Sent: Monday, November 29, 1999 6:36 PM
To: regrefo rm @uspto.gov
These comments are submitted in response to the September 17, 1999 Notice of Proposed Rulemaking on Changes to Implement the Patent Business Goals (64 Fed. Reg. 53772). Comments on proposed rule changes will be presented in the order in which the proposed changes appear in the Notice, but not all proposed changes will be addressed.
The undersigned is a partner in the New York intellectua l property law f i rm of Fish & Neave. However, the views expressed herein are solely those of the undersigned, and do not necessarily reflect the views of Fish and Neave.
The undersigned f i rst would like to repeat an observation made in commenting on the Advance Notice. Specifically, the undersigned believes that it is laudable for the Patent and Trademark Office ("PTO") to attempt to adopt some of the efficiencies of the private sector. However, the PTO is not a business, and patent applicants are not "customers." A patent is not a widget: it is a legal right conferred by the gove rn ment as part of a legal bargain with an applicant. Accordingly, it is simplistic to analogize the patent application process to a retail transaction. Moreover, in its rush to emulate the private sector, the PTO has adopted the worst of business school jargon. Business Goal 4 is the best (worst?) example of this jargon, which the undersigned believes is meaningless. In addition, there is no reason to substitute such jargon for perfectly wel l -understood existing terminology. In this case, the best (worst?) example is the adoption of the term "cycle time" – which implies a repetitive process that is always the same, as in the mass production of widgets - for the traditional and well understood term "pendency." Moreover, such jargon tends to change rapidly; "cycle time" may have no recognized meaning in a relatively short time.
Tu rn ing now to specif i c rule changes, with respect to Section 1.9, the undersigned would remind the PTO that the legal meaning of the word "person" includes corporations. Although the rule adopts its own def i nition, the undersigned believes that the use of the word person is legally confusing. Either another word should be used, or the modifier "natural" should be added.
With respect to drawings, although not specifically written into any rule, the comments in the Notice state that formal drawings filed after allowance should not be expected to catch up with the application f i le in time for printing in the issued patent, and that patents will issue with informal drawings. The problem as seen by the undersigned is that in the undersigned's experience, when an application is f i led with informal drawings, even if formal drawings are filed promptly thereafter – e.g., as soon as the Filing Receipt is received - the drawings are not properly entered into the f i le. Either the drawings are not even matched with the file, or they are placed in the file but not actually "entered" or docketed, leading to a requirement for formal drawings in the Notice of Allowability. The undersigned is conce rn ed that in its rush to reduce pendency, the PTO will issue patents with informal drawings even though formal drawings had been submitted early in the pendency of an application, but not as part of the initial filing. Better procedures in the PTO are needed to insure that formal drawings submitted after the filing date are in fact entered and printed in the issued patent. In addition - and this comment applies not only to drawings but to all aspects of the proposed rulemaking that relate to reducing pendency – the undersigned does not believe that in its rush to reduce pendency, the PTO should penalize applicants who are willing to accept somewhat longer pendency to "get it right." Previous complaints regarding lengthy pendency of applications has been directed to delays caused by the PTO: no applicant has ever complained as a result of se l f-imposed delays.
With regard to the changes in Information Disclosure Statement ("IDS") practice, the undersigned does not object to the requirement that copies of cited applications be provided. However, the undersigned feels compelled to "keep the PTO honest" by questioning the rationale behind the new requirement. Specifica l ly, the Notice justi fi es the rule change by stating that requiring the PTO to make copies of cited pending applications, as under current practice, affects the prosecution of the cited application by removing its f i le from the Examiner who is examining it for as long as is needed to make the copies. However, the undersigned understands that all applications are microfilmed and/or digitally imaged on filing. Insofar as the citation of an application in an IDS is a citation of the specification and drawings only, it should be possible for the PTO to provide copies of a cited application to the Examiner of the citing application from the microfilm or the stored digital image. Indeed, if the cited application has been digitally imaged, the Examiner of the citing application should be able to view it on his/her computer without even having to obtain a paper copy.
With respect to the IDSs filed after close of prosecution, the PTO is proposing to raise the fee from the current $130 petition fee to the $240 fee charged for IDSs after the first Office Action but before the close of prosecution. The stated justification is that IDSs filed after close of prosecution are at least as disruptive, if not more so, than IDSs filed after the first Office Action but before the close of prosecution. The PTO appears to have forgotten the reason for the lower fee in the first place. There are two parallel considerations at work here. First, the PTO has divided the pendency of an application into three periods - the period before the first Office Action, the period after the first Office Action but before the close of prosecution, and the period after close of prosecution. Second, the PTO has divided cited prior art into two categories - prior art that the applicant has been aware of for at least three months ("late prior art "), and prior art that the applicant has been aware of for three months or less ( t imely prior art "). It is logical for applicants to be penalized for later prior art, and that is what happens under current practice. Both late and timely prior art are accepted without charge until the first Office Action. Late prior art is accepted after a f i rst Off i ce Action on payment of a $240 fee, and is not accepted at all after the close of prosecution. Timely prior art is justifiably treated more leniently, and is accepted even after the first Off i ce Action at no charge, and after close of prosecution at a lower fee ($130). The PTO already fairly and justifiably bars the citation of late prior art after the close of prosecution; the PTO now proposes to penalize applicants for submitting timely prior art, which by definition could not be submitted sooner. This is unfair. The lower petition (or "processing") fee should be retained.
The PTO is proposing changing the manner of amending claims from the current system, which indicates the changes relative to the previous version of the claim, to a system in which a clean copy of the new claim text is submitted. A separate copy of the claim, showing the amendment relative to the previous version of the claim, will also be required. The justification for this change is to make it easier to optically scan amended claims for printing in the issued patent. The undersigned respectfully submits that the PTO has got it reversed. The clean copy of the claim should be presented on a separate sheet and the claim presented within the reply/amendment document should continue to be presented as under current practice, to make it easier for both the Examiner, and those reviewing the prosecution history later, to determine what changes were made. Embedding the clean version of the claim in the reply/amendment document would not only make it harder to determine what changes were made, but also would make it harder to scan the claim, as it would more likely extend over more than one page, and the page being scanned would very likely also contain non-claim text. If the goal is easier scanning of amended claims, then it is the clean copy that should be provided on a separate sheet.
Jeffrey H. Ingerman
Reg. No. 31,069
Fish & Neave
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