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Deferred patent examination–an underused strategy


By
Smith & Hopen PA

Many research institutions have technology transfer offices that assist in the commercialization of basic scientific research.  This is a challenging task.  Finding the right licensee may take years while patent prosecution decisions (and money) must be committed.

However, there is a little-known option….deferred examination (37 CFR 1.1 03(d)).   The examination of a (non-reissue) utility or plant application may be deferred up to 3 years from the earliest filing date for which a benefit claim is made.    If the technology is in a state of flux, deferring examination may keep options open.

 

Continuation Practice and Deferred Examination

Another strategy is to seek an initially narrow patent by filing a “picture claim” on the preferred commercial embodiment.  The narrow claim makes it difficult for the patent examiner to reject and an initially narrow patent is issued. 

However, before that first patent issues, a continuation is filed along with a request for deferral of examination.  If the technology is infringed, the continuation may be amended to better “read” on the accused article.  This is much less expensive that filing for a reissue patent.  Also, after two years from issuance, a reissue patent cannot be broadened.  However, there is no such restriction on a continuation application.

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Costs and Procedures

To file for deferred examination two fees need to be paid:

  • $130 for the petition fee (37 C.F.R. 1.17(i)); and
  • $300 for the publication fee (37 C.F.R. 1.18(d)).

You can use the USPTO Form PTOSB37 in making the submission anytime before an Office action issues under 35 USC 132 or a notice of allowance.

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High Value Technologies

For any high-value patent application a continuation should always be filed with deferred examination requested.  This will keep options open for the evolution of the technology and avoid having your own intellectual property cited against yourself as prior art.






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