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Gabriel P

Gabriel P. Katona

230 PARK AVENUE, SUITE 2200, NEW YORK 10028 USA

Tel.(212) 986-3377

 

November 23, 1998

 

Box Comments - Patents

Assistant Commissioner for Patents

Washington DC 20231

Sir:

The following comments are submitted in response to the advance notice of proposed rulemaking published in 63 Fed. Reg. 53498 et seq.

The difficulties faced by the USPTO in trying to cope with the problems that are attempted to be remedied by the proposed changes are recognized, however, the impression is that much of the attempt to relieve the burden of the PTO is by transferring that burden instead to the applicants. While on the one hand the few user-friendly measures of the proposal are welcome and will not be further commented on herein, those proposals that would tend further to increase the already heavy financial burden on the applicants, by requiring a greater expenditure of time and effort by their representatives, resulting in an increase in the cost of patenting their inventions. are most strongly opposed.

The present advance rulemaking effort evidences an attempt to deal with the problems on hand without any legislative changes. However, many of the proposed changes involve major changes in patent practice which cannot be fairly dealt with solely by using the Commissioner's rulemaking authority, because the result envisioned by the proposed rulemaking presents a clearly inadequate solution in many instances. Accordingly, the effort should be to aim at establishing the best possible procedure, even if it would involve some minor legislative changes. If such legislative changes can be agreed upon in a cooperative manner with most of the profession and inventors'- organizations (something that is high time for the USPTO to try to do). any noncontroversial or only minimally

 

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controversial result that would be widely endorsed, should have a chance for quick passage.

The following comments recognize that the PTO is in the best position to judge what suits its administrative procedures the best way to achieve its own purposes. Therefore, these comments do not touch upon those features of the proposed rulemaking which do not impose what is viewed as an undue burden on applicants, except where it is believed that alternative solutions would represent less intrusion to applicant interests and still accomplish the plans and goals of the PTO.

We welcome the method of testing of the waters by the advance notice of forthcoming rulemaking proposals, before the positions of those involved had a chance of becoming hardened. Having said this, it is observed, however, that it is considered essential to proceed in such a deliberate and cautious manner, because the features of the proposed rulemaking were apparently not designed to provide, or would fail to provide a balance between administrative necessities and convenience, and the creation of any user-friendly measures.

Prior to discussing some of the proposals, it is observed that a number of the proposed measures would tend to impose broad brush, peremptory, user-unfriendly mandates to deal with rare occurrences. This was observed to have more generally become the new style of PT rulemaking an of procedural changes as of late, and not just in the matter of the current advance rulemaking proposal. A typical earlier example of such ill conceived and peremptory procedures were manifested by the announced PTO practice about the manner of dealing with ambiguous continuation applications which do not make the nature of the filing unequivocally clear, by arbitrarily treating them as applications for continued examination (CPAs). It may be a coincidence, but it appears that this new and unwelcome peremptory PTO style has been coincidental with the establishment of a Special Program Law Office.

The following paragraph numbering refers to the like numbered summary highlights considerately prepared by the PTO. Those of the 21 items that do not require comments, are not specifically referred to herein.

2. The proposed separate surcharges for each item of delayed submission is burdensome and unjustifiably onerous. This most problematic topic, coupled with its manifold considerations involving -the filing procedures for new nonprovisional applications, requires the most detailed discussion of all topics. It is recognized, on the other hand, that multiple occasions of applicant compliance with submissions of missing formal requirements does impose a greater burden on the PTO., Therefore, it is proposed that a late surcharge be imposed on each

 

occasion when one or more missing items are submitted, rather than imposing multiple fees for each missing item, even when they are submitted simultaneously.

The proposal of three measures inappropriately characterized as "userfriendly" is made with apparent sincerity, but they address a problem of the PTO's own making. Had the original and accustomed role of filing receipts been retained by the PTO as indicating the compliance with application formalities, instead of rushing regularly to issue and mail separately to the applicant a multiplicity of erroneous filing receipts for incomplete applications, followed by the issuance of additional, corrected filing receipts, there would not have been any need for the artifact of these "user-friendly" procedures for issuing yet additional corrected filing receipts. Under the current proposal we may find ourselves inundated with a confusing series of multiple, "user-friendly" filing receipts for each application.

