USPTO Hosts Roundtable on Deferred Examinations

On February 12, 2009 I attended a roundtable at the United States Patent and Trademark Office ("USPTO" or "PTO") that focused on how to successfully implement a process for deferred patent examinations. The event featured an impressive group of participants, including Arti Rai, of Duke University School of Law, Nancy Link, of the USPTO, Herb Wamsley of the Intellectual Property Owners Association, and Richard Wilder of Microsoft. Several other USPTO representatives contributed to the discussion, which was kicked off by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO, John Doll. John Whealan, Associate Dean for Intellectual Property Law Studies at The George Washington University Law School moderated a thoughtful discussion, which examined past efforts to create a deferred examination system, and contrasted how such a system would coexist with the continuing examination process and provisional applications.

The PTO does not currently have a proposal or a plan ready for consideration, and the roundtable served as a useful way to engage the public with PTO representatives in order to examine the relevant issues, identify challenges, and envision potential provisions for a deferred examination system. Additionally, speakers evaluated the success of similar systems enacted by foreign countries, and discussed the benefits and drawbacks both domestically and internationally. Notably, the panelists listed a reduced burden on the PTO, greater speed in the application process, a higher quality of applications, and the ability of inventors to focus resources on R&D as expected benefits. The drawbacks identified included submarine concerns/claim creep issues and potential "blue sky filings."

For more on the USPTO's policies regarding patents, please visit:
http://www.uspto.gov/