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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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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
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COMMENT ON QUESTION 02:
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001-Q02.TXT
A standard application format is totally unnecessary if the full
application is published as it should be. If the full application is
not published, then only those portions which are to be published
need be in a standard format. Regardless, some standardization of
font, paper size, and line spacing may be necessary for character
recognition equipment if electronic transmission is not used.
However, if transmission via modems or magnetic storage devices is
used, no standardization is needed.
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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
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COMMENT ON QUESTION 02:
It should be noted that the PCT provides in Article 27(1) that "No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations." The provisions for the physical requirements for international applications is set forth in PCT Rule 11. The current USPTO Rules of Practice take these provisions into account. To require international applications entering the USPTO as a designated State to meet different or additional formal requirements would be contrary to the PCT. Also note that PCT Rule 49.5(j) provides that "No designated Office shall require that the translation of the international application comply with physical requiremen ts other than those prescribed for the international application as filed." Although the PCT provisions do not control what a patent office may require in a non-international application, it seems t o be preferable to have only one set of formal requirements for patent applicants to follow and that those requirements be those which are internationally used so that US applicants will not need to reformat their applications for foreign filing and that foreign applicants need not reformat their applications for filing in the USPTO. It should be ~. noted that the PCT Regulations may be change d by action of the PCT Assembly, however any substantial change would probably not be acceptable to the 76 other member countries of the PCT who have all changed their requirements to be those of th e PCT.
PCT Rule 11.5 requires that the size of all sheets in an international application be A4 (29.7 cm by 21 cm). The USPTO Rules of Practice are more flexible and provide for a range of sizes for nation al application sheets and drawings. The sanctions under the PCT are that if the receiving Office believes that the international application does not comply with the prescribed formal requirements, it invites the applicant to correct the defects within a prescribed period, which may be extended, failing which that application shall be considered withdrawn (abandoned in USPTO terminology), (Art icle 14(1)).
The PCT also requires that the description, claims, drawings and abstract each commence on a new sheet, (PCT Rule 11.4(a)). No surcharge is made for any corrections of any lack of compliance but a t ime limit for correction.
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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
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COMMENT ON QUESTION 02:
The Patent and Trademark Office should adopt a standard application format, including a standard paper size. Failure to comply with the requirements should not jeopardize the filing date, but result in a fee.
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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
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COMMENT ON QUESTION 02:
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019-Q02.TXT
Yes, provided that it is widely published 60 that any college student
would be able to find out how to file a patent application. Failure
to comply should not be penalized with a surcharge, but the applicant
should be informed of the consequences of informality Included in
this standard application format would be a Notice of Pending
Application substantially like Appendix "A".
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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
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COMMENT ON QUESTION 02:
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010-Q02.TXT
The PTO should adopt a standard application format. The Office should
require that the application be submitted on a disc in computer
readable form (just as with the present comment) OR that the
application be submitted on paper in a particular form which allows
for scanning by the Patent Office. If the application is not
submitted in this form, the applicant should be given the option of
sending in a fee or correcting the format deficiency in one month or
have the application deemed abandoned.
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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
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COMMENT ON QUESTION 02:
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029-Q02.TXT
The majority of the Committee did not object to the PTO's adoption of
a standard application format. It was suggested that the PCT format
would be suitable. Consideration should be given to the submission of
the data in electronic form such as on a diskette, in a manner
similar to that used for the submission Sequence information.
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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
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COMMENT ON QUESTION 02:
-------
033-Q02.TXT
A STANDARD APPLICATION FORMAT IS NOT NECESSARY.
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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
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COMMENT ON QUESTION 02:
-------
008-Q02.TXT
In keeping with the objective of user-friendliness, there should be
no requirement for any standardized application format That negative
conclu- sion, however, needs to be tempered with any meaningful cost
saving consider- ations.
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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
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COMMENT ON QUESTION 02:
-------
004-Q02.TXT
A standard format should be adopted including standard paper sizes,
claims on a separate page, standard margins and spacing. An
application which does not comply with the standard format can be
handled in accordance with 37 C.F.R 1.53(c) or (d).
Last Modified: March 1995