[Federal Register: October 5, 1998 (Volume 63, Number 192)]
[Proposed Rules]
[Page 53497-53530]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr05oc98-30]
[[Page 53497]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1
Changes To Implement the Patent Business Goals; Proposed Rule
[[Page 53498]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 980826226-8226-01]
RIN 0651-AA98
Changes To Implement the Patent Business Goals
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Advance notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (PTO) has established business
goals for the organizations reporting to the Assistant Commissioner for
Patents (Patent Business Goals). The Patent Business Goals have been
established in response to the Vice-President's designation of the PTO
as an agency that has a high impact on the public, and they are
designed to make the PTO a more business-like agency. The focus of the
Patent Business Goals is to increase the level of service to the public
by raising the efficiency and effectiveness of the PTO's business
processes.
The PTO is considering a number of changes to the rules of practice
and procedure to support the Patent Business Goals. The PTO is
publishing this Advance Notice of Proposed Rulemaking to allow for
public input at an early stage in the rule making process. The PTO is
soliciting comments on these specific changes to the rules of practice
or procedures.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before December 4, 1998. While comments
may be submitted after this date, the PTO cannot ensure that
consideration will be given to such comments. No public hearing will be
held.
ADDRESSES: Comments should be sent by mail message over the Internet
addressed to regreform@uspto.gov. Comments may also be submitted by
mail addressed to: Box Comments--Patents, Assistant Commissioner for
Patents, Washington, D.C. 20231, or by facsimile to (703) 308-6916,
marked to the attention of Hiram H. Bernstein. Although comments may be
submitted by mail or facsimile, the Office prefers to receive comments
via the Internet. Where comments are submitted by mail, the Office
would prefer that the comments be submitted on a DOS formatted 3\1/4\
inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Suite 520, of One Crystal Park,
2011 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
ftp.uspto.gov). Since comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: With regard to this Advance Notice of
Proposed Rulemaking in General: Hiram H. Bernstein or Robert W. Bahr,
by telephone at (703) 305-9285, or by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, DC 20231, or
by facsimile to (703) 308-6916, marked to the attention of Mr.
Bernstein.
With regard to simplifying request for small entity status (Topic
1): James E. Bryant, III, at the above telephone number.
With regard to requiring separate surcharges and supplying filing
receipts (Topic 2), and permitting delayed submission of an oath or
declaration, and changing time period for submission of the basic
filing fee and English translation (Topic 3), and creating a PTO review
service for applicant-created forms (Topic 21): Fred A. Silverberg, at
the above telephone number.
With regard to limiting the number of claims in an application
(Topic 4), providing for presumptive elections (Topic 14), and creating
alternative review procedures for applications under appeal (Topic 18):
Robert W. Bahr, at the above telephone number.
With regard to harmonizing standards for patent drawings (Topic 5),
printing patents in color (Topic 6), and reducing time for filing
corrected or formal drawings (Topic 7): Karin L. Tyson, at the above
telephone number.
With regard to permitting electronic submission of voluminous
material (Topic 8): Jay Lucas, at the above telephone number.
With regard to imposing limits/requirements on information
disclosure statement submissions (Topic 9), and refusing information
disclosure statement consideration under certain circumstances (Topic
10): Kenneth M. Schor, at the above telephone number.
With regard to providing no cause suspension of action (Topic 11):
Gerald A. Dost, at the above telephone number.
With regard to requiring a handling fee for preliminary amendments
and supplemental replies (Topic 12): Randall L. Green, at the above
telephone number.
With regard to changing amendment practice to replacement by
paragraphs/claims (Topic 13), requiring identification of broadening in
a reissue application (Topic 16), and changing multiple reissue
application treatment (Topic 17): Joseph A. Narcavage, at the above
telephone number.
With regard to creating a rocket docket for design applications
(Topic 15): Lawrence E. Anderson, at the above telephone number.
With regard to eliminating preauthorization of payment of the issue
fee (Topic 19), and reevaluating the Disclosure Document Program (Topic
20): John F. Gonzales, at the above telephone number.
SUPPLEMENTARY INFORMATION:
I. Background
For Fiscal Year 1999, the PTO is emphasizing its core business: (1)
the granting of patents; (2) the registering of trademarks; and (3) the
dissemination of the information contained in those documents. The
Presidential themes of encouraging innovation and investment, enhancing
our customers' satisfaction and seeking efficiencies through
international cooperation are embodied in the business goals of the
organizations reporting to the Assistant Commissioner for Patents
(Patent Business Goals).
President Clinton's Framework for Global Electronic Commerce
demands that the United States make its system for protecting
patentable innovations more efficient to meet the needs of the fast-
moving electronic age. The PTO was selected by Vice President Gore as
one of a small group of Federal agencies, known as High Impact
Agencies, that has a direct impact on the public. The products and
services that the PTO provides to its customers must enable them to get
their new inventions and new ideas into the American and global
marketplace.
The PTO's participation as a High Impact Agency is expressed in its
Year 2000 Commitments, part of the Fiscal Year 1999 Annual Performance
Plan. Some key objectives of that plan include:
1. The PTO will reduce its processing or cycle time (i.e., the
actual time spent by the PTO in processing an application, which does
not include the time when the PTO is awaiting a reply or other action
by the applicant) for inventions to twelve months by the year 2003.
2. The PTO will test reengineered processes and automated systems,
and
[[Page 53499]]
be ready to deploy electronic processing of patent applications by the
year 2003.
