Comments from Louis Maassel

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FROM RESPONDENT 026:
     NAME: Louis Maassel 
     COMPANY: World Intellectual Property Organization, Geneva, Switzerland 
     ADDR-1: 12716 Buckingham Drive 
     CITY, STATE ZIP: Bowie, Maryland 20715
     TELEPHONE: 301) 464-4306
     FAX: 
     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:
     Comment: I have no comment as to question 1 but note that it appears to be directed to only wind delivered" and "faxed" items.

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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:
     It should be noted that the PCT provides in Article 27(1) that "No national law shall require compliance with requirements relating to the form or contents of the international application different      from or additional to those which are provided for in this Treaty and the Regulations." The provisions for the physical requirements for international applications is set forth in PCT Rule 11. The      current USPTO Rules of Practice take these provisions into account. To require international applications entering the USPTO as a designated State to meet different or additional formal requirements      would be contrary to the PCT. Also note that PCT Rule 49.5(j) provides that "No designated Office shall require that the translation of the international application comply with physical requiremen     ts other than those prescribed for the international application as filed." Although the PCT provisions do not control what a patent office may require in a non-international application, it seems t     o be preferable to have only one set of formal requirements for patent applicants to follow and that those requirements be those which are internationally used so that US applicants will not need to      reformat their applications for foreign filing and that foreign applicants need not reformat their applications for filing in the USPTO. It should be ~. noted that the PCT Regulations may be change     d by action of the PCT Assembly, however any substantial change would probably not be acceptable to the 76 other member countries of the PCT who have all changed their requirements to be those of th     e PCT. 
     
     PCT Rule 11.5 requires that the size of all sheets in an international application be A4 (29.7 cm by 21 cm). The USPTO Rules of Practice are more flexible and provide for a range of sizes for nation     al application sheets and drawings. The sanctions under the PCT are that if the receiving Office believes that the international application does not comply with the prescribed formal requirements,      it invites the applicant to correct the defects within a prescribed period, which may be extended, failing which that application shall be considered withdrawn (abandoned in USPTO terminology), (Art     icle 14(1)). 
     
     The PCT also requires that the description, claims, drawings and abstract each commence on a new sheet, (PCT Rule 11.4(a)). No surcharge is made for any corrections of any lack of compliance but a t     ime limit for correction.

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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:
     I have no comment on this item since it would appear to be fee related since the more that is published, it can be assumed the higher any publication fee will be set. To my knowledge, the items publ     ished by the PCT Gazette has not raised any concern. The content of the PCT Gazette is set forth in PCT Rule 86.

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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:
     Applicants in international applications now receive from the International Bureau a copy of the "pamphlet" containing the international application as filed, any amendments to the claims and the se     arch report when the application is published '"promptly after the expiration of 18 months from the priority date of that application." This permits applicants to call the attention of the Internati     onal Bureau to any errors.

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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:
     I have no comment on the normal accelerated examination procedure before publication, however consideration should also be given as to whether accelerated examination would be available to an intern     ational application applicant entering the national phase in the USPTO with an international search and preliminary examination report prior to any republication or publication of the application du     ring the national phase?

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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:
     To address this question the view of the USPTO on what publication (or republication) will be made by the USPTO of international applications already published by the International Bureau. The entir     e content of international applications designating the United States of America will be available to the USPTO upon publication by the International Bureau. Note however that about 27 % of these ap     plications will not be published in English except for the entry in the English PCT Gazette. The English translation for entering the national phase is not required to be filed in the USPTO until 20      months after the priority date under Chapter I or 30 months after the priority date under Chapter II. The translation may even be filed later under 37 CFR 1.494(c) upon payment of a processing fee.      If the USPTO is to republish international applications after 20 or 30 months from the priority date, but prior to the grant of the patent, when will the publication occur and when will any publica     tion fee be due? My suggestion is to only republish non-English international applications promptly after entering the national phase and that any publication fee be part of the basic national fee.      It should be sufficient to merely refer to the publication by the International Bureau of English language applications. Consideration could be given to making the "publication fee" part of the fili     ng fee in national applications to avoid separate correspondence later and to refund that portion of the filing fee set for publication if the application is abandoned or issued as a patent prior to      the 18-month publication date. This would also remove the need for petitions for late acceptance of the publication fee.

