The PTO will conduct a roundtable discussion on Feb. 12 to determine whether there is sufficient support to consider a deferred examination procedure.
The PTO currently examines every non-provisional patent application that is filed with the requisite fees. Many countries, such as Canada and Japan, allow applicants to defer examination for up to three years from the filing date. This gives the applicant more time to determine whether the invention is commercially feasible and whether it is worth pursuing all the way through the prosecution procedure. If the applicant does not file a request for examination by the deadline, the application is abandoned and not examined.
Supporters of deferred examination believe it to be a great way to relieve some of the congestion and backlog of applications at the PTO. Many applications for inventions that turn out to not be of significant importance to the applicant can be dropped without examination. This frees examiner resources to be used to examine applications that the applicants believe to be more worthwhile.
Opponents of deferred examination argue that this would increase uncertainty in the market. One of the big problems with the patent system, they argue, is the pendency of applications at the PTO. Although publication of applications helps to an extent, competitors do not know whether or to what extent a product in which they have invested a large amount of capital will be covered by an earlier-filed later-granted competitor’s patent. Permitting examination to be deferred would increase this uncertainty further by potentially lengthening the time that an application is pending at the PTO, and even permit more time for patent applicants to revise their claims to cover products in the marketplace. On the other hand, it would seem that a shorter backlog at the PTO would permit their competitor’s “important” patents to get through the PTO more quickly, reducing uncertainty.
Many of these issues were covered in the U.S. Department of Commerce’s Global IP Center set of recommendations released in December to the new administration for dealing with the PTO.
In 2000, the PTO created a deferred examination procedure where an applicant can petition the PTO for a deferment of up to three years, by paying an additional fee (on top of the previously filed application and examination fee). The PTO reports that fewer than 200 applications have taken advantage of this option.
Why is deferred examination more popular in other countries than in the US? Dennis Crouch gives a good summary of reasons with which I generally concur. These include that in other countries, examination fees are also deferred, while in the US all fees are paid at filing regardless of the deferment. Also, in other countries, examination must be affirmatively requested, while in the US deferment currently has to be affirmatively petitioned for, something many applicants may be reluctant to do.
Will deferred examination solve the backlog and pendency ills of the PTO? This is doubtful, but it is a step in the right direction.