Delayed Examination: USPTO Proposes 12-Month Optional Fee-Deferral (and Examination Delay)

The USPTO is seeking comments on a fee-deferral program that would allow patent applicants to delay patent application processing for 12-months before paying the full non-provisional application fee. This process could be coupled with provisional application filings – effectively providing a 24-month delay.

Provisional applications have become hugely popular with almost 150,000 being filed each year. The vast majority of provisional filers use the form to delay non-provisional filing for at least 11-months. Allowing these applicants to delay further will help relieve the immediate queue of applications pending examination. From the press release:

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination.

The mechanism of operation of this new option is somewhat clunky*: At the end of the 12-month provisional term, the applicant would then file a non-provisional application along with the basic filing fee (currently $330) and oath. The applicant would then receive a notice of missing parts with a 12-month-from-filing response period. To “complete” the application and put it in the examination queue, the applicant must then pay the additional filing fees ($760) along with a delay surcharge ($130?).

89 thoughts on “Delayed Examination: USPTO Proposes 12-Month Optional Fee-Deferral (and Examination Delay)

  1. This is a race to the bottom of the educational spectrum

    And you are way ahead in the race Maxie – congrats.

    I do not want to sound condescending

    oops – too late. Hey anon, maybe you and RWA can get together for the snobbery festival a bit later. I hear the staff, adorned in their red pumps, serve delicious tea and delightful (road) apples.

    I am left uncertain

    That’s because you didn’t listen to IANAE – the man has the answers, you just gotta listen.

  2. MaxDrei,

    Please read my answer with more care. My answer as to the qualifications and experience of the writer extends to the intended addressee of the writer as well. “Qualifications and experience” was but one example. I will repeat: PHOSITA is a legal construct and is art dependent. The construct is entirely independent of the applicant and her application, other than the art field involved.

    Your “more questions” could be answered in a remedial course on US Patent law. It appears that you ask these questions with an underlying agenda in mind.

    First and foremost, a patent application is written (as I have been trained) with multiple audiences in mind, beginning with a “typical” examiner, but also including competitors, Judges and the public at large (who may make up a potential jury pool down the road). In this sense, your general rule of point 3 above starts you in the wrong direction (point 2 is nonsensical, as the audience simply is not a matter of law and not a matter of dispute, given that PHOSITA is largely independent of the application contents – except as pointed out, the art field). I do not want to sound condescending, but do you realize the differences between patent prosecution and patent litigation? Do you recognize that there are differences?

    As to the lack or presence of penalties, it should be evident that anything “extra” in an application has its inherent dangers and is usually balanced against the desire to have possible “retreat” positions during prosecution. I am not sure I understand what you mean by “tiro”, but a possible penalty for writing at the level of a third grader is not meeting the legal requirement of enablement. Notwithstanding that, an application written to capture the maximum scope of an invention and easily understood by a person of third grade intelligence is a work of art and is more difficult than you might imagine.

    IANAE,

    Why does it appear that you must argue everything? Your reply includes a negative (not directly) and then a non-sequitur on the level of detail to be “not forced to argue later on that all the important stuff you left out is obvious in the art.

    Even granting the desire to include enough detail to be “not forced to argue later on that all the important stuff you left out is obvious in the art.”, such has no impact on the interaction between applicant and PHOSITA. Further, there is no reason, nor expectation to be held that anyone will give credence to the applicant’s definition of what is obvious in the art. Especially as an examiner will establish what he believes is pertinent. This is not to say that trying to “guide” the examiner is a bad thing – as I mentioned, the examiner is one of the target audiences.

    Since I do not view such guidance as truly affecting PHOSITA (directly or indirectly), I am left uncertain by what you mean of “not directly”.

  3. Well thanks for that, anon. I wasn’t asking about the qualifications and experience of the writer but, rather, of the intended addressee. In any event, I find that your answer raises more questions than it answers, including:

    1. If there is no penalty for writing an app at inordinate length, such that even a tiro with minimal background technical knowledge in the field can realise the best mode just from reading the teaching in the patent, then it is no surprise that today specs are so long and detailed. Is there any penalty for writing at the level of a tiro?

    2. If the writer does not set the benchmark for the intended addressee, who does? If the benchmark is floating, and thus a subject of dispute between the litigants, must every case go to the Federal Circuit for it to be set?

