When the first inventor to file (FITF) provision of the America Invents Act AIA became effective in 2013, US patent law was only in part harmonized with patent law in most other Patent Cooperation Treaty (PCT) countries. One important difference between the US and many other PCT countries is that US patent examination fees are due at the time of filing and US patent examination will proceed after exam fee payment absent a request to withdraw, a request to defer exam, or abandonment. In contrast, foreign patent applications will be examined in most other PCT countries only if the applicant expressly requests examination and examination fees are not due until examination is requested. For example, European patent applicants are entitled to defer payment of examination fees up to 31 months from their earliest priority filing. The net effect of this difference is that most US non-provisional patent applicants will typically proceed at least through a first office action on the merits by a USPTO patent examiner once examination fees are paid.
Adoption of an examination request system by the USPTO could benefit applicants operating under the FITF provision of the AIA. In one alternative, exams could be requested and exam fees paid after results of a USPTO search conducted at the time of publication were made available. Such an examination request system would allow US applicants to consider whether further prosecution of the application was warranted in light of prior art uncovered in the search and/or other technical advances that might lessen the value of their US patent application. Such an examination request system would allow US applicants who filed early under FITF an opportunity to generate post-filing data to demonstrate non-obviousness or enablement of their claims. An examination request system would also give US applicants additional time to determine if their technology met commercial benchmarks and to raise money needed for the commercial development that justifies the expense of patent examination. An examination request system would allow companies which have acquired large pending patent application portfolios in mergers or acquisitions to reduce prosecution expenses associated with acquired patent applications which do not advance their business interests. Under an ideal examination request system, applicants seeking immediate exam could request examination immediately or with a TrackOne expedited exam request while applicants seeking to delay examination and expense could delay exam up until a reasonable examination request due date.
Adoption of an examination request system by the USPTO could also benefit the USPTO by reducing the number of patent applications which are examined on their merits. About 14% of patent applications before the AIA went into effect were abandoned after a first office action.1 It has also been reported that abandonment rates are higher for applications in certain fields such as insurance and finance and molecular biology.2 Such USPTO first office actions on the merits consume significant USPTO patent examiner effort in analysis of search results and determining patent eligibility, novelty, non-obviousness, enablement, and written description. It is anticipated that at least some applications will be abandoned before the first office action on the merits if an examination fee has not been paid, particularly if the applicant has more time to assess the value of the application. The European Patent Office actively incents abandonment of European patent applications prior to exam by levying a stiff examination request fee of about $2050 which is refundable "in full if the European patent application is withdrawn, refused or deemed withdrawn before substantive examination has begun."3
Some twelve years have passed since US patent applications have been filed in a "race to the Patent Office" under FITF. It may now be time for the USPTO to adopt examination request procedures which provide more flexibility and potential savings to applicants while relieving at least some pressure on the USPTO's examiners.
Footnotes
1. Carley, M., Hegde, D., and Marco, Alan WHAT IS THE PROBABILITY OF RECEIVING A U.S. PATENT? 17 YALE J.L. & TECH. 203 (2015)
2. Nowotarski, M. Breakthroughs & Abandonment: Patent Abandon Rate is a Reliable Measure of Speculative Portfolios. IP Watchdog (2010)
3. EPO Guidelines for Formalities Examination. Chapter VI. 2. Request for examination and transmission of the dossier to the examining division
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