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From: ahoover@leydig.com

From: a h oover@leydig. co m

Sent: Tuesday, November 30, 1999 2:39 PM

To: regrefo rm @uspto.gov

Subject: Comments: Rule 55: Rules 85 and 136

From: Al i en E. Hoover, Reg. No. 37,354

312-616-5600

F ollowing are two comments on the proposed rulemaking set forth in the November 2, 1999 Official Gazette.

The f i rst comment pertains to 37 C.F.R. § 1.55, specifically as the rule pertains to international applications. Under 35 U.S.C. 365(c), applicants may file a continuation application that claims the benefit of the filing date of an earlier- fi led international application that designates the United States. Such continuation applications are termed "bypass" applications, because processing in the PCT brand of the PTO is bypassed, and the app l ication proceeds immediately to national processing.

A typical scenario for such filing is as follows:

  1. Foreign application f i led:
  2. PCT application f i led (designates US);
  3. 365(c) continuation application filed

Under both the current and proposed new Rule 55, the applicant, in order to claim priority to the foreign application filed at step (A), must f i le a certif i ed copy of the foreign app l ication with the PTO. On the other hand, if the applicant had instead chosen at step (C) to enter the national phase of the PCT application, no certified copy of the foreign application usually need be filed. This is because a photocopy of the priority application - bearing the imprimatur of the Inte rn ational Bureau – will usually already be on file in the United States.

If such photocopy of the priority application is already on file at the PTO, then the requirement to submit the certified copy in the bypass application imposes an expense upon foreign applicants that is wholly unnecessary. This expense may be obviated by amending Rule 55 to add the following subsection:

In any continuing application f i led under 35 U.S.C. § 365(c) claiming priority to an international application designating the United States, which international application itself claimed the benefit of the f i ling date of an earlier foreign priority application, the applicant need not submit a certified copy of the foreign priority application if a copy of the foreign priority application has been sent by the International Bureau to the United States Patent & Trademark Off i ce as a Designated or Elected Office under the Patent Cooperation Treaty.

Under this new subsection, the rationale for requiring submission of the priority document (i.e., that an "official" copy of the priority document be available at the PTO for inspection) still would be satisf i ed, while reducing the expense and burden to foreign applicants.

A more complete discussion can be found at "Further Comments on PCT/USA National Phase Applications & Section 102(e) Dates," Sept. 1997 JPTOS at 643, in which I advocate such a change to Rule 55.

The second comment pertains to the proposed changes to Ru l es 85(c) and 136. The new rules would not permit extensions of time to file formal drawings after receipt of the Notice of Allowance. These changes in the rules would impose an additional burden on patent applicants in some cases, which burden would not be offset by any corresponding benefit. For this reason I would oppose these changes.

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