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11/12/1998 13:23 8067655530 WENDELL COFFEE PAGE 02

11/12/1998 13:23 8067655530 WENDELL COFFEE

JERRY C RAY
SHERMAN, TX
OF COUNSEL

WENDELL OFFEE
ATTORNEY AT LAW
POST OPPICE BOX 3726
LUBBOCK. TX 79452
7ELEPHONS Mn63-9251
TELEFAX 806/765-353o
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Box Comments-Patents

ATTENTION: Hiram H. Bernstein

Assistant Commissioner for Patents

Washington, D.C. 20231

FAX Number: 1-703-308-6916

Re: Changes to Implement Patent Business Goals,

Docket No.: 980826226-8226-01 or RIN065-AA98

Assistant Commissioner for Patents:

  • This comment concerns item number 20 Reevaluating the Disclosure Document Program.
    I favor the continuing use of the Disclosure Document Program.
    Replying to questions as solicited:
  • #1 Factual Evidence of Meaningful Benefit and Value. for Disclosure Documents.

  • The only factual evidence is covered in response to question 3. Although I believe that the Disclosure Document provides great value, I have little factual evidence. I have observed great value.

    I have been a solo practitioner of patent law for over 40 years and have been using Disclosure Documents extensively for clients since 1969. Normally, I endeavor to file a Di3closure Document each and every time an invention is disclosed to me.
  • To protect myself from any subsequent accusations that I mishandled an invention, I will not receive the disclosure of an invention unless the inventor agrees to pay a modest fee. Once the inventor has disclosed the invention, I write a Disclosure Document, which I sign myself in the name of the inventor and file it for $10.00. When the Disclosure Document is returned to me, I forward it to the inventor giving him the information that I have acknowledged him as the inventor and have made a record on it.

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    11/12/199B 13:23 8067655530 WENDELL COFFEE PAGE 03

    Many inventors, even in 1998, report to me that they mail letters to themselves, which are unopened.

    The Disclosure Document Program also gives the inventor a justified sense of security, at least there is some record that he had knowledge of the invention as of the date of the Disclosure Document. I sometimes attempt to explain to the inventor that it does not prove that he made the invention but m rely that he had knowledge thereof.

    Every time a search is made by a search firm in Washington, D.C., I make a copy of the information sent to the search firm and file it as a Disclosure Document.

    #2 The Disclosure Document creates a worthwhile sense of security for me and for the client In my belief, the manufacturing companies that I represent have no records to be able to verify the dates of invention. The independent inventor definitely has no records. I firmly believe that the majority of my clients are unable to show any proof whatsoever of the date of invention prior to the making of a working model or prior to the date they disclose the invention to me. I do not know more than one out of every 500 of my clients that have a systematic recordation of inventions.

    #3 1 know of one instance where the Disclosure Document was successfully relied upon in an Interference Proceeding. In the early days of the Disclosure Document, a person filed an Interference against my client's application claiming that they were the first inventor and gave the date of when they disclosed the invention to my client. They also listed he date that they alleged they had made the invention. I Obtained a Certified copy of my client's Disclosure Document, which had been filed before the alleged date of invention by the junior party of the Interference. The Interference was dropped at that time. Regrettably, this all happened over 25 years ago and I forget the name of my own clients as well as the Interference. However, in this case i t was extremely valuable saving . both my client and the Patent Off ice considerable expense.

    #4 The Disclosure Document does address a need, which is not provided for by a Provisional Application. The Disclosure Document requires only $10.00 to file compared to $75.00 for the Provisional Application. Also, from my stand point I must get the inventor to sign a Small Entity Statement for the Provisional Application. On Disclosure Documents I sign them myself in the name of the inventor and do not have to get a Small Entity Statement. if the change were made in the Provisional Patent Application that the attorney signing the Provisional Application for the client could also represent that by that same signature that the client was entitled to Small Entity Status this would be of some benefit and to reduce the advantage otherwise held.

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    11/12/199B 13:23 8067655530 WENDELL COFFEE PAGE 04

    #5 Improvement of the Disclosure Document Program. I have many times, in recent years, not requested the retention of the Disclosure Document. The main reason for this iii that I put it in the Patent Application, I bend an additional letter with a copy to be returned as provided in MOPEP 1706 to acknowledge that the Disclosure Document has been transferred. I cannot remember having ever received a single verification that the Disclosure Document was retained when it was requested. This requirement that the applicant be notified that the Disclosure Document: was retained has been uniformly disregarded.

    I suspect that the request for retention if the Disclosure Document usually is not forwarded to the Disclosure Document Branch. I suspect that more than 0.5t Df the requests, for the retention of Disclosure Documents are made.

    I suggest that the retention of the Disclosure Document be available by addressing a letter to the Disclosure Document Box of the Patent office and the statement by the-attorney that a properly identified application had been filed, together %pith a $10.00 fee. The Disclosure Document Division could, report-- back that the Disclosure Document had been retained. It would be worth an additional $10-00 fee if I could get a verification from the Patent Office that the Disclosure Document had been retained.

    #6 1 know of many ways that invention development firms have misled and deceived inventors, however, 11 do not know of a single instance where an invention development firm misled an inventor concerning Disclosure Documents.

    Conclusion The Disclosure Document Program LS Worthwhile and worth retaining. A simple method of verification that requests for retention are executed is needed.

    Respectfully submitted,

    Wendell Coffee

    (Reg. No. l8, 482)

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