Comments from James Kanagy

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FROM RESPONDENT 067:
     NAME: James Kanagy 
     COMPANY: Smith Kline Beecham Corp 
     ADDR-1: E-mail James_M_Kanagy%notes@sb.com 
     CITY, STATE ZIP: 
     TELEPHONE: 
     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:
    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:
     SB supports an 18 month publication policy under which-the entire application as filed is published in machine readable form and optionally in hard copy. In addition we propose that the filewrapper      be made publicly available thereafter. This is a logical extension of a policy of open and informative prosecution which the 18 month publication rule appears to envision. We recommend the latter as      public scrutiny assists with insuring the greatest candor in dealing with the Office at an early stage. And it makes third party observations public The laying open of the filewrapper becomes a lay     ing open of the filewrapper as well. Once the application is published we see little merit in then slamming the door on the prosecution process which may be already partially disclosed, assuming ame     ndments prior to the 18 month date are published as well.
     
      We suggest publishing the application as filed. Thereafter any interested party can review the file to determine what actions had been taken on the case after it had been filed by simply ordering a      copy of the filewrapper.
     
      We believe continuations, divisionals and continuation-in-part applications should be published as well, with the filewrappers being publicly available as well. Such applications could be published      on receipt, provided the earliest claimed priority date was more than 18 month previous.
     
      To the best of our knowledge this two-part approach has not had any adverse effects where practiced in the rest of the world.
     
      We support creating an electronic data base to capture applications and as a means for publishing those applications. This data base should be made available on the Internet via a USPTO Home Page a     nd would be searchable. At minimum it would be indexed. Preferably applications would be available in a text/graphics format whenever possible through use of EASY. Hard copy filings would be scanned      in and if possible converted to text using OCR technology. This data base should be made available free of charge to all because the public has already paid for its creation through taxes and USPTO      fees. We oppose distributing this data base to for-profit organizations who would then charge an additional fee for processing the data. The example of the Supreme Court should be followed; it now      makes its decisions available on-line and free of charge.
     
      An index containing a descriptive title, abstract, inventors, and assignee(s) would be published in hard copy form.
     
      A standard application format should be instituted. We suggest following the PCT guidelines as they are becoming a de facto international standard and may provide down-stream capability to integrat     e USPTO and WIPO communications and electronic transmittal of documents between these organizations. More broadly, a standard format used by all major Patent Offices would be quite useful in light o     f the plans for electronic integration of the EPO, JPO and USPTO. In conjunction with this effort, a standard transmittal letter should be prepared by the Office and made mandatory for filing applic     ations. A standard format would make it possible to extract data directly to a subsidary data base, such as an index of titles, inventors abstracts, etc. which could then be published in electronic      form or printed without having to re-key data.
     
      We support a publication cut-off date by which date one could request that the application not be published, it then would go abandoned. A fifteen month deadline is reasonable. The onus should be p     laced on the filing party to request withdrawal of the publication, not on the Office.
     
      We have no comments on the issue of accelerated examination.
     
      Regarding publication fees, this cost should be built into the filing fee. The provisonal application fees should not be affected as these will not be published. We do not believe any additional fe     e is warranted at this time for publishing applications. If or when a fee is added it should not be a separate and independent fee; publication would be mandatory unless a petition to withdraw the a     pplication, with fee, was filed in a timely manner.
     
      In summary, we support publishing applications at 18 months, making the filewrapper available at that time and using publishing the applications in electronic form accessible over the Internet thro     ugh a USPTO Home Page type of interface. 

Last Modified: March 1995