AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION
American Intellectual Property Law Association
2001 JEFFERSON DAVIS HIGHWAY, SUITE 203, ARLINGTON VIRGINIA 22202-3694
Telephone (703) 415-0780
Facsimile (703) 415-0786
December 4, 1998
The Honorable Bruce A. Lehman
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
U.S. Patent and Trademark Office
United States Department of Commerce
P.0. Box 4
Washington, D.C. 20231
Attention: Box Comments - Patents
Hiram H. Bernstein
Re: AIPLA Comments on the Advance Notice of
Proposed Rulemaking Entitled "Changes to Implement
The Patent Business Goals" -
63 Fed. Reg. 53498 (October 5. 1998)
Dear Commissioner Lehman:
The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to present its views on the advance notice of proposed rulemaking entitled "Changes to Implement the Patent Business Goals," published in the Federal Register on October 5, 1998.
The AIPLA is a national bar association of more than 10,000 members engaged in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property.
The AIPLA supports the efforts of the Patent and Trademark Office to achieve its five patent business goals, including reducing PTO processing time of patent applications and exceeding the customers' quality expectations. Particularly helpful in devising ways to achieve the PTO's goals is this opportunity to comment on changes the PTO is considering. To ascertain the value of proposed changes, the AIPLA urges the PTO to consider the effect the changes may have not only on the operation of the PTO and the efficiency of its staff, but also on applicants, their representatives, and the owners who make the investments and take the risks of developing inventions and securing patent protection.
A major goal of the AIPLA is the reduction of patenting costs globally. The European Patent Office, the World Intellectual Property Organization, and the Japanese, Australian and British Patent Offices have all taken steps recently to reduce such costs. The United States PTO should join this effort. Specifically, the AIPLA suggests that the PTO take steps to implement the PCT unity-of invention practice for all patent applications. Multiple standards for restriction practice burden and often confuse all parties - Examiners and applicants alike. If adopting the PCT unity of invention practice adversely affects the revenues of the PTO, AIPLA would support appropriate adjustments to its fees. The overall savings to patent applicants through the elimination of unnecessary processing costs would result in a net reduction in patenting costs and demonstrate the leadership the United States should exercise in this pursuit.
The AIPLA offers the following comments on the topics identified by the PTO in the advance notice. The numbers associated with the paragraphs below correspond to the numbers assigned to the topics in the advance notice.
(1) The AIPLA supports the proposal to simplify the procedures for establishing small-entity status in a patent application. The elimination of the presently required small-entity statements will reduce the burden on applicants, and therefore reduce the cost, of establishing small-entity status. Even where a good-faith error is made in paying fees at the small-entity rate, the PTO's straightforward approach to paying a fee deficiency under 37 C.F.R. § 1.28(c), validated by the Federal Circuit in D.H. Technology, Inc. v. Synergistex International, Inc., 47 U.S.P.Q.2d 1865 (Fed. Cir. 1998), would permit correction by a simple procedure.
(2) The AIPLA does not support the concept of separate surcharges for multiple missing parts. There does not appear to be any cost justification to charge two surcharges where the filing fee and the oath/declaration are both filed at the same time. The procedures should be kept simple for the sake of all those involved at this level of PTO processing. Creating multiple fees having certain exceptions will cause confusion and mistakes both inside and outside the PTO. The PTO may find that the additional income raised would not justify the administrative problems caused by this approach.
The AIPLA supports the PTO's proposal to provide three new user-friendly services regarding official filing receipts, although the benefits appear to be limited. The members of the AIPLA generally believe that the majority of errors in filing receipts are the fault of the PTO and should be corrected by the PTO without cost to applicants. Placing a copy of the filing receipt in the application file does not benefit applicants. What applicants need is a correct and timely filing receipt from the PTO.
(3) The AIPLA opposes the elimination of a notice regarding missing parts and changing the time period to one month from filing for submission of the basic filing fee or an English language translation. With regard to permitting delayed submission of an oath or declaration until after a notice of allowance, we believe this proposal warrants further study.
