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Comments of Section of Intellectual Property Law American Bar Association to Advanced Notice of Proposed Rulemaking

Comments of

Section of Intellectual Property Law

American Bar Association

to

Advanced Notice of Proposed Rulemaking

Federal Register October 5, 1998

Volume 63, Number 192

 

The following comments are directed to the twenty one Topics in the Advance Notice of Proposed Rulemaking (ANPR) - Changes to Implement the Patent Business Goals - published on October 5, 1998. These comments are those of the Intellectual Property Law Section (IPL Section)of the American Bar Association. The comments have not been approved by the House of Delegates or Board of Governors of the ABA and, accordingly, should not be construed as representing the policy of the Association.

Topic 1 - Simplifying Request for Small Entity Status (37 CFR § 1.27)

Comment - This proposed change should be helpful to applicants and their attorneys because it would simplify claims to small entity status. It is submitted however, that the attorney's obligation should be no more than to clearly advise the applicant or assignee of the provisions of 37 CFR § 1.28(d) and to question the applicant or assignee regarding any indication that small entity status may not exist. A separate investigation by the attorney should not be required.

 

Topic 2 - Requiring Separate Surcharges and Supplying Filing Receipts (37 CFR § 1.53)

Comment - The provision of "corrected" filing receipts for completion fee payments and filing of oaths or declarations is likely to cause confusion, particularly since a large number of corrected filing receipts are already required for all types of errors. The use of a different form to indicate completion of the filing fee requirements would be preferable.

The imposition of an additional surcharge for each late filed document may be justified but only if the Office can show that the amount of such surcharges corresponds to the increased workload on the Office.

Instead of generating a multiplicity of documents which are separately mailed to the applicant, the Office could issue a single form, similar to the Notice to File Missing Parts, which would indicate the following:

(i) The minimum requirements for filing the application have been met and an Application No. and Filing Date have been assigned (subject to compliance with other requirements);

(ii) That a foreign filing license has been granted or denied;

(iii) That certain (specified) papers and fees are missing and the date they must be filed; and

(iv) Requiring a clarification (if needed) as to the type of filing that is intended, e.g. provisional, non-provisional, continuation, divisional, CPA, etc.

Only a single filing receipt should be issued when the requirements set forth in the above-mentioned form are met.

Topic 3. Permitting Delayed Submission of an Oath or Declaration. (37 CFR § 1.52, 1.53)

Comments- The proposal to permit delayed submission of an oath or declaration may be beneficial since it would also avoid the need for supplemental oaths or declarations if the claims are significantly amended during prosecution.

The proposal to require the submission of inventor identification, foreign priority claims and practitioner statements within one month is considered to be insufficient because these items will often require several communications between the U.S. practitioner and clients who reside overseas. At least two months should be granted to furnish these and all other required submissions, including a translation.

 

The consideration being given to requiring a Continued Prosecution Application where a different inventive entity is named in the oath or declaration also appears to be onerous. If the justification for this requirement is that a different inventive entity would require a different consideration of the prior art, it would seem that this could be solved by the Examiner citing all of the art and making provisional rejections which could be overcome when the cited art is in the name of a person who signs the oath or declaration.

 

Comments on Specific Questions

1. The benefits of allowing the filing of a declaration after allowance would outweigh the requirements of a fee but the fee should not be larger than for any late filed paper.

2, Regarding the benefits of filing an oath or declaration late, this would not outweigh the drawback of probable increased difficulty of obtaining inventors' signatures after a longer delay. It should be up to the applicant as to when to file the oath of declaration.

 

3. As to the matter of obtaining a filing date for § 102(e) purposes, this could be obtained by entering the National Phase via Section 111. It is up to the applicant and should not be of concern to the Office.

4. It appears that the reference to 37 CFR § 1.34(b) in the Notice should be 37 CFR § 1.34(a). Some IPL Section members caution that the filer who purports to represent an applicant or assignee should not be allowed to take significant actions which presently require concurrence of the inventor or assignee.

5&6. Regarding the handling of situations where an inventor or the assignee appoints another representative, if this involves an assignment or ownership dispute, some of our members believe that proceedings should be suspended until this dispute is resolved. Also, the non-signing inventor would likely file his own application and an interference would be declared in which the matter would presumably be resolved.

 

Topic 4. Limiting the Number of Claims in an Application.

Comments- We do not favor the proposed limitation on the number of claims in an application.

