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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: Chuoku. TokYo 104, JAPAN
TELEPHONE: 813 3206 2243
FAX: 81 3 3206 2230
REPRESENT: association
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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:
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025-Q03.TXT
The primary characteristics of the publication system is the issuance
of Publication Gazette. Actually, many of the countries and regions
which have already adopted publication system of patent applications
lay application specifications open in its entirety in the form of
paper, micro film or CD ROM. This fact leads us to think: that the
contents of publication should not be partial publication but entire
publication As to the form of publication, parallel publication in
paper hard copy and CD-ROM would be desirable. (Related to your
Question 3) Entire publication on the other hand, may tend to be
costly, Therefore, in case the cost containment is the priority
requirement, publication in patent may be opted while the content of
Application Gazette would preferably be something simialr to the
contents of present Of Official Gazette for issued patents. That is
to say, Title of the Invention, Inventor, Assignee, Date of filing,
Social Number, Date of Parent Application Number of Parent
Application, USC/IPC, Number of Claims, Representative Claim,
Drawings, etc. will be provided (Response to your question #3, if
and where entire publication is not feasible) The provision of
representative claim appears necessary considering the nature of
Application Gazette as the only Governmental publication on filed
patent applications which discloses inventions. Regardless of whether
e publication is in part or is in entirety, file wrappers for applied
patents should be laid open X public access after the date of the
publication. This point is prerequisite to all other forms of
publication.
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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:
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025-Q06.TXT
Introduction of publication basically means publication of every
application, and an applicant should give consent to publication of
his/her invention Therefore fee for Application Gazette and other
expenses relevant to publication should be included in the
application fee and should consist a part of it, rather than charged
separately. (Response to your question #6)
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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:
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025-Q08.TXT
The timing for issuance of Application Gazette should be set as early
as feasible from the view point of the raison-d'etre of publication
system. Considering harmonization with the world's patent systems, 18
months after the effective date of filing would be appropriate. As
the presence of priority right claim affects the validity of the
invention relative to an application, priority claim should be
evident in the Publication Gazette, Which means there should be a
statutory time frame stipulated for the applicant to file priority
right claim, Such time frame would better be set at a period which
would neither interfere with the timing of filing or affect issuance
of application publication While claiming his/her priority right, an
applicant may make a bona-fide mistake, Therefore it would be
desirable to give the applicant a chance to redeem his/ her priority
right, with payment of a surcharge within a defunct period of time. A
bona-fide mistake means the existence on the part of an applicant of
the intention to claim priority right at t}u time of application, and
this fact must be proven. Stipulation of this time frame should be
kept to a minimum, since it results in the delay of publication of
the application (e,~. continuation application). (Response to your
Question #8)
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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:
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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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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:
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025-Q12.TXT
From the view point of publication of invention, it is theoretically
conceivable that the biological material is open to furnishing as
well at the time of publication of specification, but due to the
special nature of biological material patent laws in Europe and in
Japan limits furnishing at the time of publication of invention. It
is desired that USPTO would do the same. (Response to your question
#12)
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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:
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025-Q14.TXT
It is important for keeping high standard of examination that the
examiners be effectively provided with data material to examination.
For that purpose, a system set up for submitting of prior art from
the public is desired. Post-issue re-examination or invalid
litigation is a means for reviewing validity of patents, but from the
view point of the stabilization of granted rights, priority should be
given to building up of a strict and effective examination system
prior to grant of patents. From the above mentioned reasons, it is
desired to institute, along with the introduction of publication of
application, a system for collecting data on prior art from the
public. Those who ate engaged in the technology similar to the
invention filed are daily searching and perusing related material
data such as Official Gazette, academic paper, etc. It goes without
saying that information obtained through these researches is in most
cases material in relation to the inventions under examination. It
should be effective when information is submitted to permit
attachment of an affidavit stating the reasons why the submitted data
are material in order to clearlyconvey the submitter's intent for
submission and to facilitate examination.. As to the time frame for
submission of information, it would be necessary to permit it until
the issuing of notice of allowance for the application. It would make
utilization of that scheme for foreign nationals extremely difficult
timing-wise if that time frame should be limited, for instance, to
two months after the publication of application. (Response to your
question #14)
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GENERAL COMMENT:
The United States Patent and Trademark Office requested written
comments from the public on the subject of publication of patent
applications 18 months after filing date. Japan Intellectual Property
association (JIPA) is honored to submit hereby its comments after
carefully reviewing the possible publication system of patent
application in the United States, JIPA is a rate sector, non-profit,
volunteer organization with 660 corporate membership which are
conducting business in Japan. The purpose of {be Association since
its foundation in 1938 has been to ensure appropriate use and
improvement of the systems concerning intellectual property, and
thereby contributing to the progress of technology and to the
development of industry.
