[Federal Register Volume 74, Number 17 (Wednesday, January 28, 2009)]
[Notices]
[Pages 4946-4947]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-1740]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2008-0063]
Request for Comments and Notice of Roundtable on Deferred
Examination for Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice; Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
frequently receives suggestions that the USPTO adopt a deferral of
examination procedure. The USPTO is conducting a roundtable to obtain
public input from diverse sources to determine whether the support
expressed for deferral of examination is isolated or whether there is
general support in the patent community and/or the public sector
generally for the adoption of some type of deferral of examination. The
roundtable is open to the public. Members of the public who wish to
participate in the roundtable must do so by request, as the number of
participants in the roundtable is limited to ensure that all who are
speaking will have a meaningful chance to do so. Members of the public
who wish solely to observe need not submit a request. Any member of the
public may submit written comments on issues raised at the roundtable
or on any issue pertaining to deferral of examination.
DATES: The roundtable will be held on Thursday, February 12, 2009,
beginning at 9 a.m. and ending at 12:30 p.m.
The deadline for receipt of requests to participate in the
roundtable is 5 p.m. on Thursday, February 5, 2009.
The deadline for receipt of written comments is February 26, 2009.
ADDRESSES: The roundtable will be held in at the USPTO, in the Madison
Auditorium on the concourse level of the Madison Building, which is
located at 600 Dulany Street, Alexandria, Virginia.
Requests to participate at the roundtable are required and must be
submitted by electronic mail message through the Internet to
[email protected]. Requests to participate at the roundtable should
indicate the following information: (1) the name of the person desiring
to participate and his or her contact information (telephone number and
electronic mail address); and (2) the organization(s) he or she
represents.
Written comments should be sent by electronic mail message over the
Internet addressed to [email protected]. Comments may also be
submitted by mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Robert W. Bahr. Although comments may be
submitted by mail, the USPTO prefers to receive comments via the
Internet.
The written comments and list of the roundtable participants and
their associations will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the USPTO Internet Web
[[Page 4947]]
site (address: http://www.uspto.gov). Because comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Counsel,
Office of the Deputy Commissioner for Patent Examination Policy, by
telephone at (571) 272-8800, or by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Currently, many intellectual property (IP)
offices that substantively examine patent applications do not perform a
substantive examination on every patent application that is filed in
the respective office. Specifically, a patent application is not given
a substantive examination in many IP offices unless and until an
applicant submits an express request for examination, and the failure
to file any such request for examination within a specified time period
results in abandonment or withdrawal of the application. This practice
is commonly referred to as ``deferred examination.''
In the United States, the mere filing of a patent application and
payment of the applicable fees is effectively a request for examination
of the application. The USPTO frequently receives suggestions that the
USPTO adopt a deferral of examination procedure. The USPTO has in place
an optional deferred examination procedure that was adopted as part of
the rule making to implement eighteen-month publication of patent
applications. See Changes to Implement Eighteen-Month Publication of
Patent Applications, 65 FR 57023, 57033, 57056 (Sept. 20, 2000), 1239
Off. Gaz. Pat. Office 63, 71-72, 92 (Oct. 10, 2000) (final rule). This
deferral of examination procedure permits deferral of examination for
up to three years from the earliest filing date for which a benefit is
claimed under title 35, United States Code. See 37 CFR 1.103(d). The
deferral of examination procedure set forth in 37 CFR 1.103(d),
however, has been used in fewer than two hundred applications since its
inception on November 29, 2000 (the effective date of eighteen-month
publication and 37 CFR 1.103(d)).
The USPTO is conducting a roundtable to determine whether the
support expressed for deferral of examination is isolated or whether
there is general support in the patent community and/or the public
sector generally for the adoption of some type of deferral of
examination. The number of participants in the roundtable is limited to
ensure that all who are speaking will have a meaningful chance to do
so. The USPTO plans to invite a number of participants from patent
user, practitioner, industry, and independent inventor organizations,
academia, industry, and government. The USPTO also plans to have a few
``at-large'' participants based upon requests received in response to
this notice to ensure that the USPTO is receiving a balanced array of
views on deferral of examination.
The roundtable is open to the public, but participation in the
roundtable is by request, as the number of participants in the
roundtable is limited. While members of the public who wish to
participate in the roundtable must do so by request, members of the
public who wish solely to observe need not submit a request. Any member
of the public, however, may submit written comments on issues raised at
the roundtable or on any pertaining to deferral of examination, for
consideration by the USPTO. Persons submitting written comments should
note that the USPTO does not plan to provide a ``comment and response''
analysis of such comments as this notice is not a notice of proposed
rule making.
The USPTO plans to make the roundtable available via Web cast. Web
cast information will be available on the USPTO's Internet Web site
before the roundtable. The written comments and list of the roundtable
participants and their associations will be posted on the USPTO's
Internet Web site.
Dated: January 22, 2009.
John J. Doll,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. E9-1740 Filed 1-27-09; 8:45 am]
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