Comments from Jeffrey L. Forman

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FROM RESPONDENT 054:
     NAME: Jeffrey L. Forman
     Manager, Information Services 
     COMPANY: International Business Machine Corporation 
     ADDR-1: Suite 605
     1755 So. Jefferson Davis Highway 
     CITY, STATE ZIP: Arlington, Virginia 22202
     TELEPHONE: 703/412-2400
     FAX: 703/412-2099
     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:
     COMMENTS OF THE PATENT INFORMATION USERS GROUP ON 18-MONTH PUBLICATION OF PATENT APPLICATIONS SUBMITTED FEBRUARY 17, 1995
     
     The proposal by the U.S. Patent and Trademark Office (USPTO) to place a Patent Application Notice (PAN) consisting of an abstract and/or exemplary claim, exemplary figure and bibliographic data in t     he search file for Pre-Grant Publications is inadequate.
     
     Considering the production pressure on U.S. Examiners, it is naive to believe that when searching in the shoes, an Examiner will make note of all of the PANs that may contain relevant material in th     e full disclosure and then go to a CSIR workstation to view the full document. In many instances, the PAN will not even give a clue that the full document may contain relevant disclosure. In the maj     ority of cases where the PAN may indicate potential relevance, due to the additional effort required to view the full document, the Examiner is likely to err in the direction of deciding against rel     evance to minimize the number of documents that must be obtained later as a separate procedure.
     
     Since public searchers also operate under time and resource constraints in carrying out their searches, the inclusion of PANs in the search file will also result in less thorough searches by the pub     lic. This is likely to impact the examination process in that the prior art submitted with Information disclosure Statements is likely to be less complete than at Present.
     
     The ultimate result of lower quality searching by Examiners and the public will be the issuance of more invalid patents by the U.S. Patent and Trademark Office. Thus while there may be some saving i     n fees to applicants by not publishing the full application as the pre-grant document, there will inevitably be increased costs in litigation resulting from the assertion of these patents which neve     r would have issued or would not have issued with as broad a scope had Examiners and the public had access to the full document in the search files .
     
     Aside from their use for searches to determine patentability, the USPTO's search files constitute a unique repository of technical information and are widely used for searches to assess the state of      the art in various fields and to find solutions to technical problems. The inclusion of PANs in the search file instead of the full pre-grant document will significantly reduce the value of the USP     TO search files for these purposes. For the individual inventor and small businesses, this will virtually cripple their access to detailed patent information. Many small entities may overlook the ne     ed to search beyond the cursory PAN documents in the search file or may not have the resources to obtain the full disclosures. As a result, they may make the wrong decisions with regard to the perce     ived inventions on which they file their applications; become frustrated with the patent system; and end up viewing it as a disincentive to invent rather than an incentive.
     
     The USPTO should consider the following alternatives in place of its proposal to place only a PAN in the search files for pre-grant publications:
     
     1) Print the application as filed without typesetting or reformatting using the least expensive reproduction techniques available. By creating an electronic file of digital facsimile images of appli     cations as filed (as is presently being done for granted patents), the USPTO could use the same systems for generating copies for the search files as it is presently using for the Patent Copy Sales      function. This would also create a file that commercial patent copy vendors could use to fulfill public demand for low cost copies of the full pre-grant document. Vendors could also use this as a so     urce for generating various by-products just as they presently do from the USPTO's image files of granted patents.
     
     Since, in many art areas (with the exception of chemical and pharmaceutical technologies), patent documents more than 20, 30 or 40 years old are of very limited value either as prior art or for thei     r technical content, any concerns that the USPTO has about the space impact of putting full copies of pre-grant publications in the search file could be dealt with by removing these older documents      from the shoes and bundles. When necessary, they could all be accessed via a Class/subclass search on a CSIR workstation.
     
     2) The USPTO should contract with one of the other major patent issuing authorities for publication of the full U.S. pre-grant documents. Most of the patent offices that publish applications eightee     n months after priority date have well established procedures for publishing full application documents. Among these are the European Patent Office (EPO) and the World Intellectual Property organiza     tion (WIPO) which publishes Patent Cooperation Treaty (PCT) applications.
     
     In recent years, about 30% of the applications published by the EPO were based on a U.S. priority application. For PCT applications published by WIPO in recent years, about 45% were based on a U.S.      priority application. Thus the EPO and WIPO on their own are in effect already publishing a very large number of U.S. Patent applications as full documents 18 months after the U.S. filing date. It w     ould seem that with a little coordination between the USPTO, the EPO and WIPO and at minimal cost, copies of these documents could be published for the USPTO and associated with a U.S. type front pa     ge and thus enable the USPTO to put full disclosure copies in Examiner and Public search files. If the EPO is used as
     
     publishing contractor by the USPTO, a significant number of foreign origin U.S. applications would also turn out to be ones that are already being printed by the EPO. More than half of the Japanese      origin applications filed in the USPTO are also being filed in the EPO, usually using the same English translation as used for the U.S. application. Again, with some coordination between the USPTO a     nd EPO in the first few months after these Japanese origin applications are filed, the USPTO should be able to have these published at minimal cost as copies of the EPO counterpart applications.
     
     Due to the considerable overlap in filings in the USPTO, EPO and PCT filings at WIPO, the overall cost of contracting with the EPO and/or wipo for publication of U.S. pre-grant documents should be c     onsiderably reduced.
     
     3). At an absolute minimum, if the USPTO cannot work out contractual arrangements with the EPO and/or WIPO for publishing full copies of U.S. pre-grant documents, the USPTO should use its present Fo     reign Patent Processing System to enable it to put full copies of foreign counterparts to PANs into both the Examiner and Public search files at the same locations as the PANs. The Foreign Patent Pr     ocessing System currently identifies foreign counterparts to U.S. Patents in the search file so that the foreign documents can be discarded as duplicates of disclosures already in the search file. I     t also has the capability of routing an English language foreign document to all the places in which a non-English counterpart document has been classified so the English disclosure can be substitut     ed for the non-English. It should be a simple matter to adapt the system so that a foreign document identified as a counterpart to a PAN can be routed to all the places in which the PAN has been cla     ssified and then be attached to the PAN.
     
     The PAN is a totally inadequate search document. Where the opportunity exists to easily and inexpensively obtain a full disclosure for the search files, it would be a tragic shame for the USPTO to e     ither ignore these documents or simply cast them into the Examiners foreign patent shoes and not also place them in the public search file. If the USPTO proceeds with its plan to rely on the PAN as      the search file document, it will probably not be long before the USPTo is no longer considered first tier Patent Office.

Last Modified: March 1995