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QUESTION 08:
The delayed filing of either a claim for priority under 35 U.S.C.
119 or 120 may result in the delayed publication of the
application. Should priority or benefit be lost if not made
within a reasonable time after filing? What latitude should the
PTO permit for later claiming of priority or benefit?
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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 08:
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001-Q08.TXT
Benefit of priority should be lost if a claim is not made within a
reasonable time after filing. However, provisions should be made for
unavoidable or unintentional delay in claiming priority.
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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 08:
Some deadline for claiming priority would appear to be necessary in order to promptly publish applications on schedule. However, applicants should also be permitted to withdraw only their priority c laim to delay publication if done prior to the time the application is prepared for publication. The PCT permits such a practice under PCT Rule 90bis.3. Note however that this procedure under the PC T may not be used to recapture any deadlines which have already expired.
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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 08:
ÐÏࡱ
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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 08:
-------
019-Q08.TXT
Because under our proposal the burden is on the applicant to submit
a complete Notice form [Appendix "A" including priority information}
as part of his formal patent application, the effect of delayed
filing should be cleat from existing rules. We support the
requirement that any late claim for priority, if allowed to be
submitted, be supported by affidavit that the delay was not
intentional.
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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 08:
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010-Q08.TXT
Priority should be lost if a claim for priority is not made within a
reasonable specified time after filing. No latitude should be given
to claim priority. Such a rule allows big business the unfair
advantage of delaying publication of their applications by paying a
late fee and claiming priority after the 18 month date.
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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 08:
-------
029-Q08.TXT
In order to avoid the delayed publication of an application due to
the delayed filing of a claim f or priority under 35 U.S.C. S 119 or
120, the PTO should require that a claim for priority should be made
sufficiently early so that the publication can be made by the
eighteenth month from the earliest priority date. A specific time
period (such as 15 to 17 months after the earliest priority date
claimed) should be set as the latest date for filing such a claim.
Upon submission of a priority claim, the applicant should also
include substitute document which is properly formatted with the
publication information. Priority or benefit should be lost if the
claim is not made within this time since it would appear to be more
than sufficient for an applicant to determine whether such a claim
should be made.
The PTO should permit late claiming of priority or benefit by way of
a petition provided that the documents are submitted in time for
publication by the eighteenth month.
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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 08:
-------
033-Q08.TXT
SHOULD PRIORITY OR BENEFIT BE LOST IF NOT MADE WITHIN A REASONABLE
TIME AFTER FILING? THE ANSWER IS NO.
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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 08:
-------
008-Q08.TXT
In keeping with the user-friendliness objective, priority should not
be irretrievably lost if not claimed prior to publication The
published biblio- graphic information about the application should
include the identification of the earliest application in the
declaration That is sufficient notice to the public whether a
priority claim would be applicable Priority should remain actually
claimable up to the last moment, as is the case currently However, if
the claim is delayed to later than 17 months after initial filing,
the cost of including the priority claim in the database, should be
payable by way of a fee for late claiming
of the priority
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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 08:
-------
004-Q08.TXT
The claim for priority should be allowed up to 15 months from the
priority date. Late claims after 15 months should require a statement
that the delay was unintentional along with a late submittal fee.
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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 08:
-------
025-Q08.TXT
The timing for issuance of Application Gazette should be set as early
as feasible from the view point of the raison-d'etre of publication
system. Considering harmonization with the world's patent systems, 18
months after the effective date of filing would be appropriate. As
the presence of priority right claim affects the validity of the
invention relative to an application, priority claim should be
evident in the Publication Gazette, Which means there should be a
statutory time frame stipulated for the applicant to file priority
right claim, Such time frame would better be set at a period which
would neither interfere with the timing of filing or affect issuance
of application publication While claiming his/her priority right, an
applicant may make a bona-fide mistake, Therefore it would be
desirable to give the applicant a chance to redeem his/ her priority
right, with payment of a surcharge within a defunct period of time. A
bona-fide mistake means the existence on the part of an applicant of
the intention to claim priority right at t}u time of application, and
this fact must be proven. Stipulation of this time frame should be
kept to a minimum, since it results in the delay of publication of
the application (e,~. continuation application). (Response to your
Question #8)
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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 08:
-------
016-Q08.TXT
It would work against progress in the useful arts by forcing a
disclosure of heretofore confidential applications, which in the case
of small business especially, would work to undermine the value of
keeping competitors at bay from not knowing just what it is the
applicant may be filing for patent protection for, for enough of a
time to develop an incipient market and recoup the great expense of
product development.
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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 08:
-------
028-Q08.TXT
The question of how to handle late priority claims is one of the two
most important issues relating to 18-month publication. On the one
hand, Applicants should be deterred from making late priority claims
to avoid early publication. Loss of part of the patent terms as a
result of measuring the term from the priority date probably would
not be an adequate deterrent, especially in rapidly changing
technical fields, On the other hand, we have a long and satisfactory
tradition of permitting priority claims when they are needed. Perhaps
a prior user defense should be provided in cases where publication
was delayed.
Last Modified: March 1995