Comments from Richard L. Donaldson

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FROM RESPONDENT 049:
     NAME: Richard L. Donaldson
     Senior Vice-President
     Corporate Staff,
     General Patent Counsel 
     COMPANY: TEXAS INSTRUMENTS INCORPORATED 
     ADDR-1: POST OFFICE BOX 655474 
     CITY, STATE ZIP: DALLAS, TEXAS 75265
     TELEPHONE: 214 995-2011
     FAX: 
     REPRESENT: company
     

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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:
     We would like to retain today's procedures for delivery to the Patent and Trademark Office(PTO). This provides useful flexibility in prosecution. For the future, the PTO should inquire about secure      ways to use electronic mail.
     
     We see no major problems with this. There will be some minor inconveniences for personal delivery. 

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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:
     We agree with requiring bibliographic data and portions of the technical content of the application such as the abstract, claims and drawings being arranged in a standard format. We do not understan     d the question for requiring the entire application being arranged in a standard format. If this refers to the elements of the application described in 37 CFR s.1.77, then we would agree, if the ele     ments were harmonized with patent applications worldwide; otherwise we disagree because of the cost in re-arranging applications from other countries. If this refers to type font, margins, line spac     ing and the like, then we want to see more of the proposal.
     
     We agree with the paper sizes proposed.
     
     We agree with locating the claims on a separate page from the technical description and with special numbering for and/or spacing between each claim. We believe that a separate page for each claim w     ill be unnecessarily costly and bulky. 

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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:
     We agree with the Gazette of Patent Application Notices publishing proposal (ii), something similar to what the present Official Gazette contains for a patent.
     
     We need the Office to publish the entire patent application to provide constructive notice to the world in exchange for post- publication/pre-grant royalties. Affirmatively having to send a copy of      the patent application, which discloses the best mode of the invention, to competitors to get post-publication/pre-grant royalties is abhorrent to most reasonable business people and individual inve     ntors alike. If competitors want to know about the art or what a certain company or individual is inventing, let them become pro-active and spend the resources for a search and study of located art.     
     
     Another reason for publication of the entire patent application is that an applicant can inadvertently describe the invention in obscure drawing figures that poorly depict the claimed matter. An exa     miner going through the drawing figures of the entire published application can see matter that would not be present if a one page publication sheet represented the application in the search shoes.      

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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:
     Yes, a mistake in the publication could affect constructive notice from publication. A copy of the published application should be placed in the application file wrapper, the search files and one co     py should be sent to applicant to complete their files. The application file copy could become a convenient source for fulfilling requests for copies from 3rd parties. Alternately an electronic stor     age could provide copies. 

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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:
     Yes, two ways: 1. by paying a higher fee with no explanation needed and 2. for special circumstances coupled with a lesser fee, such as use in licensing, occurrence of infringement, or that the appl     ication concerns a quickly developing market with no showing of infringement. 

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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:
     We recommend a separate publication fee paid at the time of filing to perfect the original filing requirements. The Office should give a refund of the publication fee upon withdrawal of the applicat     ion from publication. If we are to have publication, it will be the normal case and withdrawals from publication should be the case for extraordinary handling of the application papers by the patent      attorney and the Office. Requiring a separate fee after filing and before publication only increases busywork for the attorney and the Office. 

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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:
     Yes, for the reasons stated in the comments to question 6.
     
     The same latitude as for a late 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:
     Yes. The claim for priority should be made at the time of filing the application, or, with a surcharge, within 3 months after filing or within 1 month after receiving the Filing Receipt. If the Offi     ce makes the mistake that shows up on the Filing Receipt, there should be no surcharge. An applicant may make a typographical mistake in the priority information that does not become known until rec     eipt of the Filing Receipt.
     
     See comments above. 

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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:
     The Office has to balance the cost of the increased storage requirements for publication documents with the cost of personnel to remove the publication document from the shoe at placement of the pat     ent in the shoe. We believe that the publication document should not be removed from the shoes. All publication information be included on the 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:
     It depends on the resulting system. If the system uses pre-grant protest, then we need access to the entire file at all times. If the system uses a post-grant opposition, then we only need access to      the entire file at issue for preparing an opposition and the application can remain secret until issue.
     
