Comments from John Peter Kim

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FROM RESPONDENT 045:
     NAME:     JOHN PETER KIM
     COMPANY:
     ADDR-1:   Post Office Box 5814
     CITY, STATE ZIP:    Washington, DC 20016
     TELEPHONE:     (202) 943-5021
     FAX: (301) 564-6640
     REPRESENT:     self
     

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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:
     A central location appears acceptable for most application materials; however, for purposes of the 18-month publication and any 3rd party submissions, a separate window should be made available for      any actions relating to the publication process The 18-month publication period is a fixed period, and as a result, it requires expediency in its execution. Therefore, correspondence and any related      materials affecting the publication of notices or publication of the application itself should be handled/processed on a daily basis with strict time requirements. For example, any materials receiv     ed which affect the published notice or published application must be received in a timely fashion such that any and all modifications will reach the PTO prior to actual publication of the applicati     on All materials received by the PTO should thus be immediately processed and forwarded to the appropriate publication authorities on a daily basis. To avoid these materials being mixed among other      less "time-sensitive" filings, a special receiving station should be provided for these materials. 

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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:
     It would appear that the PTO would ideally wish to move to a "papers office" by the year 2000. The creation of an electronic database mirroring the content of the paper application file would be ide     al as it would provide the PTO and the public with enhanced access to the voluminous data. However, accuracy and compliance with these rules may be difficult to control.
     
     Providing materials in machine-readable format would likely be the most accurate approach in providing precise text. However, the PTO would still be burdened with supporting multiple word-processing      formats, since the plain ASCII-text format does not fully support important enhancements such as superscripting and subscripting, underlining table and column functions, and the like. Furthermore,      with multiple upgrades and differing levels of incompatibility among word-processing products, the PTO wilt be faced with various challenges of reconciling these differences (even if limited to Micr     osoft Word (Macintosh, DOS or Windows versions) or WordPerfect Macintosh, DOS or Windows versions). Also, with different styles and formatting approaches and capabilities engaged by different practi     tioners within a particular word-processing program, it may be difficult to find the perfect means of achieving uniformity.
     
     Ideally, the applicant should only need to provide the PTO with the paper copy of the application materials. The PTO or one of its contractors should then scan the document into its database system      with OCR software. OCR software and the In-house scanning procedure also provides less of a chance that the applicant or patent practitioner may inadvertently provide the PTO with a computer file wh     ich i8 not identical to the application papers as filed.
     
     Unfortunately, there is still some apprehension about the OCR approach because of the difficulties Involved in obtaining a completely accurate and precisely scanned document. As skilled as the PTO p     ersonnel are, we are all only human and we do make mistakes. The best example would be that there are still errors which occur in the issued patents, else we would not have Certificate of Correction     s. Similarly, as far as OCR technology has progressed since it first surfaced, there are still inherent accuracy problems associated with scanning documents.
     
     The best approach might be to contract some commercial vendor to scan documents Into the database system. Certain commercial vendors have made this processing their life's work, and as a result, the     y will take great precautions to be certain it is accurately and reproducibly done.
     
     Also, practitioners may use a smaller type size and spacing to fit more text per page. Accordingly, the precise margins, Line spacing, font size, and so on should be specifically set forth to obtain      uniformity in the application. These specific requirements will enhance the scanning accuracy.

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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:
     I believe that entire applications should be published. However, with respect to notices if entire applications were not published, 1 believe that an Official Gazette (OG) should be specifically cre     ated for Patent Application Notices, serving a similar purpose as the Official Gazette. The annual fee for this Patent Application Notices Gazette (PANG) should be comparable to the subscription pri     ce of the Official Gazette. and thus the subscription fee would hopefully fully cover the printing costs thereof As paralleled in the Official Gazette the PANG should include a representative claim,      a representative figure, as well as the required bibliographic data (e.g., title, inventor's name(s), address(es), etc.), representative, correspondence address, priority claims, and so on. Basical     ly, all aspects published in the OG for the issuing patent should likewise be published in the PANG for the patent application. One addition would be the inclusion of the abstract in the PANG. 

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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:
     I believe that both a published notice and a published application should be provided, but at different time intervals for the sake of expediency of publication.
     
     It was stated that "Based on experiences in the publishing of patents and SIRs, a cut-off time of 15 months from the earliest filing date for which a benefit is sought would be necessary to assure p     ublication at 18 months." However, I believe the application publication should be more similar to PCT publication rather than the actual patent publication scenario. Therefore, the necessary cut-of     f time may be shortened.
     
     The published PANG notice should serve as the cover page of the 18-month publication. Accordingly, this will be the only "commercially printed" page of the publication. The remainder of the applicat     ion publication can be photocopied pages of the application as it stands before the PTO at the 14th-month please note that this would require all amendments to be on submitted on substitute pages, s     uch that photocopying and collating will be easily facilitated
     
      I foresee the applicant as receiving a complimentary proof copy of the published notice at the 15th month, 3 months prior to the publication of the PANG. If there are any errors in the notice, the      applicant is allowed to provide any corrections to the notice before the end of the 16th-month. However. this 16-month deadline should be the responsibility of the patent practitioner and calculated      by each patent practitioner on their respective dockets, not dependent on the receipt of the complimentary proof copy of the published notice. If the applicant does not receive the notice by the 15     th month, the applicant should be burdened with the responsibility to immediately contact the PTO to determine the status thereof.
     
