Comments on: Deferred Examination: Does Putting Things Off Lesson Your Workload?

By: Stephen Albainy-Jenei

Stephen Albainy-Jenei — Tue, 24 Feb 2009 20:40:13 +0000

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.

Stephen

By: patatty30

patatty30 — Tue, 24 Feb 2009 20:03:32 +0000

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..

By: Michael Zall

Michael Zall — Mon, 02 Feb 2009 15:38:17 +0000

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.

By: MaxDrei

MaxDrei — Sun, 01 Feb 2009 13:15:29 +0000

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.

By: AH

AH — Sat, 31 Jan 2009 04:43:14 +0000

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.