Recommendations on the proposed changes for pregrant publication
Sent: Monday, April 24, 2000 2:03 PM
To: Pre Grant Pub
Subject: Fw: pregrant publication
RECOMMENDATIONS ON THE PROPOSED RULE CHANGES FOR PREGRANT PUBLICATION
1- Only applications which the USPTO can demonstrate have been or will be foreign filed should be published.
2- The burden should be upon the PTO to determine whether or not a corresponding foreign application has been filed rather than on the applicant to decide a priori whether or not a corresponding foreign application will be filed. Rather than simplifying the patent prosecution process, the PTO is complicating the process even more by requiring the filing of additional forms that many independent inventors and small companies will overlook and cause their applications to be ABANDONED.
3- Only inventors who wish to have their application published should be required to make an affirmative indication to the PTO. Inventors who do not wish to have their application published SHOULD NOT be required to make an affirmative indication to the PTO. Consider the risk benefit to each of these for failure to do so.
4- An Applicant's failure to rescind a request to stop publication of a patent application should NOT result in abandonment of the US application. This is absolutely preposterous and provides NO BENEFIT to anyone but the PTO (the PTO will receive revival fees). At a MINIMUM, the PTO should send a reminder, say at ten to twelve months, to an inventor who has filed a request to stop publication requesting that the inventor confirm their intent to stop publication of their application. At MOST, the PTO might assess a NOMINAL fee ($5) for failure to rescind a request to stop publication, if a corresponding foreign application is filed.
5- The basis for publishing a continuation-in-part (CIP) application should be the filing date of the CIP application and NOT the filing date of the priority application. The CIP application contains NEW MATTER which should receive the benefit of delayed publication, i.e., no sooner than 18 months after filing of the CIP.
6- The $1,210 surcharge under 1.17(u) for accepting an unintentionally delayed claim for priority under is OUTRAGEOUS. The surcharge should at MOST be nominal ($5).
7- The $300 publication fee is unacceptable. Many inventors do not want their applications published, yet they will be FORCED to do so. NO FEE should be charged to applicants who indicate they do not want their applications published and that are forced, by virtue of the Rules, to do so.
Pregrant publication does not promote the useful sciences for the majority of independent inventors and small corporations. Independent inventors and small corporations generally do not have the resources to bring their inventions to market rapidly; therefore, they rely heavily upon the competitive advantage that delayed publication of the patent provides. Only large corporations will benefit from pregrant publication.
Rick Matos, Ph.D.