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FROM RESPONDENT 047:
NAME: Joanne Hayes
Director of Patent Law Reform
COMPANY: UNITED INVENTORS ASSOCIATION
OF THE UNITED STATES OF AMERICA
ADDR-1: 4850 Galley Road, Ste. 209
CITY, STATE ZIP: Colorado Springs, CO 80915
TELEPHONE: (719)573-4540
FAX: (719)573-4679
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:
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 members of the United Inventors Association of the USA are firmly
opposed to the publication of patent applications at 18 months after
filing.
The UIA-USA is also vehemently opposed to the concept that, should
18-month publication become part of U.S. patent law, the "clock" would
begin ticking on the filing date of the provisional patent a
pplication.
The UIA-USA opposes 18-month publication for several reasons.
First, the Patent Office proclaims that the pendency time of the
majority of patent applications is 18 months. If this is correct, then
what is the advantage of publishing the minority number of app
lications?
Second, the pendency time of patent applications for breakthrough
technology inventions is more than 18 months. The idea of exposing new
technology for the world to see before the patent application issues
puts the inventors at an extreme disadvantage and is certainly not in
the national interest. During the prosecution period, which may last
several years, the inventor could be producing and selling his
invention marked "patent pending." In most cases he would be free to
have an exclusive market because the "invention" may not be readily
apparent. If, however, the U.S. Patent and Tradem ark Office publishes
the invention at 18 months, the exclusive market -and the resultant
exclusive revenues-would be easily diluted by competitors. How can the
Patent Office consider publishing brea kthrough technology and putting
America's inventors at such a disadvantage?
Third, proposing early publication of patent applications as a way to
eliminate the so-called "submarine patent" is nothing more than a red
herring. The U.S. Patent and Trademark Office has within i ts scope of
authority the ability to implement procedures that would prohibit undue
continuations. Also, H.R. 359, introduced in the 104th Session of
Congress, provides for publication at 60 months to eliminate the
possibility of undue continuations. This is the practical and
responsible response to solving the perceived problem of submarine
patents; early publication is the coward's way out o f assuming
responsibility for control of the flow and timing of patent
applications.
Fourth, on the very practical level, who is going to pay for the early
publication of patent applications? Since the Patent Office is mandated
by Congress to be self-supporting, the UIA-USA assumes that this
additional financial burden will be borne by the patent applicants. The
UIA-USA is opposed to placing additional fees on independent inventors
who are already overburdened by the existing patent fees.
Fifth, is the Patent Office prepared for the additional burden early
publication would present?
On the issue of starting the 18-month clock ticking on the date of the
filing of the provisional patent application:
First, this proposal has absolutely nothing to do with "harmonization"
as there is no country in the world that publishes patent applications
six months after they are filed which is what would happ en if an
inventor files a provisional patent application and, at the end of a
year, files a complete application. Can the U.S. Patent and Trademark
Office seriously consider publishing patent applic ations six months
after they are filed? Is this what you really want to do? Does the
insanity of this proposal not jump out?
Second, by using the provisional patent application filing date as the
beginning of the 18 months, the Patent Office will be publishing a
majority of the patent applications and, therefore, adding a dditional
fees to the majority of applicants. Again, does this make any sense at
all?
Third, the UIA-USA views such early publication of patent applications
as an insult to a proven system of maintaining the secrecy of patent
applications. It will, by definition, force many inventors to keep
their advancements secret and will support the concept of trade secrets
as opposed to patents. This is in direct opposition to the spirit of
America's patent laws which encourages dissemina tion of knowledge for
the long-term benefit of society while rewarding inventors' efforts for
a limited term.
The United Inventors Association of the USA would like to go on record
as supporting efforts to harmonize patent laws internationally.
However, the UIA-USA cannot support and will strenuously oppose all
efforts and proposals that are detrimental to the success of the
independent inventor and the economic strength of the United States.
Last Modified: March 1995