December 4, 1998
By Electronic Mail email@example.com
Confirmation Copy By Express Mail No. EM443449543US
Assistant Commissioner for Patents
Washington, DC 20231
Re: Comments On Changes To Implement The Patent Business Goals
Docket No.: 980826226-8226-01
The United States Patent and Trademark Office (PTO) is considering a number of changes to the rules of practice and procedure in support of the Patent Business Goals. The goals that the PTO intends to achieve by these changes are: (1) to reduce PTO processing time (cycle time) to 12 months or less for all inventions; (2) to establish fully supported and integrated industry sectors; (3) to receive applications and published patents electronically; (4) to exceed customer’s quality expectations through the competencies and empowerment of PTO employees; and (5) to align fees commensurate with resource utilization and customer efficiency.
The PTO published advance notice of twenty-one proposed rule changes in the Official Gazette dated October 27, 1998, and sought public comment. We provide below comment on nine of the twenty-one proposals.
3. The PTO should not permit delayed submission of an oath or declaration, although permitting delayed submission of the basic filing fee and an English translation is acceptable (37 C.F.R. §§1.52, 1.53).
The PTO is considering amending 37 C.F.R. § 1.53 to provide that an executed oath or declaration for a nonprovisional application would not be required until the expiration of a one-month period that would be set in a "Notice of Allowability" (PTOL-37). A second aspect of the proposal would provide that the basic filing fee and English translation (if necessary) for a nonprovisional application must be submitted within one month (plus any extension under 37 C.F.R. §1.136) from the filing date of the application.
The PTO seeks to eliminate the current practice of mailing notices (e.g., a "Notice to File Missing Parts") during the initial processing of a nonprovisional application to require submission of an oath or declaration, basic filing fee or an English translation.
I. Delayed Filing of the Oath or Declaration
Requiring an executed oath or declaration as a prerequisite to examination clarifies inventorship, ownership and representation issues. The proposal to amend 37 C.F.R. § 1.53 to provide that an executed oath or declaration for an nonprovisional application would not be required until after the Notice of Allowability potentially convolutes the identification of inventorship and would likely confuse the issues of ownership and representation. Any possible benefit in eliminating the practice of mailing notices is greatly outweighed by the increased burden on the practitioner, the potential for confusion and/or fraud, and the potential prejudice to applicants whose applications become abandoned because the declaration, fee and/or translation is submitted but lost in transit or at the PTO.
The proposed change diminishes the reliability of the identification of the inventive entity. The benefits gained by delaying the filing of the oath or declaration do not outweigh the drawbacks resulting from the increased difficulty in obtaining the inventor(s)' signatures on the oath or declaration, as well as, an increased number of petitions under 37 C.F.R. §1.47 due to the inability to obtain an inventor's signature. If the declaration is not signed at the beginning of prosecution, the inventor may become unavailable or unwilling to make the oath or declaration. This would increase the number of 1.47 petitions, thus creating more work for both the examiner and the practitioner. Furthermore, a declaration that is executed at the start of prosecution, when the details of relevant events are fresh in the minds of the parties, has a greater likelihood of being accurate than a declaration that is executed at a much later date.
The proposed change would permit examination of an application where the practitioner is the sole source of information regarding inventorship until Allowance. In order to retain a filing date beyond one month after filing (plus a period for extension) without an executed declaration or oath, under the proposed rule, a practitioner may, 1) submit the name(s), residence(s), and citizenship(s) of the person(s) believed to be the inventor(s); 2) submit all foreign priority claims; and 3) make and submit a statement that he or she has made an inventorship inquiry (i.e., ascertain the inventorship of the application to the best of his or her knowledge) and that he or she believes that the inventive entity consists of those person(s) so identified as person(s) believed to be inventor(s). In addition, the practitioner must state that he or she has sent such person(s) a copy of the application (specification, including claims, and drawings) filed in the PTO, and given such person(s) notice of their obligations to review and understand the contents of the application and of their duty to disclose to the PTO all information known to the persons to be material to patentability under 37 C.F.R. §1.56. The proposed requirement that the practitioner make a statement that they made an inquiry, that they believe the identified person(s) to be the inventors, and that they have informed the persons of their obligations under 37 C.F.R. §1.63, does not provide an additional indicia of reliability, because duty of candor is imposed upon practitioners by the code of ethics.
