Patently-O Bits and Bytes No. 44: Deferred Examination

  • Deferred Examination I: For the current state of PTO backlog, I am a strong believer in providing a mechanism to either (i) allowing the inventor pay to move to the front of the examination line if the patent needs to be obtained quickly or (ii) allowing the inventor to delay prosecution if it is unclear whether the invented technology will have any market value. There are some potential negative issues of allowing deferred prosecution — particularly the potential for submarining and shifting claim scope to encompass market changes. These problems would largely be limited through early publication of deferred applications as well as continued enforcement of the written description and enablement requirements.  In addition, the patent term should continue to run during deferment.
  • Deferred Examination II: In its response to congressional queries, PTO Director Jon Dudas has come-out in favor of a system that allows for deferred examination. The PTO’s tentatively proposed implementation scheme would move along a three-step process:
    • Allow a 14–month extendible period for responding to a notice to file missing parts.
    • Use a tiered payment structure that allows for delayed payment of the examination fee.
    • Empower Provisional Applications: Allow applicant to claim priority to a provisional application for up to five years.
  • Deferred Examination III: For many, including the PTO, the hope with deferred examination is that “many inventions … would be recognized as obsolete [or otherwise worthless] before expiration of the five year period and therefore would not require examination resources.”
  • Rocket Docket Examination: In the past, the AIPLA and others have argued against having a rocket-docket examination based simply on the payment of a fee. Their argument is that it is somehow inequitable and un-American to line-jump based on the availability of funds. That argument is largely hog-wash.  Many of the richest companies in the US maintain tight controls over patent prosecution costs. I suspect those companies would only rarely pay an additional $5,000 in PTO fees for rapid examination. (If a rocket docket for patent prosecution is created, the fee should be high enough to ensure that it does not simply create an additional bottleneck.)
  • Clear Channel Communications now owes $90 million to Grantley Patent Holdings. The Eastern District of Texas jury found the patent willfully infringed with damages of $66 million. Last week, the Judge awarded an additional $16 million in enhanced damages in addition to prejudgment interest and interim royalties due.

Two Hong Kong companies have been fighting over a coffee maker design patent.  Simatelex (who manufacturers for Sunbeam) has signed a consent decree admitting contributory infringement. The patentee’s case against Sunbeam is still pending in the Southern District of New York. Wing Shing v. Simatelex.

47 thoughts on “Patently-O Bits and Bytes No. 44: Deferred Examination

  1. Public Searcher:

    Sounds like a good approach (expensive but good):

    “As a searcher receiving claims to search against for an AE (or otherwise), they are usually of the same grade as what are filed with the PTO initially, which is not allowable. Searching, we find a half dozen 102 references to the subject matter. Claims are redrafted, search is done again and attorney gets to argue around 103 art this time. One day for the first search, another day for the second search and a third day to perform lots of erroneous searching to lower the chances of a rejection by a non-objective patent examiner (they love useless key word searching for dependent claims). Then toss in some terrible NPL searching to satisfy the search template guidelines and you’re up to 3 grand to perform an AE search.”

  2. I also filed under the old (2000) petition to make special for a fee and no particular reason process.

  3. I do not remember, but I would guess that the claims were not actually drafted until after the search. For patentability searches, I supplied a description and half a dozen rough claims I intended to use. At least one of these would be a picture claim, where if the patentability search produced a reference that had that, we wouldn’t file. However, for each one, the search could not produce a reference that had all the claimed limitations from my picture claim. That picture claim was not likely filed with the application as it most likely included limitations not necessary for patentability.

    Regardless, I am sure the claims were refined after the search.

  4. Lionel,

    In reply to this post and your post in the more recent AE comments of 6/23 in the inequitable conduct blog…

    You are in the minority when it comes to drafting “initial” claims in my experience if they were still good after a search.