3. The PTO will work with the World Intellectual Property
Organization (WIPO) to achieve electronic filing of Patent Cooperation
Treaty applications, and by the year 2000, electronically receive and
process Patent Cooperation Treaty (PCT) applications at the PTO.
The activities in this plan call for changes in the very nature of
the patent prosecution activity as it currently exists. Such activities
are reflected in the regulations of the PTO, Title 37 of the Code of
Federal Regulations. This rulemaking is designed to be the vehicle of
the changes to these regulations, to embody the spirit and substance of
the PTO's activities for self-improvement.
II. Specific Patent Business Goals
The PTO has established five specific Patent Business Goals, which
have been adopted as part of the Fiscal Year 1999 Corporate Plan
Submission of the President. The five Patent Business Goals are:
Goal 1: Reduce PTO processing time (cycle time) to twelve months or
less for all inventions.
Goal 2: Establish fully-supported and integrated Industry Sectors.
Goal 3: Receive applications and publish patents electronically.
Goal 4: Exceed our customers' quality expectations, through the
competencies and empowerment of our employees.
Goal 5: Align fees commensurate with resource utilization and
customer efficiency.
The organizations reporting to the Assistant Commissioner for
Patents have developed a business plan (Patent Business Plan) to
achieve the Patents Business Goals. The rule and procedure changes
currently under consideration by the PTO, and to which this Advance
Notice of Proposed Rulemaking (Advance Notice) pertains, are in support
of the Patent Business Plan.
An example of how the PTO is considering changes to the rules of
practice and procedure to meet the varied demands of its customers is
shown by the consideration of both an expedited examination procedure
for design applications as well as an expanded suspension of action (or
deferred examination) procedure. Currently, all applications are, with
limited exceptions, scheduled for examination based upon their filing
date. See section 708.02 of the Manual of Patent Examining Procedure
(6th ed., rev. 3, July 1997) (MPEP). While the rules of practice do
provide for the advancement of applications for examination (37 CFR
1.102) and suspension of action in an application (37 CFR 1.103), the
current procedures are not sufficiently tailored to the varied needs of
the PTO's customers.
The PTO is considering providing a procedure under which those
design applicants who need rapid examination due to rapid style changes
will be able to request expedited examination of their applications.
The PTO is also considering providing a procedure under which those
applicants who do not need or desire examination (e.g., the cost of
prosecution is a burden and the invention is not yet commercially
viable) will be able to request a prolonged suspension of action.
Obviously, applicants may be required to pay additional fees (e.g., to
recover the PTO's costs of exception processing for an expedited
application) or waive certain rights (e.g., agree to publication of the
application as a condition of a prolonged suspension of action) to
avail themselves of the benefits of these procedures.
Finally, the changes under consideration are intended to improve
the PTO's business processes in the context of the current legal and
technological environment. Should these environments change (e.g., by
adoption of an international Patent Law Treaty, enactment of H.R. 400
or S. 507, 105th Cong., 1st Sess. (1997), or implementation of new
automation capabilities), the PTO would have to reconsider its business
processes and make such further changes to the rules of practice as are
necessary.
III. Topics for Public Comment
A. Introduction
The topics on which the PTO particularly desires public input at
this rulemaking stage are:
(1) Simplifying requests for small entity status (37 CFR 1.27);
(2) Requiring separate surcharges and supplying filing receipts (37
CFR 1.53);
(3) Permitting delayed submission of an oath or declaration, and
changing time period for submission of the basic filing fee and English
translation (37 CFR 1.52, 1.53);
(4) Limiting the number of claims in an application (37 CFR 1.75);
(5) Harmonizing standards for patent drawings (37 CFR 1.84);
(6) Printing patents in color (37 CFR 1.84);
(7) Reducing time for filing corrected or formal drawings (37 CFR
1.85);
(8) Permitting electronic submission of voluminous material (37 CFR
1.96, 1.821);
(9) Imposing limits/requirements on information disclosure
statement submissions (37 CFR 1.98);
(10) Refusing information disclosure statement consideration under
certain circumstances (37 CFR 1.98);
(11) Providing no cause suspension of action (37 CFR 1.103);
(12) Requiring a handling fee for preliminary amendments and
supplemental replies (37 CFR 1.111);
(13) Changing amendment practice to replacement by paragraphs/
claims (37 CFR 1.121);
(14) Providing for presumptive elections (37 CFR 1.141);
(15) Creating a rocket docket for design applications (37 CFR
1.155);
(16) Requiring identification of broadening in a reissue
application (37 CFR 1.173);
(17) Changing multiple reissue application treatment (37 CFR
1.177);
(18) Creating alternative review procedures for applications under
appeal (37 CFR 1.192);
(19) Eliminating preauthorization of payment of the issue fee (37
CFR 1.311);
(20) Reevaluating the Disclosure Document Program; and
(21) Creating a PTO review service for applicant-created forms.
A discussion of each of these topics is set forth below.
The topics discussed in this Advance Notice are those for which the
PTO is considering the greatest change from current practice. For this
reason, the PTO is publishing this Advance Notice (rather than a Notice
of Proposed Rulemaking) to obtain public input on these topics at the
inception of the rulemaking process. The public is invited to submit
written comments on any of the topics, including issues related to
changes in practice as well as the implementation of any such change in
practice. Certain topics do not conclude with questions; however, the
PTO desires comments on such topics in general.
