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QUESTION 05:
Should the PTO permit an accelerated examination? If so, under
what conditions?
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FROM RESPONDENT 001:
NAME: David E. Craword, Jr. (Reg No. 38,118)
COMPANY: ROGERS, HOWELL & HAFERKAMP
COUNSELLORS AT LAW
ADDR-1: PIERRE LACLEDE CENTER, SUITE 1400
7733 F0RSYTH BOULEVARD
CITY, STATE ZIP: ST.LOUIS, MISS0URI 63105-1817
TELEPHONE: (314) 727-5188
FAX:
REPRESENT: unclear
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COMMENT ON QUESTION 05:
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001-Q05.TXT
The PTO should not permit accelerated examination because it gives an
unfair advantage to large entities. An acceptable alternative to
accelerated examination is to stay publication until some period
after the first examination, e.g. three months after examination.
This procedure would encourage the PTO to examine applications
earlier which is especially desirable in view of the new twenty year
requirements.
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FROM RESPONDENT 019:
NAME: Wilmot H. McCutchen, President
COMPANY: HOUSTON INVENTORS ASSOCIATION
ADDR-1:
CITY, STATE ZIP: HOUSTON, TEXAS
TELEPHONE: (713) 957 4344
FAX: (713) 868-4104
REPRESENT: COMPANY
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COMMENT ON QUESTION 05:
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019-Q05.TXT
Accelerating the- application 1s probably impractical as a solution
to the problem created by early publication. Better not to create
those problems in the first place. As noted in the Notice,
acceleration of some will mean delay for the rest. Everyone will want
to be accelerated. Sifting through the pleas will be a dismal chore
for the examiners. The real solution is to publish a summary format
such as Appendix "A" so that disclosure (and consequent hardship) is
a matter of private contract between the interested parties and not a
matter which is the responsibility of the PT0, except in the case of
dilatory prosecutions (see questions 7 and 10). Consider the case of
an application filed 12 months after a provisional application. The
publication would occur 6 months after the filing of the formal
application, so the applicant would have to decide- whether to
abandon the invention only 3 months after filing it, before getting
even a first office action for his filing fee. Just to discover
initial prospects Of patentability, he would have to pay a suroharge
for acceleratson. If this rule should be adopted, at least make the
cutoff date 18 months-after formal filing or 12 months after-the
first office action whichever greater.
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FROM RESPONDENT 010:
NAME: Scott Weide
COMPANY: QUIRK & TRATOS
ADDR-1: 550 E. CHARLESTON BLVD. . SUITE D
CITY, STATE ZIP: LAS VEGAS NEVADA 89104
TELEPHONE: (702) 386-1778
FAX:
REPRESENT: firm
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COMMENT ON QUESTION 05:
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010-Q05.TXT
Yes, the PTO should permit accelerated examination on the following
basis: 1) upon a showing of the conditions which currently allow for
accelerated examination and payment of a small fee, or 2) upon
payment of a much larger fee for requests which do not have any
specific reason other than the applicant's desire to accelerate
examination.
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FROM RESPONDENT 029:
NAME: Marcia H. Sundeen
COMPANY: PENNIE & EDMONDS
ADDR-1: 1701 Pennsylvania Avenue, N.W.
CITY, STATE ZIP: Washington, D.C. 20006-4706
TELEPHONE: (202) 393-0177
FAX: (202) 393 0462
REPRESENT: PTO Relations Committee
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COMMENT ON QUESTION 05:
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029-Q05.TXT
Yes, the PTO should permit accelerated examination under the criteria
currently set forth in 37 C.F.R. S 1 102 (advancement of
examination). The PTO should strive to reduce the pendency for first
actions in all cases to a period of time which is sufficiently early
so that the applicant can determine whether or not to withdraw the
application from publication.
For PCT applications, the examiners are already familiar with
procedures for accelerated searching of an application for the
purposes of providing the international search report. Consideration
should be given for a similar operation for the publication
requirement of U.S. applications when initial Office Actions are not
available prior to the publication date. The applicant should
have the benefit of a patentability search by the Examiner prior
to the date upon which they must decide whether to withdraw the
application from publication.
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FROM RESPONDENT 033:
NAME: TOM EASTEP
COMPANY: THE ALLIANCE FOR AMERICAN INNOVATION
ADDR-1: 1100 Connecticut Ave. NW, Suite 1200
CITY, STATE ZIP: Washington, D.C 20036-4101
TELEPHONE: 202-293-1414
FAX: 202-467-5591
REPRESENT: ALLIANCE FOR AMERICAN INNOVATION
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COMMENT ON QUESTION 05:
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033-Q05.TXT
ACCELERATED EXAMINATION UNDER THE PRESENT CONDITIONS SHOULD BE
PERMITTED.
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FROM RESPONDENT 008:
NAME: Gabriel P. Katona
COMPANY: Schweitzer Cornman & Gross
Attorneys at Law
ADDR-1: 230 Park Avenue
CITY, STATE ZIP: New York, New York 10169-0059
TELEPHONE: (212) 986-3377
FAX: (212) 986-6126
REPRESENT: unclear
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COMMENT ON QUESTION 05:
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008-Q05.TXT
An optional accelerated examination should be available with the
objective of producing a first search report prior to publication,
but only upon the payment of a substantial fee by the applicant (and
the submission by the appli- cant of a prior private US, or an
official EPO search report) For the magnitude of the fee, and other
considerations, see the answer to the next Question No 6
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FROM RESPONDENT 004:
NAME: Michael H. Minns
COMPANY: INGERSOLL-RAND COMPANY
Patent Department
ADDR-1: 942 Memorial Parkway
CITY, STATE ZIP: Phillipsburg, NJ 08865
TELEPHONE: (908)859-7700
FAX: (908) 859-7707
REPRESENT: self
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COMMENT ON QUESTION 05:
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004-Q05.TXT
Accelerated examination should be provided under either the current
requirements or for a substantial fee.
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FROM RESPONDENT 016:
NAME: CEiRISTO PH[E R J ON[N }2U nY
REGIHTERED tJ.S. PATENT ATTOlllNEY
AND CANADIAN PATENT AGENT
AL90 ADMITTED IN TIIE DIt3TRICI~ OF COLUMIIIA
COMPANY: CEiRISTO PH[E R J ON[N }2U nY
ATT0SRNEY AND COUN1E3ELOR
ADDR-1: 209 HURON AVENUE
CITY, STATE ZIP: PORT HURON, MICHIGAN 48069
TELEPHONE: (8t0) 982-422t
FAX:
REPRESENT: self
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COMMENT ON QUESTION 05:
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016-Q05.TXT
It would prematurely add a substantial amount of literature to the
art, a good share of which may be of insignificant nature.
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FROM RESPONDENT 028:
NAME: John B. Pegram
COMPANY: DAVIS HOXIE FAITHFULL & HAPGOOD LLP
ADDR-1: 45 ROCKEFELLER PLAZA
CITY, STATE ZIP: NEW YORK, N.Y. 10111
TELEPHONE: (212) 757-2200
FAX: (212) 586-1461
REPRESENT: self
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COMMENT ON QUESTION 05:
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028-Q05.TXT
Accelerated examination should be provided in the case of
infringement.
Last Modified: March 1995