Comments from Joseph L. Ebersole

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FROM RESPONDENT 043:
     NAME: Joseph L. Ebersole 
     COMPANY: Coalition for Patent Information Dissemination 
     ADDR-1: 2101 Connecticut Avenue, N.W., Suite 63
     CITY, STATE ZIP: Washington, D.C. 20008-1760
     TELEPHONE: (202) 265-9447
     FAX: (202) 265-7126
     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 believe delivery to a central location would cause delays, would substantially increase PTO costs, and would increase the risk of loss of materials. For that reason, we think it would be much mor     e cost effective to publish only the original application as filed in digitized image form. Nevertheless, given the strong interest in access to examiner actions as of the end of the 15th month, it      may be necessary to include amendments to claims, etc., along with the application as filed. This may require delivery to a central location. For data integrity, it is extremely important that each      additional page in an application file be stamped with the application number and that each document or each page be given t sequence number that is visible after scanning. 

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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:
     Bibliographic information should, of course, be included. As to a representative claim or an abstract, Coalition members are split as to which is preferable. 

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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:
     We have no position on whether the cost should be recovered by a separate publication fee or whether the cost should be allocated to application and maintenance fees. However, the best time for paym     ent of any publication fees -- whether included in other fees, or separate -- would be at the time of filing the application. 

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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:
     Assuming the publication costs are paid as part of the application fee or at the time of application, all applications should be published unless the applicant sends notice of abandonment to PTO bef     ore the end of the 15th month. Because costs will be incurred in returning the files as in deleting the digitized images from the cumulating database of application images, there should be no refund     . Indeed, it is possible the costs related to abandonment would be greater than the costs related to publication (Given the fact there will be abandonments within this time period, this suggests the      best medium for making application images available in electronic form will be magnetic tape, because of the ease with which changes can be made in the file up to the last minute. as it were.) 

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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:
     Since the Notice is prior art it should not be removed. Publication information should not be included on the issued patent (i.e., except for the application number and the date of publication). Alt     hough this could result in duplication of some technology in files, this seems better than the alternative of publishing "changes only" at the time of issuance. 

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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:
     Access to examiners file wrapper could expose trade secrets and communications . intended for the examiner only. Thus, to provide any type of public access a separate, parallel file wrapper would ha     ve to be prepared and maintained. This maintenance would have to include numerous decision points related to whether or not a given document should be made available to the public. Because of the le     gal problems and especially because of the tremendous cost to PTO -- scepter ofcreation of additional delays - we recommend access to the file wrapper (other than the application and any other docum     ents made available in digitized image form with the application) not be available until a patent issues. 

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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:
     As recommended in our general comments, above, we strongly recommend that assignment information be made available in electronic form on the day of publication of the application. 

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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:
     A. In order to effectively implement the purpose of l8 Month Publication, the digitized images of applications (and other materials from the file as of the end of the 15th month). should be availabl     e in magnetic tape form in the morning on the day of publication of the Gazette of Patent Application Notices. The need to use magnetic tape as the medium further strengthened by the complexity of m      applications plus amendments documents and integrating them. Also, since publication of the Gazette will require producing electronic files, consideration should be given to making a copy of the Ga     zette available on magnetic tape at a price based on the cost of dissemination. In addition, we respectfully suggest the PTO consider use of SGML files to produce the Gazette.
     
     B. Assignments data should also be made available on the day of publication of the Gazette of Patent Application Notices Since assignments are already maintained in a computer database, it would app     ear this could be accomplished by extracting those records (maintained by application number) for all application numbers to be issued on a given day. However, since applicants do not always identif     y the owner prior to submission of the final paperwork preparatory to issuance of a patent, a new rule should be established by PTO requiring the applicant to identify the current owner as of the en     d of the 15th month. With assignment data available on magnetic tape or diskette, this could be provided as a separate PTO electronic data product on the date of publication. Indeed this would seem      to be the only feasible way to make this information available since it would not be in the digitized image of the application.