Bits and Bytes No. 117: Data, Damages & Deferred Examination

  • Data.Gov: As part of the transparent government project, we now have the website Data.Gov with the purpose of “increas[ing]public access to high value, machine readable datasets generated by the Executive Branch of the Federal Government.” So far, the PTO has only included two datasets -both of which were already available through the PTO website. Hopefully there will be more to come – including opening access to PAIR. [More here].
  • IP Colloquium: Professor Lichtman has released a new edition of his audio-program IP Colloquium. This month’s program focuses on reforms of the patent damages laws. [LINK] The program offers CLE Credit.
  • Deferred Examination: Comments on a potential deferred examination program are here.
  • Deferred Examination: Intel’s comments are interesting. The company argues that the success of deferred examination in other countries is a facade. Rather, the high rate of drop-out during prosecution in countries such as Japan, Germany, and Korea is due to the inventor compensation schemes in those countries. So the story goes – companies in those countries tend to file more low-quality local patent applications for the purpose preempting inventors from asserting rights on their own.

“We actually believe that the reason that deferred examination has had little success in the United States is due to the inventor compensation schemes that exist in many countries such as Japan, Germany and Korea.

In essence, under the regimes in these countries, if the company fails to patent the invention, the inventor has the right to file on his or her own behalf. Having inventors file on their own behalf is generally viewed as undesirable. As a result, the companies file disproportionately more applications in their home jurisdictions than normal prudence would otherwise suggest. Since they are filing these in part to pre-empt the inventor’s rights and to avoid having additional inventor compensation issues, we believe that this contributes to an inclination to avoid paying the examination fee and then to abandon the patent application.   

However, outside their home jurisdictions, these companies have a tendency to file a fraction of the patents that they file in their home jurisdictions. Having filed in the home jurisdiction, they have little or no concern that the inventor has the right or will file the application overseas. Apparently, as a result, they do not appear to abandon nearly as high a percentage of the patent applications that they file outside their home jurisdictions as they file in their home jurisdictions.

Of course, the US does not have such inventor compensation statutes. Those foreign companies that file and abandon so heavily in their home jurisdictions exhibit radically different behavior in the US. They file less and abandon much less. Hence, we believe that this helps explain the disparate experience of deferred examination in other countries. It means that the practice in these other countries is not likely to be a good indicator for practice before the USPTO.”