Comments from Roy H. Hepner

----------------------------------------
FROM RESPONDENT 014:
     NAME:	Roy H. Hepner
     COMPANY:	Lerner, David, Littenberg, Krumholz & Mentlik
     ADDR-1:	600 South Avenue West
     CITY, STATE ZIP:	Westfield, New Jersey 07090-1497
     TELEPHONE:	(908) 654-5000
     FAX:	(908) 654-7866
     REPRESENT:	self
     

----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 01:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 02:
    No comments supplied
----------------------------------------
QUESTION 03:
     If the entire application is not published, what information
     concerning the application should be published in the Gazette of
     Patent Application Notices?

----------------------------------------
COMMENT ON QUESTION 03:
    No comments supplied
----------------------------------------
QUESTION 04:
     Should the patent applicant receive a copy of the published
     application -- either published notice and/or application content
     at time of publication?

----------------------------------------
COMMENT ON QUESTION 04:
    No comments supplied
----------------------------------------
QUESTION 05:
     Should the PTO permit an accelerated examination? If so, under
     what conditions?

----------------------------------------
COMMENT ON QUESTION 05:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 06:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 07:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 08:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 09:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 10:
    No comments supplied
----------------------------------------
QUESTION 11:
     11.  After publication, should assignment records of a published
          application also be made accessible to the public?

----------------------------------------
COMMENT ON QUESTION 11:
    No comments supplied
----------------------------------------
QUESTION 12:
     After publication, should access include the deposit of
     biological materials as set forth in 37 CFR 1.802 et seq.?

----------------------------------------
COMMENT ON QUESTION 12:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 13:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 14:
    No comments supplied
----------------------------------------
GENERAL COMMENT:
     The purpose of this letter is not to discuss in detail the specific
     proposal of publishing pending U.S. patent applications within 18
     months of filing. On the contrary, I am writing to respectfully
     suggest that the issue of providing access to pending applications
     should be considered more broadly. In particular, I am writing to
     suggest that the public have access to pending continuation and
     divisional applications once the "parent" or any other application
     having the same disclosure issues as a patent, or is published in
     accordance with the procedures that are now being considered by the
     Office.
     
               Much has been written about how the GATT implementation
     legislation will provide protection against "submarine" patents,
     i.e., those which are kept pending (through continuations, appeals,
     etc.) for many years, only to be "sprung" upon the public long after
     an industry has developed a comfort level that there are no
     troublesome patents. I agree that this is a problem, and I agree that
     the 20-year-from-filing term will help remedy this. However, there
     are somewhat different yet (in my opinion) more common. and
     pernicious aspects of the "submarine" problem. Perhaps an example
     will help explain my concerns. I am confident that any attorney
     regularly involved in patent litigation has come across this type of
     situation.
     
               Party A files a straightforward application for a patent on
     a given product. A patent issues to Party A with claims of reasonable
     scope. Party B comes along and wishes to sell a competing product. It
     reviews Party A's patent and its prosecution history, and comes up
     with a safe and clean way to design around the patent. Accordingly,
     Party B releases its competitive product. Up to now, the system is
     working precisely as it should.
     
               But unbeknownst to Party B, before Party A obtained its
     patent, it filed a continuation application. In fact, Party A did so
     without any particular plan for seeking additional or different
     claims, but solely to preserve the ability to do what I am about to
     describe. In particular, Party A examines Party B's competing product
     (which clearly avoids the first patent) and submits new claims in its
     continuation application by picking and choosing elements which the
     specification and Party B's product have in common and which--most
     importantly--cover Party B's product. Oftentimes, it is debatable
     whether the new claims have "written description" support in the
     specification; but that is often of little moment, since examiners
     are rarely critical about this issue, and once the continuation
     issues, it will be clothed with a presumption of validity, and the
     written description issue can only be attacked under the "clear and
     convincing" standard.
     
               In any event, Party A receives its continuation patent, and
     Party B has now been checkmated. Unfortunately, under today's law,
     there is virtually nothing which Party B could have done to prevent
     this. Since Party A's continuation application is kept confidential
     under 35 U.S.C.  122~ there is simply no way Party B
     
     could have known that this problem was developing.
     
               There are very few disincentives against Party A's
     following this procedure; and in highly competitive situations, cost
     is not one of them. Typically, the continuation application is filed
     at the last moment, and is simply identical to the original
     application, with the same original claims. Since there will normally
     be a period of at least a few months before the Office would examine
     the continuation, there is no real need to submit new claims at the
     outset. If the need for new claims never materializes, the
     continuation can be allowed to go abandoned, and it is unlikely that
     anyone will ever know that it was filed.
     
               In my opinion, the problems created in scenarios like the
     one I just described can be and should be removed by making the files
     of continuing applications open to the public when at least one
     patent having the same disclosure has already issued; or the
     application has been published. As I understand the purpose of
     Section 122, it is to protect inventions that may constitute trade
     secrets unless and until the Office determines that the applicant is
     entitled to a patent, and the applicant decides that the claim
     coverage that will be granted justifies paying the issue fee and
     allowing the patent to issue. However, once one patent issues (or
     once one application is published) disclosing the specification, the
     raison d'Ítre for keeping the application confidential evaporates;
     or at least it should.
     
               There is precedent for what I am proposing in the context
     of reissue applications. For quite some time, reissue application
     files have been open to the public in accordance with 37 C.F.R. s.
     1.11(b). I assume the rationale for this exception to Section 122 is
     that the subject matter of the patent has already been disclosed, and
     the only thing that is happening in the Office is that the patentee
     is attempting to rectify "errors" in the patent--typically by
     obtaining broader claims. In fact, this is precisely what goes on in
     the scenario I described above--except that it is vastly easier to
     file a continuation rather than go through a reissue. With a
     continuation, one need not bother to prove the existence of "error".
     Indeed, if one keeps continuations going long enough, he or she can
     seek broader claims more than two years after the parent issues, and
     can argue that there is no express statutory authority preventing
     this. And on top of all that, seeking broader claims can be done in
     secret; if it doesn't work-out. no one will be any the wiser.
     
               In my scenario described above, if continuing applications
     files are open to the public, the dynamics will change considerably.
     Party A can still seek further claim coverage if it is considered to
     be justified. Party B can at least determine if Party A has
     additional applications pending, and can make its own judgment as to
     whether Party A should or will obtain the additional claims it is
     seeking. In some instances, Party A may even benefit from Party B
     learning about additional applications and perhaps choosing to keep
     its distance. In all events, the playing field will be leveled at
     least insofar as having relevant information is concerned
     
               Accordingly, in the context of the Office's consideration
     of publishing patent applications 18 months after filing, I would
     respectfully urge the Office to give serious consideration to this
     related proposal of having all continuing applications open to the
     public, so long as the parent application has issued or been
     published.


Last Modified: March 1995