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COMMENTS OF ABA SECTION OF INTELLECTUAL

COMMENTS OF ABA SECTION OF IN T EL L EC TU AL PROPERTY LA W TO

NOTICE OF PROPOSED RULEMAKING REGARDING CHANGES TO IMPLEMENT THE PATENT BUSINESS GOALS FEDERAL REGISTER OCTOBER 4,1999 VOLUME 64, Number 191

The following comments are directed to the proposed changes to the rules of practice identified in the Notice of Proposed Rulemaking published on October 4, 1999. Several comments relate to the 21 topics considered by the PTO to implement the patent business goals. See Changes to Implement The Patent Business Goals, Advance Notice of Proposed Rulemaking, 63 FR 53497 (October 5, 1998, 1215 0. G. P.Office 87, October 27, 1998). The comments are divided into three categories:

1) Comments relating to changes that were proposed in the previous advance notice that are included in the current Notice of Proposed Rulemaking;

2) Comments relating to new proposed Rule 105;

3) Comments relating to other proposed changes to the

rules of practice.

1. COMMENTS RELATING TO CHANGES THAT WERE PROPOSED IN THE PREVIOUS ADVANCE NOTICE THAT ARE INCLUDED IN THE CURRENT NOTICE OF PROPOSED RULEMAKING

Topic 1: Simplifying Request for Small Entity Status (§§ 1.9, 1.27, 1.28)

Comment: The proposed changes significantly simpl i fy the

procedure for establishing entitlement to small entity st r atus, and

eliminate the non-substantive, formalistic requirements for establishing status as a small entity.

Topics 5 & 6: Harmonizing Standards For Patent Drawings 1.84); Printing Patents In Color 1.84)

Comment: The PTO proposal to delete requirements more stringent than the PCT drawing requirements while retaining the right to accept color drawings/photographs is acceptable to the Section. However, it is recommended that the Examiner, and not a separate draftsperson, review the drawings for both form and content.

Topic 7: Reducing Time for Fi l ing Corrected or Formal Drawings (§§ 1.85, 1.136)

Comment : The original PTO proposal was amended to reflect the Section's comments, namely that formal drawings should not be required upon indication of allowable subject matter and that the time for submission of corrected formal drawings should be the same as the date for payment of the issue fee. The proposed changes, including making the three-month time period non-extendable, is acceptable to the Section of Intellectual Property Law .-

Topic 8: Permitting Electronic Submission of Voluminous Material (§§ 1.96, 1.821, 1.823, 1.825)

Comment: The Section agrees that the proposal to permit the submission of large computer program listings and nucleotide and/or amino acid sequence listings in machine readable form would be beneficial. However, there must be assurance that material on the machine readable medium cannot or will not be altered. Also,

consideration should be given to the possibility that as technology develops, future reading equipment may not be capable of reading information that is now being stored in machine readable form.

Topic 9: Imposing Limits/Requirements on Information Disclosure Statement Submissions (§§ 1.97, 1.98)

Comment: The PTO proposes to go forward with only one aspect of the plan for Information Disclosure Statement revisions: to require that an Information Disclosure Statement include a legible copy of each cited pending U.S. application or the portion of the application that caused it to be listed.

Any increase in applicant's burden to comply with this proposed requirement is minor since citation of U.S. applications are rare and/or most practitioners have ready access to copies of the U.S. applications they cite. The small burden is outweighed by the benefits obtained, including decreasing the time burden on Examiners to obtain and copy cited U.S. applications, avoiding interruption of prosecution of the cited application, reducing the risk of loss or misplacing papers from the cited U.S. application file, and providing copies to the public of such cited applications when the patent issues. Accordingly, the Section does not oppose adoption of this proposal.

The proposed requirements to limit the number ' of cited references and to require the practitioner to include a statement of review of the art have been withdrawn. The Section agrees that these proposals should be withdrawn and will also continue to study other proposals relating to the identification of prior art during the examination of a patent application.

Topic 12 : Requiring a Handling Fee for Preliminary A mendments and Supplemental Replies (§§ 1.111, 1.115)

Comment: The PTO has dropped its proposed rule to charge a handling fee for preliminary and supplemental replies. The entry of second or subsequent supplemental replies may, however, be

"disapproved by the Commissioner." In addition, the PTO has . set up

a new rule in § 115 to provide that "Preliminary Amendments" may be

disapproved by the Commissioner. The proposed rule establishes times within which preliminary amendments cannot be disapproved by the Commissioner. These are: a) three - months from the date of filing of a Rule 53 (b) application or from the date of national stage entry in Rule 491; and b) the filing date of a Continued Prosecution Application under Rule 53 (d).

