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HARNESS, DICKEY, & PIERCE

ATTORNEYS AND COUNSELORS

5445 CORPORATE DRIVE

TROY, MICHIGAN 48098

(248) 641-1600

TELEFACSIMILE (248) 641-0270

BOX COMMENTS - Patents

Assistant Commissioner for Patents

Washington, D.C. 20231

Re: Comments on PTO advanced notice of proposed rulemaking

Dear Sir:

I have reviewed each of the proposed rules in the October 5, 1998 Federal Register and I have the following comments with respect to each proposed rule. For purposes of background, I should note that I was a Patent Examiner from April 1990 until November 1993 and I have been preparing and prosecuting patent applications for the past five years. In preparing these comments, I briefly discussed the proposed rules with a couple of more senior attorneys in order to get their opinions.

1. SIMPLIFYING REQUEST FOR SMALL ENTITY STATUS

We agree that this proposed rule would be a benefit to small entity applicants

since it would eliminate the time consuming requirement of obtaining the signature of the inventor or an officer of the company who may or may not have been involved in the patent application drafting process.

2. REQUIRING SEPARATE SURCHARGES AND SUPPLYING FILING RECEIPTS

I disagree with the requirement for separate surcharges for the delayed

submission of each part of an application including an oath/declaration and filing fee. The current surcharge of $130 should be, and apparently is, presently sufficient to compensate the PTO for added costs associated with late filings of these documents. I am strongly opposed to any rule making which increases the cost of prosecuting an application without a rational basis therefor. In this case, it appears that the PTO is looking to establish another source of fees. It is my experience that in some applications where the inventor's signatures are not obtainable prior to the filing date, a signed small entity declaration is also not available. Practitioners are filing those applications without an executed oath/declaration and also without the filing fee until

PATENTS, TRADEMARKS, COPYRIGHTS AND ALL OTHER INTELLECTUAL PROPERTY MATTERS

Assistant Commissioner for Patents

December 2, 1998

Page 2 of 6

they receive an executed Small Entity Declaration which allows them to pay the Small Entity Fee without having to petition for a refund. To that extent, proposed Rule #1 will likely eliminate some instances of delayed filing of the issue fee. If the PTO desires to reduce the number of applications filed without an executed oath/declaration and the filing fee, a smaller separate surcharge, for example $20-$30 would likely achieve this effect without being unduly burdensome on those applicants who are unable for many reasons to file the application with the executed oath/declaration and filing fee at the same time. Accordingly, I would suggest that if the PTO persists in this rule making that a smaller surcharge be charged for the delayed submission of an oath/declaration and the application filing fee.

3. PERMITTING DELAYED SUBMISSION OF AN OATH OR DECLARATION, AND CHANGING THE TIME PERIOD FOR SUBMISSION OF THE BASIC FILING FEE AND ENGLISH TRANSLATION

I disagree with this proposed rule in view of the various statements that are required to be made by the inventors in the oath/declaration. In particular, those statements relating to the duty of candor I feel should be read, understood and affirmed by an inventor's signature at or around the time the application is filed. Accordingly, the time period for submission of an oath, or declaration should be kept the way it is.

4. LIMITING THE NUMBER OF CLAIMS IN AN APPLICATION

I strongly disagree with this proposed rule. The discussion of the proposed rule states that "while the applications that contain an excessive number of claims are relatively few in percentage less than 5 percent), these applications impose a severe burden on PTO clerical and examining resources. However, I would think that it is far more efficient for an Examiner to examine all of the claims in a single application no matter how many claims are involved as long as they are directed to a single -invention and/or species. The fact that the PTO charges a fee for claims in excess of 20 and independent claims in excess of 3 should adequately cover the added expense and burden placed on the PTO.

Clearly, the added burden of an application with a large number of claims is placed on the Examiner. It is my understanding that the amount of time the Examiner has for examining an application does not take into account the number of claims in the application. However, this burden is one that should be accommodated within the PTO (such as by giving more disposal credits to the Examiner) and not applied as an added limitation or restriction on applicants and the manner in which they claim their inventions. Some inventions require a large number of claims for proper protection. 1

There is no arbitrary number of claims which is adequate for all inventions.