Other Considerations
This Advance Notice is in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). It has been determined that this rulemaking is
significant for the purposes of Executive Order 12866 (September 30,
1993).
This Advance Notice involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collections of information involved in this Advance Notice
have been reviewed and previously approved by OMB under the following
control
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numbers: 0651-0021, 0651-0030, 0651-0031, 0651-0032, 0651-0033, 0651-
0035, and 0651-0037. Any collections of information whose requirements
will be revised as a result of the proposed rule changes discussed in
this Advance Notice will be submitted to OMB for approval. The
principal impact of the changes under consideration in this Advance
Rule is to raise the efficiency and effectiveness of the PTO's business
processes to make the PTO a more business-like agency and increase the
level of the PTO's service to the public.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the PTO has submitted a copy of this Advance Notice to OMB
for its review of these information collections. Interested persons are
requested to send comments regarding these information collections,
including suggestions for reducing this burden, to Robert J. Spar,
Director, Special Program Law Office, Patent and Trademark Office,
Washington, D.C. 20231, or to the Office of Information and Regulatory
Affairs of OMB, New Executive Office Bldg., 725 17th St. NW, rm. 10235,
Washington, DC 20503, Attn: Desk Officer for the Patent and Trademark
Office.
The PTO has determined that this Advance Notice has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
B. Discussion of Specific Topics
1. Simplifying request for small entity status (37 CFR 1.27)
Summary: The PTO is considering simplifying applicant's request for
small entity status. The currently used small entity statement forms
would be eliminated as they would no longer be needed.
Specifics of Change being Considered: Small entity status would be
established at any time by a simple assertion of entitlement to small
entity status without the currently required formalistic reference to
37 CFR 1.9. Payment of the (exact) small entity basic filing fee would
be considered an assertion of small entity status. To establish small
entity status after payment of the basic filing fee, a written
assertion of small entity status would be required to be submitted with
or prior to a fee payment. There would be no change in the current
requirement to make an investigation in order to determine entitlement
to small entity status; the PTO would only be changing the ease with
which small entity status can be claimed once it has been determined
that a claim to such status is appropriate.
Problem and Background: 37 CFR 1.27 currently requires that a
request for small entity status be accompanied by submission of an
appropriate statement that the party seeking small entity status
qualifies in accordance with 37 CFR 1.9. Either a reference to 37 CFR
1.9 or a specific statement relating to the provisions of 37 CFR 1.9 is
mandatory. For a small business, the small business must either state
that exclusive rights remain with the small business, or if not,
identify the party to which some rights have been transferred so that
the party to which rights have been transferred can submit its own
small entity statement (37 CFR 1.27(c)(1)(iii)). This can lead to the
submission of multiple small entity statements for each request for
small entity status where rights in the invention are split. The
request for small entity status and reference/statement may be
submitted prior to paying, or at the time of paying, any small entity
fee. In part, to ensure that at least the reference to 37 CFR 1.9 is
complied with, the PTO has produced four types of small entity
statement forms (including ones for the inventors, small businesses and
non-profit organizations) that include the required reference to 37 CFR
1.9 and specific statements as to exclusive rights in the invention.
Additionally, the statement forms relating to small businesses and non-
profit organizations need to be signed by an appropriate official
empowered to act on behalf of the small business or non-profit
organization. Refunds of non-small entity fees can only be obtained if
a refund is specifically requested within two months of the payment of
the full (non-small entity) fee and is supported by the required small
entity statement. See 37 CFR 1.28(a)(1). The two-month refund window is
not extendable.
The rigid requirements of 37 CFR 1.27 and 1.28 have led to a
substantial number of problems. Applicants, particularly pro se
applicants, do not always recognize that a particular reference to 37
CFR 1.9 is required in their request to establish small entity status.
They believe that all they have to do is pay the small entity fee and
state that they are a small entity. Further, the time required to
ascertain who are the appropriate officials to sign the statement and
to have the statements (referring to 37 CFR 1.9) signed and collected
(where more than one is necessary), results, in many instances, in
having to pay the higher non-small entity fees and then seek a refund.
These situations result in: (1) small entity applicants also having to
pay additional fees (e.g., surcharges and extension(s) of time fees for
the delayed submission of the small entity statement form); (2)
additional correspondence with the PTO to perfect a claim for small
entity status; and (3) the filing of petitions with petition fees to
revive abandoned applications. This increases the pendency of the
prosecution of the application in the PTO and, in some cases, results
in loss of patent term. For example, under current procedures, if a pro
se applicant files a new application with small entity fees but without
a small entity statement, the PTO mails a notice to the pro se
applicant requiring the full basic filing fee of a non-small entity.
Even if the applicant timely files a small entity statement, the
applicant must still timely pay the small entity surcharge for the
delayed submission of the small entity statement to avoid abandonment
of the application. A second example is a non-profit organization
paying the basic filing fee as a non-small entity because of difficulty
in obtaining the non-profit small entity statement form signed by an
appropriate official. In this situation, a refund pursuant to 37 CFR
1.26, based on establishing status as a small entity, may only be
obtained if a statement under 37 CFR 1.27 and the request for the
excess amount are filed within the non-extendable two-month period from
the date of the timely payment of the full fee. A third example is an
application filed without the basic filing fee on behalf of a small
business by a practitioner who includes the standard authorization to
pay additional fees. The PTO will immediately charge the non-small
entity basic filing fee without specific notification thereof at the
time of the charge. By the time the deposit account statement is
received and reviewed, the two-month period for refund may have
expired.