The Section opposes the proposed rules. Ail preliminary amendments and replies should be considered by the Examiner as a matter of right as in previous rules. Supplemental or second replies and preliminary amendments (hereinafter, filings) are usually made to speed prosecution and remove issues that would otherwise slow down prosecution of applications. Often, new prior art or learnings have come to the applicant's attention which necessitate the filing. By refusing to enter some of such filings, the PTO is causing further delays and additional work for both Examiners and applicants. An Examiner's Office action may deal with issues that are unnecessary or moot in light of the filing. This causes additional responses and work for the applicant to repeat the filing as well as fully respond to the unnecessary or moot part of the Office action.

The proposed rule change is unnecessary since there is adequate incentive at present for applicants to file a preliminary amendment as soon as possible after the filing of the application. Practitioners are aware that a "late" preliminary amendment, for example one filed three months or more after the filing date, may not reach an Examiner before mai l ing of the first Office Action.

Practitioners are further aware that if the "late" preliminary amendment doe s reach the Examiner before the mailing of the first Office Action, it is likely to lead to a delay in prosecution because the Examiner will need to first enter the amendment before examining the application and issuing the Office Action . If the Examiner has already begun preparing an Office action, the PTO

could possibly charge a fee to have the amendment considered (which would also encourage early filing of such amendments) .

If the PTO insists on such a regulation, the Section believes that a one-month grace period should be granted for continued prosecution applications. It is often difficult to prepare a preliminary amendment in a continued prosecution application before the date of filing. Applicants shou l d be given at least one month in which to prepare such a preliminary amendment.

Topic 13 : Changing Amendment Practice to Replacement By Paragraphs/Claims (§§ 1.52,1.121)

Comment: While we believe that the overall desire of the PTO to incorporate a more efficient mechanism for amending applications is commendab l e, we believe that implementation of the proposed paragraph numbering system embodied by the changes to Rules 52 and 121 would be highly impractical at this juncture.

Current word processing software lacks the capability to implement the required changes in anything even resembling a seamless conversion to the patent practitioner.

While one could design a paragraph numbering style that utilizes a system of four Arabic numerals, e.g. 1234, (xxxx) if one were to later add paragraphs 1234, 1234.1, 1234.2, etc., the format changes (xxxx. y). If, in a subsequent amendment paragraphs 1234.1,

1234.11, 1234.12, 1234.13, etc. were added, the format changes yet again (xxxx.yy).

For example, if the format of the paragraph numbering style will ultimately require a 1234. xx system, then you must provide that in the original design and many programs will incl u de the following zeroes, e.g. paragraphs will be numbered 1234.00, etc. (which is contrary to what the PTO would l ike) .

Furthermore, and more importantly, the software packages can not discern between a section title and a paragraph. In short, given the present state of word processor sophistication, implementation of the Office's proposed system would constitute an undue burden on the practitioner.

Lastly, if this system were implemented, there may be no reasonable way to review the chrono l ogy of amendments, such as when determining the genesis of fi l e wrapper estoppel.

Often times, when reviewing a history, certain changes are not made in a logical way, such that their chronology is apparent. While one could go back through every amendment and scan the marked-up submissions (as has historically been done) , their chronology would no longer be clear, since they would lack the classical notations of the "hand-entered" system, where an amendment was inserted as "Paper A", "Paper B", etc.

Thus, if implemented, any system should incorporate a leading dig i t, e.g. 1.1234, such that each subsequent amendment would have an easily recognizable chronology. Thus all original paragraphs would be l.xxxx, paragraphs in the next paper would be designated 2.xxxx as a substitute, etc.

This would at least give the reviewer some reasonable ability to understand at what point in the prosecution certain changes came about, as well as providing the Office with a tool to eliminate confusion if a paragraph is changed several times.

Although the Section is cognizant of the burden on the Office regarding electronic scanning of marked-up copies, it is our opinion that the PTO should not go to a paragraph numbering system until such time as the consequent burden on the practitioner is not so egregious .

Topic 15 : Creating a Rocke t Docket: for Design Applications 1.155)

Comment: The Section of Intellectual Property Law believes that the $900 fee is unjustified inasmuch as the same effect can be obtained with the current petition to make special, at a much reduced fee. The PTO's justification for the high cost appears to be contradictory in that the PTO states that the petition requires a considerable amount of time and effort in contradistinction to the expedited procedure which "may be readily decided as part of a clerical function." It is general believed that while the expedited procedure is a good idea, the proposed $900 surcharge is excessive.

Topic 17: Changing Multiple Reissue Application Treatment, (§1.177)

Comment: The Section considers this proposal to be reasonable .

