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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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QUESTION 01:
Should the PTO require that all Official application related
materials be delivered to a central location? Specifically, what
problems would a requirement that all official application-related
materials be delivered to a central location cause?
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COMMENT ON QUESTION 01:
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010-Q01.TXT
All materials should be sent to a central location for identification
and entry by the Patent Office. The only problem witS such an
arrangement surrounds transferring the application related material,
and any corresponding PTO file, to and from the central location and
the Examiner or other location. Consideration of the time involved in
this process must be evaluated against the cost of havinq an
information entry area at each PTO location and the risk that some
material would not ever be entered if not attributed to a particular
location
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QUESTION 02:
Should the PTO adopt a standard application format? If so, what
portions of the application papers should the PTO require be
submitted in a standard size and/or format, and what sanction
(e.g., surcharge) should be established for the failure to comply
with these requirements?
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COMMENT ON QUESTION 02:
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010-Q02.TXT
The PTO should adopt a standard application format. The Office should
require that the application be submitted on a disc in computer
readable form (just as with the present comment) OR that the
application be submitted on paper in a particular form which allows
for scanning by the Patent Office. If the application is not
submitted in this form, the applicant should be given the option of
sending in a fee or correcting the format deficiency in one month or
have the application deemed abandoned.
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QUESTION 03:
If the entire application is not published, what information
concerning the application should be published in the Gazette of
Patent Application Notices?
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COMMENT ON QUESTION 03:
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010-Q03.TXT
The application should be printed in a form similar to what the
Gazette provides for: an amount of information which allows a reader
to identify which applications he or she may wish to further
investigate. We suggest that an abstract and possibly one
representative claim be published, with the remainder of the
application available for inspection.
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QUESTION 04:
Should the patent applicant receive a copy of the published
application -- either published notice and/or application content
at time of publication?
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COMMENT ON QUESTION 04:
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010-Q04.TXT
No, unless the Patent Office is willing to send a notice of what is
intended to be printed well in advance of the printing date so that
the applicant can review it to ensure that it does not rantA i n
errorR
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QUESTION 05:
Should the PTO permit an accelerated examination? If so, under
what conditions?
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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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QUESTION 06:
Since the cost for publishing applications must be recovered from
fees, how should the cost of publication be allocated among the
various fees, including the possibility of charging a separate
publication fee?
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COMMENT ON QUESTION 06:
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010-Q06.TXT
No separate fee should be charged. It is often very difficult to
obtain timely payment for issue fees, maintenance fees and the like
from sole inventors and small companies who are often cash poor. This
leaves the patent agent or law firm with the choice of paying the fee
for them and trying to later collect it from them, or allowing the
application to go abandoned and trying to avoid a claim by the
applicant that the firm is overcharging them or neglecting their
work. It would be best if the filing fee covered the cost of
publication. If the entire application is published, the fee (even as
included in the filing fee) may need to include a surcharge for very
long applications, while if only an abstract is published, a flat
amount built into the filing fee is appropriate. Of
course, including the publication fee with the filing fee means that
some applicants who abandon their applications before publication pay
for a cost which is not incurred, but this is true of present
practice as to those applicants who pay the filing fee but abandon
their applications before examination is completed.
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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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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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QUESTION 08:
The delayed filing of either a claim for priority under 35 U.S.C.
119 or 120 may result in the delayed publication of the
application. Should priority or benefit be lost if not made
within a reasonable time after filing? What latitude should the
PTO permit for later claiming of priority or benefit?
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COMMENT ON QUESTION 08:
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010-Q08.TXT
Priority should be lost if a claim for priority is not made within a
reasonable specified time after filing. No latitude should be given
to claim priority. Such a rule allows big business the unfair
advantage of delaying publication of their applications by paying a
late fee and claiming priority after the 18 month date.
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QUESTION 09:
Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notice, i.e., the Patent Application Notice, be
removed from the search files, and should publication information
be included on the issued patent?
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COMMENT ON QUESTION 09:
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010-Q09.TXT
There appears to be no substantial reason for leaving such
information in the file or including it on the issued patent.
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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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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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QUESTION 11:
11. After publication, should assignment records of a published
application also be made accessible to the public?
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COMMENT ON QUESTION 11:
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010-Q11.TXT
Yes. There is no reason to keep these documents secret.
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QUESTION 12:
After publication, should access include the deposit of
biological materials as set forth in 37 CFR 1.802 et seq.?
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COMMENT ON QUESTION 12:
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010-Q12.TXT
No. Such would be overly burdensome of the Patent Office and perhaps,
the applicant.
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QUESTION 13:
What types of problems will be encountered if all amendments must
be made by (a) substitute paragraphs and claims, (b) substitute
pages, or (c) replacement of the entire application?
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COMMENT ON QUESTION 13:
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010-Q13.TXT
As to all options, replacement of the pages will not allow the PTO to
quickly determine the material added to, or removed from, the
application.
Specifically, as to option a), it is too difficult to
replace individual paragraphs and claims, since it would be very
difficult to identify that paragraph in the application which is
being substituted.
Option b), which is the same as current PCT practice, is
the most economical and easy to accomplish method of amending
applications. In this manner, only those pages affected by amendment
are submitted.
Option c) is cumbersome and environmentally unsound, as it
may require an applicant to submit a new copy of a 50 page
application in order to change a single word in a single claim.
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QUESTION 14:
Should protest procedures be modified to permit the third party
submission of prior art only prior to a specific period after
publication of the application? What action should be taken with
respect to untimely submissions by a third party?
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COMMENT ON QUESTION 14:
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010-Q14.TXT
It is clearly desirable to allow third parties to submit prior art or
"protest" the application. If the issue fee has been paid or patent
granted, before the 18-month publication date, clearly no right to
protest exists. If prosecution in the case is still open or only the
notice of allowance has been sent, a third party should be allowed to
submit prior art and have prosecution re-opened. Third parties should
have 45 or 60 days after the publication date of the application to
submit prior art. Art submitted after this deadline should simply be
placed in the file. Further, unlike requests for re-examination where
only limited types of prior art can be submitted, all forms of prior
art, i.e., evidence of statutory bar public use or sale, printed
publications and the like should be reviewed. The third party's
activities in the protest should be limited to art submission within
the window. Otherwise, no other submissions from the third party
should be considered, keeping prosecution ex parte.
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GENERAL COMMENT:
No comments supplied
Last Modified: March 1995