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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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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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008-Q01.TXT
An electronic database is indispensable it' the PTO would seek to
escape the burden of supplying paper copies of applications and of
prosecution documentation before and after publication The effort
that would be devoted to upscaling copying services to the point of
supplying such paper copies, could be better spent in creating the
required electronic database The filing of applica- tions and
amendments in machine readable form should, however be made optional,
and those desiring to file paper copies should he able to continue to
do so upon the payment of a fee which would cover the cost of
digitizing the contents of the paper filings Such a fee should be
subject to the small entity discount, because the small entities are
exactly the types of applicants who would he less likely to he in a
position to file in digitized form
The extremely well managed Application Division which is now smoothly
functioning with the microfilming of new applications, would 'be the
logical site also for the central data capturing by digitizing of all
incoming information on paper.
The patent application database should he made accessible to the
public through a service to he identified through public bidding,
such as DIA- LOG, which would (i) reduce the administrative burden of
the PTO, (ii) provide the service in an expert, knowledgeable manner,
and (iii) provide a cost-deferring revenue flow to the PTO The method
by which a private service is established in connection with the
applications database, shouldl be based on what the PTO has learned
in connection with the brouhaha that surrounded the establishment of
the private trademark searching database!
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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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008-Q02.TXT
In keeping with the objective of user-friendliness, there should be
no requirement for any standardized application format That negative
conclu- sion, however, needs to be tempered with any meaningful cost
saving consider- ations.
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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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008-Q03.TXT
A very abbreviated abstract, even a very descriptive long subtitle,
of what the invention seeks to accomplish and how it intends to do
it, should accompany the bibliographic details in the publication
This should either be located in a separate section of each issue of
the OG or, if it would make it too voluminous, then in a separate
biweekly or monthly supplement to the patent OG.
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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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008-Q04.TXT
The applicant should not receive anything prior to or upon publica
tion
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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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008-Q05.TXT
An optional accelerated examination should be available with the
objective of producing a first search report prior to publication,
but only upon the payment of a substantial fee by the applicant (and
the submission by the appli- cant of a prior private US, or an
official EPO search report) For the magnitude of the fee, and other
considerations, see the answer to the next Question No 6
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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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008-Q06.TXT
No separate publication fee should be charged! This proposal is
coupled with a more radical suggestion which is likely to result in
some controver- sy The suggestion is the institution of a deferred
examination system Only a small part of patent applications results
in commercially successfully realized inventions Therefore, the entry
costs of the patenting process should be kept relatively low, and the
additional costs should be incrementally deferred to later stages of
that process This principle has proven itself through the
cost-deferring advantages of the PCT, and the deferred examination
principle which has been an unqualified success so far in Canada,
Germany, and Japan The provisional application feature of the new
US law is also a step in the right direction
An applicant should be able voluntarily to avail itself of
a costly accelerated examination (see also the answer to the previous
Question No 5), but that should be viewed as an exception to the
principle of cost deferral, because it is voluntarily incurred? and
at a sizable fee that should possibly not even be subject to a small
entity discount Post-publication requests for examination, however,
should be less costly, and should be subject to the 5()% discount
The cost of publication and the manner in which it is
assessed, should reflect the Social desirability of publication
Therefore, the filing fee of a regular application should include the
costs of publication which should not he refundable if an applicant
expressly withdraws its application from publication The costs of
publication should be kept as low as possible, due to (i) minimizing
the published information, (ii) restricting its dissemination to the
OG or a supplement, and (iii) the fee income generated trough the
users of the commercial database
This should also enable keeping the filing, fee, the cost
of entry into the patenting process at a relatively low level, by
utilizing as much of any provi- sional application as possible (e g
by assessing an increment added to the filing fee if no provisional
application was filed, or a different specification if used than that
of the provisional application) The filing fee need not include any
costs of examining and reexamining the application, because that
would be met by the deferred fee for requesting examination
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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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008-Q07.TXT
The applicant should have an opportunity to (and the burden of)
affirmatively withdrawing the application from publication, via
Express Mail, until up to 17 months after filing of the permanent
application This is in keeping with the socially desirable purpose of
making publication as early and as likely to occur by taking place as
automatically as possible.