Topic 19: Eliminating Preauthori z ation of Payment of the Issue Fee (§§ 1.25, 1.311)

Comment: The Section generally favors the proposed change. The proposed rule is favored in view of the stricter standards for entering amendments under 37 CFR § 1.312 and § 1.313, which are being simultaneously proposed. In view of these new rules , it is important that the applicant make all necessary amendments to the claims and file any necessary Information Disclosure Statements before payment of the issue fee.

The proposed amendment will prevent the PTO from interpreting an authorization to charge PTO fees filed before the Notice of Allowance as an authorization to charge the issue fee. The proposed Amendment will prevent applicants from obtaining automatic payment of an issue fee, and hopefully will encourage applicants to consider delaying payment of the issue fee until a formal investigation into whether any additional amendments are necessary, whether an Information Disclosure Statement should be filed, or whether any continuing applications should be filed.

If prompt payment of the issue fee is desired, the applicant can promptly return the PTOL-85b Form and authorize payment of the issue fee at that time. It is also noted that applicants generally want assignee and attorney data to appear on the face of the patent, which requires submission of the PTOL-85B Form. Thus, it is not seen where e l iminating pre-authorization of the issue fee will be a significant inconvenience to applicants.

II. COMMENTS RELATING TO NEW PROPOSED RULE 105 Rule 105: Authori t y to Require Submission of Information

Comment: The Section strongly opposes this proposed regulation. This proposed rule creates a new type of PTO "action", creates an unreasonable burden on Applicants, shifts the burden of examination from the Examiner to the Applicant, is without

authority in the statute, and does not meet the goal of simplification of PTO processes.

The request for information is, in fact, a new type of action created for the first time by the PTO. It provides for a request from the PTO and a response from the Applicant. Applicants will be required to respond to these requests. In addition . Examiners will be required to take the time to prepare such requests and study the information provided by the Applicants. This creates an additiona l burden on both Examiners and Applicants and slows the examination process. In fact, the information request could take an additional 8 months of processing time for the Examiner to prepare the request, the Applicant to respond (including extensions of time) and for the Examiner to review the information submitted by the Applicant. This does not meet the goals of the PTO of simplifying processes .

The new regulation puts an unreasonable new burden on Applicants. The regulation requires submission of information "reasonably necessary". This is a new standard versus the standard of materiality in Rule 56. The Examiner can request information from the Applicant that is not material to the examination. This is a serious departure from the existing rules. The Examiner can now request information that 1) is not prior art to the application, 2) is not material to the examination of the application, and 3) may be protected by the attorney-client privilege. The exampl e cited by the PTO requesting all information that was used to draft the application or in the invention process establishes an onerous burden on Applicants and the PTO. Applicants may be required to turn over non-prior art internal corporate documents, correspondence between the attorney/agent and the inventors concerning the drafting of the application, dictionaries, thesauruses, reference books, inventor notebooks, and o t her information clearly "not material" to the examination. In fact, such an information request may require the submission of voluminous information to the PTO that must then be reviewed by the Examiner.

The regulation also estab l ishes a duty to make a good faith search for this information. This puts an additional bu r den on Applicants and attorneys. This burden is especially magnified when the inventor is a part of a large corporate team or a foreign national. If the inventor is a foreign national, the patent attorney will have to create a good faith search in a foreign country for many of these materia l s. The materials may also have to be translated. This creates additional expense and time delay in the application process. It also calls into question whether or not a good faith search has been made in subsequent litigation on the patent. This additional burden on Applicants is simply unjustified and unnecessary to the examination process.

The PTO has stated that the Examiner may request comments on recent court decisions. This is improper and unnecessary. The PTO is asking the Applicant to provide an opinion on case law. This could request attorney-client privileged information or ask pro se Applicants or agents to violate PTO or state bar ethical rules by opining on case law. Any such comment also has the potential to create a serious estoppel problem for the patentee. Further, there is no need for Applicants to provide comments on recent case law unless the Examiner has cited that case as a basis for rejection.

The proposed rule also finds no basis in the statute. The two statutory provisions cited by the PTO for "inherent authority " do not deal with any ability of the PTO or the Commissioner to ask for the submission of information. The statutes impose upon the Commissioner the duty to examine applications and issue patents. The other statute simply provides for the PTO to reject or object to applications, to state the reasons why the rejection was made, and to allow applicants to respond. There is no authority, either

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implicit or explicit, to require the submission of information or for this proposed regulation.

