Modern Times Legal Patent Blog

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

Posted on Fri, Dec 11, 2009 @ 11:11 AM

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. 

Tags: USPTO, patent prosecution strategy, sustainability, energy

Remarkable story of African small-scale renewable energy independence

Posted on Thu, Oct 01, 2009 @ 08:31 AM

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 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.

Tags: sustainability, inventors, energy, Africa

Prominent VC's on energy storage investments

Posted on Thu, Sep 17, 2009 @ 11:26 AM

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.

Tags: sustainability, energy, Boston/Cambridge