    As a searcher receiving claims to search against for an AE (or otherwise), they are usually of the same grade as what are filed with the PTO initially, which is not allowable. Searching, we find a half dozen 102 references to the subject matter. Claims are redrafted, search is done again and attorney gets to argue around 103 art this time. One day for the first search, another day for the second search and a third day to perform lots of erroneous searching to lower the chances of a rejection by a non-objective patent examiner (they love useless key word searching for dependent claims). Then toss in some terrible NPL searching to satisfy the search template guidelines and you’re up to 3 grand to perform an AE search.

    And that’s if we’re being scrupulous… it’s easy on our billings to do the remaining searching after finding the 102 art and before you’ve revised the claims! Then we get to do it again after you’ve revised the claims because you can’t sign the support document if the search was to claims that you’ve since changed.

    ‘Course, I’m also assuming the attorney is scrupulous. It’s much easier to verbally direct the searcher to “not find anything” but create a beautiful looking search document. Makes the support document easier to draft and reduces the chances of a rejection by the examiner.

    The reason I said “treat it like a validity search” is what will be done with the patent once it issues. If the client is willing to jump through all these hoops to get a patent in 12 months, I say “why?”. Probably so they can start vigorously defending their patent! Might as well make the search more thorough the first time and let the litigation folks start their engines.

    Regardless, thanks for sharing your experiences and views on AE’s. It’s good to read real responses on practical matters!

  5. Back in 2000, I filed a couple petitions to make special that were not based upon any of the special categories, just a desire to get faster prosecution. In both cases I had a $700 patentability search done and articulated the differences between our claimed inventions and the prior art that came up in the searches.

    In my discussion of the art, I listed the claim limitations shown by quoting from the references. I then identified which elements were not shown (using “for example” and other qualifiers to indicate that the list of missing limitations may not be exhaustive) and made a short (one sentence) comment that the missing limitations were not obvious with a succinct, general why. That was it and both were allowed.

    It really was not that onerous. Yes, there is more of a record, but it did not narrow my claims any, so I don’t see what the problem is. You can draft the claims in view of the art that comes up in the patentability search.

    I work in-house now, and they are not going to pay the fees (and certainly not $5000) to advance applications in the queue.

  6. Cave:

    I think one of us may misunderstand (perhaps it is me). 708.02(a)(roman numeral I)(letter I)(1-5) state such things as “detailed explanation of how claims are patentable,” “showing support for each” means-plus-function element, “identification of all the limitations in the claims that are disclosed by the references,” etc. As I said, it has been some time since I filed such a petition, and perhaps I am misreading, so please let me know if you come to a contrary conclusion.

  7. Yes Mad, it seems you are correct in part, but it seems as if all that is required is a statement that applicant has made or cause to have made a search and therefore has reasonable knowledge of the prior art. I don’t see this as a particularly onerous statement.

  8. Just to add on here – I would wholeheartedly support a bill implementing a full statutory scheme of examination upon request (or similar deferred prosecution) at the USPTO. I think this would really be a better use of Applicant and USPTO resources. I would, however, very much like such a bill to retain 18-month publication for all apps regardless of deferred status, options for 3d-party examination request, and perhaps a small annual maintenance fee for deferred apps.

    As for expedited prosecution, I don’t really care one way or the other, as long as the expedited option is expensive enough to support additional examining resources for nonexpedited apps (sort of how first-class passengers actually subsidize lower coach fares), to prevent the USPTO from becoming an “expedited applications only” office.

    Also, kudos to Dudas for doing (well, stating) something not entirely terrible for patents.

  9. Me: “I would humbly submit that the problems with the USPTO are rooted in the plethora of procedural options available to applicants, compounded by the fact that the system/courts positively discourage applicants from “nailing their colors to the mast” at any stage. Applicants/their attorneys are not to be faulted for seeking to work the system to their own/their clients’ best advantage, but their efforts, combined with the highly politicised nature of patents in the US, appear over time to have warped the system into a Kafkaesque parody of itself.”

    YAN: “There are cases where applicants have filed applications that the applicants do not want to have examined (i.e. they desire a pending continuation application for a set of claims to be determined in the future, but they have no real interest in the claims currently in the pending continuation application). For applications that the applicants do not want to have examined, the USPTO’s current approach results in a waste of time and money, by both the applicants and the USPTO, examining applications that the applicants do not want to have examined.”

