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FROM RESPONDENT 019:
NAME: Wilmot H. McCutchen, President
COMPANY: HOUSTON INVENTORS ASSOCIATION
ADDR-1:
CITY, STATE ZIP: HOUSTON, TEXAS
TELEPHONE: (713) 957 4344
FAX: (713) 868-4104
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:
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019-Q01.TXT
Yes. Fax transmissionb tc. may bQ sent to satellite locations and
given a filing date there, but a hard copy should follow to the
central location. There should always be certainty as to what is in
the file, and that means that there should be one Archival file for
referen›e. Scanning of thess documents would present a bottleneck, so
perhaps th~ applicants could be required to submit diskettes at so>e
timz after the initlal fillng.
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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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019-Q02.TXT
Yes, provided that it is widely published 60 that any college student
would be able to find out how to file a patent application. Failure
to comply should not be penalized with a surcharge, but the applicant
should be informed of the consequences of informality Included in
this standard application format would be a Notice of Pending
Application substantially like Appendix "A".
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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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019-Q03.TXT
No information amounting to a substantial disclosure of the
teachings of the intention should b~ permitted. According to 35 USC
122 the file must be kept confidential and not disclosed without the
consent of the applicant. There should be no publication in the
present Gazette or any new fat weekly volume. After spending so much
money on creating a functional computer system, the PT0 should be
ready to move out of exclusive reliance on broadside paper
publications. Publications should be by particular copies addressed
to particular interested third parties, either by paper copy or ail.
These third parties should pay for those copies and thus cover the
cost of publication. Subscriptions should b~ made available by
subclass BO that interested third parties would be immediately mailed
a copy of each new publication. Revenues from this database-e could
be significant. The information in the publication would be that
in Appendix "A" hereto: information on how to contact the inventor' 5
representative, the title of the- invention, the field of search
(provided by the examiner), and a summary provided by the applicant
for publication, It would then b~ up to the interested third party to
contact the applicant and arrange for further disclosure. The
notice should be just that -- a notice-, with how to get further
information. Publication should not include a picture or the
abstract, because these may b~ enough to teach others how to
practice the invention. This would violate 35 USC 122. Publication
should not include claims. when the PT0 tried the TVPP program, 10%
of the issued patents (i.e. with claims in allowable condition) were
protested. The publication of unexamined w$11 be an even greater
stimulus to protests, and will also chill innovation as prior art.
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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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019-Q04.TXT
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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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019-Q05.TXT
Accelerating the- application 1s probably impractical as a solution
to the problem created by early publication. Better not to create
those problems in the first place. As noted in the Notice,
acceleration of some will mean delay for the rest. Everyone will want
to be accelerated. Sifting through the pleas will be a dismal chore
for the examiners. The real solution is to publish a summary format
such as Appendix "A" so that disclosure (and consequent hardship) is
a matter of private contract between the interested parties and not a
matter which is the responsibility of the PT0, except in the case of
dilatory prosecutions (see questions 7 and 10). Consider the case of
an application filed 12 months after a provisional application. The
publication would occur 6 months after the filing of the formal
application, so the applicant would have to decide- whether to
abandon the invention only 3 months after filing it, before getting
even a first office action for his filing fee. Just to discover
initial prospects Of patentability, he would have to pay a suroharge
for acceleratson. If this rule should be adopted, at least make the
cutoff date 18 months-after formal filing or 12 months after-the
first office action whichever greater.
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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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019-Q06.TXT
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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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019-Q07.TXT
Because the publication under option is (Appendix "A" format) is
innocuous, ~ publication cutoff date (i.e. a date where the applicant
would have to elect between publication or abandonment of his patent
application) would be immaterial, except as to applicants guilty of
dilatory prosecution. The concern with submarine patents may b~
addressed by compulsory full publication at some time later than a
flat 18 months where it {s clear that dilatory prosecution is taking
place, in the opinion of the examiner. We can see no good reason to
publish under options it, iii, or iv, everyone's application- at 18
months, whether they are guilty of dilatory prosecution or not.
Under our proposal, the only cave in which a publication
sufficiently enabling to b~ harmful to the- applicant would be
available would b~ where there is a finding of dilatory prosecution
(potential submarine patent) by the examiner, whereupon the applicant
should be given a choice whether to continue with prosecution (having
had the application more fully published) or to abandon the
application and avoid further publication of an enabling natures.
But why treat all inventors as if they were guilty of dilatory
prosecution? That is what this rule seeks to do presumes bad faith on
the part of all applicants and then punish them by publishing an
enabling disclosure of their applications after 18 months, which is
often before even the first office action.
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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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019-Q08.TXT
Because under our proposal the burden is on the applicant to submit
a complete Notice form [Appendix "A" including priority information}
as part of his formal patent application, the effect of delayed
filing should be cleat from existing rules. We support the
requirement that any late claim for priority, if allowed to be
submitted, be supported by affidavit that the delay was not
intentional.
