PGPUB Comments - PHCDL2

From: erath@priceheneveld.com
Sent: Monday, May 22, 2000 7:57 AM
To: Pre Grant Pub
Subject: Comments on Proposed Changes to Implement Eighteen-Month
Publication

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. I 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37 C.F.R. § 1.213(a) Proposed rule 1.213(a) provides that a utility patent application will not be published under 35 U.S.C. 122(b) and 37 C.F.R. § 1.211 provided (1) a request (non-publication request) is submitted with the application upon filing, (2) the request states in a conspicuous manner that the application is not to be published under 35 U.S.C. § 122(b), (3) the request contains a certification that the invention disclosed in the application has not been and will not be the subject of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 or under a multilateral agreement that requires publication at 18 months after filing, and (4) 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. I 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. Therefore, I request a provision in the proposed rule requiring publication of the classification of the patent application.

Respectfully submitted,


By: Price, Heneveld, Cooper,
DeWitt & Litton

Eugene J. Rath III
Registration No. 42 094

Eugene J. Rath III
Price, Heneveld, Cooper, DeWitt & Litton
695 Kenmoor SE
Grand Rapids, MI 49546
(616) 949-9610 ext. 106
email: erath@priceheneveld.com

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