If the PTO adopts the option to delay the filing of an oath or declaration, it will probably witness an increase in the number of situations demanding a petition under 37 C.F.R. § 1.47, where an inventor cannot be located or otherwise will not sign the oath or declaration. Resolving the author-declaration issue after a notice of allowability has been mailed likely will conflict with the PTO goal to cut the time for printing the patent by starting the printing cycle at the time the notice of allowance is mailed. Unless the PTO adopts and maintains a simplified approach to the processing of Rule 47 petitions and improves its ability to match papers with files after a notice of allowance has been mailed, significant delays in the printing of patents will ensue. In general, the setting of multiple concurrent periods for response (e.g., three months to pay the issue fee, one month to file the oath or declaration) has caused problems for both the PTO and applicants. For example, we under-stand that the provisions of MPEP 2305.03 were adopted in response to the need for a safety net for applicants who were confused by multiple 'concurrent time periods for response.
As stated in the advance notice, the late submission of an oath or declaration in the national stage of a PCT international application would cause a patent to have a substantially later prior art effect date under 35 U.S.C. § 102(e). This should not significantly concern the PTO because the § 102(e) date is typically after the 18-month publication of the international application.
A step which would be more promising as a cost reduction measure and which would not entail the risks noted above would be to seek the elimination of the oath/declaration requirement. Little practical utility is realized from this anachronism of the past and its elimination would reduce burdens for both the PTO and patent applicants.
Elimination of the notice of missing parts and the PTO's proposal to set a one-month period for submission of filing fees and any English-language translations do not take into account the frequent inability of the PTO to process application papers and provide applicants with an application number assigned to the application papers within one month of filing. Unfortunately, this occurs even where a postcard is submitted to the PTO with the application papers in accordance with the practice set forth in the MPEP § 503. This proposal would create situations where applicants would either be required to pay extension-of-time fees because of PTO delay or to forward papers and/or fees to the PTO without an identifying application number. The first situation is manifestly unfair to applicants, and the second exacerbates the problem of lost papers and fees. Although the PTO would like to eliminate the notice to file missing parts, realistically, applicants need some notice of the PTO's position on what is missing from an application. Since the PTO has proposed to inform applicants in the filing receipt about the filing fee (i.e., whether paid and amount paid), a single form should be created to function as a filing receipt and to indicate whether an oath or declaration, or an English-language translation is required.
Finally, the AIPLA would encourage the PTO to take into consideration the Draft Patent Law Treaty under development by the World Intellectual Property Organization. Any time limits imposed by the PTO should be consistent with the provisions likely to be adopted in the Treaty.
(4) The AIPLA strongly opposes any limitation on the number of total and independent claims that will be examined in a patent application. The AIPLA further opposes the suggestion to place further limits on:
(1) the number of species that may be embraced within a Markush claim;
(2) the number of sequence listings that may be referenced in a single claim; and
(3) the number of alternative limitations that may be included in a claim.
Generally, an applicant should be permitted to submit the number of claims perceived necessary to protect the invention. The PTO's data suggest that the number of applications falling outside the proposed limit on the number of claims is less than 5%. There is no analysis or indication by the PTO that the claim fees paid in the exceptional cases do not cover the cost of additional examination resources expended on these applications. Further, it is not clear from the study published in the advance notice of applications filed in FY 1997, whether all the claims presented were actually examined in those applications, or whether the claimed subject matter was subject to a restriction requirement.
Placing an arbitrary limit on the number of claims will not serve the best interests of applicants, the PTO, the public, or the courts. Uncertainties regarding claim interpretation and the scope of the doctrine of equivalents demand that applicants have considerable flexibility in defining what they regard as their invention. The PTO's alternative suggestion of spreading an equivalent of 400 claims into 10 separate applications (each containing 40 claims) would not assist the PTO, the public, or the courts in ascertaining what is claimed or protected. The possibility that IO separate applications directed to the same patentable invention would be handled by different Examiners and possibly subjected to different and inconsistent treatment would cause significant problems for the PTO, the public, the courts, and applicants.
Before adopting any limitation on the number of claims and claim content, the PTO should conduct a more thorough analysis of its examination burden and explore other approaches of examining applications containing- a large number of claims that must be examined in the same application. In addition to providing additional time to examine applications having uniquely challenging aspects, such as a large number of claims, additional approaches including a surcharge fee for every claim in excess of a preset number should be considered. The analysis of the examination burden should be a part of a PTO plan to adopt PCT unity-of-invention principles as the sole basis for restriction practice in the PTO.
