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NEW PTO RULE PROPOSALS – ADVANCE NOTICE – 10/5/98 FR

The following are purely personal comments on the 32 fine print single spaced pages of the latest PTO "Advance Notice of Proposed Rule Making" (ANPR) from the 10/5/98 Federal Register, emailed to me by the AIPLA and reprinted in the 10/8/98 BNA PTCJ. This is for the dual purpose of in-house CLE summarization of these rule proposals plus some of the input requested by the PTO, although I have by no means addressed all of the numerous specific questions asked by the PTO in this ANPR. These comments also reflect inputs at the 10/15/98 AIPLA "Relations with the PTO" Committee meeting with PTO representatives on this topic. The review of these lengthy PTO proposals and comments is quite time-consuming, and I may well have missed some points.

I will operate here on the basis of the following historically established assumptions:

1. ANPRÂ’s, a.k.a. "trial balloons" of potential new PTO rules, are a good idea, since effective input is easier at this informal stage, before formal rule proposals. However, if no one from the public effectively "shoots down" a "trial balloon", "the balloon may go up."

2. Be suspicious that PTO proposed rule changes are primarily intended to shift work from the PTO to patent attorneys, unless demonstrated otherwise, and thus one should carefully check the resultant impact on oneÂ’s workloads, or think about problems the PTO might not have anticipated from their viewpoint. GOOD rule suggestions are "reengineering" that make life simpler for BOTH the PTO and the public. There are some here.

3. Assume that as few as 10% of all patent lawyers will even read lengthy PTO ANPR’s, and that only about a dozen or less will bother to submit any of the requested inputs, yet a high percentage will privately complain later, after it’s too late – after the new rules are already in effect and they start to get rejections in their office actions.

I hope that some of you will rise to the challenge of assumption 3 above by reading these new PTO rule proposals and sending your comments to the PTO, which they have requested to be submitted by e-mail by 12/4/98 at regreform@uspto.gov

The paragraph numbers used with the following brief personal summaries and comments below are those used by the PTO in the subject Federal Register notice under " B. Discussion of Specific Topics " which they are considering for new rulemaking (n.b., in some cases the PTO has buried unrelated topics under the same paragraph number):

(1) Simplified paperwork for "small entity" fee status. Sounds like a mutually beneficial idea.

(2) Two separate fees for delayed submission of an application Declaration and delayed submission of the application filing fee (37 CFR 1.53) [instead of one "missing parts" fee, as at present], plus filing receipt changes.

It seems reasonable to recover a fee for, and thus discourage, the extra PTO paper-shuffling required for separate late filing fee payments. It does not affect us anyway, since we pay the filing fee upon filing even if we file the Declaration later. It does affect law firms, which naturally donÂ’t like to pay PTO fees before they can collect them from the clients. But shouldnÂ’t firms be able to pass this late payment fee on to clients if the client didnÂ’t pay them in time?

The related PTO proposals - to issue corrected filing receipts without any fee, without any fault questions, and to put a copy of filing receipts in the application file, seems highly desirable, particularly under the new (12/1/88) Rules practice under which actual inventors names are not entered in the PALM system until the filing of an EXECUTED Declaration, which may be delayed.

(3) The PTO is also considering allowing application Declarations to be filed much later – up to one month after a "Notice of Allowability". However, if you did, the PTO would then require fling so many other pieces of information in advance that would not seem to provide any paperwork or time reduction. Also, the PTO makes an excellent comment that if you wait that long, you may have trouble getting inventor signatures. So it is not a practice I would encourage using anyway. I have a personal objection to handing already-procrastination-prone patent attorneys another dangerous opportunity to do so. Also, it would complicate foreign filing of U.S. applications within the one-year convention period if you did this. If someone really needs more than 4 months to get a declaration signed they could alternatively use a provisional filing, unless they need to make a priority claim. Last but not least, if, as I suspect, this rule change would be primarily for the benefit of foreign applicants, why give it away for free? Negotiate some quid pro quo for it, e.g., less rigid and fatal short-term deadlines for filing U.S. PTO certified copies in their patent offices.

(3-cont.) Treating the attorney or agent who signs the application transmittal letter as the proper representative, without waiting for a formal power of attorney. This seems like an excellent idea. As I noted in the above-noted AIPLA PTO Relations Committee Meeting, this should especially include provisional applications, since they are almost all filed without a formal power of attorney.