    3. I should have thought it to be a general rule of construction of any document by the court that its meaning is to be that which it has for its intended reader. Are we saying that patents are an exception and that the court has no interest in ascertaining for what reader the patent is intended? I’m supposing, in particular, that the patent is manifestly addressed to a PhD level reader but a non-enablement attack levelled against it has traction only if the reader is 3rd grade. Is it fair to strike the patent down. In the same case, there is an obviousness attack. Patent owner defends with an argument that might have traction with a 3rd grade reader but not when the reader is the one he himself chose, namely the PhD whizz.

    4. This is a race to the bottom of the educational spectrum, isn’t it?

  4. The applicant does not control the level of PHOSITA applied to her application by changing the writing style or level of content.

    Not directly, but at least if you include enough detail in your spec you’re not forced to argue later on that all the important stuff you left out is obvious in the art.

  5. MaxDrei,

    PHOSITA is a legal construct and is art dependent. The applicant does not control the level of PHOSITA applied to her application by changing the writing style or level of content.

    For example, the legal requirements (i.e. 102 and 103, wherein PHOSITA would be referenced), do not change between two applications for the same art if one application appears to be from a third grader (i.e. it is written in crayon – legibly of course), and the other application is writen by a world renowned PHD.

  6. pingie, just to clarify:

    When the “ordinary” level of skill possessed by the notional PHOSITA is high, it is relatively easy to get a claim struck down as obvious, but that same claim is relatively resistant to enablement attacks. With a PHOSITA deemed to have a relatively low level of ordinary skill, your claim should be more resistant to obviousness attacks, but by the same token more vulnerable to support/enablement/sufficiency attacks.

    Such “squeeze” attacks are bread and butter standard, in biotech patent litigation in Europe. I should be surprised if they play no role in the USA.

    Who decides what is “ordinary”, by reference to what benchmark, and who defines that benchmark? Logically, just as with any letter, book, or professional report when the writer pitches it at a level appropriate for the specific class of reader, it ought to be the one who wrote the specification from scratch, with a particular PHOSITA reader in mind, but ping tells me it is definitely NOT. Anybody want to enlarge on that?

  7. Does the level at which the specification is written ie the intended technical reader, have any influence on the level of “ordinary” skill imputed to the PHOSITA, when the app is examined or the patent is litigated?

    In other words, is the attorney hoist with his or her own petard, not to mention having to lie in the bed he or she has herself made?

  8. “7, “full” is here the operative word. As I type this, I am preparing for a US client a response to an EPO Examiner. The prior art references come from GE and from global titans in Japan and Germany. All are from the early 1990′s and each is just a few pages long. I blame the courts, and the phenomenon of “creep”, (but not the attorneys) for the fact that, today, specifications, and sets of claims, are much longer than they need to be, or ought to be. So much longer, in fact, that they bring the patent system into disrepute.”

    I’m mixed on this. I have certainly seen specifications that are unnecessarily long, but I’ve also seen ones that are too short.

    Maybe I’m just crazy, but when I write a spec, I want to do more than the bare minimum of meeting the statutory requirements. I want it to flow well, explain the operation of the invention at a basic level and the technology behind it, explain the advantages of the invention, etc.

    I’m always annoyed by specifications written at a level where you need a graduate degree in the subject to be able to understand without further explanation. Although I have written some very complicated stuff, I work from the ground up, and nobody will ever have that annoyance with anything I have written.

  9. TINLA, I have written quick and dirty provisional applications in just a couple of hours. This ls what I recommend at a minimum.

    You must still advise the client on the pitfalls. Agreed.

    But, given the race to the PTO and the benefit of an early priority date or invention date, it is unconscionable to not file a quick and dirty provisional; but to instead wait months until a “complete” patent application is finished.

  10. support an effective filing date

    an effective filing date…

    …of what?

    Pick up the baggage Ned before boarding the train.

  11. Yes, Ned. It’s better than nothing. filing the client’s press release the day before it is released should protect the client from the press release being used as prior art. But clients get a false sense of security, and go on to disclose other things and make offers for sale and release the product, all while ignoring our advice to hurry up and convert the application to regular, and not to disclose anything else. It’s even more difficult to get this point across to clients than it is to get it across to our colleagues.

  12. Indeed Max, we required our inventors to submit invention disclosures with written descriptions in connection with drawings. We filed these as provisionals. I suspect that in many cases, if not most, these provisionals would support an effective filing date.

    So once one has decided to do the quick and dirty, there are ways to do it to make it more reliable.

