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FROM RESPONDENT 016:
NAME: Christopher John Rudy
Registered U.S. Patent Attorney
and Canadian Patent Agent
Also Admitted in the District of Columbia
COMPANY: Christopher John Rudy
Attorney and Counselor
ADDR-1: 209 Huron Avenue
CITY, STATE ZIP: Port Huron, Michigan 48069
TELEPHONE: (810) 982-422t
FAX:
REPRESENT: self
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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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016-Q01.TXT
It is unnecessary and undesirable.
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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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016-Q02.TXT
It would make for much added Office expense.
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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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016-Q03.TXT
It would divert valuable personnel resources from necessary
administrative Office functions to classify and publish these.
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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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016-Q04.TXT
It could interfere with efficient examination of applications.
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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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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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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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016-Q06.TXT
It uould redl'5e EmO'lllts of direce, non-priority U.S filings as
currently many foreign nationals, e.g., from Canada, rely on
quarantees of application secrecy, and file in the Office.
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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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016-Q07.TXT
It could serve to reduce amounts of filings from domestic inventors,
particularly from small businesses, who are the backbone of and
provide the greatest innovative growth for our economy, and who rely
on the value of "patent pending" notices to fairly keep competitors
from copying their inventions during pendency, which can often exceed
18 months.
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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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016-Q08.TXT
It would work against progress in the useful arts by forcing a
disclosure of heretofore confidential applications, which in the case
of small business especially, would work to undermine the value of
keeping competitors at bay from not knowing just what it is the
applicant may be filing for patent protection for, for enough of a
time to develop an incipient market and recoup the great expense of
product development.
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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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016-Q09.TXT
It would force the hand of applicants, to especially include those
from small business, to choose to abandon an invention before 18
months, relying instead, e.g., in method cases, on State trade secret
laws, this occurring when otherwise Letters Patent would have been
secured to properly protect it. This would occur in cases where
Examiners make unwarranted, new or continued rejections or objections
which regrettably happens with some frequency, and in cases appealed
to the Board.
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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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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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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 saw in the January 1995 issue of JPTOS, notice of a "Notice of
Public Hearing and Request for Comments on 18-Month Publication of
Patent Applications," cited to 59 FR 63966. I do not have the Federal
Register, but, if still timely, please consider my comments.
I write against publication of patent applications before issue, as
follows:
Last Modified: March 1995