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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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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 06:
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001-Q06.TXT
The cost of publishing applications should be recouped via a separate
publication fee which should be incurred on a per page basis The
publication fee should not be subject to a discount. No refunds
should be permitted unless the application is abandoned prior to
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 06:
To address this question the view of the USPTO on what publication (or republication) will be made by the USPTO of international applications already published by the International Bureau. The entir e content of international applications designating the United States of America will be available to the USPTO upon publication by the International Bureau. Note however that about 27 % of these ap plications will not be published in English except for the entry in the English PCT Gazette. The English translation for entering the national phase is not required to be filed in the USPTO until 20 months after the priority date under Chapter I or 30 months after the priority date under Chapter II. The translation may even be filed later under 37 CFR 1.494(c) upon payment of a processing fee. If the USPTO is to republish international applications after 20 or 30 months from the priority date, but prior to the grant of the patent, when will the publication occur and when will any publica tion fee be due? My suggestion is to only republish non-English international applications promptly after entering the national phase and that any publication fee be part of the basic national fee. It should be sufficient to merely refer to the publication by the International Bureau of English language applications. Consideration could be given to making the "publication fee" part of the fili ng fee in national applications to avoid separate correspondence later and to refund that portion of the filing fee set for publication if the application is abandoned or issued as a patent prior to the 18-month publication date. This would also remove the need for petitions for late acceptance of the publication fee.
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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 06:
The cost for publishing applications should first be recovered from surplus funds paid by Applicants that are being diverted by Congress from Patent and Trademark Office operations. Any additional f ees required for publication should be paid as part of the application fee rather than required at a later date as a separate publication 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 06:
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019-Q06.TXT
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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 06:
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010-Q06.TXT
No separate fee should be charged. It is often very difficult to
obtain timely payment for issue fees, maintenance fees and the like
from sole inventors and small companies who are often cash poor. This
leaves the patent agent or law firm with the choice of paying the fee
for them and trying to later collect it from them, or allowing the
application to go abandoned and trying to avoid a claim by the
applicant that the firm is overcharging them or neglecting their
work. It would be best if the filing fee covered the cost of
publication. If the entire application is published, the fee (even as
included in the filing fee) may need to include a surcharge for very
long applications, while if only an abstract is published, a flat
amount built into the filing fee is appropriate. Of
course, including the publication fee with the filing fee means that
some applicants who abandon their applications before publication pay
for a cost which is not incurred, but this is true of present
practice as to those applicants who pay the filing fee but abandon
their applications before examination is completed.
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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 06:
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029-Q06.TXT
The publication fee should be built in to the filing fees and not
separately charged at a later time. The publication fees should be
relatively low compared to those for publishing the patent deeds.
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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 06:
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033-Q06.TXT
THERE SHOULD ABSOLUTELY BE NO CHARGE TO THE APPLICANT FOR FILING, AND
ALL COSTS SHOULD BE BORNE BY THE PTO.
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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 06:
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008-Q06.TXT
No separate publication fee should be charged! This proposal is
coupled with a more radical suggestion which is likely to result in
some controver- sy The suggestion is the institution of a deferred
examination system Only a small part of patent applications results
in commercially successfully realized inventions Therefore, the entry
costs of the patenting process should be kept relatively low, and the
additional costs should be incrementally deferred to later stages of
that process This principle has proven itself through the
cost-deferring advantages of the PCT, and the deferred examination
principle which has been an unqualified success so far in Canada,
Germany, and Japan The provisional application feature of the new
US law is also a step in the right direction
An applicant should be able voluntarily to avail itself of
a costly accelerated examination (see also the answer to the previous
Question No 5), but that should be viewed as an exception to the
principle of cost deferral, because it is voluntarily incurred? and
at a sizable fee that should possibly not even be subject to a small
entity discount Post-publication requests for examination, however,
should be less costly, and should be subject to the 5()% discount
The cost of publication and the manner in which it is
assessed, should reflect the Social desirability of publication
Therefore, the filing fee of a regular application should include the
costs of publication which should not he refundable if an applicant
expressly withdraws its application from publication The costs of
publication should be kept as low as possible, due to (i) minimizing
the published information, (ii) restricting its dissemination to the
OG or a supplement, and (iii) the fee income generated trough the
users of the commercial database
This should also enable keeping the filing, fee, the cost
of entry into the patenting process at a relatively low level, by
utilizing as much of any provi- sional application as possible (e g
by assessing an increment added to the filing fee if no provisional
application was filed, or a different specification if used than that
of the provisional application) The filing fee need not include any
costs of examining and reexamining the application, because that
would be met by the deferred fee for requesting examination
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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 06:
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004-Q06.TXT
The publication fee should be included with the application fee. If
the application is not published, a portion of the publication fee
should be returned to the applicant
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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 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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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 06:
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016-Q06.TXT
It uould redl'5e EmO'lllts of direce, non-priority U.S filings as
currently many foreign nationals, e.g., from Canada, rely on
quarantees of application secrecy, and file in the Office.
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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 06:
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028-Q06.TXT
My proposal should reduce cost for the PTO by eliminating the data
entry cost for patents. Thus, a publication fee should be
unnecessary. Regardless of which publication system is adopted, it
should be kept in mind that the principal beneficiary of publication
is the- public, not the applicant. Any publication cost should be
payable at filing and refundable if the application is abandoned
without publication. The transaction cost of that procedure should be
substantially lower than collecting a Publication fee for each case
published.
Last Modified: March 1995