Comments from John. B. Pegram

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FROM RESPONDENT 028:
     NAME:	John B. Pegram
     COMPANY:	DAVIS HOXIE FAITHFULL & HAPGOOD LLP 
     ADDR-1:	45 ROCKEFELLER PLAZA 
     CITY, STATE ZIP:	NEW YORK, N.Y. 10111
     TELEPHONE:	(212) 757-2200
     FAX:	(212) 586-1461
     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:
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     028-Q01.TXT
     Any electronic system will require some form of central delivery of
     application related material, whether by communications link or
     delivery of tangible media (paper, diskette, etc.)

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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:
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     028-Q02.TXT
     Consistent with my recommendations A and B, several standard formats
     in electronic form should be accepted. Failure to comply should lead
     to a requirement for translation.

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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:
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     028-Q03.TXT
     My proposal would electronically publish all relevant material;
     therefore, an Application Gazette would be unnecessary.

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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:
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     028-Q04.TXT
     The applicant should make his or her own arrangements to obtain a
     copy of the published application. Presumably, that would be less
     expensive than hating the PTO provide it.

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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:
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     028-Q05.TXT
     Accelerated examination should be provided in the case of
     infringement.

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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:
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     028-Q06.TXT
     My proposal should reduce cost for the PTO by eliminating the data
     entry cost for patents. Thus, a publication fee should be
     unnecessary. Regardless of which publication system is adopted, it
     should be kept in mind that the principal beneficiary of publication
     is the- public, not the applicant. Any publication cost should be
     payable at filing and refundable if the application is abandoned
     without publication. The transaction cost of that procedure should be
     substantially lower than collecting a Publication fee for each case
     published.

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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:
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     028-Q07.TXT
     Publication must be automatic, except when there has been a timely
     abandonment.

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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:
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     028-Q08.TXT
     The question of how to handle late priority claims is one of the two
     most important issues relating to 18-month publication. On the one
     hand, Applicants should be deterred from making late priority claims
     to avoid early publication. Loss of part of the patent terms as a
     result of measuring the term from the priority date probably would
     not be an adequate deterrent, especially in rapidly changing
     technical fields, On the other hand, we have a long and satisfactory
     tradition of permitting priority claims when they are needed. Perhaps
     a prior user defense should be provided in cases where publication
     was delayed.

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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:
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     028-Q09.TXT
     As mentioned in section D above, searching is one ofthe two most
     important issues relating to early publication. The published
     application has greater prior art value than the later patents
     therefore, the PTO should consider keeping the application 1n the
     search files. I suggest consideration Of the searching practices of
     other patent offices.

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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:
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     028-Q10.TXT
     My proposal would "publish" all of the contents of the application
     file without affecting PTO operations. Philosophically, the
     application proceedings should be open following publication. As a
     practical matter, the burden of ysically accessing numerous files or
     the alternative burden of processing numerous- petitions for waiver
     of limitations on access should make electronic publication
     attractive to the PTO.

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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:
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     028-Q11.TXT
     Assignment information was public for many years. Public access was
     closed to hide the subject of pending applications. Since the
     contents of the application will no longer be hidden, the assignees''
     names no longer need be concealed following publication.

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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:
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     028-Q12.TXT
     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:
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     028-Q13.TXT
     No comment.

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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:
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     028-Q14.TXT
     The issues here are complex and there is no simple answer. I suggest
     that at least there be a period in which priorart can b- submitted by
     a third party without payment of a fee. Byanalogy to the trademark
     opposition and cancellation procedures, itmay be that at some point
     the third party should be told to awaitpatent issuance and seek
     reexamination.

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GENERAL COMMENT:
     Summary
     
     	I suggest that the PTO adopt filing of all patent applications in
     digital form and that the 18-month publication be in that form,
     without any printing by the PTO Except as may be necessary fox its
     own searching. That publication should be given prior art effect as
     of the U.S. filing date.
     
