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I want to endorse strongly the proposal set forth under Topic 8 permitting electronic submission of voluminous material

I want to endorse strongly the proposal set forth under Topic 8 permitting electronic submission of voluminous material (37 CFR 1.96, 1.821). The rationale supplied is directly on point. I would like to add the request that the rule be made effective with respect to any application that is pending and that contains no paper copy of the archival medium which contains the relevant information. This would permit parties to preserve their rights in inventions which need to be filed prior to the date the rule is adopted.

With respect to Topic 9, imposing limits/requirements on Information Disclosure Statement submissions (37 CFR 1.98), I certainly concur that a problem has been created where the default position is to submit anything that is even marginally connected with the claimed invention. However, it seems unduly burdensome to require specific analysis of each submitted document within the upper limit of citations that do not have to be described as ten. For most applications, an upper limit of 20 would be sufficient to retain the preparation of an IDS as an essentially clerical function once the background description of the invention is prepared by the attorney or agent. Retaining the ability to prepare the IDS by staff would result in considerably lower cost to applicants. In short, I would wholeheartedly support this change if the exception were raised to 20 citations rather than 10. I also want to verify that the number count of citations that do not have to be described does not include those cited in foreign counterparts or the corresponding PCT application. I believe that is the intent.

With respect to Topic 4 limiting the number of claims in an application (37 CFR 1.75), the proposal to limit the number of total claims that will be examined (I assume for one fee) in an application to 40 and to limit the number of independent claims that will be examined among them to 6 is an excellent idea.

Kate H. Murashige, Esq.

Registration No. 29,959

Partner

Morrison and Foerster LLD

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Last Modified: 7/4/2009 4:55:44 PM