Attention is invited to the last sentence of 35 USC 103 (a) stating that "Patentability shall not be negatived by the manner in which the invention was made" and the last sentence of 35 USC 6 (a)

stating that Commissioner may only "establish regulations, not inconsistent with law". A request by the PTO for information as to a relevant commercial data base, or as to published articles or as to "non-patent literature or patents that were used to draft the app l ication or in the invention process" is clearly a request for information as to the manner in which the invention was made. There is no need to give an Examiner the power to request information for the sole purpose of providing support of patentability, since an applicant has a right to voluntarily supply any available information for consideration. If Examiners are given the power to request information, it is inevitable that the information obtained will be so used that patentability will be negatived in direct violation of 35 USC 103 (a) .

Overall, this proposed rule does not meet the PTO goal of simplifying the examination process. It adds an additional new action. It places on an examiner and an applicant additional new duties and actions. It places an onerous new duty on Applicants to do a search for such information. It slows the examination process. It creates a whole new category of action to be-l i tigated with respect to the duty of candor. The proposed regulation is not simplifying but makes the examination process more complex, such that the Section strongly opposes this proposed regulation.

III. COMMENTS RELATING TO OTHER PROPOSED CHANGES TO THE RUI^S OF

PRACTICE

Rule 14: Access to Patent Applications

Comment: Under the proposed amendment to Rule 14, the PTO may provide access or copies of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Accordingly, the PTO may, for example, provide copies of applications to another federal government agency. However, the PTO may provide such access or copies without requiring the other federal agency to file a petition including a showing that special circumstances exist. Access should not be provided to pending applications without specifically setting out a procedure and definition relating to "special circumstances." Similar to the public, federal agencies should also provide a showing that special circumstances exist.

Rule 53 : Application Data Sheet

Comment: Several proposed rule amendments refer to the use of an Application Data Sheet, which becomes part of the application. The Section favors use of the Application Data Sheet since it should help reduce filing receipt errors.

Rule 55: Late Claiming of Priority

Comment: It is proposed that Rule 55 be amended to clarify that a claim of priority and documents may be filed after payment of the issue fee but before the patent issues but with no further review by the Office. In addition, the printed patent will not

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include the priority information that maybe added, however, by a certificate of correction at which point a determination of entitlement to priority will be made.

Filing the claim of priority and documents without the certificate of correction leaves the question of priority in limbo. Accordingly, the Section proposes that a procedure be set up to a l low the filing of a claim of priority and documents after the issue fee is paid but before the patent issues with the USPTO determining the entitlement of priority and issuing a certificate acknowledging priority.

For example, while the file might be in another area of the PTO undergoing the printing process, it will at some time make its way to the person reviewing the priority claim and that is the time the certificate of correction should be endorsed. If for some reason no patent issues, then the matter becomes moot. Since the cost of determining priority has a l ready been paid in the original filing fee the on l y remaining cost is in finding the file and issuing the certificate of correction. A single fee of $130.00 for this activity would seem to be adequate.

Rule 312 : Limi t ing Amendments After Payment of Issue Fee

Comment: The Section favors the proposed changes as necessary to allow for the speedier issuance of patents after payment of the issue fee. The Section also favors the proposed new rule in that it will present a clear distinction between cases in which the issue fee has been paid and the application is proceeding to issue, and all other applications. In particular, it is believed that the new regulations will clarify the status of applications for which the issue fee has been paid but for which Rule 312 amendments are outstanding. It is believed that this will avoid inefficiencies

that are common in present practice, in which it is necessary to

 

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transfer a file for which the issue fee has been paid back to the Group for consideration of the amendment.

The Section urges the PTO to provide notice (for examp l e, a standard Notice of Rule Change to accompany the Notice of

Allowance), for six months to one year after adoption of, the new

rules, to provide further notice to applicants of the new rules.

Rule 313: Withdrawing Applications from Issue

Comment : The Section favors in principle the proposed changes as necessary to allow for speedier issuance of patents. It is suggested that the provisions of subsection (c) be amended to clarify that the procedure for express abandonment in favor of a continuing application includes a continued prosecution application. This would also require an amendment to 37 C.F.R. § 1.53(d), which provides that a continued prosecution application cannot be filed after payment of the issue fee. This would provide an efficient way for an applicant to have the PTO consider a newly discovered reference in applications for which the issue fee has been paid, and not significantly delay issuance of a patent (provided that the applicant is entitled to a patent after consideration of the IDS) .

Rule 322 : Authority to Issue Certification of Correction

Comment: The proposed changes are not believed to have a significant effect on patent practice, since the changes will conform the rules more closely to the prevailing law. The Section favors the proposed amendments, since the amendments clarify that under the law and present practice a third party does not have a right to demand that the PTO issue a certificate of correction.

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