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Hiram H

December 4, 1998

Dear Mr. Bernstein:

This letter is in response to the proposed "Changes to Implement the Patent Business Goals" in Proposed Rules, 63 FR 192 (October 5, 1998). Of particular concern is proposed item number 7, "Reducing time for filing corrected or formal drawings."

As proposed, this change would place an undue burden on applicants without significantly expediting the processing of patent applications. A small extension of the proposed time limit, however, would allow a reasonable time for response and still significantly shorten the time required to close the application.

I urge you to consider allowing a time period of two months, or at least six weeks, after the Notice of Allowability for the applicant to provide formal drawings.

The PTO has proposed one of two possible changes: either (1) requiring submission of formal drawings within a month of a Notice of Allowability or (2) requiring that formal drawings and corrected drawings be made during prosecution in response to indications of allowable subject matter. The second proposal introduces unnecessary complexity to the prosecution of patent applications. With the suggested modification, however, the first proposal would be an effective and positive change to the current procedure. Both proposals are discussed in more detail below.

Reducing the allowed time for submitting formal drawings from the current three months would expedite the closure of allowed applications. The proposed one-month time limit, however, is far too brief. Many applicants understandably prefer not to undergo the expense of making formal drawings until the PTO has indicated an allowance of the patent. Thus, formal drawings are often not prepared before the Notice of Allowability is received. In general, preparing formal drawings then requires a significant amount of time for communication between the involved parties. Some time is lost while the Notice of Allowability is being mailed to the applicant, while informal drawings are sent to a draftsperson, while the draftsperson completes other work before addressing the latest drawings, and while the formal drawings are returned to the applicant. The time required for all these steps can reasonably take two or three weeks. Under the proposed changes, these considerations would often leave only one week for the draftsperson to prepare the actual drawings and for the applicant or attorneys and agents to take care of the associated paperwork.

This is an unreasonably short time for response. It will often be exceeded, leading to increased costs for applicants and no real reduction of processing time for the PTO. In contrast, a two-month time limit would be a reasonable amount of time for the necessary communications and for the actual preparation of formal drawings. A two-month time limit would also lead to a significant reduction of the processing time within the PTO, thereby contributing to one of the PTO's Patent Business Goals.

Regarding the alternate proposal, of requiring formal drawings after an examiner has indicated allowable material, this policy would lead in many cases to a premature preparation of the formal drawings. In some applications drawings undergo revisions and changes during patent prosecution, as examiners occasionally require modifications to drawings and the submission of additional drawings. In these cases, the early preparation of formal drawings is a wasted expenditure for the applicant, and the presence of several versions of the formal drawings can cause unnecessary confusion. The right time for requiring submission of formal drawings is after allowance, when it is clear that no further modification of the drawings will be required by the examiner.

I most strongly recommend that formal drawings not be required before the Notice of Allowability is issued. Requiring the submission of formal drawings within two months after the Notice of Allowability would be a reasonable and effective measure for realizing the PTO's stated goals.

Sincerely yours,

Cyrus Bharucha

Patent Agent

USPTO Registration No. 42,324

United States Patent and Trademark Office
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