Comments from Donald R. Scifres

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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