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Notice Of Proposed Rulemaking Titled "Changes to Implement the Patent Business Goals"

Comments On Selected Proposed Rules Changes Set Fort in

Notice Of Proposed Rulemaking Titled "Changes to Implement the Patent Business Goals"

Federal Register, 6r FR 53772, October 4, 1999 *

These comments are submitted by Andrew J. Anderson, Francis H. Boos, Pamela R.Crocker, James D. Leimbach, David A. Novais, Edith A. Rice and Walter S. Stevens, all members of the U.S. Practice Committee of the Eastman Kodak Company Patent Legal Staff. These comments do not necessarily represent the views of the Eastman Kodak Company.

The USPTO is thanked for the opportunity to review and comment upon the proposed rulemaking changes. In general, most of the proposed changes appear to support the Patent Business Goals in manners which would be acceptable to applicants. We would like to comment on the following specific changes, however, in view of their potential adverse impact upon applicants or other members of the public.

Rule 1.55 Claim for Foreign Priority, 1.55(a)(2)(iv) is proposed to be changed to eliminate 1.312(b) petitions to amend an application after payment of the issue fee to insert a claim to foreign priority. Such a claim will be inserted in the file but not acted on. Applicant can file a request for certificate of correction under 1.323.

Under the proposed new rules, claims to foreign priority filed after payment of the issue fee and a 1.17(i) "processing fee" would still be permitted under 1.55(a)(2)(iv); however they will nto be acted on and merely inserted in the file. At this point, the priority claim is apparently in "limbo" since there is no ruling on the compliance issue. If applicant wishes to have a ruling, a request for certificate of correction (applicant's error) under 1.323 must be filed. At this point, the PTO will make a determination of entitlement for such priority under terms of the statute.

It is believed that the proposed change would negatively impact predictability of the effective filing date of issued patents in those instances where the applicant does not follow up with a request for a certificate of correction. It is believed that the PTO should accordingly still continue to perform the formality review for claims for priority submitted after payment of the issue fee (even if such information is not printed on the patent), rather than shift the burden to anyone reviewing the file history where a certificate of correction has not been requested.

Rule 1.97(b)(l) is proposed to be amended to eliminate the current 3 month window for filing an IDS in a CPA 1.53(d) application, since CPAs are treated as amended applications by examiners and subject to short turnover times (see proposed Rule 1.103 providing for opportunity to request three month postponement of a first Office action (with processing fee)). While the need to coordinate filing of IDSs in CPAs prior to first Office actions is acknowledged, there does not appear to be a rational basis to require applicants to pay an additional fee simply to have the CPA obtain the same benefits (i.e., ability to file an IDS without fee during the first three month period) as a non-CPA filing, as the full application fee is already required for the CPA filing. Accordingly, a lower CPA filing fee (to off-set the additional fees which may be required) appears justified, or the three month period proposed in 1.103 should be available simply upon applicantÂ’s request without any fee associated therewith.

Rule 1.97(d)(2) is proposed to be amended to change the $130 petition fee to a $240 IDS fee (as required under 1.97(c)). The PTO comments state that there is no reason for the reduced fee under 97(d), especially as a submission under paragraph (d) is made later in the prosecution than one under paragraph (c). While an increased fee to have an IDS submitted under (d) may be justified in view of higher handling costs, the PTO should consider this in context with the rationale for the current system. Note the $240 paragraph (c) IDS fee is an alternative to the filing of a statement under 1.97(e) (i.e., fee only applies if applicant does not file such a statement), while the $130 paragraph (d) petition fee applies in addition to the filing of a statement under paragraph (e). Thus, it is clear the intent was to have different fees apply whether or not IDS references were previously known by applicants outside of the paragraph (e) statement provisions, and thus could have been earlier submitted.

Rule 1.103 – Suspension of Action by the Office: On filing of a CPA, proposed to provide an opportunity to request a three month postponement of a first Office action, which request would require a processing fee. This would permit applicant to file a preliminary amendment (see proposed 1.115) or IDS (see proposed 1.97(b)(1)) during such time prior to a first Office action. Please see above comments to 1.97(b)(l). There does not appear to be a rational basis to require applicants to pay an additional fee simply to have the CPA obtain the same benefits (i.e., ability to file a preliminary amendment or IDS without fee) as a non-CPA filing, as the full application fee is already required for the CPA filing. Accordingly, a lower CPA filing fee (to off-set the additional fees which may be required) appears justified, or the three month period proposed in 1.103 should be available simply upon applicant's request without any fee associated therewith.

Proposed New Rule 1.105: Requirements for Information

The PTO comments state that the proposed rule is simply an explicit recitation of inherent authority that exists pursuant to 35 U.S.C. 131 and 132, and use of such explicit authority as proposed would be encouraged so that the Office can perform the best quality examination possible. Several examples are provided as to different types of information for which the Office may desire the authority to ask for. A review of such examples seems to indicate that to the extent such information may be material to patentability and known to applicants, applicants are already under an obligation to provide such information under Rule 1.56. Other examples of types of information appear to be readily available to or discernable by the examiner with little or no more effort than that which would be required by applicants to supply, and accordingly do no more than shift the burden of production to applicants.

The proposed new rule, if adopted, would not appear to be in an applicant's best interests. While we agree that it is generally in everyone's best interest for applicants to voluntarily work together with examiners to provide pertinent information and help the examiner understand the art and claimed invention, there appears to be no justification to create a new rule which broadly provides explicit authority to require applicant to submit any subjective "reasonable" information requested by the examiner, beyond applicantÂ’s current obligation to submit information material to patentability of which they are aware. While the comments state that the proposed explicit authority is "not intended to be used by examiners without a reasonable basis", there still is the issue of actual compliance with such intent. Further, expanding the examiner's authority to require submission of any information "as may be reasonable necessary to properly examine or treat the matter" may increase uncertainty during patent prosecution as examiners may inconsistently apply the proposed new rule on a case-by-case basis.

Additionally, experience with the Office suggests that the time limit for response to the proposed Rule 1.105 requirement may run out before a petition under 1.181 can be decided by the Office. This leaves the applicant with the dilemma of submitting information unreasonably demanded by an examiner, abandoning the application or undergoing the expense of filing a CPA application. It is also conceivable that the information unreasonably required could include confidential or trade secret information which, if submitted, would become available to the public when the patent grants. New proposed rule 1.105 makes no provision for protecting such information.

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