Texas Instruments comments on the proposed rules

From: r-benson@ti.com
Sent: Monday, May 22, 2000 7:01 PM
To: Pre Grant Pub
Cc: Spar, Bob
Subject: Pregrant Publications

Assistant Commissioner of Patents
Washington DC 20231

Dear Sir,

Texas Instruments' comments on the proposed rules concerning publication of applications eighteen months from the earliest claimed priority date, are as follows:

The implementation of the 18 month publication of patent applications raises the spectre of a de facto pre-grant opposition procedure in the United States, when the United States has worked hard to convince other countries to move from a pre-grant opposition procedure to a post-grant opposition procedure. The proposed limits of filing documents within 2 months of publication and limiting an individual to 20 documents, do not go far enough in protecting applicants from misuse of the system. We believe that all such submissions should indicate the real party in interest and contain an undertaking on behalf of the real party in interest that this is the best prior art known to that party at that time.

In addition, we believe that relief is required under Rule 56. This rule, which is unique to the United States, could enable a third party to submit art to the inventors, their agent or attorney thereby obligating them to decide whether this art should be submitted to the Office, regardless of the status of the application. For example, in an application initially filed with the USPTO as a non-provisional application, the Office should issue a first action within 14 months and applicant should respond in 3 months, which may place the application in condition for allowance before publication. Although the Office will not consider prior art submitted after a Notice of Allowance has issued, this will not prevent a third party from submitting such art to the inventor or attorney, who then might be obligated to review the art and possibly withdraw the application from issue so that the art could be considered.

Furthermore, there is nothing to prevent these third parties from submitting such art to the inventors or attorney in a piecemeal fashion, which could result in applicants filing multiple Information Disclosure Statements, thus creating a substantial delay in the issuance of the application, to applicant's detriment. Thus, the abuse which can occur in pre-grant opposition procedures would be possible in the United States but no longer possible in the countries which have converted to post-grant procedures. The quid pro quo for our making these changes would thus be undone. It would not be hard to envision entrepreneurial organizations being set up strictly to provide this service to would-be opposers. Relief under Rule 56 could exempt those associated with an application from considering third party art in the same manner the Office has provided for itself. Submissions to inventors or attorneys should also include a statement as to the relevance of the art to the published claims.

Respectfully submitted,


Frederick J. Telecky, Jr.
Senior Vice President and
General Patent Counsel