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Comments re "Patent Business Goals" proposed rule changes

regreform@uspto.gov



Comments re "Patent Business Goals" proposed rule changes:




  • Simplified request for small entity status by the mere submission of an assertion or by the paying of a small entity fee would be a good idea and would relieve some of the burden and cost of filing a Patent Application from a small entity.
  • Requiring a separate surcharge for the submission of each "missing part item" would probably no place a burden on a small entity if it was coupled with the simplified small entity status change. Otherwise, a full large entity fee would be required to avoid double surcharges since, typically, if there is not time to get the declaration signed, there is also not time to get a proper small entity statement signed as well.
  • Permitting delayed submission of a declaration until after a notice of allowance is received would be a good idea, and would obviate many of the problems associated with proposal 2.
  • There should be no need to limiting the number of claims in any one Patent application since the PTO already charges a substantial surcharge for each additional claim. The more sensible procedure would be to give the Examiners more time to process those applications with a large number of claims, again any additional cost to the PTO should be covered by the additional claim fees. The PTO's own statistics, which show that 95% of the applications contain fewer than 40 claims argues against implementation of this rule change - i.e. how large a burden can it be on the PTO to examiner the few applications which contain more than 40 claims, particularly since they are already paid for.
  • I don't know what it means to "Amend 37 CFR 1.84 to be more similar to PCT Rule 11.13". If the only change is to allow black and white photos instead of drawings, then it is a good idea, and could save applicant's a considerable amount of money, but that can be done by simply adding that element to existing Rule 84. If the idea is to require submission of drawings on A4 sized paper, then this is a mistake and will cause a lot of confusion just as did the change away from 8.5" x 14" paper.
  • Allowing the submission of black and white or color photographs as drawings and the printing of color patents, where needed, even for an additional fee, is a good idea and can save applicants money on the petition fee and can avoid the expense of preparing formal drawings in some cases.
  • Reducing the time for filing formal drawings from 3 months from Notice of Allowance to 1 month would place a burden of law firms and applicants alike. It is difficult to see how this step will speed up the PTO's "cycle time". Furthermore, the requirement to submit formal drawings in response to any indication of allowable subject matter is a terrible idea. Quite often, an indication of allowable subject matter accompanies a rejection of substantially all of the pending claims in an application and would result in issuance of a very narrow patent, which an applicant may not wish to pursue. Requiring formal drawings in order to respond to such an office action places an undue financial burden on a small entity.
  • No Comment.
  • Requiring limits on Information Disclosure Statement submissions is an understandable goal of the PTO but, of course, shifts the burden to the applicant from the PTO. There should be no problem with requiring submission of copies of cited U.S. applications nor should there be a problem requiring the statement that a registered practitioner has reviewed the material and it is appropriate to submit. However, the requirement to specifically relate each submitted piece of prior art to "each of the independent claims, or specific dependent claims, in a meaningful way" is a recipe for disaster. The PTO is asking the practitioner to do the Patent examiner's job in what is essentially an adversarial relationship. A court might as well require a plaintiff to establish a defense for the Defendant. Furthermore, this is just the type of "Have you stopped beating your wife" requirement, but more specific, that got the rules for IDS submission changed away from specific citations before. A practitioner is placed in a position between a rock and a hard place - If he states that a reference applies only to certain claims, and it turns out to be applied to others, can he be accused of misrepresentation or concealment? If the submission of prior art statements is such a burden on the PTO, why not institute a small charge for each document over 10, or 20, for example, so that the examiner can properly consider them and the PTO can be compensated for his time?
  • Here the PTO wants to have its cake and eat it too. If proposal 9 is implemented, causing a huge financial and time burden on applicants and practitioners, then the PTO can simply refuse to consider the IDS, even with all requirements met. What a subjective rule i.e. what is "unduly burdensome" to examiners will vary considerably!
  • This appears to be a first step toward mandatory publication of the application at 18 months. Particularly problematic in the proposal is the publication of a "representative claim" and the total waiver of confidentiality.
  • Requiring a "handling fee" (of what amount?) for preliminary amendments and supplemental amendments is simply a revenue generating move for the PTO. If the goal is to prevent such amendments from crossing actions in the mail, why not limit the time that such a response is guaranteed to be considered to, e.g. 3 months from filing or to one month from the initial response.
  • No comment.
  • Providing for "Presumptive Elections" in restriction practice is a terrible idea. The restriction procedure is already abused by some examiners and to make presumptive election purely the province of the Patent Examiner takes away significant rights from the applicant.
  • The $900 fee for a "Rocket Docket" for design applications is excessive. If the PTO cannot timely examine design applications for the current fee, then that fee should be reexamined and more examiners hired. Again, this appears to be a revenue plan for the PTO and is not related whatsoever to the stated goals of reducing PTO average cycle time.
  • By requiring applicants to identify "all occurrences of broadened reissue claims", the PTO is again asking the applicant to pay the practitioner to do the job of the Patent Examiner. There will be instances where a factual or legal question exists as to whether a claim is broadened in any particular, and it is the PTO which should be the fact finder and judicial authority, not the applicant. This, again, appears to be the PTO reducing its "cycle time" by shifting its duties to the applicant.
  • No comment.
  • Without knowing who the "at least one other PTO official" is, it is difficult to comment on this proposal. The Board of Appeals and Interferences is presumably made up of qualified, legally trained reviewers who will give a fairly consistent review. By simply selecting an SPE in the particular or related art area or a "Quality Review Examiner", no consistency can be expected in this initial review process.
  • No comment.
  • No comment.
  • If all forms to be used by a practitioner would be required to be reviewed, then this is a terrible idea. If it is purely optional, then I see no harm in it, except that these bureaucratic procedures tend to become required once the bureaucracy is in place.





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Last Modified: 7/16/2009 10:46:32 AM