The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four technology areas: Medical Technology, Food & Nutrition, Clean Technology, and Information Technology. Selected applicants will receive “a certificate redeemable to accelerate select matters before the USPTO” as well as public recognition, “including an award ceremony at the USPTO.” Program applications will be accepted from March 1, 2012, through August 31, 2012, or until 1,000 program applications are accepted. Up to 50 winners will be accepted.
The Competition Process
When the USPTO originally proposed this program, it indicated that applications would be accepted based on to-be-determined “workable tests” that would assess “humanitarian use” with reference to four principles (subject matter, effectiveness, availability, and access) and that would assess “humanitarian research” with reference to two principles (significance and access). Now, the USPTO has decided to use a “competition” process, where applicants will submit program applications (separate from their patent applications) “describing how their actions satisfy the competition criteria.”
As explained in the Federal Register Notice, the program application must involve technology that is the subject of a granted U.S. utility patent or a pending U.S. utility patent application that is owned or licensed by the applicant. Importantly, a Notice of Allowance must be issued in order to obtain a certificate based on a pending application. The Federal Register Notice includes detailed requirements for the program application, that I will not go into here
The Program Criteria
The program criteria are similar to those set forth in the original proposal. For the purposes of this competition, the USPTO defines a “humanitarian issue” as an issue “significantly affecting the public health or quality of life of an impoverished population.” It appears that the program judges will have considerable discretion in deciding whether an issue qualifies as “humanitarian.”
As noted above, the subject technology should fall into one of four categories, which are illustrated as follows:
- Medical Technology: any medical technology, including medicines and vaccines, diagnostic equipment, or assistive devices.
- Food & Nutrition: agricultural technology, such as drought-resistant crops, more nutritious crop strains, and farming equipment; technologies which improve food storage, preservation, or preparation.
- Clean Technology: technologies that improve public health by removing or reducing harmful contaminants in the environment, such as water filters, sterilization devices, and cleaner sources of energy for light, heat, cooking, or other basic needs.
- Information Technology: physical devices and software which markedly improve the lives of the poor, such as portable computers, cell phones, or Internet access devices being used to foster literacy, education, or other knowledge which improves living standards.
Program applicants will designate the category for their applications, but the USPTO may reassign applications to another category at its discretion.
Within the selected category, each application must address one set of judging criteria, either:
- humanitarian use (“applying eligible technologies to positively impact a humanitarian issue”) or
- humanitarian research (“contributing needed tools to areas of humanitarian research lacking commercial application”)
The specific criteria for each category are somewhat different from those proposed previously:
Humanitarian use would be assessed with reference to three criteria:
- Subject Matter—does the applicants’ technology effectively addresses a recognized humanitarian issue?
- Target Population—do the actions described in the program application target an impoverished population affected by the humanitarian issue?
- Demonstrated Impact—have the applicants’ actions significantly increased application of the technology that benefits the impoverished population by addressing the humanitarian issue?
Humanitarian research would be assessed with reference to three criteria:
- Research Impact—has the applicants’ technology made a significant contribution to substantial research conducted by others which clearly targets a humanitarian issue?
- Neglected Field—does the research by others occur in an area lacking significant commercial application?
- Contribution—did the applicants take significant action to make the technology available to other researchers?
Other selection principles include:
- The program will be “technology neutral” although “diversity” of awarded technologies will be a factor
- The program will be “geographically neutral” with regard to the impoverished population
- The evaluations will be “financially neutral” with regard to the profit or non-profit status of the applicant
The Selection Process
Program applications will be reviewed after the window for submitting applications ends (e.g., not on a rolling basis). Program applications will be reviewed by unpaid, volunteer judges who are “external” to the USPTO, with three judges independently reviewing each application. After the judges review the applications, “a selection committee composed of representatives from other Federal agencies and laboratories will compose a list of up to 50 recommended recipients based on the judges’ reviews.” The Notice indicates further that “[a]ll awards are subject to the approval of the Director of the USPTO.”
Selected program applicants will be awarded in two ways:
- Winners will receive recognition for their humanitarian efforts at a public awards ceremony with the Director of the USPTO.
- Winners will receive an “acceleration certificate” which can be redeemed to accelerate one of the following matters: an ex parte reexamination proceeding, including one Board appeal from that proceeding; a patent application, including one Board appeal from that application; or a Board appeal of a claim twice rejected in a patent application or reissue application or finally rejected in an ex parte reexamination.
In a significant change from the original proposal, the acceleration certificates are not transferable to other parties, Thus, certificates “may be redeemed only in matters where the certificate holder has an ownership interest in the patent or patent application at issue,” although they can be used in connection with patents/applications that are not related to the program application and/or not related to humanitarian technology. Moreover, certificates must be redeemed within 12 months of their date of issuance. Other important requirements and restrictions are set forth in the Federal Register Notice.
Will This Program Work?
When I wrote about the proposed program, I had doubts about its ability to incentivize the development and commercialization of technologies that address humanitarian needs. Now that the USPTO has provided more details on the program, I have even more questions. This seems like a very cumbersome program that only will benefit a handful of patent owners. Either the USPTO has underestimated the costs of participating in the program (e.g., the value of the time required to complete the program application and comply with the program requirements) or I am underestimating the value of an “acceleration certificate.” (Because there are no federal regulations pertaining to the program, the USPTO has not provided an analysis of the estimated costs of participation.) It will be interesting to see how many patent holders apply for this program, and to learn about the different technologies that have been developed or used to serve humanitarian needs.