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Comments on Proposed Rulemaking

 Published on October 5, 1998 (63 F.R. 192) 



Submitted by GREENBLUM & BERNSTEIN. P.L.C., Reston, Virginia



The following comments are directed to proposed changes in 37 C.F.R. Part 1 (no comments are directed to Parts 3, 5 or 7).



For each topic that is addressed, the specific section of the rule is first identified, followed by a statement of the proposed change(s) to the rule, followed by the Firm's position regarding the Patent Office's proposed change, followed by comments explaining the reasoning behind the Firm's position.



Comments are provided on Topics 3, 4, 7, 9, 10, 12, 14 and 18.





Topic #3:



 37 C.F.R. 1.52 and 1.53 



 Proposed Rule Changes 



The Patent Office is proposing to amend 37 C.F.R. §1.52 to require that the executed oath or declaration be submitted within a one month (plus any applicable extension that is obtained) time period set forth in the Notice of Allowability. However, if the executed oath or declaration has not been filed within one month of the filing of the application (plus any applicable extensions), the practitioner must supply the Patent Office with the following information: (1) the name(s), residence(s), and citizenship(s) of the person(s) believed to be the inventor(s); (2) all foreign priority claims; and (3) a statement submitted by a registered practitioner that (a) an inventorship inquiry has been made, (b) a copy of the application, as filed, has been sent to each person(s) believed to be the inventor(s), (c) the practitioner believes that the inventorship of the invention is as indicated by the practitioner, and (d) each person believed to be the inventor(s) has been given notice of their obligation under 37 C.F.R. §1.63(b).



The Patent Office is also considering amending 37 C.F.R. §1.52 and §1.53 to require that the basic filing fee and an English language translation (if the application was filed in a language other than English) be submitted within one month from the filing date of the application, if an extension of time fee is to be avoided.



 Position 



The proposed rule change to §1.53 should provide a  two month time period (from the filing of the application) in which to submit an executed oath or declaration before it is necessary to request and pay for an extension of time, or provide the Patent Office with the information required in items (1) to (4) set forth above.



The proposed rule changes to §1.52 and §1.53 should provide a  two month time period (from the filing of the application) in which to submit the basic filing fee and English language translation (if applicable) before it is necessary to request and pay for an extension of time.



 Comments 



The one month time period proposed by the Patent Office for 37 C.F.R. §1.52 and §1.53 is believed to be too short a period of time for applicants, especially foreign inventors, to avoid having to pay for an extension of time. Many applications based upon a foreign priority document are filed in the U.S. Patent and Trademark Office in unexecuted form, because the decision to file in the U.S. is made at the last minute. Alternatively, the inventors of the application may be located in several areas and could not be contacted (to execute the declaration) prior to the filing in the U.S.



Further, many applicants do not work directly with their U.S. counsel. Instead, the foreign applicant (e.g., a Japanese inventor) uses a foreign associate (e.g., a Japanese patent firm) to interact with the U.S. counsel. Moreover, U.S. applicants may also work directly with corporate counsel. As a result, due to additional parties involved, the period of time required for any communication to be exchanged between the U.S. counsel and the inventor is increased.



Still further, most applications filed by foreigners are assigned to a foreign corporation, which entity is actually responsible for the manner in which the U.S. application is prosecuted. The assignor must forward the declaration to each inventor for execution. However, the inventors may no longer be associated with the corporation when the U.S. application is filed, or (where there are plural inventors) they may be located in plural locations (either plants, cities or even countries).



Accordingly, it is recommended that if the rules are revised, they be revised to set forth a two month time period in which to submit the executed declaration, English translation (if applicable) and filing fee, before an extension of time fee is imposed.

Topic #4



 37 C.F.R. 1.75 



 Proposed Rule Change 



The proposed change to 37 C.F.R. 1.75 is to limit the number of total claims that will be examined (at one time) in an application to forty, and to limit the number of independent claims that will be examined (at one time) in an application to six.



 Position and Comments 



This change is acceptable but only if the rules are also revised to provide the following:



1. That an applicant be permitted to file, along with the original application, one or more additional applications to accommodate an excess of claims, with each additional application being allowed to include up to forty total and six independent claims.



