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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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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 03:
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001-Q03.TXT
The entire application as amended up to some specified date, e.g. the
fifteenth month, should be published. Other alternatives are
unacceptable. Instituting a paperless data storage and retrieval
system for storing and accessing the publication data would eliminate
the majority of the PTO concerns regarding storage space. In
addition, a paperless system would aid patent practitioners and
examiners in making thorough searches of the patent application
data after publication.
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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 03:
I have no comment on this item since it would appear to be fee related since the more that is published, it can be assumed the higher any publication fee will be set. To my knowledge, the items publ ished by the PCT Gazette has not raised any concern. The content of the PCT Gazette is set forth in PCT Rule 86.
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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 03:
This Committee has no opinion regarding the content of an abbreviated publication because only a full publication is considered acceptable.
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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 03:
-------
019-Q03.TXT
No information amounting to a substantial disclosure of the
teachings of the intention should b~ permitted. According to 35 USC
122 the file must be kept confidential and not disclosed without the
consent of the applicant. There should be no publication in the
present Gazette or any new fat weekly volume. After spending so much
money on creating a functional computer system, the PT0 should be
ready to move out of exclusive reliance on broadside paper
publications. Publications should be by particular copies addressed
to particular interested third parties, either by paper copy or ail.
These third parties should pay for those copies and thus cover the
cost of publication. Subscriptions should b~ made available by
subclass BO that interested third parties would be immediately mailed
a copy of each new publication. Revenues from this database-e could
be significant. The information in the publication would be that
in Appendix "A" hereto: information on how to contact the inventor' 5
representative, the title of the- invention, the field of search
(provided by the examiner), and a summary provided by the applicant
for publication, It would then b~ up to the interested third party to
contact the applicant and arrange for further disclosure. The
notice should be just that -- a notice-, with how to get further
information. Publication should not include a picture or the
abstract, because these may b~ enough to teach others how to
practice the invention. This would violate 35 USC 122. Publication
should not include claims. when the PT0 tried the TVPP program, 10%
of the issued patents (i.e. with claims in allowable condition) were
protested. The publication of unexamined w$11 be an even greater
stimulus to protests, and will also chill innovation as prior art.
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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 03:
-------
010-Q03.TXT
The application should be printed in a form similar to what the
Gazette provides for: an amount of information which allows a reader
to identify which applications he or she may wish to further
investigate. We suggest that an abstract and possibly one
representative claim be published, with the remainder of the
application available for inspection.
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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 03:
-------
029-Q03.TXT
If the entire application is not published, the minimum information
that should be included would be the title of the invention, the name
of the inventors, the application number and filing date, the
broadest claim, a drawing, an abstract of the invention and, if
applicable, the assignee's name and an identification of other
application(s) which are relied upon for priority.
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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 03:
-------
033-Q03.TXT
INFORMATION TO BE PUBLISHED MAY INCLUDE THE FILING DATE, BUT NOT MORE
THAN THE ABSTRACT.
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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 03:
-------
008-Q03.TXT
A very abbreviated abstract, even a very descriptive long subtitle,
of what the invention seeks to accomplish and how it intends to do
it, should accompany the bibliographic details in the publication
This should either be located in a separate section of each issue of
the OG or, if it would make it too voluminous, then in a separate
biweekly or monthly supplement to the patent OG.
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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 03:
-------
004-Q03.TXT
The entire application should be published including amendments
specifically designated for publication with a Gazette publication
similar to the current Official Gazette publication.
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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: Chuo~ku. TokYo 104, JAPAN
TELEPHONE: 813 3206 2243
FAX: 81 3 3206 2230
REPRESENT: association
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COMMENT ON QUESTION 03:
-------
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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FROM RESPONDENT 016:
NAME: CEiRISTO PH[E R J ON[N }2U nY
REGIHTERED tJ.S. PATENT ATTOlllNEY
AND CANADIAN PATENT AGENT
AL90 ADMITTED IN TIIE DIt3TRICI~ OF COLUMIIIA
COMPANY: CEiRISTO PH[E R J ON[N }2U nY
ATT0SRNEY AND COUN1E3ELOR
ADDR-1: 209 HURON AVENUE
CITY, STATE ZIP: PORT HURON, MICHIGAN 48069
TELEPHONE: (8t0) 982-422t
FAX:
REPRESENT: self
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COMMENT ON QUESTION 03:
-------
016-Q03.TXT
It would divert valuable personnel resources from necessary
administrative Office functions to classify and publish these.
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FROM RESPONDENT 028:
NAME: John B. Pegram
COMPANY: DAVIS HOXIE FAITHFULL & HAPGOOD LLP
ADDR-1: 45 ROCKEFELLER PLAZA
CITY, STATE ZIP: NEW YORK, N.Y. 10111
TELEPHONE: (212) 757-2200
FAX: (212) 586-1461
REPRESENT: self
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COMMENT ON QUESTION 03:
-------
028-Q03.TXT
My proposal would electronically publish all relevant material;
therefore, an Application Gazette would be unnecessary.
Last Modified: March 1995