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FROM RESPONDENT 021:
NAME: William T. Fry , III
Professor
COMPANY: University of Baltimore School of Law
ADDR-1: 1420 North Charles Street
CITY, STATE ZIP: Baltimore, Md. 21201
TELEPHONE: (410) 837-4553
FAX: (410) 837-4560
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:
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:
RECOMMENDATIONS
1. The Patent and Trademark Office (PTO) should not publish design
patent applications as a part of the proposed 18 month publication
Plan.
2. A decision to publish design patent applications should be made
after conclusion of the Hague Agreement revision and U.S.
consideration of adherence to the revised treaty.
BACKGROUND
The discussions over the last several years concerning patent
law harmonization have been primarily directed to technology
inventions. For example, the WIPO Diplomatic Conference proposal2
that has generated many of the proposed national patent law changes
only applied to patents for technology inventions. Consequently,
there has been no significant international or national discussion
or general agreement to alter national design patent laws.
The type of discussion needed concerning design patent law
changes is now taking place at WIPO on the Hague Agreement
revision. The U.S. is participating actively in that process,
along with several U.S. non-governmental organizations. This
treaty deals primarily with procedures for registering designs as
wells a design patents. A series of articles by this author have
described the progress made at these meetings. 3
One topic at these meetings has been the secrecy of design
2, "The term 'patent' is used in the Treaty to refer only to
patents for inventions and to exclude other titles of industrial
property that are sometimes referred to in national laws as
'patents,' such as patents for designs, patents for utility models,
petty patents and plant patents, Notes on the Basic Proposal for
the Treaty and Regulations, Diplomatic Conference for the
Conclusion of a Treaty Supplementing the Paris Convention as Far as
Patents are Concerned, The Hague, June 3 to 28, 1991, WIPO Doc.
PLT/DC/4 (Dec. 21, 1990), sec. 2.05.
3. Fryer, W., Report on Hague Agreement (Industrial Designs)
Second Meeting of Experts, WIPO, April 27 - 30, 1992~ 74 Journal of
the Patent and Trademark Office Society (JPTOS) 923 - 937 (No. 12,
Dec. 1992); Fryer, W., More Bang for Your Design Protection Money:
A Report on the Hague Agreement Third Meeting, 76 JPTOS 91-115 (No.
2, Feb. 1994); and Fryer, W., 2 U. Balt. Int. Prop. L. J. _
(Issue 1) [available on request].
applications.4 There has been considerable concern expressed by
some governments and non-governmental organizations, especially the
textile and fashion industries in Europe, that there should be some
period of secrecy after registration, or at least a reasonable
period of pendency where secrecy occurs, so that the design
registration office is not a convenient source for copiers.
The Hague Agreement system has an international registration
publication schedule. Figure 1 shows the time features of the
Draft Act reviewed at the 4th meeting of experts held in 19945.
International registrations will be published usually within three
months from receipt by WIPO. If the U.S. adheres to the revised
Hague Agreement, it will force a reevaluation of design patent
application publication. My prediction is that the U.S. may go to
a very short publication time, perhaps six months for design patent
applications.
One of the continuing problems in understanding the debates
and positions of organizations and governments is in what context
the term "patent" is used. U.S. patent law, 35 U.S.C. secs. 1 -
376, applies to both utility patent, plant patents and design
patents, unless otherwise indicated. 6
Any legislation amending U.S. patent law that fails to give an
exception for design patents will apply to design patents. Use of
the term "patent" is generic to design patent, and it will result
in the legal conclusion that the legislative change applies to
designs patents, unless there is an appropriate exception for
design patents. This overlap has made it difficult to interpret
whether organizations and the PTO are proposing, or in support of,
18 months Publication for design patents
Another fact is that U.S. design patent application pendency
is a major concern now for intellectual property professionals,
business and the PTO. Major efforts to reduce design patent
application pendency are underway, and there have made significant
accomplishments. The goals set are far below 18 months from the
U.S. filing date of a design applications.
4. Fryer, W., 76 JPTOS at 106.
5. 2 U. Balt. Int. Prop. J. (Issue 1 ).
_6. 35 U.S.C. sec. 171, "The provisions of this title relating
to patents for inventions shall apply to patents for designs,
except as otherwise provided." Sections 171-173 are the special
design patent provisions.
TIME FEATURES OF DRAFT ACT
4th MEETING OF EXPERTS ON HAGUE AGREEMENT REVISION
(Industrial Design)
FIGURE 1:
DIREct
PARIS
CONVENTION
6 months from
first national
application filing
WIPO
3 months for WIPO to
receive it, usually
IDR FILING IN
NATIONAL OFFICE
O Copyright
W.T. Fryer III
1994
REFUSED
30 montlhs to
refuse effect
LEGEND:
IDR - International Design Registration
WIPO - World Intellectual Property Organization
Generally 3
months
FORMALITY
REVIEW
NATIONAL OFFICE
EXAMINES FOR
NOVELTY
ACCEPTED IDR
FOR NATIONAL
EFFECT
IDR terrn is same as
National Protection
term, measured from
refusa lwithdrawal in
most cases.
Time to acceptance
depends on review
duration
DEFERRED
PUBLICATION OF
DESIGN
IDR
Up to member --
max. 30 months
(None likely in
U.S).
Usually no more
than one year
NATIONAL OFFICE
PROCESSES
WITHOUT NOVELTY
EXAM
IDR NATIONAL
EFFECT
IDR temm from effective
filing date is 15 year
minimum
Special Note: Changes agreed to at
the 4th meeting are
included in this diaqram.
REASON FOR RECOMMENDATIONS
The U.S. should defer any changes in its design patent law
concerning publication of design patent applications until the
Hague Agreement revision is completed. The development of an
improved U.S. design patent system has to include factors that are
being discussed at the meeting of experts. The next meeting is
scheduled for June 12-16, 1995.
The above background information indicates that secrecy and
publication timing are topics being discussed at the Hague
Agreement revision meetings. It would be premature for the U.S. to
revise the design patent law until these discussions are completed
and the structure of the revised Hague Agreement system is known.
The development of patent law harmonization revisions,
starting with the aforementioned work at WIPO, and with the
Japanese Government, has not included design patent law changes.
These discussions have centered on technology inventions. I am not
aware of any country that is proposing to change its design
application publication timing to 18 months as a result of the
patent (technology invention) law harmonization review.
Any decision by the U.S. to change design patent application
pendency should be part of an overall plan with corresponding
benefits from similar changes in other countries. The best
approach for the U.S. is to work within the Hague Agreement
revision project to develop system standards that can receive a
wide acceptance.
It is critical to have any U.S. legislation on 18 months
publication clearly state which patents are effected. Consequently
the proposed legislation for patent 18 month publication should
specifically exclude its application to design patents.
Last Modified: March 1995