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FROM RESPONDENT 046:
NAME:
COMPANY: PETREE STOCKTON, L.L.P.
ATTORNEYS AT LAW
ADDR-1: 1001 WEST FOURTH STREET
CITY, STATE ZIP: WINSTON-SALEM, NORTH CAROLINA 27101-2400
TELEPHONE: (910) 607 7300
FAX: 910) 607-7500
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:
Under current practice, application-related materials may be filed with the central mail room or hand-carried or sent via facsimile to the various examining groups. An advantage of delivering materi als directly to the examining group is that materials reach the examiner in charge of the case more rapidly and thus can be provided, for example after an Interview, when the application is fresh In the examiner's mind. In addition, for practice under Rule 116 (after final). it is advantageous for application-related materials to reach tine examiner as quickly as possible in view of the shorte ned statutory time limits after a final office action. A requirement that mail be delivered to a central location would disadvantageously affect current practice in at least these two areas by delay ing the receipt of mail or application-related materials by the examiner, and prevent spontaneous resolution of matters by the Examiner, Thus, if a central location system Is adopted, there needs to be a parallel system that permits delivery to an Examiner.
Moreover, if the Patent Office adopts a procedure wherein all incoming application-related materials are electronically scanned for inclusion In a central database, it is believed that the scanning operation will add unavoidable delays to the process of prosecuting the application. A possible solution to all of the concerns raised herein would be for application-related materials to be sent to a central data capturing facility after their consideration by the examiner. For example, after an examiner receives an amendment and issues a Notice of Allowance or 3 final Office Action, the exam iner could send the amendment and the Notice of Allowance to the data-capturing facility for entry into an electronic database. Of course, the disadvantage with this approach would be that the elect ronic database would not be current.
If a central location system is adopted, there also needs to be a parallel system that permits simultaneous delivery of a copy to the Examiner.
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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:
Requiring that all applications conform to a standard paper size, print size and margin size will facilitate the creation of an electronic database end assist In the PTO's handling of applications f or other purposes, e.g., publication of an application, imprinting of a patent. For these reasons; we do not have a strong objection to the adoption of a standard for these Items, In addition, the P TO may wish to adopt standardized transmittal papers and/or declaration and power of attorney forms. However, the PTO is urged not to require standardization of the content of an application.
In addition. the Patent Office is urged to continue to assign filing dates to applications under 35 U.S.C. s.111, whether the application as filed meets the established required standard format. It is believed an appropriate surcharge for the late filing of an application and standard format should be equivalent to those currently specified under the rules for late filing of such items as the filing fee and/or the oath or declaration
It would be helpful to practitioners if the standards for paper size, print size. paper margins and the like, adopted by the PTO, were similar to those already adopted by WIPO and the EPO. This woul d permit an application to be filed worldwide without the need for reformatting.
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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:
There is substantial disagreement among members of the Bar on the issue of whether patent applications should be published and/or patent application files made publicly available.
An approach favored by the Bar is to make publication optional at the applicant's discretion. To encourage applicants to publish under this approach, the full application including the claims would be published, and applicants would be entitled, if a patent subsequently issued on the application, to obtain damages from the date of the publication, It Is recognized by the members of the Bar tha t this approach will require amendments to several sections of Title 35, United States Code, relating to prosecution of patent applications and relating to Infringement of issued patents. However, t his approach will partially harmonize the U.S. system with current practice In Europe.
Assuming that the foregoing approach is not adopted, and assuming that the entire application is not published, we believe that the following bibliographic data relating to the application should be published:
serial number;
filing date;
title of invention;
Inventors;
assignee, if any;
group art unit;
examiner;
representative drawing; and
abstract.
This information could be made available in an "Official Gazette" of patent application notices. This Gazette could be a weekly publication along the lines of the current Official Gazettes.
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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:
The patent applicant should receive a copy of whatever is published by the PTO). This will enable the applicant to maintain accurate and complete files on the 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:
The current accelerated examination procedure (MPEP, 708.02, 37 CFR 1. 102) should be maintained by the USPTO. If the PTO plans to adopt a new accelerated examination procedure, the PTO is urged to require a large fee (significantly greater than 2,000) for applications that do not meet the current conditions under 37 CFR 1 .102.
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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:
As a preliminary matter, it is noted that the PTO's costs for publishing applications could be recovered from a direct appropriation or from the sales of copies of published applications, and not fr om user fees.
However, If the cost is recovered from user fee separate publication fee should be required. ;This publication fee could be designated as a separate fee, but collected at the time of filing an appli cation in the same manner currently utilized to collect the filing fee. See also the answer to question 3 and the answer to question 7.
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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:
If the publication fee is collected as suggested In our response to question 6, the PTO should require an affirmative communication from a patent applicant Indicating that the applicant does not wis h the application to be published. Upon receipt of such communication, the previously paid publication fee should be refunded to the applicant and the application deemed abandoned.