     This again is a system question answered above.
     
     This again is a system question answered above. 

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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:
     Yes.
     
     Alternatively, this again is a system question. The assignment records of the application are just as important as the technical content of the application. They give advance notice to the world of      who is doing development work in a particular art. A competitor who misses a protest period, or at any time, can play on the applicant's duty of disclosure by sending the assignee relevant art en ma     sse or piece by piece. The assignee then is duty bound to submit this art to the examiner under an Information Disclosure Statement and may have to pay a substantial fee for its consideration. While      getting the best art before the examiner results in better patents and a better patent system, this opportunity for mischief, and perhaps a requirement for this type of prosecution by competitors,      weakens our present system. 

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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:
     We are not affected by this requirement, but we oppose it as giving away the best mode of the invention without any consideration in patent rights. 

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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:
     The biggest problem will be the inability to identify changes to the specification and claims. Replacement parts for the application need to be accompanied by another copy of the amended section ide     ntifying the changes with underlines and brackets. This doubles the paper bulk of any changes. Without word processing machines, the probability for typographic errors increases. The paper bulk also      increases from an additional page being needed for just a few words that extend beyond the replaced page to avoid also replacing the following page. The burden on the Examiner to prevent new matter      insertions also increases. Lastly, at issue, an additional communication from the Office to the applicant will be needed to confirm that the text is correct.
     
     An acceptable practice may be replacement pages with the changed matter identified with brackets and underlines. This would reduce the work of the Office in making entries on the original applicatio     n papers, keep the volume of paper to a minimum and clearly identify the changes. The replacement pages could also be dated by applicant to maintain a clear paper record of proceedings. The extra le     ngth of one page could flow onto a next page numbered as following the original page, such as page 7 being replaced with pages 7 and 7a. 

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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:
     We depend on a strong patent system that efficiently encourages and facilitates placing the best art before the examiner to attain the strongest patents possible. We also believe the protest system      should be replaced with a post-grant opposition system for any grounds of invalidity, 37 CFR s.1.291 and 1.292. We required this of Japan and we should do the same.
     
     We have been unable to conceive of any system in which the 18 month publication of applications, the present duty of candor and disclosure in Rule 56 including judicial doctrines of inequitable cond     uct, and any protest proceeding under 37 CFR s.1.291 work together. The major problem revolves around the applicant and his attorney becoming known once the application is published. With or without      a fixed protest period, 3rd parties can send to the applicant any art at any time during prosecution. This may be close art or it may be less relevant than the art already in the file and may be se     nt for purposes of delay and harassment.
     
     The applicant and his attorney must file the received art in an Information Disclosure Statement (IDS) with any required fee to meet their Rule 56 duty of candor. They have no discretion in not fili     ng the art; somebody felt the art was relevant and the applicant and his attorney cannot risk withholding the art from the examiner and suffering unenforceability under Rule 56. The fee for filing t     he IDS after receiving the Notice of Allowance also can be a burden to an individual applicant. The 3rd party, who is free of any control by the Office or applicant thus can significantly increase c     osts and delay prosecution and issuance of the patent, to the detriment of applicant, with no risk. In quick changing markets such as software, delaying issue of the patent until after the market ha     s peaked could benefit the 3rd party.
     
     The best way to integrate the three elements is to move any third party protest or prior use proceeding to a post-grant opposition period and modify Rule 56. The judicial doctrine of inequitable con     duct may need to be changed by statute. In this system, Rule 56 is modified to relieve the applicant and his attorney from any requirement to cite art received from third parties. The applicant coul     d safely exercise discretion in citing to the Office art received from third parties to retain some control of prosecution and to avoid having to cite art interposed for mere delay. The applicant wo     uld want to cite art to the Office that strengthens the patent to get a stronger presumption of validity, but could safely withhold art that was of no consequence. The applicant also has actual noti     ce of the art cited by the 3rd party and knows that if he or she does not cite the art to the examiner, the 3rd party will cite it during an opposition where the comments from the 3rd party will be      before the examiner. This encourages citation of material art from 3rd parties.
     
