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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
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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:
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