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Dec. 4. 1998 2 34PM No. UU34

IPLAC Comments

The following are comments submitted on behalf of the Intellectual Property Law Association of Chicago (IPLAC) in response to the twenty-one (21) topics for public comment published In the Official Gazette on October 27, 1998 (1215 OG 87-117).

Topics 1, 3, 5, 6, 8, 13, 15, 17 and 19-21 are generally considered to be positive changes.

Of these, only Topic 3 warrants comment based on the concerns posed by the PTO in the O.G. Notice. Topic 3 proposes delaying the requirement for an executed oath/declaration until after the Notice of Allowance, while moving up the period for payment of the filing fee and submitting an English translation to reduce preexamination cycle time. Overall, this proposal seems to be favorable in light of its goal of reduced cycle time in the PTO. There may be problems created in terms of determining who the 'attorney is deemed to represent absent an executed oath and/or assignment being filed; however, this should only encourage these to be submitted at an early stage during pendency rather than waiting until after the Notice of Allowance is mailed. Further, for PCT originating applications, prior art effect under § 1 02(e) is not gained until the requirements of a U. S. national stage application have been met including the filing of an executed oath which, as is currently, the case, provides further incentive for early filing in this situation.

IPLAC takes a more neutral stance with respect to Topics 11, 12, 14 and 18.

There is some concern, as the PTO noted, for abuse of the change proposed in Topic 11 which would allow for no cause suspension of action, for a maximum period of three (3) years. To ameliorate the potential "Chilling" effect" a publication with broad claims may have on a competitor, the applicant should be required to file an IDS that will be published with the application so that competitors can more readily determine the scope of claims that may be allowable with respect to at least the art known by the applicant. Further, the PTO should limit use of the proposed suspension of action in related applications so that the time periods during which action in an application is

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suspended Is cumulative to suspension periods In related applications and cannot exceed the set three (3) year period

As for Topic 12 which proposes a handling fee (not set forth) for preliminary and supplemental amendments, IPLAC has strong objections to additional fees as a matter of course with respect to these types of submissions, and feels a more restrained approach would better address the problem. Where these amendments are to matters of form, such as with many Preliminary Amendments filed in foreign originating applications, there should be no reason to charge a fee, particularly if the Examiner has not yet conducted a search. More generally, applicants should be allowed to seek permission to file these, and the Examiner should be instructed to be receptive to these requests when the search has not yet been initiated. This should present little hardship except for the inconvenience of handling these submissions which, in and of itself, does not justify an increase in fees. An alternative approach, at least with regard to Preliminary Amendments, is to treat them like an IDS so applicants can file these without a fee for three months after an application has been filed, and the PTO can set up a hierarchy of fees and/or justifications for later filing based on the completion of certain substantive occurrences at the Patent Office, e.g. search, mailing of Office Action, etc.

IPLAC is neutral as to Topic 14 which provides for a presumptive election of the first presented independent and distinct invention claimed in the application. This proposal is not favored because, in many cases, it is very difficult to predict what an Examiner will deem as independent and distinct inventions, particularly in genus-species and combination-subcombination restriction requirements. It is noted that in more straightforward cases, the proposed change merely presents an issue of timing, i.e., the notification of a restriction to applicants will be after the search as opposed to in a written restriction requirement prior to the search. Thus, applicants will still have an opportunity to traverse the restriction requirement albeit after the initial search has already been made. One alternative that still keeps the goal of processing efficiency intact is to have the Examiner initiate the restriction requirement by telephone, confirmed in writing, with thirty (30) days from the call for applicant

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to respond. If there were no responses the presumptive election would then stand.

