[Federal Register Volume 87, Number 107 (Friday, June 3, 2022)]
[Notices]
[Pages 33750-33753]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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

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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 [email protected]; or Susy Tsang-
Foster, Senior Legal Advisor, Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patents, at [email protected]. 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 
[email protected]. 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

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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 https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012. 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 https://patentcenter.uspto.gov/#!/). 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 https://www.uspto.gov/patents/docx.

(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: https://www.uspto.gov/web/patents/classification/cpc/html/cpc-Y.html#Y02.

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