VIA INTERNET (firstname.lastname@example.org)
December 4, 1998
Kinney & Lange, P.A.
The Kinney & Lange Building
312 South Third Street
Minneapolis, MN 55415
Assistant Commissioner for Patents
Washington, D.C. 20231
Re: Comments on the PTO=s Advance Notice of Proposed Rulemaking
Kinney & Lange is an intellectual property law firm of twenty-seven attorneys, five paralegals, and four law clerks, seventeen of whom are registered to practice before the Patent & Trademark Office. The firm specializes in patent, copyright, trademark, and trade secret law. The majority of the firm=s attorneys and law clerks are members of the Minnesota Intellectual Property Law Association (MIPLA). Kinney & Lange represents a wide variety of clients in patent matters before the PTO, including domestic and foreign large and small entities and individuals.
We have studied the notice of proposed rulemaking published by the PTO in the Federal Register on October 5, 1998 and herewith present our comments for consideration. Because the matters raised by the PTO are of such great magnitude, we believe public hearings should be held to encourage a wide segment of the public to participate.
Kinney & Lange has no objection to proposed changes 11 and 19. We favor proposals 1, 5, 6, 8, 17, and 21. We generally agree with the comments submitted under separate cover by MIPLA. Finally, Kinney & Lange offers the following additional comments regarding proposed changes 3, 4, 7, 9, 10, and 18.
3. DELAYED SUBMISSION OF OATH OR DECLARATION; SUBMISSION OF BASE FILING FEE AND ENGLISH TRANSLATION; AND RIGHT TO PROSECUTE THE APPLICATION
A. The PTO proposes to amend Rule 53 to permit the oath or declaration be filed within one month of a Notice of Allowability. However, the practitioner must submit the names, residence addresses and citizenships of each inventor, submit any foreign priority claims, and make and submit a statement that the practitioner has made an inventorship inquiry. These statements must be done within one month of the filing date. A processing fee and surcharge may be required if the inventorship in the declaration or oath actually submitted is different from that indicated at the beginning of the prosecution. However, a declaration or oath changing the inventorship may not be filed after Allowance; instead, the application must be refiled.
In addition, the practitioner must send a copy of the complete application to each inventor and advise each of the duty to submit information to the PTO.
B. The PTO proposes a one month period within which to file the base filing fee and any English translation (if necessary). The PTO will not issue a Notice of Missing Parts, and the practitioner will simply be required to timely submit the documents.
C. The PTO proposes to amend rule 34(b) to include in the definition of Aattorney or agent of record@ the attorney or agent that filed the application. Thus, where the oath or declaration had not been filed, the attorney filing the application shall be presumed to be the attorney of record for purposes of prosecution of the application.
1. The requirement of inventorship inquiry should be deleted. Reason: The act of identifying the inventors, resident addresses and citizenships, constitutes a certification that the identifications are true or believed to be true and that a reasonable inquiry has been made that the information stated is correct. 37 C.F.R. 10.18. It is unnecessary to create the additional requirement that the practitioner has made the inquiry as to inventorship, especially where the inquiry is made by another (e.g., foreign attorney or in-house attorney) or by someone at the direction of the practitioner. In foreign-originated cases where the practitioner is acting as the U.S. associate to a foreign attorney in direct contact with the client, it is not practical that the practitioner make the inventorship inquiry to the client. Applications handled at the direction of an in-house attorney (whether or not a patent practitioner) meet with much the same problem - the inventorship inquiry is often handled by the in-house attorney.
2. The requirement of providing the application to the inventors should also be deleted. The inventors need only be given the opportunity to read and understand the application, sign the declaration or oath and be appraised of duty to disclose. Reason: Some organizations do not wish to have the inventors hold possession of applications, which are considered confidential to the company. Consequently, those organizations require the inventor to review the application in the presence of the practitioner or other person and then take the application away for filing. In foreign-originated cases, it is not practical that the practitioner provide the application to the foreign inventor. Instead, the review of the application is performed at the direction of the foreign attorney. Applications handled at the direction of an in-house attorney meet with much the same problem - the application is often provided to the inventors by the in-house attorney.
