Comments from Ellen C. Childress

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FROM RESPONDENT 053:
     NAME: Ellen C. Childress 
     COMPANY: Independent Patent Agent 
     ADDR-1: 105 Green Street 
     CITY, STATE ZIP: Reading MA 01867-3211
     TELEPHONE: 617-944-5224
     FAX: 
     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:
     EXHIBIT A
     
     Suggestion for System Which Costs USPTO and Patent Depository Libraries Very Little and Reduces Paper Storage and Use
     
     1. Immediately move towards computer-friendly filing i.e. include either a disk with a copy of the specification and bit map file for drawings, or small fee for bed scanning of the application or pa     rts of application.
     
     2. Privatize the application "publication" system. Select one company - fully US owned and hiring only persons passing a security clearance - as a Review and Clearance Corporation. The Review and Cl     earance Corporation would receive by direct wire, a copy of all applications filed minus declarations, assignments, and signatures. The Review and Clearance Corporation would review these for suitab     ility for "publication" and "searching". [On searching - if an application is filed with many spelling errors, for instance, or incorrect terminology, word searching may be unfairly blocked.] Within      2 weeks, a report regarding changes necessary for publication would be sent to the applicant and Examiner. The applicant could then amend the application for these errors, which are often left up t     o the Examiner to find.
     
     3. As each application is identified as free from secrecy issues, the Review and Clearance Corporation would be notified, The application would be docketed for release into a database at the 18 mont     h week and a notice sent to the applicant, Requests for non-publication would have to be sent by the end of the 17 month week.
     
     4. The Review and Clearance Corporation would be required to license access to a full text search to all interested database vendors, and provide access for free to patent depository libraries. The      fees from database vendors would subsidize library costs. (Experience with APS and Japanese Gazettes system) shows strapped city libraries cannot collect fees, pay for more services or find more she     lving space).
     
     5. The database would be fully word searchable, however, the database vendor could only print (export) the title and application number to the searcher (i.e. consumer).
     
     6. The searcher can then obtain the application from the Review and Clearance Corporation at cost. This means that the real user, i.e. a searcher, usually doing corporate intelligence, not the appli     cant, is paying the cost. Also, the searcher should be required to provide the name of the end user of the application file - i.e. the company ordering the search, with the agreement that no copies      are to be made, and that the file would be maintained as a trade secret by the receiver. Names and addresses of all such requesters would be sent to the applicant and the USPTO. All costs would be p     assed on to the searcher.
     
     7. Prior Art Issues - The application could be cited as prior art against a requester only, since theoretically no other party has access to the application.
     
     8. Advantages: The USPTO incurs no direct costs since the Review and Clearance Corporation develops all software and pays a yearly fee. This should be seen as a "work for hire" with all files remain     ing "property" of the USPTO. Printing, paper and storage costs are minimal, and a direct responsibility of the end user, not the taxpayer or applicant.
     
     The Review and clearance corporation identifies minor errors for the Examiner.
     
     Patterns of Use will be readily available for analysis - i.e. what percentage of use results in the filing of new art by a second party.
     
     Both parties can identify each other and therefore negotiate. Early identification of interference or infringement issues can be made so manufacturers can estimate licensing costs before investment      of substantial sums of money. Applicants have input whether to petition for accelerated examination.
     
     Examiners need not rush examinations of applications requested by a searcher unnecessarily, thus allowing for better planning and flow of examinations.

Last Modified: March 1995