Comments from Jeffrey H. Ingerman

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FROM RESPONDENT 035:
     NAME:	Jeffrey H. Ingerman
     		Reg. No. 31,069
     COMPANY:	Fish & Neave 
     ADDR-1:	JHIngerman@aol.com 
     CITY, STATE ZIP:	
     TELEPHONE:	
     FAX:	
     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:
    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:
     These comments are in response to the Request for Comments at 1177 OG
     390 et seq., in which the Patent and Trademark Office solicits
     comments on the implementation of expected legislation requiring
     publication of a pending patent application within 18 months of its
     earliest effective filing date (35 U.S.C. =A7 119 or 120). The
     undersigned, a partner in the intellectual property law firm of Fish
     & Neave, is submitting these comments based on the questions at the
     end of the Request for Comments, although not all questions are being
     addressed.
     
     The Patent and Trademark Office is contemplating requiring all papers
     to be filed in a central location, to facilitate data capture for an
     electronic application file. I believe that this will prejudice
     patent applicants by delaying issuance of patents, by eliminating the
     ability to direct a communication directly to an Examiner to hasten
     prosecution. The alleged justification for this change in practice is
     that procedures that allow decentralized filing will result in some
     data not being captured.
     
     I respectfully submit that substantive rights of applicants should
     not be sacrificed for the administrative convenience of the Patent
     and Trademark Office. The Patent and Trademark Office should be able
     to put in place procedures to ensure data capture, and should be able
     to enforce its procedures on its own staff to eliminate missed data
     capture. For example, clerks could be instructed not to physically
     enter into a file any paper that has not been stamped "Entered into
     database" by the data capture staff. If such a paper comes to the
     clerk to be physically entered and the stamp is missing, procedures
     should require the clerk to send the paper (and the file?) to the
     data capture staff. Failure to follow the procedures should be
     grounds for disciplinary action against the clerk. Other schemes to
     accomplish the Patent and Trademark Office's goal without affecting
     applicants' rights could be formulated.
     
     The Patent and Trademark Office is contemplating imposing a standard
     application format. I respectfully submit that there is already a de
     facto standard format among practitioners at least those whose
     clients have substantial foreign filing programs. Specifically, many
     practitioners prepare their United States patent applications in the
     format mandated by the EPO and PCT, in order to minimize retyping or
     reformatting when the time comes to file the application abroad.
     While I have no opinion as to whether or not the Patent and Trademark
     Office should impose a standard, I believe that if there is a
     standard, it should be the same as the EPO/PCT standard.
     
     I have no strong opinion on what should be included in the
     publication/ but I strongly believe that an applicant should receive
     a copy of whatever is published, or, if only a Gazette entry is
     published, at least a notice in advance stating when publication in
     the Gazette will occur.
     
     The Patent and Trademark Office is contemplating requiring that
     claims for priority under either 35 U.S.C. =A7 119 or 120 be made
     within some time certain from the United States filing date, to
     prevent applicants from delaying publication by delaying the priority
     claim. I appreciate the motivation of the Patent and Trademark
     Office, and do not have any difficulty in placing a time limit on
     Section 119 priority claims, where it is the rare applicant who does
     not know at the time of filing that priority is to be claimed. Even
     there, a late claim should be permitted, with immediate publication
     if the 18-month period has passed, and a surcharge to cover the cost
     of the extra processing that would be needed for the immediate
     publication.
     
     However, with respect to Section 120 priority, it is not always known
     in advance that such priority will be claimed. For example, in many
     cases the only way in the prosecution of a second application to
     overcome as a reference a first application having common but not
     identical inventors is to claim in the second application
     continuation-in-part status from the first application. At the time
     of filing of the second application, it may not be perceived that
     that will be necessary and, particularly in view of the impending
     implementation of the 20-year term, applicants should not be
     required to decide in advance that continuing status should be
     claimed where it may not prove to be necessary. The Patent and
     Trademark Office proposal will result in a serious potential loss of
     substantive rights for procedural convenience. In a case such as the
     one just described, the Patent and Trademark Office should simply
     publish the second application as soon as possible after continuing
     status is claimed, assuming that 18 months have already passed from
     the first filing and have not yet passed from the second filing,
     again imposing a surcharge if extra costs are involved.
     
     With respect to assignment data, I believe that at least one purpose
     of 18-month publication is to give notice of potential patents to be
     issued to one's competitors, and if so then assignment data should be
     printed on the publication itself, and the assignment records should
     remain open to prevent assignees from hiding their identities by
     recording assignments only after publication. With respect to the
     form of amendments, the Patent and 'Trademark Office should maintain
     an amendment format that allows, as does the present format, easy
     comparison between an original claim and its amended form.
     
     These comments represent the views of the undersigned and do not
     necessarily reflect the views of this firm.
     


Last Modified: March 1995