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Comments from M. Daniel

From:   mdhefner@leydig.com
Sent:   Friday, December 03, 1999 6:51 PM
To: CCard Comments
Subject:    Comments on 64 F.R. 59701
Re:     64 F.R. 59701
Changes To Permit Payment of Patent and Trademark Office Fees by Credit Card

Sir - 

According to the above-referenced Notice, the Patent and Trademark Office
(Office) is proposing to amend the rules of practice to provide for the
payment of any patent or trademark fee by credit card.  While I think that
providing additional avenues for paying Office fees is generally a good
idea, I have two chief concerns. The views expressed herein are my own.
They are not made on behalf of my employer, nor any client of mine or of my
employer. 

1 - Expenses
Clearly, providing the avenue for credit card payment requires overhead
expenses, at least regarding establishing and maintaining this service and
in policing files to ensure that credit card information is not publicly
available.  Additionally, the service entails payment of fees to credit card
companies.

All of these expenses should be born by those using the service, and not by
everyone else.  Thus, a surcharge in excess of a given patent or trademark
fee should be imposed on all credit card payments sufficient to bear the
entire cost of the transaction.  Such a surcharge is consistent with other
forms of payment (check, $3 coupons, treasury note, money order, or charge
to a deposit account), the cost of which are born by the users, either
through payment of direct fees or indirectly, by being without the use of
money for a period of time.  Also, without a surcharge, then some finite
amount of resources will be diverted from meeting the many needs of the
PTO's broad customer base to serve instead the convenience of what the
Notice anticipates to be a small number of parties (16,000 small entities
annually).  Thus, I oppose the proposed change (and the current rule) unless
a surcharge requirement were added.

2 - Expungement of Credit Card Payment Authorization Requests
 The Notice indicates that the Office will provide a Credit Card Payment
Form (PTO-2038) which, if used, will be expunged from records made public.
Of course, if the rule is enacted, this provision must be a part of it.  

I wish to express concern, however, over the likelihood that this provision
will be properly implemented - a concern premised on the Office's
less-than-perfect record in expunging other information that is supposed to
be withheld.  For example, unofficial correspondence or drafts sent to
Examiners in advance of interviews is supposed to be excluded from the file,
yet occasionally such documents become part of the file-wrapper and are made
available to the public.  Also, while 37 C.F.R. § 1.612 provides that
affidavits filed under 37 C.F.R. § 1.131 and evidence filed under 37 C.F.R.
§ 1.608 are not to be available to opposing parties to an interference prior
to the filing of preliminary motions, the Office occasionally fails to
properly implement this rule.

While anecdotal evidence proves that such failures to implement existing
expungement rules occasionally occur, I have no basis for assessing the
prevalence of these mistakes.  However, if the Office can be expected to
follow these rules to 99% compliance, according to the estimates in the
Notice, the Office will mistakenly divulge the sensitive credit-card
authorization information of at least 160 small entities every year.  

With this in mind, the Office should calculate its realistic expected
compliance rate and inform the public in another round of Notice and
Comments before enacting the Rule.  Either that, or the PTO should
affirmatively accept liability for any erroneous public disclosure of such
information, if provided on the Office's own Credit Card Payment Form
(PTO-2038). 


 <<64 F.R. 59701 - MDH Comments.doc>> 
For your convenience, I am attaching a duplicate of these comments in
Microsoft Word format.


M. Daniel Hefner
1350 North Wells
Apt. No. A-309
Chicago, IL 60610 
United States Patent and Trademark Office
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