    I rest my case!

  10. Cave:

    For certain petitions to make special, see MPEP 708.02(a)(roman numeral I)(letter H) and (letter I). This is not a requirement for certain petitions (perhaps based on inventor health, age, and/or other grounds), but is required for most petitions.

    Am I misremembering and/or misreading?

  11. The easiest solution to the backlog would seem to be to waive the due dates for responding to an office action. If there are no due dates, some applicants would take several years before responding. Applicants who desire quicker examination would respond sooner.

    There are cases where applicants have filed applications that the applicants do not want to have examined (i.e. they desire a pending continuation application for a set of claims to be determined in the future, but they have no real interest in the claims currently in the pending continuation application). For applications that the applicants do not want to have examined, the USPTO’s current approach results in a waste of time and money, by both the applicants and the USPTO, examining applications that the applicants do not want to have examined.

  12. Here’s what applicants can do using the EPO:

    A first filing claiming no earlier priority will receive an EPO search report and opinion within about six months i.e. well within the 12 month Paris convention period. There is no requirement to take any action in response to the report/opinion.

    The applicant can then decide whether the claims and/or description are adequate in light of the report/opinion. If the application still seems to be in good shape, examination can be requested immediately, or payment of the exam fee can be deferred until about 24 months from the initial filing date (i.e. six months from the 18 month publication). The applicant can (at any time) request accelerated examination without giving any reason or paying any fee.

    If the report/opinion raises serious issues about the application as it stands, it can be revised to whatever extent is necessary and re-filed as a new application within twelve months of the original filing, claiming priority from the original filing. Alternatively, if there has been no public disclosure of the invention, the original filing can be withdrawn and the clock restarted by a completely new filing.

    In this way, the EPO effectively provides applicants with an early “quality review” in a way that affords the applicant the opportunity to decide either (a) fine, let’s carry on, (b) this is a waste of time, let’s give it up or (c) we need to do more work on this before we commit to examination.

    The opinion provided with the search report is, in effect, a FAOM with no deadline for reply. When subsequently requesting examination, the applicant can at that time address the issues raised in the opinion, in which case the first office action will take account of such submissions. Otherwise, a first office action will rapidly be issued based on the existing opinion.

    The EPO approach relies on applicants engaging with the system in good faith, with an application that clearly identifies what it is that an applicant thinks they have contributed to the state of the art.

    I would humbly submit that the problems with the USPTO are rooted in the plethora of procedural options available to applicants, compounded by the fact that the system/courts positively discourage applicants from “nailing their colors to the mast” at any stage. Applicants/their attorneys are not to be faulted for seeking to work the system to their own/their clients’ best advantage, but their efforts, combined with the highly politicised nature of patents in the US, appear over time to have warped the system into a Kafkaesque parody of itself.

    Take home message: deferred examination is good, but only if preceded by a timely search report that does not require a response, and in the context of a system that founded on a pragmatic (not idealistic) view of patents and patent rights.

    PS – I would never claim that the EP system is perfect or anywhere close to it, or that there are no lessons for Europe to learn from the USA in terms of commerce or entrepreneurialism.

  13. Cave, I’m not suggesting that the USA and ROW “harmonise”. I have many times urged that a foul compromise is worse than the status quo. In other fields of human endeavour, reform is preceded by surveys and benchmarking studies. In tax law, Governments scour the world for good ideas and, when they find them, shamelessly copy them. In substantive patent law, the European system is far more friendly to small inventors than the US patent law (Not many people in the USA understand that). It is just that society in Europe doesn’t realise that its prosperity depends on encouraging talented creative people to be entrepreneurs. Graft that imperative on to European patent law. Then you would see Europe really motoring. That’s a pipe dream. So too (I grant you) is grafting the joys of simple European patent law onto US entrepreneurial society.

  14. Mad Prosecutor said “We also disfavor petitions to make special for the same reasons that the ESD/AQS is disfavored – statement with respect to the prior art.”