The PTO replaced the previous practice of initially issuing a Notice of Missing Parts of an application, after it ascertained that merely the minimum requirements were met for obtaining a filing date. Now the PTO issues and tries promptly to mail to the applicant a first filing receipt, usually containing very few and often erroneous details of the application. In addition to this first filing receipt, the PTO now also issues and mails to the applicant a Notice of Missing Parts and/or a Notice of Omitted Items. After the missing parts were supplied by the applicant, the PTO issues and mails to the applicant a second. updated filing receipt, and possibly third and subsequent filing receipts. This is wasteful, and burdensome and also confusing to applicants.

Instead of the PTO generating this multiplicity of documents, and

mailing each of them separately to the applicant, the PTO should only issue a properly designed Notice of Missing Parts for each provisional and also nonprovisional filing (other than an unambiguous CPA filed under -')7 CFR 1.5'1(d)) wherein that single document can at, the same time serve up to five separate purposes: (1) establishing that the minimum requirements for filing it nonprovisional application have been met and a Serial No. and filing date have been assigned (on the condition of proper later timely compliance with the outstanding requirements), (ii) grants (or denies) an export license for foreign filing, (iii) specifies the missing parts and provides the deadline for their submission, (iv) specifies the omitted items and payments, if any, and if needed (v) requires clarification whether a CPA or a different kind of continuation was intended to bc filed. The advantages of such procedure are manifold. The Notice thus informs the applicant of the filing particulars, quickly enables any foreign filing, and enables a clarification of any ambiguous basis of a refiling instead of the PTO arbitrarily treating it as a CPA.

 

The desirably single filing receipt should be issued only upon the receipt of all of those documents/payments, (and clarifications in the- case of any ambiguous basis for refiling) which should be required to complete the filing formalities for forwarding the application to examination. When the desirable single filing receipt is issued, its issuance makes it clear that all filing formalities have been complied with the possible exception of a later submitted oath or declaration (for applications filed under 35 USC §111 but not under §371).

The proposed delay in submitting the oath or declaration, is a welcome measure if only, because it further loosens the rigidity of formalities requirements. The Notice of Missing parts can specify those later-to-be submitted missing documents, and indicate the possibility of their later submission together with a payment of a further late-submission surcharge.

3. With respect to the procedure of naming of the inventors and the representative's statement in the case of a delayed declaration, the proposed rulemaking should make it explicitly clear that the applicant's representative is entitled for the purpose of the statement to rely on representations made to it by any direct representative of the applicant (e.g. employer's agent or foreign patent agent of foreign applicant).

The PTO should be entitled to a late surcharge for a delayed separate submission of an oath or declaration, and to a further (modest) fee if the inventors are different from those that were initially named. No justification is seen for any yet additional fee, depending on how late the declaration is submitted, unless it is a fee for a time extension to provide relief from a deadline. It would be fair, however, to set a finite deadline for the submission of in oath or declaration up to and until payment of the issue fee.

The proposal for an automatic 1 month deadline after filing for tile submission of the initially required missing parts is burdensome and should not be implemented. This comment applies both to provisional and nonprovisional applications. The setting of a two month deadline for compliance by way of the continued practice of issuing the Notice of Missing Parts is considered to be essential, because compliance (such as translation) can often take more time than the contemplated 1 month, and also because those Notices have a tendency to contain mistakes, and their correction and the lack of responsiveness (not for lack of good intentions) to calls and requests by the initial formalities examining group necessitates the keeping of that time cushion.

It should be kept in mind by PTO officials, especially in connection with any stated aims of the Patent Business Goal to reduce PTO processing time, that this cannot be a blindly followed bureaucratic objective that is viewed in

 

absolute terms without keeping an objective in view . The aim to shorten pendency is an admirable one only if it serves the purposes of the applicant. If, on the other hand, the applicant is not in a hurry, the PTO does not need to be in a hurry either. The abbreviation 'of the pendency of an application is not a goal that has to be accomplished for its own sake of maintaining some kind of self laudatory statistics. It is usually in the interest of applicants to see their applications issue into patents as fast as possible, to enable them to start enforcing their exclusivity. If an applicant is in no hurry to have its application mature into a patent, that should be solely the concern of that applicant. Fortunately the PTO has started to recognize this, as it is also becoming evident from the current deferred prosecution proposal that is further discussed below.