     A. Filing in Digital Form
     
     	I suggest that, regardless of whether or not 18-Month publication is
     adopted promptly, the PTO require the text of all patent applications
     to be filed in digital form commencing on a specific date, such as on
     or after January 1, 1996. Amendment of 35 U.S.C. 22 may b-
     necessary.	The application should be submitted on
     copy-protecteddiskette in one of several standard formats. In advance
     of thatdate, the PTO should make a standard transmittal form
     available (for example, on the Internet or by purchase of ~ diskette)
     to be included with each application. A printout of the application
     should accompany each application f d, however, in the event of any
     question as to the intended content (as distinguished from damage to
     the diskette), the diskette version would be treated as the original.
     
     	I suggest that submission by communications link and filing of
     drawings in digital form be phased in at a later date after
     appropriate standards and PTO facilities are established.
     
     	Applications not submitted in proper digital form would be subject
     to a translation requirement similar to that for foreign languages.
     
     B. 18-Month '"Publication"!
     
     	I suggest that the 18-month "publication" be purely digital, and
     that the PTO not print the application, or any Application Gazette,
     Application Notice or bibliographic data Instead, the PTO would
     compile a weekly tape or CD-ROM with an index, thereby making the
     information available at cost to subscribers and to commercial
     services who would provide on-line access and printed copies.
     
     	this publication should include all communications in the
     application to and from the PTO prior to the publication date.
     Subsequent communications in '"published" applications also would be
     published promptly in this fashion. The users and services would be
     responsible for collating the documents comprising the prosecution
     file history ~ using the index data which would include the official
     PTO list of the file contents.
     
      	In order to assure a common form of citation, the PTO version of
     the published documents should include some form of page and line or
     paragraph identification.
     
     C. Prior Art Date
     
     	Applicants subject to early publication of their applications should
     gain the prior art defensive benefit of their U.S. filing dates
     regardless of whether a patent issues, While an argument can be made
     to that effect under the existing law and rules it would be
     preferable to include explicit provisions.
     
     	The amendment of the Patent Law to provide for 18-month publication
     should amend section 102(e) to provide that published U.S. patent
     applications shall have the same prior art effect as patents,
     regardless of whether a patent eventually issues. Therational-
     underlying section 102(e) is equally applicable topublished
     applications. This provision also will avoid a period ofdoubt
     regarding whether the prior art date of a publishedapplication is its
     filing or publication date, Alternatively, thePTO should provide by
     rule that a published application is prima facie evidence under
     section 102(g) as of the U.8. filing date. (See section D below).
     
     D. = _
     
     	One of the two most important issues relating to 18- month
     publication is how the products of such publication will be treated
     as prior art in the PTO. I suggest that published applications are a
     more important resource than their later counterpart patents.
     
     	Examiners should have full access to published applications
     immediately upon publication. The proposal for placing only a Patent
     Application Notice in the PTO search files is inadequate. If the
     Examiners do not have and use electronic search systems, paper copies
     of published applications should be placed in their search
     collections.
     
     	Even after patent issuance, the published application will have
     greater value to the public as prior art than the patent because it
     will be the as-filed document. Since the application will have been
     published, and will be in Electronic form in accordance with my
     proposal, it would seem foolish to bury it or remove it from search
     files after the patent issues.
     
     	A more difficult problem will be created by U.S. provisional
     applications. Under the present law, it hag been my experience that
     Examiners cite prior art patents under section 102(e), leaving it to
     the applicant to point out differences between the application and
     the patent. That approach is efficient because section 112 inhibits
     addition of new matter. Provisional applications, however, may be
     quite different from the corresponding, later-Published applications
     and patents. Thus, the PTO should take the steps necessary to provide
     ready access to provisional applications whose priority is- claimed
     -4n published applications and patents. Electronic filing of a copy
     of the provisional application, at least as early as the filing of a
     regular application claiming internal priority, should do the job.


Last Modified: March 1995