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POPA Comments Regarding the Planned Rule Changes

POPA COMMENTS REGARDING THE PLANNED RULE CHANGES

PUBLISHED IN THE FEDERAL REGISTER ON OCTOBER 5, 1998





In response to the invitation of the Patent and Trademark Office for public comments regarding the changes to implement the Patent Business Goals published in Federal Register on October 5, 1998, the Patent Office Professional Association (POPA) sets forth the following comments. The numbers set forth below follow the numbering scheme used in the Federal Register Notice.



3. Permitting delayed submission of an oath or declaration, and changing the time period for submission of the basic filing fee and English translation (37 C.F.R. 1.52 and 1.53).



Permitting applicants to submit the required oath or declaration after the Notice of Allowance sends us back to the days of piecemeal prosecution, with all its potential for delay and increased cycle time. To the extent that the oath or declaration is viewed as a formality that may never be read by anyone, the agency should seek a legislative change to eliminate the requirement.



The signing of the oath or declaration serves the salutary purpose of providing actual notice to applicants of their duty to disclose all known material information regarding patentability. If an applicant is permitted to delay the signing of the oath or declaration, this purpose will be undercut. To the extent that the applicants discover their duty after the end of prosecution, and then submit additional prior art, there may be a need to restart the examination process.



In addition, signing an oath sensitizes an inventor to the fact that he or she, not the attorney alone, is responsible for the content of the application. That purpose can best be served when the oath is presented at the time the application is filed.



Delay in signing of an oath may also cause applicants, especially in a large entity situation, to delay the precise identification of true inventor(s), resulting in a potential for reopening prosecution. Delay may also cause more serious problems due to inventors who become unwilling or unavailable to sign the oath. Such situations may arise when inventors change jobs or residence.

4. Limiting the number of claims in an application (37 C.F.R. 1.75).



We believe that the proposal to limit the numbers of claims in an application would improve the quality of examination by enabling examiners to more equitably divide their time among all the cases in their docket. The establishment of a 40 claim limit seems to be generous in comparison to the requirements of many foreign countries.

Numerous examiners have emphasized the significant value of this proposal. There is a general acceptance that a large number of claims causes confusion and thereby consumes a disproportionately large amount of time. The examiners are convinced that this is the most significant rule change in the entire package.



Most importantly, this rule change still protects applicants' right to file as many claims as they desire by filing multiple applications. In a sense, this rule can be viewed merely as a mechanism for charging a more equitable fee for the amount of work entailed by a large number of claims.

The proposals do not explicitly take into account the effect of multiple dependent claims. The PTO should specify that the current practice used to determine, for fee purposes, the number of claims in the applications that have multiply dependent claims is the practice to be applied to the calculation of the maximum number of claims permitted.

5. Harmonizing standards for patent drawings (37 C.F.R. 1.84).

The main impact would be on the subject of surface shading in the design patent applications. The Office should set new guidelines to define the examiners' objection to the lack of surface shading. It appears that the surface shading would only need to be added if there is a question of clarity under 35 USC 112, first paragraph, or indefiniteness under 35 USC 112, second paragraph.

The PCT drawing rules are problematic for plant patent applications in that:

PCT Article 7 (7.2) states that the time limit shall in no case be shorter than two months. This proposed change introduces a new time period which does not contribute to the compact prosecution or cycle time.

PCT Rule 11 - limit the drawing sheet size to A4 is burdensome to the applicant and conflict with the applicant-friendly business goal of the Office. In 1996, the drawing sheet rules were changed to restrict sheets to A4 or 8 ½ X 11 to accommodate the printer with the margin preference. Prior to that time, the drawing sheets 8 ½ X 13 and 8 ½ X 14 were also acceptable with different marginal requirements. To limit applicants' choices serves no purpose in reducing the cycle time.

Rule 11 (37 C.F.R. 1.437) does not allow applicants to submit drawings/photographs after 30 days from receiving notice. In addition, the requirement that all drawing sheets must be numbered is not in the current practice in plant applications since it is unnecessary. The plant examiners should have the discretion to require the numbering of the drawing sheets.



