Reply comments to Advance Notice of Proposed Rules
Reply comments to Advance Notice of Proposed Rules
Federal Register Pg 53497-53530
October 5, 1998
by George E. Oram Jr. Registration No. 27,931
Nikaido, Marmelstein, Murray & Oram LLP December 12, 1998
The following comments are set forth in numbered paragraphs corresponding to the topic numbers in the Advance Notice.
1. Simplifying Request for Small Entity Status
The concept and basic proposal for a simple assertion to replace the currently required signed declaration appears to be an improvement. It is initially proposed that payment at the time of filing of an application in the amount of the small entity basic filing fee would be considered an assertion of small entity status. This may be a problem when the small entity fee is paid in error, even though the application is owned by a large entity. The mere payment of a particular fee is more open to possible error than a consistent, constant requirement for a signed statement by a person in a position to know whether the application is entitled to such status.
In the case of a registered practitioner, it is extremely likely that the entitlement status of the application would be known and the addition of the requirement for a simple check box and sentence on the transmittal sheet for the application is a simple solution. In the case of a individual filing pro se, the signing of a paper acting as a transmittal sheet could be required to include a statement concerning the status entitlement of the application. Perhaps the signing of a paper submitted to the Office by applicants themselves could be taken as a written assertion of small entity status.
2. Requiring separate surcharges and supplying filing receipts.
As a point of information, at the present time, approximately 15% of the filing receipts received by the
firm of the undersigned in the last six months have had one or more Office generated errors regardless of
whether the filing receipts were issued prior to or after the filing of a declaration in an application. The
incidence of error has improved in that previously it was as high as 50%. Numerous filing receipts have
required several iterations of requested corrections. The correction of these errors are considered necessary
by the applicants as early as possible in the prosecution of the applications to ensure that the records of the
United States Patent office reflect the proper information. No one likes their name misspelled especially in
With respect to the handling of applications in which the declaration and payment of the basic filing fee are filed after the filing of the application, no substantiation was provided for the cost for processing being increased. If in fact it has increased, the surcharge should be increased since it is mandated in statute that the Office recover the costs involved in the services provided. It is also difficult to see how the separate submission of the declaration and payment of the basic filing fee doubles the amount of work on the part of the Office since these are generally filed at the same time in the same paper. The assertion that the requirement of payment of the basic filing fee at the time of filing of the application will reduce pre-examination processing time even when a declaration is late filed is not logical. The same delay will be present.
The first new service proposed by the Office is only necessitated by the new practice by the Office of issuing filing receipts at the first filing of the application regardless of whether it is complete. Due to the number and percentage of errors encountered, Patent Business Goal (4) is a very distant prospect.
The second new service proposed is potential problem maker. At the present time, as noted above, the vast majority of errors found have been on the part of the Office. It is believed that instituting a no fault policy would only encourage sloppiness on the part of practitioners resulting in only more work for no fee on the part of the Office.
In order to substantiate the source of error and to assure the correctness of the Office electronic records, the provision of a copy of the filing receipt in the application file seems to be a requisite. It is somewhat disconcerting to consider that a paper record, will be needed to establish that the electronic record is correct.
3. Permitting delayed submission of an oath or declaration and changing the time period for' submission of the basic filing fee and English translation.
Many applicants are considering the Notice to File Missing Parts necessary to establish the Application No. so that the declaration as filed does correctly relate to the proper application. Otherwise, it can be very difficult to match the correct declaration with the correct application in the Office, if it becomes separated from the practitioner's transmittal sheet. Presumably the first new service proposed above in section 2 would take care of this concern, but only if the filing receipt is issued well within the new proposed period for filing of the declaration to allow for sufficient time to have the declaration signed. Otherwise the practitioner and the applicants are being forced to
pay fees for extensions of time that would be solely the fault of the Office. That is, delay in sending the filing receipt would result in delay in being able to have the declaration properly filled out and executed thereby necessitating one or more extensions of time. This is especially the, case with respect to foreign applicants.
