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FROM RESPONDENT 035:
NAME: Jeffrey H. Ingerman
Reg. No. 31,069
COMPANY: Fish & Neave
ADDR-1: JHIngerman@aol.com
CITY, STATE ZIP:
TELEPHONE:
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:
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:
These comments are in response to the Request for Comments at 1177 OG
390 et seq., in which the Patent and Trademark Office solicits
comments on the implementation of expected legislation requiring
publication of a pending patent application within 18 months of its
earliest effective filing date (35 U.S.C. =A7 119 or 120). The
undersigned, a partner in the intellectual property law firm of Fish
& Neave, is submitting these comments based on the questions at the
end of the Request for Comments, although not all questions are being
addressed.
The Patent and Trademark Office is contemplating requiring all papers
to be filed in a central location, to facilitate data capture for an
electronic application file. I believe that this will prejudice
patent applicants by delaying issuance of patents, by eliminating the
ability to direct a communication directly to an Examiner to hasten
prosecution. The alleged justification for this change in practice is
that procedures that allow decentralized filing will result in some
data not being captured.
I respectfully submit that substantive rights of applicants should
not be sacrificed for the administrative convenience of the Patent
and Trademark Office. The Patent and Trademark Office should be able
to put in place procedures to ensure data capture, and should be able
to enforce its procedures on its own staff to eliminate missed data
capture. For example, clerks could be instructed not to physically
enter into a file any paper that has not been stamped "Entered into
database" by the data capture staff. If such a paper comes to the
clerk to be physically entered and the stamp is missing, procedures
should require the clerk to send the paper (and the file?) to the
data capture staff. Failure to follow the procedures should be
grounds for disciplinary action against the clerk. Other schemes to
accomplish the Patent and Trademark Office's goal without affecting
applicants' rights could be formulated.
The Patent and Trademark Office is contemplating imposing a standard
application format. I respectfully submit that there is already a de
facto standard format among practitioners at least those whose
clients have substantial foreign filing programs. Specifically, many
practitioners prepare their United States patent applications in the
format mandated by the EPO and PCT, in order to minimize retyping or
reformatting when the time comes to file the application abroad.
While I have no opinion as to whether or not the Patent and Trademark
Office should impose a standard, I believe that if there is a
standard, it should be the same as the EPO/PCT standard.
I have no strong opinion on what should be included in the
publication/ but I strongly believe that an applicant should receive
a copy of whatever is published, or, if only a Gazette entry is
published, at least a notice in advance stating when publication in
the Gazette will occur.
The Patent and Trademark Office is contemplating requiring that
claims for priority under either 35 U.S.C. =A7 119 or 120 be made
within some time certain from the United States filing date, to
prevent applicants from delaying publication by delaying the priority
claim. I appreciate the motivation of the Patent and Trademark
Office, and do not have any difficulty in placing a time limit on
Section 119 priority claims, where it is the rare applicant who does
not know at the time of filing that priority is to be claimed. Even
there, a late claim should be permitted, with immediate publication
if the 18-month period has passed, and a surcharge to cover the cost
of the extra processing that would be needed for the immediate
publication.
However, with respect to Section 120 priority, it is not always known
in advance that such priority will be claimed. For example, in many
cases the only way in the prosecution of a second application to
overcome as a reference a first application having common but not
identical inventors is to claim in the second application
continuation-in-part status from the first application. At the time
of filing of the second application, it may not be perceived that
that will be necessary and, particularly in view of the impending
implementation of the 20-year term, applicants should not be
required to decide in advance that continuing status should be
claimed where it may not prove to be necessary. The Patent and
Trademark Office proposal will result in a serious potential loss of
substantive rights for procedural convenience. In a case such as the
one just described, the Patent and Trademark Office should simply
publish the second application as soon as possible after continuing
status is claimed, assuming that 18 months have already passed from
the first filing and have not yet passed from the second filing,
again imposing a surcharge if extra costs are involved.
With respect to assignment data, I believe that at least one purpose
of 18-month publication is to give notice of potential patents to be
issued to one's competitors, and if so then assignment data should be
printed on the publication itself, and the assignment records should
remain open to prevent assignees from hiding their identities by
recording assignments only after publication. With respect to the
form of amendments, the Patent and 'Trademark Office should maintain
an amendment format that allows, as does the present format, easy
comparison between an original claim and its amended form.
These comments represent the views of the undersigned and do not
necessarily reflect the views of this firm.
Last Modified: March 1995