BNA (subscription service) is reporting that there was a lot of support for deferred examination at the PTO Roundtable held last week, while the opposition was fairly equivocal.
In my previous post, I laid out many of the arguments for and against deferred examination. Much of the discussion at the PTO Roundtable dealt with the details of such a procedure. Discussion included issues such as how long examination could be deferred, how much less the filing fee would be without the examination request, whether competitors could get intervening rights, whether deferred applications would be published after 18 months, whether competitors could request examination, and how deferral would affect a patent’s term. All of these details would need to be worked out prior to implementation of a deferred examination system.
Among the comments from participants, Alan W. Hammond of Life Technologies Inc., Rockville, Md., estimated his company would drop 20-25 percent of its applications if deferred examination were adopted. There was some discussion whether the uncertainty of competitors’ patents would reduce R&D, while others countered that permitting applications to be dropped would spur R&D in other areas.
Lawyer groups, such as IPO and AIPLA, remain opposed to deferred examination, but the tide seems to be turning. Their opposition was milder than previously and AIPLA in particular suggested it could reconsider the issue.
Other discussion questioned whether deferred examination could result in a reduction in PTO revenue. Others countered that most companies have a fixed IP budget and may actually file more patent applications with the knowledge that a certain percentage of them would not be pursued.
Acting PTO Director John Doll noted that patent filings are down about 1% so far in fiscal year 2009, which is 6% below the PTO’s budget. Participants expected the number to decrease further as the economic situation worsens.
Participants also discussed whether deferred examination should be considered by itself or as part of a larger patent reform project to meet the goal of decreasing patent pendency to 18 months. Some groups opposed to deferred examination may reconsider their opposition if this goal could be met.
Finally, the question arose whether this change could be implemented by PTO rulemaking or would require legislative action. Rulemaking is generally easier, but if this system were considered apart from other more controversial reform proposals, it may get through Congress without a lot of trouble.
Opposition to deferred examination seems to be waning. The main holdup now seems to be the details of what such a system would look like. While no change is ever supported unanimously, if the details noted above can be worked out satisfactorily, deferred examination will be a part of the US patent system in the near future.