With respect to the difficulties encountered by some practitioners, in determining names of the actual inventors or even locating them, as mentioned in the comments accompanying the proposed rules, such' difficulties only increase as time passes. Delay of filing of a completed, signed declaration until a Notice of Allowability would only ensure more difficulties and more petitions under 37 C.F.R. 1.47.
The proposed requirement that practitioners submit all of the necessary data and make a statement that they have given notice to the inventors of the required averments places a burden where it does not belong. This is especially the case where foreign inventors are being represented through foreign associate offices. There is often no-direct contact with the inventors and thus the practitioner can not make the required notice and may not even have the necessary information.
The proposed additional processing fee beyond the late declaration surcharge for submission of the oath or declaration after a first Office Action is putting the cart before the horse. Simply maintaining the current practice and starting cycle time only when an application is complete will enable the Office to keep track of pendency delays that are truly on the part of the Office not the applicant while not materially increasing the burden on the Office to assess the need for additional fees and the necessary paperwork that would accompany the same. It is difficult to see any ad-vantage to the Office to changing the current practice to the proposed one.
The proposed change in the definition of "attorney or agent of record" to be merely the person who filed the application is assuming far too much. A proper power of attorney or agency needs to be filed to ensure proper representation of the inventors. Additionally assuming that the signature of one of several pro se inventors is entitled to represent all of the inventors is inviting possible misrepresentation difficulties. If the pro se inventors insist on proceeding pro se, the office has the responsibility to ensure that all of the rights of all of the inventors are being properly represented. A single pro se inventor does not qualify as a proper representative under 35 U.S.C. 31 and 37 C.F.R. 1.34 and is not subject to 37 C.F.R. 10.1 et seq.
The only difficulty with the proposed requirement for filing of an English translation of an application filed in a language other
than English is that it presupposes that the Office will be able to inform the applicants and their practitioners what the. Application No of the application is in time for the translation to be filed. Applicants should not be requited to buy extensions of time waiting for information from the Office to enable them to file the papers needed in the required manner.
With respect to PCT national stage applications, the comments above with respect to foreign applicants apply. Foreign inventors who file PCT International Applications are represented by foreign associate firms or individuals. Practitioners here may not be able to give the required notice to the inventors of their obligations under 37 C.F.R. 1.63(b) nor may they be able to send to the inventors themselves a copy of the application as filed. The retention of current practice ensures in a realistic, workable way that the inventors are properly informed.
3.1 The undersigned sees no substantial gain to the proposed practice of delayed filing of the oath or declaration and only sees future difficulties.
3.2 The undersigned concurs with the observation that over time the difficulties in obtaining a signed declaration only increase. Change in the procedure would increase the number of petitions under 37 C.F.R. 1.47 needed.
3.3 Widely disparate dates of availability of material as prior art is confusing to the public.
3.4 The filer, who presumably is registered to practice, has made the representation that the person signing has the necessary authority to do so 37 C.F.R. 1.34(a).
3.5 An inventor should have to file an oath or declaration first in order to establish that he or she actually has the right to appoint any representative. Otherwise anyone could file anything. The office would have a hard time enforcing 35 u.s.c. 122.
3.6 Absent any express authorization in the record whether an assignment or a declaration with power of attorney, the practitioner signing the papers should be held to the current standards of conduct under 37 C.F.R. 10.1 et seq if the practitioner is an agent or those standards of conduct plus the particular bar requirements with respect to representation of a client if the practitioner is an attorney.
4. Limiting the number of claims in an application.
As an initial comment, the use of loaded terminology and language
is considered inappropriate in discussing problems that are generated by a few practitioners. If necessary, the Office has the authority to chastise any infractions of the rules. Otherwise, comments concerning activities within the current rules do not deserve the use of heavy handed verbiage.
