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PTO 21st Century Strategic Plan Proposes Deferred Patent Examination, 4-Tier Fee System





Certain restructuring changes proposed today by the USPTO have caused "grave concern about how they may harm patent quality, increase patent pendency and undercut the integrity of U. S. patent searching and examination," said Ronald J. Stern, president of the Patent Office Professional Association, the union of the USPTO's 3,500 patent examiners.

USPTO Director James Rogan today proposed sweeping changes in the patent system, including a new four-tier fee structure for filing patent applications and for examination, the licensing of private commercial search services, the elimination of U. S. -style searches when foreign searches are available, and deferred examination. The new fee structure would include discounts for all applicants who submit the results of their own patent searches, to be conducted by foreign patent offices or by commercial search services that will be USPTO licensed and hired by the applicants. All but the smallest patent applicants, dubbed "microentities" by the USPTO, would be required to contract out their own searches.

"Putting control of the official search in the hands of the applicant is like putting he fox in charge of the henhouse," said Stern. "If applicants want shoddy searches, they can shop for a firm with a reputation for producing the careless results they want." Stern also noted that allowing applicants to submit their own searches, in conjunction with the proposed deferred examination, will promote the documented problem of "patent flooding," whereby larger companies overwhelm smaller companies with patent applications that claim minor variations on the smaller company's patent.

Deferred examination will allow the applicant to submit the request for examination, and the examination fee, long after the patent application is filed. "Deferred examination will inherently increase pendency," said Stern, "tacking on as much as the entire deferral period to the current pendency." Deferred examination will also "encourage patent flooding," said Stern. A company can file many patent applications during a competitor's period of pendency. "Company A can then intimidate Company B's customers by claiming to have many patents pending," added Stern.

Additional problems will occur if the USPTO too soon gives up conducting a U. S.-style search to rely solely on applicant-submitted searches by foreign patent offices. "While mutual recognition of each other's searches is a laudable goal, and foreign searches may be optimal for their governments' requirements, the current differences among the offices are too great to meet the requirements for rejection under U. S. patent law," said Stern. He cited a report from the March 2002 World Intellectual Property Organization conference that found that only 4 percent of art citations were common among the three largest patent offices.

POPA has recommended to the USPTO that it first study how often U. S. examiners have determined that foreign searches have found the best art, and how often U. S.-conducted searches  in addition to foreign searches  have netted further art. "For the USPTO to substitute foreign searches for U. S. searches without thorough study would be irresponsible," said Stern.

The union observed that none of the agency's proposals address mounting patent community concerns about patent quality. "The USPTO has allowed the system to degrade to this point because it doesn't allot sufficient time for quality examination," said Stern. "The key to raising patent quality is to increase examination time per case." "The traditional role of the examiner is to protect the public from unwarranted patents," added Stern.

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