Assistant Commissioner for Patents

December 2, 1998

Page 3 of 6

5. HARMONIZING STANDARDS FOR PATENT DRAWINGS

I agree with this proposed rule as long as the standards for drawing quality are not lowered.

6. PRINTING PATENTS IN COLOR

I agree with this proposed rule if it does not drive up the cost for processing non-color drawings.

7. REDUCING TIME FOR FILING CORRECTED OR FORMAL DRAWINGS

I disagree with this proposed rule to the extent that it greatly shortens the time

period for submitting formal drawings after the mailing of the Notice of Allowability. The proposed one-month time limit fails to take into account the fact that upon receipt of the Notice of Allowability which may take several days from the date of mailing, the Notice of Allowability is typically circulated to a docketing department so that the due dates' established with respect to filing the formal drawings and payment of the issue fee can be appropriately docketed. By the time the attorney responsible for the application receives the Notice of Allowability, 3 1/2 to 4 weeks would remain in order to have the formal drawings prepared with required corrections. This process can reasonably take up to two weeks depending upon the availability of the draftsman used to prepare the informal drawings. Accordingly, this leaves 1 112 to 2 weeks for the attorney to prepare and file the formal drawings. Although the above timeline does not seem to be overly burdensome, it assumes that all things will go smoothly as described. However, if a practitioner or draftsman is unavailable, say for example, for a one week vacation, which is not uncommon, the one-month time constraint could very easily become very burdensome.

I would suggest that a two-month shortened time period for submitting formal drawings is a much more reasonable and less burdensome time frame for requiring submission of formal drawings while still maintaining the PTO's objective of speeding up the drawing review process. In this case, the PTO should also agree to approve the drawings within one month.

With respect to the advisability of requiring submission of corrected or formal drawings upon an indication of allowable subject matter, this proposal does not take into account the fact that a patentee may wish to analyze the entire claim scope which is obtained from a fully prosecuted patent application prior to determination of whether the applicant will pay the issue fee and have the application issue as a patent. I prefer the present system which allows the applicant to analyze the fully allowed claim scope prior to determining whether to obtain formal drawings and allow the application to issue as a patent.

Assistant Commissioner for Patents

December 2, 1998

Page 4 of 6

8. PERMITTING ELECTRONIC SUBMISSION OF VOLUMINOUS MATERIAL I agree with this proposed rule as long as third parties are allowed convenient access to these documents after the patent issues.

9. IMPOSING LIMITS/REQUIREMENTS ON INFORMATION DISCLOSURE STATEMENT SUBMISSIONS

I strongly disagree with this proposed rule. In particular, I disagree with the requirement of

providing a unique description of each citation's importance relative to each independent claim, or specific dependent claims for any citations over ten. The requirement of a unique description of each citation's importance relative to each claim would effectively sky-rocket the cost of some patent applications, a serious penalty to the smaller companies and individual inventors.

In the background section of the proposed rule, the PTO apparently has a good understanding of the driving force behind applicants submitting all known prior art references in an abundance of caution in order to ensure that they meet the duty of candor. However, with respect to the PTO's given examples of IDS submissions which have placed inordinate demands on the PTO, the discussion includes several applications which include thousands or at least hundreds of prior art submissions. However, these limited examples do not support the proposed rule of requiring a unique description of each citation's relevance for each citation over 10. It seems that a more reasonable limit would be on the order of 75-100 submissions and even in that case only a concise statement of relevance should be required.

10. REFUSING INFORMATION DISCLOSURE STATEMENT CONSIDERATION UNDER CERTAIN CIRCUMSTANCES

I agree with this proposed rule.

