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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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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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004-Q01.TXT
All application related information which will be published should go
to a central data capturing facility. This would include the
application as filed and amendments which are to be incorporated
prior to publication.
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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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004-Q02.TXT
A standard format should be adopted including standard paper sizes,
claims on a separate page, standard margins and spacing. An
application which does not comply with the standard format can be
handled in accordance with 37 C.F.R 1.53(c) or (d).
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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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004-Q03.TXT
The entire application should be published including amendments
specifically designated for publication with a Gazette publication
similar to the current Official Gazette 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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004-Q04.TXT
A copy of the publication should be delivered to the applicant.
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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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004-Q05.TXT
Accelerated examination should be provided under either the current
requirements or for a substantial fee.
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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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004-Q06.TXT
The publication fee should be included with the application fee. If
the application is not published, a portion of the publication fee
should be returned to the applicant
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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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004-Q07.TXT
The publication fee should be included with the application fee. The
application should be published, even if abandoned, unless the
applicant files an express request of abandonment.
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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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004-Q08.TXT
The claim for priority should be allowed up to 15 months from the
priority date. Late claims after 15 months should require a statement
that the delay was unintentional along with a late submittal fee.
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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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004-Q09.TXT
The Patent Application Notice should remain in the search files and
the publication information must be included on the issued patent.
This is needed to indicate the publication date under 35 U.S.C.
102(a) and (b).
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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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004-Q10.TXT
After publication, access should be permitted to the entire
application including material added after publication. A fee should
be charged for access prior to patent being issued or the application
being abandoned.
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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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004-Q11.TXT
The assignment records of a published application should be made
accessible to the public.
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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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004-Q12.TXT
No comment.
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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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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.
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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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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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GENERAL COMMENT:
An applicant should be allowed to request early publication.
Last Modified: March 1995