Comments from Glenn E. Wise

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FROM RESPONDENT 072:
     NAME: GLENN E. WISE
     COMPANY REGISTERED PATENT AGENT 
     ADDR-1: 6450 Georgetown Pike 
     CITY, STATE ZIP: McLean, Virginia 22101
     TELEPHONE: (703) 415-0579
     (703) 415-0581
     If no answer call (703) 356-1819
     FAX: (703) 415-0618
     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:
    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:
     Pursuant to the notice which appeared 12/12/94 at pages 63966 through 63971 of Vol. 59, No. 237 of the Federal Register, and supplementing the oral testimony I gave at the public hearing and request      for comments on 18-month publication of patent applications at the PTO on 2/15/95 on behalf of myself and as a member of the group mentioned in documents 1 and 6 below. I submit herewith the follow     ing items:
     
     1. A document prepared by an ad hoc group compromising 36 pages and bearing the title as follows: "Ad Hoc Group for Both Paper Search Copies of Published Applications as Filed as Minimum Documentati     on in the Patent and Trademark Offices Classified Files, and a Weekly Published...etc."; and scores of signatures gathered for users of the public search room, or its related facilities who espouse      the sentiments in the noted title. The majority of signatures, be they attorneys, agents or searchers, spend at least part if not most of their time conducting patent searches, and it will be noted      that many of the signers are ex-examiners. The thrust of this document is that in order to conduct reasonable prices and efficient searching the signatures believe that copies of pending application     s, as filed, must be placed in appropriate classifications in both the examiners' and the Public Search Rooms paper files.
     
     2. Copies of U.S. Published Patent Application B 510,278 of 3/30/76 and B 520,952 of 3/16/76, both published under the Second Trial Protest Program (938 O.G. 945, 9/16/75), and submitted as examples      of the general forms that printed publications under the publication of pending applications at 18-months program might follow to be made available for searching copying and other dissemination pur     poses.
     
     3. A copy of the Re-examination Certificate B1 5,188,250 of 7/5/94 being submitted to show one way classified file storage space could be minimized by publishing at grant time only those changes tha     t have been made in a given application between its 18-month publication and its issuance as a patent. For applications that become abandoned after publication no addition to the publication is prov     ided at 18-months is deemed necessary since it is believed that a copy of the published application, as filed, appearing in each subclass appropriate to the subject matter and involved should provid     e sufficient material to determine whether one must proceed, occasionally to order the PTO's abandoned file history for further study. It is noted that applications abandoned after publication, stil     l remain prior art.
     
      Under the format exemplified by the re-examination certificate submitted, the document prepared at grant time should list all subclasses in which the pre-grant publication was classified since clas     sification sometimes changes between receipt and allowance of a case.
     
     4. Copies of U.S. Patents Nos. 5,190,174 and 4,151,757 issued 5/1/79 are submitted as examples of one reason why the entire as-filed applications should be published and placed where appropriate in      various subclasses in the classified files: Note that in each of these patents one would not expect from these patents' titles to find other than article or apparatus claims. However, note that each      patent includes method claims which would be missed by a searcher who had only a single sheet containing a drawing and abstract, or a drawing and representative claim to look at in the classified s     earch files.
     
      Some applications contain even more than two types of claims even more that two types of claims, e.g. article, apparatus and method.
     
      While one might think that a study of claims is not important at 18-months publication of an application because property rights are not yet vested, tell that to the business person whose business      plan may have to be altered to avoid the infringement charges he or she might face upon grant of an application should notice available with less than as-filed copy publication be missed, and the pa     tent issuing shortly after publication.
     
     5. Partial copies of U.S. Patents Nos. 4,746,241 (1 sheet), issued 5/24/88, and 5,343,553, issued 8/30/94 ( sheets). These copies are examples of portions of "jumbos," that is large patents, and the      number of pages each patent submitted herewith are exactly the number of pages for each found in the Pubic Search Room's classified files, although the examining corps was able to find space and st     ill gets full copies in their files.
     
      If U.S. patents are issued with more than 25 sheets, it is current Public Search Room practice to "strip" incoming printed "jumbo" copies this large down to a minimum of five sheets before placing      them in the classified files. These five sheets, or more, include at least the front sheet the first two pages of specification and the claims as noted above the portion of U.S. No. 5,343,553 herewi     th comprises 9 sheets which was the number of pages required to provide the front sheet, the specification through a description of the drawing and all of the claims. This current format (while not      ideal since the entire patents would be the ideal, and would be the preference of most professional; searchers) at least allows a viewer to make a fairly reasoned decision as to whether he or she mu     st make the extra efforts required to locate and study the whole patent.
     
