Brief comments on proposed rule changes
Comments on proposal 2 - requiring separate surcharges for late payment of filing fee, late filing of declaration
I am against this proposal. The comments from the PTO state that "The cost for processing these missing parts applications has increased", but there is no evidence that the cost has doubled, and a doubling could be the only justification for charging $260 for what is now done for $130. If it indeed requires less work for the PTO to process a late declaration than to process both a late declaration and a late filing fee, then the PTO should charge a late fee of only $65 for each one, since both are now processed for $130. Given that the assignments branch can process an assignment for $40, the proposed charge of $130 for processing a late declaration does not appear reasonable.
Comments on Proposal 3 - Doing away with Notice to File Missing Parts
Doing away with the practice of sending Notices to File Missing Parts is a trap for the unwary. Certain items are on occasion inadvertently omitted from an application. A Notice to File Missing Parts is extremely valuable to the applicant, especially to the inexperienced one, to make sure that all the required items have been submitted. A Notice to File Missing Parts should be sent in all instances in which the filing fee is less than the required amount.
Comments on Proposal 4 - Limiting the number of claims in an application
I am against this proposal and am unconvinced by the PTO's arguments. The PTO argues without proof that the 5% of applications with the largest number of claims "impose a severe burden". Applicants with a larger number of claims pay a higher filing fee, and the PTO has not shown that the work required by the PTO in processing such applications is out of proportion to the fees paid by the applicant.
The presence of more than 6 independent claims in an application is not necessarily a burden on an Examiner; since an Examiner has broad latitude to narrow the focus of an application by issuing restriction requirements, an Examiner can ensure that all the independent claims are closely related in subject matter. The presence of more than 40 total claims is also not necessarily a burden on an Examiner, especially when an applicant adds dependent claims which depend from a claim which has already been allowed.
It is not clear how limiting the number of claims which will be examined in a single application will result in better use of PTO resources. If an applicant wishes to obtain 7 independent claims on an invention, under the proposed rules, he would be required to file 2 separate applications, even if the claims are so closely related as to be incapable of being divided by a restriction requirement. Having the PTO examine two applications instead of one brings in more income to the PTO, but it does not better use resources.
Permitting an applicant to add as many dependent claims as he likes to depend from an allowed claim results in better use of PTO resources, since it will decrease the likelihood of an applicant seeking a reissue in the event his independent claims turn out to be invalid.
If the PTO needs to encourage applicants to submit fewer claims, it should do so by increasing the surcharge for extra claims, not by setting an upper limit on the number of claims. Applicants could live with some limit on the number of claims which an examiner will initially consider, but a limit on the number of dependent claims which an applicant can add once an independent claim has been allowed would be counterproductive and disadvantageous to the applicant.
Comments on Proposal 5 - Harmonizing standards for patent drawings
I see no harm in harmonizing the drawings standards in 37 CFR 1.84 to more resemble PCT drawing requirements, but I doubt whether doing so will reduce complaints about drawings which are acceptable for the PCT being objected to the US. Drawing examiners for PCT applications are much more lax in their standards than drawing examiners for US patent applications; a comparison for US patents with foreign patents will show that the overall quality is much higher in the US, due to strict requirements on line quality. Approving any drawing in the US that has been approved for a PCT application will result in a decrease in the quality of US patent drawings.
Comments on proposal 7 - reducing time for filing corrected or formal drawings
As a practical matter, a one-month period for submitting formal drawings is not reasonable. Preparing formal drawings is extremely labor intensive, both on the part of the draftsman and on the part of the applicant's representative, who must extensively review the formal drawings for accuracy. Applicants may need time to consider whether they wish for an allowed application to issue - one month from the Notice of Allowability is insufficient time for an attorney to notify his client of the allowance, give the client time to deliberate, receive the client's instructions, and then obtain formal drawings from the draftsman, particularly when the client is overseas. The current three-month period for filing new drawings is just about right.
Comments on proposals 9 and 10 - imposing limits on information disclosure statements
I have no problem with the proposal to require applicants to submit copies of pending US patent applications as part of an IDS. However, the other proposed changes to 37 CFR 1.98 would be a nightmare to applicants.
The changes to the rules covering IDS submission made in March, 1992 were on the whole a great blessing to applicants since they took the guesswork out of submitting an IDS. An applicant no longer had to go through the laborious task of writing a description of each reference, and he no longer had to worry about being later challenged for not saying enough about the relevance of a reference. The duty of disclosure before the USPTO is more burdensome than in any other country. The relief provided to the applicant by the 1992 rule changes were highly welcome and highly deserved.
The rule changes now being proposed are onerous, to say the least. According to the proposed rules, an applicant would have to compare each reference (after the first ten references) with each independent claim. If an applicant cited 10 extra references and his application had 6 independent claims, he would have to write 60 descriptions comparing the references with the claims. Preparing an IDS could easily cost the applicant thousands of dollars in attorney time, with no guarantee that the IDS would later be challenged for inadequacy.
The proposal to permit an examiner to refuse consideration of an IDS turns the submission of an IDS into a game of chance. The proposed rule changes do not set forth clear criteria of whether an IDS is acceptable or not, and they do not permit the applicant to remedy the IDS without penalty. For example, if the applicant submits an IDS prior to the first Official Action and the Examiner, in the first Official Action, notifies the applicant that the IDS (by the arbitrary standard permitted the Examiner) is noncomplying, the applicant can only remedy the IDS by paying a fee, since the new IDS will be submitted after the first Official Action. This is highly unfair to the applicant.
Comments on proposal 12 - handling fee for preliminary amendments and supplemental replies
A surcharge for preliminary amendments and supplemental replies filed after a certain date might be reasonable, but the proposed grace period of one-month is far too short. It does not take into consideration the realities of filing applications, particularly from overseas, which are frequently received by attorneys only just before the filing date. A grace period of at least two months is vital.
Comments on proposal 13 - changing amendment practice
The proposal to require replacement paragraphs or claims is in general acceptable. However, if applicants are required to number each paragraph of the specification, they should be allowed to number them in any manner (by hand, by typewriter, etc) since not all word processing programs are capable of numbering paragraphs.
I suggest avoiding requiring replacement pages (as opposed to replacement paragraphs). According to patent firms in Europe, it can be extremely tedious to prepare amendments involving replacement pages.
Comments on proposal 18 - alternative review procedures
This proposal appears to be an effort to have the applicant pay for quality control within the PTO. Shouldn't the SPE's already be exercising oversight on the quality of rejections? Applicants should not have to pay extra to ensure that examiners make proper rejections. I would never counsel a client to employ the proposed review procedure.