(4) Limiting the number of claims in an application. [ Now we get into more controversial proposed changes] The PTO proposes to limit the total number of claims that will be examined in any one application to 40, with a maximum of 6 independent claims. Other claims would be withdrawn and required to be cancelled and/or filed in other applications. You would have to petition to get more claims examined. [The PTO admits that 95 percent of us rarely ever file that many claims, but wants to make it verboten and laments the demise of former "undue multiplicity of claims" rejections.]

The consensus of the above-noted AIPLA meeting participants was that it would be much more logical and fairer simply to charge a much higher fee and give examiners more time and credit for such applications, rather than refuse to examine part of them, but the PTO representative claimed the PTO doesnÂ’t have authority to do that with rulemaking. ??

One concern I had in reading this proposal is WHICH 40 claims and WHICH 6 independent claims would be examined? Will it be the ones listed first, with no choice? P.S., there will also be limits on the number of species in a Markush claim, the numbers of sequence listings, and the number of alternate limitations.

Note especially that there is no discussion in the FR of whether you would be protected by 35 USC 121 from one patent becoming prior art against another with this new system, i.e., being in effect forced to make a "restriction" for a non-restriction reason. When I asked, the PTO representative at the above-noted AIPLA meeting admitted that there would be no 35 USC 121 protection from a "double patenting" rejection of the "overflow" (>40 or >6) claims in the "overflow" application(s) vis a vis the original application. "Double patenting" has lost most of its sting with 20 year from original filing patent terms, EXCEPT for what might otherwise be statutory term extensions of one of the patents for appeal and/or interference delays. The PTO ought to think about the latter in connection with this rule proposal. Of course, the PTO is not proposing any reductions in any fees, including maintenance fees, for any additional "claim overflow" patents one might need for adequate protection in some cases. Bottom line, this claim number limit doesnÂ’t bother me personally, but I would think in some chemical or pharmaceutical technologies the above double-patenting issues might.

(5) Harmonizing standards for patent drawings. The PTO is considering harmonizing U.S. drawing requirements in 37 CFR 1.84 with those for the PCT Rule 11.13. Hard to see any problem with this one?

(6) Some patents may be allowed to be printed with colored drawings or photographs, with a fee. Good idea, especially with increasing use of color screen displays and GUIÂ’s.

(7) Reducing the time for filing corrected or formal drawings from 3 months to 1 month from the mailing date of the "Notice of Allowability" – (37 CFR 1.85). Probably you can live with this reduced time, but the real problem with getting corrected drawings through the system is in the PTO.

(8) Permit electronic submission of voluminous materials – such as computer programs. Fine, as long as anyone will still be able to conveniently "read" or print it out years later – they may not, depending on both the media permanence and the availability of the old media reader system and its software as data storage systems become obsolete faster and faster.

(9) [NOW COMES THE REAL ZINGER] A mandatory statement in each IDS that you have personally reviewed each citation, AND if you try to submit more that a total of 10 IDS references in any one patent application at any time, they will be ignored and not entered, unless you would be so foolish as to attempt to jump through several onerous new disclosure/admission hoops which would seriously risk invalidity of the patent – to wit, providing specific relevance descriptions which would have to include detailed "admissions against interest" as to every element of every claim which is being disclosed by every reference, where they occur in each reference, etc., etc.. The PTO explains that we patent scriveners must all be thusly flagellated because a few attorneys have been dumping thousands of references into some IDS’s, presumably in order to avoid [PTO Rule 56 and loose MPEP language created] duty of disclosure dangers. [There may also be a few attorneys manipulating the recent elevation by some CAFC non-patent-practitioners of the legal fiction that examiners have examined every reference into an absurd CAFC prohibition of any patent reexaminations based on anything that was ever dumped into an IDS.] The examiners getting these "reference dumps" with no time or credit for reviewing them are understandably upset, and the PTO can’t outright prohibit submitting more than 10 prior art references, so someone in the PTO came up with this idea of making it so onerous and dangerous to do so that it would de facto prevent it.

The unanimous outraged response of all vocal participants at the above-noted AIPLA committee meeting to this proposal was to the effect that attempted compliance with the level and scope of these onerous if not impossible obligations and duties would result in patent litigation crucifixion of patent attorneys and a high risk of malpractice suits. It seems that some PTO officials simply do not understand that whenever the PTO imposes a new averment or disclosure duty rule on patent scrivener/prosecutors that this automatically creates a new patent litigation defense to be extensively deposed on, as well as increasing patenting costs.