     By placing the burden of responding by the strict 16-month deadline on the applicant and patent practitioner, this would hopefully prevent the patent practitioner from engaging in gamesmanship to de     lay publication. This would allow all applicable notices to be timely published in the PANG by the 18-month period.
     
     Similarly, all correspondence regarding corrections of the notice must be received by a special location at the PTO, dedicated to facilitating the t8-month publication requirement.
     
     As with the OG, the PANG would adequately serve as an 18 month publication to provide notice to the world of this publication. At approximately the 16-month, the patent applicant should receive 8 pr     oof copy of the entire published application. Any corrections should be submitted to the PTO by the 17th month, and the publication would be made available to the public by the 18-month This applica     tion publication deadline would not be as pressing because the 18-month publication of the notice itself would serve as a good-faith showing that the publication deadline was complied with by the PA     NG 

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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:
     An accelerated examination should still be available in accordance with the conditions currently in effect as set forth in 37 CPR 1.102, as described in M.P.E.P. at 708.02 and Petitioning to Make Ap     plications Relating to Biotechnology Special, 1092 Off. Gaz. Pat. Office 55 (July 15,1988).
     
     However, I would suggest that the 18-month publication requirement be similarly accelerated for any patent application which will issue prior to the 18-month date. For example, if a patent applicati     on were filed and receives a First Action Allowance within 6 months of filing, prior to actual issuance of the patent, the application should be required to be published for a period of time (3 mont     hs) before the patent itself issues. Accordingly, a "special request for publication" should be filed within 3 months from the allowance if allowed prior to the 18-month period.
     
     If the applicant or patent practitioner believes the patent will issue quickly, he/she may file a special request for expedited publication prior to the 18-month period and prior to receiving the Fi     rst Action Allowance. In applications which issue after the 18-month period, this will not be pertinent. This pre-18-month publication would allow 3rd party submissions being brought against pending      applications; however, treating all applications with an equal publication requirement seems the most equitable approach and of paramount importance. 

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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 subscription fee to the PANG should cover most of the costs of printing. Also, a separate publication fee should be assessed upon the actual filing date of the application and included with the      initial filing fee to avoid gamesmanship on the part of the patent practitioner. If applications are photocopies of the application materials with the PANG printed cover page (as with PCT publicatio     ns), the publication fee should be assessed based on the number of pages of the application and the number of figures. This fee should be calculated to cover all photocopying costs of the applicatio     n and any related printing costs. To save on publication costs calculated on a page basis, practitioners may use a smaller type size and spacing to fit more text per page. Accordingly, the precise m     argins, line spacing, font size, and 80 on should be specifically set forth to obtain uniformity in the application. These specific requirements will also enhance the scanning accuracy. Please note,      since this publication will be handled by many individuals, the paper quality of the publication should be of the same grade as that paper used for issued U.S. patents. 

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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:
     Again gamesmanship could play a key role in delaying publication. Accordingly, the publication should be a universal requirement for all patent applications filed if they wish to ultimately issue an     d before they issue. The fee should be assessed at the time of filing (e.g., based on the number of application pages and figures) and must be included as part of the initial filing fee. This will a     void late submissions of publication fees and the like.
     
     If the applicant does not wish the application to be published, the applicant or patent practitioner must affirmatively inform the PTO by the 14-month deadline at the special window handling 18-mont     h publications. As noted earlier, this proposal suggests that the application be published as it stands before the PTO at the 14th-month period. Accordingly, the PTO must be officially informed that      the application is being withdrawn from consideration if It is not to be published. If such a request is timely received by the 14-month deadline, then the PTO should refund the publication fee. 

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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:
     Since foreign applications are generally filed within 12 months under the Paris Convention, the maximum amount of delay should be by the 13th month of the claimed priority or within 3 months of fili     ng whichever is shortest. This would allow the application materials and information to be complete and ready to be processed by the 14th- month If a claim for priority is made after the 13-month ti     me, then priority should be completely lost to the actual filing date unless there is an intervening application to which the application may claim. For example, an application is filed on June 6,19     97 as a continuation of a divisional application filed January 1, 1997 which was a continuation of an application filed June 6, 1996 If claim to the June 6, 1996 date is not made by July 6, 1997, th     en the June 6, 1996 priority is lost; however, claim may still be made to the January 1, 1997 date until September 6, 1997 (3 months from the June 6, 1997 filing date). Due to the strict time constr     aints of publication, very little latitude would be provided. 

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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:
     Publication information should absolutely be included on the issued patent. Also, a copy of the published application should always be maintained in the application file wrapper itself even after is     suance of the patent.
     