    I’m not sure what you mean MP. Since when does a petition to make special have anything to do with statements regarding the prior art?

  15. I agree that band aids are not solutions, but bottom up restructuring as proposed by a young European, means some kind of knee-jerk call for harmonization – which is a mistake.

  16. I’ve been out of the loops lately and still am (yes, I’ve missed you all too, thank you). I’m not even sure where to post this comment.

    However, what I have seen while Patently-O skimming around a bit reminds me of Judge Mayer’s dissent in Phillips v AWH, because what I’ve been reading:

    “… is akin to rearranging the deck chairs on the Titanic — the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones’ locker”

    The reject, return, reject crap from the PTO, and the patent reform attempts coming out of the PTO and other would-be patent reformers, is at the behest of the anti-patent international “Coalition for Patent Fairness” (“The Patent Pirates”) and others who are hijacking our government as we speak – and those who they’ve duped. These greedy bastards want to dummy down and “harmonize” America’s heretofore strong patent system.

    What we need is obvious to even the most casual observer:
    (a) Competent PTO management who love patents, and for
    (b) Serious IP practitioners to push for a stronger American patent system than ever.

    Why would any American patent practitioner not want our system to be stronger?
    A stronger patent system would be:
    (i) good for our country in particular by encouraging innovation and new product development, and the growth of new markets and industries,
    (ii) good for American IP practitioners by increasing the size of the IP industry (and their hourly rates since their highly specialized talents would be more valuable than ever),
    and
    (iii) good for inventors everywhere by rewarding them handsomely for their Discoveries (allowing them to invest their rewards establishing new businesses and industries).

    Anybody?, anybody?, Bueller?

  17. CaveMan: “With all due respect Max, I don’t think you, or many others, have been around long enough to provide wise commentary on the subject of reform. Yet. Get back to us in about 15 or 20 years when you get a couple of gray hairs.”

    I have a few grays, and I agree with MaxDrei on this. Real reform means bottom up, not bandages for minor lacerations (commercially available under the trade name, “BAND-AID”).

    Most of the problems are not with insufficient rules, but with insufficient examination. The PTO keeps insisting that it cannot hire enough examiners to do the job. I respectfully disagree. The PTO needs to modify its quota and incentive program to comport with the goal of having a best-possible first office action. The PTO needs to open up offices in cities around the country, and hire highly qualified individuals fluent in English to examine applications written in English. They need to promote people to management level on knowledge and ability, not solely on production.

    Finally, but the PTO is and always has been simply a filter, and were never, at any time in its history, 100% reliable in issuing only valid patents. Perfection is not an option and is not possible. Rather than issuing “second pair of eyes” proclamations, and more hoops for the Applicant to jump through before he can obtain a patent, and draconian penalties on Examination who screw up (to the point they are fearful of issuing any patent), they need to make clear to the American public and folks like Greg Aharonian who delight in belittling and denouncing individual patents he feels are invalid. The PTO is a big organization; bad patents are (and have always been) bound to slip through. Anecdotal evidence is not evidence.

  18. I also disagree that many large companies would pay extra for prompt or expedited examination. IBM, GE, and some of the largest companies in the world offer very little for patent preparation, and would never, in my experience, offer $5000 for expedited examination.

    We also disfavor petitions to make special for the same reasons that the ESD/AQS is disfavored – statement with respect to the prior art.

  19. We have a deferred examination system. It’s called art unit 1600, which typically has one of the longest pendancy rates at USPTO. And in most instances deferred examination in biotech/pharmaceutical cases is fine — there is urgency to file given the highly competitive nature of the business, but since virtually all products are highly regulated (FDA and comparable agencies), there is rarely need to have a patent issued promptly. It is almost unheard of that a product is approved by the FDA or a comparable regulatory agency before the USPTO, even if moving with pre-global warming glacial slowness, has definitively acted.

  20. Delayed payment of the search/exam fees seems to be the best option. It avoids the problems with incomplete provisionals, and the messiness of filing dates with delaying completion of the application. The application would be as complete as it’s ever going to be, and by paying the search/exam fees late, you end up with something that closely resembles deferred examination as it is practiced in other countries.

