Comments from Gabriel P. Katona

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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