POPA COMMENTS REGARDING THE PROPOSED RULES
. PUBLISHED IN THE FEDERAL REGISTER ON OCTOBER 4, 1999.
In response to the invitation for public comments regarding the "Changes to Implement the Patent Business Goals; Proposed Rules" published in the Federal Register on October 4, 1999, the Patent Office Professional Association (POPA) sets forth the following comments.
Limitations On the Number of Claims
The most significant item in the entire rules package is not what is being proposed, but, rather, that which was rejected as not worthy of adoption. Examiners are convinced that the planned rule regarding the limitation on the number of claims that may be included in a single application is the most significant possible change in the entire package.
Although only less than five percent of all applications (as stated in the PTO Advanced Notice Of Planned Rule Changes published in the Federal Register on October 5, 1998) would exceed the proposed claim ceiling if current practice were to continue, these applications consume a disproportionately large amount of examining time. At the present time, the fee structure is such that it does not compensate the PTO for the extra work required to handle cases that contain unusually large numbers of claims. In essence, the applicants who present a reasonable number of claims subsidize the applicants who seek the safety of numerous claims for a large number of minute variations.
Examiners report that it is demoralizing to receive applications having an excessive number of claims. Not only it is confusing to have to deal with large number of fine distinctions, the Agency production system was established at a time (1976) that did not take into account as many high claim count applications as are currently being filed. At present, no extra time is provided for examining cases having more than forty claims. As a consequence, examiners may be forced to group claims into batches and ignore the distinctions within a group. As a practical matter, individual claims in high claim count cases do not get as much consideration as claims in applications having more r easonable number of claims.
With respect to the proposal to limit the number of claims in an application (37 C.F.R, 1.75), POPA previously submitted the following comments which we believe to be true:
"We believe that the proposal to limit the numbers of claims in an application would improve the quality of examination by enabling examiners to more equitably divide their time among all the cases in their docket. The establishment of a 40 claim limit seems to be generous in comparison to the requirements of many foreign countries.
Numerous examiners have emphasized the signif i cant value of this proposal. There is a general acceptance that a large number of claims causes confusion and thereby c o nsumes a disproportionately large amount of time. The examiners are convinced that this is the most signif i cant rule change in the entire package.
Most importantly, this rule change still protects applicants ' right to f i le as many claims as they desire by filing multiple applications. In a sense, this rule can be viewed merely as a mechanism for charging a more equitable fee for the amount of work entailed by a large number of claims.
The proposals do not explicitly take into account the effect of multiple dependent claims. The PTO should specify that the current practice used to determine, for fee purposes, the number of claims in the applications that have multiply dependent claims is the practice to be applied to the calculation of the maximum number of claims permitted. "
The Office listed the arguments against the adoption of limitations of the number of claims per application as: (1) decisions by CAFC leave such uncertainty as to how claims will be interpreted that additional claims are necessary to adequately protect the invention; (2) applicant, not the Off i ce, should be permitted to decide how many claims are necessary to adequately protect the invention; (3) there are situations in which applicant justifiably needs more than six independent claims and forty total claims to adequately protect an invention; (5) the proposed change exceeds the Commissioner's rule making authority; (6) the change will result in more continuing applications, and is just a fee raising scheme; (7) the change will further increase abuse of restriction practice; and (8) since only five percent of all applications exceed the proposed claim ceiling, there is no problem.
The perception by many is that when a large number of claims is presented in a single application, these claims do not get the individual treatment that applicants really hope for. In fact, due to the limited amount of time that can be spent by examiners and by the Courts, the distinctions among claims are ignored, or at least not given full consideration, when more than forty claims are presented. While some applicants may think that there is a safety in presenting such a large number of claims, we know of no reported litigated cases in which the presentation of more than forty claims saved a patent from findings of invalidity or enhanced recoveries for infringement. The comments in the Federal Register are based on theoretical considerations. The absence of even anecdotal evidence of the need for a large number of claims is particularly significant.
