Comments from unknown

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FROM RESPONDENT 044:
     NAME:
     COMPANY:  BROWN MARTIN HALLER & MCCLAIN
     ADDR-1:   1880 Union Street
     CITY, STATE ZIP:    San Diego, California 92101-2928
     TELEPHONE:     (619) 238-0999
     FAX: (619)238-0062
     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:
     I do not believe that requiring delivery of all application-related materials to a central location would be feasible. Many amendments and affidavits are now filed by facsimile directly with the Exa     mining Group or are hand delivered to the Examiner, commonly In connection with an Office Interview. Having to submit those documents initially to a central location for input into a database would      prevent expediting responses via the facsimile and hand-delivery procedures.
     
     Entry into the database for papers filed by facsimile or by hand could be best accomplished by having an internal PTO procedure under which any facsimile or hand- delivered document, after considera     tion by the Examiner, would be routed promptly to the data input group. 

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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:
     The proposed publication option B.1.ii. appears to be the most appropriate. However, I suggest that both a claim and the abstract should be published. While a broad claim Indicates the Applicant's r     equested sonpe of invention, the Abstract supplements that with Important ancillary information about the invention, such as proposed uses, method of manufacture, materials, etc., which are not evid     ent from the claim but which are part of the application's disclosure. In addition, It would be helpful If the name of the attorney or agent was also published so that one would know whom to contact      for additional Information. 

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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:
     I submit that a separate publication fee, required at the time of the filing of the application, will be the most appropriate and convenient for both the PTO and the Applicant. Since Applicants prio     r to filing will be aware that their applications will be published, very few can be expected to file an explication and then abandon It a few months later simply to avoid publication. Probably the      only time that an application will be abandoned prior to publication will be if a continuation or CIP is filed. and that can be expected to be only a very small minority of cases. Consequently inclu     ding a publication fee in conjunction with filing of the application will be appropriate and easily administered.
     
     If payment is not required until closer to the deadline for publication, the schedules for publication and printing will quickly become disrupted, since if a payment is not timely received, it will      not be clear to the PTO whether the Applicant Intends to allow the application to become abandoned or whether the Applicant Is simply late in making the payment. Conversely, If payment is required a     t the time of filing of the application, any late payment problem can be dealt with by the current procedures for allocation of insufficient filing; fees and resolved long before the application rea     ches its publication date.
     
     For those few cases where the Applicant does decide to withdraw the application prior to publication, this Applicant can then request refund of the prepaid publication fee and the PTO's normal refun     d procedures can accommodate those requests. In this regard, and since the number of applications withdrawn will be expected to be very small compared to the number of publications, it would appear      to be in the best interest of the PTO and the Applicant that a paper be required to be filed only to make a positive request for withdrawal from publication. 

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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:
     In view of the fact that competitors and others are likely to take specific actions and commit funds for projects based on the information in the file at the time of publication, I believe that it i     s imperative that all relevant Information, Including Claims of priority under sections 119 and 120, be In the file upon publication, if the Applicant intends to claim the benefit of such priority.      It would be inappropriate to allow an Applicant to mislead competitors or other readers into believing that the application's filing date is the only relevant date, and then subsequently "sandbag" t     hose readers by belatedly producing an earlier dated priority claim. If necessary to accommodate some applications, the PTO could require early statement of the priority claim, but allow for deferre     d filing of proof of that priority (i.e., certified copies of priority applications).

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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:
          Once publication has occurred, third parties should be able to inspect the entire file at any time, in the same manner that one can do with an issued patent. Publication will be of little use t     o anyone if third parties realize that an application may still be materially amended after publication. This will be particularly true in those areas where the application pendency period is partic     ularly long, such as blotochnolosy and computers.
     
          This poses no hardship on the Applicant, since once the application has been made public, the Applicant can have no further reasonable anticipation that later- submitted amendments, affidavits,      etc., will be accorded a confidentiality that the earlier part of the application no longer has.
     
          The purpose of the 18-month publication is to bring the described technology to the attention of the field at an early date, rather than being held confidential for many additional months as ha     s been the past practice. That being the case, there is no good reason to publish the application only as It existed at one point in time, and to ignore further developments or filed documents.

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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:
     There seems to be no good reason why the assignment records should not also be made public. As a practical matter, for many applications the Identity of the assignee evident from the published appli     cation file, particularly where the Applicant 18 an employed Inventor and the attorney of record is house counsel for this Applicant's employer. 

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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:
     The considerations with respect to a biological deposit is not as straight-forward as with an assignment record.
     
          On one hand, one can argue that the only purpose of obtaining access to a biological deposit is to enable one to begin research or development work using that biological material as the startin     g point or to recreate the claimed Invention, since the deposit is required for enablement under Section 112. However, the same argument can be made in areas outside of biotechnology. For instance,      a third party having access to other types of published patent applications will have sufficient enabling to recreate the non-biological invention. Thus having access to the biological deposit would      simply put biotechnology third parties in the same position as third parties in the other technical fields. With this In mind, therefore, I think it would be appropriate to have the biological depo     sits also become accessible to interested third parties.

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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:
    No comments supplied

Last Modified: March 1995