As indicated in the response to question 6, late submission of a publication fee could be handled utilizing the procedures currently in place for the late submission of a filing 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:
It is suggested that the PTO require a claim for priority under 35 U.S.C. 119 or 35 U.S.C. 120 be made within three months of the actual filing date of the application or fifteen months from the pri ority date of the application, whichever is later. Failure to claim priority should result In the applicant losing the benefits of priority. The PTO may wish to permit some latitude in the three mon th date provided sufficient time for publication of the application at the "normal" time (e.g., 18 months from the priority date) would remain after the priority is claimed.
As an alternative to complete 1035 of priority rights, the PTO could allow a priority claim to be made at any time, but have priority only extend back for a period of fifteen months prior to the dat e of filing of the priority claim. For example, if a foreign patent application is filed on February 1, 1996, and a priority claim under 35 U.S.C. s. 119 is made in a corresponding U.S. application on December 1, 1997, the effective "priority date would be September 1, 1996 (fifteen months prior to December 1. 1997).
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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:
Whatever is published, e.g., a published application and/or publication notice should remain in the search files. The publication information should also appear on the issued patent. There needs to be a permanent accessible record of what was published on the publication date, for purposes of 35 U.S.C. 102, etc.
The PTO should consider adopting a system similar to that utilized by the European Patent Office and the patent offices of other industrialized nations, wherein a letter designation Is used on a doc ument to indicate whether the document is a published application or a patent. For example. the letter WA could follow the serial number for a published application. The document could then be repri nted with a patent number when it Issues as a 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:
As Indicated in the response to question 3, a suggested approach to the Issue of publication of patent applications is to make publication optional, and provide an applicant who decides to publish h is or her application the right to collect damages from the publication date if the application subsequently issues as a patent. If the necessary statutes and regulations are modified to permit this enforcement right, the PTO should grant access to the complete application file, If a system of publishing applications is adopted which does not include any enforcement rights, members of the publ ic, other than the applicant and his or her designated representatives, should not have access to the application file,
If any access is to be granted to application files, the access should not be limited to the content before publication. Rather, it should extend to the complete contents of the application file up until allowance or abandonment.
However, It Is believed that allowing unlimited access to application files would unduly interrupt the examination process. Thus, If access to the application file is to be allowed by any interested member of the public, it is recommended that the PTO establish a duplicate file system wherein the examining group maintains one copy of the file to which no access is permitted and a separate copy of the file is maintained In a place where it can be retrieved for public access. Although a duplicate file system is likely to create numerous administrative headaches for the Patent Office, it Is believed that allowing members of the public complete access to the examiner's file copy of an application would likely create more headaches and destroy the Integrity of the examiner's files.
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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. assignment records of the published application should be made accessible to the public. In addition, as indicated in a prior response, the assignee of record, if any, should appe ar on the published application and/or in the publication notice.
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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:
If access is to be granted to the application file, such access should Include the right for interested members of the public to examine the deposit of biological materials required by 37 CFR 1.802 et seq. If granting access presents logistical problems, or file integrity problems unique to the deposit of biological materials, the PTO should consider implementing a procedure where access is al lowed after a petition and fee are filed with the PTO.
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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:
It is believed that the examiner will encounter problems determining the changes made in the substitute paragraph and claims and/or substitute pages. Current practice emphasizes the amended language enabling-the examiner to focus on the changes made by the amendment. Substitute paragraphs and claims will hinder the examiner's ability to focus on the changes.
One way of overcoming this problem would be to continue to use the current procedure for amending claims and presenting amended claims to the examiner, However, after the examiner indicates that the claims and application are in condition for allowance, substitute pages could be filed.
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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:
Third party submission of prior art should be allowed at any time prior to Issuance of the application. Current re examination procedures should also be retained.
In order to encourage a third party to submit prior art In a timely fashion for consideration by the examiner, the PTO could adopt rules for the submission of art by third parties similar to those a dopted in 37 CFR 1.97 and 1.98 for the submission of prior art by applicant, utilizing the publication date instead of the filing date. For example, a third party would be freely permitted to submit prior art up to three months after the publication of the application. After the three month date, the third party would be required to certify that the art had just come to their attention and/or be required to pay a fee. Submission of prior art after Notice of Allowance has been issued In the application would require a petition and very large fee.
No matter what system is ultimately adopted by the PTO, the applicant should be notified of any third party submissions to the examiner. This could be accomplished by requiring third party submitter s of prior art to provide a copy of the documents filed with the examiner to the applicant and to certify the same utilizing a certificate of service procedure.
In addition, no presumptions should attach to art submitted by third parties, or to art not submitted by third parties. The submission of art should be optional and entirely within the third party's discretion. If necessary, the current disclosure rules should be modified accordingly.
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GENERAL COMMENT:
No comments supplied
Last Modified: March 1995