37 CFR Part 1
Changes to Implement the Patent Business Goals;
Docket No.: 980826226-8226-01
Assistant Commissioner for Patents
Washington, D.C. 20231
The following comments are submitted by members of the Rohm and Haas Company Patent Department to address issues raised in the Advance Notice of Proposed Rulemaking from the Federal Register: October 5, 1998 (Volume 63, Number 192):
We applaud the effors of the PTO to improve service to the intellectual property community through the establishment of the five Patent Business Goals. We believe that, overall, the proposed rule changes support that effort. However, there are a number of specific issues which we believe may have an adverse effect on the intellectual property community. These issues are addressed below.
Proposed Rule change #4 - Limiting the number of claims in an application.
We do not believe that limiting the total number of claims (40) and independent claims (6) would adversely effect Rohm and Haas for the same reasons as expressed by the PTO in the ANPR.
However, we are concerned about specific limitations that may occur in the future which were not detailed in the ANPR; particularly in the number of species that may be embraced by a Markush group. As Rohm and Haas is a chemical company, many of our patent applications cover a broad chemical genus with various substituent groups described in Markush format. Undue limitation on the breadth of the number of substituent group species that may be claimed would significantly limit our inventors' ability to claim the the full breadth of what they believe is their invention. Until we know how the Markush species issue will be handled, it is difficult to accept the limitations.
An alternative proposal to the 40/6 limitations is to have a steeply escalating fee to cover excess claims.
Rule change #9 - Limits/Requirements on information disclosure statements.
We have a great deal of concern regarding the requirement that practitioners state that they have personally reviewed each citation. This is particularly burdensome in the case of citations based upon foreign patent office searches which cite references in foreign languages. There is also a concern related to how thorough the review must be.
We propose the following alternatives for the "reviewed by" statement:
To be consistent with 37 CFR 1.56©, the "reviewed by" statement should indicate that the citation was reviewed by one or more persons designated in 37 CFR 1.56©(1), (2), or (3). This would eliminate the burden that the "practitioner" personally review each citation.
Not requiring the "reviewed" statement for IDSs submitted based on a foreign patent office search.
We propose the following alternatives to other provisions of the proposed rule:
Increase the 10 "free of description requirement" citation limit to a greater number (15-20). We do not believe that it is an undue burder on the examiner to review 15-20 references. In the case of a voluminous reference or compendium, retain the requirement that the relevant portion of the citiation be specifically noted.
Require a fee for citation of references in excess of a certain number (10, 15, 20, ?).
Rule change # 13 - Changing amendment practice to replacement by
We do not object to providing full replacement paragraphs or claims. However, we are concerned that many word processing programs do not allow for automatic numbering of paragraphs. The alternative of individually numbering the paragraphs after drafting is complete adds an unnecessary step to the drafting process. We believe that the current practice of designating a paragraph for replacement by page and line number should be sufficient.
We agree that providing OCR readable replacement paragraphs and claims, along with a marked-up copy indicating the changes, will streamline the review process.
We are also concerned that because many foreign offices, specifically the European Patent Office, won't accept applications with numbered paragraphs we would be required to add the step of removing the paragraph numbers prior to foreign filing the application. This is both an added burden to the applicant and raises harmonization problems with foreign patent offices.
Rule change # 18 - Creating alternative review procedures for applications under appeal.
We agree that the proposed procedure of conducting independent reviews will reduce the number of cases that actually are reviewed by the Board of Patent Appeals and Interferences. However, we suggest that both the PTO and the applicant would be better served if both of the proposed reviews were automatic standard procedures by the PTO, rather than at the request of the applicant.
Since these "quality control" reviews would directly benefit the PTO by reducing the number of cases ultimately considered by the Board, there should be no fee to the applicant for requesting the review or for the review itself if it is made an automatic standard procedure.
Regarding the post-brief review, we are concerned that the Board may give undue deference to the opinion of the second reviewer should the results of the review support the primary examiner's rejections. Should the review procedure be implemented, we believe that the Board's consideration of the appeal should be independent of the opinion of the second reviewer and based solely on the application file, the appeal brief, and the reply brief.
Thomas D. Rogerson
Rohm and Haas Company
100 Independence Mall West
Philadelphia, PA 19106-2399