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PGPUB Comments - agilent

	From: gordon_stewart@agilent.com
	Sent: Monday, May 22, 2000 6:24 PM
	To: Pre Grant Pub
	Cc: cynthia_johnson@agilent.com; elizabeth_miller@agilent.com
	Subject: Comments Re Proposed Rulemaking "Changes to Implement
	Eighteen-Mo nth Publication of Patent Applications"
	
	
	Below are comments in response to a notice of proposed rulemaking
	entitled,
	"Changes to Implement Eighteen-Month Publication of Patent
	Applications", 65
	Fed. Reg. 17946 (April 5, 2000).  These comments are submitted by
	Ian
	Hardcastle, John Imperato, Jerry Joyce, and Gordon Stewart of
	Agilent
	Technologies, Inc., and represent the views of Agilent
	Technologies.
	Agilent Technologies is a global diversified technology company of
	42,000
	employees focusing on high-growth markets in the communications,
	electronics, life sciences and healthcare industries, with over $8
	billion
	in net revenue for FY99.
	
	1.  Proposed 37 CFR 1.55 and 1.78 provide time limits for the
	claiming
	of foreign (1.55) or domestic (1.78) priority.  These time limits
	are the
	later of four months from the actual filing date, or sixteen months
	from the
	filing date of the prior application (foreign or domestic) from
	which
	priority is claimed.  Failure to do so is taken as a waiver of the
	priority
	claim (1.55(c) and 1.78(a)(2)).  Late acceptance of the priority
	claim is
	possible if unintentional and a $1200 petition fee is paid.  This
	provision
	is apparently so that the PTO will know when the statutorily
	mandated
	18-month publication date has accrued, and hence ensure early
	publication in
	accordance with the statute.  
	    However, under 1.213 an applicant can elect not to publish a
	domestic only case.  Whether she has made domestic priority claims
	or not
	does not affect this ability to claim non-publication.  Therefore,
	the later
	addition of a domestic priority claim where the applicant has filed
	a
	non-publication request under 1.213 does not affect the public in
	any manner
	(the case will still not be published).  
	    Furthermore, whenever an application has been made available
	for
	publication within 6 months after its actual filing date (for
	example, as a
	result of one previously submitted priority claim or a request for
	voluntary
	publication) no real harm is done to the public by the later
	addition to the
	case of other priority claims.  In such cases, whether or not the
	additional
	priority claims are made, publication still occurs within the
	statutorily
	mandated 18 month period.  
	We therefore suggest the following changes to the proposed rules: 
	(i) in a
	case where a non-publication request under 1.213 has been filed and
	not
	effectively withdrawn under proposed 1.213(c), claims to domestic
	priority
	may be added at any time without a petition; and (ii) if an
	application is
	made available for publication within 6 months of its actual filing
	date, an
	applicant may add any other priority claims without a petition.  
	
	2.  Proposed 37 CFR 1.98(a)(2) requires submission of a copy of,
	among
	others, any cited pending (unpublished) application.  Given that
	proposed 37
	CFR 1.14(c)(2) will allow third parties to obtain copies of the
	entire
	contents of the file of a published patent application, this will
	allow
	third parties unfettered access to an unpublished patent
	application merely
	because an applicant cited it to ensure compliance with the
	disclosure rules
	of 37 CFR 1.56.  This creates the following problems for the
	unpublished
	cited application:
	(i) the cited application is probably now a publication which may
	create
	a statutory bar for the filing of other foreign applications;
	(ii)    the cited application [then,] may effectively disclose
	trade secrets
	earlier than would be required if the cited application had been
	published,
	or if it had been decided to abandon the cited application before
	it was
	published; and
	(iii)   further submission of paper copies to the PTO when the PTO
	is
	supposed to be moving to reduce paper flow.  
	    Furthermore, the PTO scans all received applications in any
	event.
	There is no real reason why such scanned copies cannot be called up
	by the
	Examiner at their desktop.  It is understood that there is some
	difficulty
	at the PTO in securing a secure communication channel from the
	scanning
	facility to the PTO Examiner facilities.  However, such a minor
	infrastructure problem should be handled by the PTO, rather than
	imposing a
	burden on all applicants which in TOTAL is greater than that on the
	PTO of
	obtaining a secure communication channel.  Additionally, this
	applies
	equally and even more so, to the requirement of printed copies of
	other
	documents (i.e. published patent applications, patents) to which
	the
	Examiner should readily have access at their desktop.  
	
	
	
	
	
	
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