Comments on Question 14

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QUESTION 14:
     Should protest procedures be modified to permit the third party
     submission of prior art only prior to a specific period after
     publication of the application?  What action should be taken with
     respect to untimely submissions by a third party?

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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 14:
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     001-Q14.TXT
     Third party submissions after publication should be accepted under
     all conditions. Further, the submissions should be considered by the
     examiners for some period after publication, e.g. up to three months
     after publication. Submissions made after the time period should be
     put in the file and not considered unless an appropriate fee is paid.
     In order to reduce the burden on the PTO, all third party submissions
     could be in the form of an IDS and ex parte communications between
     the Examiner and third parties could be prohibited.

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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 14:
     Reissue applications and reexamination proceedings are announced in the Official Gazette and made available to the public so that the Office is aware of and evaluates the teachings of all informatio     n material to the patentability of the claimed subject matter. Suitable limits could be established as currently exist in the above mentioned reissue applications and reexamination proceedings. I am      aware of only a few published international applications designating the United States of America where a third party has copied claims for interference or submitted prior art.

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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 14:
     Protest procedure should permit the third-party submission of prior art only prior to a specific period after publication of the application in order to avoid potential prejudice to the Applicant. U     ntimely submissions by third parties should be placed in the file wrapper without comment. 

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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 14:
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     019-Q14.TXT
     	We fear repetition, on a grand scale, of the bad experience that the
     PTO had with the TVPP, as described in the Notice. We can expect
     tag-team interferences by giant companies to protect their market
     position [see Appendix ~B~, a description of the practice in Japan],
     Frivolous or not, these challenges would take up lots of valuable
     examiner time. 	We urge ~ reconsideration of the rules of evidence.
     Only 1X) documents already on file at the PTO as or the filing date
     of the application (such as provisional applications and disclosure
     documents), and (2) widely disseminated journals, should be
     admissible evidence of priority, within 2 months of publication.  	-
     If evidence outside of publications or materials on file at the PTO
     is admitted, the application process will turn into a melee of
     conflicting sworn testimony, often with evidence in foreign
     languages. 	This of course would further retard the patent process,
     making patents practically worthless by the time they finally issue
     In light of Appendix ~B", this seems to be what the foreign interests
     desire confusion and delay 1n the PTO, and discouragement of American
     invention With this publication/access/protest proposal and their
     "prior user rights" proposal, they seek by accelerated administrative
     rulemaking to undermine the national interest of the United States
     Let the paid advocates of these ideas make their case to Congress,
     where the elected representatives of the people can decide whether
     they have merit or not,

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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 14:
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     010-Q14.TXT
     It is clearly desirable to allow third parties to submit prior art or
     "protest" the application. If the issue fee has been paid or patent
     granted, before the 18-month publication date, clearly no right to
     protest exists. If prosecution in the case is still open or only the
     notice of allowance has been sent, a third party should be allowed to
     submit prior art and have prosecution re-opened. Third parties should
     have 45 or 60 days after the publication date of the application to
     submit prior art. Art submitted after this deadline should simply be
     placed in the file. Further, unlike requests for re-examination where
     only limited types of prior art can be submitted, all forms of prior
     art, i.e., evidence of statutory bar public use or sale, printed
     publications and the like should be reviewed. The third party's
     activities in the protest should be limited to art submission within
     the window. Otherwise, no other submissions from the third party
     should be considered, keeping prosecution ex parte.
     

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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 14:
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     029-Q14.TXT
     Protest procedures should be modified to permit third party
     submission of prior art within a specific period after publication of
     the application (two to three months). To do otherwise would allow a
     third party to unduly delay the examination and issuance of the
     patent. Untimely submissions should be returned to the submitter with
     a notation - that such documents could be resubmitted by way of a
     reexamination request after the issuance of the patent. 

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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 14:
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     033-Q14.TXT
     LAST BUT NOT LEAST, PROTEST PROCEDURES SHOULD BE MODIFIED TO PERMIT
     THIRD PARTY SUBMISSION AS SUGGESTED, BUT OUR QUESTION IS HOW?
     UNTIMELY SUBMISSIONS BY A THIRD PARTY SHOULD BE HANDLED AS THEY ARE
     NOW.

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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 14:
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     008-Q14.TXT
     ࡱ
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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 14:
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     004-Q14.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.

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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 14:
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     025-Q14.TXT
     It is important for keeping high standard of examination that the
     examiners be effectively provided with data material to examination.
     For that purpose, a system set up for submitting of prior art from
     the public is desired. Post-issue re-examination or invalid
     litigation is a means for reviewing validity of patents, but from the
     view point of the stabilization of granted rights, priority should be
     given to building up of a strict and effective examination system
     prior to grant of patents. From the above mentioned reasons, it is
     desired to institute, along with the introduction of publication of
     application, a system for collecting data on prior art from the
     public. Those who ate engaged in the technology similar to the
     invention filed are daily searching and perusing related material
     data such as Official Gazette, academic paper, etc. It goes without
     saying that information obtained through these researches is in most
     cases material in relation to the inventions under examination. It
     should be effective when information is submitted to permit
     attachment of an affidavit stating the reasons why the submitted data
     are material in order to clearlyconvey the submitter's intent for
     submission and to facilitate examination.. As to the time frame for
     submission of information, it would be necessary to permit it until
     the issuing of notice of allowance for the application. It would make
     utilization of that scheme for foreign nationals extremely difficult
     timing-wise if that time frame should be limited, for instance, to
     two months after the publication of application. (Response to your
     question #14)


Last Modified: March 1995