Patent Law

Exhuming Examination

By Gary Odom and Jordan Kuhn

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 Submarines happen with unpublished applications.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.

Full post as published by The Patent Prospector on January 31, 2009 (boomark / email).