Sent: Wednesday, November 17, 1999 2:33 PM
Subject: Comment on NPR 980826226-9185-02
Attention: Hiram H. Bernstein Dear Mr. Bernstein:
This comment concerns the PTO's proposed change to Rules III & 115. The PTO proposes to grant itself authority to refuse entry of preliminary and supplemental amendments under certain circumstances. The PTO's comments to the Notice of Proposed Rulemaking make clear that the main problem the PTO is trying to solve is to avoid the sometimes significant burden created when a preliminary or supplemental amendment is filed after the Examiner has already devoted a significant amount of time preparing an action.
The proposed new rules don't include any standard for disapproving a preliminary or supplemental amendment. I am concerned that if the rules are silent as to any standard for disapproval, the Examining Corps will begin denying entry of preliminary/supplemental amendments for less important and more arbitrary reasons (for example, as a way to force applicants to file CPA's so the Examiners can get more disposals, or simply because Examiners don't wish to deal with new or further amended claims).
I suggest that the rules be amended to include a definite standard for disapproval. Narrowing the rule to focus on the particular problem the PTO is trying to solve would avoid potential abuse and resulting delay, excess fees and bureaucratic run-arounds. Furthermore, I think the standard should require entry "unless the Examiner receives the amendment only after she has already devoted a significant amount of time to preparing a written action in the case so that entry would create a significant burden on the part of the PTO."
The PTO's comments also mention that certain applicants routinely file supplemental amendments that cancel existing claims and add many new claims. While I don't engage in this practice, I don't see why rulemaking should address this situation except in cases where the Examiner has already spent substantial time preparing the next action in the case. Applicants' right to amend should not be restricted unnecessarily. That right is essential to an applicant's ability to secure an appropriate scope of protection. Disapprovals of preliminary and supplemental amendments merely because they add new claims and are filed after a certain date or presented in a separate paper would exalt form over substance.
Thank you for your consideration.
Robert W. Faris
Reg. NO. 31,352
Nixon & Vanderhye PC 1100
North Glebe Road, 8th Floor
Arlington, Virginia 22201