2. That a suitable form, or other means, be provided to allow an applicant to identify applications which are related in this manner.



3. That the USPTO be required to have all of the related applications searched and examined (a) by the same Examiner, and (b) at the same time.



Requirement (a) is necessary to avoid inconsistent results in prosecution.



Requirement (b) is necessary so that there will not be a delay in prosecution which shortens the patent term - i.e., because of the "twenty years from earliest U.S. filing date" provision of 35 U.S.C. § 154(a)(2).





4. That more than six independent claims be allowed where the excess results from an action by the Examiner. An applicable situation would be where there are dependent claims to which the Examiner is only objecting, and the applicant accordingly makes these claims allowable by putting them in independent form. The applicant should be allowed to retain, in the application, all of the claims made independent for this reason, even those in excess of six. A particularly convincing reason for allowing this exception is that it requires no additional work, such as further searching or examination, from the Examiner.

 Topic #7 



 37 C.F.R. 1.85 



 Proposed Rule Changes 





The U.S. Patent and Trademark Office proposal being considered would require corrected or formal drawings to be submitted within one month of the mailing of the Notice of Allowability, with extensions of time under 37 C.F.R. § 1.136 being permitted. In the alternative, the U.S. Patent and Trademark Office is considering requiring formal drawings to be submitted in response to any Office Action indicating allowable subject matter. In addition, if any drawing correction has been required, the U.S. Patent and Trademark Office proposes to require that the corrected drawings be submitted in response to the next Office Action indicating allowable subject matter.



 Position and Comments 



The proposed change (requiring drawings to be submitted within one month) is believed to be too restrictive, especially for those cases in which significant changes must be made to the drawings. A one month window within which to correct the drawings is not adequate in view of the fact that office to law firm mailing time, docketing time in the law firm, as well as shipping to and from the drafting company must be considered. In other words, back and forth forwarding of communications between multiple parties are required to obtain formal and/or corrected drawings. In addition, a significant amount of time must be allowed for the drafting changes actually to be made. Accordingly, it is believed that the proposed change is unduly restrictive and would merely result in increased costs to Applicants as well as increased monitoring and tracking burdens on drafting companies as well as on law firms.

To address the Office's need for decreased processing time, the Office should merely require drawings to be submitted concurrently with the payment of the Issue Fee and not allow for any extensions of time. This simple change would overcome many of the delays and increased processing costs noted by the discussion of this matter in the proposed Rules. Coordinating payment of the Issue Fee with the submission of formal drawings simplifies tracking and monitoring for the U.S. Patent and Trademark Office as well as for law firms and Applicants. Such a change will also not result in the imposition of increased storage functions on the U.S. Patent and Trademark Office since cases are already stored for three months awaiting payment of the Issue Fee.

If concurrent submission of drawings with the Issue Fee is not acceptable, the Office should implement a two month period for submission of formal drawings after the mailing date of the Notice of Allowability, to allow adequate time for communication between the various parties as set forth above.

The U.S. Patent and Trademark Office's alternative proposal of requiring formal drawings or drawing corrections in response to any Office Action indicating allowable subject matter is believed to be wasteful of resources and thus should not be adopted. Many times during the prosecution of an application, an Examiner might indicate allowable subject matter of such limited scope that it is not worthwhile for an Applicant to accept such claims. In such cases, even though Applicant does not wish to accept the allowed subject matter, under the alternative proposal, an Applicant would be required to incur the cost of formal drawings. This is believed to be burdensome, wasteful and inappropriate. This alternative proposal should not be adopted.

Accordingly, it is believed that the U.S. Patent and Trademark Office's goals and objectives can adequately be met by either requiring drawings to be filed together with the Issue Fee with no extensions allowed or requiring drawings to be submitted within two months after the mailing of the Notice of Allowability with extensions of time being permitted.

