Patent Office Hosts Roundtable on Deferred Examination: The Opposition

    By Donald Zuhn --

This morning, the U.S. Patent and Trademark Office hosted a roundtable discussion on deferred examination.  The roundtable, which lasted about four hours, brought together two dozen participants, representing a variety of industries and organizations (as well as positions on the issue), to discuss the advantages and disadvantages of implementing a deferred examination system in the U.S.; the impact such a system would have on applicants, their competitors, the public, and the USPTO; and how such a system could (or should) be implemented.  Roundtable participants included:

• Gordon Arnold - American Bar Association (ABA)
• Robert Budens - President, Patent Office Professional Association (POPA)
• Q. Todd Dickinson - Executive Director, American Intellectual Property Law Association (AIPLA)
• John Doll - Acting Under Secretary of Commerce for Intellectual Property & Acting Director, USPTO
• Nicholas Godici - Executive Director, Birch, Stewart, Kolasch & Birch, LLP
• Carl Gulbrandsen - Managing Director, Wisconsin Alumni Research Foundation (WARF), representing university technology transfer
• Henry Hadad - Vice President & Associate General Counsel, Intellectual Property, Schering-Plough Co.
• Alan Hammond - Chief Intellectual Property Counsel, Life Technologies
• Brad Huther - U.S. Chamber of Commerce
• Glen Katopish - Independent Inventor
• Ron Katznelson - President, Bi-Level Technologies
• Stephen Kunin - Partner, Oblon, Spivak, McClelland, Maier & Newstadt
• Jeffrey Kushan - Partner, Sidley Austin LLP
• Nancy Linck - Of Counsel, Rothwell, Figg, Ernst & Manbeck, former solicitor for the USPTO
• John Love - the Deputy Commissioner for Patent Examination Policy for the USPTO
• Ken Patel - Associate General Counsel of Intellectual Properties Organization, Procter & Gamble
• Arti Rai - Elvin R. Latty Professor of Law, Duke University School of Law
• Hans Sauer - Associate General Counsel, Intellectual Property, Biotechnology Industry Association (BIO)
• Manny Schecter - Associate General Counsel, Intellectual Property Law, IBM
• John Thomas - Professor of Law, Georgetown University Law Center
• Peter Thurlow - New York IP Law Association (NYIPLA)
• Herb Wamsley - Executive Director, Intellectual Property Owners Association (IPO)
• John Whealan (roundtable moderator) - Associate Dean for Intellectual Property Law Studies, The George Washington University Law School
• Dick Wilder - Associate General Counsel, Microsoft

As the roundtable progressed, and each participant laid out his or her own case, the participants began to separate into two readily discernable camps:  those who favored implementing a deferred examination (or at least believed that the topic warranted serious consideration) and those who maintained a longstanding opposition to the concept (or were at best only lukewarm about such a system being introduced in the U.S.).  For attendees, viewers, and listeners who favor the implementation of a deferred examination system in the U.S., the proponents outnumbered the opponents by a sizeable margin.  Today's post addresses the comments of the deferred examination opposition.  In a subsequent post, the comments of the proponents of deferred examination will be considered. 

Among the roundtable participants who opposed (or were not very receptive to) a deferred examination system were Gordon Arnold, Robert Budens, Q. Todd Dickinson, Herb Wamsley, and Dick Wilder.

Gordon Arnold, representing the American Bar Association (ABA), stated that the ABA IP section was on record as being opposed to deferred examination.  He explained that the ABA believed the effort that would be required to implement a deferred examination system would be better spent addressing "other areas," and that the ABA had its doubts that such a system could even be implemented (particularly if Congressional help was needed).  In addition, Mr. Arnold argued that in the current economic climate, where applicants needed to secure patents in order to raise investment capital, deferred examination would not be a preferred option.

Robert Budens, the President of the Patent Office Professional Association (POPA), asserted that the conversation about deferred examination was taking place a little too late.  He believed that the USPTO and its stakeholders were "on the edge" of seeing the benefits of recent examiner hirings, and that the way to reduce pendency was to get "boots on the ground."  Mr. Budens stated that POPA was not in favor of adding another variable, such as deferred examination, that could have unintended consequences, and therefore was not in favor of the idea.

Q. Todd Dickinson, the Executive Director of the American Intellectual Property Law Association (AIPLA), noted that the AIPLA had also been traditionally opposed to deferred examination.  While stating that the AIPLA continued to opposed the concept of deferred examination, he noted that the USPTO's application backlog was at least creating an "openness" to the issue.  However, Mr. Dickinson indicated that there were so many variables and unanswered questions (e.g., whether deferred examination would mean the end of provisional applications; whether deferred examination would impact patent term), that the issue required more analysis and clarity.

Herb Wamsley, the Executive Director of the Intellectual Property Owners Association (IPO), noted that the IPO opposed deferred examination, primarily because of the uncertainty such a system would create for "innovative competitors."  He also argued that the recession might make implementation of a deferred examination unnecessary, since the recession could very well lead to a reduction in application filings, which in turn could lead to a reduction in the application backlog.  During the question and answer portion of the roundtable discussion, former IPO President Marc Adler joined Mr. Wamsley in strongly opposing the concept of deferred examination.  (Mr. Adler also strayed from the topic by voicing concerns about continuation practice abuses.  Mr. Wamsley later noted that while the IPO had opposed the claims and continuations rules, the majority of its members believed that continuations create too much uncertainty, and therefore, that limitations on continuations were needed in order to eliminate "abuse.")

Dick Wilder, the Associate General Counsel for Microsoft Corp., noted that he was "apathetic" about the possibility of a deferred examination system being introduced in the U.S., and argued that the U.S. already had a de facto deferred examination system as a result of lengthy examination pendency.  He also noted that Microsoft neither used deferred examination in other forums nor used the suspension of action provisions of 37 C.F.R. § 1.103 in this country (see "Post-GSK: Where Do We Go from Here? - Deferred Examination" for a discussion of Rule 103).  In addition, Mr. Wilder pointed out that even if one industry, such as the biotech industry, chose to utilize deferred examination, this would have no effect on the backlog of software applications, since biotech examiners would not be able to pick up software applications for examination.

For additional information regarding this and other related topics, please see:
• "Patent Office Announces Agenda and Participants for Deferred Examination
Roundtable," February 9, 2009
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009
• "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO," January 8, 2009
• "Director Answers House Subcommittee's Questions," June 12, 2008
• "Post-GSK: Where Do We Go from Here? - Deferred Examination," November 12, 2007