Comments from Yukiji Kobayashi

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FROM RESPONDENT 025:
     NAME:	Yukiji Kobayashi, President
     COMPANY:	Japan Intellectual Property Association 
     ADDR-1:	Shintomi 1-chome Bld;. 7F 
     	9 8, Shintomi 1~chome 
     CITY, STATE ZIP:	Chuoku. TokYo 104, JAPAN 
     TELEPHONE:	813 3206 2243
     FAX:	81 3 3206 2230
     REPRESENT:	association
     

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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:
     -------
     025-Q03.TXT
     The primary characteristics of the publication system is the issuance
     of Publication Gazette. Actually, many of the countries and regions
     which have already adopted publication system of patent applications
     lay application specifications open in its entirety in the form of
     paper, micro film or CD ROM. This fact leads us to think: that the
     contents of publication should not be partial publication but entire
     publication As to the form of publication, parallel publication in
     paper hard copy and CD-ROM would be desirable. (Related to your
     Question 3) Entire publication on the other hand, may tend to be
     costly, Therefore, in case the cost containment is the priority
     requirement, publication in patent may be opted while the content of
     Application Gazette would preferably be something simialr to the
     contents of present Of Official Gazette for issued patents. That is
     to say, Title of the Invention, Inventor, Assignee, Date of filing,
     Social Number, Date of Parent Application Number of Parent
     Application, USC/IPC, Number of Claims, Representative Claim,
     Drawings, etc. will be provided (Response to your question #3, if
     and where entire publication is not feasible) The provision of
     representative claim appears necessary considering the nature of
     Application Gazette as the only Governmental publication on filed
     patent applications which discloses inventions. Regardless of whether
     e publication is in part or is in entirety, file wrappers for applied
     patents should be laid open X public access after the date of the
     publication. This point is prerequisite to all other forms of
     publication.

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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:
     -------
     025-Q06.TXT
     Introduction of publication basically means publication of every
     application, and an applicant should give consent to publication of
     his/her invention Therefore fee for Application Gazette and other
     expenses relevant to publication should be included in the
     application fee and should consist a part of it, rather than charged
     separately. (Response to your question #6)

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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:
     -------
     025-Q08.TXT
     The timing for issuance of Application Gazette should be set as early
     as feasible from the view point of the raison-d'etre of publication
     system. Considering harmonization with the world's patent systems, 18
     months after the effective date of filing would be appropriate. As
     the presence of priority right claim affects the validity of the
     invention relative to an application, priority claim should be
     evident in the Publication Gazette, Which means there should be a
     statutory time frame stipulated for the applicant to file priority
     right claim, Such time frame would better be set at a period which
     would neither interfere with the timing of filing or affect issuance
     of application publication While claiming his/her priority right, an
     applicant may make a bona-fide mistake, Therefore it would be
     desirable to give the applicant a chance to redeem his/ her priority
     right, with payment of a surcharge within a defunct period of time. A
     bona-fide mistake means the existence on the part of an applicant of
     the intention to claim priority right at t}u time of application, and
     this fact must be proven. Stipulation of this time frame should be
     kept to a minimum, since it results in the delay of publication of
     the application (e,~. continuation application). (Response to your
     Question #8)

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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:
     -------
     025-Q10.TXT
     One of the objectives of publication of application is to make the
     progress of application procedures known to the public. In his sense,
     it will be appropriate that once an application is published, the
     entire content of of the application file should be made accessible
     including all the material added after publication (Response to your
     question #10) It would be further desirable that a copying service
     (payable) be provided for the content of the application file.
     Through The fact that the proceedings of applications at own to the
     public, effective use of the system for submitting prior art
     (explained later) would become possible, and hence it would
     contribute to enhance the quality of examination.

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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:
     -------
     025-Q12.TXT
     From the view point of publication of invention, it is theoretically
     conceivable that the biological material is open to furnishing as
     well at the time of publication of specification, but due to the
     special nature of biological material patent laws in Europe and in
     Japan limits furnishing at the time of publication of invention. It
     is desired that USPTO would do the same. (Response to your question
     #12)