Imputing representation upon the filer may be contrary to the intentions of the inventors and may unfairly prejudice inventors. The proposed change to 37 C.F.R. §1.34(b) would include the agent or attorney who filed the application in the definition of attorney of record and would consider a pro se applicant who signed the application to be the representative of all of the inventors. The PTO will, therefore, impute representative authority where no actual authority has been given by the inventors. This may impede the inventors’ efforts to grant actual authority to prosecute an application. Imputation of authority will result in increased petitions to revoke representative authority. The ability to revoke authority to represent is typically coupled with the ability create authority to represent. If authority to represent is imputed upon the filer by the PTO, it is unclear who would have the authority to revoke representation.
Changing 37 C.F.R. §1.34(b) to give control of the prosecution of an application to the filer (the attorney or agent that filed the patent application) will probably cause unnecessary confusion and unjust consequences. Allowing a filer to prosecute an application without an executed declaration or oath would create opportunities for fraud.
This proposed change may increase the number of inventorship disputes. If they are not required to sign an oath or declaration under threat of penalty of perjury and/or criminal sanctions, purported inventors may not appreciate the importance of accurately identifying inventorship and/or their duties under 37 C.F.R. §1.63. Alternatively, unscrupulous individuals may see the new rule as an opportunity to fraudulently file an application without properly identifying the true inventor(s). Further, the application may recite inventorship incorrectly, despite an honest statement by the practitioner, since the practitioner may properly make such statements of belief based upon misinformation received from the purported inventor(s).
The proposed practice of examining an application without an executed oath or declaration is particularly problematic with regard to the inventor’s duties to disclose best mode and known art. If inventorship is not established until after the application is allowed, there is a greater likelihood that examination would be completed before the correct inventive entity is named. A non-named inventor would not provide the information to satisfy the duties set forth in 37 C.F.R. §1.63 and 35 U.S.C. §112. The disclosure of best mode and known art is critical to the validity of a patent. These disclosures are essential to both the examination of an application and the validity of an issued patent, and are properly obtained prior to examination of an application.
Further, examination-related problems arising from the proposed change will not be solved by prohibiting Correction of Inventorship after the Notice of Allowability is issued. Instead, more continuation applications will be filed, thereby increasing rather than decreasing the time for issuance of a patent. The benefits gained by the ability to delay the filing of the oath or declaration do not outweigh the drawbacks resulting from the PTO prohibiting the submission of an oath or declaration that names an inventorship different from that previously indicated by the practitioner as the person(s) believed to be the inventor(s) after the close of prosecution. The non-prudent practitioner or naïve pro se applicant will await the deadline before unambiguously establishing inventorship. Also, the inventors may not give the identification of inventorship an appropriate level of importance. Casual treatment of identification of inventorship is likely to result in the misidentification of inventorship until the post-allowance phase of the prosecution. A practitioner who discovered after the Notice of Allowance issued that inventorship was improperly identified would have to withdraw the allowed application and correct inventorship in a continuing application. This would certainly create more work for both the PTO and the practitioner.
The consideration of petitions under of 37 C.F.R. §1.47 during the publishing period will likely delay the issuance of applications. Another concern of applicants is that petitions under 37 C.F.R. §1.47 will be filed during the publishing (and not pre-examination) process. Petitions under 37 C.F.R. §1.47 filed during the publishing process rather than during the pre-examination process could potentially delay issuance of the patent, thus reducing the patent term by the amount of time required for the petition to be filed by the practitioner and considered by the PTO. This is contrary to the applicant’s interest and the PTO’s initiative to reduce cycle time for issuance of patents.
