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QUESTION 09:
Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notice, i.e., the Patent Application Notice, be
removed from the search files, and should publication information
be included on the issued patent?
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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 09:
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001-Q09.TXT
Because material may change or be omitted from the final patent, the
Application Notice should not be removed from the search files.
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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 09:
It would appear essential that a patent include information as to the prior publication. US patents which now mature from published international applications already contain the publication number and date of any prior international publication by the International Bureau. I also note that in reexamination proceedings, the certificate merely indicates the changes and does not republish the en tire patent. Consideration could be given to publishing the entire US national application at 18 months and only indicating the changes in the patent printed at grant. The patent "grant" could still include the entire specification, including claims, and drawings.
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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 09:
Under no circumstances should any document published by the Patent Office be removed from the search files without replacement by a more current document. Publication information should be included on the issued patent.
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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 09:
-------
019-Q09.TXT
With only an option i (non-enabling, no access allowed) publication
in the format of Appendix "A", there would be no prior art effect,
thus the- question is moot. But if there is a picture published, as
under option ii, that is enough of a disclosure that prior art effect
may be considered. Difficult questions of prior art would arise that
would be a big waste of time for the examiners and all concerned.
Such a prior art document would have to stay in the search files,
further adding to bulk and complexity, and thus delay in processing.
Better to have a11 enabling pre-issue disclosure by private contract
rather than as a matter of public policy, to avoid both prior art
questions and unintended harm to the applicants. Any publication
should serve merely as notice to interested third parties that they
should arrange- for a private disclosure by the applicant. Date of
publication might be included in the patent at the beginning, along
with the filing date
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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 09:
-------
010-Q09.TXT
There appears to be no substantial reason for leaving such
information in the file or including it on the issued patent.
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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 09:
-------
029-Q09.TXT
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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 09:
-------
033-Q09.TXT
THE ANSWER TO QUESTION 9 IS THAT WE DO NOT CARE WHAT IS REMOVED NOR
WHAT IS ENCLOSED ON THE ISSUED PATENT.
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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 09:
-------
008-Q09.TXT
The answer to this question, as far as PTO search records are
concerned, is an internal matter As far as the commercial database is
con- cerned, the detailed information should be removed upon issue
from ,he particu- lar search library, and a cross-reference should be
inserted there to the patent number and to another search library or
database from which either full text or other further information (e
g claims, reassignment, maintenance payments) is available This might
also provide an opportunity for establishing a commercial database
for file histories of issued patents
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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 09:
-------
004-Q09.TXT
The Patent Application Notice should remain in the search files and
the publication information must be included on the issued patent.
This is needed to indicate the publication date under 35 U.S.C.
102(a) and (b).
Last Modified: March 1995