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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