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From: lkasten@AKINGUMP

 

From: lkasten@AKI N GUMP.com

To: regre f o rm @uspto.gov

Subject: Comments regarding Proposed Rule changes to implement Patent Busi ness Goals

 

Dear Mr. Bernstein:

 

Set forth on the attachment are comments relating to two of the proposed rule changes. With the exception of these comments we are generally in agreement with the proposed rule changes and we look forward to their implementation.

The comments on the attachment are being submitted on behalf of the senior patent atto rn eys of the Philadelphia office of Akin.Gump, Strauss, Hauer & Feld LLP. The senior patent attorneys of the other offices of the firm have also reviewed and approved the comments.

We apologize for submitting the comments late. Unfortunately our network was plagued by a virus at the end of last week and we could not access the comments or send them out.

Respectfully submitted,

Leslie L. Kasten Jr. Registration Number 28959

Leslie L. Kasten, Jr.

Akin, Gump, Strauss, Hauer & Feld, L.L.P. lkasten@akingump.com 215 965 1290

Comments for proposed changes to Rules 1.97 and 1.98

The proposed changes to Rules 1.97 and 1.98 should be reconsidered with respect to the following:

1) The requirement to submit copies of pending applications as part of the information disclosure statement is onerous to applicants and is not necessary since copies of pending applications may be obtained by the office from the relevant files. In addition, there is not guarantee that the PTO will expunge pending applications from the files prior to issuance of a patent, thereby making such pending application publicly available. Further, there is no provision to notify an applicant when copies of any such pending applications have been expunged and no provision which allows the applicant to verify that any such pending applications have been expunged from an application file prior to issue. Without such safeguards in place this proposed change should not be adopted.

2) The language regarding "cursory" review of cited references on the Form 1449 (at page 47 of the published proposed rule changes) is contrary to the purpose of submitting an information disclosure statement. Further, the legal implications of this prop o sed provision are unclear, and there is no other mechanism which ensures that the Examiner has "fully" reviewed the prior art which the applicant believes to be pertinent to the patentability of the claims, absent his/her review of the prior art cited on the 1449 form.

Comments for proposed changes to Rules 1.52 and 1.121 :

The proposed changes to Rules 1.52 and 1.121 should be reconsidered to the extent that they require pending applications filed prior to the date of enactment of the proposed rule changes to be amended by submitting an entire new specification and specif i cation mark-up. For many practitioners, it is not always feasible or even possible to have access to a substitute specification available on their computer databases long after filing the application. For example, in the circumstance in which an applicatio n has undergone a change of counsel of record, the new counsel of record may not obtain an electronic file of the application and may only obtain the file itself at a period of time close to the deadline for a response or filing. As a result, such counsel may have no access to an electronic file for the application, requiring complete retyping of the application, a time consuming task. Further, the retyping of applications is clearly subject to human error and electronic error in the re-keying and/or scanning of an application which can cause further problems in accurate printing of a specification upon allowance, particularly when the error in re-typing is not detected. Other inequitable situations which are likely to arise when requesting full specification replacement on already pending applications include the problems inherent in computer system upgrades, conversions and other changes which many firms have undergone to keep abreast of current computer technology or to become Y2K compliant. In the event of a conversion, data may be lost, files may have been long since expunged from the database or, in many cases, data is erroneously converted. Similar problems arise when

using available computer scanning devices to scan an application in from a hard copy. In each of these circumstances, significant time must be spent both administratively in having an application re-typed, or converted, as well as in proofreading the applications prior to submitting them to avoid errors in the text. With respect to chemical and/or biotech applications, typically when these applications are converted, dif f erent word processing programs may not easily convert tables, chemical formulae and the like presenting further difficulties in creating a new and accurate version of an older-document for submission along with amendment of the application in an applicants' counsel's currently available computer database.

The number of errors which are likely to be encountered from such situations as described above are significant and would be contrary to the goal of enacting the rule change which is to promote accuracy in issued patent printing. Further the demand of obtaining current database f i les of applications filed well prior to the amendment, will create an unnecessary administrative burden on the applicants and their attorneys. Accordingly while the goals and underlying principles behind the proposed changes to Rules 1.52 and 1.121 are laudable and workable with respect to future applications, it is strongly recommended that such changes only be implemented with respect to applications filed after the effective date of the rule changes. With respect to existing, pending applications f i led prior to the effective date, those applications should be grandfathered to include only a showing of the changes to the specification pages. Such grandfathering will not represent an undue burden on the PTO as the PTO is not yet prepared for electronic filing and will admittedly not be so ready for several years to come. As most pending applications are granted within two to three years of filing, it is highly likely that most grandfathered applications will be processed through a l lowance and printing prior to the PTO's achieving mandatory electronic filing. Such a compromise would reduce the anticipated burden on applicants and their counsel, while still fostering the goals of printing accuracy and future electronic filing of applications.

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Last Modified: 7/4/2009 5:00:58 PM