The flexibility of the possibility of delaying the filing of a declaration as is proposed introduces a distinction between the filing date and the 102(e) date only in the case of applications filed under §371, because in that case the applicant has the clear choice to commence the national stage under §11 instead.

A party entitled to an assignment of an application, should not be permitted to grant a new power of attorney until after an assignment and a declaration have been filed, except in the case of when 37 C.F.R, 1.47 applies.

4. The utter lack of logic of this proposal is most puzzling. The PTO acknowledged that more than 95% of the applications filed do not present any problem of undue multiplicity of claims. Therefore, there should be no absolute cap OD the number of claims, especially, since it is considered to be unwise to deal with such a rare problem by broad brush, generalized rulemaking.

There already is a fee-based disincentive to the presentation of a large number of claims. The Notice of Missing Parts form should include a statement (immediately following the space requiring the payment of any in missing fees for extra claims) that the fees for extra claims need not he paid or can be adjusted III not be fully charged pursuant to it preexisting authorization), if the

response to the form includes a cancellation of some of the extra claims. This 'II afford the applicants a possibility of exercising some second thoughts about the large number of initially submitted claims.

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If the number of claims presented for examination remains generally burdensome, consideration should be given to increasing the disincentive, such as by a stepped up second tier of higher fees for e.g. more than 40 claims, and more than 6 independent claims. Since not all dependent claims have to be independently patentable, it could also be foreseen that examiners need not necessarily act on more than the first 40/6, and upon allowability of some of the examined

 

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claims, they will automatically allow the retention of those additional claims that are dependent from already allowed claims.

5. In adopting the PCT drawing standard, it should be made clear that the PTO should not be permitted to object to any drawing that was not objected to by any foreign receiving office or the International Bureau.

The USPTO has lately imposed unreasonable drawing criticisms which go only to the "prettyness" of the drawings, rather than to the clarity of their content. Therefore, it is also suggested that the rulemaking include an internal practice change whereby the examiner as an engineer with average skill in the art who has to understand the drawing should be the one who reviews the drawing for both its content and appearance, and if the drawing clearly communicates that which is intended and required, then no drafting person should be heard to complain about the quality of any lines or reference numerals.

7. Formal drawings should not be required, not even in the case of designs, until the Notice of Allowance has issued. The deadline for the submission of formal drawings should coincide with the -necessary 3 month deadline for paying the issue fee, to avoid the inconvenience of maintaining multiple deadlines, and it would be entirely unreasonable to impose a fee for compliance with the foregoing suggestion which reflects the acceptable current practice. No formal drawings should be required upon the allowabilitv of some claims, because the mere indication of some allowable subject matter does not conclude the prosecution, and does not permit ascertaining the ultimate makeup of the claims, and the drawing that is required to support that.

9. The proposal is agreeable that no requirement should be imposed at all with respect to the submission of citations cited by any patent office or official searching authority, and no requirement should apply to the first 10 citations. With respect to any additional citations it should suffice that the submitting representative certify that on a basis 'that is to be stated (e.g. assurance by the applicant or an indirect representative of the applicant) the additionally submitted references are material to the claimed invention, instead of a certification of having personally reviewed each. No description of the importance of a citation to a claim should be required, because this is considered to present an undue time and cost burden, as well as a practice that could prove dangerous to applicants.

Citation "dumps" again are present only in a small number of applications and should not be dealt with through broad brush rulemaking. Such clearly obvious citation "dumps" of clearly irrelevant matter could be discouraged, such as by making them subject to financial and/or disciplinary sanctions, but first

 

 

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providing applicants an opportunity to present their views of what the PTO initially would have characterized to have been a "dump."

It is not unreasonable to require the submission of a copy of a cited US application, since the applicant is expected to have a copy thereof, while the examiner may have to retrieve it by a complex bureaucratic process from other parts of the PTO.

10. The absolute refusal of accepting subject matter submitted with an IDS is unacceptable, and again represents a broad brush rulemaking proposal to deal with a rare situation. The better way -to deal with unusually burdensome submissions is to establish clear standards, and when these are exceeded by any document, the applicant should be required to provide an edited version which contains the pertinent subject matter. If such an edited version would in the view of the applicant still exceed the volume established by the standard, then a preset fee should be available for acceptance of the larger document.