We recognize that, of course, there are many examples of cases in which some claims are held invalid and other claims are held valid. What we have no knowledge of is cases wherein the validity of the patent is saved due to the fact that the patent contains more than forty claims. To the best of our knowledge, a reasonable number of additional claims really do provide a benefit to applicants, but, the number of claims can reach the point of diminishing returns. Even if a few cases could be found in which a benefit was derived from filing a large number of claims, we believe that due to the current production system for examiners at PTO, the large number of claims would receive better quality of examination if these claims were to be divided among different applications.
The planned rules changes did not infringe on applicant's ability to file as many claims as would be necessary to protect an invention for two reasons. First, applicant's right to file as many claims as applicant desires can be effected by filing multiple applications. Second, to meet a true need for more than forty claims in a single application, applicant can file a petition under 37 CFR 1.183 for a waiver of the rule as was originally suggested by the Agency. Of course, examiners will need extra time and credit for adequately considering these spec i al applications.
Although any need to file multiple applications is viewed as a fee raising scheme, it is reasonable to have an applicant pays for the additional work entailed by a large number of claims so as to lessen the subsidy burden for the applicants who file less than forty claims.
POPA believes that the Commissioner does not exceed his rule making authority for the reasons set forth in the PTO Advanced Notice on Planned Rule Changes published on October 5, 1998. However, an opportunity to avoid the issue as to authority was created in Patent and Trademark Fee Fai rn ess Act of 1999. The consequences of limiting the number of claims in an application or charging extra fees for a large number of claims can be considered in the study to encourage maximum participation of the inventor community mandated under Section 4204 of the Fai rn ess Act. Congress appears to be interested in getting involved in the issues of fee fairness and fee subsidies.
The restriction practice is not affected by the limitation of forty claims per application because the restriction practice is based on the number of patentably distinct inventions or species, not on the number of claims per application. POPA believes that restriction practice is not abused, however, this rule change would lessen the need for restriction because it would encourage applicant to file multiple applications when seeking protection for multiple inventions.
With respect to harmonizing standards for patent drawings (37 C.F.R. 1.84), POPA previously commented that:
"The main impact would be on the subject of surface shading in the design patent applications. The Office should set new g uidelines to def i ne the examiners ' objection to the lack of surface shading. It appears that the surface shading w ould only need to be added if t here is a question of clarity under 35 USC 112, first paragraph, or the indefiniteness under 35 USC 112, second paragraph."
On page 53793 of the instant Federal Register, the Office concluded that, in general, drawings should only be objected to by the Office if they cannot be reproduced or there is an error in the drawings. POPA supports this conclusion since it preserves the examiner's opportunity to object to the drawings on the basis of minimum statutory requirement for the disclosure of the invention.
With respect to PCT and plant patent drawings, POPA previously commented that:
" The PCT drawing rules are problematic for plant patent applications in that: PCT Article 7 (7.2)states that the time limit shall in no case be shorter than two months. This proposed change introduces a new time period which does not contribute to the compact prosecution or cycle time.
PCT Rule 11 – limit the drawing sheet size to A5 is burdensome to the applicant and conflict with the applicant-friendly business goal of the Office. In 1996, the drawing sheet rules were changed to restrict sheets to A4 or 8 V; XII to accommodate the printer with the margin preference. Prior to that time, the drawing sheets 8 1/2 X 14 were also acceptable with different marginal requirements. To limit applicants ' choices serves no purpose in reducing the cycle time.
R u le II (37 C.F.R. 1.437) does not allow applicants to submit drawings/photographs after 30 days from receiving notice. In addition, the requirement that all drawing sheets must be numbered is not in the current practice in plant applications since it is unnecessary. The plant examiners should have the discretion to require the numbering of the drawing sheets.