Accordingly, a simpler procedure to establish small entity status
would reduce processing time within the PTO (Patent Business Goal 1)
and would be a tremendous benefit to small entity applicants as it
would eliminate the time-consuming and aggravating processing
requirements that are mandated by the current rules. Thus, the proposed
simplification would help small entity applicants to receive patents
sooner with fewer expenditures
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in fees and resources and the PTO could issue the patent with fewer
resources (Patent Business Goals 4 and 5).
Simplified Request for Small Entity Status: The PTO is considering
allowing small entity status to be established by the submission of an
assertion of entitlement to small entity status. The current formal
requirements of 37 CFR 1.27, which include a reference to either 37 CFR
1.9, or to the exclusive rights in the invention, would be eliminated.
If small entity status is to be requested at the time of payment of the
basic filing fee, the payment of the (exact) small entity basic filing
fee will be considered to be a sufficient assertion. If small entity
status was not established when the basic filing fee was paid, a later
claim to small entity status would be by way of a written assertion.
Payment of a small entity fee (e.g., extension of time, or issue fee)
without inclusion of a written assertion would not be sufficient.
The written assertion will not be required to be presented in any
particular form. Written assertions of small entity status or
references to small entity fees will be liberally interpreted to
represent the required assertion. The written assertion could be made
in any paper filed in or with the application and need be no more than
a simple sentence or a box checked in an application transmittal letter
or reply cover sheet. Accordingly, small entity status could be
established without submission of any of the current small entity
statement forms (PTO/SB/09-12) that embody and comply with the current
requirements of 37 CFR 1.27 and which are therefore now used to
establish small entity status.
An applicant filing a patent application and paying the exact small
entity basic filing fee would automatically establish small entity
status for the application even without any further written assertion
of small entity status. If payment is made, but it is not the exact
small entity basic filing fee required and a written assertion of small
entity status is not present, the PTO would mail a notice of
insufficient filing fees as in current practice. The PTO would not
consider a basic filing fee submitted in an amount above the correct
small entity basic filing fee, but below the non-small entity filing
fee, as a request to establish small entity status unless an additional
written assertion is also present. Of course, the submission of a basic
filing fee below the correct small entity basic filing fee would not
serve to establish small entity status. Where an application is
originally filed by a party, who is in fact a small entity, with an
authorization to charge fees (including filing fees) and no indication
(assertion) of entitlement to small entity status, that authorization
would not be sufficient to establish small entity status unless the
authorization was specifically directed to small entity filing fees.
The general authorization to charge fees would continue to be acted
upon immediately and the full (not small entity) filing fees would be
charged with applicant having two months to request a refund by
asserting entitlement to small entity status. This would be so even if
the application were a continuing application where small entity status
had been established in the prior application.
Once small entity status is established in an application, any
change in status from small to non-small, would also require a specific
written assertion to that extent, similar to current practice.
The party who could request small entity status would be any party
permitted by PTO regulations to pay the basic filing fee and file a
paper in the application. This eliminates the additional requirement of
obtaining the signature of an appropriate party other than the party
prosecuting the application. By way of example, in the case of three
pro se inventors for a particular application, any of the three
inventors upon filing the application could pay a small entity basic
filing fee and thereby establish small entity status for the
application. For small business concerns and non-profit organizations,
the practitioner could supply the assertion rather than the current
requirement for an appropriate official of the organization to execute
a small entity statement form.
PTO policy and procedures already permit establishment of small
entity status in certain applications through simplified procedures.
For example, small entity status may be established in a continuing or
reissue applications simply by payment of the small entity basic filing
fee if the prior application/patent had small entity status. See 37 CFR
1.28(a)(2). The instant concept of payment of the basic statutory
filing fee to establish small entity status in a new application is
merely a logical extension of that practice.
There may be some concern that elimination of the small entity
statement forms will result in applicants requesting small entity
status who are not actually entitled to such status. On balance, it
seems that more errors occur where small entity applicants who are
entitled to such status run afoul of procedural hurdles formed by the
requirements of 37 CFR 1.27 than the requirements help to prevent
status claims for those who are not in fact entitled to such status.
Correction of any inadvertent and incorrect establishment of small
entity status would be by way of a paper under 37 CFR 1.28(c) as in
current practice.
Continued Obligations for Thorough Investigation of Small Entity
Status: Applicants should not confuse the fact that the PTO is making
it easier to qualify for small entity status with the need to do a
complete and thorough investigation and to assert that they do in fact
qualify for small entity status. It should be clearly understood that,
even though it would be much easier to assert and thereby establish
small entity status, applicants would continue to need to make a full
and complete investigation of all facts and circumstances before making
a determination of actual entitlement to small entity status. Where
entitlement to small entity status is uncertain it should not be
claimed. See MPEP 509.03. The assertion of small entity status (even by
mere payment of the exact small entity basic filing fee) is not
appropriate until such an investigation has been completed. Thus, in
the previous example of the three pro se inventors, before one of the
inventors could pay the small entity basic filing fee to establish
small entity status, the inventor would need to check with the other
two inventors to determine whether small entity status was appropriate.
