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Advance Notice of Proposed Rulemaking (ANPR) Changes to Implement the Patent Business Goals

Advance Notice of Proposed Rulemaking (ANPR) Changes to Implement the Patent Business Goals - October 5, 1998

RESPONSE

by

Kevin Mark Klughart, Ph.D., P.E.

Registered Patent Agent, USPTO

 

1. Simplifying request for small entity status (37 CFR 1.27).

I feel that the payment of the fee should NOT be the indicia of whether the inventor has asserted small entity status. Rather, what should occur is an inclusion of a CHECK BOX on the provisional or non-provisional application indicating that the application is to be assumed to qualify for the small entity status. This permits applications filed with excessive checks or with deposit accounts to still support small entity inventors without the PTO having to deal with the fee. The fee is a separate issue from the qualification for small entity status, since the fee is not required to obtain a filing date.

Especially for provisional applications, the requirement of a small entity statement has made no sense, because the PTO never reviews these applications, but merely files them for later reference. Are we to assume that the PTO incurs even the $75 cost for filing a provisional application when it does essentially the same work in filing document disclosures for $10. I don't think so, and to continue the requirement for small entity status for provisional applications is not warranted. In short, small entity status should be declarable by check box on provisional and non-provisional applications, then confirmed with the utility application or after the first office action.

2. Requiring separate surcharges and supplying filing receipts (37 CFR 1.53).

It is pretty clear that this move by the PTO is not designed to help inventors, but rather raise fees by imposing a $260 penalty on fee omissions by the applicant. Individual inventors, already confused by the system, will no doubt be further confused by this procedure. In other words, does it make sense to charge an individual inventor 2/3rds of the amount of his filing fee as a penalty for missing paperwork? I don't think so. The initial filing fees are already too high for many pro-se inventors to compete in the patent arena, and this penalty for formalistic errors only raises the bar, preventing many from pursuing patent protection for their inventions.

3. Permitting delayed submission of an oath or declaration, and changing the time period for submission of the basic filing fee and English translation (37 CFR 1.52, 1.53).

This change seems warranted, in view of the need to delay as much as possible the formalistic requirements for patent application and concentrate on enabling the inventor to make full disclosure at the earliest possible time. This is really a public policy issue. The whole purpose behind the patent system is to encourage invention and full disclosure by inventors at the earliest possible time. By delaying the requirements for oath and declaration, this permits concentration on generating the disclosure, and not in rounding up applicants to sign oaths and the such. In many cases, I have personally had to delay the application for patent for several inventions because of problems in rounding up all the inventors to sign the paperwork. This whole bar should be removed and added as a formality at the end of the process, probably after notice of allowance.

4. Limiting the number of claims in an application (37 CFR 1.75).

THIS IS ABSOLUTELY THE WORST IDEA I HAVE EVER HEARD OF, ESPECIALLY IN LIGHT OF RECENT COURT DECISIONS ENCOURAGING RIGOROUS CLAIMS DRAFTING AND FULL DISCLOSURE REQUIREMENTS IN REGARDS TO THE DOCTRINE OF EQUIVALENTS AND 25 USC s112! Patent applications today are by necessity more complex than ever before, especially in the software arena. As such, even simple inventions which combine software with computers and the like may generate 40 or more claims for just the overview flowcharts and many more claims to describe the specific details of the algorithms and processes used. To permit the PTO to limit claims in this matter would unduely burden this specific art group over many of the other art areas. I have personnally submitted applications in emerging software areas which have over 800 claims, so the PTO's assertion that these applications should be cut off at the knees is absurd. Our clients don't get these claims for free - they pay for them!

There is another good reason to reject this proposal by the PTO. Since only one patent can be granted for a single invention, how does the PTO intend for us to get around this restriction for inventions which have both broad scope and broad disclosure? File one additional application for each 40 claims and then apply for a terminal disclaimer? This is obvously a transparent effort by the PTO to increase their profits by forcing the applicants to submit more applications instead of filing more complete single applications.

A significant issue not brought out by the PTO is that the courts will not simultaneously reduce the standards by which patent infringement will be determined given the applicant has been forced to reduce the number of claims in the application. So, the applicant is forced to pay more money, delay the patent process, and then lose in court because there are not enough claims to cover the patent disclosure. Remember, what is disclosed but not claimed is dedicated to the public. Who now takes the burden for deciding which claims are important and which ones are not? Is the liability on the agent/attorney? On the PTO? No, the big burden is on the client. He loses either way.

