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COMMENTS TO USPTO REGARDING ADVANCE NOTICE OF PROPOSED RULEMAKING PUBLISHED OCTOBER 5, 1998 RELATING TO ?CHANGES TO IMPLEMENT THE PATENT BUSINESS GOALS?

These comments are submitted by Andrew J. Anderson, Francis H. Boos, Pamela R. Crocker, James D. Leimbach, Gail M. McMillan, David A. Novais, Edith A. Rice, Norman Rushefsky, and Walter S. Stevens, all members of the Patent Legal Staff of the Eastman Kodak Company, and represent the views of the Eastman Kodak Company.

Topic 2. Requiring separate surcharges and supplying filing receipts (37 CFR 1.53)

The imposition of separate surcharges would have little effect on our current practice, as we routinely pay the basic filing fee even in applications filed without a completed oath/declaration. The proposed change to a practice of placing a copy of each filing receipt in the application file is viewed favorably, but the basis for proposing such practice as a ?trade-off? for the imposition of separate surcharges is questionable. Such practice would appear to present only a minor additional burden on the PTO, and should be performed as part of the current PTO obligation of maintaining a complete application file record regardless of whether any additional fee requirements are imposed.

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

The current (extendable) 2 month period for submitting an executed oath/declaration measured from date of mailing of ?Notice of Filing Missing Parts? is generally sufficient for our practice, and the proposed change to allow for delayed submission does not appear to present sufficient benefits to offset the additional burdens that would be imposed upon applicants and potential drawbacks and additional fees. We would be primarily concerned with the elimination of the current practice of sending a ?Notice of Missing Parts?, and switching the period for submitting missing parts from the date of such notice to the application filing date. While the PTO indicates ?there is no apparent justification for the PTO to mail notices to advise applicants of that which they should already know?, such modified practice proposed by the PTO would not adequately address situations where an oath/declaration or filing fee is inadvertently omitted. In such case, applicants may not be advised that a filed application was not complete until a Filing Receipt is sent, which may (at least under current practice) be several months after filing, and applicant may thus have to pay for several months extension of time even if the missing parts are promptly forwarded upon receiving notice in the filing receipt. Even if the application is intentionally filed with parts missing, the imposition of a 1 month period from the date of filing to complete such application is believed to be too short, as it may result in applicants filing missing parts without first receiving notice as to the application serial number, which practice may lead to increased lost papers in the PTO. Accordingly, if any changes along the proposed lines are implemented, it is suggested that the Filing Receipt be modified to essentially function as a ?Notice of Missing Parts?, and that any time limits for submitting the missing parts be based upon the mail date of the Filing Receipt, rather than on the application filing date.

Topic 4. Limiting the number of claims in an application (37 CFR 1.75) The PTO has indicated that only 5% of all applications filed contain more than 40 claims. While it would seem that such a small number would not unduly over burden the PTO to examine these applications, in general we agree 40 claims should typically be sufficient for a single application. We are concerned, however, about the adequacy of such limited number of claims in combination with potential additional changes in connection with Markush and alternative limitations claim practice. The PTO has not suggested specific limits for Markush species, sequence listings, or alternative limitations in a claim, however, it is likely that any attempt to limit the scope of claims in this way will force applicants to include more claims per application to obtain adequate protection of the invention, and with the above limitations on the number of claims per application, applicants will be forced to file more applications. The filing of one or more additional applications to obtain the additional claims would present more of an administrative burden to the PTO than examining all the claims in one application. Finally, it is also suggested that if any number of claim limitations are imposed, the PTO should consider harmonizing with EPO and JPO practice and allow multiple dependent claim practice without counting (and charging) for multiple dependent claims, as such practice would enable applicants to obtain adequate claim coverage with fewer separate dependent claims.

Topic 9. Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98)

In order to comply with this rule applicant runs the risk of generating estoppel issues. That is, before a first action on the merits, in an attempt to comply with the proposed requirements, applicant may discuss distinguishing features of the invention with respect to a reference which may not in fact be required for patentability The introduction of such statements, however, may be interpreted as narrowing the scope of the patent claims even before an office action is received from the PTO. Further, applicants would run the risk of raising the issue of fraud if the most pertinent feature of a cited reference is inadvertently missed while attempting to comply with the rule as proposed by the PTO.

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

§ 1.111)

The 1 month from filing date time limit is too short. The applicant probably will not have received a filing receipt giving the art unit and serial number before the expiration of the 1 month time limit. IF a one month limit for filing a preliminary amendment without a handling fee is adopted, applicants will seek to avoid the fee by filing the preliminary without this information. It has been our experience that if a preliminary amendment (or any other paper) is sent to the PTO without designating the art unit and the serial number it is likely to get lost at the PTO. We recommend a 3 month after filing limit for the submission of a preliminary amendment without a handling fee. It is also our experience that frequently supplemental amendments are filed after final due to examiners making new arguments or changing their positions on a matter, or in order to request reconsideration on a point not adequately addressed by an examiner in response to a specific amendment. It would be unfair to require applicants to pay an additional fee in such instances.

Topic 13. Changing Amendment Practice To Replacement By Paragraphs/Claims (37 CFR 1.121)

We in general do not foresee a problem with having to file both a clean copy of the new paragraph or claim, and a marked-up copy showing the changes. However, we are concerned that specific administrative issues regarding replacement paragraphs in the specification have not been addressed. For example, if the Applicant replaces paragraph 22 of the specification with three paragraphs in response to a 1 st Office Action, can these new paragraphs be numbered as 22a, 22b, and 22c so that the Applicant can identify the new paragraphs to make subsequent changes in a later response. Also, our word processing currently is not suitable for numbering paragraphs and claims without creating additional clerical work to correct formatting problems and numbering problems (e.g., structures, equations). Overall, we believe that it would be better to implement this proposed change when the PTO converts to an electronic filing system, rather than implementing it during use of the interim paper filing system.

Topic 14. Providing For Presumptive Elections (37 CFR 1.141) Although the proposed rule change may reduce pendency and PTO cycle time in those cases where the Examiner does not inform the attorney by telephone of a restriction requirement, we have the following concerns: (1) Attorneys will have to spend more time determining the order of presentation of the claims in the original application to consider constructive election if a restriction requirement should be made. This is especially true in chemical cases. (2) Under the current rules, examiners often call an attorney to inform him/her about the restriction requirement, and to permit the attorney to elect a set of claims over the phone so that the first Office Action can be on the merits. During the phone conversation, the attorney has an opportunity to argue that the restriction is not appropriate. With the proposed rule, the attorney will not have such opportunity. (3) There is concern that the proposed rule change will result in an increase in the number of restriction requirements made by examiners, which could increase the need for applicants to have to traverse such requirements and/or for filing of divisional applications, and ultimately result in an overall increase in patent fees for applicants.

Topic 16. Requiring Identification of Broadening in a Reissue Application While no rejections would be made for applicant's failure to identify a broadening, we are concerned that an unintentional failure to identify a material broadening to the PTO could still result in patentees having to deal with issue of candor questions in a court based on such an omission.

Topic 18. Creating alternative review procedures for applications under appeal (37 CFR 1.192).

The attractiveness of such alternative review procedures would depend upon the fees charged and the cycle time periods for such reviews, as well as the reviewing parties.

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