Comments from Stephan H. Frishauf

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FROM RESPONDENT 040:
     NAME: Stephan H. Frishauf, Reg. 16,233
     COMPANY: FRISHAUF, HOLTZ, GOODMAN & WOODWARD, P.C.
       ATTORNEYS AT LAW 
     ADDR-1: 600 THIRD AVENUE 
     CITY, STATE ZIP: 
     600 THIRD AVENUE. NEW 
     TELEPHONE: 
     FAX: (212) 370-1622
     REPRESENT: unclear
     

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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:
     Not Understood; the Patent Office is a "central location". The present system with Express Mail service works well. 

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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; the general outline of the arrangement of the specifications, MPEP 608.01a (37CFR 1.77) is excellent, but should not be used as a "straight jacket" into which inventions, qenerated by the human      mind, should be pressed 
     
     Standardization of paper (e.g. A4, and/or 8 1/2 x 11 inches), also for drawings, would be a good idea. Additionally, if new files are established, they should be secured at the left edge and not as      is presently customary at the top side. This would permit double-sided printing (saves paper! and filing space!) and easy legibility as well.

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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:
     All data (application number, filing date, priority if provisional specification, 35 U.S.C. 119, etc.), inventor(s), assignee, and abstract or representative claim, possibly claims if, for example,      article and method. 

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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:
     Yes; first time of publication. Copy of published notice; preferably copy of (3) - above. Permits check for errors! 

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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:
     Yes; six months after filing of provisional, if accompanied by final application; or, in non-priority cases, six months after U.S. application has received application number, subject to an accelera     tion fee (probably around $200-300, 1/2 for small entity). 

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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:
     Cost recovery:
     
     	(a) Separate Publication Fee: No. This will introduce more bookkeeping on part of applicants and attorneys, as well as in the Patent Office, more petitions, more problems.
     
     	(b) Using the Patent Office Estimate of Costs ($14,000,000 -see II, B 4), and estimating 100,000 applications, would add $140 to each application. I would, therefore, suggest that the initial filin     a of any application (provisional or regular) be increased by this estimated amount. Since the publication fee will occur regardless of whether a patent issues or not, and the public receives a real      service by prompt dissemination of new technology (remembering Thomas Jefferson: "to promote the proaress of science and useful arts..."), I would strongly recommend that the cost of publication be      part of the original filing fee and, if the cost to the Patent Office becomes high, the Issue Fee, when the patent is granted (i.e. when the protection to be afforded becomes effective, but the pub     lic no longer needs the information - it has already been made available!). be increased to cover the cost of the notices. 

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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:
     Communication from applicant:
     
     	(a) If applicant does not wish to have his invention published, he should be permitted to withdraw the application prior to a fixed deadline, e.g. eighteen months from the first filing (provisional     , or 119 priority) date.
     
     	(b) Since I am strongly opposed to a publication fee, late submission, then, becomes moot. If, however, in spite of the additional bookkeeping, record keeping etc. costs which will be involved, a p     ublication fee is decided upon, I suggest the same procedure now available for late payment of the Issue Fee, or of Maintenance Fees or the like, be used, for simplicity of administration and confor     mity. 

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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:
     Should priority be lost, if a claim is not made within a reasonable time?: Yes. Priority claims should accompany the application, or be made within three months after filing 

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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:
     Yes.

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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:
     I understand that all applications received in the Patent Office are microfilmed (or, in the future, may be on a CD-ROM). This automatically or electronically retrievable information should be made      available to whoever wants it after publication, upon payment of reproduction charges (at cost, including overhead), eiher on hard copy (paper) or microfilm copy, or by electronic retrieval, electro     nic access or th like. In this way the actual file need not be removed from the art units, and examination is not disturbed.
     
     I am opposed to providing access to material in the file after the original application has been filed, or during examination. If it iss decided otherwise, a stiff petition fee should be charged (an     d no small entity discount) to compensate for any costs arising due to disturbance and interruption of normal prosecution procedures. 

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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:
     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:
     Sorry, I can't comment; I practice in the electrical and electr-mechanical fields and have no feel for the problem. 

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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:
     I would suggest that amendments to specifications be made similarly to claims,by providing subsitute pages with deletions bracketed and additions underlined, for ease of review. If a page cannot rea     dily accommodate such changes, it may be expanded by adding the same page number, for example with a subscript a, b, etc.; or, even better, similar to change notices on engineering drawings, with a      subscript giving the date of mailing of the change. I entire paragraphs are to be substituted, it may be suffucuent to state "cancel page x, paragraph in lines a-b and substitute therefor a new page      containing a rewritten paragraph A ( if longer, perhaps two pages with subscripts, and/or date).
     
     If the entire specification is short, it could be replaced; in many instances, however, this will eventually result in storage problems.
     
     I would strongly suggest that any changes be made of record; otherwise, I could visualize, in litigation, endless fighting about whether a re-written paragraph introduced ''new matter" or a change w     as merely a typographical error. If the Examiner's nose was pointed on it, he could object as "new matter", or for example, or an error could be easily cleared up. A substitute specifications withou     t a showing of what changes were introduced is a loaded gun in litigation.
     
     Note: If the bracketing-underlining changes are adopted, it may be recommended that specifications be written on pages having no more than, say, 25 or 28 lines (one/one half space) so as to be able      to accommodate possible changes at a later time 

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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:
     Protest procedures prior to a specific period? No. 

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GENERAL COMMENT:
     You may consider an additional provision by which the applicant of a provisional specification could accompany the provisional specification with a few provisional claims and, upon payment of a sear     ch fee, request a search (similar to the EPO search, to be available within 6-8 months) to determine whether it is worthwhile to continue with the application as a regular application one year later     , and/or file international cases. A suitable fee may be about 65-75% of the regular filing fee. Such a search report could also be added to the microfilm (CD-ROM) records available for Publication      (similar to EPO practice). 

Last Modified: March 1995