It is logical that inventorship be established at the beginning of prosecution, prior to examination. Establishing inventorship prior to examination resolves ambiguities that affect issues of ownership and representation. Although an executed declaration could incorrectly name inventorship, the declaration by those believed to be inventors is an additional indicia of reliability regarding the assertion of inventorship.
The ability to prosecute an application without an executed declaration or oath is likely to increase the occurrence of inventorship disputes late in the prosecution process. An additional concern relates to the notice aspect of the current rule requiring persons to sign an oath or declaration as a prerequisite to examination of an application. The current practice of requiring the inventors to submit an oath or declaration prior to examination provides notice to persons who may be inventors that the application is being prosecuted as well as the inventive entity identified in the application. Early notice of purported inventorship affords interested parties an opportunity to resolve potential disputes before the patent issues; thus the technology would likely be developed and brought into the market more quickly than if inventorship was disputed at the time of allowance.
In conclusion, we submit that the Patent Business Goals of increased efficacy and effectiveness of the PTO’s business practices will not be advanced by the proposed changes to the practice of requiring an executed declaration or oath prior to examination of an application. We submit that the proposed changes to 37 C.F.R. §1.53 will result in decreased efficacy and effectiveness of the PTO and may result in an increase in filings to resolve ambiguities of inventorship, ownership and representation.
II. Proposed Amendments to 37 C.F.R. §1.52(d) and 1.53
We offer no comments regarding the proposed amendments to 37 C.F.R. §1.52(d) and 1.53 to provide that the basic filing fee and an English translation (if necessary) must be submitted for a nonprovisional application within one month (plus any extensions under 37 C.F.R. §1.136) from the filing date of the application.
4. The PTO should not limit the number of claims in an application (37 C.F.R. §1.75).
The PTO proposes to limit the total number of claims that would be examined at one time to forty and would limit the number of independent claims that would be examined at one time in an application to six.
Under the proposal, if an applicant presented more than forty total claims or six independent claims for examination at one time, the PTO would withdraw the excess claims, and require applicant to cancel excess claims. Multiple dependent claims would be considered as multiple claims. Limits would also be placed on the number of species that may be embraced within a Markush claim, the number of sequence listings that may be referenced in a single claim, and the number of alternative limitations that may be included in a claim. The applicant is said to be "effectively permitted to present any number of claims for examination by filing any number of continuing applications" and in an "extraordinary situation" will be able to petition for a waiver of any limitations.
The objectives of the U.S. Patent and Trademark Office (PTO) are to provide a processing time of 12 months or less for all inventions and to insure high quality examination so that "patents [contain] claims whose validity is based not solely upon presumptions resulting from the patent statue and PTO regulations, but based on the actuality that each claim of the applications resulting in such issued patents has been subjected to an effective, high-quality examination." The PTO asserts that although applications with a large number of claims are rare, the time required to process and examine these applications results in delays in the examination and processing of other applications.
The proposed rule will not achieve the PTO’s objectives. Any decrease in cycle time for individual applications will be negated by the increased number of continuations that Applicant will have to file to fully cover their invention, ultimately increasing the burden on PTO clerical and examining staff. Cycle time for the invention as a whole will actually increase rather than decrease.
The PTO asserts that the presence of fewer claims in an application will result in a higher quality examination process as the examiner will have more time to devote to a fewer number of claims. However, we note that the time allocation for examination is dictated by the PTO and is driven by production goals. Under the current system an Examiner gets the same production value, or counts, from an application that has ten claims as from an application that has 500 claims. The Office may be correct that applications with large numbers of claims are burdensome; however, the solution is not to decrease the number of claims in a given application, but to increase the production value of a lengthier case, allowing the Examiner more time for a case with 500 claims compared to one with 10 claims. The alternative of decreasing the number of claims in an application will only result in an increase in the number of applications the Examiner has before him or her because of the increase in filing of continuation applications. Since continuation applications are typically seen by the same Examiner, there will be no real decrease in examination burden. If anything, there will be a loss of efficiency as the Examiner will be forced to review the specification and arguments in each related case each time a new continuation comes before him or her. The benefits of compact prosecution, creating shorter cycle time for the invention as a whole, outweigh any short term decrease in cycle time that might be obtained for an individual application.
