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Deferred Examination: Does Putting Things Off Lesson Your Workload?

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?