Comments on Question 9

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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:
     -------
     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
     ࡱ
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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