In summary, limiting the number of claims in a patent is a bad, bad idea. If only a small percentage of patents have a large number of claims, then the problem isn't a big one, right? Well, what the PTO isn't telling everyone is that at some point in time the patent bar and inventors will realize that their patents (based on court rulings) will require more claimse, not less, to achieve acceptable coverage. As stated before, the more advanced applications will require more claims than before to cover all the possible modes of use (standard, means, process, product by process, etc.). Limiting the number of claims is essentially a back-door method of increasing fees without giving any more or better service.

5. Harmonizing standards for patent drawings (37 CFR 1.84).

This would be OK if the requirement for A4 paper is dropped. However, the restriction of words in drawings >(11.11) should be dropped.

6. Printing patents in color (37 CFR 1.84).

This is long overdue. My suggestion is that the applicant be permitted to submit color drawings and other application drawings in the form of a CDROM with TIFF or BMP images of sufficient resolution. Wouldn't it make more sense for the PTO to distribute all of its patents in a common standard format such as CDROM, so that these requests can be automated? Since the cost of implementing full color printing is money essentially wasted by the PTO, I think that the best use of the PTO's resources is to electronically publish patents.

For that matter, why doesn't the PTO dispense with printed publication altogether and just implement a series of web servers and put everything online? The money siphened off by Congress in the last year could have supported 50 such systems. Additionally, does this mean that the PTO is going to dispense with the required petition to permit photographs and/or color drawings in a patent application?

7. Reducing time for filing corrected or formal drawings (37 CFR 1.85).

This is a very bad idea for individual inventors. As stated previously, applications are becoming more complex with more drawings, especially for software systems disclosed via use of flowcharts. to impose this additional time burden on the applicant only makes a bad situation worse.

Requiring formal drawings on allowance of subject matter would permit the examiner to bounce back to the applicant the burden of furthering the prosecution of the application. The examiner is required to fully inspect the application prior to forcing this burden under current regulations. To change this would definitely slow the prosecution of applications before the PTO, and extend an already too-lengthy process.

8. Permitting electronic submission of voluminous material (37 CFR 1.96, 1.821).

This is long overdue. I suggest the PTO accept CDROM submissions not only of voluminous material, but the entire application. There is no reason to submit volumes of paper to the PTO when an entire application can be submitted electronically on a CDROM. This makes it possible to both completely revise an application (including claims) to correct errors when prompted to do so by the examiner, and would permit the PTO to use this information and distribute it directly on allowance. Furthermore, the burden to determine correspondance between the amended applicaton and the original can be verified electronically, which is much more reliable than current methods.

9. Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98).

Again, the PTO is at odds with current patent case law. The courts have been consistent in stating the requirement for full disclosure during the patent application process. Does this requirement jive with the requirement of 35 USC s 112? NO, because it imposes something more than disclosure, it requires analysis, a higher burden. Thus, I believe that the PTO is overstepping its bounds here. The practitioner may not know exactly WHY a piece of art is cited, but must nonetheless disclose it to err on the side of disclosure.

10. Refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98).

Inventions are by necessity not obvious. Why does the PTO think that limiting the applicant's right to full consideration of the prior art to get a strong patent is a good idea? Well, it shifts the burden to the applicant at a later time to justify why some art wasn't included in the application. I don't think that the courts will give much attention to a reason of 'the PTO was too busy to review the IDS'. Again, it is the PTO's job to perform this inspection. It is the applicant's job to provide the information, not justify its quantity.

11. Providing no cause suspension of action (37 CFR 1.103).

This is a good idea, and may have a variety of applications, especially in the case of individual inventors.

12. Requiring a handling fee for preliminary amendments and supplemental replies (37 CFR 1.111).

THIS IS A VERY BAD IDEA. Preliminary amendments are key to providing early and full disclosure in a patent application. Many of the formal requirements of the application are traditionally handled via preliminary amendments, and it would be unfair to applicants to make them pay twice, once for filing the application in a timely manner, and again to correct minor errors in the application or to add additional claims prior to examination.

This proposed rule would also discourage the use of preliminary amendments and other supporting documentation to support Petitions to Make Special.

13. Changing amendment practice to replacement by paragraphs/claims (37 CFR 1.121).

If the PTO would allow electronic filing of amendments by CDROM, it would be possible to resumit the entire application anew, in a complete and ready form for examination. Thus, the proposed rule is only a subset of what is the real solution the PTO should be pursuing. The proposed rule is acceptable, but not optimal, and is not consistent with the PTO's goal of greater efficiency and better customer service.

