Deferred Examination of Patent Applications
Robert J. Yarbrough
Deferred examination in the U.S. was authorized by 37 CFR 1.103(d) , effective November 29, 2000. That section allows a patent applicant to request that review of the patent application be deferred by up to three years from the priority date. The effect of deferral is to take the application out of the reviewing queue for the period of the deferral. At the end of deferral period, the application is placed at the back of the line and will be reviewed in the ordinary course. Since the current pendency for many art units exceeds two years, and in some cases is much longer, the effect of deferred examination is to extend the pendency of the application to five years or more.
Deferred examination does not remove any of the requirements for a patent application and does not toll any of the patent deadlines, such as deadlines for filing a Patent Cooperation Treaty international patent application or for filing individual applications in foreign countries under the Paris Convention.
B. Use of Deferred Examination
'Patent pending' status can be a valuable marketing tool for consumer products and deferred examination can be valuable for an applicant who wishes to maintain ‘patent pending’ status for as long as possible. Deferred examination also can be valuable for the applicant who wishes to defer the expenses of examination.
To qualify for deferred examination, the applicant must submit a request to the PTO. The PTO has developed a special form for deferral, PTO/SB/37. The period of deferral is specified by the applicant, up to three years. The application must be complete and in condition for publication and no request not to publish the application can be in effect. The deferred application will be published and be available for all to see eighteen months after the date of the first application. The applicant also is required to pay fees; namely, a processing fee under 37 CFR 1.17(i) (currently $130.00) and a publication fee under 37 CFR 1.18(d) (currently $300.00).
D. Future PTO Action
In many foreign countries, deferred examination of patents is the rule and not the exception. In those countries, patent applications are not examined unless and until the applicant requests examination and pays an examination fee. The net result is that a percentage of patent applicants abandon their applications without ever requesting that the applications be reviewed. This approach is attractive to the PTO because the PTO review obligation is deferred automatically and may never accrue due to abandonment of the application, reducing the agency’s workload.
Deferred examination under 37 CFR §1.103(d) has been rarely used. In January, 2009, the PTO reported that examination of fewer than 200 applications has been deferred since the program began in November, 2000. The PTO is considering whether to expand the deferred examination program. The PTO recently conducted a roundtable meeting to discuss the issue and solicited public comments. Members of the Pennsylvania Intellectual Property Forum submitted comments in response to the request. We anticipate that the PTO will implement an expanded program of deferred examination in the near future.