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From:

From: max@alum.calberkeley.org

Sent : Friday December 03, 1999 9:35 AM

To: regreform@uspto.gov

Subject: Rule changes

To Whom it May Concern:

I want to compliment the authors of the newest proposed rule changes for taking on the difficult task of updating and upgrading the patent process. It is clear to see that their intentions are honorable and they are prepared to respond to change in all areas. The USPTO has admirably taken on the charge to streamline and speed up the patent process. Times and technology are changing quickly and the protectors of those changes have to change with them. I am not objecting to change. I just want to insure that change means progress.

One area being modified is the area of drawing requirements. After careful analysis of the changes in this area, I must caution the authors to stay focused on change rather than abandonment. I see abandonment as a dominant theme in the area of drawing requirements. The language as it stands in the proposed rule changes is confusing and misleading. As it stands, in the interest of cost cutting the patent office has cut recklessly into the protection that patents have been providing.

For starters I am disturbed by the desire to lower the standards for drawings. US patents are among the most coveted and sought after patents in the world. Therefore, we must insure that the protection granted by these patents are also the strongest in the world. To that end the US has maintained the highest drawing standards of anywhere in the world. Drawing standards that were developed to enhance and clarify their patents. We can not lower our standards and expect our patents to be as protective. You will see intentional ambiguity and confusion in drawings. For instance, lead lines can innocently lead to more than one element. You may find patents being thrown out of court because no clear understanding can be made from the substandard drawings. Litigation will turn into a crapshoot while judges wrestle with where exactly lead lines lead. Furthermore, patent searches will become an adventure with incomprehensible drawings. The door will be left wide open for ambiguity and in the patent office there is no room to be unsure.

The USPTO suggests that examiners be the judges as to the legibility of drawings, on a case by case basis, the catch phrase here is "Âacceptable to the office". This will create real confusion. No one will be able to know ahead of time how their drawings will be received and whether they will be sufficiently clear. Professional patent illustrators proofread rough drafts and enhance the drawings, insuring clarity and accuracy. Even though examiners are experts in the related field they are being asked to discern whether these drawings are sufficiently clear to be understood by lay inventors and judges. A tall task, and one that affords no sense of consistency. Even if examiners, who are experts in their related fields, are capable of deciphering the drawings, there is no guarantee that a judge and jury could make the necessary conclusions from the drawings.

The USPTO advises applicants to be motivated by their own desire to file good drawings. This shifting of responsibility from the USPTO to the attorneys is dangerous and unfair. The world trusts the decisions and actions of the greatest patent office in the world, and if the USPTO does not require good drawings, the pressure will be overwhelming on the attorneys to go with the flow. Attorneys interested in their clients best protection will be hard pressed to demand quality drawings white inferior versions are officially being accepted.

One of the major complaints of patent attorneys is the lack of consistency and petty objections to acceptable drawings. Instead of stopping the petty objections, the USPTO wants to largely ignore all drawing requirements, "Applicants who submit informal drawings on filing will be unlikely to encounter a draftsperson's objection because few drawings will fail to meet the reduced standards". Simultaneously the patent office recognizes the need to file drawings that are clear and precise. In the words of the patent office, "Âpatents printed with high quality drawings look better and should be easier to understandÂ" Why then is the USPTO promoting drawings that are difficult to understand? It may seem like the USPTO will save some time and money by not sufficiently screening the drawings up front, but the ultimate price will be paid in the courts when corporations find their patents insufficiently protecting their rights.

I would suggest that if you really want to cut down the time it takes for patents to issue, and increase the respectability of the staff at the USPTO, do away with informals. Applicants should be required to submit professional drawings from the start. With current technology, almost all patent illustrators draft formals right away and are able to generate drawings with turnaround times in days rather than weeks. There is no longer any reason to put up with inferior drawing requirements. As mentioned in the proposed rule changes, the rest of the world (certainly the PCT) is "essentially requiring formal drawings on filing".

A further reason for instituting formals upon filing is to insure that the changes create an environment for progress. The PTO is making great strides towards electronic filing and digital formats would be a step in the right direction. Almost all of the professional patent illustrators create digital versions of their drawings and are perfectly situated for the electronic age. Keep in mind that there were very good reasons for instituting drawing requirements in the first place and any changes must be in the interest of progress. It would be a good idea to work with the patent illustrating community to develop changes that will insure the continued dominance of US patents well into the next millennium.

Again I would like to complement the authors of the rule changes for their courage

Thank you.

Dan Lebovic

UC San Francisco

United States Patent and Trademark Office
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