    And yes, it’s a statutory workaround. But it COULD work.

  21. Many practitioners think that it would indeed be a good idea to have both an optional (well-managed) “deferred examaination” and “petition to make special” accellerated examination system [but not the new more onerous and dangerous version of the latter recently adopted by the PTO}. However, the Dudas proposal to allow a 14–month extendible period for responding to a “notice to file missing parts” (rather than deferred examination of complete applications) would seem to invite the filing of incomplete and inadequate patent applications. That could cause all sorts of problems, such as confusion as to valid filing dates.
    P.S. Under current practice, the PTO lets examiners examine and process large numbers of patent applications completely out of their real (original) filiing date order anyway (including all the “submarine” patents due primarily to PTO examiners examining much later filed applications instead), so obviously that is a separate issue and not a show-stopper.

  22. A “Rocket Docket” for prosecution sounds like something Dudas came up with in some of those alleged meetings with the RIM folks.

    Petitions to Make Special are better than a Rocket Docket for a fee because they are cause based and discretionary. For a small company that wants and deserves their place in line or files a petition to make special because they are ready to go to manufacture, getting bumped behind a big company that can cough up big fees is fundamentally unfair.

    It appears to be pretty clear that Dudas is in someone’s pocket. What’s that foul stench?

  23. Why does PTO management keep re-inventing the wheel? And I don’t think anyone can question that I am uniquely qualified to speak directly to such issues…

    What about Petitions to Make Special? Still available under 37 CFR 1.102. They have been around for as long as I have been in practice. Which, as far as anyone knows, could be quite an extremely long time. Petitions to make special are available for a simple petition fee ($130).

    All this reform BS seems to cater to appeasing ignorant upstarts that want to make change simply for change’s sake. They think they are the first persons on earth to ever have a good idea rattle around in their head. Like the peer-to-patent program, which was unnecessary in view of provisions already available for third parties to submit art.

    Why is it that total freaking 1diots are trying to have such a big impact in an agency that is in charge of managing genius? Has Dudas ever read the MPEP? Is Dudas a registered practitioner? Why isn’t he working on his brief in Tafas v. Dudas? Why is he taking on new projects like new BPAI Rules?

    Why is it so hard for government (or individuals for that matter) to do NOTHING, when NOTHING is the right thing to do.

  24. With all due respect Max, I don’t think you, or many others, have been around long enough to provide wise commentary on the subject of reform. Yet. Get back to us in about 15 or 20 years when you get a couple of gray hairs.

  25. Wow, after spending $10 million+ on a ridiculous rules package that actually ended up increasing the backlog, now Dudas actually went back and read some of the comments. Deferred examination is the most sensible thing the PTO could implement right now. It won’t cure the backlog, but it is a step in the right direction.

    The only thing that shouldn’t be overlooked in formulating the exact system is that there must be some mechanism for a deferred application to be “kicked out” of deferred status when an interference situation arises. Switching to first to file would solve this issue.

    As far as the rocket docket, large entities should be simply limited to only requesting 10 or so rocket docket applications per year, and small entities should be allowed to request 1-2. This would avoid any exploitation.

  26. Seditious thought: deliberately suggest a reform measure (deferred examination) that has great superficial appeal to commentators, but which more educated heads know already is useless (many other nations have tried it and found it wanting) and will soon be exposed as useless. Let the debate run, for the calculated reason that it will be one more nudge, to bring people round to recognising that reform needs more than Band-Aids. You have to start at the foundations, and work up from there. Nobody’s quite ready to do that. Yet.

  27. As if the big guys don’t already have enough advantages over us little guys…

    I’ve got a better idea.

    What say all small entities get their apps automatically moved to the front of the line…for free.

  28. Rocket Docket Examination:

    My guess is that the large companies for whom I do work would probably pay a $5,000 fee for 20% of their applications. This would probably further delay examination an extra year for small companies and individuals (but that is just my guess) who cannot afford this large fee. I think that Rocket Docket Examination is worse than hog-wash, unless the US patent system is essentially only for the large companies.