It is considered that the proposed rule is a draconian solution to a problem admittedly generated by only a few instances. The Office has the mandate to impose and set fees that are supposed to recover costs in accordance with Patent Business Goal 5. An administrative surcharge for various escalating numbers of claims in a given application could be imposed. For example, the surcharge could be set to be the fee squared for all claims over 50 (or wherever else the curve is determined to break) and cubed for all claims over 100. Similarly, the surcharge could be set to be some exponent of the fee for independent claims in excess of a determined number. In that manner, the cost for examination is recovered, especially if the time allotted for Examiner is increased in those specific cases and the appropriate performance metrics for the specific Examiner are adjusted to reflect the additional effort. The particular problem for the courts in such cases once the patent issues is not the concern and should not be the concern of the Office. Let the courts deal with the problem in their own way. In that manner, such applicants will get a double dose of trouble.
The proposed limit of forty total claims and no more than 6 independent claims on the number of claims is an arbitrary limitation that gives no consideration to the "nature of the invention claimed."
Another course of action for the Office could take to ensure effective high quality examination is to hire more Examiners and give all Examiners more training. Limiting the number of claims possible does nothing to discourage applicants who intend to do so from presenting claims that confuse and obscure the invention. The proposed rule has nothing to do with encouraging applicants to adhere to the proper standards of 35 U.S.C. 112, second paragraph. Proper examination and clear Office Actions do.
The Office is imposing an implicit restriction requirement in the arbitrary limitation of six independent claims and forty total claims together with any limitations on the number of species that may be embraced within a Markush claim, the number of sequence listings that may be referenced in a claim, or the number of alternative limitations that may be included in a claim.
Practically speaking the proposed rule will not discourage the few applicants from still presenting an "excessive" number of claims. As stated, the applicants will simply file plural continuing applications. The difficulty will arise that the Examiners will
still have to consider all of the claims in toto, since there will be major double patenting considerations which are not present in the single application situation. Additional problems will develop with respect to cross-citing information disclosure statements. There will have been no determination under 35 U.S.C. 121. it should be noted that the increase in examination time will increase workload exponentially and necessarily add to cycle time.
5. Harmonizing standards for patent drawings.
It is not understood how making corrections to drawings to comply with any particular requirements as opposed to any other ones increases the time required to respond to an Office Action.
PCT standards are fine.
6. Printing patents in color..
The comments should be updated with respect to current practice. 7. Reducing time for filing corrected or formal drawings.
The proposed deployment of draftspersons into each of the technology centers is an excellent idea.
The proposal to shorten the period for filing of the corrected drawings or formal drawings to one month is fine. However, the proposal to require formal drawings to be filed at the time of indication of allowable subject matter is too soon. Often considerable prosecution occurs after such an action and additional drawing corrections and problems with the original drawing(s) can surface. The proper time for finalizing the drawings should be once the case is otherwise totally in condition for allowance.
8. Permitting electronic submission of voluminous material.
The only question is what is appropriate archival medium, perhaps a CD ROM. Otherwise, no comment.
9. Imposing limits/requirement8 on information disclosure statement submissions.
The publics perception that it must, in order to ensure compliance with the duty of disclosure requirements of 37 C.F.R. l.56, cite even questionable or marginally related citations originates, as recognized, from the Courts. The additions from MPEP 2004 adds weight to this perception. The Office has generated its own problem.
One possible manner in which the problem of unduly voluminous
information disclosure statement citations could be cured is to drop 37 C.F.R. 1.97 and 37 C.F.R. 1.98 and let the applicants decided precisely how they wish to satisfy their duty of disclosure under 37 C.F.R. 1.56. In the end, whether the duty has been satisfied is decided by the Courts since the Patent Office has dropped any consideration of inequitable conduct.
Another public perception not stated by the rules comments is the perception that the Office is pushing to have the applicants and their practitioners do the Examiner's job.
