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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
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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