Comments from Walter Scott

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FROM RESPONDENT 050:
     NAME: WALTER SCOTT 
     COMPANY: LAW OFFICE OF
     WALTER SCOTT 
     ADDR-1: P.O. BOX 121
     CITY, STATE ZIP: New York, New York 10025
     TELEPHONE: (212) 749-3977
     FAX: (212) 749-3977
     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:
    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 Notice of public hearing and request for public comments states that the PTO believes that a limited publication will minimize cost and reduce disruption to the examination process. It appears t     o me that using a limited publication as a section 102(e) reference will increase the costs of operating the PTO. Additionally, the PTO's practice of disposing of abandoned applications may also inc     rease the PTO's costs. In sum, it appears that a full publication of the specification may be less expensive than a limited publication.
     
     1. Increased Operating Costs
     
     The "Notice of public hearing . . ." does not appear to have fully considered how making a limited publication a section 102(e) reference will affect the examination of applications. Specifically, t     he Notice does not address whether an Examiner can cite one of these limited publications, or if the Examiner will be required to cite (and supply) the full specification.
     
     Requiring the Examiner to cite and supply the full specification will increase the time needed to examine an application. After identifying the limited publication, the Examiner would need to retrie     ve the application file, which may be in the hands of another Examiner or in off-site storage location. Either of these situations would burden the Examiner and thereby increase the cost of examinin     g an application.
     
     However, allowing the Examiner to cite and supply only the limited publication may be very unfair to applicants. As a practical matter, the applicant will need to obtain a copy of the full specifica     tion each time the Examiner cites a limited publication. Thus, citing and supplying only the limited publication shifts the true costs to the applicant.
     
     Moreover, the PTO rarely grants immediate access to a file wrapper. For instance, another Examiner may be using the file, or as has happened frequently when I have requested a file, the PTO cannot l     ocate the file. Any such delay will slow down prosecution, and increase the cost to prosecute an application
     
     These costs are avoided if the publication contains the specification as filed.
     
     2. Abandoned Application Cost Increases
     
     Another cost of limited publications not considered in the "Notice of public hearing . . ." is the cost of storing the specifications. The unpublished portion of an application will be a section 102     (e) reference because the limited publication will provide the public with an index to the unpublished information. This index is only useful if the material to be retrieved remains available. That      is not a problem when the application matures into a patent, but it will be a problem when the application is abandoned.
     
     Presently, the PTO limits its storage costs by (i) storing off-site files that are inactive for more than six months and (ii) disposing of files at some later date.
     
     With a limited publication, a number of inactive files may need to be stored on site so that the PTO can provide access to the unpublished portions of the specifications. Increasing the on-site stor     age will increase the cost of operating the PTO.
     
     Moreover, because of the implications of section 102(e), the PTO will need to store specifications of abandoned applications permanently. Otherwise, disposal of an abandoned application file would p     reclude the PTO from granting access to the unpublished portion of the specification and in effect, remove the reference from the public domain. THIS additional storage will substantially increase t     he cost of operating the PTO.
     
     Thus, the short term savings realized by a limited publication may create an increased long term cost which is avoided by publishing the full specification as filed. 

Last Modified: March 1995