Note that M.P.E.P. 1825, second column, states that "The PCT makes no provision for photographs" and "color photographs are not accepted." This is in direct conflict with 37 C.F.R. 1.165(a) and (b) that require color photographs in plant patent applications.



Since plant patent application cannot be passed to issue without formal drawings being of record, thus, the requirements that applicants can only amend the drawings if a "demand for international preliminary examination is filed" is unnecessary in plant application.



6. Printing patents in color (37 C.F.R. 1.84).



Printing patents in color, especially, plant and design patents, is expected to be of significant benefit to examiners and the public when conducting a search. However, the Office should clarify that the color shown in the patent may not be the actual color of the claimed element due to the difficulty of matching precise hues in economically feasible printing processes. There should be a notice or warning that the actual color is what is shown or described in the application file, not what is printed. For color critical patents, the Office should set forth a requirement that the printed color must be compared against a recognized color standard as is done in the current practice for plant patents.



The PTO should encourage applicants to use color in the drawings to identify individual parts or paths when it would enhance understanding, e.g ., fluid paths in cases having complicated flow paths, or individual parts in a complex machine having a plurality of complicated parts.



7. Reducing time for filing corrected or formal drawings (37 C.F.R. 1.85).



The reduced time for filing corrected or formal drawings appears to the contrary to the needs of many applicants. The period of one month may not provide applicants sufficient time to correct or submit the formal drawings, especially, in design patent applications. The examiners in Group 2900 frequently receive phone calls after the Notice of Allowability from applicants for clarification on drawing objections.

8. Permitting electronic submission of voluminous material (37 C.F.R. 1.96, 1.821).



We support allowing submission of large computer program listings and nucleotide and/or amino acid sequence listings in a machine readable form. However, we are concerned about the access to the sequence listings if the rules go into effect in the present form. The examiners must occasionally directly read the actual sequence. In the absence of a paper copy, will the computer or machine readable forms be available to the examiners other than through a library sequence search? If not, the examiners will be left with thumbing through the specification as the only means to actually view the sequence of interest. Sometimes, that is easy, more often, it is not. POPA suggests that the Office requires a list of locations where in the specification, a particular sequence is found. This could be limited to the first occurrence or all occurrences of the sequence in the specification such as:



"SEQ ID NO. 1, see page 4, line 22."

"SEQ ID NO. 2, see page 8, line 7."



The above listing will save the examiner some time if he/she needed to actually have the sequence in front of them. This page could be placed at the last page of the specification, right before the claims where the current sequence listing is placed. This page would need to be canceled by informal examiner's amendment at time of allowance since the listing would not correspond to the issued patent and since it would be redundant to the actual sequence listing that is printed in the issued patent. But we think that would be a fair trade off to the examiner in exchange for a quicker access to the sequences in the specification.



This would still represent a significant amount of paper for cases having extensive numbers of sequences but far less than an entire sequence listing and would still give the examiner a relatively efficient means of locating sequences in the specification when necessary. This would also eliminate any need for the examiner to have access to the CRF listing which we suspect the Office would not want to give anyway.

POPA does not support the allowance of submission of the Information Disclosure Form (IDS) in a machine readable form since it would take valuable examining time to print out the voluminous cited references.



9. Imposing limits/requirements on information disclosure statement submissions (37 C.F.R. 1.98).



The Office should charge additional fees in proportion to the number of cited references and provide additional time to examiners in proportion to the number of references cited in the information disclosure statement (IDS). Limiting the number of the references cited in the IDS is not the best solution since it would infringe upon applicants' rights to submit the number of references that applicants deem to be material and may affect the validity of the patents in case of litigation.



In addition, the Office should require the applicants to submit a copy of all of the citations cited in the IDS. The rule change discusses the burden on the examiners to locate cited U.S. applications. However, there is an equal or greater burden on the examiners to track down all the parent applications to find the prior art cited in the parent applications. The copies of the cited references in the parent applications are ordinarily missing. Therefore, the Office should require the applicants to submit a copy of each and every citation in the IDS to be considered by the examiners.