     In this proposed system, a 3rd party would have no incentive to cite art for mere delay or harassment; the 3rd party would know that the applicant did not have to cite art interposed for delay. If t     he published disclosure is narrowly drawn and the 3rd party has anticipatory or close art, then citing the art to the applicant for the applicant to place in the prosecution may prevent any patent f     rom issuing and an opposition is avoided.
     
     In other cases, a 3rd party may want to hold their best art until the post-grant opposition period. One, the claims may be rejected on other grounds and no patent issues, in which case the third par     ty needs to do nothing. Two, claims that issue may be of no consequence for infringement, in which case the 3rd party needs to do nothing. In both of these cases, overall efficiency of the system re     mains high. Three, citing art to applicant during prosecution prevents the comments of the 3rd party from being placed before the examiner; better to wait until opposition where comments from the 3r     d party control the proceedings. This has the end result of the system producing better patents. Four, citing the art to applicant during prosecution lets the applicant polish the claims over the ci     ted art in front of the examiner.
     
     This system of post-grant opposition and modified Rule 56 requirements retains encouraging prompt prosecution of applications, citation of the best art to the examiner and notice and opportunity for      3rd parties to cite their best art to applicant or the Office. It discourages delay of prosecution by 3rd parties while providing a path for the best art to be cited to the examiner throughout pros     ecution. In a publication system, it presents the best way of keeping costs to a minimum for everyone while keeping the U. S. patent system as strong as possible. 

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GENERAL COMMENT:
     We oppose overlaying a system for 18 month publication on our present patent system because it places users of the United States patent system at a disadvantage relative to the rest of the world.
     
     We would agree with a system for publication of patent applications at 18 months after filing, if:
     
     1. U.S. patent law is changed not to require a best mode disclosure;
     
     2. U.S. patent law is changed to modify the present duties of candor and disclosure;
     
     3. there is a meaningful quid pro quo between publication and post-publication/pre-grant royalty rights; and
     
     4. there is no pre-grant opposition of any form, especially in the form of citation by 3rd parties of art under 37 CFR s.1.291 or of prior use under s.1.292.
     
     We like the present U. S. patent system that requires a best mode disclosure of the invention. The reported court decisions fully describe the substantive benefits of having to disclose the best mod     e contemplated by the inventor of carrying out the claimed invention. We also like the present requirements of disclosing art to the examiner during prosecution. Both requirements result in a strong     er patent system that benefits the patent owner and our citizens.
     
     If the U.S. patent system is to be "harmonized" with the patent systems of the rest of the world, either the systems of the rest of the world must be raised to our higher standards for disclosing "b     est mode", requiring a duty of
     
     1. Best mode - Our biggest problem with publication of applications is the publication of the best mode of practicing the invention. No other country in the world requires a best mode disclosure: no     t Japan, not Canada, not Mexico, and not those of Europe. Requiring publication of U. S. patent applications disclosing the best mode of practicing the invention puts us at a disadvantage relative t     o the rest of the world. Eliminating the best mode disclosure requirement however lowers the standards of the U. S. patent system generally. If we must have publication of applications, however, the     n we must eliminate the best mode requirement. We prefer requiring the rest of the world to come up to our level of requiring a best mode disclosure.
     
     2. Duty of candor and disclosure - No other country in the world requires the high level duty of disclosure of art to the patent examiner of the U. S. In practice, foreign applicants, like U. S. app     licants, still want to have the best art before the examiner to get the strongest patent. We all agree that this results in better patents and better patent systems. Foreign applicants bring art to      the attention of the foreign examiner informally during prosecution. They know that withholding material art can lead to not just unenforceability of the patent, but damages against them in an infri     ngement suit. A 3rd party in a foreign country has an excellent opportunity during post-grant opposition to raise material art and invalidate the patent. The 3rd party is encouraged to stay out of p     rosecution and hold any material art until opposition. Modifying the U. S. duty of candor required during prosecution to be in alignment with the rest of the world will help make workable a system o     f 18 month publication of patent applications. See the comments to question 14 for a complete discussion.
     