On Its face, the alternate review procedures for applications under appeal appears to be beneficial In that it offers applicants greater options for removing weak rejections. [PLAC, however, has two concerns regarding its implementation: (1) the pool of reviewers must truly undertake an Independent review of the rejection(s) at issue; and (2) there should be no greater deference accorded claims that have their rejections sustained under these procedures if their patentability continues to be pressed at the Board of Patent Appeals and Interferences or at the Court of Appeals for the Federal Circuit. The danger that must be avoided is that the review procedure becomes merely a "rubber stamp" of the Examiner's rejections(s); and, because the claim has undergone an additional layer of review, a subsequent reviewing tribunal would consider this as a factor that would make them less inclined to disturb the finding of unpatentable subject matter below. The PTO offers five options of different classifications of PTO employees to provide the pool from which the reviewers are to be taken. IPLAC favors the fifth option of using Quality Review Examiners as the reviewers as being the group of PTO employees that are most likely to give the rejection an independent review.

IPLAC expresses serious reservations about Topics 2, 4, 7, 9, 1 0 and 1 6.

Topic 2 proposes separate surcharges for each missing part submitted after filing. Due to the change proposed in Topic 1, which simplifies procedures for establishing small entity status, there should be a reduced number of instances where applicants and practitioners deem it advantageous to delay payment of the filing fee. Accordingly, in most cases, there would no additional surcharge. However, given the PTO's profitability at the current level of user fees, IPLAC considers the current surcharge more than sufficient to encourage filing applications without missing parts, and generally opposes fee increases in this and other areas. Further, it seems that this proposal is at odds with the PTO's stated goal of reducing the processing load on PTO personnel as separate fees for each missing part creates additional handling and processing requirements not previously present.

 

 

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Topic 4 proposes setting an absolute limit of forty (4()) claims and six (6) independent to be examined at one time in an application. In the first instance, the PTO needs to clarify how they will measure these numbers, particularly as prosecution continues and, for example, dependent claims with allowable subject matter are rewritten into independent form. The rationale for the proposed limitation an claim numbers is that there are a relatively small percentage of applications which this rule would affect, but that those applications present an inordinate burden on PTO resources. IPLAC strongly disagrees with this proposed change as it seems to try to address the problem with a "one size fits all" solution that may not make sense for every invention. While the PTO justifies its position as furthering the goal of 35 U.S. C. § 1 1 2, 12 that an application conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as their invention by citation to case law, IPLAC questions whether an absolute limitation on claim numbers would stand up to judicial scrutiny.

The PTO notes the advent of word processing as one of the culprits insofar as it reduces the time and effort to create large numbers of claims in an application. Presumably this is because claims can be more easily copied and moved around in a claim program which can result in having two different independent claims with the claims dependent from the first independent claim being copied and only having to be slightly revised in terms of their numbering so as to depend from the second independent claim. This burden is largely illusory as these copied dependent claims should not require the same depth of examination in their second go-around as claims dependent from a different independent claim. In any event, IPLAC would rather that the PTO attempt to discourage filings with large number claims by an increase in fees for excessive numbers of claims so as to cause a more circumspect analysis as to whether the large number of claims is justified before the application is filed. IPLAC does note that the PTO already charges extra for claims over twenty (20), and independent claims over three (3).

Reducing the time period for submitting formal drawings to one month after mailing of the 'Notice of Allowability" as proposed in Topic 7 is generally disfavored as too short of a time period to have these drawings

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prepared and filed, and would generate late fees as a matter of course in a majority of cases.

Topic 7 alternatively suggests Imposing as a requirement that corrected or formal drawings be submitted in the reply to an Office Action Indicating allowable subject matter. IPLAC strongly objects to this proposal. There should be no call for applicants to have to expand the often significant sums for preparation of formal drawings simply because, for example, the Examiner has indicated that the narrowest claim presented in the application contains allowable subject matter. This would create tremendous inefficiencies in the private sector without a commensurate improvement in PTO efficiency, particularly where the application is ultimately abandoned. Applicants should not be forced to prematurely invest in formal drawings before knowing exactly what claims will ultimately be allowed.

