----------------------------------------
QUESTION 13:
What types of problems will be encountered if all amendments must
be made by (a) substitute paragraphs and claims, (b) substitute
pages, or (c) replacement of the entire application?
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
001-Q13.TXT
Although all three options will cause an increase in data/paper being
sent to the Patent Office, each will decrease errors in
transcription. Of the three proposals, I believe that option (a)
(substitute paragraphs and claims) provides a workable solution
without unnecessarily burdening patent practitioners, the PTO, and
the environment. A preferable alternative would be to require that a
complete replacement of the entire application be transmitted via
modems or magnetic storage devices. Thus, no transcription errors
would be made at the PTO.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
The PCT requires practically all amendments and changes to be made by replacement sheets. PCT Rules 46.5, 66.5 and 66.8. These rules also provide for a letter which draws attention to the difference s between the replaced sheets and replacement sheets. No real problems have arisen from this practice under the PCT once the practice is understood by applicants. Further details are set forth in Se ctions 205 and 311 of the "Administrative Instructions under the PCT."
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
This Committee does not see any difficulties if amendments must be made by substitute paragraphs and claims, or by substitute pages. However, replacement of the entire application would be more cumb ersome to Applicants.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
019-Q13.TXT
Publications should be allowed to be amended by replacement with a
new one in the same format (Appendix "A") A record of amendment dates
should appear on the form published. With the wide- use of word
processors to prepare patent applications, the proposed rule should
not be a hardship to inventors but might make it difficult for the
examiners to see exactly what has been changed in the amendment.
Option ii, as is clear from In_re Hall, 781 F.2d 897 (Fed. Cir.
l986) and In re Wyer, 655 F.2d 221 (CCPA 1981) [cited in the Notice],
would be sufficient public disclosure as to constitute prior art,
especially with a drawing figure and abstract of the invention, and
especially if public access is allowed to the complete file after
publication.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
010-Q13.TXT
As to all options, replacement of the pages will not allow the PTO to
quickly determine the material added to, or removed from, the
application.
Specifically, as to option a), it is too difficult to
replace individual paragraphs and claims, since it would be very
difficult to identify that paragraph in the application which is
being substituted.
Option b), which is the same as current PCT practice, is
the most economical and easy to accomplish method of amending
applications. In this manner, only those pages affected by amendment
are submitted.
Option c) is cumbersome and environmentally unsound, as it
may require an applicant to submit a new copy of a 50 page
application in order to change a single word in a single claim.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
029-Q13.TXT
No particular types of problems are anticipated by the submission of
amendments with substitute pages for the specification and claims. If
such changes are extensive, submission of a substitute application is
not unreasonable and is sometimes done at present via the submission
of a substitute specification to facilitate printing.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
033-Q13.TXT
OUR AFFILIATES SUGGEST YOU TELL US OF THE PROBLEMS YOU ANTICIPATE IN
QUESTION 13.
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
008-Q13.TXT
Amendment to the specification should be required to be sub- mitted
on substitute pages rather than substitute paragraphs, together with
the original pages marked up by hand to show the changes, in the same
manner as is required today in the case of voluntarily filed
substitute specifications If amend- ments are to be made to the
claims, these should be accompanied by a printout of the latest
amended version of all claims, identifying the date of the claim
printout, and marking those claims with an asterisk adjacent to the
claim number, which are currently not under consideration, but have
not been canceled
----------------------------------------
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
----------------------------------------
COMMENT ON QUESTION 13:
-------
004-Q13.TXT
The major problem with substituting paragraphs, pages or the entire
application is indication of the changed material. Unless brackets
and underlining are used, a description of the changed material
should be included with the substitution. Substituted pages should
also be marked "Amended", "Twice Amended", etc.
Last Modified: March 1995