Comments from Michael H. Minns

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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