 Topic # 9 



 37 C.F.R. 1.98 



 Proposed Rule Changes 



The PTO is considering the establishment of new requirements and/or limits on information submitted as part of an Information Disclosure Statement (IDS)



 Position and Comments 



The proposal to limit the submission of information to the PTO is apparently based on the fact that the PTO is of the opinion that applicants are submitting citation "dumps" wherein applicants are not taking the time to review the materials. In contrast to this apparent opinion by the PTO, the submission of information in most, if not all applications, is based upon long standing case law that the examiner is to be the arbiter of materiality . Thus, during examination by the examiner, in combination with the information located by the examiner, the information supplied by the applicant should be reviewed for its pertinence to the claimed invention.



It is noted that examiners often interpret claims more broadly than practitioners. Therefore, examiners often consider information to be relevant when that same information would not be considered relevant by applicant. For example, examiners are more prone to disregard the preamble when reviewing apparatus and composition claims. Thus, a document that may be considered relevant by the examiner may not be considered relevant information by the applicant. Imagine an applicant having to point out such relevance, such as in a "unique description", when the relevance is not readily apparent. Moreover, in many instances the relevance of information may not be readily apparent until other information is at hand. Thus, if submission of the information was not made, information that was initially considered not to be material may be inadvertently not submitted.



Expanding upon the above, the PTO is reminded that the necessity for submitting information to the PTO finds its roots in the ex parte nature of patent prosecution. In view of the one-sided nature of evidence being submitted to the examiner, the courts have consistently held that applicants cannot know of pertinent art, and not submit this art to the examiner for consideration. The proposal improperly expects that the applicant can consistently perform a reduction in the submission of materials without the chance being present that relevant information may accidentally be withheld. Of course, this is an unacceptable risk to the patentee, especially when in a large number of patent litigations questions of compliance with the duty of disclosure are raised. Still further, this may be unacceptable to the public, because patents may issue without claims being revised to be in conformance with the prior art and/or claims of unacceptable breadth may issue.



Personal Statement

There should not be a requirement for a personal statement that a determination has been made as to whether or not each citation is relevant to the claimed invention, especially because it is not clear as to what is intended by "relevant to the claimed invention". Relevance to the claimed invention could be with respect to background information, information that may effect enablement, information that may reflect long felt need in the art, information that may reflect failure by others, information that may reflect a crowded art, etc. In other words, information may be submitted even though its relevance is not immediately clear. However, once the information is not made of record, it will not be possible to make it of record without taking undesirable action, such as refiling the application. Moreover, once information is not submitted, the information may become relevant to the claims during prosecution, such as due to claim amendment, whereby the information may become relevant to the claims.



Thus, the submitter's signature on the IDS is the statement that the IDS has been reviewed and that the information being submitted is consistent with the signer's understanding that the information is appropriate for submission.



Submission of Cited Applications

There should not be a requirement to submit copies of applications. Applications should be readily available to examiners for determining issues of double patenting as the application claims are amended, particularly in view of the onset of electronic filing. Moreover, it is beneficial for the examiners to review the pending applications to ascertain whether similar issues of patentability are present, and that uniform actions are applied.



Thus, it would appear that the examiner's review of the file histories of the cited applications would be beneficial. To save examiner's time in obtaining these files, there should be file obtainers in the groups whose function it is to assist the examiner with the obtaining of files. These same obtainers could obtain copies of other documents for the examiners.



Unique Descriptions

There should not be a requirement for unique descriptions. Such a requirement will lead to unnecessary arguments as to whether information should be considered by the examiner. For example, an examiner may assert that a unique description is not sufficiently different, when the applicant deems that it is different. Thus, one document may present the subject matter in a slightly different manner than another document; however, its unique materiality may not be apparent until combined with another document. Moreover, during litigation questions as to such unique descriptions may be raised.



Moreover, because the examiner is to be the arbiter of materiality, the examiner is to review all information to ascertain whether there is any materiality other than the unique description supplied by the applicant. Therefore, while a unique description may be of some assistance, the unique description would apparently not save the examiner a significant amount of time, and would be extremely costly to patent applicants.





Topic #10



 37 C.F.R. 1.98 



 Proposed Rule Change 



The PTO is evaluating the refusal to consider an IDS under certain circumstances.



 Position 



Refusing to arbitrarily consider an IDS when all requirements are met is a proposal that should not be considered in any manner. No comment is necessary to point out the inoperativeness of such a proposal. The goal of the U.S. patent system is to consider all relevant material, not to ignore it, before granting a patent.