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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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008-Q08.TXT
In keeping with the user-friendliness objective, priority should not
be irretrievably lost if not claimed prior to publication The
published biblio- graphic information about the application should
include the identification of the earliest application in the
declaration That is sufficient notice to the public whether a
priority claim would be applicable Priority should remain actually
claimable up to the last moment, as is the case currently However, if
the claim is delayed to later than 17 months after initial filing,
the cost of including the priority claim in the database, should be
payable by way of a fee for late claiming
of the 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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008-Q09.TXT
The answer to this question, as far as PTO search records are
concerned, is an internal matter As far as the commercial database is
con- cerned, the detailed information should be removed upon issue
from ,he particu- lar search library, and a cross-reference should be
inserted there to the patent number and to another search library or
database from which either full text or other further information (e
g claims, reassignment, maintenance payments) is available This might
also provide an opportunity for establishing a commercial database
for file histories of issued patents
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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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008-Q10.TXT
The answer was already given, that both details of further
prosecution, and of assignments, should be available from the public
application database, until the patent has issued
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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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008-Q11.TXT
The answer was already given, that both details of further
prosecution, and of assignments, should be available from the public
application database, until the patent has issued
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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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008-Q12.TXT
Since the biological deposit is a part of the disclosure, it should
be accessible on the basis of the depository information in the
bibliographic details of the database I am not convinced that the
depository information should be included in the OG publication or
only in the application information in the database, because
inclusion in the publication may represent further difficulties and
possible delays in publication
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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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008-Q13.TXT
Amendment to the specification should be required to be sub- mitted
on substitute pages rather than substitute paragraphs, together with
the original pages marked up by hand to show the changes, in the same
manner as is required today in the case of voluntarily filed
substitute specifications If amend- ments are to be made to the
claims, these should be accompanied by a printout of the latest
amended version of all claims, identifying the date of the claim
printout, and marking those claims with an asterisk adjacent to the
claim number, which are currently not under consideration, but have
not been canceled
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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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008-Q14.TXT
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GENERAL COMMENT:
It is suggested that the Notice of Proposed Rulemaking, and the
announcement of a public Hearing on February 15th, as published in
the December 12th issue of the Federal Register, be withdrawn and
indefinitely postponed.
The reason for this suggestion is that there is currently
no pending legislation dealing with the publication of applications.
Furthermore, if and when the new Republican regime in Congress were
to introduce any proposals, we do not have the slightest idea at this
time as to what shape it will take (e.g. whether provisional
protection would be included). Furthermore, there is a great
likelihood that a 17/20 legislative modification will be introduced
in the new Congress as a modification of the 20 year-from-filing
term that is to become effective for applications filed on or after
June 8, 1995, and the Clinton Administration committed itself not to
oppose such a legislative revision of the patent term.
The currently expired former legislative effort toward
earlier publication is just one weapon in the antisubmarine arsenal
which was lately called into action. The current 20-year-from-filing
patent term will, for the time being, bring all submarines to the
surface within a shorter time than before. If, as expected, the 17/20
legislation is introduced, that will tend to keep the submarines sub-
merged longer. It is at the latest, at that stage that an early
publication proposal could be most beneficially reintroduced in
Congress to bring those submarines on the surface at a definite and
earlier time.
Therefore, it is suggested that the currently announced
public considerations of the methodology of early publication be
postponed. That does not mean, however, that those considerations
should not be informally pursued. Therefore, there are some concise
considerations presented in the enclosed summary with respect to the
14 specific questions raised by the PTO in its Notice of Proposed
Rulemaking in 59 FR 63951.
These are the answers of the writer to the 14 questions asked by the
PTO concerning the implementation of any 18 month publication
legislation The writer is active in a Subcommittee of Committee 103
under Rene Tegtmeyer's Chairmanship, of the Intellectual Property
Section of the ABA The objective of that Subcommittee is to seek to
optimize the functioning of the patent examining operations of the
PTO, to employ the most user-friendly procedures that are least
intrusive into the affairs and activities of those who deal directly
with the PTO Another objective is guided by the recognition that the
cost of patenting has become ton high, and has to be rationalized and
the costs have to be radically reduced Accordingly, the paramount
consideration of convenience to the public, including applicants, has
to be balanced and tempered by the single exception that should
realistically take into account the projected costs to the PTO of
providing a given user-friendly convenience Therefore, the following
14 answers are provided in the spirit of the aforementioned balanced
objectives
Last Modified: March 1995