7. The PTO should not reduce the time available for filing corrected or formal drawings (37 C.F.R. §1.85).
The PTO seeks comments on reducing the time for filing corrected or formal drawings to require either that the corrected of formal drawings be submitted within one month of the Notice of Allowability with extensions being permitted; or that the formal drawings be submitted in reply to any Office Action indicating allowable subject matter. The Office asserts that these changes are being considered to reduce the delay in the issuance of a patent that occurs when extension periods are used in filing the formal drawings and to reduce the storage and tracking considerations which occur when an issue fee is paid before the formal drawings are filed. We submit that neither of the proposals is to the benefit the customers of the PTO, the Applicants.
Considering the second proposal first, by requiring that formal drawings be submitted once allowable subject matter is indicated, the Office would force Applicants to endure the expense of having formal drawings prepared at that point in the prosecution whether or not the allowable matter is of economic significance to the Applicant. This could be especially burdensome if allowable subject matter were indicated in the first Office Action. For example, if in the first Office Action a single dependent claim is indicated as allowable subject matter, the Applicant would then be forced to have formal drawings prepared even if the allowed claim was of minimal value. Failure to prepare the formal drawings would render the response to the Office Action nonresponsive and preclude further prosecution. Thus rather than being able to continue prosecution until, for example, an Advisory Action is issued and at that point deciding if the allowable subject is of sufficient economic importance to have the formal drawings prepared and permitting the allowable claims to issue, the Applicant is forced to expend financial resources prematurely. In the present example, these financial resources might never have been expended if the allowable dependent claim is the only allowable claim.
The alternative suggestion, reducing to one month the time period available for the filing of formal drawings, at best might reduce but not eliminate the amount of time that an application would have to be tracked by the Office. However, because the Office contemplates extensions of time being available to file the formal drawings upon the payment of extension fees, the benefit of a reduction in tracking time appears not to be the primary consideration of the Office.
Because the Applicant never knows when or if an application will be allowed, this suggestion, if adopted, either would force the Applicant to prepare the formal drawings in advance of an allowance, leading to the same issues as the prior suggestion discussed above or risk paying extension fees if at the time of allowance the Applicant’s draftsperson is unavailable to complete the formal drawings. Because the time period for filing the formal drawings is measured from the date of the mailing of the Notice of Allowability, the delay in the receipt of the notice due to normal postal delivery time and the additional delay imposed by the time required for docketing of a response effectively reduces the response time to less than one month and more likely to about three weeks. This reduced time places an unnecessary burden on the Applicant and the Applicant’s draftsperson to complete and submit the formal drawings without paying for extensions.
Further the Office has produced no statistics to show how the submission of formal drawings varies; has not indicated what the average delay in submission is; and has not actually indicated what the tracking burden to the Office is. A casual observer would think that the tracking of whether the formal drawings and issue fee have been received in an allowed application would simply require two entries into a database and the automatic generation of abandonment notices when either the issue fee or the formal drawings have not been received in requisite amount of time. In short, it would appear that the maintenance of a database and the generation of reports is not unduly burdensome on the Office. Therefore, we submit that the rules governing the time to file formal drawings should not be changed.
9. The PTO should not impose limits or other requirements on information disclosure statement submissions (37 C.F.R. §1.08).
The PTO is considering revising 37 C.F.R. §1.98 to establish new requirements and/or limits on information submitted as part of an Information Disclosure Statement (IDS). In particular, the PTO is considering imposing the following additional requirements for IDS submissions: (1) a statement in the IDS that each citation has been personally reviewed by the registered practitioner who represents applicant, or by at least one inventor where applicant is not represented by a registered practitioner; (2) a copy of each cited US application; and (3) a unique description of each citation’s importance relative to each independent claim or specific dependent claims if that is why it was cited, except that description would not be required for: (a) any ten citations; and (b) any item cited in a corresponding application by a foreign patent office, PCT International searching authority, or PCT International Preliminary Examining Authority, provided the search report or Office Action in the English is also submitted. The PTO seeks to reduce the number of references cited by applicants in order to help the PTO reduce cycle time.
