The PTO is taking another step to reduce its workload through deferring examination of patent applications. The PTO has announced that it will soon start a pilot program to allow inventors to defer the payment of certain filing fees by one year. The stated goal of the pilot program is to allow inventors a total of two years to develop their inventions and test the market before incurring the costs of a utility application. The goal is laudatory; however, the proposal does not achieve that goal. In fact, achieving the stated goal would require changes to the patent statute and renegotiation of the Patent Cooperation Treaty. Don’t hold your breath.
The pilot program will allow an inventor the option of following a provisional patent application with a full utility application having at least one claim within one year but will allow the inventor to request deferred examination of the utility application for one year.
The benefit to the inventor is that the inventor can defer the costs of developing a full set of claims for two years and defers $380.00 in PTO fees for one year. Two items are required to make this system work: (a) a high-quality provisional application that meets the written description, best mode and enablement requirements; and (b), the firm knowledge that the inventor will not seek patent protection in other countries.
The deferral system has risks for inventors. The principal risk stems from the fact that the inventor will not supply a full set of claims at the time of filing the utility application. As a result, the inventor may not know all of the elements necessary to support the claims and inadvertently may leave out elements from the disclosure. Those missing elements cannot be added back in later. If one of the bar dates passes (one year from public use, one year from sale or offer for sale, one year from publication of an enabling disclosure), then the inventor will be out of luck and lose all ability to patent the invention.
— Robert Yarbrough, Esq.