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Comments on left “Changes To Implement the Patent Office Business Goalsright ”

Submitted in response to PTO Advanced Notice on Planned Rule Changes

Dr. Lee A. Hollaar is a registered patent agent and a professor of computer science at the University of Utah, where he teaches courses in computer networking and intellectual property law. During the 1996-97 academic year, he was a visiting scholar at the Court of Appeals for the Federal Circuit and a committee fellow with the Senate Committee on the Judiciary’s intellectual property unit. The views expressed here are his own.

Regarding Topics 4, 9, and 10:

The proposed changes don’t address the root causes of the problems faced by PTO in the areas being addressed, and may result in unanticipated problems that are at best different and possibly worse. The problems cited are not due to excessive claims or disclosures per se, but the inability to handle such claims and disclosures under the current application fee structure and examiner performance measures.

The PTO should recognize that the problems are caused by the "one size fits all" fee for applications, and propose a fee system to Congress that recognizes that examining some applications is more difficult and time-consuming than examining others. While I don’t suggest a fee structure that would be based on the time spent by the examiner, since that would encourage working very long on a only a few cases, examiner time can be approximated by application length, number of pages in information disclosures, or even surcharges for particular arts. Fees based on the number of claims can also be based on a sliding scale, much like that for extensions of time, rather than having the fiftieth independent claim cost the same as the fourth.

Any such system should also result in a modification to the scoring system for examiners, to give them credit for spending the time reading and understanding complex applications and any information disclosures. It has been said that the measure determines the system, and it should not be surprising that examiners do not want to take the time to review long applications, excessive claims, or document disclosures that bury them in paper when they receive the same credit as for examining a simple application.

Regarding Topic 8:

The PTO should definitely permit the submission of voluminous material electronically. Technologies such as user-recordable CD-ROMs are far better for submitting things like program listings. It is becoming more and more difficult to find places that can produce microfiche for submission.

Because electronic submissions can be searched by the examiner, they can also simplify his or her work during the prosecution of the application. PTO should also consider permitting the electronic submission of other material, such as prior art patents and other publications, in electronic form when accompanied by the appropriate information disclosure statement.

But care needs to be taken to assure that the material that is submitted electronically can be read at least for the term of the patent.

Regarding Topic 9:

While I favor having the person submitting the IDS certify that he or she has reviewed the material and has determined that it is relevant, I strongly object to the proposed requirement that he or she have to uniquely describe each reference. If an applicant overstates what a reference teaches, the examiner will most likely consider that an admission of prior art, while if an applicant understates what a reference teaches, the validity of the patent will likely be questioned in any litigation for inequitable conduct during its prosecution.

Moreover, since the proposed rule requires describing each reference in light of the claims, would it be necessary to revise each IDS whenever the claims are changed by amendment?

Perhaps a reasonable compromise would be to require pointing out sections of particular applicability to the claimed invention for each reference.

Regarding Topic 13:

While the proposed approach is better than the current practice of handwritten amendments to the original application, there is a far better way of solving the problem. It is likely today that the vast majority of applications are prepared using word processing systems, most likely either WordPerfect, Microsoft Word, or some other program that can format its files like one of those two programs. In a revised application fee structure, PTO should either give a discount for applicants who submit their applications in machine-readable form or have a surcharge for non-electronic submissions.

Not only would submission in electronic form solve the problem with amendments, but it will allow the examiner to search long applications for specific material and eliminate the errors and delay caused by having to convert the applications using OCR to electronic form for printing.

PTO needs to be more aggressive in using electronic filing, not only for applications but also for amendments and other responses from applicants. It is only then that the prosecution history for an application can be available online for those who need to interpret the claims of an issued patent.

Regarding Topic 18:

I find it unconscionable that the PTO doesn’t review matters on appeal to the Board to see if they have a defensible position. The Solicitor’s office should have to sign off on any appeal, indicating that its something they would support before the Federal Circuit. One shouldn’t have to pay a special fee for that. If you feel that the appeals fee is too low to cover such an independent review of the examiner’s position, you should raise the appeals fee.

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Last Modified: 7/4/2009 4:52:24 PM