I. Statement of Personal Review of Each Citation Submitted in the IDS
The requirement for a statement of personal review of each citation submitted in the IDS will not achieve the PTO’s stated goals. It will not result in a reduction of references cited to the PTO because the penalty for failure to cite all of the relevant art to the PTO during prosecution is invalidation of any patent which subsequently issues. Given such a draconian penalty, it is in the practitioner’s best interest to cite any and all potentially relevant references. The proposed rule ignores the reality that most, if not all, practitioners already review at least the abstract of references before citing them to the PTO in an Information Disclosure Statement. The proposed requirement for a statement of personal review would not change this practice and practitioners would still be able to sign a statement certifying that they have reviewed each citation submitted in the IDS. It is worth noting that a statement of personal review may be unnecessary in light of the regulations currently in force. When an individual submits an IDS to the PTO, that individual is certifying that the documents provided to the PTO are material to the prosecution of the application. 37 C.F.R. §10(b)(2)(ii); 37 C.F.R. §1.56.
We understand that applications in which a large number of marginally relevant references are cited consume large amounts of examiners’ time in reviewing the IDS citations. However, rather than requiring a statement of personal review for each citation submitted in an IDS, we respectfully submit that the goals of the PTO may be achieved in at least two less burdensome ways.
First, examiners may be given additional time to examine cases in which voluminous IDSs are submitted. Alternatively, examiners may be given additional count value for such applications. This proposal would encourage examiners to examine large cases with celerity. More importantly, examiners would be given the opportunity to carefully review the references cited in an IDS. This latter point is vitally important given the presumption of validity afforded by 35 USC §282 over cited references consider by the examiner.
Alternatively, The PTO could eliminate or modify the affirmative duty to disclose material references imposed by 37 C.F.R §1.56. For example, 37 C.F.R. §1.56 could be modified so that those involved with prosecution of a patent application need only disclose novelty-destroying references of which they are aware. Elimination or modification of the affirmative duty would not eliminate references cited to examiners during prosecution of applications since the presumption of validity afforded by §282 would still exist. However, it would allow practitioners to make more reasoned judgments regarding the relevance of references without fear that the resulting patent will be rendered unenforceable for failure to cite what the practitioner believes is marginally relevant reference.
II. Supplying a copy of each US application
The proposed rule requiring applicants to submit copies of pending US applications cited in an IDS is intended to reduce cycle time by eliminating the effort expended by examiners to obtain and copy all of the cited pending applications. However, the proposed change will not eliminate the need for examiners to retrieve copies of cited pending applications because those applications are generally related cases and, in the proper discharge of the examiner’s duty, the examiner should review the file wrappers for those applications in order to verify that any priority claim made is correct.
Further, the rule would place an undue burden on clients having extensive patent portfolios that are distributed among several patent firms. Such distribution is often the result of licensing agreements or other conflicts of interest which require different counsel to be responsible for different cases in a portfolio. In these situations, counsel may not be able to receive or view copies of related applications due to constraints imposed by applicable ethical rules.
We understand that for applications which cite a number of related pending applications, the time involved in retrieving those files may be large. However, rather than requiring applicant to submit copies of the related applications cited in an IDS, we respectfully submit that the goals of the PTO be achieved by providing examiners with additional time or by eliminating the material duty to disclose as described above.
III. IDS citations would have to be uniquely described
The PTO proposes requiring a description of each citation submitted to the PTO in excess of ten that is not cited by a foreign patent office and accompanied by the foreign search report. The PTO believes that this requirement will help reduce cycle time by lowering the number of references cited to the PTO.
