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applicant has filed a non-publication request under 1.213 does not affect the public in any manner (the case will still not be published).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.
