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Why the USPTO Should Adopt a Deferred Patent Examination System
DEPAUL J. ART, TECH. & INTELL. PROP. L. (2010)
  • David Peter Irimies, University of Akron Main Campus
Abstract
To date, the United States Patent & Trademark Office (USPTO) has addressed its two main issues - backlog and stretching pendency times - primarily by throwing resources at them. This approach has failed. This paper explores how the USPTO adopting deferred examination on all non-provisional U.S. patent applications - similar to current Patent Cooperation Treaty practice - would help alleviate these issues. This paper proposes a deferral system, demonstrates how deferred examination could be done at the USPTO as part of its normal practice of examining patent applications, and discusses policy considerations that support and are antagonistic to the USPTO nominally conducting deferred examination. The proposed deferral system will help examination be done right the first time by enabling more complete prior art searches and office actions, and is not dependent on hiring more examiners. If the USPTO implements deferred examination similar to that presented in this paper, progress can be achieved in reducing transaction costs, facilitating innovation and trade, and harmonizing our patent laws with the world. Additionally, a deferred system would enhance the technical and legal capabilities of the USPTO examiner corps while substantially saving USPTO resources; increase the quality of issued patents; and increase the public’s confidence in our patent system. Potential concerns such as lack of notice, submarining of patents, shifting the cost burden to patent challengers, and U.S. labor issues are either directly addressed with the proposed deferred examination system or are more directly related to other issues such as damages and outdated litigation laws.
Keywords
  • Deferred,
  • Examination,
  • Deferred Examination,
  • PCT,
  • USPTO,
  • deferral,
  • patent quality
Disciplines
Publication Date
Spring 2010
Publisher Statement
DePaul Journal of Art, Technology, and Intellectual Property, Vol. 20, Forthcoming March 2010
Citation Information
David Peter Irimies. "Why the USPTO Should Adopt a Deferred Patent Examination System" DEPAUL J. ART, TECH. & INTELL. PROP. L. Vol. 20 Iss. 2 (2010)
Available at: http://works.bepress.com/david_irimies/1/