MALLINCKRODT

MALLINCKRODT
1998 October 21

VIA FAX: 703 308-6916

Attention: Hiram H. Bernstein
Re: PTO Advance Notice on Planned Rule Chances

In

53498

Changes to Implement the Patent Business Goals

COMMENTS ON THE PROPOSED RULE CIFLANGES:

1998 October 21

VIA FAX: 703 308-6916

Attention: Hiram H. Bernstein

Re: PTO Advance Notice on Planned Rule Changes 53498

Changes to Implement the Patent Business Goals

COMMENTS ON THE PROPOSED RULE CHANGES:

Item 4, Limiting the number of claims in an application .

I support limiting the number of claims, provided that the limit is reasonable. One way to ensure that a limit of 6 independent and 40 total claims is reasonable, would be to take the European approach to multiple dependent claims. Specifically, (a) no surcharge, (b) allow a multiple dependent claim to refer to another multiple dependent claim, and (c) count each multiple dependent claim as a single claim. This would also ease the burden on the public in evaluating infringement risks.

Rather than requiring an applicant to file a separate application for excess claims, it would be better to require the applicant to pay, a second application fee and keep all of the claims in one application, resulting 'in the issuance of one patent. The present restriction practice already puts enough of a burden on the public because it results in multiple patents on a single inventive concept. We do not need even more patents for a single invention.

1998 October 21

page 2

Combined Comment.

Item 1 1: No cause suspension of action
Item 15: Rocked docket for design applications.

It is an embarrassment to the US, that all US applications are not published at 18 months. The burden on the public is immeasurable, in that someone making business decisions does not know what applications may be pending in the USPTO. This encourages business to locate manufacturing facilities outside the US where they can be more certain of patents that may issue.

I propose that a rocket docket be available to both design and utility applicants, and that all applications be published at 18 months from the earliest priority date. For an original application with a priority claim, the rocket docket should allow at least the first, and preferably the second office action to arrive in time for the applicant to review the office action and withdraw the application (without publication) if desired.

Item13:Changing amendment practice to replacement by paragraphs/claims.

This proposal sounds like a very good idea. However, I have one suggestion. If the office requires that paragraphs, headings, and tables be numbered, this, will require US applications to be separately prepared. Applicants would not be able to use applications prepared for any other country. There should be no problem allowing, applicants to continue to use page numbering and line numbering. An amendment to a paragraph could refer to the pace and line numbers, e.g.: " The paragraph beginning, on page 7, line 18......"

Item 9: Eliminating preauthorization of payment of the issue fee.

Rather - than eliminate this procedure, modify it. Specifically, the rule should specify that any authorization to pay the issue fee, which is submitted in advance of the notice of allowance, will be treated as authorizing the payment of the issue fee on the last possible day for paying the fee without surcharge. This would

1998 October 21

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eliminate 95% of the problems listed in the proposal. The current proposal will result in abandoned applications when for various reasons an issue fee is not paid on time.

 

Yours,

Jeffrey S. Boone, J.D.

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