E9-1740. Request for Comments and Notice of Roundtable on Deferred Examination for Patent Applications

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice; Request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) frequently receives suggestions that the USPTO adopt a deferral of examination procedure. The USPTO is conducting a roundtable to obtain public input from diverse sources to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral of examination. The roundtable is open to the public. Members of the public who wish to participate in the roundtable must do so by request, as the number of participants in the roundtable is limited to ensure that all who are speaking will have a meaningful chance to do so. Members of the public who wish solely to observe need not submit a request. Any member of the public may submit written comments on issues raised at the roundtable or on any issue pertaining to deferral of examination.

DATES:

The roundtable will be held on Thursday, February 12, 2009, beginning at 9 a.m. and ending at 12:30 p.m.

The deadline for receipt of requests to participate in the roundtable is 5 p.m. on Thursday, February 5, 2009.

The deadline for receipt of written comments is February 26, 2009.

ADDRESSES:

The roundtable will be held in at the USPTO, in the Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia.

Requests to participate at the roundtable are required and must be submitted by electronic mail message through the Internet to [e-mail]. Requests to participate at the roundtable should indicate the following information: (1) the name of the person desiring to participate and his or her contact information (telephone number and electronic mail address); and (2) the organization(s) he or she represents.

Written comments should be sent by electronic mail message over the Internet addressed to [e-mail]. Comments may also be submitted by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Robert W. Bahr. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.

The written comments and list of the roundtable participants and their associations will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Robert W. Bahr, Senior Patent Counsel, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at [phone], or by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION:

Currently, many intellectual property (IP) offices that substantively examine patent applications do not perform a substantive examination on every patent application that is filed in the respective office. Specifically, a patent application is not given a substantive examination in many IP offices unless and until an applicant submits an express request for examination, and the failure to file any such request for examination within a specified time period results in abandonment or withdrawal of the application. This practice is commonly referred to as “deferred examination.”

In the United States, the mere filing of a patent application and payment of the applicable fees is effectively a request for examination of the application. The USPTO frequently receives suggestions that the USPTO adopt a deferral of examination procedure. The USPTO has in place an optional deferred examination procedure that was adopted as part of the rule making to implement eighteen-month publication of patent applications. See Changes to Implement Eighteen-Month Publication of Patent Applications, 65 FR 57023, 57033, 57056 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63, 71-72, 92 (Oct. 10, 2000) (final rule). This deferral of examination procedure permits deferral of examination for up to three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. See 37 CFR 1.103(d). The deferral of examination procedure set forth in 37 CFR 1.103(d), however, has been used in fewer than two hundred applications since its inception on November 29, 2000 (the effective date of eighteen-month publication and 37 CFR 1.103(d)).

The USPTO is conducting a roundtable to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral of examination. The number of participants in the roundtable is limited to ensure that all who are speaking will have a meaningful chance to do so. The USPTO plans to invite a number of participants from patent user, practitioner, industry, and independent inventor organizations, academia, industry, and government. The USPTO also plans to have a few “at-large” participants based upon requests received in response to this notice to ensure that the USPTO is receiving a balanced array of views on deferral of examination.

The roundtable is open to the public, but participation in the roundtable is by request, as the number of participants in the roundtable is limited. While members of the public who wish to participate in the roundtable must do so by request, members of the public who wish solely to observe need not submit a request. Any member of the public, however, may submit written comments on issues raised at the roundtable or on any pertaining to deferral of examination, for consideration by the USPTO. Persons submitting written comments should note that the USPTO does not plan to provide a “comment and response” analysis of such comments as this notice is not a notice of proposed rule making.

The USPTO plans to make the roundtable available via Web cast. Web cast information will be available on the USPTO's Internet Web site before the roundtable. The written comments and list of the roundtable participants and their associations will be posted on the USPTO's Internet Web site.

Dated: January 22, 2009.

John J. Doll,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.