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FROM RESPONDENT 015:
NAME: A Fiedler and V Castiglione
COMPANY: Becton, Dickinson and Company
ADDR-1: 1 Becton Drive
CITY, STATE ZIP: Franklin Lakes, New Jersey 07417
TELEPHONE:
FAX:
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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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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:
No comments supplied
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GENERAL COMMENT:
INTRODUCTION
We should all agree, that in our current worldwide economy
harmonization of patent laws is very important and that all we do to
harmonize these laws will be a major benefit. However, our concern is
that if changes are only made in a piecemeal fashion, harmonization
will be delayed and many applicants and patent owners may be unfairly
harmed. In fact, the current proposed changes to implement a 20-year
patent term have the potential to cause harm, since they do not provide
the same enforceability period for each patent issued and some form of
provisional remedy or retroactive enforceabili ty from a predetermined
date prior to the issuance of the patent. In addition, they cause a
fundamental change to U.S. patent law since they measure a patent's
effective term of enforceability from the first effective date of
filing. Historically, a patent's
1 A. Fiedler and V. Castiglione are patent attorneys at Becton,
Dickinson and Company, 1 Becton Drive, Franklin Lakes, New Jersey
07417.
enforceable duration in this country has been measured in a fixed
manner from the date of the patent's issue. As a result, the current
proposed changes may be unconstitutional and may also be accuse d of
not making patents available "without discrimination as to the place of
invention" as required by Article 27(1) of the GATT-TRIPs Agreement and
"without discrimination . . . as to the territory of the party where
the invention was made" as required by Article 1709(7) of NAFTA. The
key phraseology in both the quoted NAFTA and GATT-TRIPs provisions is
that patents shall be available without discrimination. The inherent
inconsistency as to terms of enforceability will result in per se
discrimination to some patentees, who will not enjoy an equal term of
enforceability in return for the ir disclosing to the public the
subject matter forming their invention
PROBLEM
The new laws and proposed rules change the term of a patent to a term
that begins on the arbitrary date the patent issues and ends 20 years
from the earliest U.S. filing date claimed by the patent. As currently
implemented, 3 5 U.S.C. s. 154(a)(2) has been amended such that the
grant of the patent shall be for a term beginning on the date on which
the patent issues and ending twenty years from the date on which the
application for the patent was filed in the United States or if the
application contains a specific reference to an earlier filed
application all applications under s. 120, 12 1 or 365(c) of this
title, from the date on which the earliest such application was filed.
Likewise, s. 271 of 35 U.S.C., which sets forth the acts constituting
actionable infringement, was amended to include as infringing acts
"offers to sell" or "imports into the United States of any pa tented
invention." However, the portion of the statute defining when the
patent right will be enforceable was untouched: it remains "during the
term of the patent." While the term of a patent will n ow be measured
from the earliest effective application filing date, the portion of the
overall term specifically directed to enforceability of patent rights
continues to remain measured from the dat e in which the patent issues.
Unlike the practice in the major world industrialized economies such as
the EPC and Japan, no provisions have been made for interim protection
of patent rights pending final issuance of the granted patent. Hence,
it is inevitable that patentees will receive unequal terms of
enforceability for their respective patents. This evidences a lack of
due process controls and equal protection under the law. The
Constitution, at Article I, Section 8, cl. 8, guarantees to all
patentees "for limited times the exclusive right to their respective
writings and discoveries" in return for their reciprocal disclosure to
the public of the sub ject matter of their inventions. If patent terms
-- the "limited times" -- cannot be measured with some degree of
specificity and consistency for the entire public at large, it is
likely that the la w in its current form may face creditable
constitutional challenges, i.e., under due process and equal protection
grounds. Can it be equitable to measure one patentee's contractual
disclosure to the public vis-à-vis another patentee's in a way that
would account for inevitable discrepancies in patentee's abilities to
reap reward for their respective "discoveries", particularly where
substantia lly similar technology or developments are at issue? The
lack of interim protection, coupled with the potential for unequal
terms of enforceability, is inconsistent with patent protection as has
bee n historically granted to inventors in this country.
In addition, without providing the same enforceability period for each
patent issued or some form of provisional remedy or enforceability from
a predetermined date prior to issuance of the patent, s uch a term will
arbitrarily harm and discriminate against some applicants and make the
valuation of pending patent applications impossible. We do not find any
justification why some patents should h ave a longer enforceability
period than others merely because of the inexperience of a pro se
applicant, the type of technology being examined, or any other factor
influencing the period of pendency of applications. Furthermore, it is
inequitable to impose on patentees varying terms of enforceability
because of factors not in their control. Oftentimes it is the case that
the length of patent p rosecution will vary due tocircumstances not
directly controllable by a patentee. For instance, the workload of
given art groups in the USPTO may vary, such that terms of prosecution
will be unequal depending on the art area of concern. The experience
and workload of the individual Examiners will also factor into the
speed with which patent applications are examined and finally disposed
of. La stly and perhaps most importantly, the workloads and talents of
individual patent attorneys and agents are not the same, the skills and
experience level of individuals prosecuting applications will be a
major deciding factor in finally determining what term of
enforceability a patentee will enjoy.