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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:
     Under the PCT, all international applications are published promptly after the expiration of 18 months from the priority date except those which fall under the reservation of Article 64(3) and those      which have been withdrawn prior to the date on which "technical preparations for international publication have been completed." (PCT Rule 90bis. l(c)). This date on which "technical preparations f     or international publication have been completed" is 15 days prior to the international publication date. Publication is currently every Thursday. Withdrawal of an international application may also      be made provisional so that if the notice of withdrawal arrives too late to stop publication that the applicant is not faced with a publication of a withdrawn application. A similar conditional aba     ndonment practice should be adopted by the USPTO.

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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:
     Some deadline for claiming priority would appear to be necessary in order to promptly publish applications on schedule. However, applicants should also be permitted to withdraw only their priority c     laim to delay publication if done prior to the time the application is prepared for publication. The PCT permits such a practice under PCT Rule 90bis.3. Note however that this procedure under the PC     T may not be used to recapture any deadlines which have already expired.

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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:
     It would appear essential that a patent include information as to the prior publication. US patents which now mature from published international applications already contain the publication number      and date of any prior international publication by the International Bureau. I also note that in reexamination proceedings, the certificate merely indicates the changes and does not republish the en     tire patent. Consideration could be given to publishing the entire US national application at 18 months and only indicating the changes in the patent printed at grant. The patent "grant" could still      include the entire specification, including claims, and drawings.

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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:
     Continued access would certainly be desirable for third party applicants who might be interested in copying claims for purposes of an interference proceeding. 

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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:
     In view of provisional protection being available, it would appear necessary for the public to know who is the owner of the published application.

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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 comment.

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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:
     The PCT requires practically all amendments and changes to be made by replacement sheets. PCT Rules 46.5, 66.5 and 66.8. These rules also provide for a letter which draws attention to the difference     s between the replaced sheets and replacement sheets. No real problems have arisen from this practice under the PCT once the practice is understood by applicants. Further details are set forth in Se     ctions 205 and 311 of the "Administrative Instructions under the PCT."

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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:
     Reissue applications and reexamination proceedings are announced in the Official Gazette and made available to the public so that the Office is aware of and evaluates the teachings of all informatio     n material to the patentability of the claimed subject matter. Suitable limits could be established as currently exist in the above mentioned reissue applications and reexamination proceedings. I am      aware of only a few published international applications designating the United States of America where a third party has copied claims for interference or submitted prior art.

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GENERAL COMMENT:
     Foreign Office Experience 
     The whole matter of how to handle publication of pending applications 18 months after the 
      priority date is a long-
     standing practice in many foreign patent offices. Many of the questions and concerns raised have been dealt with
     and experienced by such foreign patent offices. An examination of the publication practice of several of the larger
     foreign patent offices could raise issues and provide answers to matters which may not previously arisen in the
     USPTO.
     
     WIPO Cooperation
     WIPO will be able to supply information on computer tape from its electronic data base used for 18 month
     publication for use in publishing notices of international publication in the USPTO Official Gazette. This transfer
     
     of electronic data could be done with minimum cost and effort. Furthermore, it is expected that after April 1,
     1995, the entire international application content as published should be available in machine readable form,
     including the drawings in scanned format. This would provide the USPTO with everything in electronic form,
     other than US entry date and application number data, needed for publication of English language applications.
     
     OCR Format
     WIPO has published an internationally approved standard for OCR formatted patent applications. It is Standard
     ST.22 "Recommendation for the presentation of patent applications typed in optical character recognition (OCR)
     format-. A copy of the standard may be found in the PCT Gazette, No. 20/1992, pages 8461 to 8464 and in the
     "WIPO Handbook on Industrial Property Information and Documentation ".
     