  13. Lionel, thanks for your support. Ping seems to forget that I have repeatedly said that one has to show everything in the references. If the reference shows the entire invention, your proofs have to be commensurate. So I would agree, that proof of prior invention by reference to a provisional would require virtually everything now required by Section 112, p. 1, with the caveat, that Pfaff v. Wells never required a full written description, just enablement.

    I have also consistently said that all this goes out the door if the reference is a statutory bar. So, in that circumstance, even a 103 type reference cannot be sworn behind. You must demonstrate enough for an effective filing date.

    As to quick and dirty, it is better than nothing at all, which is the postulate.

  14. *****
    I believe Ned would agree that if an intervening reference was used for a 102 rejection than the Applicant would be screwed if the claim was not 100% supported in the original provisional filing.
    *****

    I’m not sure it’s quite that simple, especially in the case where the 102 reference is applicant’s press release or offer for sale. If the provisional applicqation is the press release, then Applicant is safe to the extent that the press release must also fail to be enabling disclosure of the claimed invention. However, if it is evidence of offer for sale, where the offer is not itself enabling, I’m not sure how that would turn out, but I don’t think it would be good for the applicant.

  15. “It” never left Mooney. And objectifying those around you is the top characteristic of a sociopath.

    “It puts the lotion on its skin…”

    Cue “Goodbye Horses” in the torture pit in Mooney’s basement in 3…2…1

  16. “Must” it, pingie? You don’t even believe it yourself.

    Whether a one-eyed viewer holds it to be a universal, self-evident beautiful truth that the longer the spec the “better” the patent; that might depend on how jaundiced is the eye of that particular beholder.

  17. specifications, and sets of claims, are much longer than they need to be, or ought to be.

    Must be more of that “universal” patent law that applies everywhere except the States (where the better and stronger patents can be found).

  18. 7, “full” is here the operative word. As I type this, I am preparing for a US client a response to an EPO Examiner. The prior art references come from GE and from global titans in Japan and Germany. All are from the early 1990′s and each is just a few pages long. I blame the courts, and the phenomenon of “creep”, (but not the attorneys) for the fact that, today, specifications, and sets of claims, are much longer than they need to be, or ought to be. So much longer, in fact, that they bring the patent system into disrepute.

  19. I believe Ned would agree

    I would believe that Ned has a hard time agreeing with anything concerning full support for the invention as claimed, as he has never relinquished the view that a quick and dirty provisional is good enough.

    It ain’t.

    Just an observation.

  20. Not wanting to infer aisle 6 as anyone in particular. Because aisle 6 being to close to people with 6′s in their monikers. I will refer to him now as car number 2. As in the second car of this wonderful trainwreck.

  21. Ping,

    I believe Ned would agree that if an intervening reference was used for a 102 rejection than the Applicant would be screwed if the claim was not 100% supported in the original provisional filing.

    However, if a reference is used as part of a 103 rejection, then to the extent the provisional contained all the information disclosed by the reference, the reference would be successfully challenged as the inventor has proven that he was in possession of the information contained in that reference first.

  22. I have never, ever seen a case

    You mean besides New Railhead Mfg. v. Vermeer Mfg.?

    How about them apples?

  23. I got a copy of the second much later though.
    And with a red ribbon on it. Just like the other.

  24. I have 3 ideas, right now. I have a fourth that I would just think about.
    I, like I said have paid for 2 Patent issuances so far.
    The second one, was paid for, for “over” 2 years. Then loads of Mularky. And a third applocation that was dead, and hanging, somehow came back all by itself,and was used as the second, without me even knowing. It’s “BLACK MAGIC” is what it is.
    And on the day it issued, (and I didn’t know it was issuing.) I got a phone call from aisle 6. I got called a lot. At least 6 times. And I never even got a copy of it.
    So, as I said I paid for the second. And if it somehow due more cash. It was done without my knowledge or consent.
    Like I said I will get my turn

  25. To put it in easy read. I didn’t get what I paid for! AND I didn’t ask for what I got!I was even asked to take what I was given! And I told him to stuff it! And I believe he also is cleaning isle 6

  26. Well you can’t be taling to me then I paid
    ALL MY FEES. Now if something happened along the way. My Bank Statement will back things up

  27. To ping and sarah What I am saying is issueing patents with money due on the fees such as 1500 doller issuance fees and excess claims costs can let indegent inventors find a customer instead of being unable to get issued their patent to sell it.Place a lien on it issued by uspto for unpaid fees then the buyer pays the fees.This stops abandonment or non filing on of good ideas because of no buyers or investors

  28. It’s a lot better than your house Mooney, er, I mean INANE, where you don your red pumps and argue with your mom about who will clean the basement.

