Comments from Robert A. Armitage

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FROM RESPONDENT 017:
     NAME: ROBERT A. ARMITAGE, PRESIDENT 
     COMPANY: AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION 
     ADDR-1: 2001 JEFFERSON DAVIS HIGHWAY 
       SUITE 203
     CITY, STATE ZIP: ARLINGTON VIRGINIA 22202-3694
     TELEPHONE: (703) 415-0780
     FAX: (703) 415 0786
     REPRESENT: association
     

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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. No changes should be made in the maintenance of file wrappers in the PTO at the present time. No compelling need would appear to exist to deliver files to a central location for the purpose of c     reating in OCR or ICR copy of documents filed for use in a public database. Merely providing the public on request with a facsimile copy of the prosecution history for pending applications for the r     elatively small number of applications in which such requests would be made would be a more efficient solution. 

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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:
     Yes, but only in the context of setting standards for electronic filing of applications and only to the extent that meeting those standards can be accomplished using functions resident in software a     pplications in wide use by patent attorneys and agents and inventors. 

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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:
     Nothing published in the Official Gazette would appear to be an acceptable substitute for the publication of the full technical content of the patent application in the same manner as the full techn     ical content of an issued patent is now published, both in paper form and in digital (text and image) forms. 

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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:
     Yes, at least as an option for the applicant. Most applicants will wish to verify that the publication correctly sets forth the technical disclosure and claims so that provisional rights can be assu     redly available.

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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:
     Yes. The AIPLA adopted a complete proposal on accelerated examination in May, 1990, that the Association continues to support.

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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 fee for publication should be collected. Applicants should be obliged to abandon the application (indicating that no continuing application is being filed), before preparations for publication ar     e complete, in order to avoid having an application published. 

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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 fee for publication should be collected. Applicants should be obliged to abandon the application (indicating that no continuing application is being filed), before preparations for publication ar     e complete, in order to avoid having an application published. 

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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:
     Priority claims should be made in a timely manner or lost. AIPLA's comprehensive proposal for publishing applications at 18 months from filing, included a requirement that priority claims needed to      be made in a timely manner so that publication would not be delayed. This isimportant in order to assure certainty in the patent system. At 18 months after filing an inventor should be entitled to a     ssume that all prior-filed applications that could affect patentability of their inventions have been published. 

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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:
     The question assumes that a Patent Application Notice, instead of the published application itself, should be placed in the search files. As indicated above, the published application in its entiret     y should be in the PTO search files and any subsequent patent issued thereon should also be placed in the search files, but with its technical disclosure incorporated by reference from the published      application. 

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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:
     Access should be to the substantive content of all of the prosecution history as of the date of the request. However, access need not be given to the originally filed application papers; uncertified      copies should represent sufficient access. 

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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:
     Yes. Making assignment records available is consistent with making prosecution history fully available and is relevant to certain patentability issues. 

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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. The PTO should consider options such as the "experts' solution" used in the European Patent Office.

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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:
     We have no position on this question. Whatever problems exist appear to
     be manageable based on the experience of foreign patent offices.

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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:
     We have no position on this question. Whatever problems exist appear to be
     manageable based on the experience of foreign patent offices.


Last Modified: March 1995