Comments from Alan M. Krubiner

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FROM RESPONDENT 052:
     NAME: Alan M. Krubiner 
     COMPANY: Syntex (U.S.A.) Inc.
     ADDR-1: 3401 Hillview Avenue, P.O. Box 10850
     CITY, STATE ZIP: Palo Alto, California 94303
     TELEPHONE: (415) 955-6133
     FAX: (415) 496-3529
     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:
     Syntex believes that the PTO should not require that all official application-related materials be delivered to a central location, at such a requirement has the potential to (perhaps substantially)      increase the pendency of patent applications particularly by delaying the delivery of material to Examiners and limiting the ability of applicants and Examiners en to rapidly exchange views leading      to submission of allowable claims. 

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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:
     Syntex believes that it is not inappropriate for the PTO to adopt a standard application format; however, Syntex does not urge the adoption of a standard format 

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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:
     Syntex believes information comparable to that provided in a standard Official Gazette entry should be published Syntex proposes that the abstract (examined by the PTO to ensure that it is represent     ative of the content of the application) should be published in addition to or Instead of a representative claim. 

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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:
     Syntex believes that the patent applicant should receive a copy of the Patent Application Notice. 

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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:
     Syntex believes believes that the PTO should continue to permit accelerated examination only in a manner comparable to that presently practiced, to avoid increasing the pendency of those application     s not benefiting from accelerated examination. 

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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:
     Syntex believes that the cost of publication should be included In the fling fee, reasoning that this will result in the lowest bureaucratic overhead cost and a reasonably equitable allocation of th     e cost of publication over all applications, whether or not published. Especially if the PTO contemplates creation of an electronic database during the patent Application process, the cost of creati     on of that database is appropriately associated with the filing of the application even if it is later withdrawn, and the additional cost of printing the Patent Application Notice and Gazette over t     he cost of creation of the database is not so high that separate accounting for that cost and charging it to individual published applications h appropriate. 

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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:
     Syntex believes that the PTO should require an affirmative communication from an applicant indicating that the applicant wishes to withdraw the application, as Syntex believes that the publication f     ee should be included in the 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:
     Syntex believes that it is not inappropriate for the PTO to require a claim for priority or benefit to be made within such time after the filing of an application that the application will publish e     ighteen months from the priority date, ant that it is not inappropriate to require a surcharge if the claim is made at a time after filing; however, Syntex does not urge the adoption of such a polic     y. 

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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:
     Syntex believes that the PTO should determine whether it will be more or less expensive to remove the Patent Application Notice from the search file on issuance of the patent, and should adopt the l     ess expensive course. Syntex further believes that publication information should be indicated on the issued 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:
     Syntex believes that access should be granted to the entire patent application file after publication, but that examination of the application should take priority over access if there is any confli     ct. 

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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:
     Syntex believes that assignment records should be made available after publication. 

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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:
     Syntex believes that access to biological materials should be limited until patent issuance, at the applicant's choice, since patent rights have not yet attached. 

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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:
     Syntex believes that it is not inappropriate for the PTO to require amendments to the claims to be made by substitute claims and amendments to the specification (other than perhaps typographical err     ors) by substitute paragraphs, and is not opposed to the amendment of applications by requiring replacement pages; however, Syntex believes that requiring amendment by replacement of the entire spec     ification is unduly burdensome. 

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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:
     Syntex believes, particularly in view of the 20-year patent term introduced by the Uruguay Round Agreements Act, that the protest procedures in 37 CFR 1.291 should be abolished. Reexamination of an      issued patent is available to a potential protester; and Syntex believes that the publication of applications and hence their lack of secrecy should not operate to grant third parties the ability to      delay prosecution by protest. 

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GENERAL COMMENT:
    No comments supplied

Last Modified: March 1995