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FROM RESPONDENT 018:
NAME: Donald R. Scifres
President and CEO
COMPANY: SDL, Inc.
ADDR-1: 80 Rose Orchard Way
CITY, STATE ZIP: San Jose, CA 95134-t365
TELEPHONE: 408-943-941 1
FAX: 408-943-1070
REPRESENT: COMPANY
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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:
Publication of Patent Applications. As founder, President and Chief
Executive Officer I refer to your Notice of Public Hearing and
Request for Comments on 18-Month of SDL, Inc., a high technology
company developing and manufacturing high power semiconductor laser
diodes and related systems and subsystems, I would like to comment on
two proposed changes in US patent law. These changes are:
1. The new law proposes publication of the filed patent 18 months
after filing, whether or not the patent has issued. Present law
provides publication on the date the patent issues.
2. The present law allows a patentee to obtain a patent if the
patentee can show he was first to conceive of the idea and has
diligently pursued the invention since the date of conception until
the date of filing. The new law proposes that the date of patent
filin,~ is the date the invention was made (i.e., parties filin,~
after the date the first patent was filed cannot obtain a patent as
they can under present law.)
I believe these two changes seriously threaten the health of small
companies in favor of large overseas multinational companies. The
problems arise as follows:
1. With regard to 18 month publication, small companies are
dramatically harmed in several wavs. These are,
(a) The proprietary ideas of a small company are disclosed to a
competitor 18 months after filing. The competitor can immediately
file a number of "improvement" patents on the same topic, thereby
negating the value of the initial patent. (This is standard operating
procedure for many large Japanese companies when filing patents under
Japanese patent rules.) This early disclosure is devastating to a
small company which has only good ideas on its side. For example, if
a large Japanese company files many related patents, entrepreneurs
cannot convince venture capitalists to fund product development
activities, especially when the entrepreneur's patent has not yet
(b) The small company, upon seeing a patent application of another
company with very broad but contested claims, does not know if it
should discontinue similar work since it does not know if the broad
claims will be allowed by the patent office. A large company with a
large patent portfolio can normally cross license and thus avoid
legal trouble. Large companies will, therefore, be more able to
continue their programs and may even apply more resources so as to
obtain "improvement" patents. Small companies would likely again lose
their venture capital backing since the risk of not being able to
pursue the business is heightened.
(c) Lawyers like this publication aspect as well since all companies
will need to have legal opinions made on patentability of proposed
claims of all filed patents (not issued patents, as in present patent
law). Thus, each company will have to do the work that the Patent
Office now does to determine which claims will become patentable. A
small company cannot afford to do the work of the Patent Office
(which has a very difficult job).
2. With regard to the issue of first to conceive versus first to
file, large companies with many lawyers on their staff can afford to
file many patents on immature ideas which have not been reduced to
practice. Small companies must be more selective in filing and
normally file only on mature ideas which prove to be successful.
Therefore, small companies are again put at a disadvantage by this
change to the law.
Overall, I feel that the difference in the US Patent Law between
those of Japan or Europe has been the most critical element in
creating the much greater level of entrepreneurial smaU business
vitality in the US than in foreign countries. Europe and Asian
countries recognize that present US patent law gives the US a major
competitive advantage worldwide in high technology markets and are
trying to change the US patent law.
The issues raised in changing US patent laws are of utmost importance
to the long term health of the US economy. The US high technology
small business has led the world in developing successful products.
Venture capitalists often back small technologv companies onlv
because US patents presently offer significant protection against
well funded international competitors. The proposed US patent law
changes will dramatically alter the competitiveness of small
business. These changes should be rejected or altered since the
negative impact on the US economy will only be visible after a 10 -
20 year period.
Last Modified: March 1995