We respectfully submit that as long as there is a duty to disclose material information to the PTO, and as long as the penalty for failing to discharge that duty is unenforceability of any patent that issues on an application, no change to the rules surrounding IDS submissions will lessen the number of patents cited to the PTO. As noted above, even the MPEP suggests that, in a situation where a practitioner is unsure of whether to cite a reference to the PTO, the practitioner is urged is err on the side of caution and submit the reference. See MPEP §2004. This statement is an acknowledgment that failure to cite a potentially material reference to the PTO results in invalidation of an issued US patent and provides the Patentee with a potential malpractice claim against the practitioner. Accordingly, it is our opinion that the proposed change will do nothing to lower the number of references cited to the PTO but will increase the costs associated with fulfilling the duty of candor and good faith imposed by 37 C.F.R. §1.56.
Although applicants recognize that given the current structure, excessive citations in IDSs are problematic for the office, we believe that a stronger patent system will result if examiners are given additional time for applications in which many references are cited. For example, an examiner would receive the same time and same count value for an application in which ten references or less are cited. For applications in which over ten references are cited to the examiner, the examiner would receive an additional amount of time to review the art cited by the practitioner as well as an additional count value for reviewing the art.
Alternatively, the commissioner could eliminate or modify the affirmative duty to disclose material references to the PTO. Practitioners would still have the option of submitting what they believe to be the most pertinent prior art to the application and practitioners will generally do so in order to secure a stronger patent for their clients. However, since the penalty of invalidation of a patent for failure to correctly assess the materiality of a reference would be eliminated, practitioners and applicants would likely cite only those references which are the closest to the claims pending in the application thereby achieving the goal of the PTO to reduce cycle time by eliminating the number of references submitted in any one application.
10. The PTO should not allow Examiners unfettered discretion to consider information disclosure statements under certain circumstances (37 C.F.R. §1.98).
The PTO is considering revising 37 C.F.R. §1.98 to reserve the PTO’s authority to not consider submissions of and Information Disclosure Statement in unduly burdensome circumstances, even where all the stated requirements of 37 C.F.R. §1.98 are met. The PTO believes that allowing the examiner to refuse consideration of unduly burdensome IDS submissions and delay action on the merits until a corrected IDS is received would allow the PTO to reduce cycle time and enhance the quality of the examination.
However, it is illuminating to note that the PTO provides no guidance regarding whether an IDS is unduly burdensome. Instead, the PTO provides only four extreme examples of cases in which large amounts of documents were submitted.
The function served by an Information Disclosure Statement is to allow the applicants to provide the examiner with references he or she believes to be relevant in order to both fulfill the duty of candor imposed by 37 C.F.R. §1.56 as well as to build a body of prior art over which any issuing patent is presumed invalid. Allowing an examiner unfettered discretion to refuse to consider references cited on an IDS injects an element of capriciousness into the system which does not serve to enhance the quality of the examination procedure.
Although there are certainly instances in which an IDS submission is unduly burdensome, either as a result of the number of references cited or the length of references cited, we submit that there are better approaches to controlling such abuses. At the very least, applicants should be provided with a "safe harbor." IDS submissions which conform to the rules provided in this safe harbor would be considered by the examiner. Only in those cases where an IDS does not conform to the safe harbor would the examiner be allowed the discretion to refuse consideration of an IDS. Finally, as noted above in respect with proposal number 9, the PTO could eliminate the affirmative duty to disclose imposed by 37 C.F.R. §1.56 altogether.
12. The PTO should not require a handling fee for preliminary amendments and supplemental replies (37 C.F.R. §1.111).
The PTO proposes requiring a handling fee for certain preliminary amendments and all supplemental replies. The objective of this rule is to reduce PTO processing time. The Office asserts that the imposition of a fee would provide applicants with an incentive to promptly file preliminary amendments and to timely file complete replies to Office Actions, reducing PTO processing time. The Office further asserts that this will prevent the hardship caused to both the PTO and the applicant when a preliminary amendment or supplemental reply is received at the PTO several weeks before the mailing of the Office Action but does not get to the Examiner until after the Office Action is completed. We submit that these proposed changes would not achieve the PTO’s objectives.
