Comments on Question 13

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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?

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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 13:
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     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.

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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 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."

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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 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. 

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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 13:
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     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.

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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 13:
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     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.

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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 13:
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     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. 

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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 13:
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     033-Q13.TXT
     OUR AFFILIATES SUGGEST YOU TELL US OF THE PROBLEMS YOU ANTICIPATE IN
     QUESTION 13.

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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 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

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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 13:
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     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