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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:
     -------
     025-Q14.TXT
     It is important for keeping high standard of examination that the
     examiners be effectively provided with data material to examination.
     For that purpose, a system set up for submitting of prior art from
     the public is desired. Post-issue re-examination or invalid
     litigation is a means for reviewing validity of patents, but from the
     view point of the stabilization of granted rights, priority should be
     given to building up of a strict and effective examination system
     prior to grant of patents. From the above mentioned reasons, it is
     desired to institute, along with the introduction of publication of
     application, a system for collecting data on prior art from the
     public. Those who ate engaged in the technology similar to the
     invention filed are daily searching and perusing related material
     data such as Official Gazette, academic paper, etc. It goes without
     saying that information obtained through these researches is in most
     cases material in relation to the inventions under examination. It
     should be effective when information is submitted to permit
     attachment of an affidavit stating the reasons why the submitted data
     are material in order to clearlyconvey the submitter's intent for
     submission and to facilitate examination.. As to the time frame for
     submission of information, it would be necessary to permit it until
     the issuing of notice of allowance for the application. It would make
     utilization of that scheme for foreign nationals extremely difficult
     timing-wise if that time frame should be limited, for instance, to
     two months after the publication of application. (Response to your
     question #14)

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GENERAL COMMENT:
     The United States Patent and Trademark Office requested written
     comments from the public on the subject of publication of patent
     applications 18 months after filing date. Japan Intellectual Property
     association (JIPA) is honored to submit hereby its comments after
     carefully reviewing the possible publication system of patent
     application in the United States, JIPA is a rate sector, non-profit,
     volunteer organization with 660 corporate membership which are
     conducting business in Japan. The purpose of {be Association since
     its foundation in 1938 has been to ensure appropriate use and
     improvement of the systems concerning intellectual property, and
     thereby contributing to the progress of technology and to the
     development of industry.
     
     1. Foreword The introduction of publication system of patent
     application in the U.S. will be welcomed from the point of view of
     harmonization of the patent systems in the world as well. Publication
     of patent applications will mean that the existence of applications
     are known to the general public at an early stage. and thereby
     eliminating the harmful effects of "submarine patents", and this in
     turn will greatly contribute to the appropriate use of patent system
     in the U.S. We believe that introduction of publication system will
     not only benefit American society but also benefit the economic
     development of the entire world
     
     2. Mechanism of Publication System
     
     2-l Issuance of Gazette of Patent Application Notices (Application
     Gazette) The primary characteristics of the publication system is the
     issuance of Publication Gazette. Actually, many of the countries and
     regions which have already adopted publication system of patent
     applications lay application specifications open in its entirety in
     the form of paper, microfilm or CD ROM This fact leads us to think:
     that the contents of publication should not be partial publication
     but entire publication. As to the form of publication, parallel
     publication entire publication, on the other hand, may tend to be
     costly, Therefore, in case the cost containment is the priority
     requirement, publication in part may be opted while the content of
     Application Gazette would preferably be something similar to the
     contents of present Official Gazette for issued patents. That is to
     say, Title of the Invention, Inventor, Assignee, Date of filing,
     Social Number, Date of Parent Application Number of Parent
     Application, USC/IPC, Number of Claims, Representative Claim,
     Drawings, etc. will be provided (Response to your question #3, if
     and where entire publication is not feasible) The provision of
     representative claim appears necessary considering the nature of
     Application Gazette as the only Governmental publication on filed
     patent applications which discloses inventions. Regardless of whether
     e publication is in part or is in entirety, file wrappers for applied
     patents should be laid open to public access after the date of the
     publication. This point is prerequisite to all other forms of
     publication.
     
     2-2 Timing for Issuance of Application Gazette and Priority Right The
     timing for issuance of Application Gazette should be set as early as
     feasible from the view point of the raison-d'etre of publication
     system. Considering harmonization with the world's patent systems, 18
     months after the effective date of filing would be appropriate. As
     the presence of priority right claim affects the validity of the
     invention relative to an application, priority claim should be
     evident in the Publication Gazette, Which means there should be a
     statutory time frame stipulated for the applicant to file priority
     right claim, Such time frame would better be set ~ a period which
     would neither interfere with the timing of filing or affect issuance
     of application publication While claiming his/her priority right, an
     applicant may make a bona-fide mistake, Therefore it would be
     desirable to give the applicant a chance to redeem his/ her priority
     right, with payment of a surcharge within a defunct period of time. A
     bona-fide mistake means the existence on the part of an applicant of
     the intention to claim priority right at t}u time of application, and
     this fact must be proven. Stipulation of this time frame should be
     kept to a minimum, since it results in the delay of publication of
     the application (e,~. continuation application). (Response to your
     Question #8)
     
     2-3 Access to Publication of the Application, Access to the File
     Wrapper One of the objectives of publication of application is to
     make the progress of application procedures known to the public. In
     his sense, it will be appropriate that once an application is
     published, the entire content of of the application file should be
     made accessible including all the material added after publication
     (Response to your question #10) It would be further desirable that a
     copying service (payable) be provided for the content of the
     application file. Through the fact that the proceedings of
     applications at own to the public, effective use of the system for
     submitting prior art (explained later) would become possible, and
     hence it would contribute to enhance the quality of examination.
     
