These comments are submitted in response to the October 5, 1998 advance notice of proposed rulemaking (63 FR 53498) entitled Changes to Implement Patent Business Goals
Comments on proposed rule changes will be presented in the order in which the proposed changes appear in the advance notice of proposed rulemaking, but not all proposed changes will be addressed.
99999.227 * [NY]521817.1
The undersigned is a partner in the New York intellectual property law firm of Fish & Neave. However, the views expressed herein are solely those of the undersigned, and do not necessarily reflect the views of Fish & Neave.
The undersigned is in favor of the proposed simplified procedures for establishing small entity status, and has no comment on the establishment of separate surcharges for each missing part in a missing parts application, except that the undersigned believes it would be unfair to impose separate missing parts surcharges if the change regarding establishment of small entity status is not implemented. It is the practice of the undersigned when filing patent applications on behalf of small entity clients where the declaration cannot be executed before filing to file the application not only without the signatures of the inventors, but also without the filing fee. The undersigned has adopted this practice because without signatures, the full filing fee would have to be paid, and it is frequently difficult to obtain the required signatures, including the signature on a Small Entity Statement, within the two-month period during which a refund may be sought. If small entity status could be established without a signature at the time of filing, there would be no reason not to pay the filing fee at that time, even though one could not file an executed declaration. However, if the change regarding establishing small entity status is not implemented, it would be necessary either to pay the full filing fee and scramble to get the necessary signatures within two months or to omit the filing fee and incur an additional surcharge. Therefore, the undersigned views these two proposals as linked; one should not be adopted without the other.
The undersigned is very troubled by the proposed limitation of the number of claims to be examined in an application. The law clearly entitles applicants to claims of varying scope. In complex cases, an invention may, e.g., warrant method claims, apparatus claims and claims to some subcombination of the apparatus. In each of these categories, the applicant is entitled to claims of varying scope. It could be difficult in such a case to stay within the proposed forty-claim limit. Although the applicant could still file continuations directed to any unexamined claims, or could simply file multiple cases simultaneously, each with forty or fewer claims, such an applicant would be giving up substantive rights granted by the Patent Statutes. Specifically, under 35 U.S.C. _ 121, if an Examiner issues a restriction requirement and the applicant files a divisional application as a result, the parent application cannot be used as prior art against the division. If that same applicant files a number of continuations (or voluntary divisions) not necessitated by a restriction requirement but merely by the refusal to examine more than an arbitrarily selected maximum number of claims, or if the applicant simply filed multiple simultaneous applications in the first instance, the applicant would not have the protection of 35 U.S.C. _ 121 and would be subject to obviousness-type double patenting rejections requiring the filing of terminal disclaimers. Although the term of the resulting patents would not be affected (patents granted on all of the applications would in any event expire 20 years from the earliest filing date), the patenteeÂ’s rights would still be limited by the requirement that common ownership be maintained. In the view of the undersigned, in a choice between substantive rights and politically-inspired "business goals" (while it is admirable for government agencies to learn from the efficiencies of the private sector, they are NOT businesses and patent applicants are NOT "customers"), substantive rights win every time. Contrary to the assertion at 63 FR 53507, the proposed limit does do violence to due process.
With regard to the submission of certain voluminous materials in electronic form, the undersigned calls to the attention of the Patent and Trademark Office ("PTO") the fact that NASA currently stores large amounts of data from early space missions (manned and unmanned), which no one ever got around to examining, on electronic media that can no longer be read because (1) the media themselves have decayed, and (2) the hardware and/or software necessary to read the media no longer exist. While the requirement for archival media should take care of the first issue, there are no guarantees that if there is litigation in, say, the 15 th year of a patent term, the necessary hardware and software will still exist to allow the parties to read the electronic media. (These problems also impact the electronic filing issue.)
The undersigned is not moved by the description of application file folders that are falling apart because of the volume of material in them, or the fact that Examiners need carts to move application files around. Without meaning to be disrespectful or cavalier, the undersigned believes that these are not applicantsÂ’ problems; they are the PTOÂ’s problems. If new filing systems are needed, they should be obtained. If the age-old practice of having only one folder per application must be abandoned, so be it. The undersignedÂ’s office has long since abandoned that practice.
While the undersigned does not believe that electronic submissions should be prohibited, he also believes that the paper option must remain.
The undersignedÂ’s biggest concern with the proposed rulemaking relates to the proposed changes in Information Disclosure Statement practice. The PTO refers to applicants who do not want to spend the time to "weed" documents. While it is true that the proposal would greatly raise the fees that applicants will pay to their attorneys or agents, the undersignedÂ’s concern is that the PTO does not have an adequate appreciation of the nature of patent litigation to understand the dangers in attempting to perform the "weeding." With rare exceptions in the undersignedÂ’s experience, documents do not come to an applicantÂ’s attention randomly, but rather as a citation by a foreign patent office or as the result of a search commissioned by applicant, or they are cited by third-parties trying to avoid paying royalties to the applicant by attempting to invalidate applicantÂ’s claims. If any such documents are not cited, an opponent in later litigation will say "The document was considered sufficiently relevant to cite by the foreign patent office or by your own searcher. How can you say you decided it was not relevant?" Even worse charges would be levelled where references cited by third parties are not cited. And woe to the applicant, or attorney or agent, who in attempting to perform the "weeding" that the PTO says should be performed innocently misses something relevant in a reference and deems the reference unworthy of citation. Not only might the applicantÂ’s patent be adjudged unenforceable, subjecting the attorney or agent (if there was one) to malpractice liability, but the attorney or agent could be adjudged a fraud and be subject to disciplinary action. The PTO proposal addresses some of this by allowing submission of English-language search reports or official actions (a certified translation of a foreign-language search report or official action should also be deemed sufficient, as should a search report that is in a foreign language but is written in the International format, so that it can be understood despite its being in a foreign language). Nevertheless, the proposal places unacceptable burdens and risks on applicants and their representatives. A better solution, again, would be to charge a fee for each reference for which an explanation of relevance is required (the proposed exceptions should be retained) but not provided. This would provide the resources to hire sufficient Examiners to allow Examiners to take the time to review the submitted references without affecting "cycle time."
With regard to deferral of examination, the undersigned believes that an application whose examination is deferred should not be published immediately, but only when it otherwise would have issued (on average) -- e.g., after 18*months from the filing date. The PTO recognizes certain reasons why deferred examination might be desirable, such as to give the applicant time to line up investors before committing to examination. However, giving applicant 18*months (or some other period) to secure investment before publication would be better. While the PTO is concerned that the publication may chill the efforts of others who see that someone may ultimately receive a patent in the field, the undersigned believes that, on the contrary, those others will feel free to use the published invention, knowing that the issuance of any patent has been deferred (this would be apparent from the fact of publication). One solution to this problem might be provisional protection for the published invention. However, the PTO does not have the power to confer provisional protection. Moreover, even if provisional protection were available, such protection if modelled on the system in most foreign countries could not be exercised until the patent actually issues. In such a system, the potential infringer might consider the risk of having to pay back-damages in the future, assuming that a patent ultimately issues, to be acceptable. Therefore, rather than deterring others in the field, publication of the application too early will deter investors.
With regard to the review service for applicant-created forms, the undersigned would welcome such a service. The undersignedÂ’s firm uses its own forms because the forms available from the PTO cannot be filled in electronically. Even forms downloaded electronically from the Internet must be printed in blank and then filled in on a typewriter. The undersigned would welcome PTO review of the firmÂ’s forms.
Jeffrey H. Ingerman
Reg. No. 31,069
Fish & Neave
1251 Avenue of the Americas
New York, New York 10020-1104