2001 JEFFERSON DAVIS HIGHWAY, SUITE 203, ARLINGTON VIRGINIA 22202-3694
Telephone (703) 415-0780 Facsimile (703) 415-0786
Commissioner of Patents and Trademarks United States Patent and Trademark Office
United States Department of Commerce
Box 4 Washington, D.C. 20231
Dear Commissioner Dickinson:
The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to present its views on the notice of proposed rulemaking entitled "Changes to Implement the Patent Business Goals," published in the Federal Register on October 4, 1999.
The AIPLA is a national bar association of more than 10,000 members engaged in private and corporate practice, in gove rn ment service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directlyor indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property.
The AIPLA supports the efforts of the Patent and Trademark Office to achieve its five patent business goals, including reducing PTO processing time of patent applications and exceeding the customers' quality expectations. Particularly helpful in devising ways to achieve the PTO's goals is this opportunity to comment on changes the PTO is considering. To ascertain the value of proposed changes, the AIPLA urges the PTO to consider the effect the changes may have not only on the operation of the PTO and the efficiency of its staff, but also on applicants, their representatives, and the owners who make the investments and take the risks of developing inventions and securing patent protection.
The AIPLA observes that the manner in which the proposed amendments to the rules are presented made it difficult to ascertain the actual changes. The PTO should return to its past practice of showing proposed amendments to rules by use of underlining to show language being added to a rule and brackets to show language being removed from a rule. The use of this format allows the proposed changes to be determined without the necessity of comparing the present rule language with the proposed new rule language for each rule. The manner in which the proposed rules were published for comment in the instant rulemaking puts an unnecessary burden on customers of the PTO to provide meaningful comments. We note that no oral hearing has been scheduled for these rules. As a general matter of policy, the PTO should retu rn to its longstanding practice of holding oral hearings on all rule changes of any significance.
It is not clear from the fee proposals in the proposed rulemaking that the PTO has taken adequate account of the limitations on resetting patent fees in accordance with the statutory authority in 35 U.S.C. 41(d) and (f). While the PTO is to be commended for eliminating p e titions where matters "do not require the exercise of judgment or discretion, but which are routinely granted once the applicant has complied with the stated requirements, "here and elsewhere there appear to be situations where, without justification, there has been no fee reduction for less work or a seemingly high fee set for existing work. Examples include the processing fee amounts set for the items listed in section 1.17(I) and the proposed amendment of section 1.19(b)(2) to increase the fee for a copy of patent-related file wrapper and contents from $150 to $250 (in addition to setting a 400-page limit after which an additional fee is imposed). While the PTO has some discretion in setting its section 41(d) fees, it is nonetheless subject to the overall limits to not set fees higher than costs and to only increase fees annually by no more than the amount of increase of the Consumer Price Index.
The following comments are offered on the proposes rules.
Section 1.9( f) (l): The PTO should consider moving the definitions provided in Section 1.9( f) (l) into proposed section 1.27 to provide a more cohesive policy statement on small entity status. Those qualifying for small entity status would benefit from having relevant guidance consolid a ted in one location to the extent possible.
Section 1.14(a): The PTO should continue to provide status information on continuing applications that claim the benefit of an application on which status information may be provided as in current section 1.14(a)(1)(ii). This information can be very useful to the public and provides some measure of certainty as to whether any continuing applications have been filed and their status.
Section 1.14(d)(4): The provisions of this proposed rule should be keyed to the presence of an executed power of atto rn ey rather than an executed oath or declaration. While the power of attorney is typically included in the oath or declaration document, this is not necessarily the case. Accordingly, access to the application by a registered attorney or agent named in the papers filed with the application should only be operative when an executed power of attorney has not been filed.
Section 1.14: The regulations should provide access to any patent application, regardless of its status, that is part of the prosecution history of an issued patent. The prosecution history of an issued patent is very important in many aspects of claim construction and the enforcement of patents. The inability to obtain access to a parent application leaves a substantial void in the prosecution history that makes an assessment of the patent validity and enforceability speculative at best. Having obtained a patent that relies on another patent application, the patent owner should not be in a position to withhold relevant information from the public.
