developing technologies that would make America energy independent, thereby greatly improving our security and cutting off funding to enemies in the middle east? And what if the Obama administration, instead of shoveling vast sums of money to prop up our failing automakers in Detroit, allowed the American auto industry to succumb to a natural death and invested money in reeducating our workers in Detroit for next-generation technologies?

In emerging markets, Diamandis talked about the need to provide an improved solution for distributed storage stations over the use of stationery diesel generators. The basis for this forum discussion was the discussion of a new X Prize challenge to reward a breakthrough advance in energy storage. The acoustics in 54-100 were not the best and speaker volume was low, so it is possible that there may be an error or two in what I heard and transcribed.

 

Contact Bob Sayre


 

if you wish to secure patent protection on your energy-storage or other clean-energy technology, which is a step best initiated before you seek funding.

The benefits of a (near-)paperless patent prosecution practice

  
  
  
  

by Robert J. Sayre

In the summer of 2007, when Modern Times Legal launched, recent developments had made switching to a paperless practice highly practical and advantageous--for example, the USPTO's electronic filing system was running smoothly nearly all the time; the beta phase of the USPTO's e-office action program, which provides fast and efficient electronic communication from the USPTO, was launching (Modern Times Legal was an early subcriber); clients had grown comfortable with email communications; electronic data storage was cheap; and web-based data backup and inexpensive scanners were widely available.

The picture in the right-hand column of this page shows me practicing patent law--most of the time, I do not need much more than a laptop, with perhaps an extra monitor. And after two years under this model, here are a few of the advantages I have identified of running a near-paperless patent prosecution practice:

Space saving:  11 years of practice at larger firms had rendered me accustomed to massive file rooms taking up much of a floor (where rental space per square foot was expensive). Each patent application file can readily expand to a few inches thick stuffed with all of the relevant documents; and you can figure that each patent prosecutor is working on dozens of patent applications in a given year. Throw in a couple opinion letters or whatnot, and you have a couple more feet of files. A quick calculation tells you that storage space per attorney per year is measured in yards/meters not inches/cm. At this point, I hardly need mention what a waste of resources the paper-intensive model represents; and without a need for file storage, it is naturally much easier to operate from a much smaller footprint, making the paperless attorney nimbler and more cost-efficient.

Access to information:  Moreover, having instant electronic access to all of my files is highly advantageous. If a client calls asking about a case, I can quickly pull it up on my screen (no need to wait for a delivery from the fileroom); alternatively, because all files are stored electronically, clients can engage in no-charge self-help and pull up the documents they need on their own whenever they want via the MXL client portal. Further still, when an examiner calls wanting to talk about a case, I am ready to respond on the spot as I can quickly pull up the relevant files; and when an examiner calls, I find it is best to respond quickly; as a subsequent phone tag sequence may dampen progress and waste time. And if I am away from the office--no problem, I still have ready access to all of my files. Electronic data storage also provides much greater access to information, as everything is keyword searchable, so it does not matter if I have no more than a vague recollection of where I previously encountered an issue, my computer can quickly find the relevant files.

Cheaper, faster communication:  Paperless file storage, communication and filing also saves the client money. As a client, are you regularly nickled and dimed for postage, printing, fax printouts, etc.? Today, there is no need to pay these charges. Filing patent applications via the electronic filing system, for example, not only saves in charges for all of the otherwise requisite paper shuffling, it is safer, faster and more-efficient than paper filing. If you have not yet switched to electronic filing, I think you owe it to yourself or your company/firm to look into it. And if there is an important development on your case, do you want to wait for the mail/package to arrive to read about it or do you want news and documents in your inbox immediately? In my experience, most clients prefer the latter.

Safety:  If a print file "goes missing" in a law office (and, yes, it often happens in many offices), much of the information in that file may be lost permanently. With electronic record keeping, however, files are easily backed up via multiple media in mulitiple locatiions. If a file is lost or corrupted, there will usually be multiple backup copies.

Sustainability:  Further still, there is great pride and satisfaction in running a near paperless practice in pursuit of the broader goal of operating a sustainable law practice. I believe that, where feasible, attorneys can and should take progressive action to set an example for the betterment of society. Stepping off the soapbox, I use the term "near-paperless" to reflect that I do print out key documents where helpful or necessary and submit some correspondence by mail (no need to make sacrifices as a consequence of being beholden to idealism), though even allowing for the occasional print document, you can still secure most of the same "paperless" benefits.

If you wish to take advantage of modern technology and the benefits in terms of cost, efficiency, and speed of a near-paperless practice when filing/prosecuting patent applications, please contact me. If you are a patent attorney and wish to shift to a near-paperless practice, I likewise invite you to contact me; and I will be happy to share my experiences and helpful pointers for making the transition.

I thank those of who help to keep this blog paperlessness by reading it online, and the RSS and email subscriptions to this blog are always paper free. Though if you want to print out entries from this blog and read them, e.g., on the subway, go for it. One can balance idealism and practicality and still achieve great gains.

Saluting Burns & Levinson, WilmerHale and Sean Cleary for "Greening the Practice of Law"

  
  
  
  

by Robert J. Sayre

The Massachusetts Bar Association just announced it's 2009 Eco-Challenge Honorees. This year's winners were the following three firms: Burns & Levinson LLP; WilmerHale; and The Law Offices of Sean Cleary. Congratulations to each of these firms for the significant steps they have taken to reduce the environmental impact of their operations.

Burns & Levinson and WilmerHale both are large Boston firms, and I am proud to have a good relationship with a number of first-rate attorneys at each firm. Sean Cleary is in Amherst, and we unfortunately have not yet crossed paths, though perhaps we will via the Eco-Challenge in the future.

Do you procure legal services from any law firms in Massachusetts? If so, have they pledged their commitment to the Eco-Challenge? If so and if you believe that we all should make efforts to reduce our environmental impact, please let your firm know that you support their initiative and responsibility. If they are not yet pledge partners, ask your atttorney to lobby the firm to make the pledge. Any good firm will listen to its clients if they haven't otherwise gotten the message.

As a small firm, it's comparatively easy for Modern Times Legal to take dramatic steps to reduce its impact (thanks again MBA and Conservation Law Foundation for the 2008 award), though it truly impresses me to see big firms such as WilmerHale and Burns & Levinson take these steps, as I know how difficult it can be to champion a cause like this and to drive change within a large organization. Publicly taking these steps also sends a powerful message to the firms' clients across the city and across the country that change is happening and may inspire other organizations to follow their lead (e.g., if a firm like WilmerHale is committed to the cause, maybe it's not a radical idea).

If you utilize any of these three firms (or any of last year's winners), please let them know you support their initiatives to promote sustainable practices and to act environmentally responsible.

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