There was unanimous agreement that it would be vastly more logical and fairer simply to charge a large fee for each of the more than 10 submitted references, AND to give examiners adequate corresponding additional time and credit to read them, which we would be paying for. However, the PTO representative at that meeting alleged that the PTO doesnÂ’t have any authority to change or charge any fees without statutory changes! That was greeted with considerable skepticism by the meeting participants, especially in view of, e.g., the new PTO fee-by-rule proposals (1), (12), (18) and (19) in this very same PTO package.

In this regard, a PTO examiner made the following suggestion over the internet:

"I think . . . that there is a better way to handle such submissions. Rather than require the attorney to review the citation and describe it, the office should simply institute a per page charge for references in an IDS, giving a hundred pages for free and then charging something per page. If we say that an examiner can read a page of scientific literature or patents every two minutes and is paid, on average, $30.00 an hour, then the per page cost by examiner's time is roughly 1 dollar a page, so charge a dollar a page after the first 100 pages (i.e. a little over three hours of time). If applicant wanted to submit 50 references averaging 10 pages this would yield a cost of $450."

(10) Proposed flat out PTO refusal to consider an IDS with references the PTO considers too burdensome, even if all the onerous requirements of (9) above were somehow met. See comments on (9) above.

(11) "No cause" suspension of PTO action. In effect, an optional "deferred examination" system, with publication, for up to 3 years, if you pay a publication fee. I think this is a good idea [but see important caveats further below]. Consider especially that we now have CAFC panels of judges who have never drafted a claim in their life but think we all have claim drafting crystal balls to anticipate before issuance every possible engineering change in our, and competitors, subsequent final products, and cover them all completely and literally by generic claims based on original specifications. I.e., this would benefit many applicants who have no need to hustle their patents out the PTO door in 18 months with frozen and maybe permanently crippled claims, and would rather wait a bit longer and get better claims. Especially with CAFC panels these days that seem happy to help find clever non-infringement claim loopholes ex post facto which only $400/hr trial lawyers with unlimited time, or judges, might ever even think of. The alternative of broadening issued patent claims in any respect by a broadening reissue is limited by the 2 year bar, the vague "recapture" doctrine, judges who have yet to understand that "intent to claim" was language in the old reissue statute removed from the present statute, and other dangers. Also, many applicants would simply like to be able to defer prosecution costs or avoid them altogether by abandonment of applications on obsolete technology. Both the PTO and applicants would benefit from having time for any EPO or Japanese equivalent prior art searches to be made of record in the U.S. application, but applicants should be warned before prosecution resumes to submit them.

For those who might think this idea is something radical or even novel, note that such deferred U.S. examination can already be done simply by filing PCT, but at greater expense, and losing an early 35 USC 102(e) defensive prior art date unless you pay for perfecting the U.S. national designation application from the PCT filing, even if not then requesting its examination. This requested deferment or even eventual abandonment of some application examinations with this new system might also enable faster examinations of other applications.

However, the caveats I raise are these: What if some other party needs the deferred application examined fast in order to determine if it might infringe allowable claims or not before a major capital investment? There is no discussion by the PTO here of any provision for an anonymous third party examination request of a deferred examination application simply by paying an examination fee, as some other countries systems provide. Also, what if another party sees the published deferred examination application and files a Rule 291 protest, a Rule 292 public use proceeding, or a demand for an interference with an earlier-filed application or patent? Obviously, it would make no sense to add three more years of PTO delays to the already intolerable PTO delays for the latter two. These caveats should be seriously considered and discussed.

(12) An extra PTO handling fee for preliminary amendments filed later than a certain period after the application, and supplemental amendments. Again, not totally unreasonable, but more paperwork, more form changes, and more things to remember. Also, one wonders if the increased chances for more PTO internal mistakes and problems in collecting and handling these additional fee payments will become more of a PTO burden than the alleged problem being addressed by these new fee payments? I.e., will the "cure" be worse than the "disease"?

(13) [ANOTHER ZINGER?] Every patent application would have to have every single paragraph of the specification consecutively numbered. Then, any time you would want to make any specification amendment, however trivial, you would have to submit a complete new paragraph with the same paragraph number. All claim amendments would require submission of a complete new claim.

Hopefully, oneÂ’s word processing software woud be able to do that pargraph numbering and re-numbering automatically. But, what about the LINE numbering we now use, especially for claims? Will that be fully compatable? If not, irate patent secretaries (now "administrative assistants") would have to work overtime to onerously manually re-number every paragraph in every application on a rush basis whenever any revision is made before filing (and there usually is).

