Comments from William E. Colby

----------------------------------------
FROM RESPONDENT 022:
     NAME:	William E. Colby
     COMPANY:	National Intellectual Property Law Institute
     ADDR-1:	3028 Dent Place, N.W.
     CITY, STATE ZIP:	Washington, D.C. 20007
     TELEPHONE:	(202) 338-5231
     FAX:	(202) 338-5233
     REPRESENT:	company
     

----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 01:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 02:
    No comments supplied
----------------------------------------
QUESTION 03:
     If the entire application is not published, what information
     concerning the application should be published in the Gazette of
     Patent Application Notices?

----------------------------------------
COMMENT ON QUESTION 03:
    No comments supplied
----------------------------------------
QUESTION 04:
     Should the patent applicant receive a copy of the published
     application -- either published notice and/or application content
     at time of publication?

----------------------------------------
COMMENT ON QUESTION 04:
    No comments supplied
----------------------------------------
QUESTION 05:
     Should the PTO permit an accelerated examination? If so, under
     what conditions?

----------------------------------------
COMMENT ON QUESTION 05:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 06:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 07:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 08:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 09:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 10:
    No comments supplied
----------------------------------------
QUESTION 11:
     11.  After publication, should assignment records of a published
          application also be made accessible to the public?

----------------------------------------
COMMENT ON QUESTION 11:
    No comments supplied
----------------------------------------
QUESTION 12:
     After publication, should access include the deposit of
     biological materials as set forth in 37 CFR 1.802 et seq.?

----------------------------------------
COMMENT ON QUESTION 12:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 13:
    No comments supplied
----------------------------------------
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?

----------------------------------------
COMMENT ON QUESTION 14:
    No comments supplied
----------------------------------------
GENERAL COMMENT:
     	In response to reference announcement in the Federal Register, I
     respectfully submit a copy of a letter I sent on November 2, 1994 to
     the Honorable Ronald Brown, Secretary of Commerce, on behalf of the
     National Intellectual Property Law Institute (NIPLI ) of Washington,
     D.C., a description of which, with its Board of Directors, is
     described in the other attachments to this letter. We have received
     no acknowledgment or answer to our letter to the Secretary.
     
     	My friends in the NIPLI request that this letter be considered in
     the context of the invitation for public comment in the reference
     Federal Register announcement. You will note our specific concern as
     to the possible effects of the 18-Month Publication procedure.
     
     	Our President, Dr. James P. Chandler, our Chairman, Mr. Edward
     O'Malley, and our Director, Former Commissioner of Patents Donald W.
     Banner, would be available to testify on this question, and we also
     request that this letter and its attachments be incorporated in the
     materials to be considered by the Commissioner prior to decision on
     the matters in the Federal Register notice.
     
     November 2, l994
     
     The Honorable Ron Brown Secretary of Commerce Washington DC 20230
     
     Dear Mr. Secretary:
     
     	The GATT Agreement is before the Senate (belatedly, due to Chairman
     Hollings' delay). Many of us support wholeheartedly the purposes and
     intent of this agreement, and would like to add our voices to those
     urging its rapid adoption by the Senate - and the
     
      House.
     
     	Under the "fast track" procedures, no amendments can be considered,
     something again which we approve. But in the details of the agreement
     is one feature which does worry those of us concerned about American
     technological and intellectual inventiveness;. We respectfully would
     like to call your attention to these details and seek some way in
     which the benefits of full adoption of the GATT can be reconciled
     with these concerns.
     
     	I refer to the impact of the agreement on our patent and copyright
     law and procedures. The United States has traditionally adhered to a
     regime of "first invention" of ideas copyrighted or patented, and has
     had a period of 17 years of exclusive reward for the inventor after
     the patent or copyright is issued (after the government has concluded
     that the work is truly original). Much of the rest of the world has
     followed a doctrine of "first to file" for the patent or copyright.
     The GATT agreement has adopted this principle and set a period of "a
     minimum of" 20 years after this date as the term of the patent or
     copyright. The proposed U.S. implementing :Legislation sets a flat 20
     years as this period.
     
     	As the most innovating nation of the world, we think this an
     unfortunate blow to our originators. Many times the Patent Office
     must spend considerable time and effort to determine that the idea is
     truly patentable. Under the new legislation, this will absorb part of
     the term of the patent, measured from "first to file". In complex
     cases, this can involve a number of years. When one considers that:
     the financing, production and marketing of the item patented is
     frequently a complex and lengthy procedure as well, the term of the
     profitability of the patent can suffer a major reduction. 	To add to
     the problem, the new legislation provides that the material
     describing the new ideas must be published 18 months after filing,
     whether the Patent Office has completed its review or not. This makes
     it available for exploitation by competitors prior to the issuance of
     the patent, theoretically subject to recovery later - but only at the
     cost of litigation, no small consideration.
     
     	Several of us believe that the intention of the new legislation to
     eliminate the so-called "submarine" surfacing of a long dormant
     patent after an industry has developed - to the extent this is a real
     rather than a theoretical problem - can be solved without such
     drastic impact on the rights of inventors. One step would be to have
     the patent term run for the period of 20 years from date of filing or
     17 (or other) years from date of issuance, whichever is longer. This
     would be compatible with GATT, protect our inventors better and not
     differ from the Agreement originally negotiated with our
     international partners in GATT (These two provisions showing up in
     the implementing legislation after the Agreement was reached).
     
     	In order not to interrupt the passage of the GATT legislation now
     before the Congress, we suggest that the changes we suggest as needed
     can be achieved by legislation later.
     
     	We respectfully request a conference with you or one of your staff
     to discuss this matter. The individuals attending concerned with this
     problem would be:
     
     Professor James P. Chandler
     
     Professor Emeritus of Law, Howard University and
     
     President, National Intellectual Property Law Institute, Washington
     DC
     
     
     
     Edward O'Malley, Esquire
     
     Chairman, National Intellectual Property Law Institute, Washington DC
     
     Honorable Donald W. Banner
     
     Former U. S. Patent Commissioner
     
     William E. Colby, Esq.
     
     Donovan Leisure Newton & Irvine, Washington DC 	Thank you for your
     consideration of this important subject. I am sure you will approach
     it with the same forceful attention to the interests of U.S. commerce
     you have already shown in your "Commercial Diplomacy" efforts.


Last Modified: March 1995