11. PROVIDING No CAUSE SUSPENSION OF ACTION I have no comments with regard to this proposed rule.

12. REQUIRING A HANDLING FEE FOR PRELIMINARY AMENDMENTS AND SUPPLEMENTAL REPLIES

I strongly disagree with this proposed rule on the basis that it increases the cost

of prosecuting a patent application the current cost of which should be sufficient for a complete examination.

I would also note that the one-month time limit for submitting a preliminary amendment without a fee is unduly burdensome in view of the fact that often times an applicant has not received a filing date and -serial number from the PTO within that period of time. Typically, the delay in submitting a preliminary amendment is often associated with waiting for the PTO to provide a serial number and filing date for the

Assistant Commissioner for Patents

December 2, 1998

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application so that the application and its preliminary amendment can be properly identified.

13., CHANGING AMENDMENT PRACTICE To REPLACEMENT BY

PARAGRAPHS/CLAIMS

I disagree with this proposed rule making. In particular, the proposed rule making requires that in addition to providing replacement paragraphs and claims that a marked-up copy of the changed paragraphs or claims would be required as an aid to the Examiner. As a justification for this proposed rule making, the PTO states that under the current system entry of amendments, especially when words and phrases must be inserted in handwritten red ink, and man such changes are being made, it is very time consuming and difficult to perform. However, by requiring that the applicant supply a marked-up copy of the changed paragraphs or claims the PTO is effectively transferring this burden, of marking a separate copy and submitting it to the PTO, to the applicant.

14. PROVIDING FOR PRESUMPTIVE ELECTIONS

I disagree with this proposed rule making. Often times at the time of filing an

application, the practitioner is not able to make a judgment as to which of the embodiments or species of a disclosed invention should be elected for prosecution should a restriction requirement be made by the Examiner. Furthermore, restriction requirements which are made in error would require that the Examiner take up the application again for examination of the improperly restricted claims. This proposed rule effectively takes away an applicant's ability to traverse a restriction requirement.

15. CREATING A "ROCKET DOCKET" FOR DESIGN APPLICATIONS I agree with this proposed rule.

16. REQUIRING IDENTIFICATION OF BROADENING IN A REISSUE APPLICATION I do not agree with this proposed rule. The specific occurrences of broadening are already required in the Declaration to the extent that it is relevant.

17. CHANGING MULTIPLE REISSUE APPLICATION TREATMENT I agree with this proposed rule.

18. CREATING ALTERNATIVE REVIEW PROCEDURES FOR APPLICATIONS UNDER APPEAL

I agree in principle with this proposed rule making to the extent that it would reduce the number of applications on appeal and to the extent that it would reduce the time period for receiving appeal. In my opinion, strong arguments can be made for pre-brief and post-brief review. With post-brief review, all of the issues in the case can be clearly and efficiently focused for the reviewing Examiner. A pre-brief review would allow review prior to undergoing the expense of preparing and filing an appeal

Assistant Commissioner for Patents

December 2, 1998

Page 6 of 6

brief, but would likely be less effective since the reviewing Examiner may not have a full understanding of the issues and arguments regarding patentability. Perhaps the best solution would be to allow the applicant to elect for themselves, depending upon the circumstances in their case, whether they want pre- or post-brief review.

In my opinion, the review should be performed by a Supervisory Patent Examiner who would have some understanding of the relevant technology. Review by a Primary Examiner from the same or a different art-would not be desirable since many Primary Examiners would not feel comfortable passing judgment on another Primary Examiner's work product.

19. ELIMINATING PRE-AUTHORIZATION OF PAYMENT OF THE ISSUE FEE

I agree with this proposed rule.

20. RE-EVALUATING THE DISCLOSURE DOCUMENT PROGRAM
I have no comment with regard to this proposed rule.

21. CREATING A PTO REVIEW SERVICE FOR APPLICANT-CREATED FORMS
I have no comment with regard to this proposed rule.

Over all, the proposed rules appear to be a disguised increase in charges with an accompanying reduction in services.

Thank you for your consideration of these comments.

Respectfully submitted,

Ryan W. Massey 41. A14. 3 K, S-@-3

RWM/dr

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