The intent of 37 CFR 1.27 is that the person making the assertion
of small entity status is the person in a position to know the facts
about whether or not status as a small entity can be properly
established. That person, thus, has a duty to investigate the
circumstances surrounding entitlement to small entity status to the
fullest extent. Therefore, while the PTO is interested in making it
easier to claim small entity status, it is important to note that small
entity status must not be claimed unless the person or persons can
unequivocally make the required self-certification.
Consistent with 37 CFR 1.4(d)(2), which sets forth that for the
presentation to the PTO (whether by signing, filing, submitting, or
later advocating) of any paper by a party, whether a practitioner or
non-practitioner, the payment of a small entity basic filing fee would
constitute a certification under 37 CFR 10.18. Thus, a simple payment
of the small entity basic statutory filing fee will activate the
provisions of 37 CFR 1.4(d)(2) and, by that, provoke the self-
certification as set forth in 37 CFR 10.18(b), regardless of whether
the party is a practitioner or non-practitioner.
[[Page 53502]]
2. Requiring separate surcharges and supplying filing receipts (37 CFR
1.53)
Summary: The PTO is considering charging separate surcharges in a
nonprovisional application for the delayed submission of an oath/
declaration, and the application filing fee, and issuing another filing
receipt, without charge, to correct any errors or to update filing
information, as needed.
Specifics of Change Being Considered: The PTO would charge a
separate surcharge (currently $130) for each missing part item that is
submitted in a delayed manner. Thus, the delayed submission of both an
oath/declaration under 37 CFR 1.63, and the payment of the basic filing
fee in a nonprovisional application filed under 35 U.S.C. 111(a), would
result in the imposition of two surcharges (totaling $260). The change
under consideration would not apply to provisional applications filed
under 35 U.S.C. 111(b) and 37 CFR 1.53(c). In addition, as the basic
national fee must be submitted by the expiration of the applicable
twenty- or thirty-month period in 35 U.S.C. 371(b) in a PCT
application, the change under consideration would also be inapplicable
to applications filed under the PCT.
While the PTO would be charging a separate surcharge for each
missing part submitted in a delayed manner, the PTO would also be
providing three new user-friendly services which were requested by, and
would provide benefits that are desired by, our customers. The three
new user-friendly services are: (1) issuing a corrected filing receipt
without the fee presently required by 37 CFR 1.9(h) when an oath/
declaration, and/or the payment of the application filing fee are
submitted in a delayed manner; (2) issuing a corrected filing receipt
without the fee presently required by 37 CFR 1.19(h), and without a
question as to fault, for any error in the filing receipt; and (3)
placing a copy of each filing receipt supplied to the applicant in the
application file as evidence of issuance of the filing receipt.
Background: Approximately thirty-one per cent of all nonprovisional
applications filed are missing parts applications, that is, an
application filed without an executed oath/declaration and/or the
application filing fee, with a substantial burden being placed on the
PTO to provide additional handling, storage and processing for these
missing part applications. Neither the payment of the application
filing fee nor an oath/declaration in compliance with 37 CFR 1.63 is
needed for an application to meet the minimum requirements to be
accorded a filing date in a nonprovisional application. See 37 CFR
1.53(b). Currently, the PTO charges a single surcharge of $130 for the
filing of an oath/declaration or the filing fee or both on a date later
than the application filing date. At present, the PTO issues a filing
receipt at the time a determination is made that an application meets
the minimum requirements to receive a filing date. The filing receipt
includes, among other things, bibliographic information (e.g.,
inventive entity/application identifier, title, continuing data,
inventor's city and state address, foreign priority, attorney docket
number), while also denoting, among other things, the application
number, filing date and receipt of the application filing fee. A
``Notice of Omitted Item(s)'' (form PTO-1669) or a ``Notice To File
Missing Parts'' (PTO-1533), if needed, are mailed separately. A
``Notice of Omitted Items'' is mailed by the PTO in an application
wherein the application papers so deposited have been accorded a filing
date, but a portion (e.g., some of the page(s) of or figure(s) of
drawings described in the specification) has been omitted from the
submitted application parts. See Change in Procedure Relating to an
Application Filing Date; Notice, 61 FR 30041 (June 13, 1996), 1188 Off.
Gaz. Pat. Office 48 (July 9, 1996), and MPEP 601.01(d)-(h). A ``Notice
To File Missing Parts'' is mailed by the PTO in an application wherein
a part of the application (e.g., the oath/declaration, or the
appropriate application filing fee) has been omitted on filing. See
Changes in Practice in Supplying Certified Copies and Filing Receipts;
Notice, 1199 Off. Gaz. Pat. Office 38 (June 10, 1997), and MPEP
601.01(a). Examination of the application does not begin until all the
required parts (e.g., filing fee, and oath/declaration) are received.
See 37 CFR 1.53(h).