Section 1.22 (b ): The paragraph is proposed to be amended to change "should" to "must" with regard to itemization of the purpose for which fees are being paid. However, if the PTO is going to impose a requirement for itemization with a penalty of the fees not being accepted, the PTO must set forth how much detail is required in itemization. The regulation should not leave it to conjecture what is meant by "clear for which purpose the fees are being paid." For example, it would seem that a statement submitted with a fee which said that the fee was for filing a patent application would meet the standard of the rule. It is unclear whether the PTO would accept this statement, or whether the PTO is looking for more detail, e.g., a statement that the fee is being submitted for the basic filing fee and for an additional independent claim fee. At the very least explicit guidance should be provided in the Manual of Patent Examining Procedure.
Section 1.22(c): The proposed new paragraph is confusing, and as presently understood, inconsistent with other provisions of the regulations. Accordingly, the proposal should not be adopted in its present form. The proposal states that fees would not be considered "paid" until they are "received in the Office," and proposed section 1.22(c)(3) states that the applicable fee amoun is determined on the date the fee is "paid." This provision would create confusion and inequity for applicants filing papers with certificates of mailing under section 1.8 and filing papers by Express Mail under section 1.10, which papers are considered "filed in Office" on the date of mailing, but certainly are not received in the PTO on that date. For example, section 1.136(a) deals with extensions of time with extension fee payment. Section 1.136(a)(2) states: "The date on which the petition and fee have been file d is the date for purposes of determining the period of extension and the corresponding amount of the fee." (emphasis added) Section 1.22(c), as proposed, conflicts with this longstanding practice of the PTO. The preamble of the Notice which states that a fee submitted with a certificate of mailing " would not be entitled to any benefits under 1.8 vis-a-vis the applicable fee amount ..." seems to differ from the earlier position of the PTO that the rule was not intended to eliminate the benefits of sections 1.8 and 1.10 for fee payments. This proposed change does not appear to be necessitated by a PTO desire to establish a two-year period for requesting refunds in section 1.26 (b ) from some date certain of fee payment, which certainly must be a relatively minor problem.
Section 1.27(b): In a worthwhile attempt to simplify the process for claiming small entity status, the PTO is proposing to create a hopelessly complex procedure that will be very difficult to understand for the great majority of practitioners and their support staffs, and the PTO support staff that must administer this program. Simple is better, particularly when dealing with small entities who may not be represented by counsel. If an applicant does not make a claim for small entity
status, the applicant should not be entitled to the substantial discount in fees that are associated with that status. It is not too much to ask for those claiming a 50% discount that they make an affirmative statement regarding eligibility for small entity status. By making a proposed exception for filing fees, the PTO is only adding to the complexity of the process. Proposed section 1.27(a)(3) should be dropped. Further, the PTO should consider whether the net effect of rewriting th e small entity rules in sections 1.9, 1.27 and 1.28, as proposed, would be a loss, rather than an increase, in clarity. In many ways, the proposed cure appears to be more confusing than the alleged problem.
Section 1.33(a)(2): The ability to change the correspondence address should not be keyed to the filing of a section 1.63 oath or declaration, especially when it is signed by less than all the inventors, and when it may in no way involve the correspondence address. It would seem that the flexibility to change the correspondence address should remain as set forth in paragraph (a)(l), until the correspondence address is established by a party set forth in paragraph (b), except (b)(2).
Section 1.41: No justification has been given for deleting the instruction in section 1.41(a)(3) to use an alphanumeric identifier where no inventor's name is given on filing an application. Accordingly, the proposed change should not be adopted. The PTO, which recently adopted the policy and practice of not requiring the identification of an inventor on filing, now appears to be reversing its position adopted just two years ago. Rule changes can be very disruptive for those who practice before the Office, so changes should not be suggested or adopted unless some significant benefit can be achieved. Proposed section 1.41(a)(4) is unclear and improper in that it seems to preclude correction of inventorship after an international application is filed.
Section 1.44: The elimination of the requirements for proof of authority to be filed in the PTO is a good idea and should be adopted.
