PGPUB Comments - PHCDL

From: MDOLCE@priceheneveld.com
Sent: Friday, May 19, 2000 2:52 PM
To: Pre Grant Pub
Cc: bainsworth@priceheneveld.com; cclark@priceheneveld.com;
dcarter@priceheneveld.com; dgirdwood@priceheneveld.com;
dsiegel@priceheneveld.com; erath@priceheneveld.com;
gevanina@priceheneveld.com; hreick@priceheneveld.com;
jkapteyn@priceheneveld.com; jmitchell@priceheneveld.com;
kgrzelak@priceheneveld.com; MDOLCE@priceheneveld.com;
mlong@priceheneveld.com; rcarrier@priceheneveld.com;
rcooper@priceheneveld.com; rlitton@priceheneveld.com;
sunderwood@priceheneveld.com; tcallaghan@priceheneveld.com;
tgroetken@priceheneveld.com; tvanthomme@priceheneveld.com;
wdewitt@priceheneveld.com
Subject: Comments on Proposed Changes to Implement Eighteen-Month
Publication of Patent Applications

Honorable Commissioner for Patents
United States Patent and Trademark Office
Washington, D.C. 20231


Dear Commissioner:

This communication is in response to the Patent and Trademark Office's request for comments relating to proposed changes in the Rules of Practice in Patent Cases to implement certain provisions of the "American Inventor's Protection Act of 1999" to provide, with certain exceptions, for the publication of pending patent applications (other than for a design patent) at 18 months from the earliest claimed priority date. We, the patent attorneys and agent named below, request consideration for the following comments:

37 C.F.R. § 1.213(a) Proposed rule 1.213(a) provides that a utility patent application will not be published under 35 U.S.C. 122(b) and 35 C.F.R. § 1.211 provided a request (non-publication request) is submitted with the application upon filing, the request states in a conspicuous manner that the application is not to be published under 35 U.S.C. § 122(b), the request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country and under a multilateral agreement that requires publication at 18 months after filing and the request is signed in compliance with § 1.33(b). This section, however, does not address whether a foreign filing license will continue to be granted even though a request for non-publication has been made. The patent attorneys and agent named below therefore request clarification on whether a foreign filing license will continue to be provided, even though a request certifying that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or a under a multilateral agreement, that requires publication at 18 months after filing has been made.

37 C.F.R. § 1.215(a) Proposed rule 1.215 states that "[t]he publication of an application under 35 U.S.C. § 122(b) shall include a patent application publication." Proposed rule 1.215 further provides that "[t]he date of publication shall be indicated on the patent application publication." However, the proposed rule does not state whether the classification of the patent application will be published. The patent attorneys and agent named below request a provision in the proposed rule requiring publication of the classification of the patent application.

Respectfully submitted,
By: Price, Heneveld, Cooper,
                DeWitt & Litton

Marcus P. Dolce
Registration No. 46 073     
                            
Terry S. Callaghan
Registration No. 34 559 
                            
Michael R. Long
Registration No. 42 808 
                            
Todd A. Van Thomme
Registration No. 44 285 
                            
Troy A. Groetken
Registration No. P-46442    
                            
Carl S. Clark
Registration No. 28 288 
                            
H. W. Reick
Registration No. 25 438 
                                    
Gunther J. Evanina
Registration No. 35 502
                            
William W. DeWitt
Registration No. 22 300     
                            
Robert J. Carrier
Registration No. 24 219

Steve Underwood
Registration No. 35 727