It should be noted that if both method and apparatus claims are contained in an application, the proposal to limit the application to six independent claims would result in only three independent apparatus claims and three independent method claims. Further, it is noted that the manner in which the Court of Appeals for the Federal Circuit has recently interpreted patent claims makes claim drafting an uncertain process and applicants should have a significant latitude in expressing the invention.

Regarding the claims that would not be examined, it is noted that Continued Prosecution Applications would be permitted; however these CPAs would not have the protection provided in 35 U.S.C. § 121. For this reason also, we oppose the proposed limitation of the number of claims.

We also note that there should be no difference between charging increased fees for claims exceeding a certain number and requiring the filing of a CPA. It appears that the Examiner's work would be the same in either case. We therefore suggest that charging currently existing claim fees for large numbers of claims outweighs the alternative of requiring the filing of CPA's.

In this regard, there already is a fee-based disincentive to the presentation of a large number of claims. The Notice of Missing Parts form should include a statement (immediately following the space requiring the payment of any missing fees for extra claims) that the fees for extra claims need not be paid or can be adjusted (or will not be fully charged pursuant to a preexisting authorization), if the response to the form includes a cancellation of some of the extra claims. This will afford the applicants a possibility of exercising some second thoughts about the large number of initially submitted claims.

If the number of claims presented for examination remains generally burdensome, consideration should be given to increasing the disincentive, such as by a stepped up second tier of higher fees for more than 40 claims, and more than 6 independent claims. Since not all dependent claims have to be independently patentable, it could also be foreseen that examiners need not necessarily act on more than the first 40/6, and upon allowability of some of the examined claims, they will automatically allow the retention of those additional claims that are dependent from already allowed claims.

 

Topic 5. Harmonizing Standards for Patent Drawings. (37 CFR § 1.84)

Comments- The proposal to harmonize the standards for drawings with those of the PCT is reasonable. However, it is recommended that the Examiner, and not a separate draftsperson, review the drawings for both form and content. The Office should not be permitted to object to drawings if they were not objected to by a Receiving Office or by the International Bureau.

 

Topic 6. Printing Patents in Color. (37 CFR § 1.84)

Comments- It is generally agreed that color drawings and photographs should be permitted in appropriate cases. However, it is noted that this would be different from PCT practice.

 

Topic 7. Reducing the Time for Filing Corrected Formal Drawings. (37 CFR § 1.85)

Comments- We believe that formal drawings should not be required upon indication of allowable subject matter because the mere indication of allowable subject matter does not conclude the prosecution, and does not permit ascertaining the ultimate make-up of the claims and the drawing that may be required to support the final claims. The time for submission of corrected formal drawings should be the same as the date for payment of the Issue Fee required so that multiple deadlines will not be imposed on the applicant.

 

Topic 8. Permitting the Submission of Voluminous Material. (37 CFR § 1.96, 1.821)

Comment- The IPL Section agrees that the proposal to permit the submission of large computer program listings and nucleotide and/or amino acid sequence listings in machine readable form would be beneficial. However, there must be assurance that material on the machine readable medium cannot or will not be altered. Also consideration should be given to the possibility that as technology develops, future reading equipment may not be capable of reading information that now is being stored in machine readable form.

 

Topic 9. Imposing Limits/Requirements on Information Disclosure Statement Submissions (37 CFR § 1.98).

Comment- We recognize the burdens that large numbers of Information Disclosure Citations impose on Examiners. However, we generally feel that the PTO's proposal to require a description of references showing that they set forth a teaching which is not shown by the other citations, places the attorney in a difficult situation and exposes the applicant to vastly increased risk. Often this is a matter of judgment; and it may later turn out that the attorney was mistaken.

Perhaps the matter could be better handled by charging a fee for each cited reference beyond a certain number which is not accompanied by a description of the type mentioned in this Topic.

It is important that the Office not discourage attorneys and applicants from submitting all information that may be material to the Examiner's consideration of patentability.

Regarding the problem of citation "dumps", this seems to be limited to a relatively small number of cases which should be dealt with individually and not by a general rule.

 

Topic 10. Refusing Information Disclosure Statement Consideration Under Certain Circumstances (37 CFR § 1.98)

Comment- The IPL Section considers that Examiners should never refuse consideration of references. The problem of the relatively small number of cases where citation "dumps" occur is believed to be relatively small and should not be addressed by rulemaking.

 

Topic 11. Providing No-Cause Suspension of Action

Comment- In general, the Section agrees with this proposal. However, some members are concerned that the presence of a published but unexamined application, which may be amended to broaden the claims, will have a chilling effect on third parties in regard to their work on related matters. This would discourage the development of technology.