(5) The AIPLA supports the proposal to harmonize the standards for patent drawings with requirements of the Patent Cooperation Treaty. We understand, however, that the PCT does not currently permit the use of drawings or photographs in color. While we are not suggesting that the PTO take a step backwards by eliminating these possibilities in current U.S. practice, we believe the PTO should encourage the appropriate international bodies to adopt a uniform, more flexible standard so that an internationally harmonized approach can be achieved. In this regard, the AIPLA believes that the PTO should reconsider the proposed standard for the submission of black and white,
or color photographs and color drawings. The advance notice indicates that these would be permitted only where it is impossible to represent the invention in a drawing. What is the reason for such a strict standard? The PCT does not require such a showing for black and white photographs. So long as the photograph or drawing permits examination and reproduction in the patent grant, it should be considered acceptable.
(6) The AIPLA supports the PTO's proposal to print design and utility patents having colored drawings or photographs in color, along with a fee to cover the additional processing and publication cost.
(7) The AIPLA does not support either of the alternative PTO proposals to require the submission of corrected or formal drawings within one month of the mailing of the notice of allowabilityorinreplytoanyOfficeAcfionindicatingallowablesubjectmatter. The PTO's proposal to set a one-month time period for the submission of formal drawings will create the problem of multiple concurrent time periods for response for different matters (i.e., three months to pay the issue fee, and one month to submit the formal drawing). As indicated above, setting multiple concurrent time periods for response has historically caused problems for both the PTO and applicants. In addition, setting a period of one month to communicate with the client, obtain its approval for the formal drawings, and obtain and file the formal drawings makes the deadline extremely tight.
The suggestion to require formal drawings in reply to a PTO action that indicates allowable subject matter is even more problematic. It is often premature at this point in the prosecution to put applicants to the expense and burden of submitting formal drawings. Changes may be required to the drawings during the balance of the examination process, and agreement may not be reached on all the claimed subject matter in the application.
(8) The AIPLA supports the PTO's proposal to permit electronic submission of voluminous material only in a machine-readable form. Any formal proposal by the PTO should identify the procedures and safeguards that will be in effect to protect applicants and the public from PTO errors in losing, misplacing, or otherwise adulterating information supplied to the PTO only in a machine readable form. Public access to this information should be easy and the record should be permanent.
(9) The AIPLA strongly opposes the PTO's proposal to impose additional limits and requirements on the submission of information disclosure statements. The proposed changes would accomplish nothing of substance yet place additional burdens on Patent Examiners, registered practitioners, and applicants; significantly raise the costs of processing a patent application in the PTO; and create unnecessary risks and costs for the patent owner. The determination of the relevancy of prior art is a responsibility that must be performed by the PTO-A job each Patent Examiner should perform in each application when looking at any collection or database of documents.
It is unclear from the PTO's proposal what would constitute a sufficient "personal review" of each citation. This subjective determination, together with the requirement to provide a unique
description of each reference over 10, represents additional, unreasonable risks of "inequitable conduct" allegations if the patent is later litigated.
While the PTO has pointed to a few extraordinary situations that may call for a unique examining approach, the PTO has not revealed any data or other evidence that would wan-ant radical change in the current practice. Certainly the situation does not appear to justify the PTO's proposals that would place increased burdens on all those involved in the examination process, increase costs to applicants, increase the possibility of mischief during litigation, and increase the possibility of malpractice suits.
The AIPLA does not support the suggestion that an applicant would be required to file a copy of any patent application that is cited. The PTO should carefully weigh the burdens on Patent Examiners who have access to the PTO files along with the prosecution history in those files, as opposed to requiring applicants to submit copies of the applications cited in an information disclosure statement. The PTO is already having difficulty processing papers filed in an application without unnecessarily aggravating the burden this suggestion would cause.
The AIPLA encourages the PTO to continue its effort to reduce the burdens on PTO staff and applicants in satis@g the duty of disclosure. For example, the ready access of PTO Examiners to U.S. patents strongly suggests that the PTO should eliminate the requirement to provide copies of U.S. patents cited in an IDS. Moreover, the PTO has launched a WIPO project to develop an intranet among the world's patent offices to provide access to the data bases of these offices and it should use this intranet to obtain the search reports and documents cited in corresponding applications in other regions and countries. This could substantially relieve both the PTO and applicants from the burdens of reproducing and handling large volumes of foreign patent documents. It presents another excellent opportunity for the United States to exercise leadership in demonstrating techniques for reducing the costs of patenting.