Imposing a fee for preliminary amendments and supplemental replies would discourage applicants from filing such amendments and would thus increase, rather than decrease, PTO processing time. Imposing a fee for preliminary amendments would be especially burdensome to applicants nationalizing a foreign application in the U.S., converting a provisional application into a utility application or filing a Continued Prosecution Application (CPA) because extensive revisions to the application, prior to examination are often essential. With regard to supplemental replies, Applicants would no longer be motivated to submit a supplemental reply following an interview with the Examiner as they often do under the current rules. Applicants would avoid paying additional fees by not submitting a preliminary amendment or supplemental reply. Instead, Applicants would wait for the PTO to issue an Office Action and would then submit extensive revisions in a response. This would delay prosecution and result in unnecessary work on behalf of the Examiner. The best way to reduce processing time is to encourage the submissions of amendments early in prosecution. Thus, we oppose the proposed rule.
The problems relating to the submission of preliminary amendments and supplemental replies appears to be a mailroom processing problem within the PTO, as it takes several weeks for a submission to get to the responsible examiner. Instead of burdening applicants with additional fees, the PTO should simply improve mailroom processing so that the Examiner has a complete file when preparing an Office Action. Alternatively, the PTO could require that Preliminary Amendments filed after a certain deadline, e.g., six months after the filing date of the application, must be filed by facsimile. For all these reasons, we submit that the rules governing preliminary amendments and supplemental replies should not be changed.
14. The PTO should not provide for presumptive elections (37 C.F.R. §1.141).
The PTO proposes that if more than one independent and distinct claim is presented in an application, the applicant constructively elects the first invention presented. The objective of this rule is to avoid delays in prosecution inherent in the current restriction practice which requires the restriction and an express election by the applicant prior to an action on the merits. We submit that this proposal would not benefit the customers of the PTO, the inventors.
The benefits of allowing the applicants to select which invention will be examined outweighs any decrease in processing time that results. Often times there are business and financial considerations which the applicants must consider when deciding which invention to prosecute first. Having the Examiner select which invention to prosecute would unfairly burden applicants. The determination of what is a single invention is highly discretionary. Nevertheless, the new rules give the Examiner unbridled discretion to decide how many inventions are presented in an application and which claims are drawn to each invention without any input from the applicants. Moreover, applicants have no means of appealing the Examiner’s subjective decision. Therefore, we submit that the proposed rules providing for presumptive elections should not be adopted.
The PTO should implement rules formalizing the current practice of making provisional elections. Under the current practice, the processing of the application is usually not delayed by a restriction or election requirement. The Examiners contact the applicants by telephone and the applicants make a provisional election. This allows the Examiner to issue a single Office Action which includes both a restriction or election and a response on the merits without delaying prosecution. The provisional election practice gives applicants the opportunity to select the invention to be prosecuted without compromising PTO cycling time. Thus, if the Office is to change restriction practice, we would prefer the current practice of making telephonic provisional elections over the proposed rule providing for presumptive elections.
18. The PTO should create alternative review procedures for applications under appeal (37 C.F.R. §1.192).
The PTO is considering two alternative review procedures to reduce the number of appeals having to be forwarded to the Board of Patent Appeals and Interferences which would be available upon request and payment of a fee by the appellant and would involve review by at least one other PTO official. The reviews are of two types: a pre-brief review (after the Notice of Appeal but before the brief is filed) and a post-brief review (after the brief is filed but before the Examiner’s answer). The objective of this proposed rule is to expedite resolution of appeals.
We note that the post-review procedure was used in the past in the biotechnology practice area (without requiring any petitions or fees). An appeals conference would be scheduled upon receiving the brief. The Examiner in the case, his or her SPE, and a Biotech Practice Specialist (BPS) (a former SPE), would meet and discuss the rejections as well as the brief. The result of these conferences would be to determine whether rejections should be maintained. Attempts were also made to determine whether there was allowable subject matter to use as a basis to negotiate allowable claims. The practice was successful to the extent that a large number of cases were not sent up to the Board because review revealed a large number of improper rejections had been made.