With respect to the specific proposed rule, if it is decided to retain 37 C.F.R. 1.97 and 1.98, the Office needs to further define "appropriate" with respect to whether or not a particular citation is "appropriate" to cite to the Office. The statement of personal review should not be limited solely to a registered practitioner where the applicant is represented by a registered practitioner or at least one of the inventors where the applicant is not represented by a registered practitioner. The applicant should have the option even when represented by a registered practitioner of providing their own specific comments in lieu of the personal review by the practitioner.
It is noted that the requirement for supplying copies of pending U.S. applications will create an exponentially increasing paper problem in the Office. For example, even in the situation where only five related cases have been filed, copies of each of the other four would necessarily have to be provided in each one of the five. This expands each of the five files multiple times.
The requirement for the applicant to compare each of the citations to each of the independent claims or specific dependent claims in a meaningful way that is unique to each citation would effectively double the Examiner's workload in that the Examiner would have to cross check the material provided and thoroughly review the citation to determine whether any additional information has not been uniquely described which is relevant and pertinent to the claims or may be pertinent to other claims.
The difficulty of providing copies of copending related applications and/or other items containing in confidential information to be clearly labeled as such and filed in a sealed, clearly labeled envelope or container, will add to the bulk of the paper files in the Patent Office and, due to the necessary additional handling, add to the cycle time.
In the situation where the applicant has not complied with the requirements for a unique description and/or a statement of personal review was not made, the plan of the Office to notify the applicant that the citations have been refused further
consideration prior to discarding copies of the citations does increase the amount of handling of an application and does disrupt the workflow through the Office.
With respect to the citation of copending applications, with the current drive to have all applications scanned electronically, the other copending applications should be available on line for the Examiner. Additional paper copies should not be necessary.
10. Refusing information disclosure statement consideration under certain circumstances.
In one respect the Office is reaping the results of the policies that the Office placed into motion. A certain degree of specificity is needed for the applicant to indicate where and how something being cited is at least relevant to the invention. A notice setting out where the problems are is needed. A check-the-box form notice would be useless. In the examples presented, certain of the problems are of the Office making. For example, the 100 page patent should never have issued like that. If it is available to the Office online, a simple word search could alert the Examiner to the most pertinent parts. Otherwise the applicant is doing the Examiner's job with only downside risk if something is overlooked. The second example seems unlikely, but a mechanism to request specificity would be useful. The third example does perform the Examiner's job and the Examiner should be required to read it. The fourth example simply points up the absurdity-of the rule. The office needs to coordinate with the foreign offices to have some semblance of unity of direction.
11. Providing no cause suspension of action.
The requirement for waiving rights to have the application kept in confidence has not been justified in the Office statement. Further there is no authority in the statute for the Office to require or even permit the Office to waive the requirement. No rationale is given for there having been no substantive examination. Further, it is distressing to hear that there may be design applications filed prior to June 8, 1995 that have not yet had a first Office Action. In a utility application, it is difficult to see how a delay in issuance (assuming that the cycle time clock is not running) is any problem to the Office. It merely cuts the patent term. Currently, there is no statutory basis for publication.
12. Requiring a handling fee for preliminary amendments and supplemental replies.
The major problem causing Examiner rework du e to an unmatched preliminary amendment is the delay in the office in and through the mail room. Since there is an unknown seemingly arbitrary period of
time between the filing of an application ' and the examination process by the Examiner, applicants cannot known when is too late to file a preliminary amendment. Perhaps along with the scanning of papers into the file to create the electronic file wrapper, a signal or flag could be added to the record to alert the group that a preliminary amendment has been filed through the mail room. In that case, the Examiner could be alerted and await the arrival of the amendment before examination,. It is questionable whether the Office has the statutory authority to ban preliminary amendments or even supplemental amendments.
