While I understand the need for the proposed rule changes
While I understand the need for the proposed rule changes to make the PTO more efficient, I am concerned about the mounting fees for each activity and the shifting of responsibilities from the examiner to the practitioner. As the fees increase and the obligation on the practitioner increases (also increasing the costs to the applicant in the form of higher attorney fees), the ability to apply for patents is being removed from all but the wealthiest of clients. It is now approaching the point that only corporations with large patent budgets can afford to undertake this method of protection for invention. This is not the intent that Congress had for enacting the patent statutes.
Specific comments to each of the rule changes as follows:
1. Topic 1 appears to be fine and may actually be of benefit to small entities. Has no impact on Union Camp.
2. Topic 2 would require a separate surcharge for the delayed submission of a declaration and a separate surcharge for delayed payment of filing fee. The trade off is that the PTO will not charge for re-issuing the filing receipt. No objection per se. Since we instruct our outside counsel to pay the filing fee, the fee won't change for those cases in which we do not have the declaration signed at the time of filing the application.
3. Topic 3 would allow for the delayed submission of the declaration (with an additional fee), but the burden is on the attorney to submit a certification as to the names of inventors, priority, investigation of inventorship, and that he/she believes the inventorship is correct based on the investigation. Again, no real impact on Union Camp, but will increase our costs in those cases where we can't get the declaration signed right away. However, as noted in the discussion, a delay in signing the declaration will often result in delay in signing the assignment, and the right to prosecute the application flows from the assignment.
4. Topic 4 would limit the total number of claims to 40, with six independent claims. This would include multiple dependent claims, which will be counted based on the number of claims to which they depend. This limitation in itself is OK since we try to keep the number to a minimum so as to not have to rewrite the case for foreign filing. The rule change seems to be a bit of overkill since you currently have to pay for excess claims now, and most large cases would get a restriction requirement anyway. Seems to be directed to a very limited number of cases that have burdened the system. However, what is of concern is the discussion in the second column on page 665 in which the PTO would limit the number of species embraced within a Markush claim, or the number of sequence listings within a claim, as well as a limit on the number of alternate limitations included in a claim to be counted as one claim. With some large chemcial groups, limiting the number of species and/or sequences would limit the coverage and necessitate the filing of additional cases (hence more fees) the way they have structured the rule. Again increasing fees that will mean only wealthy clients can file.
5. Topic 5 brings the PTO drawing rules in line with those for the PCT. This is acceptable because it would actually simplify the work for the practitioner. However, my understanding of the PCT rules essentially require formal drawings at the outset of the case. Hence, the applicant would have to prepare and pay for formal drawings before he/she/it knows whether there is patentable subject matter.
6. Topic 6 is acceptable, because in some cases printing patents in color would enhance the ability to discern the patentable features of an invention, i.e. color may be an element of the novelty.
7. Topic 7 on its face is acceptable. It is not acceptable to require formal drawings as part of a response to an office action indicating allowable subject matter. In many cases the notice of allowable subject matter is only to the narrowest of the claims. Thus, you could get an office action that indicates only one claim is alllowable, and then have to undertake the expense of formal drawings. Thus, the drawings may have to be prepared before you know whether the entire case, or even the commercially desireable embodiment, is allowed.
8. Topic 8 is a very acceptable alternative to paper filings. The sequence listings and program listings are often voluminous. The only concern I would have is how to obtain copies of any electronically submitted listings. The proposed rule states that the PTO would establish an appropriate system for accepting and using such submissions, but is silent as to how an electronic submission would be dealt with when the patent issues or the application publishes (say as the priority document for a PCT filing). I am assuming that the PTO would establish some way that a practitioner could retrieve the submission.
9. Topic 9 is objectionable in ALL aspects. Requiring the certification and description will greatly increase the cost of an application, provides a description that may be adverse in the advent of litigation of the patent (prosecution history estoppel), shifts the burden of examination from the examiner to the practitioner, and possible undermines the validity of an issued patent. Limiting the number of references runs the risk that in crowded art fields that material references are not considered. The rule substitutes the attorney's judgment for that of the examiner. Moreover, the rule states that the practitioner can pick the ten references to exclude from the description requirement. Contrary to the stated belief in the rule that the closest citations would be described in the greatest detail, the 10 most material references will be excluded because of the fear of litigation and prosecution history estoppel. Moreover, practitioners will limit their searches to 10 references, because, in the event of litigation, they would not want to have a reference in their file that was not cited.
The rule would also require the submission of all cited applications. While a party can petition to expunge the citation from the record, given the track record of the PTO in handling petitions, it is likely that IDS citations to confidential information could publish (and thus be made available) before the petition is granted to expunge.
On the plus side, I do not think it is unacceptable for the attorney/agent of record to have to certify that he/she has reviewed the references submitted. Likewise, I do not view it as unacceptable to require a specific citation to the material page and/or section in a large reference.
The best way to change the system at present is to seek a Legislative change. Only with a change in statute will practitioners agree to submit fewer references without fear of reprisal.
10. Topic 10 should be acceptable on its face. However, as a practical matter, if Rule 9 is not imposed expressly, the examiners will do so implicitly through this proposed rule and will reject any IDS that does not comply with Topic 9 above.
11. Topic 11 is directed to the suspension of prosecution. I do believe there should be a time limit for the suspension, after which the application would be deemed abandoned. I do not believe that the publication of the application would have a chilling effect on others active in the field. On the contrary, it may provoke action by others and/or may disclose information needed to carry the science forward. There is a substantial risk in publication, because it would provide information from which another could copy/infringe without the benefit of patent protection to pursue the offender.
12. Topic 12 requires a fee for preliminary amendments and supplemental replies. Again, all this is doing is generating more fees without any benefit to the applicant. A preferred alternative would be to limit the time period and/or the number of submissions permitted.
13. Topic 13 is acceptable, but it does increase the burden on the attorney/agent to submit replacement paragraphs/claims as well as marked-up copy for the examiner's review.
14. Topic 14 is acceptable, but it does place an increased burden on the attorney/agent to insure that the first claim encompasses the embodiment to be prosecuted first.
15. Topic 15 is acceptable, but given the PTO track record in handling expedited petitions, seems like another instance of a "petition to get lost". This provision would have limited interest to Union Camp.
16. Topic 16 is unacceptable because it substitutes the attorney's judment for that of the examiner. While it might be acceptable to suggest areas for broadening, the requirement imposed appears to shift the burden.
17. No comment as to Topic 17.
18. While I agree that some alternatives are needed to reduce the number and time for appeals, the proposed rule in Topic 18 will only be effective when the review is conducted by person(s)having experience with the PTO examination procedures and outside the chain of the normal examination, i.e. an SPE in a related art area or a Quality Review person. On their face, the proposed reviews are acceptable and might eliminate some of the extreme cases. Moreover, since the reviewer does not have the authority to overrule the primary examiner, the review would be ineffective in the case of a obstinant examiner.
19. Topic 19 is acceptable.
20. I have no experience with the Disclosure Document Progam, but it would seem that the use of a Provisional Application has eliminated the need for this type of program.
21. I see no need for a PTO review service for applicant created forms. However, if such a review were to occur, it seems more reasonable to charge one fee per form, regardless of the number of submissions needed to get an approved form.