The practice could be improved in a number of ways. One improvement is suggested above - to have a pre-brief review. It is likely that the Examiners themselves would appreciate the opportunity to have someone with a different perspective review the arguments and rejections in a case. However, to restrict the pre-brief appeal to a review of the rejection of a selected claim seems counterproductive as it will almost certainly guarantee that a case will pass through the pre-brief level of review to the post-brief level (thereby increasing cycle time) since more than one claim will be the subject of the appeal.
A critical consideration in pre- and post-brief review is the pool of PTO employees from which the reviewer is to be taken. It would not be beneficial to the Applicant or the Examiner to have a reviewer selected from the pool of Primary Examiners in the Examiner’s own art unit given the limited number of primaries in any art unit. A junior Examiner without signatory authority is not likely to be writing rejections that contravene the Primary Examiner who signs his or her actions; therefore, another Primary Examiner will have to be a reviewer in the pre-appeal review. This essentially places the second Primary Examiner in the position of having to say that another Primary Examiner has not established a prima facie case (and implying that the Primary Examiner has in fact made an action-taking error). Having a Primary reviewer from another art unit who is unaware of the art-unit specific issues involved would seem counterproductive. Allowing a SPE to perform this review is a better solution since the SPE is aware of art-unit specific issues, has an interest in teaching the Examiner(s) to craft better rejections, and has the authority to transfer the case to another Examiner, should a consensus not be reached. This approach would be mainly constrained by the current limits on a SPE’s time. An alternative would be to have a dedicated party with legal training, such as a Legal Advisor from the Special Program Law Office, be responsible for the review (and indeed available to the Examiner as a resource earlier in the examination process). It is not suggested that a Quality Review Examiner be involved because the goal of the review would be to correct any examining deficiencies noted in a non-punitive way and to encourage the Examiner to seek a qualified opinion at an earlier stage of the examination process rather than as a last resort.
20. The PTO should not reevaluate the Disclosure Document Program but should, instead; simply abolish it outright.
The PTO seeks comments in evaluating the Document Disclosure Program. We suggest that the Document Disclosure Program is not only not serving the needs of the public but is in fact causing harm in that many inventors do not understand the legal significance of the program or the documents that are filed under the program. As practitioners to a relatively sophisticated and well-educated clientele, we are none the less amazed at the amount of misinformation that is propagated among inventors regarding the program.
We have heard inventors extol the "benefits" of filing a document under the Disclosure Program which include:
1. the filing of the document providing a permanent record of the invention, when in reality the document is destroyed unless referred to within a two year period;
2. the filing of the document establishing dates of conception and constructive reduction to practice for use in an interference, when in reality at best the document establishes a date of conception;
3. the filing of the document will prevent a bar clock from running, when in reality the document provides no benefit under 35 U.S.C. 102(b); and
4. the filing of the document establishes inventor rights, when in reality the filing of a disclosure document is merely evidentiary.
As such, despite efforts by the PTO and FTC to correct these misconceptions, even many experienced inventors, ones that have been through the patent process, are simply not sophisticated enough to understand the differences between the filing of a Disclosure Document, the filing of a Provisional Application and the filing of a Utility Application.
Instead of providing a worthwhile temporary recording system for ideas precedent to the filing of a Patent Application, the program is lulling inexperienced inventors into a false sense of security.
Inventors are much better served by the filing of a Provisional Application which acts as a constructive reduction to practice, which provides protection under 35 U.S.C. 102(b), and which establishes a priority date from which rights can be derived. In short, we believe that the Disclosure Document program has the potential for doing more harm than good, that the PTO resources used in the program would be better spent elsewhere, and that the Disclosure Document Program should be discontinued.
Very truly yours,
Testa, Hurwitz & Thibeault, LLP