[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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