By Donald Zuhn --
Last February, 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 (see Patent Docs reports on "The Opposition" and "The Proponents").
In addition to hosting the roundtable, the Patent Office also sought comments from the public "on issues raised at the roundtable or on any issue pertaining to deferral of examination," setting an initial deadline of February 26, 2009 for submission of written comments (see "Comments on Deferred Examination Due by February 26th"). The Office subsequently posted a Notice extending the deadline for submitting comments to May 23, and then further extending the deadline to June 5.
Roundtable participant Dr. Ron Katznelson (at left), the President of Bi-Level Technologies and a named inventor on a number of U.S. patents, recently contacted us to let us know that the Patent Office has now made the deferred examination comments available on its website. Among the 21 organizations, corporations, and individuals submitting comments were the Biotechnology Industry Organization (BIO) (by roundtable participant Hans Sauer), BIOCOM, Life Technologies Corp. (by roundtable participant Alan Hammond), Monsanto Co., Novo Nordisk Inc., Dr. Katznelson, and Dr. Nancy Linck (who also participated in the roundtable).
While Patent Docs plans to provide summaries of a number of the submitted comments in subsequent posts, today we begin with the comments submitted by Dr. Katznelson. Dr. Katznelson noted that because the USPTO removed important hyperlinks from his submission upon posting his comments on the Office's website, he recommends that those interested in reviewing his submission obtain a copy of the original PDF here.
Dr. Katznelson's submission consists of a slide presentation summary of his paper on an Examination on Request (EOR) -- or deferred examination -- system, and a paper focusing on the workload savings of an EOR system. According to Dr. Katznelson's analysis, if the USPTO were to implement a three-year deferral EOR procedure, the Office would reduce its examination workload by between 15% and 25% and realize an 8% to 11% drop in examined applications. In addition to the reductions in examination workload and examined applications, Dr. Katznelson sees a number of advantages to implementing an EOR system. For example, applicants would be able to defer patenting decisions until technology features and market opportunities are better understood, as well as defer or save user fees and other patent prosecution costs; the Patent Office would realize examination workload by savings by not having to examine applications or claims that an applicant no longer wants or needs, and would be able to increase the quality of its examination by using search reports and prior art submitted by interested third parties; and the public would benefit from reduced pendency and reduced patent term adjustment, as well as earlier notice of non-deferred applications.
Under Dr. Katznelson's EOR system, an applicant filing a new application would elect to proceed to examination under the current rules or to defer examination until an express request for examination is filed (within 3 years of the application filing date). If an applicant defers, but does not file a request for examination within three years, the application is deemed abandoned. Dr. Katznelson's proposal would also allow third parties to anonymously request examination of a published application for which no examination request has been filed. In order to permit such third party requests, he proposes that the Office promulgate rules requiring applicants to submit a Declaration & Non-Exclusive Limited Power of Attorney designating any third party to act on the Applicant's behalf as Applicant's authorized agent for perfecting the patent application under 35 U.S.C. § 111(a) at any time by requesting examination; paying the examination, excess claim, and excess pages fees; and requesting a search and paying the search fee (or submitting a search report). Certain applications already in the Office's backlog (e.g., those for which a first action on the merits has not been issued) could also be deferred, with the Office refunding the examination fee if deferral was elected. Once deferred, these applications would be treated the same as deferred new applications.
In his submission, Dr. Katznelson contends that his proposal for an EOR system could be implemented under the present statutory scheme, and therefore, would require no new legislation (some rules changes, however, would be necessary). In support of this contention, he points to the United States Patent and Trademark Fee Modernization Act of 2003, in which the Patent Office specifically sought from Congress, and received, the authorization to charge separate filing fee, search, and examination fees. Moreover, Dr. Katznelson points to the House Report on the bill, which "specifically identified the Examination Fee as payable later than the filing fee." Thus, while 35 U.S.C. § 41(a)(1)(A) requires that the filing fee be paid "[o]n filing each application," 35 U.S.C. § 111(a)(3) allows the "fee required by law" (i.e., filing, search, and examination fees, and excess claims and page fees) to "be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director." Dr. Katznelson concludes his presentation to the USPTO by requesting that the Office proceed with a formal notice of inquiry regarding implementation of an EOR system as soon as possible.
• "Patent Office Extends Deferred Examination Comment Period," March 9, 2009
• "Comments on Deferred Examination Due by February 26th," February 23, 2009
• "Patent Office Hosts Roundtable on Deferred Examination: The Proponents," February 15, 2009
• "Patent Office Hosts Roundtable on Deferred Examination: The Opposition," February 12, 2009
• "Patent Office Announces Agenda and Participants for Deferred Examination Roundtable," February 9, 2009
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009
Jesus that guy needs a new pic.
Posted by: 6 | June 12, 2009 at 12:43 PM