Section 1.52: The PTO should not adopt rules, such as proposed section 1.52(a)(5)(i), that state that (1) the PTO would perform services which have not been requested by applicants (converting papers that the PTO thinks do not comply with the format rules) and (2) the PTO would then c harge an open-ended $40.00 per hour fee (section 1.21 (j)) for doing the service that was not requested. Experience has shown that PTO personnel are too frequently in error in their interpretation of compliance with the regulations to adopt such a practice. Applicant should receive notice of deficiencies alleged by the PTO and then should be able to decide how to respond.
Section 1.52 (b )(6 ) proposes that the paragraphs of a patent specification be numbered and that the numbering should be done in some particular format. The PTO should adopt a format that can be provided automatically by available word processing programs.
Section 1.55(a)(2)(iv): The PTO proposes to eliminate the petition for filing a certified copy of a foreign application for purposes of claiming priority after payment of the issue fee and also apparently to eliminate printing such foreign priority information on the patent. The PTO would apparently just place the certif i ed copy in the application file. However, the PTO is not proposing to reduce the fee currently being charged under the present rule. There should be a reduced fee for filing the certified copy in the PTO, if the PTO is not going to review the certif i ed copy and print the priority information on the patent.
Section 1.56(e): The proposal to amend rule 56 to advise applicants of their duty in a continuation-in-part application should not be adopted. The reason that language was placed as a requirement of the oath or declaration was as a reminder to inventors who must sign the document that this duty exists in continuation-in-part applications. This proposed change seems to overlook the purpose of this provision. Furthermore, it is unlikely that an inventor, who may not appreciate the meaning of this provision in the oath or declaration that is executed, would be put on notice of that aspect of the duty of disclosure by putting a statement in rule 56. Finally, there does not appear to be any more reason to add such a provision to rule 56 than other reminders about public use or sale or, indeed, every other provision regarding a form of prior art.
Section 1.67(a): It is not clear what is intended by an "applicant" other than an inventor. The PTO should identif y what is intended and the circumstances when the proposal is likely to be applicable.
Section 1.72(a) : The title of the invention should still be required to be placed on the specification so that the specification can be identified in the oath or declaration being executed by the inventors. The title on the application data sheet will not serve this important purpose.
Section 1.84(a)(2) : The proposal is unclear as to how color drawings and photographs would be handled by the PTO. The proposed amendment to this rule eliminates the requirement for a petition, but the rule appears to retain the standard of "only if color drawings are necessary for the understanding of the claimed invention." It is not clear how the reference in the first sentence to "the only practical medium" will impact on that standard, if at all. Thus, it seems that the examiner could still apply this standard. This is inconsistent with the proposed increase of the fee required from $130.00 to $200.00, which the preamble relates to the handling and printing of color photographs (without mentioning color drawings). If the PTO is going to exercise discretion in permitting color drawings or photographs, it should do so by the granting of petitions so as to promote uniformity of implementation.
Section 1 .85(c): The proposed change to the rule is premature. It may be appropriate to eliminate extensions of time under section 1.136(a) for correction of drawings when the PTO nears its goal of printing patents within 4 weeks of the payment of the issue fee. This change could be implemented by a statement on the notice of allowability at the appropriate point in time. Even then, however, extensions of time for correction of the drawings under section 1.136 (b ) in situations when an applicant can show sufficient cause should not be precluded by rule.
Section 1.97: The PTO is thanked for withdrawing the Information Disclosure Statement (IDS) proposals as set forth in Topics 9 and 10 of the Advance Notice of Proposed Rulemaking. As confirmed by the comments received by the PTO, the proposals would have been harmful to patent applicants and to the patent system.
The preamble to the rulemaking states that the PTO intends to change the way that IDS citations are printed on a patent. IDS citations would be distinguished from art cited by the examiner. This
Proposal has apparently been resurrected without regard to its prior history. The proposal was published for comments in the Official Gazette (1138 Off. Gaz. 37 (1992 )) in the past, and was opposed for a number of good reasons, including that the PTO would seemingly be creating two classes of prior art which could result in the weakening of the presumption of validity. This proposal is not justified by the decision in In re Portola Packaging. Inc.. which is mentioned by the PTO, because Portola dealt with the limited topic of the ability to have a patent reexamined under the constraints of the statute.
