Laguna Beach, April 2009

I am writing this article from 32,000 feet as I fly across country to teach the PLI Patent Bar Review Course in Costa Mesa, California, which is just inland from Newport Beach, and not far from Huntington Beach and Laguna Beach, places I would rather be than almost anywhere else in the world, although Hawaii and New Hampshire are very high on the list as well.  According to the live map available through Jet Blue Direct TV, we are leaving Nebraska airspace and will soon be crossing into Colorado, and I don’t know exactly when I will get my laptop fired up to post this article.  As I listen to the Sotomayor confirmation hearings, I have deferred examination on the mind. Deferred examination is a bad idea and the United States Patent and Trademark Office should not seek to institute a deferred examination policy. We already have a deferred examination system, it is called the backlog of patent applications currently pending at the Patent Office.  Before we consider instituting a deferred examination policy the Patent Office should first work to create a uniform system that does not allow some to get patents in non-accelerated cases in under 12 months, while in other areas non-accelerated cases do not result in patents for many, many years.

The often used statistics from overseas that are thrown about to show how successful deferred examination is and can be ignores reality, plain and simple. The truth is the U.S. is the dominant market and many applicants overseas opt for deferred examination in order to allow the U.S. case to advance to a conclusion, which will then be usefully used in prosecutions elsewhere to demonstrate patentability.

Given the crushing backlog of patent applications currently experienced by the U.S. Patent Office, it seems unlikely that many, if any, would elect deferral in the United States. I for one would never advise an inventor to defer examination. In my practice we do everything we can to speed examination because our clients do not want pending patent applications, they want issued patents. How could I in good faith advise a client that they should defer examination and wait, knowing full well that there is no urgency felt by the Patent Office to examine patent applications? How could anyone recommend slowing down the receipt of a patent when there are hundreds of thousands of applicants that would gladly pay more fees to get an examination quickly? The risk associated with moving and keeping your client at the back of the line is simply unjustified. I find it impossible to believe that any patent attorney or patent agent would recommend a client defer examination.

According to Jeff Sweetman, of Inovia, a company specializing in foreign filing and entry into the national phase as a result of filing an international application:

For many applicants – particularly foreign applicants – the result of US examination is the most critical one for determining whether to pursue protection in other countries. For example, some countries have “fast-track” examination schemes, where an allowed US application can form the basis for lightning fast examination. Less formally, evidence of allowability in a US application will often go a long way towards pushing an application in another country through to grant with little resistance. As such, I suspect that introducing the option of even longer pendency will not interest at least these applicants.

What Sweetman says makes all the sense in the world, and those within the Patent Office would do well to consider that in all likelihood the United States will not see the positive benefits of deferred examination.

So what is the problem with deferred examination? I suppose as long as it is optional the Patent Office can go ahead and implement it. Anyone who objectively looks at the process, the international statistics, the dominant role the US plays with respect to patents and the overwhelming patent backlog facing the Patent Office must come to the conclusion that deferred examination is not the panacea that we have been lead to believe it will be. Nevertheless, in the meantime we continue to waste precious time following this path that will not be fruitful, foregoing opportunities to engage in the thoughtful process of figuring out what needs to be done to salvage the U.S. patent system from the brink of disaster.

This whole deferred examination debate is really much ado about nothing, in exactly the same way that the continuations rules were much ado about nothing. At the same time that Jon Dudas was proclaiming the benefits of the continuations limits he was testify to Congress that it would have minimal impact on the number of patent applications that would be filed, estimating that it would lower the number of applications filed by perhaps 1%. So the Patent Office undertook years of effort and wasted time, and engaged in an all out assault on the most commercially relevant innovations that need multiple patent applications to adequately protect an invention and to actually get a patent. Lets not forget that in many cases, perhaps even most cases, the way you can convince an examiner to issue a patent is to work up the case through final rejection, figure out what the examiner will allow and then file an RCE because you no longer have any options. Under the continuations rules this practice would be severely limited, which would mean fewer patents and all for little help to the Patent Office and while devastating certain industries. It doesn’t take a rocket scientist to figure out that made no sense.

At a time when the Patent Office is changing Bilski standards, the cutting off of RCEs and continuation is idiotic. Just last week we learned that a recent memo changed the rule with respect to how examiners operate on Bilski turf. You cannot merely have “a computer implemented method” in the preamble, but must positively recite a computer in the body of a claim. So what we were doing just several months ago to get software related patents issued no longer works, and now more needs to be done. That is fine, but that requires the ability to file RCEs. If you are going to have a moving target, which is common with all the memos being sent to examiners these days, cutting off RCEs and continuations disproportionately attacks commercially relevant innovation and the Patent Office still has an enormous backlog. In short, there is little or no benefit to the Patent Office and extreme burden on industry.

So is deferred examination another attempt to chase a rabbit down a hole? Is this another attempt to rearrange the deck chairs on a sinking ship? Sadly, I suspect it is, which is tragic. The Patent Office needs to stop chasing unicorns, looking for magic bullets or trying to catch leprechauns. The solution is to engage in a cooperative prosecution and seeking to reach agreements with applicants and issue patents. At a time when we need to be speeding things up and allowing for more candid communication between applicant and examiner it makes no sense to force any and all suggested amendments for consideration during an interview to go into the file history. Likewise, it makes no sense to spend all this time on a process that will be hardly used by the overwhelming majority of applicants who actually want a patent and are exasperated by the unacceptably lengthy delay it takes to obtain patent protection on innovations.