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QUESTION 10:
After publication, should access to the content of the
application file be limited to the originally filed application
papers? If not, what degree of access should be permilted? Should
access be limited to the content before publication, or should it
extend to materials added after publication?
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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 10:
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001-Q10.TXT
Because the claims and therefore the metes and bounds of the patent
may change significantly during the prosecution, third parties must
have access to prosecution after publication. Otherwise, the third
parties may be effectively ambushed by broadened patent claims. A
less desirable solution would be to limit claim broadening after
publication. This solution is less desirable because the applicant
would not receive claims having the full breadth he/she is entitled
to.
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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 10:
Continued access would certainly be desirable for third party applicants who might be interested in copying claims for purposes of an interference proceeding.
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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 10:
The question of access to the content of the application file after publication would be significantly less important if the full patent application is published. Full publication of the application would eliminate the major motivation for access to files. While access to application files may be helpful to guiding the actions of potential protesters, it is expected that the number of protests will be very small. Furthermore, the ability to file a request for re- examination after issuance significantly reduces, but not necessarily eliminates, the need to file protests. Protests are stil l advantageous because certain "other information" may be submitted in a protest, but not in a re-examination proceeding. Therefore, this Committee considers that the balance of interest lies in ful l access to the application file after publication
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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 10:
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019-Q10.TXT
No access at all without the inventor's express consent should be
permitted 35 USC 122 [Appendix "D"] The principle of our law is that
the inventor trades off an enabling public disclosure for a limited
property right, and this rule seeks to adopt Japanese law in the
United States by a rulemaking instead of by legislation, with the
evident purpose of destroying the technology base of the United
states in the long term Let the- advocates of this startlingly bad
idea lay their proposal before Congress instead of trying to sneak it
through the PTO. Third party access to the patent file, before the
inventor has any rights to enforce, benefits only bad faith
infringers who would cream the market before the patent issues, and
giant companies who would destroy the value of fundamental patents
by a multitude of peripheral patent applications, as they do now in
Japan [see Appendix "B"] No access at all should be permitted without
the consent of the inventor, and this consent should not be implied
from failure to pay some onerous fee As for the plea that relief
from submarine patents is necessary, this problem can be resolved by
a means less drastic than allowing third party access to a11 files We
suggest that only those- applicants that the examiner finds guilty of
dilatory prosecution should be punished by involuntary disclosure
Such a rule would surfaces the submarines, while avoiding unnecessary
harm to other applicants It later in the course of the examination
there should arise a question of dilatory prosecution (submarine
patent), the examiner should have additional publication or a grant
of file access available for preventing harm to the industry by this
abuse.
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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 10:
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010-Q10.TXT
Access should be limited to the application as filed. It is much too
complicated and expensive for the PTO to do otherwise. Of course,
after an application has issued, whether before the publication date
or after, the entire file history of the application should be
accessible.
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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 10:
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029-Q10.TXT
ÐÏࡱ
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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 10:
-------
033-Q10.TXT
YES.
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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 10:
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008-Q10.TXT
The answer was already given, that both details of further
prosecution, and of assignments, should be available from the public
application database, until the patent has issued
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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 10:
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004-Q10.TXT
After publication, access should be permitted to the entire
application including material added after publication. A fee should
be charged for access prior to patent being issued or the application
being abandoned.
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FROM RESPONDENT 025:
NAME: Yukiji Kobayashi, President
COMPANY: Japan Intellectual Property Association
ADDR-1: Shintomi 1-chome Bld;. 7F
9 8, Shintomi 1~chome
CITY, STATE ZIP: Chuo~ku. TokYo 104, JAPAN
TELEPHONE: 813 3206 2243
FAX: 81 3 3206 2230
REPRESENT: association
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COMMENT ON QUESTION 10:
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025-Q10.TXT
One of the objectives of publication of application is to make the
progress of application procedures known to the public. In his sense,
it will be appropriate that once an application is published, the
entire content of of the application file should be made accessible
including all the material added after publication (Response to your
question #10) It would be further desirable that a copying service
(payable) be provided for the content of the application file.
Through The fact that the proceedings of applications at own to the
public, effective use of the system for submitting prior art
(explained later) would become possible, and hence it would
contribute to enhance the quality of examination.
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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 10:
-------
016-Q10.TXT
Simply because the rest of the industrialized world publishes pending
applications does not make it serve our country well. Our country
has, or she had, the best patent system in the world, of which
secrecy of pending applications plays a noted part. Recall, the
industrial development in our country, fostered by its unique patent
system, which Constitutionally must promote progress in our useful
arts. With its unique patent system as a foundation, we rose from a
minor economic world player to, after World War II producing roughly
half of the world's economic product. (After reconstruction, etc., we
now produce nearly one fourth of the world's economic output.) To
quote the old saw, "If it's not broke, don't fix it!"
The only thing in favor of publication is the issue of so called
"submarine patents." However, on balance, this is not a substantial
enough concern to require publication. First, such occurrences are
relatively rare. Second, since licensing of pending application
technology is permitted, in commercially active markets an applicant
can have great incentive to license-out his unpatented, confidential
technology to those who would complain about such delayed patents,
and as well, those competitors can have a great incentive to
license-in the technology and thus not be "torpedoed" by a late
issuing patent. Third, delays in prosecution are often not the
fault of the applicant. F^~lRtht if an arrl icant deliber?tely
delavs j n proseclltion to isslle remedies are available judicially
if not within the Office itself.
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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 10:
-------
028-Q10.TXT
My proposal would "publish" all of the contents of the application
file without affecting PTO operations. Philosophically, the
application proceedings should be open following publication. As a
practical matter, the burden of ysically accessing numerous files or
the alternative burden of processing numerous- petitions for waiver
of limitations on access should make electronic publication
attractive to the PTO.
Last Modified: March 1995