The preamble further states that an examiner performs a cursory review of each IDS citation to the extent necessary to determine whether the examiner will evaluate it further. If the examiner's review reveals the citation is not useful, the examiner will stop looking at it. Other than with regard to ordering a reexamination, this review given to a citation on an IDS does not appear to be any different from the review of any document by an examiner. The PTO should clarify this point to remove any confusion which the preamble may have created. It is important for both the public and the courts to understand the official responsibilities of a patent examiner in examining a patent application.
The following comments respond to the topic numbers given in the preamble to specifics of contemplated IDS revisions:
Part (6), section 1.97(i): The preamble discusses a change to section 1.97(i), but paragraph (i) of the rule has not been published with any change shown. In other words, the PTO has not published any proposal to change paragraph (i) and no amendment to the paragraph should be made.
Part (7), section 1.98(a)(2): The one aspect of the Advanced Notice that the PTO is still proposing is to require that an IDS includes a legible copy of each cited pending U.S. application. The AJPLA has long advocated that the requirement to submit copies of U.S. patents with an IDS should be eliminated. Not only do examiners have electronic access to all U.S. patents, but this requirement is inconsistent with the PTO's goal of operating in a paperless environment and p laces an unnecessary burden on both the PTO and applicants. It should therefore be no surprise that we believe the requirement to submit a copy of each pending application cited in an IDS is also an unnecessary requirement and should not be implemented. The PTO should reconsider and withdraw the proposed requirement to submit copies of patent applications that are cited in an information disclosure statement. The proposal runs counter to the worthwhile effort of reducing the burden on the PTO and applicants in submitting papers to the PTO that are already available to the examiner. The PTO acknowledges that the citation of a patent application is relatively rare (64 Fed. Reg. 53796) and represent "a very small minority of documents cited" (64 Fed. Reg.53799) yet apparently is troubled by the burden to locate "and copy" the cited patent applications so they can be reviewed. It is not understood why a patent examiner has to copy a patent application that is to be considered any more than a examiner has to copy every reference in a subclass that is considered during the conduct of a search. In the Advanced Notice of Proposed Rulemaking, theJTO cited several extraordinary examples of unique burdens on the PTO related to the su b missions of information disclosure statements. One example was where several thousand documents were
submitted in each of 100 to 200 related applications. The A I PLA does not believe that the overall burden on both the PTO and applicants will be reduced by requiring that copies of all related applications also be submitted along with each voluminous information disclosure statement? The PTO has failed to demonstrate that the overall efficiency of the examination process can be im proved by adopting this requirement. The PTO stated that they received comments favorable to the proposal, but it may well be that the individuals making the comments were misled by the idea that PTO examiners routinely make copies of cited patent applications. They do not. Further, PTO files and availability will suffer at least as much if applicants are required to have copies made from PTO files by local services.
Part (9), section 1.98(d): Paragraph (d) should not be adopted as proposed. The proposal adds a great deal of complexity to the rule to achieve a very limited benefit. For example, the preamble begins a lengthy discussion by sta l ing that a "situation might arise." Even if the situation does arise, it constitutes nothing more than present practice that could be phased out prospectively if necessary. There is no justification to retroactively apply the requirement of proposed section 1.98(a). Further, present practice requires the examiner to consult the parent applications for IDSs that were filed in compliance with existing Rule 98. Whether or not an IDS was submitted in compliance with Rule 97 should not have any effect on whether an examiner considers an IDS that is present in the parent file. Examiners should be considering the prosecution history in the parent files under most circumstances, so the proposal will simply result in an unnecessary duplication of paper submitted to the PTO, resulting in an unnecessary cost and burden on both applicants and the PTO.
Section 1.103: It is not understood why the preamble says that the title of the rule is being revised "to clarify that the section does not apply to requests for suspension of action . . . by applicant," when clearly does.
