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January 31, 2009

Exhuming Examination

Whatever the USPTO proposes for deferred examination (DE), and it surely will, the likely outcomes won't amount to a hill of beans. As a salve to pendency, DE as a dud is an easy bet.

The agency, in adopting its eighteen-month publication procedural rule in 2000, created an optional "Suspension of action by the Office" - 37 CFR 1.103(d): up to three years from earliest filing date. The option for non-publication is taken away - the application will be published.

Reputedly, fewer than 200 applications have had DE requested since 2000. To call that a drop in the bucket would be overstatement. There's little reason to think those numbers would burgeon under a new scheme, unless the filing fee is nominal. But the PTO cut fees? Hah.

Last year, everyone was talking about "gold plated" patents. How times change with the economic climate. Now we're talking Wal-Mart patents.

Patent Barista Stephen Albainy-Jenei has brewed trouble with DE, speculating "a deferred examination system may actually give rise to even more work," owing to a temptation to file "iffy" applications. Thank goodness that doesn't happen now. Stephen also frets about more noise for determining freedom to operate. Not if the applications are published.

A significant majority of applications are abandoned, although not usually until rejected towards oblivion. Sitting on a shelf for a few years might do some good. A little time to determine whether that supposed invention has any value to its applicant. Or anyone else.

That's where Professor Crouch at Patently-O breaks into a sweat, over "the potential for submarining and shifting claim scope to encompass market changes." Shifting claim scope happens all the time with continuations. Submarines happen with unpublished applications.

But Crouch surfaces with optimism.

There are two main benefits of deferred examination: (1) delaying spending fees could have a great cost savings if the delay allows companies to figure out that a significant number of applications are no longer worth pursuing; (2) non-deferred cases should move more quickly through the system.

Obzilla and the Bilski bullet have taken the wind out of the sails of a lot of potential applications. Pendency is going to drop regardless of deferring examination.

To the extent that DE has any heft by numbers, DE provides a crop of potential prior art. But so does any published application.

So, unless the Office has something more alluring about deferred examination that what's been done before, such as a deferred fee, the sound of a new DE regime is going to be a yawn.

Posted by Patent Hawk at January 31, 2009 7:32 PM | The Patent Office


I might point out that the deferred exam you are discussing is only available prior to first OA. A separate provision is that after an OA, but not during a response period, the applicant can petition for a stay for cause -- $200 petition fee.

Anyone who has claims are susceptible to a Bilski rejection certainly ought to consider deferred exam until we see what the USSCt is going to do.

The situation is comparable to those litigants who get transferred to Oregon USDC probably wanting to stay prosecution of their software claims infringement action, hoping Bilski gets shot down by USSCt before a certain corporate giant can bugger their lawsuit with it.

Posted by: Babel Boy at February 1, 2009 7:43 AM

There are many good tactical reasons for using the present deferred exam in the US, particularly with international applications.

Even if I just want a US patent, I would prefer to prosecute a case in Canada over the US any day. My confidence level in US examiners is at a rock-bottom low. I'm in Canada so for Canadian clients or myself, I can file here first with a demand for examination, and file a request for deferred exam with the US application. If I were in the US, I would file in Canada as soon as I get the foreign filing license. Then defer the US case and demand exam in Canada. Canada is pretty quick, so you can prosecute the case to completion then ride the Can-Am Patent highway into the US before the deferred period lapses.

The Canadian filing fees might seem pricey, but compared to all of the idiot petitions, appeals, RCE's etc you're going to be forced to pay by the PTO, you're clients will likely save money in the long run and have protection in all of North America to boot.

BTW, I'm filing a patent application on this process just as soon as I can find a particular machine to tie it to.

Posted by: Babel Boy at February 1, 2009 7:59 AM

"BTW, I'm filing a patent application on this process just as soon as I can find a particular machine to tie it to."

Darn it, BB. You got coffee up my nose and all over my monitor

Posted by: Anon E. Mouse at February 2, 2009 5:36 AM

Deferred examination = John Doll's next townhall meeting topic.

Doll "The backlog has no been renamed "deferred examination inventory, so, as you can see, its not our fault"

Joe Attorney: "Isn't it true that 4 applications are presently deferred and 6 million are just not examined yet?"

Doll: "The Deferred examination inventory has grown 400% since its inception"

Joe Attorney: "So, in the last 6 months it has gone from 1 application to 4?"

Doll: Thank you for coming, and please be on the look out for our new rule package entitled "deferred filing" its where you mail your application in a sealed envelope back to yourself, then you just keep it.

Posted by: snake at February 2, 2009 8:31 AM

They do it in Canada and lots of applications simply never get examined because within the 5 year window of time for examination, many applicants decide it's not worth it. I think it might help with the backlog here.

Posted by: Michael Feigin at February 2, 2009 11:00 AM