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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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QUESTION 01:
Should the PTO require that all Official application related
materials be delivered to a central location? Specifically, what
problems would a requirement that all official application-related
materials be delivered to a central location cause?
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COMMENT ON QUESTION 01:
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001-Q01.TXT
The rule has the potential to delay delivery of proposals for
amendments to the Examiners. Nonetheless, the PTO should require that
all official application-related materials be delivered to a central
location. However, the rules shooed permit an expedited advance copy
which could be facsimile transmitted or hand delivered to the
Examiner. Thus, any delays in prosecution caused by a requirement
that materials be delivered to a central location could be mitigated
Therefore, I recommend permitting facsimile transmission or hand
delivery directly to an Examiner, but requiring a confirmation via
postal delivery to a central location within the PTO.
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QUESTION 02:
Should the PTO adopt a standard application format? If so, what
portions of the application papers should the PTO require be
submitted in a standard size and/or format, and what sanction
(e.g., surcharge) should be established for the failure to comply
with these requirements?
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COMMENT ON QUESTION 02:
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001-Q02.TXT
A standard application format is totally unnecessary if the full
application is published as it should be. If the full application is
not published, then only those portions which are to be published
need be in a standard format. Regardless, some standardization of
font, paper size, and line spacing may be necessary for character
recognition equipment if electronic transmission is not used.
However, if transmission via modems or magnetic storage devices is
used, no standardization is needed.
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QUESTION 03:
If the entire application is not published, what information
concerning the application should be published in the Gazette of
Patent Application Notices?
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COMMENT ON QUESTION 03:
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001-Q03.TXT
The entire application as amended up to some specified date, e.g. the
fifteenth month, should be published. Other alternatives are
unacceptable. Instituting a paperless data storage and retrieval
system for storing and accessing the publication data would eliminate
the majority of the PTO concerns regarding storage space. In
addition, a paperless system would aid patent practitioners and
examiners in making thorough searches of the patent application
data after publication.
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QUESTION 04:
Should the patent applicant receive a copy of the published
application -- either published notice and/or application content
at time of publication?
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COMMENT ON QUESTION 04:
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001-Q04.TXT
A copy of the published application would be unnecessary,
particularly if the publication is available through the depository
libraries and/or by subscription.
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QUESTION 05:
Should the PTO permit an accelerated examination? If so, under
what conditions?
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COMMENT ON QUESTION 05:
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001-Q05.TXT
The PTO should not permit accelerated examination because it gives an
unfair advantage to large entities. An acceptable alternative to
accelerated examination is to stay publication until some period
after the first examination, e.g. three months after examination.
This procedure would encourage the PTO to examine applications
earlier which is especially desirable in view of the new twenty year
requirements.
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QUESTION 06:
Since the cost for publishing applications must be recovered from
fees, how should the cost of publication be allocated among the
various fees, including the possibility of charging a separate
publication fee?
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COMMENT ON QUESTION 06:
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001-Q06.TXT
The cost of publishing applications should be recouped via a separate
publication fee which should be incurred on a per page basis The
publication fee should not be subject to a discount. No refunds
should be permitted unless the application is abandoned prior to
publication.
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QUESTION 07:
Should the PTO require an affirmative communication from a patent
applicant indicating that the applicant does not wish the
application to be published, or should failure to timely submit a
publication fee be taken as instruction not to publish the
application? That is, should an application be published unless
the applicant affirmatively indicates that the application is not
to be published, regardless of whether a publication fee has been
submitted? What latitude should the PTO permit for late submission
of a publication fee?
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COMMENT ON QUESTION 07:
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001-Q07.TXT
The PTO should require an affirmative communication indicating that
the application is to be published along with submission of a
publication fee. If the fee is unpaid, the application should be
automatically abandoned subject to revival due to unavoidable or
unintentional delay in filling the fee.
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QUESTION 08:
The delayed filing of either a claim for priority under 35 U.S.C.
119 or 120 may result in the delayed publication of the
application. Should priority or benefit be lost if not made
within a reasonable time after filing? What latitude should the
PTO permit for later claiming of priority or benefit?
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COMMENT ON QUESTION 08:
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001-Q08.TXT
Benefit of priority should be lost if a claim is not made within a
reasonable time after filing. However, provisions should be made for
unavoidable or unintentional delay in claiming priority.
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QUESTION 09:
Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notice, i.e., the Patent Application Notice, be
removed from the search files, and should publication information
be included on the issued patent?
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COMMENT ON QUESTION 09:
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001-Q09.TXT
Because material may change or be omitted from the final patent, the
Application Notice should not be removed from the search files.
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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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COMMENT ON QUESTION 10:
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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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QUESTION 11:
11. After publication, should assignment records of a published
application also be made accessible to the public?
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COMMENT ON QUESTION 11:
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001-Q11.TXT
Although assignment records are of interest, particularly to those
who only monitor specific competitors, access to assignment records
does not further the patent system goals but rather unnecessarily
burdens the system. Therefore, assignment records should remain
closed until issuance.
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QUESTION 12:
After publication, should access include the deposit of
biological materials as set forth in 37 CFR 1.802 et seq.?
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COMMENT ON QUESTION 12:
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001-Q12.TXT
Yes. A less than enabling disclosure defeats the goals of publishing
the application in the first place. Omission of a biological material
deposit causes a less than enabling disclosure.
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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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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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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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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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GENERAL COMMENT:
With the exceptions as indicated above, the U.S. should otherwise
adopt the general European Patent Office (EPO) approach to
publication. Features of the EPO approach include provisional rights
from the date of first publication.
Last Modified: March 1995