Comments on Question 10

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QUESTION 10:
     After publication, should access to the content of the
     application file be limited to the originally filed application
     papers? If not, what degree of access should be permilted? Should
     access be limited to the content before publication, or should it
     extend to materials added after publication?

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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 10:
     -------
     001-Q10.TXT
     Because the claims and therefore the metes and bounds of the patent
     may change significantly during the prosecution, third parties must
     have access to prosecution after publication. Otherwise, the third
     parties may be effectively ambushed by broadened patent claims. A
     less desirable solution would be to limit claim broadening after
     publication. This solution is less desirable because the applicant
     would not receive claims having the full breadth he/she is entitled
     to.

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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 10:
     Continued access would certainly be desirable for third party applicants who might be interested in copying claims for purposes of an interference proceeding. 

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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 10:
     The question of access to the content of the application file after publication would be significantly less important if the full patent application is published. Full publication of the application      would eliminate the major motivation for access to files. While access to application files may be helpful to guiding the actions of potential protesters, it is expected that the number of protests      will be very small. Furthermore, the ability to file a request for re- examination after issuance significantly reduces, but not necessarily eliminates, the need to file protests. Protests are stil     l advantageous because certain "other information" may be submitted in a protest, but not in a re-examination proceeding. Therefore, this Committee considers that the balance of interest lies in ful     l access to the application file after publication 

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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 10:
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     019-Q10.TXT
     	No access at all without the inventor's express consent should be
     permitted 35 USC 122 [Appendix "D"] The principle of our law is that
     the inventor trades off an enabling public disclosure for a limited
     property right, and this rule seeks to adopt Japanese law in the
     United States by a rulemaking instead of by legislation, with the
     evident purpose of destroying the technology base of the United
     states in the long term Let the- advocates of this startlingly bad
     idea lay their proposal before Congress instead of trying to sneak it
     through the PTO. 	Third party access to the patent file, before the
     inventor has any rights to enforce, benefits only bad faith
     infringers who would cream the market before the patent issues, and
     giant companies who would destroy the value of fundamental patents
     by a multitude of peripheral patent applications, as they do now in
     Japan [see Appendix "B"] No access at all should be permitted without
     the consent of the inventor, and this consent should not be implied
     from failure to pay some onerous fee 	As for the plea that relief
     from submarine patents is necessary, this problem can be resolved by
     a means less drastic than allowing third party access to a11 files We
     suggest that only those- applicants that the examiner finds guilty of
     dilatory prosecution should be punished by involuntary disclosure
     Such a rule would surfaces the submarines, while avoiding unnecessary
     harm to other applicants 	It later in the course of the examination
     there should arise a question of dilatory prosecution (submarine
     patent), the examiner should have additional publication or a grant
     of file access available for preventing harm to the industry by this
     abuse.

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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 10:
     -------
     010-Q10.TXT
     Access should be limited to the application as filed. It is much too
     complicated and expensive for the PTO to do otherwise. Of course,
     after an application has issued, whether before the publication date
     or after, the entire file history of the application should be
     accessible.  

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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 10:
     -------
     029-Q10.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 10:
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     033-Q10.TXT
     YES.

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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 10:
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     008-Q10.TXT
     The answer was already given, that both details of further
     prosecution, and of assignments, should be available from the public
     application database, until the patent has issued

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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 10:
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     004-Q10.TXT
     After publication, access should be permitted to the entire
     application including material added after publication. A fee should
     be charged for access prior to patent being issued or the application
     being abandoned.

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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 10:
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     025-Q10.TXT
     One of the objectives of publication of application is to make the
     progress of application procedures known to the public. In his sense,
     it will be appropriate that once an application is published, the
     entire content of of the application file should be made accessible
     including all the material added after publication (Response to your
     question #10) It would be further desirable that a copying service
     (payable) be provided for the content of the application file.
     Through The fact that the proceedings of applications at own to the
     public, effective use of the system for submitting prior art
     (explained later) would become possible, and hence it would
     contribute to enhance the quality of examination.

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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 10:
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     016-Q10.TXT
     Simply because the rest of the industrialized world publishes pending
     applications does not make it serve our country well. Our country
     has, or she had, the best patent system in the world, of which
     secrecy of pending applications plays a noted part. Recall, the
     industrial development in our country, fostered by its unique patent
     system, which Constitutionally must promote progress in our useful
     arts. With its unique patent system as a foundation, we rose from a
     minor economic world player to, after World War II producing roughly
     half of the world's economic product. (After reconstruction, etc., we
     now produce nearly one fourth of the world's economic output.) To
     quote the old saw, "If it's not broke, don't fix it!"
     
     The only thing in favor of publication is the issue of so called
     "submarine patents." However, on balance, this is not a substantial
     enough concern to require publication. First, such occurrences are
     relatively rare. Second, since licensing of pending application
     technology is permitted, in commercially active markets an applicant
     can have great incentive to license-out his unpatented, confidential
     technology to those who would complain about such delayed patents,
     and as well, those competitors can have a great incentive to
     license-in the technology and thus not be "torpedoed" by a late
     issuing patent. Third, delays in prosecution are often not the
     fault of the applicant. F^~lRtht if an arrl icant deliber?tely
     delavs j n proseclltion to isslle remedies are available judicially
     if not within the Office itself. 

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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 10:
     -------
     028-Q10.TXT
     My proposal would "publish" all of the contents of the application
     file without affecting PTO operations. Philosophically, the
     application proceedings should be open following publication. As a
     practical matter, the burden of ysically accessing numerous files or
     the alternative burden of processing numerous- petitions for waiver
     of limitations on access should make electronic publication
     attractive to the PTO.


Last Modified: March 1995