Topic #12



 37 C.F.R. 1.111 



 Proposed Rule Change 



The PTO is considering imposing a handling fee for certain preliminary amendments and for all supplemental replies.



 Position 



Handling fees for preliminary amendments should not be assessed until three months after either the applicable twenty or thirty month period in a 35 U.S.C. § 371(b) application or the filing date of an application filed under 37 C.F.R. 1.53(b); and should not be assessed until one month after the filing date of a continued prosecution application filed under 37 C.F.R. 1.53(d).



 Comments 



The comments with respect to this topic indicate that the PTO is considering a one month period for filing preliminary amendments after the twenty or thirty month period for PCT applications and after the filing date of a 37 C.F.R. 1.53(b) application before assessing handling fees, and assessing handling fees for preliminary amendments submitted after the filing date of a 37 C.F.R. 1.53(d) application.



The dates proposed by the PTO place a significant burden on the applicants, and would appear to place an undue (and greater) burden on foreign applicants. That is, unlike U.S. (or English speaking) foreign applicants, practices dealing with non-English speaking applicants will be placed at a significant disadvantage to submit preliminary amendments within a one-month period. For example, when dealing with non-English speaking applicants, significant time may be required to: translate necessary information forwarded from the applicant; correspond with the applicant in order to clarify necessary information; enable the applicant adequate time to review the proposed preliminary amendment prior to filing (which will likely include a translation on the applicant's behalf); and to incorporate any further changes suggested by the applicant.



It believed that providing a three month period for filing a preliminary amendment after the twenty or thirty month period for PCT applications and after the filing date of a 37 C.F.R. 1.53(b) application before assessing handling fees would significant lessen the burden on foreign applicants, thus, giving all applicants a substantially equal burden before assessing handling fees.



While there is a lesser burden on all applicants (U.S. and foreign) in preparing and filing preliminary amendments in a CPA, for the reasons stated above, a greater burden still exists for the non-English speaking applicants. Thus, it is recommended that a period of one month be provided after the filing of a CPA before assessing handling fees.

 Topic #14 



 Section 1.141 



 Proposed Rule Changes 



The PTO is considering a change to restriction practice to eliminate the need for a written restriction requirement and express election in most restriction situations.



 Position and Summary 



The present policy of non-presumptive elections should be maintained and the proposed policy of presumptive elections should not be adopted.

As discussed below, a policy of presumptive elections would present several problems for Applicants. Further, considering the number of improper restriction requirements which are made, a policy of presumptive elections would increase examination and pendency time because of mis-directed searching and would increase the number of non-final second Office Actions, and would likely increase the number of improper restrictions being maintained. In contrast, the present policy of non-presumptive elections promotes well directed searches and examination of claims for which Applicants are entitled an examination.



 Comments 



The use of defaults in choosing which claims to examine would create problems. The present policy of non-presumptive elections ensures that Applicants can choose which invention is examined at the time of restriction/election requirements (hereinafter "restriction requirements"). In this regard, the relative importance of the separate inventions may change between the time that the application is filed and when a restriction requirement is made.

Regarding the proposed defaults of examining subcombination claims before combination claims and examining product claims before process claims, these defaults may cause Applicants to omit claims to ensure that specific claims are examined. Applicants cannot predict whether a given Examiner will require a restriction.

Further, it is likely that the use of presumptions will lead to more restrictions being made. As a result, more time would be spent arguing the merits of restriction requirements than determining the patentability of the claimed subject matter.

Additionally, if a policy of presumptive elections were adopted, the resources of the USPTO and Examiners would be wasted and the pendency time of applications would increase because of the need to re-search cases involving improper restrictions and the need to issue a significant number of non-final second Office Actions.

Still another potential problem is that presumptive elections may reduce the possibility that Applicants obtain an examination on the merits on claims which should be examined. In this regard, if an Examiner improperly restricts claims, conducts a search based on the improper restriction, and issues an action on the merits based on the improper restriction, the Examiner will have invested a significant amount of time based on the improper restriction. Once the invalidity of the restriction requirement is brought to the attention of Examiner, the Examiner will either have to re-search the case and issue a non-Final second action on the merits or the Examiner will maintain the restriction despite the invalidity of the restriction. Because of the time constraints on Examiners, Examiners may be tempted to maintain improper restriction requirements.

