Comments from Joanne Hayes

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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