    It’s baaaaaaaaaaaack!

    Clean up, aisle 6.

  29. And don’t forget, it was a master plan. That worked masterfully. Every thing possible was done. An that is why i am where I am today.

  30. I think I get what you are saying. There is a great story behind that. And it is unreal how the gates opened up then. I will get my turn.

  31. I am utterly amazed, ping, that I can cite you a CCPA case that actually states that proof of prior invention does not require Section 112, p.1 support, and goes on chapter and verse about needing only to disclose so much of the claimed invention as the reference shows — stripped of its obvious embellishments, and you claim you have refute me in some way?

    I have never, ever seen a case that says that proof of prior invention requires full Section 112, p. 1 disclosure. In fact, the CCPA cases say exactly the opposite.

    Can’t you read?

  32. Observer,

    Now you’ve gone and ruined the Christmas present I was going to get for you: IANAE in his red pumps.

  33. “Christmas must be unbearably depressing at your house.”

    It’s a lot better than your house Mooney, er, I mean INANE, where you don your red pumps and argue with your mom about who will clean the basement.

  34. Yes being able to defur 1 year on an issuance is better than present however for small entities issuance with a lein is the only way to retain ip rights for indegent inventors in the face of lack of customers to buy a useful invention or investors to fund.Non usage extensions should extend the patent life to a full 20 years to discourage buyers from waiting out the term to get the ip for free thereby discouraging inovation in all fields.

  35. was that the proof of prior invention only has to show so much of the claimed invention that is disclosed by the reference

    Ned, you are really pitiful.

    How you get from the above to a provisional not needing to show full support for an invention as claimed, is anybody’s guess.

    You are trying to show a citation which states that a provisional that does not show full support for the invention as claimed can still show enough support for the same invention as claimed, and that that somehow is enough for enablement for the same invention as claimed.

    We have already established that the genus/species discussion is a red herring.

    Dude, apples to apples.

  36. I’m sorry, ping, but you must think that I actually agree with you about In re Stempel. The whole point of that case was that the proof of prior invention only has to show so much of the claimed invention that is disclosed by the reference, i.e., “I invented that first.”

    See, e.g., link to bulk.resource.org

    In the cited case, the inventor failed only because he did not show prior invention of what the reference showed, but the Federal Circuit otherwise followed Stempel.

    See also, In re Clarke, 356 F. 2d 987, 992 (CCPA 1966) and In re Hostesttler, 356 F.2d 562, 565-567 (CCPA 1966)link to openjurist.org

    (“That requirement does not mean affiant must show a reduction to practice of every embodiment of the invention. Nor is that requirement coextensive with the amount of disclosure necessary to support a claim under 35 USC 112.) The latter case also held that the affiant need not show aspects of the reference that are obvious.

  37. Only fools celebrate the idea of something for nothing. Wise men know that anything worth having is worth paying the price for. Remember you get what you pay for.

    Christmas must be unbearably depressing at your house.

  38. “Get the quo without paying the quid!”

    Only fools celebrate the idea of something for nothing. Wise men know that anything worth having is worth paying the price for. Remember you get what you pay for.

  39. I don’t see it having much effect, at least in biotech/pharma. If you normally file a PROV followed by a PCT and then enter the US at the 30 month date, the “deferral” is not available. Even if you go directly to a non-provisional from the PROV, the “deferral” counts against PTA, which may not be a consideration in some fields, but is of great concern in biotech/pharma.

  40. Just follow the cases, as they would say. They exist.

    Ned, the last time I did that and actually did some work was when I proved you wrong on what In re Stempel held. Now you want me to go down that path again?

    Sorry but no, it is your turn. Find the reference that holds that a provisional does not have to enable fully to the invention as claimed.

    IANAE is a GENIUS!

    What is the benefit to the public of an abandoned application? Surely it’s the disclosure of the invention itself.”

    It’s the QUO baby! How much better does it get? Get the quo without paying the quid!

    I can see how you’d want more certainty about what claim scope might eventually issue.

    You are as certain as you need to be. Claim scope will be limited by the application itself. Savvy (read that large firms with good counsel) only need the quo given. They can draft the “best claims possible” given the shared quo and make their analysis from that point. After all, they wouldn’t depend on some crappy examiner’s word for finding art, would they? Anything beyond that is ready made for litigation and lack of support.

