Intellectual Property and Other Tidbits

In a January 28, 2009 Federal Register Notice, the PTO solicited comments for a deferred examination procedure. It stated:

Currently, many intellectual property (IP) offices . . .do not perform a substantive examination on every patent application that is filed in the respective office. Specifically, a patent application is not given a substantive examination in many IP offices unless and until an applicant submits an express request for examination, and the failure to file any such request for examination within a specified time period results in abandonment or withdrawal of the application. This practice is commonly referred to as ‘‘deferred examination.’’

In the United States, the mere filing of a patent application and payment of the applicable fees is effectively a request for examination of the application. The USPTO frequently receives suggestions that the USPTO adopt a deferral of examination procedure.

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. . . [This] deferral of examination procedure . . . however, has been used in fewer than two hundred applications since its inception on November 29, 2000. . .

The deadline for receipt of written comments has now been extended to May 29, 2009.

In short, this procedure appears to be a funding effort, with little benefit to IP owners. Obviously, such a procedure would require application owners to pay a new fee and would thus increase the cost of patent procurement.

Potential benefits to application owners might include additional time (i.e., up to 3 years from filing) to determine whether or not the invention described in the application warrants the costs associated with examination. However, many applications are not examined for more than 3 years nowadays, particularly in the more complex technology areas. Hence, this is not likely to be a valuable benefit to IP owners.

A second potential benefit of deferred examination may involve delaying publication of the deferred application in the U.S. U.S. patent applications are generally published 18 months after their priority date. Thus, if deferred applications will not be published during the deferral period, application owners may benefit by keeping their application secret longer than 18 months, and perhaps even spring it on a competitor. Realistically, though, this is not likely to helpful since most businesses are interested in foreign patent protection, and thus file PCT applications (which are published 18 months from the original priority date.)

Finally, deferral would be unattractive to the life sciences industries if it would involve loss of patent term life.

This entry was posted on Tuesday, March 10th, 2009 at 4:19 pm and is filed under PTO patent practice. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.