For example, if two applicants separately submit patent applications
claiming equally technical inventions, but one pro se applicant is
experienced in prosecution and fortunately has the application examined
by an experienced examiner and the other pro se applicant has never
prosecuted an application and unfortunately is assigned an
inexperienced examiner, it is very likely that the more exper ienced
applicant's application will proceed through the USPTO more quickly and
thus issue long before the latter applicant. If patent attorneys or
agents are involved, the prosecution period can bec ome even more
unpredictable. As a result, there is a strong likelihood that patents
of equally challenging technology will have different enforceability
periods, with those issuing later losing valu able enforceability
rights.
A similar problem may occur if the technology involved is complex or
the invention is a pioneer invention. If one application involves
biotechnology and the other application is directed to a simple
mechanical device, the biotechnology patent will more than likely issue
long after the simple mechanical device. Therefore, the applicant with
the more difficult technology or the pioneer invention may be unfairly
discriminated against.
An arbitrary delay in enforceability also makes it impossible to place
a value on a pending patent application since the longer the patent
application is prosecuted the more its enforcement value de preciates.
Moreover, the depreciation in enforcement value occurs while the
applicant continues to invest more and more money in the unpredictable
asset. All of this ultimately causes the return on investment to
progressively deteriorate the longer prosecution extends. If
prosecution continues too long, the time will come when it is advisable
to abandon the application rather than allow a pate nt to issue with
too short of an enforceability period to recoup the investment. If this
occurs, many valuable pioneer inventions may never be shared with the
public due to the abandonment and conti nued secrecy of such
applications, defeating the basic purpose of the patent system
CURRENT T PROPOSED REMEDIES
We believe that the USPTO recognizes problems caused by delays in the
issuance of a patent, since the proposed rules provide for extensions
up to five years if applications are involved in an interf erence,
subject to a secrecy order, or issued after a Board of Appeals or the
Federal Circuit reverses a lower adverse decision. In addition,
extensions are also provided to compensate for delays fo r FDA approval
if necessary However, we believe that these are not the only situations
where extensions are necessary. Further, extensions of patent life do
not automatically correct for the arbitrariness in the enforceability
period of the new law. Instead of trying to identify all of the
situations in which it would be advisable to have an extension, we
believe that there is the need to publish applications and provide for
provisional remedies from publication. In fact, such a procedure has
been used and appears to have worked well for years in the EPC,
Australia and Japan.
We are encouraged that H.R. 359 introduced on January 4, 1995, seeks to
amend the patent term .section to provide for a term of 17 years from
the date of grant or 20 years from filing, whichever is longer. Such an
approach would solve the problem of discrimination in the
enforceability between issued patents. However, H.R. 359 also calls for
the publication of a parent and its continuation app lication five
years after the application's priority date, without providing for any
provisional enforceability rights upon publication. As explained above,
we favor the publication of applications and believe that publication,
in serving to address the problem of "submarine" patents, would also
help to provide a much needed prior art database for certain areas of
technology in which prior art patents and publications are not as
widely available, i.e., software and biotechnology. However, forcing an
applicant to give away valuable trade secrets or proprietary
information prior to the iss uance of a patent, without some form of
compensation, is not fair and is probably unconstitutional. Therefore,
we are not in favor of H.R. 359 in its current form
In response to the USPTO request for comments on the 18-month
publication of patent applications, we apologize for not responding
earlier to the "general issue" but believe that the above remarks sh
ould be considered. Concerning Questions 3 and 10, we believe that if
publication is used it should be administered in a similar fashion to
the EPO's publication management procedure. If such a syst em is not
possible in the USPTO, at a minimum, it would be desirable to have the
abstract and an applicant selected claim and drawing published with the
complete application being available for phot ocopying at the USPTO
and/or on Internet. In addition, if the USPTO can manage the system, we
are in favor of having the entire filewrapper open to the public after
the application has been publishe d.
CONCLUSION
As further legislation and rule changes are considered involving the
implementation of GATT- TRIPs, we encourage the USPTO and Congress to
consider publishing applications at 18-months, but also gra nting
applicants and patent owners some form of provisional protection and
remedy after the patent issues, covering the period starting on the
publication date of the application.
Last Modified: March 1995