     2-4 Legal Effect of Publication of the Application Application
     Gazette is a printed vehicle provided to the public in the same
     manner as any- academic or technical periodicals. Therefore,
     Application Gazette constitutes "printed publications"'    disclosed
     invention had been submitted to the Patent and Trademark Office on
     the date of filing of the relevant application. Consequently, an
     identical but junior invention claimed in a subsequent application
     should be rejected unless prior invention on can be proved h It is
     therefore appropriate to add "a published patent application having a
     date of filing prior to the relevant date of invention in 35 U.S.C.
     102 (c).
     
     2-5 Fee for Publication of Application Introduction of publication
     basically means publication of every application, and an applicant
     should give consent to publication of his/her invention Therefore fee
     for Application Gazette and other expenses relevant to publication
     should be included in the application fee and should consist a part
     of it, rather than charged separately. (Response to your question #6)
     
     2-6-1 Compensation for Publication of Application When introducing
     publication of application, a definite sum of compensation should be
     accorded to the applicant. As publication of application has
     different legal meaning to issuing of patent, compensatory nature
     must be distinctly identified as opposed to licensing fee for an
     issued patent. Consequently, it is appropriate that a compensation
     equivalent to a nonexclusive license fee be paid to a published
     claim having identical scoop as at the time of issuing. No
     compensation of punitive nature such as interests, damage surcharge,
     payment of attorney fee etc. should be applicable.
     
     2-6-2 Enforcement of compensation claim It would be appropriate that
     compensation for publication of application will be enforceable, 1)
     after issuing relevant application. and 2) when the existence of
     publication of application is notified to the other party. It would
     result in imbalance of interests between an applicant and the public
     if compensation claim is enforceable from the time of publication of
     application for a claim still under examination and therefor the
     scoop of invention is not yet defined Naturally the party who claim
     compensation needs to notify the other party as in the case of issued
     patent.
     
     3 System for Submitting Prior Art It is important for keeping high
     standard of examination that the examiners be effectively provided
     with data material to examination. For that purpose, a system set up
     for submitting of prior art from the public is desired. Post-issue
     re-examination or invalid litigation is a means for reviewing
     validity of patents, but from the view point of the stabilization of
     granted rights, priority should be given to building up of a strict
     and effective examination system prior to grant of patents. From the
     above mentioned reasons, it is desired to institute, along with the
     introduction of publication of application, a system for collecting
     data on prior art from the public. Those who ate engaged in the
     technology similar to the invention filed are daily searching and
     perusing related material data such as Official Gazette, academic
     paper, etc. It goes without saying that information obtained through
     these researches is in most cases material in relation to the
     inventions under examination. It should be effective when information
     is submitted to permit attachment of an affidavit stating the reasons
     why the submitted data are material in order to clearlyconvey the
     submitter's intent for submission and to facilitate examination.. As
     to the time frame for submission of information, it would be
     necessary to permit it until the issuing of notice of allowance for
     the application. It would make utilization of that scheme for
     foreign nationals extremely difficult timing-wise if that time frame
     should be limited, for instance, to two months after the publication
     of application. (Response to your question #14)
     
     4 Regarding Deposit of Biological Material
     
     4 1 Timing for Furnishing of Deposited Biological material From the
     view point of publication of invention, it is theoretically
     conceivable that the biological material is open to furnishing as
     well at the time of publication of specification, but due to the
     special nature of biological material patent laws in Europe and in
     Japan limits furnishing at the time of publication of invention. It
     is desired that USPTO would do the same. (Response to your question
     #12)
     
     4-2 Timing for Deposit of biological material Ever since in re
     Lundak, deposit of biological material can be done at any time prior
     to the grant of patent in the United States. However, as the
     specification is published before the grant by the introduction) of
     publication of application. deposit takes place prior to publication
     and the published specification needs the deposit number filled out
     Therefore the current practice needs to be changed
     
     4-3 Necessity of Deposit As deposit can be made at any time before
     grant of right, and there has been a tendency in the U.S. that
     deposits are requested even for those inventions for which no deposit
     is required in Europe or in Japan, it has been customary that the
     applicants would place priority to obtain notice of allowance and
     make a deposit in response to the request from the examiner, without
     sufficiently arguing if it was reasonable. Now if the practice will
     be changed as described in the above, applicants will find it
     difficult to respond to the request from examiner. Therefore a clear
     standard for the necessity of deposit of biological material, which
     is in harmony with the practice in Europe and Japan will become
     indispensable.
     
     This has been a response to Request for Comments on l8-Month
     Publication of Patent Application by U.S.P.T.O. from Japan
     Intellectual Property Association. a non-profit, private sector
     organization. This document reflects the views of the Association.


Last Modified: March 1995