Note that M.P.E.P. 1825, second column, states that "The PCT makes no provision for photographs" and "color photographs are not accepted. " This is in direct conflict w ith 37 C.F.R. 1.165 (a) and (b) that require color photographs in plant patent applications.
Since plant patent application cannot be passed to issue without formal drawings being of record, thus, the requirements that applicants can only amend the drawings if a "demand for international preliminary examination is filed" is unnecessary in plant application."
First, the Of fi ce proposed that under Section 1.85(c), the period for filing corrected or formal drawings in response to a Notice of Allowability is not extendable to reduce cycle time. Since the Office is taking a positive step to make it easier for approval of drawing correction or formal drawings, POPA supports this change.
Second, the Office concluded that the Office should accept the drawings that would be acceptable under PCT rules, but should not copy PCT rules solely for the sake of uniformity. For example, the proposed Rule 1.84 does not permit color drawings in international application. Since the proposed Rule 1.84 is more customer friendly, POPA supports this change.
With respect to printing patents in color (37 C.F.R. 1.84), POPA previously commented that:
"Printing patents in color, especially, plant and design patents, is expected to be of significant benefit to examiners and the public when conducting a search. However, the Office should clarify that the color shown in the patent may not be the actual color of the claimed element due to the difficulty of matching precise hues in economically feasible printing processes. There should be a notice or warning that the actual color is what is shown or described in the application file, not what is printed. For color critical patents, the Office should set forth a requirement that the printed color must be compared against a recognized color standard as is done in the current practice for plant patents.
The PTO should encourage applicants to use color in the drawings to identify individual parts or paths - when it w ould enhance understanding, e.g., fluid paths in cases having complicated flow paths, or individual parts in a complex machine having a plurality of complicated parts.
Although the proposed Rule 1.84 requires that the specification must contain or be amended to contain a notice of a color drawing, however, the proposed Rule does not have a notice/warning that the actual color is what is shown or described in the application file, not what is printed. Moreover, the Office still does not set forth a requirement that the printed color must be compared against a recognized color standard as is done in the current practice for plant patents for color critical patents.
With respect to electronic submission of voluminous material (37 C.F.R. 1.96, 1.821), POPA previously commented that:
" We support allowing submission of large computer program listings and nucleotide and/or amino acid sequence listings in a machine readable form. However, we are concerned about the access to the sequence listings if the rules go into effect in the present form. The examiners must occasionally directly read the actual sequence. In the absence of a paper copy, will the computer or machine readable forms be available to the examiners other than through a library sequence search? If not, the examiners will be left with thumbing through the specification as the only means to actually view the sequence of interest. Sometimes, that is easy, more often, it is not. POPA suggests that the Of fi ce requires a list of locations where in the specif i cation, a particular sequence is found. This could be limited to the first occurrence or all occurrences of the sequence in the specif i cation such as:
" SEQ ID NO.1, see page 4, line 22."
"SEQ ID NO. 2. see page 8, line 7."
The above listing will save the examiner some time if he/she needed to actually have the sequence in front of them. This page could be placed at the last page of the specif i cation, right before the claims where the current sequence listing is placed This page would need to be canceled by informal examiner's amendment at time of allowance since the listing would not correspond to the issued patent and since it would be redundant to the actual sequence listing that is printed in the issued patent. But we think that would be afair trade off to the examiner in exchange for a quicker access to the sequences in the specification.
This would still represent a significant amount of paper for cases having extensive numbers of sequences but far less than an entire sequence listing and would still give the examiner a relatively efficient means of locating sequences in the specif i cation when necessary. This would also eliminate any need for the examiner to have access to the CRF listing which we suspect the Office would not want to give anyway.
POPA does not support the allo w ance of submission of the Information Disclosure Form (IDS) in a machine readable form since it would take valuable examining time to print out the voluminous cited references. "
Page 53794 of the instant Federal Register states that only the computer program listings and the nucleotide and/or amino acid sequences would be accepted in machine readable format. Although POPA supports this proposal, POPA is concerned that the Office ignored POPA's suggestion that The Office requires a list of locations where in the specification a particular sequence is found. The examiner's time is wasted if the only means to actually view the sequence of interest is to thumb through the specification.
