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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
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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