11. The proposal of the possibility of a deferred prosecution after compliance with all outstanding formality requirements, is particularly welcome, not for the apparently desk-clearing reasons for which the PTO recommended it,, but rather because it is considered to be a socially desirable measure.

Suspension of prosecution should be available at any time during the pendency of the application, and not only prior to first action. This is important not only for enabling a long term deferral of the prosecution, but also if there is any need to suspend prosecution for some shorter period, such as for conducting some experiments or tests.

The proposed practice has some inherent dangers that derive from the possibility of a later broadening of the claims beyond the scope that was originally contemplated to dominate earlier issued patents and/or to cover later technical developments. This has compelled some professionals broadly to oppose a possibility of deferral altogether. In our view that approach represents a crude

and unfocussed approach, instead of a properly aimed manner in meeting a minor problem in connection with an otherwise desirable objective. Accordingly, the better approach should exclude the possibility of broadening the claims of an application in which deferral wits requested (or as can be seen below, no examination has been requested within a certain period), beyond the scope of the claims that were originally filed or on file at the time deferral was requested. The implementation of this practice should be done in a very different manner than it was suggested in the proposed rulemaking.

 

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Legislative authority should be obtained for the most desirable separation of the initial fees into a filing fee and an examination fee. The deadline for requesting examination should be a period of 5 years from filing of a nonprovisional application, the same suitable deferral period that is available in Canada, and is two years shorter than that available in Germany and in Japan. If no examination was requested, an applicant should be required to file within 18 months from filing the nonprovisional application a statement indicating whether the application was filed abroad whether or a PCT or European application was initiated, and provide the filing particulars of such a PCT or European applications. If there was such a filing, nothing further need be done by the PTO to avoid any costly duplications, because the text of all PCT and European applications is already available from the internet (e.g. the official DIPS servers, the IBM patent database, etc,).

If there was no such foreign filing, and only in such event, the PTO should publish the abstract/drawing in the OG, and interested parties should be able to order a copy of the application. No routine publication of any full text should be made. Third parties should be able to request the examination of deferred applications by paying the examination fee, but should not be permitted actively to participate in the examination.

12. The first preliminary amendment should not require any handling fee, however, additional

preliminary amendments could be discouraged by the imposition of such a fee. Examiners should

be agreeable to notifying applicants who requested upon filing of the application that they be

notified before the examiner intends to take up the cast for action, to afford them at least 2 weeks

for the filing of a preliminary, amendment to place the application in better condition for

examination. including, the filing of an information disclosure statement (both of which should

reduce the examiner's burden). In the absence of such a request, applicants should be assessed a fee

if their preliminary amendment filed after 10 months from the filing, date. crosses in the mails with

a first action on the merits.

It would not be unfair to assess a fee for the filing of a supplemental response filed more than I week after the filing of the original response, except in the case of a later filed document, such as a copy of a missing reference or an executed declaration, the later filing of which was foreshadowed in the original response, or a corrected sequence which was required.

13. Except for the overkill involving, correcting a single misspelling on a page to be done as is done now, changes to the disclosure should require the submission of entire pages rather than only full paragraphs (plus partial pages if the added text would overrun the original page). Instead of a marked-up page,

 

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applicants should be required to identify the location(s) of the change(s), and merely explain the reasons for the change, however, a requirement of submitting a copy of marked up amended claims is endorsed, but the marking should be required by way of the traditional bracket/underlining, in addition to a clean copy of the amended claim. The proposed requirement of numbering all paragraphs of the application, is unnecessarily burdensome, especially if every 5th line of the disclosure is numbered, as is customary.

14. The proposed presumptive election proposals is opposed as undesirably intrusive half-measures. The time has come to adopt new tests of unity for US patent applications, and the PTO has for many years avoided to face up to the administrative details of adopting the desirable PCT standard. If the adoption of this "new" standard cannot be achieved within the framework of the current rulemaking effort, then the PTO should pass on this question for the time being. An interim possibility of enabling applicants who desire quick examination, should be able to submit with their newly filed applications voluntary restriction suggestions which the PTO can then implement without recourse to the applicants.