1. Foreword The introduction of publication system of patent
application in the U.S. will be welcomed from the point of view of
harmonization of the patent systems in the world as well. Publication
of patent applications will mean that the existence of applications
are known to the general public at an early stage. and thereby
eliminating the harmful effects of "submarine patents", and this in
turn will greatly contribute to the appropriate use of patent system
in the U.S. We believe that introduction of publication system will
not only benefit American society but also benefit the economic
development of the entire world
2. Mechanism of Publication System
2-l Issuance of Gazette of Patent Application Notices (Application
Gazette) The primary characteristics of the publication system is the
issuance of Publication Gazette. Actually, many of the countries and
regions which have already adopted publication system of patent
applications lay application specifications open in its entirety in
the form of paper, microfilm or CD ROM This fact leads us to think:
that the contents of publication should not be partial publication
but entire publication. As to the form of publication, parallel
publication entire publication, on the other hand, may tend to be
costly, Therefore, in case the cost containment is the priority
requirement, publication in part may be opted while the content of
Application Gazette would preferably be something similar to the
contents of present Official Gazette for issued patents. That is to
say, Title of the Invention, Inventor, Assignee, Date of filing,
Social Number, Date of Parent Application Number of Parent
Application, USC/IPC, Number of Claims, Representative Claim,
Drawings, etc. will be provided (Response to your question #3, if
and where entire publication is not feasible) The provision of
representative claim appears necessary considering the nature of
Application Gazette as the only Governmental publication on filed
patent applications which discloses inventions. Regardless of whether
e publication is in part or is in entirety, file wrappers for applied
patents should be laid open to public access after the date of the
publication. This point is prerequisite to all other forms of
publication.
2-2 Timing for Issuance of Application Gazette and Priority Right The
timing for issuance of Application Gazette should be set as early as
feasible from the view point of the raison-d'etre of publication
system. Considering harmonization with the world's patent systems, 18
months after the effective date of filing would be appropriate. As
the presence of priority right claim affects the validity of the
invention relative to an application, priority claim should be
evident in the Publication Gazette, Which means there should be a
statutory time frame stipulated for the applicant to file priority
right claim, Such time frame would better be set ~ a period which
would neither interfere with the timing of filing or affect issuance
of application publication While claiming his/her priority right, an
applicant may make a bona-fide mistake, Therefore it would be
desirable to give the applicant a chance to redeem his/ her priority
right, with payment of a surcharge within a defunct period of time. A
bona-fide mistake means the existence on the part of an applicant of
the intention to claim priority right at t}u time of application, and
this fact must be proven. Stipulation of this time frame should be
kept to a minimum, since it results in the delay of publication of
the application (e,~. continuation application). (Response to your
Question #8)
2-3 Access to Publication of the Application, Access to the File
Wrapper 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.
2-4 Legal Effect of Publication of the Application Application
Gazette is a printed vehicle provided to the public in the same
manner as any- academic or technical periodicals. Therefore,
Application Gazette constitutes "printed publications"' disclosed
invention had been submitted to the Patent and Trademark Office on
the date of filing of the relevant application. Consequently, an
identical but junior invention claimed in a subsequent application
should be rejected unless prior invention on can be proved h It is
therefore appropriate to add "a published patent application having a
date of filing prior to the relevant date of invention in 35 U.S.C.