INFORMATION DISCLOSURE STATEMENTS
With respect to the previous proposal to impose limits/requirements on information disclosure statement submissions (37 C.F.R. 1.98), POPA commented that:
"The Office should charge additional fees in proportion to the number of cited references and provide additional time to examiners in proportion to the number of references cited in the information disclosure statement (IDS). Limiting the number of the references cited in the IDS is not the best solution since it would infringe upon applicants' rights to submit the number of references that applicants deem to be material and may affect the validity of the patents in case of litigation.
In addition, the Office should require the applicants to submit a copy of all of the citations cited in the IDS. The rule change discusses the burden on the examiners to locate cited U.S. applications. However, there is an equal or greater burden on the examiners to track down all the parent applications to f i nd the prior art cited in the parent applications. The copies of the cited references in the parent applications are ordinarily missing. Therefore, the Off i ce should require the applicants to submit a copy of each and every citation in the IDS to be considered by the examiners. "
The Office helps examiners and saves a significant amount of time by requiring applicants to submit copies of cited U.S. applications. However, the Office does not require applicants to submit a copy of prior art cited in the cited applications. To secure the copy of prior art cited in these applications would cause an undue burden on the examiners. Moreover, the proposed rules do not distinguish between applications relied upon for an earlier filing date under 35 USC 120 and applications not relied upon for an earlier filing date. Applicant may overcrowd the record with copies of pending but unrelated applications.
More important, the Office does not intend to charge an additional fee and provide more time For the examiner to consider the cited references. The public interest is better served if the Office charges an additional fee and provides more time for the examiners to consider the cited references.
With respect to the previous proposal to r e quire a handling fee for preliminary amendments and supplemental replies (37 C.F.R. 1.111), POPA commented that:
"Under current practice, applicants may f i le unlimited , preliminary amendments and supplemental replies (papers) without paying additional fees. In some cases, the numerous gratis preliminary amendments and supplemental replies cause confusion and undue burden when PTO clerical staff enters these papers and when the examiners consider them. POPA supports this requirement since it would help to alleviate this problem."
The Office does not require an additional fee, but, reserves the right to disapprove the entry of second or subsequent supplemental replies. This approach will cause an additional administrative burden to the examiners and Technology Center Group Directors when they decide the appropriateness of the entry of second or subsequent supplemental replies without additional revenues to compensate the Office for this burden.
With respect to the proposal to change a mendment practice to replacement by paragraphs/claims (37 C.F.R. 1.121), POPA commented that:
"POPA supports this proposal if the rule positively requires the applicant to submit a marked-up copy of the changed paragraphs or claims. The positive requirement of the marked-up copy will facilitate the examiners (and/or the Court durin g litigation) to detect new matters, i.e., to reduce cycle time.
In addition, the proposal should make clear that the requirement of a replacement paragraph is not applicable to the examiners ' amendment in order to encourage the examiners ' amendments to expedite the prosecution."
The Office helps examiners by requiring applicants to submit a marked-up version showing the changes to accompany the actual amendment. However, the Office should make clear that the requirement for a replacement paragraph is not applicable to examiner's amendments in order to encourage such amendments which expedite prosecution.
With respect to creating a "rocket docket" for design applications (37 C.F.R. 1.155), POPA commented that:
"The proposal recognizes that design examiners ordinarily group search their applications and would require extra time for searching if the application is to be searched individually. We believe that this recognition is correct and w ill require granting examiners extra time. "
The Office maintains the proposal to create a "rocket docket" for design applications. However, unless the Office grants extra time to examiners to individually search the cases in the rocket docket, quality will suffer. Individually searching design applications is a burden to examiners.