     However, a paper document containing the PANG information should not be included in the present search files. Removal of such PANG notices from each of the subclasses of the patent shoes upon issuan     ce of the patent would be too tedious and complex to effectively keep track of, especially since the integrity of the shoes themselves are currently not perfectly ideal. Rather than attempt to integ     rate the publication system as a continuous "addition and removal" in the current systems we should treat the publication as a separate step of the patenting process.
     
     Initially, it will incur some expense to start a separate "Publication Search Room" (PSR); however, in the long term, this would seem the most economical and efficient approach It would not require      placement and removal of PANG notices in the old public search room.
     
     Unlike the present search room, I envision the Publication Search Room as a computer-assisted searching facility. The publications will not be filed in classes and subclasses, but rather, a library      of publications in numerical order similar to the foreign patents library will exist. There should be 2 copies of each publication in the library holdings; the circulating copy which Is bound, the p     hotocopying copy which is only handled by the library personnel.
     
     Access to these documents will be limited to the PSR facility, and similar to the Library of Congress, documents should be requested at the library desk By limiting access through requests and libra     ry personnel, this will maintain the integrity of the publication library.
     
     There should be a reading area provided for reviewing the circulating publications. If photocopies are required, the library personnel should be provided with multiple highspeed photocopiers with au     tomatic sheet feeders to provide the photocopies. By limiting the disassembly and reassembly of publications, there is less a chance of papers disappearing from the PSR Alternatively, a microfiche o     r C>ROM printing system may be provided.
     
     In order for the PSR user to effectively access the publications, he/she will need to know the publication number (e.g., obtainable from the PANG) or he/she will need to conduct a computer search of      the published materials. Accordingly, the PTO will need to establish a database capable of full text searching of publications (APBs), similar to the ASP System in the patent public search room. Ho     wever, there should not be any fees associated with using the computers to search these published applications. These publication documents should be "publicly accessible" and should not Involve any      fees to the user. Since the publications will not be classified in classes and subclasses in the PSR room, the only way to research these will be through the APBS.
     
     To avoid abuse of the APBS system, all published applications which issue as patents should be removed from the APBS, such that users will not attempt to bypass the ASP search fees and tie-up the AP     BS computers searching for Issued patents. 

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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:
     At this point in time, after publication, I believe that access to the file by 3rd parties should not be allowed until after a patent actually issues or unless the application is specifically refere     nced in a published patent The 18-month publication represents the full text of the application. Accordingly, sufficient information is provided to any interested individual as to the potential scop     e of any patent which could issue from this publication. Obviously, the claims could differ from the published claims, but the text of the publication provides sufficient basis and notice to the wor     ld as to what is disclosed and potentially claimed.
     
     Furthermore, to allow limited access to certain information in the file wrapper would necessitate establishing a "file wrapper before publication" and a "file wrapper after publication" which -would      involve a great deal of doubled work for the PTO. This would need to be done to establish this "publicly available file wrapper". There would also be a great possibility of associated file wrappers      becoming separated and lost. Maintaining a single file wrapper would be the most efficient and safest approach. 

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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:
     Assignment records at the 14-month period should be published on the PANG to indicate the ownership of the application at publication. However, there does not appear to be a great public need for th     e assignment records to be made immediately and fully 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:
     Access to the deposit of biological materials as set forth in 37 CFR 1.802 et seq. should be maintained as it stands with respect to the patent itself. 

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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:
     Based on publication being a photocopy-type approach as noted in response Question #4 above, Option (b) would seem the most efficient approach. Option (a) would require a great teal of re-working an     d typesetting of information to incorporate the substitute paragraphs and claims into the application, and Option (c) seems wasteful Basically, the specification text should be on separate pages fro     m the claims and the abstracts should likewise be on a separate page. 

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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:
     Upon publication, there should only be a 3-month period for which 3rd party may submit prior art. This 3 month period will allow any 3rd party to have enough time to obtain a copy of the published a     pplication, review it, and submit any prior art it feels 18 relevant to the validity of the patent application The file wrapper itself, however, should not be open to the 3rd party. Also, a fee shou     ld be required of any 3rd party wishing to challenge a publication. The fee should minimize frivolous filings and undue delay of a patent from issuing. The only correspondence which should be provid     ed to the 3rd party i8 an acknowledgment from the Examiner that (i) the 3rd party submission has been received, (ii) it is in the proper form, and (iii) it will be considered. Also, the Examiner sho     uld provide a copy of the 3rd party submission to the patent applicant. Any prior art will be deemed included in the recitation of prior art on the front of the issued patent.
     
     If such actions are not filed timely, these 3rd parties should be limited to challenge the patents validity after issuance. 

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GENERAL COMMENT:
     Patent Prosecution, Publication, and Gamesmanship
     
     There always seems to be an element of gamesmanship among patent practitioners With the 20 year patent term from the effective filing date and the proposed 18 month publication requirement, there ma     y be a number of practitioners who will work towards getting the patent application allowed before the 18 month date and avoid the publication completely. Also, choosing a priority date will also pr     ove an interesting tactical matter where multiple priorities are possible
     
     For ease of reference, I have provided my comments in question/comment format since the proposed rule making publication provided 14 questions to which the public might respond. 

Last Modified: March 1995