  29. I thought that the old petition to make special based on a search and its reasonable petition fee worked just fine. Don’t know why they discontinued it.

  30. pds: I agree re: provisionals. It would only be an option for applicants (1) who aren’t interested in foreign filing since it would be well past the 12 months required in many foreign countries and in the PCT; (2) who would want to defer the $3-4K per office action prosecution costs, since the additional filing costs would be minimal; and (3) who have perfect written description and enablement.

  31. Sorry, posted before I clarified:

    Not that examination must be requested; but that the examination fee would be due on/before, say, 60 months from the filing date rather than at filing.

  32. Perhaps Applicant pays the filing and search fees, a search is performed, and the application with search report is what’s published. Applicant then may pay the examination fee, and the application will advance to examination. With or without a preliminary amendment.

    The USPTO still is stuck searching on an application that may well be abandoned. BUT the applicant has a far better picture of the prior art (assuming, of course, a decent search is performed) and the public should have a less vague idea of what protection may issue, since it sees both the published application as well as the closest references the searching examiner could find.

    Sounds PCT-esque, but does it address concerns?

  33. One of the major complaints of companies is that they do not know for certain and have difficulty determining the scope of patent protection which will eventually issue from competitors’ published applications. If at least an initial OA has issued it will give competitors and the public a better idea of the scope of eventual patent protection. If the issuance of the initial OA is delayed, it will only delay the time when competitors and the public have a good idea of the scope of eventual patent protection. Thus, delaying issuance is counterproductive in my opinion.

  34. “other businesses such as American Express”

    OT, but is there any reason for American Express to exist anymore?

    I mean other than to make its shareholders, employees and CEO happy. I’ve left home without American Express hundreds of times and never once regretted it.

  35. As for deferred examination, given the costs of preparing the application versus the USPTO filing costs, once an applicant has plunked down their attorney/draftsman’s fees, saving a few hundred by not request examination (or deferring examination) really doesn’t make much sense.

    As far as Dudas’s comments regarding allowing applicant’s the ability to wait 5 years to convert into a provisional, I would never recommend that option to a client. If, for example, your provisional is defective (e.g., enablement), you at least you will cure that error within 12 months and perhaps that won’t all too many intervening references. However, wait 5 years and your provisional better be perfect the first time … at which point you might as well have filed a non-provisional. Of course, there is the problem with harmonizing this with the rest of the world, who won’t give an applicant five years.

    I don’t mind an applicant paying to go to the front of the line. However, it should be a substantial amount (e.g., $10-$20K or even higher). For applications that have a legitimate chance of being licensed/enforced, that amount should be a drop of the bucket of potential revenues from the patent (if issued).

  36. Empower Provisional Application…

    I wish I could cast an Empowered Isaac’s Greater Missle Storm on Dudas :o

  37. PO tidbit straight from the USPTO weekly:

    A method for eliminating business method patents? Bilski Case Examined – (06/13/2008)

    Recently, the media has focused on the pending In re Bilski case in the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., which is an appeal from a decision by the United States Patent and Trademark Office (USPTO). After a full-court hearing on May 8, many reporters and bloggers have speculated that this case will lead to the end of business method patents. To help USPTO Weekly readers get a better understanding about the Bilski appeal, the Weekly investigated the case.

    Since the Federal Circuit’s 1998 State Street ruling (State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)), which opened the door to business method patents, and AT&T decision (AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1532 (Fed. Cir. 1999)), the USPTO has been inundated with a large number of “nontraditional” applications. Such applications have ranged from legal methods, to methods of holding conversations, to a method for selecting a jury.

    The USPTO has done its best to follow the guidance in State Street and AT&T, which some believe state that any useful series of steps is patent-eligible. However, the USPTO does not believe that such a broad reading of those rulings is consistent with the Supreme Court’s views on the eligibility of “process” patents, as set forth in Diamond v. Diehr, 450 U.S. 175 (1981).