10. Refusing information disclosure statement consideration under certain circumstances (37 C.F.R. 1.98).



See comments regarding the information disclosure statement in item 9 above.



11. Providing no cause suspension of action (37 C.F.R. 1.103).



The deferred examination established by proposed rule seems to have a similar impact of so-called "submarine patents" in that no member of the public would know what invention will be actually protected by the issued patents.



Deferred examination will dramatically change the economics of examination. The experience of foreign countries shows that there is a significant drop in the total number of applications examined with a concomitant increase in the complexity of examining a single application. The current fee structure is not geared to handle the impact of this change.



We have a concern that the suspension of action coupled with the requirement of publication of the application will vastly increase the filing of protests with supporting art by competitors or protestors. Consequently, the first Office action would become, in effect, a protest proceeding, i.e ., an inter parte proceeding instead of an ex parte proceeding. The protest situation would require more time to consider the cited art and to examine the applications.



12. Requiring a handling fee for preliminary amendments and supplemental replies (37 C.F.R. 1.111).



Under current practice, applicants may file unlimited preliminary amendments and supplemental replies (papers) without paying additional fees. In some cases, the numerous gratis preliminary amendments and supplemental replies cause confusion and undue burden when PTO clerical staff enters these papers and when the examiners consider them. POPA supports this requirement since it would help to alleviate this problem.



13. Changing amendment practice to replacement by paragraphs/claims (37 C.F.R. 1.121).



POPA supports this proposal if the rule positively requires the applicant to submit a marked-up copy of the changed paragraphs or claims. The positive requirement of the marked-up copy will facilitate the examiners (and/or the Court during litigation) to detect new matters, i.e. , to reduce cycle time.

In addition, the proposal should make clear that the requirement of a replacement paragraph is not applicable to the examiners' amendment in order to encourage the examiners' amendments to expedite the prosecution.



14. Providing presumptive elections (37 C.F.R. 1.141).



It appears that the proposed change will save some time provided that there is no successful traverse of the restriction requirement. If there is a successful traverse, the equivalent of a second "first action" will have to be issued.

To implement the proposed change, more details will have to be determined with respect to restrictions of patentably distinct species and Markush groups. It is not clear how a single species will be identified as the presumptive elected species in application in which both generic and subgeneric claims are presented prior to a claim that sets forth a single species.



15. Creating a "rocket docket" for design applications (37 C.F.R. 1.155).



The proposal recognizes that design examiners ordinarily group search their applications and would require extra time for searching if the application is to be searched individually. We believe that this recognition is correct and will require granting examiners extra time.



16. Requiring identification of broadening in a reissue application (37 C.F.R. 1.173).



POPA supports this change.



18. Creating alternative review procedures for applications under appeal (37 C.F.R. 1.192).



POPA supports the status quo of appeal procedures which include an appeal conference as necessary. The following section on appeal conferences copied from the MPEP 1208 (July 1998) shows that the current appeal conference procedure achieves the same result of reducing the doubtful rejections sent to the Board without additional cost to the applicants :



Appealed cases in which the brief has been filed may be reviewed by conference in the group, in a manner deemed appropriate by the Group Director. For example, those participating in the conference may include (1) a primary examiner, (2) the examiner charged with preparation of the examiner's answer, and (3) another examiner, known as the conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal.



The group director has the discretion as to whether or not appeal conferences are necessary in the examining group and, if so, in which instances they are to be held. If an appeal conference is held, the SPE should be informed thereof.



If a conference is held, the primary examiner responsible for signing the examiner's answer should weigh the arguments of the other examiners. If it is determined that the rejection(s) should be maintained, the examiner will then prepare his or her examiner's answer. During the conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.



The pre/post appeal review would impose undue pressure on the examiners to allow the cases because it does not provide for an on the record explanation what is wrong with any rejection that is eliminated. Multiple internal reviews are the hallmark of a bureaucratic system. Let's keep the appeal procedure simple and direct with full on the record accountability for all decisions that are made.



21. Creating a PTO review service for applicant-created forms.



The review service would release examiners from the burden of checking for defects in applicant-created forms. We support this service.

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