The requirement for both an OCR copy and a marked-up copy is generally viewed as a time-consuming burden on the applicant. Also, what about the word processors out there that might have problems with numbering paragraphs?

14. Providing for presumptive elections (37 CFR 1.141).

This is unreasonable considering the PTO's aggressive attitude toward restriction practice. However, this attitude by the PTO does little service to its customers. It should be advocating the joinder of applications, not the expansion of restriction requirements. This is again another transparent attempt by the PTO to expand its capital base while falsely increasing its clearance rate. What better way to process more applications than by making restriction more automatic? A very bad idea.

15. Creating a "rocket docket" for design applications (37 CFR 1.155).

Why has this taken so long?

16. Requiring identification of broadening in a reissue application (37 CFR 1.173).

This at first blush is a reasonable requirement, but on closer inspection doesn't seem to be supported by statute. No where in the statute does it require the applicant to indicate during the prosecution phase what portions of the claims are being expanded when an amendment is made or a claim is added. Why should the restriction apply during reissue? No, it is the PTO's job to determine if claims are being broadened. To permit the PTO to require this as a restriction would generate additional estoppels during the reissue process which were not there before. Reissue is already a tricky enough (and risky enough) procedure. Generating a new minefield of estoppel possibilities is just asking for your client to lose in court based on an omitted 'identification of broadening'. The patent bar should also view this as another way in which inequitable conduct may be asserted by a defendant in court. In general, a very bad idea.

17. Changing multiple reissue application treatment (37 CFR 1.177).

No complaints here, except the statement 'Issuance of reissues where no changes have been made would not be permitted' seems to imply that if the patent was surrendered and no changes were made, then the applicant would not be entitled to patent protection via reissue. This also raises questions regarding the rights of third parties after reissue, which are currently handled by statute.

18. Creating alternative review procedures for applications under appeal (37 CFR 1.192).

An intermediate form of appeal is a very good idea, if it doesn't involve piling up more paperwork and taking longer than the current process.

19. Eliminating preauthorization of payment of the issue fee (37 CFR 1.311).

BAD IDEA. Suppose someone screws up and someone drops the notice of allowance? The current system has two mechanisms whereby the client wins. The proposed change creates the problem of missing the payment of the issue fee and dropping the ball on the client. The prepayment authorization as currently implemented is designed to specifically address this problem. That is why we have deposit accounts anyway, right? To eliminate (as best possible) the potential for mistake regarding payment of fees!

20. Reevaluating the Disclosure Document Program

This proposal makes sense only if the PTO drops the filing fee for a provisional application to $10, and eliminates the need for a small entity statement for provisional applications.

Despite the PTO's assertion, I do have inventors who make use of the document disclosure program, and find it quite useful. Whether the applicants make use of it is immaterial --- it exists to serve as a notary function within the PTO. As far as invention promotion firms using document disclosures to scam their clients, this is a general problem that the PTO should be addressing and they are not. In general, the PTO doesn't take the character of the profession as seriously as they should, and as a result these scams exist.

While it is true that better protection is provided with provisional patent applications, the PTO fails to note that rights are impacted as well. The filing of a document disclosure does not trigger a subsequent mandatory utility application as required by a provisional application. While in most cases a filing date is what the applicant really wants, there are many cases in which continuing development of an invention is best served by filing a series of document disclosures.

However, as mentioned prevously, individual inventors don't choose the provisional application route in part because of the cost. Since the PTO isn't inspecting these applications on their merit, but instead filing them in a manner similar to document disclosures, why not just reduce the fee to $25 across the board, and be done with it? This would give individual inventors the incentive to apply for provisional applications and bypass the document disclosure method.

21. Creating a PTO review service for applicant-created forms.

Why not license the forms that exist out there already and provide them free on the web in Adobe Acrobat format? Why permit the use of other than official forms when you should be providing what the public wants for free? In order to reduce the work for the PTO, it should strive to standardize its operations in view of the needs of the customer.

So, in this instance, the PTO has the cart before the horse. Rather than placing their blessing on customer forms, they should be working to provide the services that the customers need. If the customers need custom forms, it is only because the forms provided by the PTO are inadequate. Why the PTO hasn't distributed Windows-based software with fill-in-the-blank forms for standard patent activities is beyond me.

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