In response to suggestions from the intellectual property (IP) community that the USPTO adopt some form of a deferred examination procedure, the Patent Office will conduct a public roundtable discussion on the topic on Thursday, February 12, 2009, from 9 a.m.-12:30 p.m. at the agency’s headquarters in Alexandria, Virginia.

The goal of the roundtable is to obtain public input on deferred examination from diverse sources and differing viewpoints. A limited number of representatives will be able to participate in the roundtable discussion but anyone who is interested in the topic may attend the event. The public may also access the event via a live webcast.

The USPTO has in place an optional deferred examination procedure that was adopted as part of the rule making to implement eighteen-month publication of patent applications.  This deferral of examination procedure permits deferral of examination for up to three years from the earliest filing date. The deferral of examination procedure set forth in 37 CFR 1.103(d), however, has been used in fewer than two hundred applications since its inception on November 29, 2000.

Does it really help an organization swamped with work to put off things for later?  Or, like those “Buy Now, Pay Later” plans, does it just create an even bigger problem later?

There would seem to me two major risks to this plan:

First,  the plan assumes that a large portion of the applications being filed currently will be abandoned.  Statistics show that many applications are ultimately abandoned.  Will that necessarily change the workload by deferring examination?  It is entirely possible that those same applications will merely remain on file until ultimately subjected to search and examination.  Many applicants will not abandon their plans until confronted with final rejections (fairly based or not).  Therefore, the deferral may not make any substantial difference in the Office workload.

Second, a deferred examination system may actually give rise to even more work.  How so?  Like it or not, there are those who will take advantage of a system where patent applications are published but not examined — a de facto registration system.  Applicants will be tempted to flood the patent office with many more iffy patent applications just so that they get published, which will cause competitors to hesitate before investing millions of dollars in a new product line.  Deferred applications — hovering in suspended animation — will remain a threat of some ultimate allowance. All the additional published application noise will add substantially to the burden in the marketplacein terms of increased costs of determining freedom to operate.

What other effects? These deferred applications will inherently go abandoned many years later than they would have otherwise.  Subject matter that was disclosed and would have been long since dedicated to the public years earlier will not remain tied up in “parked” applications.  Further effort could be required as multiple applications on the same invention all publish, each with a slightly different disclosure and claims, that would normally have been weeded through interference proceedings.

What’s your take?

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  1. I don’t agree. Deferred examination is used elsewhere in the world, and in such places roughly 1/3 of cases are abandoned without examination. At present, in the PTO, once the initial fees are paid, there’s no incentive to abandon the case before examination. If examination could be deferred, then applicants would select which cases are examined and the less important cases would not be examined.

    I don’t see the risk that applicants will flood the PTO with applications to create prior art against third parties. There are cheaper ways to publish a disclosure of something.

    Experience with 1.103 deferral is not relevant. Applicants still have to pay initial fees, so there’s few occasions to defer examination. Deferred examination, with a deferred examination fee, would be utilized frequently.

  2. You may assert that what the UK does is irrelevant. But UK law since 1949 has always included a cap on the number of years a patent application can remain pending. Currently 4.5 years from priority date. And it caps all the divisionals too. So, the public will know, 5 years from the priotity date, the MAXIMUM scope of protection that the Applicant has been able to squeeze out of that patent application. That, I would say, is the opposite of deferred examination. As far as I know, the ONLY reason any Patent Office asks for, and gets, DE is because it can’t cope. Poor reason, I would say. DE damages legal certainty, I would say. DE deters investment in new technology, I would say.

  3. We will be seeing a drastic drop in trademark and patent filings…from 20%-40%. Look at history. The backlog will be irrelevant in another year or two. The Examiners will be glad to have a job and perhaps..just perhaps..relationships will improve between the Examiners and the attorneys that feed them work.

  4. Would it even make a difference?

    Doesn’t the current normal wait time until 1st office action (40 months) without any deferral effectively defer examination?

    If deferral would be available at most 3 years from earliest filing and current wait time is 3 yrs 4 mos..

  5. patatty30:

    I agree that there already seems to be a “deferred examination” — the current backlog. If any deferred examination is longer and on top of the already long backlog, the marketplace will be left with a potential threat hanging over their head for quite some time.

    I firmly believe that what the marketplace prefers most is certainty. The uncertainty of deferred examination could be a drag on innovation and the economy.