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QUESTION 07:
Should the PTO require an affirmative communication from a patent
applicant indicating that the applicant does not wish the
application to be published, or should failure to timely submit a
publication fee be taken as instruction not to publish the
application? That is, should an application be published unless
the applicant affirmatively indicates that the application is not
to be published, regardless of whether a publication fee has been
submitted? What latitude should the PTO permit for late submission
of a publication fee?
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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 07:
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001-Q07.TXT
The PTO should require an affirmative communication indicating that
the application is to be published along with submission of a
publication fee. If the fee is unpaid, the application should be
automatically abandoned subject to revival due to unavoidable or
unintentional delay in filling the fee.
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FROM RESPONDENT 026:
NAME: Louis Maassel
COMPANY: World Intellectual Property Organization, Geneva, Switzerland
ADDR-1: 12716 Buckingham Drive
CITY, STATE ZIP: Bowie, Maryland 20715
TELEPHONE: 301) 464-4306
FAX:
REPRESENT: self
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COMMENT ON QUESTION 07:
Under the PCT, all international applications are published promptly after the expiration of 18 months from the priority date except those which fall under the reservation of Article 64(3) and those which have been withdrawn prior to the date on which "technical preparations for international publication have been completed." (PCT Rule 90bis. l(c)). This date on which "technical preparations f or international publication have been completed" is 15 days prior to the international publication date. Publication is currently every Thursday. Withdrawal of an international application may also be made provisional so that if the notice of withdrawal arrives too late to stop publication that the applicant is not faced with a publication of a withdrawn application. A similar conditional aba ndonment practice should be adopted by the USPTO.
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FROM RESPONDENT 041:
NAME: Frederick S. Burkhart
COMPANY: INTELLECTUAL PROPERTY LAW SECTION
OF THE. STATE. BAR OF MICHIGAN
ADDR-1: 306 TOWNSEND STREET
CITY, STATE ZIP: LANSING, MICHIGAN 48933
TELEPHONE: 517-372-9030
FAX:
REPRESENT: association
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COMMENT ON QUESTION 07:
The Patent and Trademark Office should publish an application unless affirmative communication is received from a patent Applicant, indicating that the Applicant does not wish the application to be published.
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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 07:
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019-Q07.TXT
Because the publication under option is (Appendix "A" format) is
innocuous, ~ publication cutoff date (i.e. a date where the applicant
would have to elect between publication or abandonment of his patent
application) would be immaterial, except as to applicants guilty of
dilatory prosecution. The concern with submarine patents may b~
addressed by compulsory full publication at some time later than a
flat 18 months where it {s clear that dilatory prosecution is taking
place, in the opinion of the examiner. We can see no good reason to
publish under options it, iii, or iv, everyone's application- at 18
months, whether they are guilty of dilatory prosecution or not.
Under our proposal, the only cave in which a publication
sufficiently enabling to b~ harmful to the- applicant would be
available would b~ where there is a finding of dilatory prosecution
(potential submarine patent) by the examiner, whereupon the applicant
should be given a choice whether to continue with prosecution (having
had the application more fully published) or to abandon the
application and avoid further publication of an enabling natures.
But why treat all inventors as if they were guilty of dilatory
prosecution? That is what this rule seeks to do presumes bad faith on
the part of all applicants and then punish them by publishing an
enabling disclosure of their applications after 18 months, which is
often before even the first office action.
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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 07:
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010-Q07.TXT
NWith the publication fee built into the filing fee, no separate
publication fee is necessary. The PTO would not then need to address
the issue of whether an application should be published. If the
application has not been expressly abandoned, it should be published.
There is then no need for latitude in submitting late publication
fees.
Allowing late payment of the publication fee is undesirable because
it would provide an incentive to file multiple applications and would
provide an undue advantage to foreign applicants.
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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 07:
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029-Q07.TXT
The PTO should require an affirmative communication from a patent
applicant when the applicant does not wish for the application to be
published. This should be done in a manner similar to that of the PCT
where a communication must be submitted at least two weeks in advance
of the anticipated publication date when an application is to be
withdrawn.
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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 07:
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033-Q07.TXT
THE ANSWERS TO QUESTION 7 ARE YES, NO, AND SHOULD BE DEFINITE, IN
THAT ORDER.
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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 07:
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008-Q07.TXT
The applicant should have an opportunity to (and the burden of)
affirmatively withdrawing the application from publication, via
Express Mail, until up to 17 months after filing of the permanent
application This is in keeping with the socially desirable purpose of
making publication as early and as likely to occur by taking place as
automatically as possible.
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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 07:
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004-Q07.TXT
The publication fee should be included with the application fee. The
application should be published, even if abandoned, unless the
applicant files an express request of abandonment.
Last Modified: March 1995