(10) The PTO's proposal to permit an Examiner to refuse to consider an information disclosure statement that complied with the regulations under certain circumstances is not supported. If an information disclosure statement complies with 37 C.F.R. § 1.98 as to content, why should an Examiner have the discretion to not consider it because she or he subjectively views the IDS as "unduly burdensome"? The discretion allowed in this proposal is too subjective, too easy to abuse, and very difficult to correct given the high burden of meeting an "abuse of discretion" standard. While it is recognized that a few unduly burdensome citations may occasionally create a problem for the PTO, we urge the PTO to search for a more acceptable solution and would be pleased to work with the PTO in that search.
(11) The AIPLA strongly opposes the PTO's proposal to provide a no-cause suspension of action. The AIPLA has consistently opposed the practice of deferred examination as being contrary to the public's right to an early determination of patent rights.
The uncertainties created by the presence of published, pending, but unexamined patent applications have the effect of reducing incentives to conduct research and enter new fields. Unlike practice under the Patent Cooperation Treaty where delayed entry into the national stage is coupled with either an international search report or both an international search report and an international preliminary examination report developed by an International Searching Authority or an International Preliminary Examining Authority, the proposed deferred examination system would simply shift the burden to the public and competitors to assess the merits of the invention and to determine whether to risk further investment in that field.
A patent applicant already has an option to defer examination in the United States for a period of 12 months by filing a provisional application under 35 U.S.C. § 111 (b). The PTO should not create additional opportunities for delay that are not in the best interests of the public.
(12) The AIPLA does not support the PTO's proposal to require a handling fee for filing preliminary amendments after a particular time period and for filing supplemental replies . While we agree with the general principle that costs should be home by those requiring special resources, we have doubts whether the difficulties experienced by the PTO justify the costs which this proposal entails.
Papers crossing in the mail, whether a preliminary amendment or supplemental reply, which are not considered by the Examiner in formulating an Office Action, are a problem and may cause some work to be redone. A great deal of the problem, however, lies in the inability of the PTO promptly and effectively to associate and enter papers in application files.
Setting a one-month period for filing preliminary amendments before a fee would be due will only encourage the filing of preliminary amendments before that deadline contrary to the Office policy and practice of requesting applicants not to file papers until obtaining a filing receipt with an application number. Again, this proposal will create situations where applicants are unreasonably required to pay fees solely because of PTO delays in providing an application number. If the PTO's proposal is adopted, additional problems will be created where an amendment is clearly in the file for consideration by the Examiner (and thus not a part of the problem the PTO is trying to address), but is not considered by the Examiner because a fee is not present or was not authorized to be charged in an earlier paper. Finally, the PTO's proposal is complicated with a number of exceptions for certain situations (e.g., preliminary amendments deleting claims, supplemental replies after final or after reaching an agreement with the Examiner could be filed without a fee). While these exceptions may be fair in the context of the overall proposal, they create a needlessly complex and therefore costly system to administer by the PTO and to be followed by the 19,000 registered practitioners and their secretarial and administrative support staffs that must comply with these practices. While the PTO may be trying to align fees commensurate with resource allocation, fine tuning the practice at this level may cause bigger problems than the PTO is trying to solve.
(13) With one qualification, the AIPLA would support the PTO's proposal to change amendment practice by requiring the numbering of paragraphs including headings, charts, graphs,
tables, and equations coupled with a procedure for replacing paragraphs and claims. The qualification is that this change should be adopted only as a harmonized or unified approach to presenting and amending patent applications that is adopted by other significant patent examining offices and the Patent Cooperation Treaty. The PTO should not adopt unique requirements for the format of an application that would create requirements in addition to the international norm. The goal should be uniformity in the context of application presentation, rather, than adopting unique requirements that only add costs for applicants. The general direction of the PTO's proposal to submit replacement text in an application as part of adoption of an electronic filing and processing system for patent applications is also supported.
(14) The AIPLA does not support the current PTO proposal to provide a system of presumptive elections in an application. The primary concern with the system of presumptive elections is that it results in a loss of an opportunity to contest and correct improper restriction requirements before a search or examination is conducted. Actions by an Examiner in an improperly restricted application could result in more work for the PTO and more delay than in the present system. An applicant may not know which invention needs to be examined first at the time of filing the application and may change the priority after the application is filed.
As noted above, the AIPLA urges the PTO to adopt PCT unity-of-invention principles as the only applicable standard for restriction practice. The PTO should also consider a procedure to permit applicants to pay a fee to have multiple related inventions examined in the same application, taking into account that the PTO currently permits rejoinder of nonelected inventions in the same application without a fee. See MPEP 821.04. We acknowledge the PTO's concern about authorization to provide a small-entity discount, but note that not all fees are subject to a small-entity discount (this possible constraint did not prevent other PTO proposals, e.g., the fee suggested for rocket docket design application processing). Small and large entity applicants alike may find this flexibility reduces their overall costs of patenting.
