HP Comment on ANPR 21 Topics
HP Comment in Response to
Patent and Trademark Office
Changes To Implement the Patent Business Goals
Advance Notice of Proposed Rulemaking
Published October 5, 1998
Hewlett-Packard Company submits the following comments in response to the Advance Notice of Proposed Rulemaking, published October 5, 1998. HP offers comment on 6 of the 21 topics:
- 4 (number of claims),
- 9 (IDS),
- 10 (IDS),
- 11 (deferred exam),
- 14 (restriction practice), and
- 18 (alternative review procedures).
HP appreciates the opportunity to learn of rule changes that the PTO is considering, and appreciates the opportunity to offer comments at this early stage. We hope our comments are constructive in advancing toward improvements that will foster both the quality and the efficiency of the examination of patent applications.
(4) Limiting the number of claims in an application
While HP appreciates that an application with a large number of claims places a disproportionate burden on the PTO, we do not believe that placing a fixed limit on the number of claims in an application is an appropriate solution to this problem. The fee structure should be adjusted to more fully match the Applicant's fee with the examination burden that the Applicant is imposing.
For some inventions, a larger number of claims is necessary in order for the Applicant to obtain full coverage for their invention. In those cases, the Applicant should have the opportunity to pursue the larger number of claims. Recognizing that, in pursuing a large number of claims, the Applicant requires a larger share of the PTO's examining resources, it would be appropriate for the Applicant to pay a larger fee.
The current fee structure already contemplates that the number of claims is an indication of the amount of effort required to examine an application. The PTO's discussion of topic 4 suggests that the fraction of the application fee that depends on the number of claims may be too small.
HP proposes that the PTO rebalance the basic filing fee and the per claim fees so that a larger portion is based on the number of claims. The objective ought to be that the total application fee is sufficient so that the PTO can properly examine all of the claims.
Applicants who believe that a large number of claims are necessary to adequately claim their invention ought to be able to have their claims considered. On the other hand, those submitting a small number of claims ought not be burdened with a fee designed to support examination of applications that include many claims.
Such rebalancing ought to be revenue neutral. If the rebalancing of the fees raises additional revenue, any additional revenue ought to be only so much as is needed for the PTO to properly examine all claims that Applicants submit.
(9) Limits/requirements on information disclosure statements
While the PTO only cites anecdotal evidence of the magnitude of this problem, HP is sympathetic to the concerns expressed by the Office. While HP has no objection to requiring a statement in the IDS that the registered practitioner has personally reviewed each reference (although there should be clarification of what is implied by such "review"), we do not believe it is appropriate to require practitioners to provide "a unique description of each citation's importance relative to each independent claim".
This description requirement is unreasonable because it puts the Applicant in a potentially untenable legal position. Practitioners are properly reluctant to describe any reference in a manner that may be misconstrued in a litigation context. References do not live in isolation; patentability of an invention depends on interpretation of the prior art as a whole. Consideration of prior art references often requires imagining the ways that the references can be characterized and combined; for example, a reference may have one role in light of a first group of other references, and may have a different role in a different prior art context. Failure of the Applicant to describe a reference's importance in light of any one of those combinations could be the basis for attack in litigation.
HP believes that a better approach to the problem of large IDS submissions would be for the PTO to charge a fee for the review of any references over a base number of references. This fee should reflect the added burden imposed on the Examiner by the submission of an unusually large number of references by the Applicant. For example, the first 20 references could be examined based on the basic application fee, while an additional $120 could be charged for the Examiner to consider up to 10 additional references submitted by the Applicant; additional $120 fees could be charged for additional groups of references.
When the added cost of reviewing references is visible to the Applicant, simple cases of unnecessarily large submissions are likely to be reduced. However, in any case, the PTO would receive fees adequate to carry out whatever review is required by an Applicant's submissions.
In short, HP proposes that the PTO consider all properly submitted references, but do so on a cost recovery basis so that those Applicants who submit a small number of references do not subsidize those who, for whatever reason, submit many references.
(10) Refusing consideration of certain information disclosure statements
HP views the function of this proposed rule change as "mopping up" any problems not corrected by proposed rule change in topic 9. We think a better approach is to require the payment of a fee for the review of a large number of references in an IDS, as described more completely in our comment regarding topic 9. In the event the PTO feels the proposal in topic 10 is still desirable after reviewing all the comments to topics 9 and 10, objective criteria for the term "unduly burdensome" should be provided for comment in the formal rulemaking process.
(11) No cause suspension of action
HP believes this proposed rule change is unnecessary, as the provisional application procedure and PCT practice already provide mechanisms for addressing the problem expressed in this proposed rule change (e.g., delay to obtain time to align funding, etc.).
(14) Presumptive election in restriction practice
Under this proposed rule, it would be difficult for the Applicant to successfully overcome an improper restriction requirement, since, essentially, this would require the Examiner to withdraw the first office action and start over – something he or she would naturally be extremely reluctant to do. HP is concerned that this could provide a temptation to overworked examiners to obtain additional "counts" by making restriction requirements in more cases than is appropriate. Thus, communication with the Applicant prior to taking the step of investing in a response on the merits is appropriate.
HP's concern would be reduced if the MPEP was modified to attach more objective criteria to the phrase "serious burden" as it is used in MPEP §803.
(18) Alternative review procedures
The use of additional reviewers to improve the quality of the cases that ultimately reach the Board appears to be a useful adjunct to other mechanisms that the PTO uses to assure the quality of its examination process. However, the PTO should not charge a separate fee for such review.
In contrast to topics 4 and 9, this is not a situation where the Applicant has imposed a disproportionate burden on the PTO and therefore should pay a greater fee. The proposed review procedures appear to be mechanisms by which the PTO can improve the quality of the examination. The PTO should not embark on a process by which those willing to pay more are the ones who obtain the most careful examination.
If the review procedures cannot be applied to all cases, then it would be appropriate for the PTO to select cases for review by statistical sampling or based on some quality-related indicator. An Applicant's willingness to pay more money ought not be a consideration.
Stephen P. Fox
Associate General Counsel
Director, Intellectual Property