     Printing Method
     Printing of patent copies on demand from an electronic data base could possibly serve US examiners who would
     have access to the electronic data base, but would result in delays in access to the entire application and may not
     serve the needs of the general public, depository libraries and foreign patent offices. The real purpose of the 18-
     month publication should be determined and the content of the publication should then be decided.
     
     Priority Claim
     What will be minimum information required for claiming priority? the date? the country? the number? any
     combination? Will correction of any of these be possible?
     
     5
     Numbering System
     The Notice does not indicate what numbering system will be applied to the 18-month publications. Will the
     number correspond to the application number, patent number or be an entirely different number. This is relevant
     as to how the documents are filed in the examiner's search files and in the depository libraries. The WIPO
     "Handbook of Industrial Property Information and Documentation " includes Standard ST.6 titled
     "Recommendation for the Numbering of Published Patent Documents" which may offer guidance in this area. In
     the same publication, Standard ST.10 relates to "Published Patent Documents." Attention is also directed to
     Standard ST.16 concerning "Standard Code for Identification of Different Kinds of Patent Documents."
     Recommendations on other publication issues concerning patents are also included in the "Handbook".
     
     International Exchange
     Will the 18-month publications be part of the international exchange of patent documents? I raise this issue since it
     may affect the content decided upon for the 18-month publication. Will the information on the published zone- =
     page" document be of any use or interest to foreign patent offices who do not have direct access to the USPTO
     electronic data base. I note that many of the foreign patent documents in the USPTO search files are the 18-month
     publications of foreign offices and not the final patent grants. Lack of prior art disclosure available in foreign
     offices may result in the grant of a foreign patent to another.
     
     Review prior to publication
     The matter of review prior to publication of all applications has not been addressed in the Notice. Will the
     applications be classified by both the US Classification System and the International Patent Classification (IPC)
     Systems? Who will do the classifying? Will at least the title, claims and possibly the abstract be reviewed by an
     examiner in the technical field prior to publication to determine if they are suitable for publication by the
     government? If a first Office action has already issued in the published application, will this be noted on the 18-
     month publication document?
     
     Provisional protection
     It is not clear from the Notice which claims will be effective for provisional protection. This issue should be
     considered when deciding on the claims, if any, to be published at 18 months. If examination has occurred and the
     original claims have been replaced, which claims will be the basis for provisional protection? PCT Article 29
     requires that an applicant have the same rights resulting from the publication by the International Bureau of an
     international application as those for a national application subject to certain requires concerning a translation if not
     published in the required language. PCT Article 19 permits the applicant to amend the claims following receipt of
     the search report so that the claims published at 18-months can provide better provisional protection.
     
     Certificates of Correction
     Will any document or notice in the Gazette be issued if an error is made in the 18-month publication?
     
     3S U.S.C. 102(a), (b) and (e)
     The entire disclosure of a published application would appear to be available under 102(a) and (b)/103 as being
     described in a "printed publication." When considering 102(e), the current wording of 35 U.S.C. 363 and 102(e)
     as to international applications should also be carefully reviewed No distinction should be made between national
     and PCT international applications as to their 102(e) effective date. In 1970, when the PCT was negotiated here in
     Washington, the requirements for a US patent application to obtain a filing date included items such as the oath
     
     and the filing fee. Today these requirements are not in 35 U.S.C. 111 but still remain as a requirement to obtain
     102(e) benefit in an international application, even if the international application is filed in the United States
     Receiving Office. The wording of PCT Article 64(4)(a) should be carefully considered in such considerations.
     
     Early Publication
     The European Patent Office and the PCT permit early publication, prior to 18 months from the priority date, upon
     request by the applicant. Has such early publication been considered by the USPTO where the applicant is anxious
     to create prior art against others, especially if 102(e) benefit does not begin until later.

Last Modified: March 1995