(15) The AIPLA does not support creating a "rocket docket" for design patent applications based solely on the payment of a fee. Procedures already exist for making an application special under 37 C.F.R. § 1.102 and MPEP 708.02 under a variety of circumstances, including conducting a pre-examination search and providing the results to the PTO.
The AIPLA opposes a system that would permit an applicant to simply buy a place in line for examination. Such a system would favor those more able to pay the significant fee. The proposed system would also have a tendency to delay action of other applications as the prosperous applicants rush to the front of the examination que.
If the current system of making applications special is not meeting the needs of PTO customers of that service, the PTO should investigate how the current system and monitoring of applications made special can be improved.
(16) The AIPLA strongly opposes the proposal to require a reissue applicant to identify all occurrences of broadening of the claimed invention in a reissue application. This proposal is a significant step backwards from the recent changes, which simplified reissue practice by not requiring every error to be identified in the reissue oath or declaration. The changes adopted effective December 1, 1997, properly relieved applicants and the PTO of unnecessary burdens in processing a reissue application and substantially avoided the risk to patent owners of having claims in the reissue patent held invalid for failure to identify 'in the reissue declaration all the errors in terms of specific and significant amendments to the claims. Nupla Corp. v. LYL Manufacturing Co., 114 F.3d 191, 42 USPQ.2d 1711 (Fed. Cir. 1997). The PTO may inadvertently be creating another basis for alleging inequitable conduct against a reissue patent holder.
The determination of whether a claim is broadened in any particular respect is uniquely an examining function that can and should be performed by competent Patent Examiners. If the PTO has information to suggest that Examiners are not making proper determinations relative to the breadth of claims in a reissue application, it should consider giving additional and. specialized training to address the problem.
(17) The AIPLA supports the PTO's proposal to change multiple reissue application practice by eliminating the requirement in 37 C.F.R. § 1.177 for simultaneous issuance. The proposed requirement that each of multiple reissue applications contains a specific cross reference to other reissue applications appears to be unnecessary in view of the fact that all reissue applications are available to the public, and in view of information available to the public on any application claiming the benefit of an earlier application that is available to the public. See M.P.E.P. § 102.
(18) The AIPLA does not support the PTO's proposal to create alternative review procedures for applications under appeal. The proposed procedures amount to little more than an advisory appeal conference for a fee. While the Office should have considerable flexibility in providing quality control of applications forwarded to the Board for decision, the creation of an advisory opinion for a fee that the Examiner in charge of the application is free to ignore does not appear to be proper or productive.
The quality control of applications/issues forwarded to the Board for review should not be a cost incurred by an individual appellant. The AIPLA endorses the concept of an effective and efficient appeal conference procedure to screen out unnecessary appeals. We encourage the PTO to endorse the procedure used in Group 1800 to consistently screen out a reported 30-35% of appeals going forward on the record established by the Examiner up to the time of the appeal conference.
If alternative review procedures are adopted, the reviewers should be selected from those individuals having demonstrated technical and legal knowledge and ability at a level above the minimum acceptable for the grant of full signatory authority. If alternative review procedures are adopted, minimum practices and guidelines should be established for these procedures, while permitting technology centers to go beyond the minimum criteria.
(19) The AIPLA supports the proposed elimination of preauthorization of payment of the issue fee.
(20) While the AEPLA has concerns similar to those expressed by the PTO about the value of the Document Disclosure Program, before eliminating the Program, the PTO should engage in an educational program to explain the questionable value of the program and alternative procedures available to the public. The educational program should focus on those individuals who use the Document Disclosure Program and could include a survey of those individuals to determine the perceived benefit of the Program. The AIPLA is ready to work with the PTO in this education effort.
(21) The AIPLA takes no position on the proposal to create a fee funded review service for applicant-created forms. Those members of the public who choose to use their own forms may benefit by having those forms reviewed by a knowledgeable member of the PTO staff, yet we question the implications for those members who do not use the service.
We appreciate the opportunity to provide comments on the specific topics under consideration by the PTO. We look forward to working with the PTO to achieve its patent business goals in ways that will not unnecessarily burden applicants or their representatives. We are anxious to work with the PTO to develop workable solutions to the problems it has identified.
Margaret A. Boulware