3. The duties to make statements (i.e., identification of inventors, residence addresses and citizenships) should not apply where a signed declaration or oath is provided at filing or within some specified period (such as before first action or 3 months from the filing date, as in Information Disclosure Statements). Reason: There seems to be no reason that the statements be available, except before first action. Some practitioners will find it more convenient to simply file the signed oath or declaration before first action.
4. Any oath or declaration signed not sooner than 5 weeks before the filing date of the application should be accepted, regardless of when the oath or declaration is filed. Reason: Some practitioners, may wish to delay filing the oath or declaration, especially where the initial determination of inventorship is uncertain.
5. Filing the declaration by a wrong inventive entity with a petition to correct should be allowed. For example, where a declaration is signed at filing, but not filed, and it is later found that one of the signatories is not an inventor (e.g., the invention which that person contributed to was divided out by restriction), and another of the inventors is now deceased, the declaration executed by both the now-deceased inventor and the inventor whose invention was divided out should be admitted to avoid a Rule 1.47 petition as to the deceased inventor.
6. The period to file the base filing fee or English translation be set to expire one month from the date of mailing of the filing receipt identifying the application. Moreover, any surcharge should not commence until one month after the mailing of the filing receipt. Reason: The application needs to be identified when paying the filing fee or filing the English translation. The return postcard is not reliable because there have been instances where the application number on the return postcard and on the filing receipt have not been in agreement, particularly in National Phase cases. The uncertainty of the accuracy of the return postcard results in the applicant not knowing the application number and filing date until receipt of the filing receipt from the PTO, which in many cases is not received within the first month after filing the application. If the one month period does not begin until after mailing of the filing receipt, the applicant will be able to accurately correlate the application number with the filing fee or the English translation.
7. Regarding the presumption that the filing attorney is the attorney of record: Where the initial attorney is employed by a law firm or corporation, the responsibility for the application should automatically transfer to another attorney in the law firm or corporation upon death or departure of the initial attorney from the firm or corporation. If the initial attorney is a sole practitioner or solo in-house attorney in a corporation and that attorney dies or leaves the practice, a procedure is needed to permit one or more designated inventors, or an entity that shows it is likely the real party in interest, to designate a successor attorney or firm.
8. The Aattorney or agent of record@ should include all practitioners with a given law firm or corporation at the time an application is filed. Additionally, provision should be made to allow a change in Aattorney or agent of record@ status, such as permitting another practitioner to represent that he or she is satisfied that his or her client (whether named or not) holds sufficient ownership interest to prosecute the application. If the showing by the new practitioner does not include consent by the former practitioner, the PTO should send notice to the former practitioner soliciting consent or objections. Reasons: Where an practitioner leaves a law firm or corporation, the remaining practitioners with the firm or corporation should be permitted to continue the prosecution of the application. This could easily be implemented through the customer number procedure identifying all practitioners associated with a customer number. Where the owner (real party in interest) transfers the application or is acquired, the new owner or acquiring party may wish to change practitioners before filing an oath or declaration. Moreover, if the former practitioner dies the client must have an easy procedure to facilitate transfer of responsibility for the application to new practitioner (such in the case of a sole practitioner who dies). To guard against malicious interference with a patent application, particularly where a dispute arises as to exactly who the real party in interest may be, the PTO should make inquiry of the former practitioner where there is no consent to transfer by the former practitioner.
THE PTO ALSO RAISES QUESTIONS
- The PTO recognizes that delayed submission of declarations will increase petitions under Rule 47, and asks whether the benefits of the delayed submission would outweigh the drawbacks and whether it is of concern that the petition will be filed during the publication procedure.
