Comments from Frederick S. Burkhart

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FROM RESPONDENT 041:
     NAME: Frederick S. Burkhart 
     COMPANY: INTELLECTUAL PROPERTY LAW SECTION
       OF THE. STATE. BAR OF MICHIGAN 
     ADDR-1: 306 TOWNSEND STREET 
     CITY, STATE ZIP: LANSING, MICHIGAN 48933
     TELEPHONE: 517-372-9030
     FAX: 
     REPRESENT: association
     

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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:
     We recommend that application papers be captured when filed and that the remaining papers of the prosecution history be captured upon issuance. This will eliminate the logistics of routing prosecuti     on paperwork through a central location. 

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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:
     The Patent and Trademark Office should adopt a standard application format, including a standard paper size. Failure to comply with the requirements should not jeopardize the filing date, but result      in a fee. 

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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:
     This Committee has no opinion regarding the content of an abbreviated publication because only a full publication is considered acceptable. 

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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:
     Applicant should receive a copy of the published application. 

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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:
     This Committee recommends that the Patent and Trademark Office continue to permit accelerated examination. However, there is a concern that Applicants may perceive a strong advantage to obtaining ea     rly prosecution, not only to determine the advisability of abandoning the application prior to publication but also in view of the patent term being measured from the date of application. The concer     n is that, in examination art groups for which pendencies are already exceptionally long, Applicants with deep pockets may routinely file petitions for accelerated examination of new applications an     d, thereby, increase the pendency for applications of less affluent Applicants. Therefore, it is recommended that the Patent Office consider limiting accelerated examination to cases of actual need,      such as infringement, Applicants' health, and the like. 

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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:
     The cost for publishing applications should first be recovered from surplus funds paid by Applicants that are being diverted by Congress from Patent and Trademark Office operations. Any additional f     ees required for publication should be paid as part of the application fee rather than required at a later date as a separate publication fee 

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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:
     The Patent and Trademark Office should publish an application unless affirmative communication is received from a patent Applicant, indicating that the Applicant does not wish the application to be      published. 

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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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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:
     Under no circumstances should any document published by the Patent Office be removed from the search files without replacement by a more current document. Publication information should be included      on the issued patent. 

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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:
     The question of access to the content of the application file after publication would be significantly less important if the full patent application is published. Full publication of the application      would eliminate the major motivation for access to files. While access to application files may be helpful to guiding the actions of potential protesters, it is expected that the number of protests      will be very small. Furthermore, the ability to file a request for re- examination after issuance significantly reduces, but not necessarily eliminates, the need to file protests. Protests are stil     l advantageous because certain "other information" may be submitted in a protest, but not in a re-examination proceeding. Therefore, this Committee considers that the balance of interest lies in ful     l access to the application file after publication 

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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:
     After publication of the application, the assignment records should be also made accessible to the public. 

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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:
     It is the understanding of this Committee that other countries which publish patent applications at 18 months allow access to the deposit of biological materials upon publication. In order to promot     e harmonization, the United States Patent and Trademark Office should adopt a compatible practice. 

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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:
     This Committee does not see any difficulties if amendments must be made by substitute paragraphs and claims, or by substitute pages. However, replacement of the entire application would be more cumb     ersome to Applicants. 

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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 procedure should permit the third-party submission of prior art only prior to a specific period after publication of the application in order to avoid potential prejudice to the Applicant. U     ntimely submissions by third parties should be placed in the file wrapper without comment. 

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GENERAL COMMENT:
     The Committee strongly urges the Patent and Trademark Office to adopt the practice of the European Patent Office of publishing the entire patent application as filed. Full publication will produce t     he maximum dissemination of information at the earliest possible date. It will support the international effort for harmonization of patent practices by bringing the United States practices more in      line with those of other countries. Full publication will also substantially eliminate any temptation for practitioners to camouflage a disclosure by skewing the title, abstract, and/or claim publis     hed in the abbreviated publication.
     
     While it is recognized that the cost of full publication will exceed that of an abbreviated publication, it is believed that offsetting savings will be realized. If the full application is published      at 18 months, the document could be merely updated, rather than republished, upon patent grant by a substitution of the issued claims for the published claims. A significant reduction in expense fo     r granting access to pending files will be realized if the public has full access to the patent application upon publication rather than requiring access to the file in order to obtain a full disclo     sure. Furthermore, by requiring that applications be submitted in standard application format, a suggestion which this Committee endorses, the cost of printing can be significantly reduced.
     
     An issue not raised in the Patent and Trademark Office Request for Comments is that of provisional rights for owners of published applications. This Committee urges the Commissioner to suggest that      Congress include in its legislation provisional rights beginning on the date of publication to protect the interests of the owner.
     
     Prior to turning our attention to the enumerated questions raised in the Patent and Trademark Office Request for comment, this Committee wishes to address a statement made in the background text. Na     mely, that access fees are being contemplated by the Patent and Trademark Office for copying paper application files or searching and copying information from an electronic database. This Committee      is strongly opposed to any fee to access information which the Patent and Trademark Office is required to supply to the public. 

Last Modified: March 1995