IPLAC is uniformly and emphatically opposed to the new IDS requirements proposed in Topic S. The problem of large numbers of citations in an IDS should be addressed in a manner that does not entirely shift the burden the PTO faces to applicants/practitioners. Moreover, the proposal appears to be overkill in its approach by requiring a written comparison of each piece of art over ton (1 0) to the claims, as it is noted that Examiners do not face this burden. More particularly, it is deemed excessively burdensome to have to compare each of the citations over ten (1 0) to each of the independent claims, or specific dependent claims', in a way that is unique to each citation'. Thus, for example, in cases where an outside search report cited fourteen i 1 4) references and the applicant was aware of three (3) others themself, the attorney presumably would have to make at least seven comparisons with each of the independent claims, or specific dependent claims. If there were three independent claims, the attorney potentially would need to make twenty-one separate and uniquely meaningful statements with regard to the seven pieces of prior art and each of the three independent claims, or specific dependent claims, each time explaining the claimed feature to which the reference is relevant, and why the applicant believes the citation to -be unique to other references cited as relevant to the claim, or in other words, why it is noncumulative. In addition, the PTO wants to require an additional explanation as to why the claims to

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which the references are being applied define patentable subject matter

thereover. Assuming such a proposal is enacted, it is difficult to envision how

compliance will be effectively monitored and enforced, particularly where practitioners start using boiler late type language in comparing the patents over ten (1 0) to the pertinent claims. It is likely that every Examiner will have different standards for what types of attorney statements satisfy the IDS requirements producing undesirable inconsistencies from one application to the next. In addition, Examiner objections to IDS submissions and applicant responses thereto will more than likely only further delay prosecution which runs counter to the PTO goal of reducing their processing time for applications to twelve (1 2) months.

Further, the burden on practitioners imposed by this rule change may have the opposite effect than intended; in other words, rather than reducing the PTO's burden, it may generate an increase in the filing of applications that include unpatentable or only marginally patentable subject matter which a prefiling search could have uncovered. Under this change particularly with independent inventors, it may not make economic sense to have a novelty search made since if it reveals large numbers of references that need to be cited in an IDS, this will increase the effective cost to them for filing application as the cost in preparing the IDS will now have to be considered in the filing decision. It is envisioned that many will simply fore o the search and instead, file the application and rely exclusively on the Examiner's search.

The change also imposes a requirement that applicants make a statement indicating that they personally reviewed each citation to determine that it is appropriate to cite to the PTO. The IDS submitter must also cite relevant portions of documents if only that portion is relevant and they only reviewed the cited portion. These provisions are acceptable to IPLAC, and should go far in reducing the burden the PTO is, attempting to address with the proposed IDS practice changes. Requiring the statement of personal review from presenting attorneys and citations to relevant portions of voluminous references that were reviewed should result in a reduction of the submission of IDS's that cite excessive numbers of references or voluminous references that

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do not include citation to the relevant portion(s) thereof as If It were later determined that the references were not reviewed and/or had little or no relevance to the claimed invention, the attorneys could be exposing themselves -to charges of inequitable conduct.

In sum, the drastic changes and burdens imposed by the proposed changes to IDS practice go too far in attempting to address the problem with excessive and/or voluminous citations that currently occurs in a relatively small percentage of applications. Requiring attorneys to speculate how the reference will be applied against a claim, and then to respond to the speculation seems to be an exercise in futility fraught with potential pitfalls when these statements are used after issuance to interpret the patent claims, particularly in the event of litigation.

Topic 1 0 allows the Examiner to refuse to consider an IDS in unduly burdensome circumstances, such as where a compendium is cited as one of the excepted ten citations under the change proposed in Topic 9. A more problem specific solution tha t would be less objectionable to IPLAC is to require citation to what applicant deems as the relevant portion in a voluminous submission rather than a refusal to consider the IDS in toto.

The requirement of identification of broadening in a reissue application in Topic 16 does not seem to be related in any significant way to the PTO's efficiency goal as the Examiners are still required to go through the claims, and make the broadening determination(s) independently for themselves. In addition, there is also the issue of the ever changing law of claim interpretation at the Federal Circuit, especially with respect to means-plus-function claiming, that would render identification of claim broadening a rather hazardous undertaking involving too much guesswork at what the Examiner, and ultimately the Court, considers to be an amendment that broadens the claim.

 

 

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