In response, permitting applicants to file declarations that were obtained early in the filing process would overcome many of the issues. It would only be where the inventorship was found to be in error that the original declaration would not be useful, but usually a corrected declaration can be obtained at the time the error is discovered. Nevertheless, if an inventor cannot be found at filing, or expresses refusal to join in the application, it is unlikely the condition will have changed 2 years later when the application is prepared for grant. Owing to the stringent review of Rule 47 petitions and the present delays in acting on them, it is a concern that the petition process would unnecessarily delay grant of the patent, if not started until after allowance. Therefore, an expedited handling of Rule 47 petitions is needed.
- The PTO asks about the concern of a delayed 102(e) status of U.S. patents issuing on PCT national phase cases due to the delayed filing of the declaration.
In response, we do not see this as a significant concern. If the U.S. National Phase entry is 20 or 30 months from the priority date, the PCT application has been published (at the 18 month date) and is prior art as of the publication date, which is prior to the National Phase entry. If the National Phase entry is before 18 months (e.g., near or simultaneous with PCT publication), either of two scenarios occur:
(A) If the PCT application was filed with the USRO, the U.S. patent is evidence of an invention made in this country, and thus prior art under 102(g) at least as early as the PCT filing date. However, the PTO should instruct Examiners to consider such U.S. patents as prior art under 102(g) as of the PCT filing date. This will require a change in PTO practice (not rules or statute).
(B) If the PCT was not filed in the USRO, the applicant can file the declaration to gain the 102(e) date, or suffer the consequences of a later prior art date (probably the date of PCT publication) against competitors.
Questions 4-6. The PTO asks how does a real client in interest take action in an application and how should a client or inventor appoint a subsequent attorney. A procedure will need to be established permitting the original inventors designated in the application, or a party producing a document purportedly executed by some or all of the designated inventors and purportedly granting the real party in interest rights in the invention (such as an employee assignment agreement) to take action or appoint a subsequent attorney.
4. LIMITING THE NUMBER OF CLAIMS
The PTO proposes to limit the total number of claims to 40 and the number of independent claims to 6.
The number of claims and the number of independent claims should be reasonable as the case may permit, and not be limited by a fixed number. Alternatively, the PTO should consider petitions justifying extension of the number of claims.
1. There is a need for more than 40 claims when inventions are based on a complex technology. In addition, it is not always apparent to the applicant whether more than one invention is present. If an Examiner finds more than one invention, he has the ability to restrict the application. The Examiner also has the ability to reject duplicative claims. At this point, the Examiner is aware of all the claims relating to a certain technology and has the ability to prosecute the claims together or separately. If multiple, related applications are filed separately, the one Examiner no longer has the ability to prosecute the claims together, and the multiple separate applications may result in a duplication of effort by the one or more examiners. Furthermore, the applicant is forced to prosecute the applications separately, which may require additional time and expense by the applicant.
2. In the course of prosecution, Examiners may reject broad independent claims, but allow dependent claims. In these situations, the applicant may place the dependent claims in independent form, extending the number of independent claims past 6. This process provides a useful tool that helps the applicant obtain allowance on the patentable parts of his invention. The extension of independent claims past 6 imposes no burden on the Examiner, since the claims have already been examined, and most would be prima facie allowable. The proposed rule change would limit an applicant=s ability to convert dependent claims to independent claims based on the restriction of six independent claims.
3. Section 131 of 35 U.S.C. requires that the A[c]ommissioner shall cause an examination to be made of the application and the alleged new invention.@ The proposed change to 37 C.F.R. 1.75 would automatically withdraw any excess claims from consideration, in other words, claim 41 and independent claim 7 would be ignored. Contrary to the Commissioner=s assertion this is beyond the rule-making power of the Commissioner and a violation of 35 U.S.C. 131, which requires an examination of the claims. Congressional intent reflected in the fee structure of 35 U.S.C. 41(a)(1)(B) does not limit the number of claims in any way, and in fact encourages Applicants to present the claims as they see fit.