In addition, the PTO recently amended 37 CFR 1.41 and 1.53
(effective December 1, 1997) to provide that the names of the inventors
are no longer required in order for an application to meet the minimum
requirements to be accorded a filing date. See Changes to Patent
Practice and Procedure; Final Rule Notice, 62 FR 53131, 53186-88
(October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 111-13 (October 21,
1997). The names of all the inventors are taken from an executed oath/
declaration timely submitted in compliance with 37 CFR 1.63, with the
inventive entity being set at that time, 37 CFR 1.41(a)(1). The filing
receipt is mailed even if an oath/declaration in compliance with 37 CFR
1.63, the application filing fee, or the actual names of the inventors
have not been submitted on filing. In an application which is entitled
to a filing date but not naming the actual inventors on filing, an
identifier (e.g., the attorney's docket number, or all or a part of the
names of the actual inventors) may be used to identify the application,
37 CFR 1.41(a)(3). In the past, upon the filing of an oath/declaration
in compliance with 37 CFR 1.63, the PTO did not issue a corrected
filing receipt, but only updated PTO records as to the actual inventors
for the application. If (1) the inventive entity being submitted by the
later filed oath/declaration was different from the identifier/
inventive entity used to identify the application on filing and (2)
applicant(s) desired a corrected filing receipt containing the
corrected information or correction of any other information contained
thereon (not due to PTO error), then applicant(s) had to request such
in a separate paper filed with the PTO along with the requisite fee
under 37 CFR 1.19(h). Further, where a proper small entity statement
was not submitted until after the mailing of the filing receipt and a
corrected filing receipt was desired to show small entity status based
on the small entity statement submitted after the mailing of the filing
receipt, a request for such a corrected filing receipt must have been
filed along with the requisite fee under 37 CFR 1.19(h).
Separate surcharges: The cost for processing these missing parts
applications has increased. Further, the separate submission of each
missing part in a delayed manner causes the PTO to perform double the
amount of work, as the application would be twice processed for a
submitted missing part, with presently only one surcharge being
required. Those who delay in submitting either of the items noted above
should bear the costs. Patent Business Goal (5) is to assess fees
commensurate with resource utilization and customer efficiency. In
support of that goal, it is being considered that a separate surcharge
be required for the filing of an oath/declaration in compliance with 37
CFR 1.63, and for the payment of the application filing fee on a date
later than the application filing date. Therefore, if both the oath/
declaration and the application filing fee were submitted on a date
later than the application filing date, a payment of $260 ($130 for the
late filing of the oath/declaration, and $130 for the late filing of
the application filing fee) in current fees would be due on the
application.
No incentive currently exists for the submission of the basic
filing fee on filing if an executed oath or declaration is not also
available for submission.
[[Page 53503]]
This change would encourage applicants to submit the basic filing fee
on filing, even if an executed oath or declaration is not available for
submission. Patent Business Goal (1) is to reduce PTO processing time
to twelve months or less for all inventions. This change, in
combination with the change under consideration in topic 3, would
reduce pre-examination processing time, since it would encourage the
submission on filing of an application in condition for examination,
even if an executed oath or declaration is not available for submission
on filing.
Three new services: While the PTO would be charging a separate
surcharge for each missing part submitted in a delayed manner, the PTO
would also be providing three new user-friendly services which were
requested by our customers and provide benefits that are desired by our
customers. As a first new service, in addition to the filing receipt
being mailed at the time the application is accorded a filing date, a
corrected filing receipt would always be mailed to reflect receipt of
the oath/declaration in compliance with 37 CFR 1.63, and/or the payment
of the application filing fee when they are submitted. No longer would
applicant have to file a request for a new filing receipt, to pay a
separate fee for it per 37 CFR 1.19(h), or submit a status letter to
see if PTO records were updated due to the filing of the oath/
declaration. The corrected filing receipt should reflect the actual
inventive entity of the application, if it was mailed in response to
the receipt of the oath/declaration in compliance with 37 CFR 1.63.
Patent Business Goal (4) is to exceed our customers' quality
expectations, through the competencies and empowerment of our
employees. This new service would be in support of that goal. The PTO
has begun this first new service in anticipation of the increase in
surcharge fees and to better serve our customers' needs.
As a second new service, if there is an error in the data printed
on the filing receipt and a request for a corrected receipt is
submitted, the PTO would issue a corrected filing receipt without a fee
and without a question as to fault. Patent Business Goal (1) is to
reduce PTO processing time to twelve months or less for all inventions.
Patent Business Goal (4) is to exceed our customers' quality
expectations, through the competencies and empowerment of our
employees. Without having to determine who caused the error in the
filing receipt, corrected filing receipts would be issued faster and
with less inconvenience to all, which would be in support of those
goals. Further, the PTO has received substantial feedback that timely
receipt of an accurate filing receipt is of great importance to our
customers. This second new service is in direct response to this
repeated message. Again, the PTO has already begun this second new
service in anticipation of the increase in surcharge fees and to better
serve our customers' needs.
As a third new service, every time a filing receipt is issued, the
PTO would place a copy of the filing receipt in the application file as
evidence thereof. Today, a copy of a filing receipt is not placed in
the application file, irrespective of the reasons for its issuance. By
always placing a copy of the filing receipt in the application file, it
will be easier to later determine whether there is still an error in
the filing receipt in question, or whether a filing receipt or a
corrected filing receipt was actually mailed. Further, since a copy of
the filing receipt would now be located in the application file, the
time for the PTO to answer questions regarding a particular filing
receipt would be greatly reduced. Patent Business Goal (4) is to exceed
our customer's quality expectations, through the competencies and
empowerment of our employees. This would be in support of that goal.