102 (c).
2-5 Fee for Publication of Application Introduction of publication
basically means publication of every application, and an applicant
should give consent to publication of his/her invention Therefore fee
for Application Gazette and other expenses relevant to publication
should be included in the application fee and should consist a part
of it, rather than charged separately. (Response to your question #6)
2-6-1 Compensation for Publication of Application When introducing
publication of application, a definite sum of compensation should be
accorded to the applicant. As publication of application has
different legal meaning to issuing of patent, compensatory nature
must be distinctly identified as opposed to licensing fee for an
issued patent. Consequently, it is appropriate that a compensation
equivalent to a nonexclusive license fee be paid to a published
claim having identical scoop as at the time of issuing. No
compensation of punitive nature such as interests, damage surcharge,
payment of attorney fee etc. should be applicable.
2-6-2 Enforcement of compensation claim It would be appropriate that
compensation for publication of application will be enforceable, 1)
after issuing relevant application. and 2) when the existence of
publication of application is notified to the other party. It would
result in imbalance of interests between an applicant and the public
if compensation claim is enforceable from the time of publication of
application for a claim still under examination and therefor the
scoop of invention is not yet defined Naturally the party who claim
compensation needs to notify the other party as in the case of issued
patent.
3 System for Submitting Prior Art It is important for keeping high
standard of examination that the examiners be effectively provided
with data material to examination. For that purpose, a system set up
for submitting of prior art from the public is desired. Post-issue
re-examination or invalid litigation is a means for reviewing
validity of patents, but from the view point of the stabilization of
granted rights, priority should be given to building up of a strict
and effective examination system prior to grant of patents. From the
above mentioned reasons, it is desired to institute, along with the
introduction of publication of application, a system for collecting
data on prior art from the public. Those who ate engaged in the
technology similar to the invention filed are daily searching and
perusing related material data such as Official Gazette, academic
paper, etc. It goes without saying that information obtained through
these researches is in most cases material in relation to the
inventions under examination. It should be effective when information
is submitted to permit attachment of an affidavit stating the reasons
why the submitted data are material in order to clearlyconvey the
submitter's intent for submission and to facilitate examination.. As
to the time frame for submission of information, it would be
necessary to permit it until the issuing of notice of allowance for
the application. It would make utilization of that scheme for
foreign nationals extremely difficult timing-wise if that time frame
should be limited, for instance, to two months after the publication
of application. (Response to your question #14)
4 Regarding Deposit of Biological Material
4 1 Timing for Furnishing of Deposited Biological material From the
view point of publication of invention, it is theoretically
conceivable that the biological material is open to furnishing as
well at the time of publication of specification, but due to the
special nature of biological material patent laws in Europe and in
Japan limits furnishing at the time of publication of invention. It
is desired that USPTO would do the same. (Response to your question
#12)
4-2 Timing for Deposit of biological material Ever since in re
Lundak, deposit of biological material can be done at any time prior
to the grant of patent in the United States. However, as the
specification is published before the grant by the introduction) of
publication of application. deposit takes place prior to publication
and the published specification needs the deposit number filled out
Therefore the current practice needs to be changed
4-3 Necessity of Deposit As deposit can be made at any time before
grant of right, and there has been a tendency in the U.S. that
deposits are requested even for those inventions for which no deposit
is required in Europe or in Japan, it has been customary that the
applicants would place priority to obtain notice of allowance and
make a deposit in response to the request from the examiner, without
sufficiently arguing if it was reasonable. Now if the practice will
be changed as described in the above, applicants will find it
difficult to respond to the request from examiner. Therefore a clear
standard for the necessity of deposit of biological material, which
is in harmony with the practice in Europe and Japan will become
indispensable.
This has been a response to Request for Comments on l8-Month
Publication of Patent Application by U.S.P.T.O. from Japan
Intellectual Property Association. a non-profit, private sector
organization. This document reflects the views of the Association.
Last Modified: March 1995