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Archived updates for Friday, August 05, 2005

How to Keep a U.S. Patent Application Pending for at Least Three Years

Under 37 CFR § 1.103(d), on request of the applicant, the U.S. Patent Office may grant a deferral of examination for a period not extending beyond three years from the earliest filing date for which a benefit is claimed. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). However, a request for deferral of examination will not be granted unless:

  1. The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
  2. The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
  3. The application is in condition for publication as provided in § 1.211(c); and
  4. The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.

Of course, during the deferral you can also mark your product as "patent pending" in order to strike fear in hearts of potential copiers, regardless of what scope of protection that you may (or may not) be able to obtain.

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Blogger Todd Lewis Mayover said...


Any thoughts on why someone would want to postpone prosecution for three years given the 14-30 month backlog at the USPTO?



August 05, 2005 1:08 PM  
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August 05, 2005 1:12 PM  
Blogger Laura Slenzak said...

I somewhat agree with Todd. I already get put on the ignore pile for 24 months as it is. There is normal no need for me to actually ASK them to ignore me, however I could envision situations where I'd want to take advantage of it. One prime case comes to mind -- prosecuting in Germany and US simultaneously. I may wish to put the US case on hold while I aggressively prosecute the German case, and then dust off the US case after the German patent office has already granted the case after having found all of the better prior art that the USPTO likely would have missed anyway. Now my US file history is squeaky clean.

August 08, 2005 9:33 AM  
Anonymous Anonymous said...



April 07, 2009 4:36 AM  

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