4. If the PTO insists on limiting the number of claims, the number of total claims and independent claims should be increased. In addition, the PTO should consider a petition process to allow an applicant to go beyond the maximum number of claims when supported by proper justification.
5. The PTO should consider adoption of the Aunity of invention@ test, rather than the old and unworkable restriction practice. Reason : The unity of invention would permit a single inventive concept to be advanced in each application, rather than plural concepts expressed as the same class of invention.
7. REDUCING THE TIME TO FILE CORRECTED OR FORMAL DRAWINGS
The PTO proposes reducing the time to submit formal drawings to one month from the date of the Notice of Allowance. Additionally, the PTO is considering requiring corrected or formal drawings upon the indication of allowable subject matter.
Requiring formal drawings within one month from the date of the Notice of Allowance is too short. Some complex cases require so many sheets or are of such complex subject matter that one month is simply too short; some clients (particularly foreign clients) prepare their own formal drawings that cannot be completed within one month. The short time of one month does not seem to relate to any PTO handling problems, only that the time of patent pendency. Since delay in filing the drawings will likely delay the grant of the patent, it is the applicant, not the PTO, that suffers from the applicant=s delay.
In addition, requiring formal drawings upon indication of allowable subject matter places applicants at a financial disadvantage, especially where the claims allowed are of such little value that the applicant elects to eventually abandon the application. For example, if the Examiner a narrow claim in a first action, the applicant must submit formal drawings to continue prosecution. The allowed claims, however, may be so narrow that the applicant would not want to incur the expense of preparing formal drawings unless further claims were found allowable.
9. IMPOSING LIMITS AND REQUIREMENTS ON THE IDS
The PTO proposes a statement in the IDS requiring that the practitioner has personally reviewed each reference, as well as requiring a copy of each reference to be submitted, and a unique description of each citation=s importance relative to each independent claim or specific dependent claim for which it was cited, except that (1) any ten citations, and (2) any item cited in a corresponding foreign application, may be excluded from the detailed description requirement. The description of each citation would have to set forth a teaching or showing of a feature relative to the claimed invention that is not shown or taught by any other reference in the IDS or is taught in a different manner. Not permitted will be descriptions of a citation that is merely cumulative to that of other citations. (See item 10). Each IDS will require a personal review of each citation by the practitioner and a statement that the citation has been reviewed to determine whether or not the citation is relevant to the claimed invention and appropriate to cite to the PTO. A copy of each cited U.S. application would need to be supplied and each citation submitted would have to be uniquely described (other than the first ten or those cited in a corresponding foreign application). If the cumulative number of non-excluded citations exceeds ten, the description will be required for all references thereafter cited. For each citation, an explanation will be required how each independent claim (or dependent claim if the citation was cited for it) is patentably distinct over the citation.
The PTO asserts the reason for this is to determine that the citation is relevant to the claimed invention. If only a portion of the citation is pertinent, then that portion alone is to be cited to the PTO.
We oppose adoption of this proposal in its entirety.
1. There are numerous reasons why more than 10 references may be cited in an IDS, including (a) citation in similar (although not necessarily related) U.S. applications, and (b) citation by a third party as relative prior art to a similar or related U.S. or foreign patent in litigation, validity proceedings, oppositions, re-examinations, and the like. For example, where a patent is asserted against a defendant in litigation and that defendant cites prior art as relevant to the patent in suit, the patentee/applicant ought to be able to cite the prior art in the still-pending divisional or continuation application without having to characterize the references any more than as characterized by the defendant. To do otherwise adversely affects litigation strategy because the comments may be made available to the defendant giving the defendant an unfair advantage over the patentee/applicant/plaintiff in the litigation. Moreover, most times the references are cumulative or simply background to the invention. Nevertheless, because they are cited in litigation, they ought to be considered, without requiring the applicant to characterize the references. Similar circumstances occur in foreign litigation and oppositions. It is suggested that such references be excluded from the requirement of explanation of pertinence, provided that the application or litigation from which the references were cited is identified in the IDS. It is further suggested that an IDS citing such references cannot be excluded from consideration, even though voluminous, cumulative, or multiplied. An obligation could be imposed on the applicant to keep the Examiner apprised of the status of the validity challenge and of the references particularly relied on by the third party or the finder of fact.