15. It is highly undesirable and most unjustified to establish an extraordinary high fee for making design examination special, especially when the same possibility exists currently under identical circumstances for the cost of a simple petition fee. The statement in the proposed rulemaking that the PTO procedure is too complex for dealing with a petition to make special, contains its answer in that the PTO should make the procedure much simpler, and that should not require any extra effort, or any unusually high fee.

Furthermore, design applications are being examined as of late relatively quickly, and any effort further to accelerate their examination should he an across-the-board effort, rather than a special fee based one.

18. The conducting of an intra-PTO Examining group appeal procedure in all appealed cases is a desirable objective, and should be implemented ;is routine measure. However, it should have practically none of the features of the current rulemaking proposal. It should he conducted within the framework of 11 formal first stage of all appeals in a manner is it is done currently in the German Patent Office. In those proceedings the first stage appeal is a formal review conducted by two senior examiners outside of the art unit of the original examiner, and with the original examiner sitting in. This would be somewhat like an expanded version of the current appeal conference practice which has proven so successful in reducing the number of cases going to the Board. It is yet to he determined whether this should be done on the record in its then current condition, or whether additional briefing should be required or permitted.

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The next stage of the appeal should be to a specialized, independent Patent Board of Appeals and Interferences which should be an organization that is not a part of the PTO. The internal appeal procedure would also serve to expand the horizons and prospects of the more experienced examiners, and also provide a source for future Board judges. The current undue subservience of the Board to the Commissioner was an undesirable feature, because in its current condition the Board is practically an affirming machine for the primary examination stage. Therefore, the elimination of the dependency of the Board from the PTO was a longstanding objective of the profession. This is an opportunity for its implementation by well focussed, specific legislation, using as an example the most satisfactorily functioning German Patent Court (an agency sitting geographically within, but being independent of the German Patent Office).

19. There is no reason for depriving applicants of the possibility of preauthorizing at any time the payment of the issue fee. Any solution of an internal clerical PTO problem lies in better training or streamlining, but not in enacting retrograde measures that deprive applicants from a facility, as long as there are sufficient funds available in an applicants' deposit account.

20. The maintenance of an officially indexed and searched database for defensive publications to prevent the issuance of a patent on a subsequently filed application, is a desirable objective. Its manner of implementation is immaterial, as long as it is subject to as few requirements as possible, so that it can be done on a pro se basis by those who intend to avail themselves of it. A disclosure document should not be available for any other purpose, except for defensive publication purposes. Its use for any other purpose, such as an attempt to use it to prove priority, should be discouraged and not countenanced. This should also eliminate any basis for any prior user legislation, for which no reason would exist.

21. The proposal of encouraging applicant-supplied forms is a misdirected effort to avoid the need for a more radical departure from the status quo. For understandable reasons, one of' the most serious bottlenecks of PTO administration is the training of clerical personnel to deal with the plethora of submission formats which they receive from applicants. In a misplaced emphasis on whit it believed to be user-friendliness the PTO has so far avoided imposing the requirement of the use of standardized forms. The time has come to start using mandatory forms for the handling, of which all personnel can be simply trained, and the completion of which should go a long way of eliminating applicant errors.

However, if the provision of the various forms and other efforts so far by the PTO is an indication, the PTO has not demonstrated an ability to provide

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simple, easy and informative forms for use by applicants. For example, the manner of the form-filling effort required by the aborted "EASY" system, and also to some extent by the new Trademark Electronic Application System (TEAS), would not be suitably user-friendly was of filling out forms, because they do not permit visualization on a video screen substantially of the entire form that is to be completed. The manner in which the interior cover pages of Office actions, and PT1449 forms can be filled out by computer, are the most desirable manner of filling out forms by computer.

The various forms- to be standardized should be cooperatively designed between the PTO and the profession, to avoid the kind of unsuitable forms of the past, such as the form recommended for Rule 153(d) continuations. The forms should be made available to the public on floppy disks and/or from the PTO website, together with 'the simple software required for filling them out and also for preserving paper copies of the completed

Respectfully Submitted,

 

Gabriel P. Katona

United States Patent and Trademark Office
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