Section 1.105: Since the PTO has an inherent authority to request information in the examination of a patent application, we do not understand the need to highlight it in a rule ch a nge. We are concerned that it might be used to shift the burden of examination from the examiner to the patent applicant. The suggestion that a PTO inquiry could be prevented in appropriate cases by the applicant stating that the information is unknown or not available presents a significant risk to patent applicants and owners. It is feared that such a scenario could lead to an open invitation to attack the patent on the basis that the attempt to identify responsive information was not pursued in good faith or that a reasonable inquiry was not made. The implications of this proposal are significant.
Section 1.111(a): The proposed practice is unclear as to whether a second supplemental reply is the third reply to an Office action, or the second. Is it appropriate to assume that the chronology is: reply, supplemental reply, second supplemental reply? While the frustration of dealing with replies that cross in the mail is understood, and nothing new in the prosecution of patent applications, the authority to deny entry of a supplemental reply because of delays in matching a paper with the file is fundamentally unfair. At the very least, the decision whether to admit a second , supplemental reply should be dependent on the state of preparation of the examiners next action at the time the reply is received by the PTO.
Section 1.115(b): The remarks above with respect to second or subsequent supplemental replies also apply to the handling of preliminary amendments by the PTO.
Section 1.121(a)(l): The requirement to submit a substitute specification to make a n amendment to specification where numbered paragraphs or headings are not employed is a substantial burden on both the PTO and patent applicants. At least one problem with substitute specifications is that the printer sometimes does not select the right specification to print when the examination process is concluded. The thought of multiple substitute specifications being submitted during the course of examination would aggravate this problem. Until the Office gets closer to an electronic filing environment, the desirability or necessity of this approach to amendments to the specification is not understood. The PTO should retain the procedure of adding or deleting text to the specification by providing specific instructions for insertions and deletions. Alte rn atively, the PTO should at least permit substitute paragraphs where the paragraph to be replaced is clearly identified su c h as "the first full paragraph on page X."
Section 1.121(a)(2) : The instruction to present all amendments to claims as totally rewritten claims is likely to be understood by most practitioners as requiring the indication of insertions and deletions, and not a requirement to submit a clean copy of the amended claim. The apparent motivation for this proposal appears to be to simplify the printing process as opposed to improving the examination process. The PTO should consider whether this approach to amending claims will encourage applicants to submit a new schedule of amended claims in the form of a new schedule of renumbered claims, thereby avoiding the requirement for both a clean copy and a marked-up copy of pending claims. Such a procedure is not likely to advise the examiner of the changes that were made to the claims that were examined in the previous Office action, and thereby would not contribute to the efficiency or quality of the examination process.
Section 1.155: If the PTO is going to charge a significant fee for accelerated examination of a design application, the applicant should obtain a refund in those cases where the service t h at is paid for is not provided. The PTO clearly has the statutory authority to provide a refund when a service is not provided. Instead of requiring the fee for filing a request for expedited treatment of a design application, the fee could be required for expedited examination of the design application. If that service is not provided, the fee paid is clearly in excess of that required and could be refunded on that basis. Consistent with the efforts of the PTO to be a performance-based organization, this fee should be based on performance and not on unfilled promises.
Section 1.313(c ): The proposed limitation on the ability of applicant to request withdrawal from issue is too limiting. While it is recognized that the Office has a goal to grant patents shortly after the issue fee is paid, this goal is still far from bing realized. The rule should not preclude a request to withdraw an application from issue when reasonably efficient processing could prevent a patent from issuing without having some important matter considered. ,
Section 1.322: The PTO should not delete the opportunity for a member of the publi c to request a
certificate of correction. The public has a right to know whether an apparent error in the printing of a patent should or should not be a part of the patent grant. The PTO has not advanced any explanation of why this particular procedure is an unreasonable burden, nor why it could not be
addressed by a reasonable fee.
Section 1.324: The PTO should require that an oath or declaration be executed by an inventor added after the patent grant. All inventors should execute an oath or declaration in accordance with the requirements of 35 U.S.C. 115, even though they may be added after the patent grant.
We appreciate the opportunity to provide comments on the specific topics under consideration by the PTO. We look forward to working with the PTO to achieve its patent business goals in ways that will not unnecessarily burden applicants or their representatives. We are anxious to work with the PTO to develop workable solutions to the problems it has identified.