     3. Publication in exchange for royalties - The publication of pending U.S. utility patent applications at 18 months must be based our best interests in a reasonable expectation of economic gain. The      economic quid pro quo for the granting of patent rights in our system is an enabling and best mode disclosure of the invention. The disclosure occurs after the government agrees to grant the exclus     ive rights. Currently, applicants get the claims they want, pay the issue fee and then the disclosure is published at the grant of the property rights. Publication at 18 months takes from the applic     ant all of the disclosure with no grant of exclusive rights and, based on current practices of the Office and proposals for this system, minimal possibility of post- publication/pre-grant royalty ri     ghts.
     
     The possibility of royalty rights is minimal because the proposed statutes require the published claims to be substantially identical to the patent claims, and require the infringer to have actual k     nowledge of the published patent application. Current practices of the Office will provide a search report after publication in a large fraction of the applications filed; as a result, the issued cl     aims will likely differ from the published claims, eliminating post-publication/pre-grant royalty rights. Also, the applicant must give actual notice to competitors; most business men go to great le     ngths to avoid telling their competitors about their newest developing technology.
     
     A business manager could not see any economic gain in a publication system requiring them to give actual notice of their best technology, including an enabling and best mode description, to every co     mpetitor to enable only a possibility of post- publication/pre-grant royalty rights, if a patent issues and if the published claims are substantially identical to the issued claims.
     
     While corresponding foreign applications have long been published at 18 months, the U.S. applicant still exercises discretion in choosing whether to file foreign applications and accept the pre-gran     t disclosure. The major market for most commercial goods and effectively the only market for enforcing patents remains the U.S. domestic market. Thus an applicant working on a secret project for 3 o     r 4 years presently can choose, to some extent, to keep secret the disclosure of the newest inventions until announcement of the product. This will remain true even after the changes implementing th     e GATT TRIPs provisions come into force. Requiring publication of the U.S. application at 18 months cuts off this discretionary secrecy. This is a situation that occurs today in industry; business m     anagers ask us about it and are worried that their most advanced projects will become public knowledge.
     
     In order to have a meaningful exchange of the 18 month publication of patent applications for post-publication/pre-grant royalty rights, every applicant must receive a report from a good prior art s     earch before publication and have enough time to amend the claims in view of the reported art. If the search is untimely, if the search is poorly conducted, or if insufficient time occurs for study      of the art and amendment of the claims, the quid pro quo for the publication disappears. The inventor is left with his invention fully disclosed and no recourse.
     
     If a good search is conducted, a system that publishes applications in exchange for post-publication/pre-grant royalty rights at 18 months would be acceptable, except for the best mode disclosure pr     oblem, if the search report is sent to applicant 12 months after filing, applicant has three months, extendible for one month for a fee, to amend the claims and the publication occurs at 18 months f     rom filing. If the search report is late, applicant has three months from the date of the search report to amend the claims and the publication occurs three months after that. Considering the curren     t push in businesses worldwide to reduce cycle times and increase efficiency, conducting a good search and sending the search report to applicant a year after filing should strengthen the U. S. pate     nt system.
     
     A problem also arises with using the domestic priority System in a system of publication of applications. All cases filed as provisional applications and then re-filed under 35 USC lll(a) will not r     eceive any search prior to the 15 month cut-off date before 18 month publication. The post-publication/pre-grant royalties become illusory under the domestic priority system, and use of the domestic      priority system becomes questionable. _
     
     4. There should be no type of pre-grant opposition, especially one like 3rd party art citations under 37 CFR s.1.291 or prior use proceedings under 37 CFR s.1.292. Japan just eliminated pre-grant op     positions at our request and we should not now encumber U.S. practice with uncontrollable 3rd party actions. 

Last Modified: March 1995