3. Permitting delayed submission of an oath or declaration, and
changing the time period for submission of the basic filing fee and
English translation (37 CFR 1.52, 1.53)
Summary: The PTO is considering amending 37 CFR 1.53 to provide
that an executed oath or declaration for a nonprovisional application
would not be required until the expiration of a period that would be
set in a ``Notice of Allowability'' (PTOL-37). The PTO is also
considering amending 37 CFR 1.52 and 1.53 to provide that the basic
filing fee and an English translation (if necessary) for a
nonprovisional application must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
Specifics of Change Being Considered: The PTO is considering
amending 37 CFR 1.53 to provide that an executed oath or declaration
for a nonprovisional application would not be required until the
applicant is notified that it must be submitted within a one-month
period that would be set in a ``Notice of Allowability,'' provided that
the following are submitted within one month (plus any extensions under
37 CFR 1.136) from the filing date of the application: (1) the name(s),
residence(s), and citizenship(s) of the person(s) believed to be the
inventor(s); (2) all foreign priority claims; and (3) a statement
submitted by a registered practitioner that: (a) an inventorship
inquiry has been made, (b) the practitioner has sent a copy of the
application (as filed) to each of the person(s) believed to be the
inventor(s), (c) the practitioner believes that the inventorship of the
application is as indicated by the practitioner, and (d) the
practitioner has given the person(s) believed to be the inventor(s)
notice of their obligations under 37 CFR 1.63(b). In addition, the PTO
is considering requiring an applicant to file a continuing application
to file an executed oath or declaration naming an inventorship
different from that previously stated by the practitioner once
prosecution in an application is closed.
The PTO is also considering amending 37 CFR 1.52 and 1.53 to
provide, by rule, that the basic filing fee and an English translation
(if the application was filed in a language other than English) for a
nonprovisional application must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
Applicants will not be given a notice (e.g., a ``Notice To File Missing
Parts'' (PTO-1533)) that the basic filing fee is missing or
insufficient, unless the application is filed with an insufficient
basic filing fee that at least equals the basic filing fee that was in
effect the previous fiscal year. Finally, the filing receipt will
indicate the amount of filing fee received and remind applicants that
the basic filing fee must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
These changes will permit the PTO to virtually eliminate the
current practice of mailing notices (e.g., a ``Notice To File Missing
Parts'') during the initial processing of a nonprovisional application
to require submission of an oath or declaration, basic filing fee, or
an English translation.
Background: As discussed above, 37 CFR 1.53(b), as amended
effective December 1, 1997, does not require that a nonprovisional
application under 35 U.S.C. 111(a) include an executed oath or
declaration under 37 CFR 1.63, the names of the inventor(s), any filing
fee, or English language application papers for the application to meet
the minimum requirements to be accorded a filing date. The PTO,
however, does not examine the application until an executed oath or
declaration under 37 CFR 1.63 (naming the inventor(s)), the filing fee,
and English language application papers are submitted. If an
[[Page 53504]]
executed oath or declaration under 37 CFR 1.63, filing fee, or English
language application papers are not submitted with the filing of a
nonprovisional application, the PTO will mail a notice requiring that
they be filed (with a surcharge) within two months from the mail date
of the notice (plus any extensions under 37 CFR 1.136) to avoid
abandonment.
The PTO has received numerous comments from the public indicating
that there is great difficulty in filing an executed oath or
declaration (e.g., at times it is difficult to determine the names of
the actual inventor(s) or it may be difficult to locate the
inventor(s)), and that pre-examination processing of a nonprovisional
application is a long burdensome process. Difficulty in obtaining the
signatures of all the inventor(s) has often resulted in a petition (and
fee) under 37 CFR 1.47 (filing when an inventor refuses to sign or
cannot be reached). The PTO cannot eliminate the requirement for an
oath or declaration in a nonprovisional application without a statutory
change. See 35 U.S.C. 111(a)(2)(C) and 115. The Commissioner, however,
has latitude as to when an oath or declaration and the filing fee must
be submitted for a nonprovisional application. See 35 U.S.C. 111(a)(3).
Discussion: The PTO is considering amending 37 CFR 1.53 to provide
that an executed oath or declaration for a nonprovisional application
is not required until the expiration of a period that would be set in a
``Notice of Allowability'' (plus extensions under 37 CFR 1.136), rather
than prior to examination of the application. Permitting delayed
submission of the oath or declaration until the expiration of a period
set in the mailing of a ``Notice of Allowability'' would allow
practitioners additional time to have the oath or declaration executed
by all the inventor(s). In addition, if the invention turns out to be
unpatentable, no signatures for the oath or declaration would ever be
needed.
If an oath or declaration is not submitted within one month (plus
any extensions under 37 CFR 1.136) from the filing date of the
application, the PTO will require that within this period a registered
practitioner: (1) submit the name(s), residence(s), and citizenship(s)
of the person(s) believed to be the inventor(s); (2) submit all foreign
priority claims; and (3) make and submit a statement that he or she has
made an inventorship inquiry (i.e., ascertain the inventorship of the
application to the best of his or her knowledge) and that he or she
believes that the inventorship is in fact those person(s) so identified
as the person(s) believed to be the inventor(s). In addition, the
practitioner must state that he or she has sent such person(s) a copy
of the application (specification, including claims, and drawings)
filed in the PTO, and given such person(s) notice of their obligations
to review and understand the contents of the application and of their
duty to disclose to the PTO all information known to the person to be
material to patentability under 37 CFR 1.56. See 37 CFR 1.63(b).
The surcharge set forth in 37 CFR 1.16(e) would also be required if
the oath or declaration is submitted on a date later than the filing
date of the application, regardless of whether the oath or declaration
is filed before a ``Notice of Allowability'' is mailed.