    Sport of Kings – that’s where we be headin.

  41. “delayed examination” is going to mean “no examination” and not even a search for an awful lot of published applications. Thus, the benefit to the public of these disclosures will be greatly reduced.

    What is the benefit to the public of an abandoned application? Surely it’s the disclosure of the invention itself and not the notice that a patent may later restrict your client’s business activities.

    As for the pending ones that take advantage of the deferral, I can see how you’d want more certainty about what claim scope might eventually issue. However, right now it’s not a question of whether examination will be deferred but for which applications examination will be deferred. The PTO can’t examine them as quickly as they publish anyway, so they might as well examine the ones whose applicants are more serious about getting and asserting their patents.

  42. “If the rules are written more clearly, I don’t see the harm …”

    Just in case you missed my comment above, the primary harm that I see is that “delayed examination” is going to mean “no examination” and not even a search for an awful lot of published applications. Thus, the benefit to the public of these disclosures will be greatly reduced.

  43. David French writes:

    As has been observed, this is not an extension of the Provisional year to two years. This is a separation of the filing fee from the search and examination fees. Applicants making a regular non-provisional filing would have a further year to choose to abandon an application, avoiding payment of such fees; or pay the fees and proceed. This is an incentive to drop out.

    A similar incentive to drop out would, as suggested, be a refund of the search and examination fees at an appropriate stage.

    Separating the examination fee in the manner proposed will allow the amount of the examination fee to be raised. US applicants who start by filing a US Provisional will have this increase softened by the extension and by the option to abandon. Foreigners who do not file for a US Provisional will not have access to this benefit.

  44. Ned,

    I already proved you wrong with In re Stempel.

    it ain’t saying what you think it is saying (as to the “full” description of the invention “as claimed”.

    Your genus v species red herring has already been fished out.

    Try again.

  45. I think the proposal is very misleading because it is not extending a prov to 24 months, just providing a really long response period for the Missing Parts. You still have to file a full application that describes and enables everything you want to claim. As others have noted, the real expense of filing an application is in writing a solid application, not the PTO fees. And, if you are filing internationally, you still have to file your PCT at the 12 month date (you can enter the US via the PCT to delay US fees already).

    If the rules are written more clearly, I don’t see the harm, but I don’t see a big benefit either.

  46. Fish Bones writes:

    “I am working on a clearance opinion for a client seeking to expand its product line. It certainly would be helpful if applications were examined earlier.”

    and reveals a problem.

    If we don’t know what scope of protection is in the pipeline till after examination is done, what’s the good of any early publication?

    I prefer how it works in Europe. If you see the app as filed, and the EPO search report, you can work out (18 months after the earliest declared priority date) the maximum scope gettable. You don’t have to wait another ten years or so, till the completion of examination of the merits of that app, and the complete cascade of divisional progeny that it spawns.

  47. Can anybody think of any benefit to the original patent applicant of having the application publish without claims, rather than with claims included?

    35 USC 111 (a)(4) says you don’t get a filing date until you file a specification as prescribed by section 112, which shall conclude with one or more claims.

    It doesn’t have to be a very good claim, but you do need a claim.

  48. IBP, no. Why? I don’t see publication without claims being suggested or permitted. The non-provisional has to have claims. It’s not really a 24 month provisional, just an extended missing parts period of reply in the non-provisional application.

  49. Can anybody think of any benefit to the original patent applicant of having the application publish without claims, rather than with claims included?

  50. I am working on a clearance opinion for a client seeking to expand its product line. It certainly would be helpful if applications were examined earlier.

  51. Many provisional applications are not worth the paper they are written on due to 112 and other problems.

  52. Sounds to me like publication would not occur until 42 months from the provisional date if the applicant takes the entire 12 month response period to file missing parts.

    Why does it sound to you like that? 35 USC 122 says applications are published 18 months from the earliest priority date, and the PTO doesn’t have the authority to change that.

  53. Sounds to me like publication would not occur until 42 months from the provisional date if the applicant takes the entire 12 month response period to file missing parts.

  54. undo the purely procedural measures

    6, you are a hoot – are you referring to the throwing in of the tool of the DOA Rules lawsuit fiasco?

