Office of Counsel,
Intellectual Property Law
3605 Highway 52 North
Rochester, Minnesota 55906
December 4, 1998
The Honorable Bruce A. Lehman
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
U.S. Patent and Trademark Office
United States Department of Commerce
P. O. Box 4
Washington, D.C. 20231
Attention: Box Comments - Patents
Hiram H. Bernstein
Subject: IBM Comments on the Advance Notice of Proposed Rulemaking
Entitled "Changes to Implement The Patent Business Goals"
Ref.: 3 Fed. Reg. 53498 (October 5, 1998)
Dear Commissioner Lehman:
The IBM Corporation appreciates this opportunity to comment on selected of the topics in the Advanced Notice of Proposed Rulemaking (ANPR) issued by the U.S. Patent and Trademark Office on October 5, 1998. IBM's comments are identified below using the topic numbers of the ANPR. IBM has no comment on topics of the ANPR not specifically identified and discussed below.
4. Limiting the Number of Claims in an Application (37 CFR 1.75).
IBM supports in principal. IBM is concerned, however, that the limit of six (6) independent claims may be too few and suggests instead a limit of ten (10). Further, applicants must be permitted to add additional claims dependent upon claims previously indicated as being allowable without being constrained by the limits of this proposed rule.
9. Imposing Limits/Requirements on Information Disclosure Statements
Submissions (37 CFR 1.98), and
10. Refusing Information Disclosure Statement consideration under certain circumstances (37 CFR 1.98).
IBM opposes these proposals. The current Information Disclosure Statement submission rules work well and should not be changed. Requiring applicants to characterize submitted references will result in every accused infringer alleging inequitable conduct and fraud on the Patent Office based on mischaracterization of the prior art references. Permitting applicants to omit characterization of up to 10 references would encourage gamesmanship in selecting which references to characterize.
11. Providing No Cause Suspension of Action (37 CFR 1.103).
IBM opposes this proposal, which would result in a form of "deferred examination". Deferred examination is undesirable because of the uncertainty it produces in industry by the existence of suspended or deferred patent applications which may or may not issue in the future. Furthermore, this proposal undercuts the United States' international efforts to move away from deferred examination.
16. Requiring Identification of Broadening in a Reissue Application (37 CFR 1.173).
IBM opposes this proposal. Claim amendments in reissue applications should speak for themselves. Furthermore, it in unreasonable to expect a reissue applicant to hazard a guess as to whether a change in claim wording (as opposed to an addition or deletion) will broaden the claim or not. Finally, requiring such characterization of reissue claim amendments will cause every accused infringer of a reissued patent to raise a defense of fraud and inequitable conduct based on alleged mischaracterization of the amendments during reissue.
18. Creating Alternative Review Procedures for Applications under Appeal (37 CFR 1.192).
IBM opposes this proposal. The opinions generated by the pre- and post-brief reviews would be essentially advisory and therefore of little value to applicants. IBM suggests instead that the USPTO's quality control efforts focus on non-Final and Final Office Actions.
Again, IBM Corporation appreciates the opportunity to comment on these proposals and encourages the USPTO's efforts to implement its patent business goals and improve the quality of its examinations.
Pryor A. Garnett
Counsel, Intellectual Property Law
cc: Fred Boehm, IBM Intellectual Property Law, Armonk, New York
Tim Hackman, IBM Government Relations, Washington, D.C.