Comments on Question 8

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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:
     ࡱ
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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:
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     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:
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     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:
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     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:
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     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:
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     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