  55. Another thing the PTO could do is offer a partial refund if an application is abandoned before examination.

    That’s a pretty good idea, and probably wouldn’t require help from Congress, but I think there’s a stronger psychological incentive to abandon an application when you’re being charged extra to keep it pending, compared to getting a refund for letting it go. Also, you’d have to let the applicant know when his application will be examined, otherwise he won’t know when to abandon the application in time to collect the refund.

  56. Another thing the PTO could do is offer a partial refund if an application is abandoned before examination. Sometimes things happen in the 3+ years between filing and examination. If this weeds out say 5% of applications, it would be worthwhile.

  57. ping, the New Railhead case involved prior art more than a year old. What I have been trying to beat into your head is that under these circumstances, one cannot prove prior invention.

    The new proposal is like New Railhead in this. The non provisional is filed 24 months after the provisional and potentially 24 months after a public disclosure. That public disclosure is a statutory bar. This requires that the provisional provide full Section 112, p. 1 support.

    I’ll add more later when I have time.

  58. You see, what you guys don’t seem to understand about Kappos is that he’s a shortcut taker. He leaves anything of substance, any real change, by the wayside.

    I’ll give you that he is a crafty shortcut taker, so much so that some of his shortcuts have the appearance of substance, and I applaud him for that. However, that does not excuse failure to take more substantive measures, which I hear little about in the news so I presume it has not been happening quite as much as with previous admins. The only true substantive measures I’ve seen him take was to undo the purely procedural measures that were proposed by the previous administration.

    lol. procedure v substance.

  59. “It is application preparation expenses that inventors need more time to justify,”

    That’s an issue between them and their attorney.

  60. How the heck is the delaying of search and examination fees of any significant benefit to inventors?

    It is application preparation expenses that inventors need more time to justify, not the 350 in fees charged to small entities.

    This is a pretty silly proposal.

  61. Instead of paying the Patent Office $130 to sit on my patent application for another year, they should pay me.

  62. In my view, lowering the bar on application pendancy is not a good solution to the problem of application pendancy. I mean, what if it were seven years deferral instead of one? How many of us would think that a good idea? How is this proposal a step in the right direction?

    There is one significant way in which the benefit to the public will be diminished. It is apparent that these applications will still be published at 18 months, since applicants availing themselves of this option will not be permitted to request non-publication. But it’s not my view that disclosure alone is the goal of the patent system. A published application that is abandoned without an examination having taken place is not nearly as good a disclosure as what we have now. Without the record of examination, it will be much more difficult to perform searches, and to assess the seminal nature of the disclosure in the art. I’m sure there are additional reasons that we should not pursue this course, but this one is sufficient for me.

  63. Ping,

    I also noted that in the article over at Gene’s site which you linked to incorrectly states that “Claims could be filed up to 12 months after the filing of the nonprovisional patent application.” As I noted above, that is clearly not correct.

    And I don’t know about you, but I find it a tad difficult to write an enabling specification when I don’t have a set of claims already drafted. I suppose it can be done quite easily if you only intend to write picture claims and the like. But, if you intend to have a good spec which fully enables a great set of patentable claims (i.e., as broad as the prior art will allow), you really need to know what those claims will look like when you write the spec. And if that’s the case, why not actually write those claims?

  64. Sure, there are some instances in which a quick, down and dirty provisional makes sense. But those instances are very rare.

    They’re sometimes made less rare by the conduct of would-be patentees, and this conduct might be exacerbated if the deferral sends the misleading message that inventors can let an additional year pass before putting any serious thought into their patent.

  65. Ping beat me to it in citing Hal’s nice case law summary of the continued 112 dangers already inherent in inadequate provisionals. These dangers will be enhanced if 102(b) prior art dates occur in this second year from activities in the first year if the constructive reduction to practice in the provisional was inadequate.

    But, the question on the floor is should this clever scheme be adopted by the PTO or not? It could defer some expenses and fees for a second year for some strapped small inventors or universities trying to peddle their inventions. [Their applications would be stuck in the PTO backlog longer than that anyway.] So, why not adopt it? It might even reduce the backlog a bit for everyone else if they then abandon more often?

  66. Ping, you are preaching to the choir here. And Hal has been preaching this gospel for a while now. Alas, many people still are not paying attention–including some patent attorneys who continue to peddle cheap provisionals to unsuspecting clients. Sure, there are some instances in which a quick, down and dirty provisional makes sense. But those instances are very rare.

  67. I am not sure how this 12 month deferred examination will have any impact on a backlog that is already deferring examination well over 12 months.