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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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019-Q09.TXT
With only an option i (non-enabling, no access allowed) publication
in the format of Appendix "A", there would be no prior art effect,
thus the- question is moot. But if there is a picture published, as
under option ii, that is enough of a disclosure that prior art effect
may be considered. Difficult questions of prior art would arise that
would be a big waste of time for the examiners and all concerned.
Such a prior art document would have to stay in the search files,
further adding to bulk and complexity, and thus delay in processing.
Better to have a11 enabling pre-issue disclosure by private contract
rather than as a matter of public policy, to avoid both prior art
questions and unintended harm to the applicants. Any publication
should serve merely as notice to interested third parties that they
should arrange- for a private disclosure by the applicant. Date of
publication might be included in the patent at the beginning, along
with the filing date
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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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019-Q10.TXT
No access at all without the inventor's express consent should be
permitted 35 USC 122 [Appendix "D"] The principle of our law is that
the inventor trades off an enabling public disclosure for a limited
property right, and this rule seeks to adopt Japanese law in the
United States by a rulemaking instead of by legislation, with the
evident purpose of destroying the technology base of the United
states in the long term Let the- advocates of this startlingly bad
idea lay their proposal before Congress instead of trying to sneak it
through the PTO. Third party access to the patent file, before the
inventor has any rights to enforce, benefits only bad faith
infringers who would cream the market before the patent issues, and
giant companies who would destroy the value of fundamental patents
by a multitude of peripheral patent applications, as they do now in
Japan [see Appendix "B"] No access at all should be permitted without
the consent of the inventor, and this consent should not be implied
from failure to pay some onerous fee As for the plea that relief
from submarine patents is necessary, this problem can be resolved by
a means less drastic than allowing third party access to a11 files We
suggest that only those- applicants that the examiner finds guilty of
dilatory prosecution should be punished by involuntary disclosure
Such a rule would surfaces the submarines, while avoiding unnecessary
harm to other applicants It later in the course of the examination
there should arise a question of dilatory prosecution (submarine
patent), the examiner should have additional publication or a grant
of file access available for preventing harm to the industry by this
abuse.
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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:
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019-Q11.TXT
Yes. The intent of the non-enabling publication under option i
(Appendix "A" format) is to bring the applicant and interested third
parties together so that they may come to their own agreement as to
further disclosure of the contents of the application. The PTO should
not be rying to cram down the terms of a disclosure deal against the
protests of inventors. Lt the interested parties work it out,
Assignment information reveals the existence of all interested
parties and would be consistent with this goal of bringing the
parties into contact.
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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:
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019-Q12.TXT
Biological materials should not be made accessible to the public
after publication without the express consent of the applicant, for
the- reasons stated in response to Question 10 Our law forbids file
access without consent 3S USC 122 Appendix "D"]
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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:
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019-Q13.TXT
Publications should be allowed to be amended by replacement with a
new one in the same format (Appendix "A") A record of amendment dates
should appear on the form published. With the wide- use of word
processors to prepare patent applications, the proposed rule should
not be a hardship to inventors but might make it difficult for the
examiners to see exactly what has been changed in the amendment.
Option ii, as is clear from In_re Hall, 781 F.2d 897 (Fed. Cir.
l986) and In re Wyer, 655 F.2d 221 (CCPA 1981) [cited in the Notice],
would be sufficient public disclosure as to constitute prior art,
especially with a drawing figure and abstract of the invention, and
especially if public access is allowed to the complete file after
publication.
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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:
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019-Q14.TXT
We fear repetition, on a grand scale, of the bad experience that the
PTO had with the TVPP, as described in the Notice. We can expect
tag-team interferences by giant companies to protect their market
position [see Appendix ~B~, a description of the practice in Japan],
Frivolous or not, these challenges would take up lots of valuable
examiner time. We urge ~ reconsideration of the rules of evidence.
