Comments from unknown

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FROM RESPONDENT 034:
     NAME: 
     COMPANY: AMERICAN BAR ASSOCIATION - SECTION OF INTELLECTUAL
       PROPERTY LAW 
     ADDR-1: 
     CITY, STATE ZIP: 
     TELEPHONE: 
     FAX: 
     REPRESENT: 
     

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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:
    No comments supplied
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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:
    No comments supplied
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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:
    No comments supplied
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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:
    No comments supplied
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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:
    No comments supplied
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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:
    No comments supplied
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GENERAL COMMENT:
     The delivery of all official application-related materials to a central
     location would cause obvious problems in many situations, Many papers
     are delivered directly to an examining group for prompt consideration
     by the Examiner. Delivering these papers to a central location should
     substantially delay their consideration by the Examiner, The PTO should
     consider requiring duplicate copies of all papers submitted to the PTO
     to facilitate accessibility to published patent applications and their
     file or prosecution histories.

     The PTO should adopt a standard application format but only to the
     extent necessary. with minimum standards and requirements necessary for
     the 18-month publication. A bibliographic cover sheet. a de scription
     section. claims, drawings, and the abstract. could all be designated as
     separate portions of the application papers. A standard size of paper
     and certain margin requirements would be accep table also.

     Preferably, the entire application should be printed for ready access
     by the public. especially to assure that the public can ascertain
     possible liability under provisional rights that accrue and to assure
     dissemination of the technology. At the same time. total costs of the
     patent process should be minimized. The possibility of printing the
     application. followed by printing amended claims and corrections to the
     specification when a patent issues (as in the case of Reexamination),
     should be explored. If the entire application is not published in
     printed form as much as possible by way of information concerning the
     application should be published. including at a minimum bibliographic
     data. the claims (especially all of the independent claims), the
     drawings, and the abstracts The rem ainder of the application and the
     entire file or prosecution history should be accessible on publication.
     It is essential that the claims be set forth in the Gazette in order
     for parties to be able to determine whether they have more detailed
     interest in the subject matter. Provisional patent rights are
     associated with published patent applications and are dependent upon
     the claims in the publ ished application (as well as in the issued
     patent}. Accordingly. ready access to these claims and their scope is
     essential to determining what rights may accrue as of the time of
     publication. shoul d a patent subsequently issue. This information must
     be readily accessible or a large number of orders and requests for more
     complete information will be filed with the Patent and Trademark
     Office.

     The patent applicant should receive a copy of the published application
     to assure that it is complete and accurate- particularly in respect to
     the claims and to subject matter which may be keyed for publication.
     OCR entry of data from the patent application in a standard format does
     not assure that the information entered will be complete or that errors
     in data entry will be properly resolved.

     The PTO should permit an accelerated examination under minimal
     conditions. .More particularly, the PTO should assure that every patent
     application has an office action issued before it is too late t o stop
     18 month publication of the application and that accelerated
     examination be automatically granted with no conditions and no fee
     where necessary to assure such timely receipt of a first office action.
     Otherwise patent applications should be accelerated on the same basis
     as under present rules.

     The cost for publishing patent applications. if it is to be recovered
     from fees. should be spread among the various fees presently in
     existence including the filing fee. the issue fee, and maintenan ce
     fees. and in addition, part of the publication costs should be born by
     fees charged for copies of and access to copies of published
     applications. If a separate publication fee is required it shou ld be
     payable at filing but not be due until 15 months from the earliest
     effective filing date or priority date. However, PTO fees should be
     adjusted so that the Patent and Trademark Office does not recoup more
     In total fee income than it expends In the processing of patent
     applications as Is presently the case in connection with fees paid into
     the Patent Surcharge Fund.

     The PTO should require an affirmative communication from a patent
     applicant Indicating that the applicant does not wish the application
     to be published, unless a publication fee is charged. in which case
     either timely notice of abandonment of the application or non-payment
     of the publication fee should be taken as an indication that the
     applicant does not wish the application to be published.  The PTO
     should provide latitude for late submission of a publication fee on two
     grounds, (1) a relatively high surcharge fee for late submission
     without cause within six months of the date that the publication fee
     was due. providing applicant has at least two months notice from the
     PTO regarding the non-receipt of the publication fee and (2} relatively
     low surcharge fee with the late submissio n of the publication fee for
     cause, with essentially the same criteria as apply in the case of
     unavoidable delay petitions on the merits to revive an abandoned patent
     application.

     Claims for priority should be able to be submitted at least up to the
     17-months from the earliest effective filing date or priority date of
     the application. In addition applications should be able t o be
     abandoned up until 17 months after the priority date. as long as any
     fee charged for publication has been paid by the applicant if the
     application is abandoned or the claim for priority is not submitted
     within 15 months from the priority date.

     Once the patent has issued. publication information should be included
     on the issued patent including the text of the claims in the published
     application. There is no reason to keep the paper docume nt in the
     Patent Search files in such case.

     After publication, access to the content of the application should
     include all papers filed in connection with the application without
     limitation. Third parties need to be able to determine as quick ly as
     possible and as completely as possible their potential liability for
     provisional patent rights which accrue with the publication of the
     application. These rights are determined by the claims a t publication
     and the claims In the ultimately issued patent as interpreted by the
     specification and the prosecution history. .Access to the original
     specification and the prosecution history are es sential.

     After publication. assignment records of a published application should
     also be made accessible to the public. since provisional rights accrue
     upon publication. Members of the public need to be able to approach the
     owner in regard to possible licenses relating to published applications
     and in regard to determining rights in published applications.

     After publication. access should include access to the deposit of
     biological materials, to the extent necessary to determine potential
     liability with respect to provisional patent rights, but with s uch
     limitations as, will preserve to the extent possible access which would
     permit use of the deposit by a third party before a patent issues. A
     giveaway of such an ability to the public when injunc tive relief is
     not available would be unfair in the inventor.

     The submission of amendments by substitute paragraphs and claims on -
     substitute pages, or replacements for entire applications. is a
     satisfactory method of operating with 18 months publication. if
     necessary to assure adequate access to applications, If done in a
     reasonable way with reasonable limitations.

     Protest procedures should be modified to permit third party submission
     of prior art only within very limited time periods after publication of
     an application and in such a way as not to delay the ex amination of a
     patent application. Untimely submissions by a third party should be
     returned to the third party and not placed of record in the patent
     application- Protests may be resubmitted for inc lusion in the patented
     file after a patent issues. This is the only effective way of
     preventing the filing of protests from delaying the processing of a
     patent application. With a 20 year term measu red from earliest
     effective filing date. there should be no delay in the issuance of a
     patent. Extensive protest procedures are the kind of procedures and
     delays which the U.S. sought to eliminate f rom the Japanese law
     permitting pre-grant oppositions. This was accomplished in agreements
     which resulted in part in the 20 year term and 18 month publication
     concessions on the part of the United S tates. It would be inconsistent
     as well as unwise for the U.S. to adopt a protest procedure somewhat
     akin to a pre-grant opposition procedure.

Last Modified: March 1995