    This, plus you still get more deferral with a PCT application – and you can even get your claims searched in the meantime, giving you a better idea of whether to abandon your application before paying additional fees.

    Sure, the costs aren’t exactly comparable, but 12 months of deferral really isn’t a big deal if it’s only a $130 bet on whether you’ll pay an extra $760, and that $760 would have bought you helpful information to make an informed decision.

  68. Ned,

    let’s railroad another thread with our discussion (as posted on another thread):

    We have discussed this on several threads, but this is the second one I stumbled upon, so I’ll post my comments here too.

    Hal Wegner puts out a daily email type of “blog”. Today’s piece features a commentary on the newly proposed “24 month provisional”. There is an interesting piece that relates to our discussion on full disclosure, which I provide in a non-substantial quip:

    “Failure of the 24 month de facto provisional application scheme:

    The commercialization efforts involving disclosure of the invention to
    outsiders within the first year from filing will create a fatal defect for claims
    presented at 24 months from the filing date which lack a full “written description”
    in the provisional application. The New Railhead case explodes the myth that
    claims can be presented based upon a provisional that does not meet the
    requirements of 35 USC § 112, ¶ 1. New Railhead Mfg. v. Vermeer Mfg., 298
    F.3d 1290 (Fed. Cir. 2002)(Michel, J.).

    Thus, “[c]laims enjoy the earlier filing date only if the provisional application
    provided adequate written description under 35 U.S.C. § 112, ¶ 1.” Trading Techs.
    Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010)(Rader, J.)(quoting New
    Railhead, 298 F.3d at1294). In other words, claim limitations that would be added
    for the first time 24 months after filing without support in the provisional
    application as filed would not be entitled to priority. Where a claim is presented
    after the priority filing, the applicant must show “that he or she ‘had invented each
    feature that is included as a claim limitation[.]’” Cordis Corp. v. Boston Sci. Corp.,
    561 F.3d 1319, 1332 (Fed. Cir. 2009)(Dyk, J.)(quoting New Railhead, 298 F.3d at
    1295)”

    This is the point that I have been trying to beat into you. You do need full disclosure to the claimed invention. Quick and Dirty provisionals will fail you.

    Thanks Hal.

    (Oh, and btw, NAL posts one of her usual four page journal articles over at Gene’s site: link to ipwatchdog.com if you want to be put to sleep)

  69. Who fan,

    This proposal will, to some extent, reduce the number of applications being added to the end of the current backlog. At a minimum, it will slow the growth of the backlog. Now, after 12 months, most of those deferred applications will start being added on to the end of the line. So, in some ways, it only provides 12 months of partial relief (for those deferred applications which are not abandoned).

    One interesting point you raise, however, is that if the PTO gets its act together and whittles away at the backlog, it is possible that some of the deferred applications will end up being examined at around the same time they would have been if the applicant did not elect to defer for 12 months.

    So the effect on the backlog will be small. But it will have some positive effect on it.

  70. Now I ask you, Who won’t get fooled again?

    (begrudgingly admitting that the Brits are actually good for something).

  71. the pto has deferred examination now, its called file an application and wait 3+ years for a first action.

    I am not sure how this 12 month deferred examination will have any impact on a backlog that is already deferring examination well over 12 months.

  72. Paul,

    You are correct–the non-provisional application will absolutely need at least one claim in order to get a filing date, even if you take advantage of the deferred examination process. 35 USC 111(a)(2) requires as much, and the PTO cannot change that by rulemaking.

    This this sounds like something that will help some filers, as well as allow the PTO to reduce the backlog a bit. While the backlog reduction will be somewhat temporary unless the PTO increases its examination capacity, I am sure that some of the deferred examinations will be abandoned during that second 12-month period. And presumably deferred applications will still be published 18 months after filing, since the additional 12 months delay should not in any way prevent the PTO from publishing on time.

    Seems like a good idea all around.

  73. I know some of my smaller clients who are starting new ventures could really use that extra time to determine whether to soldier on with prosecution or not.

    I actually mentioned a program almost exactly like this to a colleague the other day with no knowledge that it was in the works.

    Good job management. You guys are doing a fantastic job.

  74. The second {regular but missing parts} application will still require a complete 112 description and enablement and best mode for any later claims, as does the parent provisional. Will it not also require least one claim as filed, due to 35 USC 111(a)(2) not having the provisional exception of 35 USC 111(b)(2)?

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