Only 1X) documents already on file at the PTO as or the filing date
of the application (such as provisional applications and disclosure
documents), and (2) widely disseminated journals, should be
admissible evidence of priority, within 2 months of publication. -
If evidence outside of publications or materials on file at the PTO
is admitted, the application process will turn into a melee of
conflicting sworn testimony, often with evidence in foreign
languages. This of course would further retard the patent process,
making patents practically worthless by the time they finally issue
In light of Appendix ~B", this seems to be what the foreign interests
desire confusion and delay 1n the PTO, and discouragement of American
invention With this publication/access/protest proposal and their
"prior user rights" proposal, they seek by accelerated administrative
rulemaking to undermine the national interest of the United States
Let the paid advocates of these ideas make their case to Congress,
where the elected representatives of the people can decide whether
they have merit or not,
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GENERAL COMMENT:
Comments of the Houston Inventors- Association Regarding 18-Month
Publication Answers to the particular questions posed by the
Notice follow. First some preliminary comments: With 418 paid-up
($36 a year) members as of the close of 1994, the Houston Inventors
Association (a 501(c)(3) non-profit) is a strong voice for the
independent inventors of America's most inventive city. We are
against any enabling pre-issue publication, such as publication
options ii, iii, and iv. We are also against saving file access to
third parties against the will of the applicant, except in the case
where the examiner finds dilatory prosecution that poses a danger to
the industry affected by the application. The PT0 cannot repeal 35
USC 122 [Appendix "D"] and should not try. We favor early
publication (even before 18 months) in a standardized, non-enabling
format (Appendix ""A" hereto) submitted by the applicant as part of
his formal application, giving the data necessary for interested
third parties to contact the inventor's representative, with the
title of the invention, the search field, and the summary provided
for publication. It will then be up to the interested third party
and the inventor to come to terms on further disclosure. The PT0 in
its rulemaking should not be attempting to dictate the terms of this
disclosure deal, flouting 35 USC 122, but it should be attempting to
foster technology development and transfer by private contract
through some form of early, non-enabling disclosure. For those
applicants who foreign-file, publication will be redundant and
wasteful because their applications are already laid open abroad. So
all it will mean to them is increased fees. As for those who do not
foreign-file (Which is the majority of our membership and of U.S.
applicants in general) it will mean not only increased fees but
peripheral patent filings by the giant Japanese companies who will
thus destroy the value of their fundamental patents. With a balance
of royalty payments of $19 billion received to $4 billion paid in
1991 [see Appendix "C"], the United States is the only country that
is a net exporter of technology, principally due to the fundamental
patents of its independent inventors. We can see no good reason why
the United States should crush its inventors so that it can arrive at
the same state of retarded innovation development as the rest of the
world Cost of publication should be borne by those it benefits,
who are the third parties. The applicants get no benefit from early
publication and should not have their fee increased yet again to pay
for it The submarine patent' argument is only a red herring --
what the advocates of full publication seek is replication of the
Japanese yen in the United States, which would crush fundamental
patents. Appendix ""B" hereto is a recent article from les Nouvelles
(Journal of the Licensing Executives Society) Vol XXIX, No 3, pp
124-29, written by two Japanese researchers. Its title is "Survey of
Japanese Strategies" and it concerns the approach of Japanese firms
to intellectual property The respondents in the survey agreed that U
S companies patent portfolios were more innovative (pp 126-27) The
strategy of the Japanese i6 to set up ›corporate divisions to file
multitudes of peripheral applications to wall off the fundamental
patent, and what makes this possible is the kokai (laid open to the
public) procedure of Japanese patent law (p. 128, columns 1-2).
Please note that 60 7% of all respondents and 80% of a11 extremely
large Japanese firms practice this strategy (p. 128, column 3). We
submit that it is not in the interest of the United States that
these Japanese giants be allowed to crush American innovation by
peripheral patents, protests, and practicing the teachings of the
invention before issue of a patent, which is the likely result if
enabling publication or file access becomes the law. We recommend
that commentors b- asked whether they have any affiliation to firms
that are registered lobbyists, and whether those firms have clients
that are foreign firms or governments We also recommend that the PTO
let Congress decide whether to repeal 35 USC 122 [Appendix "D""]
Of course there is no need to dwell on the dangers Of publishing an
enabling disclosure, or even a hint, to the Chinese and other East
Asians, who will tool up and cream the market before the inventor can
get any protection at all. imagine what would have happened if the
East Asians had seen the television, personal computer,
microprocessor chip, transistor, or VCR technology before the patents
were granted. In industries with short product life cycles and in
industries with long examination times (such as computers,
biochemical, chemical, and electrical cases), publication of anything
close to an enabling disclosure would put the inventor at a
disadvantage so the best advice would be not to file for a patent and
to maintain the- technology as a trade secret. Why spend $10,000 to
get a worthless patent, teaching the whole world how to practice your
invention before you have any property rights?
Our Proposal Require submission of a Notice of Pending
Application (in the format of Appendix "A") as part of the formal
patent application. The examiner would fill in the search field and
then post this 1- page document to an electronic bulletin board. The
space provided for an invention summary would allow the inventor to
describe the usefulness of the invention without necessarily
disclosing information that would amount to prior art, so as to
serve- as an advertisement for marketing the invention. Thus the
publication could be even earlier than 18 months if done in this
format. Searchers and other interested third parties would see the
invention title and date of Notice in the subclass of interest, then
they would order e-mail or paper copies, for a fee. Subscribers such
as businesses interested in a particular subclass would receive a
mailout immediately upon posting. These users would cover all costs
of publication and may even pay more. Applications that the
examiner finds guilty of dilatory prosecution would be published more
completely in a subsequent publication, to surface potential
submarine patents. In other words, enabling pre- publication will
only be for good cause.
Last Modified: March 1995