Comments from David E. Crawford, Jr.

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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