      Until the present multisheet documentation relative to "jumbos" in the Public Search Room's classified files was reached by negotiations between public searchers and PTO staff, as a space-saving ex     pedient, but without input from public searchers, the PTO staff responsible for Public Search Room Operation had imposed a system for their files, several years ago, wherein such files provided but      a single sheet of any "jumbo", exemplified by the front sheet of U.S. Patent 4,746,241, noted above. This one sheet type of classified file entry (which incidentally appears to be equivalent to "opt     ion i.i." at the top of the center column on page 63968 of Vol. 59, No. 237 of the 12/12/94 Federal Register notice relative to which these comments and documents are being submitted) after a length     y period of trial use was found to be very inadequate as a search tool which led to the multi-sheet compromise noted above.
     
     6. A document of an ad hoc group comprising 25 pages and bearing the title as follows: "Ad Hoc Group Against Imposition by the Patent and Trademark Office of Access Fees Either for Copying the Paper      Application File, or searching and Copying Pre-Grant Publication Information from an electronic Data-base...etc."
     
      This document includes a forward and scores of signatures including some persons who also signed document 1, but many who are not engaged in searching but earn their livings for example, by providi     ng photo-copy services related to prosecution files, patent copies and the like. It has been the undersigned's experience that most users do not object to reasonable copying charges, but are very mu     ch against fees for access to what they regard as public information.
     
     AD HOC GROUP FOR BOTH PAPER SEARCH COPIES OF PUBLISHED APPLICATIONS AS FILED AS MINIMUM DOCUMENTATION IN THE PATENT &
     TRADEMARK OFFICES CLASSIFIED FILES AND A WEEKLY PUBLISHED
     APPLICATION NOTICE SECTION (OF REPRESENTATIVE ABSTRACTS AND
     DRAWINGS! ADDED TO THE OFFICIAL GAZETTE IF THE PATENT &
     TRADEMARK OFFICE IMPLEMENTS PUBLICATION OF PENDING
     APPLICATIONS AT 18 MONTHS
     
      FORWARD
     
      Attached are copies of pages 63966 through 63971 of the Federal Register, Vol. 59, No. 237 for Monday December 12, 1994, in which the Patent & Trademark Office
     
     (PTO) sets a public hearing date and requests comments on 18-month publication of Patent Applications
     
      On page 63968, beginning at the bottom of column 1 under the heading "Publication Content" are listed four options of what the pre-grant publication at 18 months might contain: Apparently the PTO i     s leaning (see middle of column 2, page 63968) toward an option (option ii) that would require them to publish and to place in the classified files only an O.G.-type entry similar to those now publi     shed for issued patents.
     
      Noting that an application, when published, becomes and remains prior art, if you believe that adoption of option ii by the PTO would not be in the best interest either of the PTO, inventors, paten     t professionals, or the general public as an information dissemination or search vehicle, since such notices would not provide sufficient information, per se, to form reasoned search judgments witho     ut the expenditure of considerably more research effort, by either the patent examiners or public researcher, or to form reasoned business decisions by other patent professionals or the public in ge     neral, please sign below.
     
      A copy of the completed signature containing document will be officially submitted into the record of the public hearings noted above.
     
     AD HOC GROUP AGAINST IMPOSITION BY THE PATENT AND TRADEMARK
     OFFICE OF ACCESS FEES EITHER FOR COPYING THE PAPER APPLICATION
     FILE, OR SEARCHING AND COPYING PRE-GRANT PUBLICATION
     INFORMATION FROM AN ELECTRONIC DATA BASE IF THE PATENT AND
     TRADEMARK OFFICE IMPLEMENTS PUBLICATION OF PENDING
     APPLICATIONS AT 18 MONTHS
     
      FORWARD
     
      Attached are copies of pages 63966 through 63971 of the Federal Register, Vol. 59, No. 237 for Monday December 12, 1994, in which the Patent & Trademark Office (PTO) sets a public hearing date and      requests comments on 18-month publication of Patent Applications.
     
      On page 63970, near the top of column 2 in the sentence just above the heading: "2. Submission of Amendments" it is stated: "The PTO currently contemplates that access fees (underlining added here      for emphasis), either for copying the paper application file, or searching and copying information from an electronic data base will be required" if pre-grant publication at 18 months is implemented     .
     
      If you believe that charging fees for access to information, as quoted above from page 63970 is inherently bad public policy, and a dangerous precedent and an impediment to the free flow of informa     tion, one of the bedrocks of a democratic society, please sign below. It is noted that the PTO already is charging two to five times the current commercial retail rates for photocopying on it's mach     ines.
     
      A copy of the completed signature containing document will be officially submitted into the record of the public hearings noted above.

Last Modified: March 1995