(14) Presumptive claim elections – automatic constructive election of the first listed claims whenever an examiner feels like making claim restrictions, instead of a written restriction requirement and an applicant claim election and traversal opportunity. Instead of the first-listed claims, they might examine product claims first. Plus, the PTO again here expressly refuses to even consider allowing the other claims to be examined in the same application even if you would be willing pay an extra fee [why?]. One would have to remember that the order in which you present your claims in the application might become critical. Perhaps you had better start now, since this rule is likely to be retroactively applying to previously filed applications if adopted.

(15) An option to request a "Rocket Docket" expediting of design applications – for $900. Fine - although somewhat unclear, presumably it would at least avoid the notoriously long Office of Petitions delay to "make special". But, why not offer this for all applications? Better yet, why not address the real delay problem in the design applications group –formal office actions which are mostly merely on petty formalities that could be quickly handled by examiner amendments, phone calls, and/or Ex Parte Quale actions, as in other, normal, patent examining groups? Also, to address a peculiarly sui generous view among many design examiners of "new matter" and some other aspects of patent law in spite of recent CAFC reversals?

(16) [ANOTHER ZINGER] Require specific written identification of each and every element of claim broadening in a reissue application. This would be a big step backwards from the recent PTO rule change simplification of reissues, plus another big new opportunity being created for more lengthy and expensive deposition torturing of patent practitioners for alleged "fraud on the PTO" over each word change, especially if neither broadening or narrowing. How is this really going to improve reissues? Specifically, how is this going to help any examiner so incompetent in reading claims or handling reissues that he or she canÂ’t even tell a claim broadening from a claim narrowing even though every claim change is already highlighted with brackets or underlining , as required by 37 CFR 1.173? [This unavoidably reminds me of a famous quote from President Truman to the effect that it should not be necessary to hit a government employee between the ears with a 2x4 (like a Missouri mule) to get his full attention.] I also think this proposed rule is an insult to the intelligence of many competent examiners perfectly capable of telling a claim broadening when the see one.

Reissue applicants should simply be required to make a simple statement in any reissue, or claim amendment thereof, as to whether or not any part of any claim is being broadened in any respect by the reissue [since that is what makes it a broadening reissue, subject to the two year bar].

(17) Simplifies and cross-references plural related reissues. This makes sense, especially in view of some recent CAFC decisions.

(18) Two different levels of mandatory pre-appeal conferences with other examiners at the examination level, if you pay a fee. The first would be a one-claim, one examiner, simple review for a prima faci e rejection basis, done with a NOA filing but before having to file an appeal brief. The other would be after your wrote and filed the appeal brief, but it would be a review of all claims by two examiners. A applicant choice of one or the other sounds like a great idea, especially for applications where you are under final with an unreasonable, or not entirely literate in the subject matter, examiner, and you would like try to avoid what is now roughly four years of further delay for a Board appeal. Success, however, will undoubtedly be affected by what kind of credit the PTO will give the SPE or other examiners for their extra reviewing work under this concept. Also, any such system of mandatory pre-appeal "independent" review should not be limited to 35 USC 102 or 103 issues, and should expressly include reviews of alleged (often vague) 35 USC 112 rejections, and rejections on what are really formal matters that may be petitionable but need faster and better independent review. Both of the later types of examiner rejections are too often flaky and time consuming for both the PTO and applicants, and hopefully could be disposed of promptly by more experienced SPEÂ’s under this new system.

(19) No longer allow pre-authorized payment of issue fees. We always thought that was dangerous, and never did it.

(20) Reevaluating the PTO "Disclosure Document Program". I couldnÂ’t agree more with the PTO comments here, i.e., this whole program is a unwitting vehicle and accomplice for fraud and delusion of small inventors by so-called "invention development companies", or self-delusions of independent inventors, who have been mailing thousands of these "Disclosure Documents" to the PTO. [It is second only to the misuse and abuse of design patent applications for functional inventions by or for the same victims.] A bare conception recordation document of any kind, including these things filed in the PTO, in and of itself, even if properly witnessed by non-inventors, is not even a completed invention! It could never win an interference with anyone filing a provisional or regular patent application earlier, or actually reducing to practice earlier, the same or an obviously similar invention. This whole program is a good example of the widespread ignorance, even among patent people who should know better, of what the U.S. law and practice of "first to invent" really is.

(21) Creating a system for PTO review of your PTO forms for correctness, for a fee – about $200. The PTO cleared (but not "approved") forms could then be appropriately marked. A good idea. Especially if you are generating your own versions of the various new PTO application forms (some of which are incomplete anyway) with your own software and "fill-ins". [Although not noted in the comments, the PTO has done this informally before.]

Respectfully submitted,

Paul F. Morgan

330 Oakdale Drive

Rochester, NY 14618

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