Comments from Christopher John Rudy

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FROM RESPONDENT 016:
     NAME:	Christopher John Rudy
     	Registered U.S. Patent Attorney
     	and Canadian Patent Agent
     	Also Admitted in the District of Columbia
     COMPANY:	Christopher John Rudy
     	Attorney and Counselor
     ADDR-1:	209 Huron Avenue 
     CITY, STATE ZIP:	Port Huron, Michigan 48069
     TELEPHONE:	(810) 982-422t 
     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:
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     016-Q01.TXT
     It is unnecessary and undesirable.

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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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     016-Q02.TXT
     It would make for much added Office expense.

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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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     016-Q03.TXT
     It would divert valuable personnel resources from necessary
     administrative Office functions to classify and publish these. 

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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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     016-Q04.TXT
     It could interfere with efficient examination of applications.

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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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     016-Q05.TXT
     It would prematurely add a substantial amount of literature to the
     art, a good share of which may be of insignificant nature. 

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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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     016-Q06.TXT
     It uould redl'5e EmO'lllts of direce, non-priority U.S filings as
     currently many foreign nationals, e.g., from Canada, rely on
     quarantees of application secrecy, and file in the Office. 

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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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     016-Q07.TXT
     It could serve to reduce amounts of filings from domestic inventors,
     particularly from small businesses, who are the backbone of and
     provide the greatest innovative growth for our economy, and who rely
     on the value of "patent pending" notices to fairly keep competitors
     from copying their inventions during pendency, which can often exceed
     18 months. 

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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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     016-Q08.TXT
     It would work against progress in the useful arts by forcing a
     disclosure of heretofore confidential applications, which in the case
     of small business especially, would work to undermine the value of
     keeping competitors at bay from not knowing just what it is the
     applicant may be filing for patent protection for, for enough of a
     time to develop an incipient market and recoup the great expense of
     product development. 

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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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     016-Q09.TXT
     It would force the hand of applicants, to especially include those
     from small business, to choose to abandon an invention before 18
     months, relying instead, e.g., in method cases, on State trade secret
     laws, this occurring when otherwise Letters Patent would have been
     secured to properly protect it. This would occur in cases where
     Examiners make unwarranted, new or continued rejections or objections
     which regrettably happens with some frequency, and in cases appealed
     to the Board. 

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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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     016-Q10.TXT
     Simply because the rest of the industrialized world publishes pending
     applications does not make it serve our country well. Our country
     has, or she had, the best patent system in the world, of which
     secrecy of pending applications plays a noted part. Recall, the
     industrial development in our country, fostered by its unique patent
     system, which Constitutionally must promote progress in our useful
     arts. With its unique patent system as a foundation, we rose from a
     minor economic world player to, after World War II producing roughly
     half of the world's economic product. (After reconstruction, etc., we
     now produce nearly one fourth of the world's economic output.) To
     quote the old saw, "If it's not broke, don't fix it!"
     
     The only thing in favor of publication is the issue of so called
     "submarine patents." However, on balance, this is not a substantial
     enough concern to require publication. First, such occurrences are
     relatively rare. Second, since licensing of pending application
     technology is permitted, in commercially active markets an applicant
     can have great incentive to license-out his unpatented, confidential
     technology to those who would complain about such delayed patents,
     and as well, those competitors can have a great incentive to
     license-in the technology and thus not be "torpedoed" by a late
     issuing patent. Third, delays in prosecution are often not the
     fault of the applicant. F^~lRtht if an arrl icant deliber?tely
     delavs j n proseclltion to isslle remedies are available judicially
     if not within the Office itself. 

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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:
     I saw in the January 1995 issue of JPTOS, notice of a "Notice of
     Public Hearing and Request for Comments on 18-Month Publication of
     Patent Applications," cited to 59 FR 63966. I do not have the Federal
     Register, but, if still timely, please consider my comments.
     
     I write against publication of patent applications before issue, as
     follows:


Last Modified: March 1995