Therefore we propose:

(i) to preclude broadening of claims in a suspended application;

(ii) to obtain legislative authority for separating the initial fees into a filing fee and an examination fee;

(iii) to limit the deadline for requesting examination to 5 years from the filing of a non-provisional application; and

(iv) to require a statement as to whether a counterpart PCT or EPO application was filed in the English language.

The U.S. suspended application would not have to be published except to provide bibliographic data in the Official Gazette. Third parties could obtain the full text electronically from the Office or from internet databases.

Third parties should also have the right to initiate examination by paying an examination fee and without identifying themselves.

If suspensions are permitted, the suspension should be for any duration up to five years.

 

Topic 12. Requiring a Handling Fee for Preliminary Amendments and Supplemental Replies. (37 CFR § 1.111)

Comment- The IPL Section believes that fees should be charged for second and later preliminary and supplemental amendments so as to encourage the filing of complete applications and responses. Fees should, however, be charged for preliminary amendments which are filed more than ten months after the filing date and where such preliminary amendments cross an Official Action in the mail.

 

Topic 13. Change in Amendment Practice to Replacement by Paragraphs/Claims. (37 CFR § 1.121).

Comment- In general this would be a good change, particularly when applications are filed electronically. It is noted, however, that this could result in bulky paper files in the PTO.

Before these requirements are implemented, the question of application format should be settled between the trilateral countries, the PCT countries and the proposed Patent Law Treaty countries, so that whatever requirements are adopted would not have to be changed.

Regarding the requirement for a marked-up copy this should be in the same format as now used for claims, i.e. with brackets indicating matter to be deleted and underlining to indicate added matter.

In any event, a single letter change in one word should not require a whole new sheet.

Rather than requiring paragraph numbers, the Office should consider line numbers which continue from page to page because word processors do not automatically insert paragraph numbers but they can insert consecutive line numbers.

Topic 14. Providing for Presumptive Elections. (37 CFR § 1.141).

Comment- We opposes this proposal at least until the PTO adapts its restriction standards to those of the PCT.

 

Topic 15. Creating a "Rocket Docket" for Design Applications. (37 CFR § 1.155)

Comment- This proposal may be advantageous to applicants as well as the public.

However, there is some question as to whether the PTO is capable of carrying out this expedited examination.

Some IPL Section members feel that the applicant should provide a showing of why expedited processing is necessary.

Other members feel that the $900.00 fee is unjustified inasmuch as the same effect can be obtained with the current Petition to Make Special, at a much reduced fee.

 

Topic 16. Requiring Identification of Broadening in a Reissue Application (37 CFR § 1.173)

Comment- While some of our members consider this proposal to be reasonable, it is noted that questions may arise as to whether an applicant intentionally failed to identify one or more instances of broadening in violation of the duty of candor which puts the applicant and the attorney in a difficult position.

 

Topic 17. Changing Multiple Reissue Application Treatment (37 CFR § 1.177)

Comment- We consider this proposal to be reasonable.

 

Topic 18. Creating Alternative Review Procedures for Applications under Appeal (37 CFR § 1.192).

Comment- The IPL Section approves of this procedure except that it should be done as a routine measure and a fee for this procedure should not be required. The procedure itself should reduce Office expenses since it would eliminate many unnecessary appeals.

There is some concern that an application approved for appeal by a separate committee may prejudice the Board against the applicant.

Some of our members propose that the reviewing group comprise senior examiners outside of the art unit in which the application was examined; that the review be conducted as a first stage appeal; and that the current Board of Appeals and Interferences be separate from the PTO, for example, in a manner similar to the German Federal Patent Court.

 

Topic 19. Eliminating Preauthorization of Payment of Issue Fee (37 CFR § 1.311).

Comment- While it is noted that applicants in general do not want issue fees paid automatically, some of our members feel that applicants nevertheless should have the opportunity to preauthorize issue fee payments.

 

Topic 20. Reevaluating the Document Disclosure Program.

Comment- The IPL Section generally believes that the Document Disclosure program is unnecessary in view of the ability to file provisional applications. However, some members consider it valuable to have an officially indexed and searchable database of disclosure documents strictly for defensive publication purposes.

 

Topic 21. Creating a PTO Review Service for Applicant-Created Forms.

Comment- Since electronic filing and PCT/PLC compatibility will probably require standardized forms in the near future, the resources of the PTO could be put to more productive uses. Further, we do not see any groundswell of support for this proposal. For these reasons, the IPL Section does not support the proposal.

We also believe that before new standardized forms are adopted they should be made subject to public review.

 

 

 

 

 

 

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