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COMMENTS OF OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, PC

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.

Topic 9: Imposing Limits/Requirements on Information Disclosure Statement

Submissions *(§§1.97, 1.98)

Commen t: The PTO proposes to go forward with only one aspect of the p lan 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.

The need to supply a copy of each pending U. S. application creates a significant burden on applicants and appears contrary to the PTO policy of increasing business efficiency. It is not uncommon for large corporations to file a number of patent applications that are sufficiently closely related as to required disclosure under PTO policy. Filing paper copies will tend to create very large paper files at the PTO. A better practice is to assign closely related applications to the same examiner who already has electronic access to all of these applications. If This procedure is followed, the examiners will already be familiar with related cases and will have immediate electronic access to them so they are not burdened by reviewing enormous quantities of paper.

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Furthermore, the electronic copies of the applications available to the

examiners can be easily word searched to determine if there may be potentially overlapping claims that may require the examiner ' s-attention. This procedure would be almost no burden on the examiner and would both eliminate a significant burden on many large customers of the Patent Of fi ce and simultaneously make the PTO files more compact for efficient handling.

Topic 12: Requiring a Handling Fee for Preliminary Amendments 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 §§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).

We oppose the proposed rules. All 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

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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 farther delays and additional work for both examiners and applicants. An examiner's Of fi ce 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 mailing of the first Office Action. Practitioners are further aware that if the "late" preliminary amendment does 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

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also encourage early filing of such amendments).

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 commendable, it is believed 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, (xxx) if one were to later add paragraphs 1234, 1234.1, 1234.2, etc the format changes (xxx.y). If in subsequent amendment paragraphs 1234.1, 1234.11, 1234.12 1234.13, etc. were added, the format changes yet again (xxx.yy).

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

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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 Off i ce'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 chronology of amendments, such as when determing the genesis of file 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 digit, e.g. 1.1234, such that each subsequent amendment would have an easily recognizable chronology. Thus all original paragraphs would be I .xxx, paragraphs in the next paper would be designated 2.xxx as a substitute, etc.

This would at least give the reviewer some reasonable ability to understand at what point in the prosecution certain changes cam e about,

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as well as providing the Office with a tool to eliminate confusion if a paragraph is changed several times.

Although we are aware of the burden on the Office reg a rding 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 Rocket Docket for Design Applications (§1.155)

Comment : We believe 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 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 generally believed that while the expedited procedure is a good idea, the proposed $900 surcharge is excessive.

II COMMENTS RELATING TO NEW PROPOSED RULE 105

Rule 105 : Authority to Require Submission of Information

Comment : We strongly oppose this proposed regulation. This proposed ru l e 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 simplif i cation of PTO

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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 additional burden on both examiners and applicants and slows the examination process. In fact, the information request could take an additional eight 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 examin ation

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of the application, and 3) may be protected by the attorney-client

privilege. The example cited by the PTO requesting all information that was used to draft the application or in the inv e ntion 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 other 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 establishes a duty to make a good faith search for this information. This puts an additional burden 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 materials. 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

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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 implicit or expl ic it, to

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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 tbe negatived by the manner in which the invention was made" and the last sentence of 3 5 USC 6(a) stating that the Commissioner may only "establish regulations, not inconsistent with law." A request by the PTO for information as to a relevant commercia l' database, or as to published articles or as to "non-patent literature or patents that were used to draft the application or in the invention process" is clearly a request for information as to the manner in which the invention was made. There is not 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 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 addit io nal new

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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 litigated with respect to the duty of candor. The proposed regulation is not simplifying but makes the examination process more complex, such that the firm strongly opposes this proposed regulation.

III COMMENTS RELATING TO OTHER PROPOSED CHANGES TO THE RULES 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 f i le a petition including a showing that special circumstances exist. Access should not be provided to pending applications without

specif i cally setting out a procedure and definition relating to "special circum stances." Similar to the public, federal agencies should also provide showing

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that special circumstances exist.

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