In view of the above, the present policy of non-presumptive elections reduces the impact of improper restriction requirements and promotes efficient examination. In particular, the present policy of non-presumptive elections exposes simple mistakes which could otherwise be costly. Additionally, the present policy of non-presumptive elections provides Applicants the opportunity to argue which claims deserve an examination on the merits.

Topic #18



 37 C.F.R. 1.192 



 Proposed Rule Changes 



The PTO is considering creating alternative review procedures for applications under appeal



 Position (1) 

The proposal by the U.S. Patent and Trademark Office to amend § 192 to permit a limited pre-brief review and/or a post-brief review should be implemented, and the Rule should be changed to permit both a pre-brief review and a post-brief review.



 Comments 

The proposal to permit Applicants to seek both a pre-brief review and a post-brief review is regarded as affording the Applicant an alternative avenue for more quickly resolving issues, prior to filing an appeal, where an Applicant considers that the Examiner has failed to establish a prima facie case in making the rejections. In view of the long delay in deciding appeals now before the U.S. Patent and Trademark Office, which can extend longer than four years, this proposal would provide the Applicant an additional alternative in those cases where it appears to the Applicant that the Examiner's rejection is clearly erroneous.

With respect to the limited pre-brief review, it is noted that § 192 must also be amended to provide a stay for the period for filing an Appeal Brief until completion of the limited pre-brief review.

Moreover, for both the limited pre-brief review and the post-brief review, it is essential that the U.S. Patent and Trademark Office also establish a time period within which the reviews must be completed by the U.S. Patent and Trademark Office, for example within one month ( or two months) from the filing of the Request for Review by the Applicant. Without such a time frame for the U.S. Patent and Trademark Office, such a review may serve to inordinately extend the time for prosecution of the application and appeal.



 Position (2) 

The pool of U.S. Patent and Trademark Office employees from which the reviewer for both of the pre-brief review and the post-brief review is taken should include (1) Group Special Program Examiners, and/or (2) Supervisory Patent Examiners.



 Comments 

Selection of the reviewer as the Group Special Program Examiner would provide uniformity in the review process, and would also be performed by a person who is sufficiently removed from the day to day examination that undue influence by the Examiner who has examined the application would not normally be an issue.

Selection of the reviewing official from the SPEs in the group would also provide a level of review carrying more authority than that of a fellow patent Examiner.

It is important that the pre-brief review and post-brief review not take on the qualities of the former "pre appeal conferences", which often were merely a rubber stamping of the primary Examiner's final rejection of the claims. Selection of the reviewer from either the Special Program Examiner or the SPE would at least result in an opinion which, if different than that held by the Patent Examiner examining the application, might tend to be more respected by the Patent Examiner of the application and might merit greater consideration by the Patent Examiner in deciding whether to reverse his or her opinion with respect to maintaining his or her position.



 Position (3) 

The U.S. Patent and Trademark Office should establish a uniform procedure for both reviews to be used throughout the examining corps.



 Comments 

A uniform procedure for review throughout the U.S. Patent and Trademark Office and the examining corps is necessary to ensure that an Applicant will receive generally the same consideration in each application regardless of the group or technology center in which the application is examined. Permitting each group or technology center to be free to establish its own procedures for such reviews would inherently result in a system that could operate at the whim of the Group Director with the result that the effectiveness of the pre-brief review and the post-brief review program would depend on the degree to which the Group Director supports the concept. Providing a uniform procedure for both reviews to be used throughout the U.S. Patent and Trademark Office would ensure that in every application the Applicant would know in advance the procedure to be used for the review, the type of U.S. Patent and Trademark Office employee who would be conducting the review, and the Applicants could assess for themselves the likelihood of success of such a review.

For the pre-brief review which requires review by one reviewer, that reviewer should be the Group Special Program Examiner or the Supervisory Patent Examiner, and where the review is a post-brief review which requires at least two reviewers, those at least two reviewers should be the Group Special Program Examiner and the Supervisory Patent Examiner from the group.

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