Comments on Question 6

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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 Note however that about 27 % of these ap     plications will not be published in English except for the entry in the English PCT Gazette.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
     ࡱ
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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