Comments from Anthony T. Lane

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FROM RESPONDENT 042:
     NAME: Anthony T. Lane
       Chairman, Armed Services Patent Advisory Board 
     COMPANY: DEPARTMENT OF THE ARMY
       OFFICE OF THE JUDGE ADVOCATE GENERAL 
     ADDR-1: 901 North Stuart Street 
     CITY, STATE ZIP: Arlington, VA 22203-1837
     TELEPHONE: (703) 696-8120
     FAX: (703) 696-8116
     REPRESENT: company
     

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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 defense agencies will be reviewing selected provisional Applications for secrecy order purposes and will then have to again review the complete application when the complete application is filed     . If one assumes that 40S of the patent applications will have related provisional applications, then our workload will increase by approximately 40%. To assist us with this increased workload, we r     ecommend that the USPT0 require all applicants to specifically indicate any changes made to the provisional specification in the complete patent application by means of the conventional underlining      and brackets. We also recommend that a secrecy order automatically be imposed by the USPT0 on any patent application where a secrecy order has been imposed on the corresponding provisional applicati     on, and that a copy of the patent application be sent to the agency that recommended the secrecy order on the provisional application. By automatically placing a patent application under secrecy ord     er where the provisional application i8 under a secrecy order, the application would not be published 18 months after the filing date of the provisional application. The application would not, if ev     er, be published until the secrecy order i8 removed. If the application is allowable at the time the secrecy order i8 removed, the patent application would not be published since the patent would is     sue.
     
     While the 18 months publication should not create a problem it the complete application based on a provisional application that is under secrecy is also immediately placed under secrecy, the 18 mont     hs publication will definitely create a problem when a complete application filed 12 months after a provisional application that is not under a secrecy order contains additional material that will n     ecessitate a secrecy review. It is our understanding that the USPT0 will send such an application to the publisher 90 days after the filing date. If it takes the USPT0 one month to process the appli     cation and send a copy to the defense agencies for review, the defense agencies will have only two months to review the application and either clear the application or impose a secrecy order. The de     fense agencies absolutely cannot review an application for secrecy order purposes in two months. For some applications, we have problems meeting the current 6 month time period. We recommend that th     e USPT0 seek legislation, if necessary, that will withhold the publication of a complete application, sent to the defense agencies for secrecy review for at least 6 months after the filing date and,      preferably, until the application is cleared by the defense agencies.
     
     The defense agencies also object to the 20 year term with 5 year extension for applications placed under secrecy. The defense agencies currently have a Substantial number of applications under secre     cy for more than 5 years, particularly those under seal. In fact we have some applications under secrecy for more than 25 years. We are deeply concerned that the defense agencies may be liable for s     ecrecy order damages if we maintain a secrecy order for more than 5 years. Further, we are certain that there will be a significant increase in administrative claims and suits if we keep an applicat     ion under secrecy for more than 5 years under this new system. We recommend that the USPT0 seek legislation that will set a patent term of 20 years from the earliest filing date or 17 years from the      issue date, whichever is longer, for any patent application placed under secrecy. The 20 year term from the earliest filing date plus the S year extension for applications placed under secrecy coul     d conceivably result in the expiration of the patent term while the application is under secrecy. 

Last Modified: March 1995