Comments from Marcia H. Sundeen

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FROM RESPONDENT 029:
     NAME:	Marcia H. Sundeen
     COMPANY:	PENNIE & EDMONDS 
     ADDR-1:	1701 Pennsylvania Avenue, N.W.
     CITY, STATE ZIP:	Washington, D.C. 20006-4706
     TELEPHONE:	(202) 393-0177
     FAX:	(202) 393 0462
     REPRESENT:	PTO Relations Committee
     

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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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     029-Q01.TXT
     The delivery of all official application related materials to a
     central location should not present any undue problems for applicants
     provided that the papers are promptly forwarded to the appropriate
     individual or department in the PTO for handling of such materials.
     It Is essential that there be no delays in view of the 20- year term.
     

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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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     029-Q02.TXT
     The majority of the Committee did not object to the PTO's adoption of
     a standard application format. It was suggested that the PCT format
     would be suitable. Consideration should be given to the submission of
     the data in electronic form such as on a diskette, in a manner
     similar to that used for the submission Sequence information. 

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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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     029-Q03.TXT
     If the entire application is not published, the minimum information
     that should be included would be the title of the invention, the name
     of the inventors, the application number and filing date, the
     broadest claim, a drawing, an abstract of the invention and, if
     applicable, the assignee's name and an identification of other
     application(s) which are relied upon for priority. 

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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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     029-Q04.TXT
     Yes.

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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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     029-Q05.TXT
     Yes, the PTO should permit accelerated examination under the criteria
     currently set forth in 37 C.F.R. S 1 102 (advancement of
     examination). The PTO should strive to reduce the pendency for first
     actions in all cases to a period of time which is sufficiently early
     so that the applicant can determine whether or not to withdraw the
     application from publication.
     
     For PCT applications, the examiners are already familiar with
     procedures for accelerated searching of an application for the
     purposes of providing the international search report. Consideration
     should be given for a similar operation for the publication
     requirement of U.S. applications when initial Office Actions are not
     available prior to the publication date. The applicant should
     have the benefit of a patentability search by the Examiner prior
     to the date upon which they must decide whether to withdraw the
     application from publication.

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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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     029-Q06.TXT
     The publication fee should be built in to the filing fees and not
     separately charged at a later time. The publication fees should be
     relatively low compared to those for publishing the patent deeds. 

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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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     029-Q07.TXT
     The PTO should require an affirmative communication from a patent
     applicant when the applicant does not wish for the application to be
     published. This should be done in a manner similar to that of the PCT
     where a communication must be submitted at least two weeks in advance
     of the anticipated publication date when an application is to be
     withdrawn. 

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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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     029-Q08.TXT
     In order to avoid the delayed publication of an application due to
     the delayed filing of a claim f or priority under 35 U.S.C. S 119 or
     120, the PTO should require that a claim for priority should be made
     sufficiently early so that the publication can be made by the
     eighteenth month from the earliest priority date. A specific time
     period (such as 15 to 17 months after the earliest priority date
     claimed) should be set as the latest date for filing such a claim.
     Upon submission of a priority claim, the applicant should also
     include substitute document which is properly formatted with the
     publication information. Priority or benefit should be lost if the
     claim is not made within this time since it would appear to be more
     than sufficient for an applicant to determine whether such a claim
     should be made.
     
     The PTO should permit late claiming of priority or benefit by way of
     a petition provided that the documents are submitted in time for
     publication by the eighteenth month. 

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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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     029-Q09.TXT
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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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     029-Q10.TXT
     ࡱ
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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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     029-Q11.TXT
     Yes.

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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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     029-Q12.TXT
     Yes.

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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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     029-Q13.TXT
     No particular types of problems are anticipated by the submission of
     amendments with substitute pages for the specification and claims. If
     such changes are extensive, submission of a substitute application is
     not unreasonable and is sometimes done at present via the submission
     of a substitute specification to facilitate printing. 

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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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     029-Q14.TXT
     Protest procedures should be modified to permit third party
     submission of prior art within a specific period after publication of
     the application (two to three months). To do otherwise would allow a
     third party to unduly delay the examination and issuance of the
     patent. Untimely submissions should be returned to the submitter with
     a notation - that such documents could be resubmitted by way of a
     reexamination request after the issuance of the patent. 

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GENERAL COMMENT:
    No comments supplied

Last Modified: March 1995