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FROM RESPONDENT 013:
NAME: Ralph E. Jocke
COMPANY: Walker & Jocke
ADDR-1: 231 South Broadway
CITY, STATE ZIP: Medina, Ohio 44256-2601
TELEPHONE: (216) 722-3143
FAX: (216) 722-6446
REPRESENT: unclear
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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GENERAL COMMENT:
I am currently serving as the Chair of the Intellectual Property Law
Section of the Ohio State Bar Association. I wanted to let you know
that the Board of Governors of the Section voted at its January 14,
1995 meeting to support HR359 that was introduced in the U.S. House
of Representatives on January 4, 1995. As you know, HR359 requires
that pending patent applications not be published earlier than the
date of grant of 60 months from the earliest filing date.
In supporting HR359 the Intellectual Law Section Board of Governors
expressed oppositions to the 18 month publication proposal upon which
a public hearing will be held on February 15, 1995. The sentiments
of the Board of Governors expressed at the meeting indicated that the
option that U.S. patent applicants currently enjoy maintain their
inventions as trade secrets until the date of grant would be unduly
limited by the 18 month publication proposal. It was felt that the
mandatory 60 month publication provisions in HR359 would both
adequately protect the rights of the patent applicant as well as
timely notify the public of the existence of potential "submarine
patents".
The recommendation of the Intellectual Property Law Section of the
Ohio State Bar Association is currently working its way through the
approval process and is expected to eventually be adopted as a formal
position of the Ohio State Bar Association. Unfortunately, due to the
time required to complete the process, the Section's recommendation
will not be formally acted upon by the Association prior to the date
of the public hearing.
I will notify you if the Section's position is adopted as a formal
position of the Association. In the meantime, if you have any
questions please do not hesitate to give me a call.
Last Modified: March 1995