----------------------------------------
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?
----------------------------------------
FROM RESPONDENT 001:
NAME: David E. Craword, Jr. (Reg No. 38,118)
COMPANY: ROGERS, HOWELL & HAFERKAMP
COUNSELLORS AT LAW
ADDR-1: PIERRE LACLEDE CENTER, SUITE 1400
7733 F0RSYTH BOULEVARD
CITY, STATE ZIP: ST.LOUIS, MISS0URI 63105-1817
TELEPHONE: (314) 727-5188
FAX:
REPRESENT: unclear
----------------------------------------
COMMENT ON QUESTION 01:
-------
001-Q01.TXT
The rule has the potential to delay delivery of proposals for
amendments to the Examiners. Nonetheless, the PTO should require that
all official application-related materials be delivered to a central
location. However, the rules shooed permit an expedited advance copy
which could be facsimile transmitted or hand delivered to the
Examiner. Thus, any delays in prosecution caused by a requirement
that materials be delivered to a central location could be mitigated
Therefore, I recommend permitting facsimile transmission or hand
delivery directly to an Examiner, but requiring a confirmation via
postal delivery to a central location within the PTO.
----------------------------------------
FROM RESPONDENT 026:
NAME: Louis Maassel
COMPANY: World Intellectual Property Organization, Geneva, Switzerland
ADDR-1: 12716 Buckingham Drive
CITY, STATE ZIP: Bowie, Maryland 20715
TELEPHONE: 301) 464-4306
FAX:
REPRESENT: self
----------------------------------------
COMMENT ON QUESTION 01:
Comment: I have no comment as to question 1 but note that it appears to be directed to only wind delivered" and "faxed" items.
----------------------------------------
FROM RESPONDENT 041:
NAME: Frederick S. Burkhart
COMPANY: INTELLECTUAL PROPERTY LAW SECTION
OF THE. STATE. BAR OF MICHIGAN
ADDR-1: 306 TOWNSEND STREET
CITY, STATE ZIP: LANSING, MICHIGAN 48933
TELEPHONE: 517-372-9030
FAX:
REPRESENT: association
----------------------------------------
COMMENT ON QUESTION 01:
We recommend that application papers be captured when filed and that the remaining papers of the prosecution history be captured upon issuance. This will eliminate the logistics of routing prosecuti on paperwork through a central location.
----------------------------------------
FROM RESPONDENT 019:
NAME: Wilmot H. McCutchen, President
COMPANY: HOUSTON INVENTORS ASSOCIATION
ADDR-1:
CITY, STATE ZIP: HOUSTON, TEXAS
TELEPHONE: (713) 957 4344
FAX: (713) 868-4104
REPRESENT: COMPANY
----------------------------------------
COMMENT ON QUESTION 01:
-------
019-Q01.TXT
Yes. Fax transmissionb tc. may bQ sent to satellite locations and
given a filing date there, but a hard copy should follow to the
central location. There should always be certainty as to what is in
the file, and that means that there should be one Archival file for
referen›e. Scanning of thess documents would present a bottleneck, so
perhaps th~ applicants could be required to submit diskettes at so>e
timz after the initlal fillng.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 01:
-------
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
----------------------------------------
FROM RESPONDENT 029:
NAME: Marcia H. Sundeen
COMPANY: PENNIE & EDMONDS
ADDR-1: 1701 Pennsylvania Avenue, N.W.
CITY, STATE ZIP: Washington, D.C. 20006-4706
TELEPHONE: (202) 393-0177
FAX: (202) 393 0462
REPRESENT: PTO Relations Committee
----------------------------------------
COMMENT ON QUESTION 01:
-------
029-Q01.TXT
The delivery of all official application related materials to a
central location should not present any undue problems for applicants
provided that the papers are promptly forwarded to the appropriate
individual or department in the PTO for handling of such materials.
It Is essential that there be no delays in view of the 20- year term.
----------------------------------------
FROM RESPONDENT 033:
NAME: TOM EASTEP
COMPANY: THE ALLIANCE FOR AMERICAN INNOVATION
ADDR-1: 1100 Connecticut Ave. NW, Suite 1200
CITY, STATE ZIP: Washington, D.C 20036-4101
TELEPHONE: 202-293-1414
FAX: 202-467-5591
REPRESENT: ALLIANCE FOR AMERICAN INNOVATION
----------------------------------------
COMMENT ON QUESTION 01:
-------
033-Q01.TXT
ALL OFFICIAL APPLICATION RELATED MATERIALS SHOULD BE DELIVERED TO ONE
PLACE.
----------------------------------------
FROM RESPONDENT 008:
NAME: Gabriel P. Katona
COMPANY: Schweitzer Cornman & Gross
Attorneys at Law
ADDR-1: 230 Park Avenue
CITY, STATE ZIP: New York, New York 10169-0059
TELEPHONE: (212) 986-3377
FAX: (212) 986-6126
REPRESENT: unclear
----------------------------------------
COMMENT ON QUESTION 01:
-------
008-Q01.TXT
An electronic database is indispensable it' the PTO would seek to
escape the burden of supplying paper copies of applications and of
prosecution documentation before and after publication The effort
that would be devoted to upscaling copying services to the point of
supplying such paper copies, could be better spent in creating the
required electronic database The filing of applica- tions and
amendments in machine readable form should, however be made optional,
and those desiring to file paper copies should he able to continue to
do so upon the payment of a fee which would cover the cost of
digitizing the contents of the paper filings Such a fee should be
subject to the small entity discount, because the small entities are
exactly the types of applicants who would he less likely to he in a
position to file in digitized form
The extremely well managed Application Division which is now smoothly
functioning with the microfilming of new applications, would 'be the
logical site also for the central data capturing by digitizing of all
incoming information on paper.
The patent application database should he made accessible to the
public through a service to he identified through public bidding,
such as DIA- LOG, which would (i) reduce the administrative burden of
the PTO, (ii) provide the service in an expert, knowledgeable manner,
and (iii) provide a cost-deferring revenue flow to the PTO The method
by which a private service is established in connection with the
applications database, shouldl be based on what the PTO has learned
in connection with the brouhaha that surrounded the establishment of
the private trademark searching database!
----------------------------------------
FROM RESPONDENT 004:
NAME: Michael H. Minns
COMPANY: INGERSOLL-RAND COMPANY
Patent Department
ADDR-1: 942 Memorial Parkway
CITY, STATE ZIP: Phillipsburg, NJ 08865
TELEPHONE: (908)859-7700
FAX: (908) 859-7707
REPRESENT: self
----------------------------------------
COMMENT ON QUESTION 01:
-------
004-Q01.TXT
All application related information which will be published should go
to a central data capturing facility. This would include the
application as filed and amendments which are to be incorporated
prior to publication.
Last Modified: March 1995