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Schor, Kenneth

To:

Spar, Bob

Subject: RE: Limits on prior art submitted. -Reply -Reply[@[Color & comment addedl

-Original Message-

  • From: Spar, Bob
    Sent: Tuesday, October 20, 1998 5:03 PM
    To: Schor, Kenneth
    Cc: Bernstein, Hiram
    Subject: FW: Limits on prior art submitted. -Reply -Reply[/}[Color & comment added]
  • Appended is a comment that, even though it was sent to me directly by an e-mail message, should be included With all other comments that are received and considered.

    -Original Message-

  • From: asian.baghdadi@cromor.com [SMTP:aslan.baghdadi@cromor.com] Sent: Tuesday, October 20, 1998 3:41 PM
  • To: Spar, Bob

    Subject: RE: Limits on prior art submitted. -Reply -Reply

    My name is Aslan Baghdadi. Comments submitted on my behalf -- not on the firm's behalf. We talked to each other at the DuPont IP seminar yesterday.

    >>> "Bob.Spar@USPTO.GOV'10/20/98 12:26pm >>> Thank you for responding and for your comments.

    As I still do not know your name, I would appreciate it if you could supply it. Also, please indicate if the comments are being submitted on only your behalf, or on behalf of the firm that you work for.

    > ----Original Message---

    > From: asian.baghdadi@cromor.com

    [SMTP:asian.baghdadi@cromor.com]

    > Sent: Tuesday, October 20, 1998 12:13 PM

    > To: Spar, Bob

    > Subject: RE: Limits on prior art submitted. -Reply

    > I am a patent attorney at Crowell & Moring, I am submitting the

    > remarks as

    > a patent practitioner.

    > >>> "Bob.Spar@USPTO.GOV'10/20/98 10:57am >>>

    > Please identify yourself, and indicate on whose behalf who you are

    > making these comments for.

    > > ----Original Message----

    > > From: asian.baghdadi@cromor.com

    > [SMTP:aslan.baghdadi@cromor.com]

    > > Sent: Tuesday, October 20,,1998 9:48 AM

    > > To: Spar, Bob

    > > Cc: aslan.baghdadi@cromor.com

    > > Subject: Limits on prior art submitted.

    > > I continue to believe that a fee for submitting a larger number of references makes sense. Your point -- that Congress sets the budget ; doesn't make sense to me: any business, when faced by a demand from their customers for more service, and when the customers are eager (as in this case) to pay for the additional service, would be happy to provide the additional level of service. Having the USPTO decide which of the relevant references are the most material makes the most sense because (1) it will save my clients an awful lot of money, even if they have to pay a charge of, e.g., $ 20.00 for each additional reference, and (2) otherwise, there will be a greater risk of patents being held unenforceable because the patent attorney did not disclose a reference a judge found to be more relevant than prior art that was submitted. [[The PTO does not believe it has the authority under the current statute to charge a fee for considering the excessive number of references. In addition, excess fees are subject to recision < patent fees are diverted from the PTO to other government functions>,the PTO cannot compensate the examiners with extra time to review the paid for references.]] -

    > > Reviewing the patents I've worked on, I think the proposed limit of 10 "freebies" is too low. A limit of 20 would be better. For most patents I have prosecuted, the total number of references (excluding those cited in a search report) were less than 20.

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