    The Bilski case challenges the USPTO’s decision to reject Bilski and Warsaw’s patent application on a method for financial hedging. The application broadly claimed a series of results that essentially calls for one party to enter into two sets of transactions. The Board of Patent Appeals and Interferences upheld the examiner’s decision that the claims were not patentable for failing to comply with the Diehr test for process patents, which requires the process to either transform matter into a different state or thing, or be tied to a particular apparatus or machine.

    Bilski and Warsaw are challenging the rejection in the appeals court, while the USPTO is defending its rejection and position that a “process” patent must adhere to the Diehr test. While the USPTO is not challenging the validity of business method patents per se, the appeals court has indicated that it might use the case as a springboard to possibly reconsider the State Street ruling.

    Many industries are split on the issue; businesses such as Bank of America and Wachovia are championing the court to overturn State Street, but other businesses such as American Express—with millions of investment in business method patents on the line—are hoping the court will embrace a broad reading of State Street that will permit any useful business method to be eligible for a patent. So, while the country waits for a decision on Bilski and possibly greater guidance for patent-eligibility within the next few months, the future of business method patents remains uncertain.

  38. “Empower Provisional Applications: Allow applicant to claim priority to a provisional application for up to five years.”

    That’s fine as long as the costs of filing of provisional application is jacked up like ten-fold, they are published within 18 months of filing regardless of whether they are abandoned, and the PTO actually begins to look closely at what is in the applications.

    Otherwise it is a nutball idea of biblical proportions. Talk about a playground for abuse.

  39. The empowered provisional is an odd idea. It pushes the drafting work away from the time when the invention is fresh in the inventors’ minds. It also increases the chance that intervening art or publications will prevent the utility from having proper support for the claims that get drafted years too late. It also creates submarine patents and pushes the US away from harmonization with other countries.

    The missing parts extension only makes sense for the fees. Everything else should be kept up front to make sure it gets done. Otherwise the rules would just set needless traps for applicants.

    The only part that is really needed is the delayed examination fee. Part of that should include a provision to keep the application’s place in line once the fee is paid. Otherwise most applicants would feel the need to pay the examination fee up front.

  40. Personally, I think deferred examination is a good idea. I’ve had a few clients who would be very interested in pushing off prosecution costs. Even though the proseuction costs are much less than the application costs, most small inventors would prefer to push them off. This gives them time to figure out whether they’re throwing good money after bad, or just coming along slowly.

    This is the first stab at backlog reduction that, if implemented correctly, isn’t just a backhand to the inventor/practicioner community.

  41. “Empower Provisional Applications: Allow applicant to claim priority to a provisional application for up to five years.”

    Meager provisionals are often filed to predate a public disclosure. In such cases, companies will want to prepare a full-scale application before one-year after the public disclosure. The difference between the provisional filing fee and the utility filing fee will be a small additional cost compared to the cost preparing the full-scale application. Accordingly, if you’re willing to pay for the full-scale application, you’ll probably be willing to pay for the utility filing fees. If they want this to really work, they’ll need to make the utility filing fees substantially larger.

  42. The U.S. Patent System is trying to move toward deferred examination, and has for some time. That is why there is no longer a large, single “filing fee,” but rather smaller “filing,” “search,” and “examination” fees.

  43. Wouldn’t extending priority of provisional patents to five years recreate problems of submarine patents? Or would pregrant pubs then be published 18 months after the provisional?

  44. Clive-

    The weird 3-step suggestion may be a statutory work around. The statute says that the office “shall examine” each application, so the director doesn’t have the statutory option of not examining applications. The 3-step dealy lets him tease out when the papers filed become an “application” for a few years, before examination (search, OA, rejection, allowance, etc) is required. Just a guess.

  45. A lot of the non-US countries where we prosecute have the affirmative obligation to request examination, else the application is deemed abandoned. (And of course, you don’t have to wait until the request deadline to file it.) Can someone explain why Dudas likes that model less than his weird three-step suggestion? Did the USPTO ever suggest a request-examination system? If so, who objected?

    Extending the missing parts deadline? Why? That’s the most painless phase of the entire process.

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