The applicants should not be penalized, or even charged a fee because of delays within the Office that cause the overlap. The setting of time periods which would be feeless may work, but are certainly a problem with respect to cycle time.
No data was given as to the frequency or magnitude of problems with respect to supplemental replies.
13. Changing amendment practice by replacing paragraphs/claims.
The proposal to eliminate the 19th century practice of hand written insertions into the record is noted with appreciation. The replacement of numbered paragraphs with replacement paragraphs is a workable compromise.
Since the replacement paragraphs in any response will be scanned and added to the electronic record of the application, it would appear to be a simple programming matter for the Examiner to be able to overlay the replacement paragraph with the original paragraph in see precisely where the changes have been made. Consequently, the need for a separate marked-up copy of the amended paragraph is questioned.
14. Providing for presumptive elections.
A presumptive election based on order of presentation of claims appears to place no undue burden on the applicants who have a measure of the commercial significance of each of possible multiple inventions claimed in an application. Some provision should be made for reordering of the inventions at some date point certain to allow the applicants some flexibility.
One difficulty that is envisioned is with the Examiner setting forth the restriction requirement in the first Office Action on the merits, if the applicant disagrees with the proprietary of the restriction requirement and successfully argues and has the same removed, will the next Office Action on the merits be final when the other claims were not examined.
15. Creating "rocket docket" for design applications.
Group 2900 seems to be the only, or at least the first group to come close to being efficient in processing applications and prosecution papers. Many design cases are issuing within a period close to one year of filing. No need is seen for the procedure. The procedure may create a feeling of second class examiners for the ones not involved in the program.
16. Requiring identification of broadening in a reissue ,application.
Examiners should already be alert to the issues discussed in the comments. The standards are clear. If the examiner is not being relieved of the burden of identifying the broadening, then why require the applicant to do so. In practical terms, if you require the applicant to do it, then the examiner will consider that there is less need to check. It should not be relevant to the Office what a court might find later. That is the problem for the applicant.
17. Changing multiple reissue application treatment.
18. Creating alternative review procedures for applications under appeal.
The purpose of the initial single claim review is not supported under the avowed purpose of the rule changes. It is not likely to reduce cycle time. It will only confirm the customers already low expectations and would result at best in a single claim being indicated to be allowable. Without authority, the Primary Examiner is unlikely to withdraw the rejections. If the Examiner is being unreasonable, there is nothing to prevent or modify the situation.
The stated purpose of the proposed rule is to reduce the number of applications going to the Board of Patent Appeals and Interferences for a decision. That is " the purpose appears to be to make the Examiner do his job correctly and give at least a prima facie case of unpatentability. Better training and spot checks would be more useful.
Certain groups seem to already have re-instituted the old policy of having Appeal Conferences review all cases following-the filing of an Appeal Brief. This has been appreciated in that better Examiner's Answers result when the rejection is justified and quick allowances result when the rejection is not. The Office should implement this Office wide without fee. It is to the benefit of the Office. It reduces cycle time. It eliminates needless appeals. It operates and contributes to continuing training for Examiners to
add to their competency under the real world metrics of peer review. It also exceeds the quality expectations of the customers. It contributes to uniformity of examination across the group and possibly even the Tech center.
It is recommended that the reviewers come from the same or a closely related group so that the benefits above to the Office are felt more uniformly without the need for technical cross training.
19. Eliminating preauthorization of payment of Issue Fee.
The idea seems fine.
The justifications seem to point to internal problems in the Office better solved by firm policy control and enforcement.
20. Reevaluating the Disclosure Document Program.
It is suggested that some of the independent inventors groups be contacted directly to determine the benefit if any of this program.
21. Creating a PTO review service for applicant-created forms.
Very few modern offices rely upon pre-printed forms. The major impetus for designing a form is to computerize it to avoid the use of typewriters.
The idea is fine as long as the direction the Office is going does not include mandatory forms where the only ones usable are those "approved."
George E. Oram, Jr.