2. Where several applications are directed to similar subject matter, whether related (parent/child) or not, references cited by an Examiner in one case ought to be citable in another case without requiring an explanation of relevance or risking non-consideration. Examples of similar cases include cases directed to similar subject matter as claimed in the present application, whether filed the same date or not. The applicant might, however, be required to identify the similar and related applications from where the references were cited.
3. The proposal will significantly increase the work of the practitioner, which in turn will significantly increase the cost of patent protection to the applicants and users of the patent system.
4. As a minimum, U.S. patents should be excluded from this rule because they are searchable by the Examiner=s electronically. Using key word searches, the Examiner can easily determine the materiality of a U.S. patent reference.
18. ALTERNATE REVIEW PROCEDURES FOR APPEALS
The PTO is proposing an optional review process by which a different primary examiner will, for a fee, review the rejections of one claim, after Notice of Appeal but before the Appeal Brief, to ascertain whether or not a prima facie case of unpatentability has been established by the original examiner. The reviewer may consult with the original examiner. If the reviewer believes the original examiner has failed to meet the prima facie case of unpatentability, the original examiner will, presumably, issue a new rejection. The reviewer will not have the authority to overrule the original examiner. The date of filing the appeal brief runs from the date of notification of completion of the review. It is not clear that the PTO advises the applicant of the findings on the review.
The PTO is also considering another alternative review process after the filing of the Appeal Brief to review the entire final rejection to determine if prima facie case of unpatentability has been established. Presumably, the procedure is similar to the first, and could lead to a withdrawal of the final rejection by the original examiner.
Since the appeal reviews under consideration would not be by either the Board or a Federal court, the issuance of a patent as a result of a decision reached during such an appeal review to withdraw a rejection would not entitle the patentee to a patent term extension under 35 U.S.C. 154(b)(2).
1. The results of the review should be made available to the applicant. If applicant is to avail himself of this procedure, the least he should be apprized of is the results of the review, such as a written report by the reviewer, whether or not followed by the original examiner. The proposed review is not like other reviews such as a Quality Review. Those other reviews, though not communicated to the Applicant, nevertheless find their substance in the official record by the fact that the examiner is obligated to take such action required by the review. Here, the original examiner is not obligated to follow the results of the review and may disregard the results. Therefore, a report of the review should be made of record.
2. The PTO seeks comment as to whether a uniform procedure for review should be established throughout the entire Corps or whether each group should be free to establish its own procedures. To establish consistency within the PTO, the review should be on a uniform basis, not on a group-by-group basis. Otherwise, applicants would not be certain of the procedure conducted by a given group, which might adversely affect the applicant=s due process.
3. Friendships among the Examiners creates a slight risk that the review would be a pro forma ratification of the initial Examiner=s action. This risk is more likely amongst Examiners of the same art group (technology center), than among Examiners of different centers. Nevertheless, the reviewing Examiner must be made familiar with the art, whether by working as an Examiner in the field or by the art being explained by the applicant. Moreover, the Examiner should have considerable experience in the standards of review for appeals, and therefore should be a managing Examiner or supervisor. Accordingly, the first review (after Notice of Appeal but before the brief) should be conducted by a managing Examiner in a closely related art, but not the manager of the initial Examiner. Since the Appeal Brief will explain the invention and art, the second review (after filing the Brief) should be conducted by a managing Examiner in a different technology center who is at least peripherally familiar with the art.
KINNEY & LANGE, P.A.