Comments from John B. Pegram

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FROM RESPONDENT 071:
     NAME: John B. Pegram 
     COMPANY: DAVIS HOXIE FAITH FULL & HAPGOOD LLP 
     ADDR-1: 45 ROCKEFELLER PLAZA 
     CITY, STATE ZIP: NEW YORK, N .Y. 10111
     TELEPHONE: (212) 757-2200
     FAX: (212) 586-1461
     REPRESENT: unclear
     

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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:
     Any electronic system will require some form of central delivery of application related material, whether by communications link or delivery of tangible media (paper, diskette, etc.). 

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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:
     Consistent with my recommendations A and B. several standard formats in electronic form should be accepted. Failure to comply should lead to a requirement for translation. 

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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:
     My proposal would electronically publish all relevant material; therefore, an Application Gazette would be unnecessary. 

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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:
     The applicant should make his or her own arrangements to obtain a copy of the published application. Presumably, that would be less expensive than having the PTO provide it. 

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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:
     Accelerated examination should be provided in the case of infringement. 

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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:
     My proposal should reduce cost for the PTO by eliminating the data entry cost for patents. Thus, a physically accessing numerous files or the alternative burden of processing numerous petitions for      waiver of limitations on access should make electronic publication attractive to the PTO. 

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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:
     Publication must be automatic, except when there has been a timely abandonment 

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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:
     The question of how to handle late priority claims is one of the two most important issues relating o 18-month publication. On the one hand, applicants should be deterred form making late priority c     laims to avoid early publication. Loss of part of the patent term as a result of measuring the term from the priority date probably would not be an adequate deterrent, especially in rapidly changing      technical fields. On the other hand, we have a long and satisfactory tradition of permitting priority claims when they are needed. Perhaps a prior user defense should be provided in cases where pub     lication was delayed. 

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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:
     As mentioned in section D above, searching is one of the two most important issues relating to early publication. the published application has greater prior art value than the later patent; therefo     re, the PTO should consider keeping the application I the search files. I suggest consideration of the searching practices of other patent offices. 

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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:
     My proposal would "publish" all of the contents of the application file without affecting PTO operations. Philosophically, the application proceeding should be open following publication. As a pract     ical matter, the burden of physically accessing numerous files or the alternative burden of processing numerous petitions for waiver of limitations on access should make electronic publication attra     ctive to the PTO. 

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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:
     Assignment information was public for many years. Public access was closed to hide the subject of pending applications. Since the contents of the application will no longer be hidden, the assignees'      names no longer need be concealed following 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:
     No comment.

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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 comment.

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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:
     The issues here are complex and there is no simple answer. I suggest that at least there be a period in which prior art can be submitted by a third party without payment of a fee. By analogy to the      trademark opposition and cancellation procedures, it may be that at some point the third party should be told to await patent issuance and seek reexamination. 

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GENERAL COMMENT:
     Summary
     
     I suggest that the PTO adopt filing of all patent applications in digital form and that the 18-month publication be in that form, without any printing by the PTO except as may be necessary for its o     wn searching. That publication should be given prior art effect as of the U.S. filing date.
     
     A. Filing in Digital Form
     
     I suggest that, regardless of whether or not 18-Month publication is adopted promptly, the PTO require the text of all patent applications to be filed in digital form commencing on a specific date,      such as on or after January 1, 1996. Amendment of 35 U.S.C. 22 may be necessary.
     
     The application should be submitted on copy-protected diskette in one of several standard formats. In advance of that date, the PTO should make a standard transmittal form available (for example, on      the Internet or by purchase of a diskette) to be included with each application. A printout of the application should accompany each application filed, however, in the event of any question as to t     he intended content (as distinguished from damage to the diskette), the diskette version would be treated as the original.
     
      I suggest that submission by communications link and filing of drawings in digital form be phased in at a later date after appropriate standards and PTO facilities are established-~
     
      Applications not submitted in proper digital form would be subject to a translation requirement similar to that for foreign languages.
     
      B. 18-Month "Publications
     
     I suggest that the 18-month "publication" be purely digital, and that the PTO not print the application, or any Application Gazette, Application Notice or bibliographic data. Instead, the PTO would      compile a weekly tape or CD-ROM with an index, thereby making the information available at cost to subscribers and to commercial services who would provide on-line access and printed copies.
     
      This republications should include all communications in the application to and from the PTO prior to the publication date. Subsequent communications in Published applications also would be publish     ed promptly in this fashion. The users and services would be responsible for collating the documents comprising the prosecution file history, using the index data which would include the official PT     O list of the file contents.
     
     In order to assure a common form of citation, the PTO version of the published documents should include some form of page and line or paragraph identification.
     
     C. Prior Art Date
     
     Applicants subject to early publication of their applications should gain the prior art defensive benefit of their U.S. filing dates regardless of whether a patent issues. While an argument can be m     ade to that effect under the existing law and rules, it would be preferable to include explicit provisions.
     
     The amendment of the Patent Law to provide for 18-month publication should amend section 102(e) to provide that published U.S. patent applications shall have the same prior art effect as patents, re     gardless of whether a patent eventually issues. The rationale underlying section 102(e) is equally applicable to published applications. This provision also will avoid a period of doubt regarding wh     ether the prior art date of a published application is its filing or publication date. Alternatively, the PTO should provide by rule that a published application is facie evidence under section 102(     g) as of the U.S. filing date. (See section D below).
     
     D. PTO Searching Capability
     
     One of the two most important issues relating to 18-month publication is how the products of such publication will be treated as prior art in the PTO. I suggest that published applications are a mor     e important resource than their later counterpart patents.
     
      Examiners should have full access to published applications immediately upon publication. The proposal for placing only a Patent Application Notice in the PTO search files is inadequate. If the Exa     miners do not have and use electronic search systems, paper copies of published applications should be placed in their search collections.
     
     Even after patent issuance, the published application will have greater value to the public as prior art than the patent because it will be the as-filed document. Since the application will have bee     n published, and will be in electronic form in accordance with my proposal, it would seem foolish to bury it or remove it from search files after the patent issues.
     
      A more difficult problem will be created by U.S. provisional applications. Under the present law, it has been my experience that Examiners cite prior art patents under section 102(e), leaving it to      the applicant to point out differences between the application and the patent. That approach is efficient because section 112 inhibits addition of new matter. Provisional applications, however, may      be quite different from the corresponding, later-published applications and patents. Thus, PTO should take the steps necessary to provide ready access to provisional applications whose priority is      claimed in published applications and patents. Electronic filing of a copy of the provisional application, at least as early as the filing of a regular application claiming internal priority, should      do the job. 

Last Modified: March 1995