For examination purposes, it would be presumed that the inventive
entity is that set forth by the practitioner in the application as
forwarded to the examiner. As discussed above, all claims for foreign
priority benefits under 35 U.S.C. 119 or 365 would be submitted prior
to examination. The examiner needs this foreign priority claim
information to determine whether an additional ``back-up'' rejection is
appropriate. See MPEP 904.02. If an oath or declaration is omitted on
filing, the first Office action would inform applicant(s) (e.g.,
through an attached Notice of Informal Application, PTO-152 ) that an
oath or declaration is outstanding.
37 CFR 1.48(f)(1) would continue to provide that, in an application
not including an executed oath or declaration, the submission of an
executed oath or declaration (such as in reply to a ``Notice of
Allowability'') naming an inventorship different from that previously
indicated by the practitioner as the person(s) believed to be the
inventor(s) would operate to correct the inventorship without the need
for the filing of a petition under 37 CFR 1.48. Nevertheless, this
action may cause examination-related problems with the application, in
that upon entry of such an oath or declaration the examiner would have
to consider whether new rejection(s) are necessary under, for example,
35 U.S.C. 102(a) (``invention * * * by others''), or 102(e)
(``invention * * * by another''), or 103/102(a) or (e). Therefore, the
PTO is considering requiring a processing fee (in addition to the
surcharge) for submission of such an oath or declaration after the
first Office action but before the close of prosecution on the merits.
In addition, if such an oath or declaration necessitates that a new
ground of rejection be made, the next Office action containing the new
ground of rejection, absent anything to the contrary, may be made
final. See MPEP 706.07(a). The PTO is also considering prohibiting the
submission of such an oath or declaration that names an inventorship
different from that previously indicated by the practitioner as the
person(s) believed to be the inventor(s) after prosecution on the
merits has closed (e.g., after a final Office action, allowance, or
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)), and
requiring that a continuing application be filed in order to permit
entry of such an oath or declaration.
The right to prosecute an application (e.g., appoint a
representative by a power of attorney or authorization of agent) flows
from ownership of the application, which in turn flows from
inventorship. In the absence of an assignment the inventor has the
right to conduct prosecution of the application (even if the
application was prepared and filed by the company for whom the inventor
works). Where there is an assignment, the assignee may intervene
pursuant to 37 CFR 3.71 and conduct the prosecution to the exclusion of
the named inventors. In a large percentage of applications, inventors
execute an assignment when the oath or declaration under 37 CFR 1.63 is
executed, and appoint representatives as part of the oath or
declaration.
Delaying execution of the oath or declaration will, most likely,
also encourage delaying execution of the assignment. 37 CFR 3.71
requires an actual assignee of record and does not provide a right of
prosecution for parties having an expectation of assignment (e.g.,
based on an employment contract or a shop right). Hence, since a delay
in executing the oath or declaration under 37 CFR 1.63 will probably
cause a delay in executing an assignment, an assignee may be unable to
avail itself of controlling prosecution under 37 CFR 3.71.
A registered practitioner may take some actions in a patent
application by providing his registration number on the paper. See 37
CFR 1.34(b). However, only an attorney or agent that is of record, the
inventor, or the assignee of the entire interest can take certain
actions in an application. For example, only an attorney or agent that
is of record can change the correspondence address. See 37 CFR 1.33(a).
In addition, only an attorney or agent that is of record may execute a
power to inspect. See 37 CFR 1.14(e)(2).
The PTO is also considering amending 37 CFR 1.34(b) to include in
the definition of ``attorney or agent of record'' the attorney or agent
that filed
[[Page 53505]]
the application. With such a change, an appointment as a representative
would not be required before the attorney could change the address in
the application file or authorize another to inspect the patent
application file, among other things. In addition, 37 CFR 1.34(b) would
be amended to provide that a pro se inventor who signs a transmittal
letter for an application is considered to represent all inventors for
the purposes of prosecuting the patent application. Pro se inventors
frequently do not realize that all inventors need to sign each piece of
correspondence to the Office (e.g., each amendment, see MPEP 714.01(a))
and a pro se inventor will frequently have difficulty obtaining the
other inventor's signature during the time provided. With such a
change, pro se applicants that do not have the foresight of appointing
a single representative will have an easier time filing a response to
Office actions.
Additionally, the PTO is considering amending 37 CFR 1.52(d) and
1.53 to provide that an English language translation (if the
application was filed in a language other than English) and the basic
filing fee be submitted no later than one month from the filing date of
the nonprovisional application. This one-month period would be
extendable under 37 CFR 1.136. The current process of mailing notices
(e.g., a ``Notice To File Missing Parts'' (PTO-1533)) which gives a
period (e.g., two months) for submitting the basic filing fee or
English translation in a nonprovisional application would be
eliminated, as: (1) the basic filing fee would be due on filing, or
required with the surcharge under 37 CFR 1.16(e) within one month (plus
extensions under 37 CFR 1.136) from the filing date of the application;
and (2) any English translation (if the application was filed in a
language other than English) would be required with the processing fee
set forth in 37 CFR 1.17(k) within one month (plus extensions under 37
CFR 1.136) from the filing date of the application. Except for the
situation discussed below, there is no apparent justification for the
PTO continuing to mail notices to advise applicants of that which they
should already know: (1) that they did not submit the basic filing fee
with the application; or (2) that they did not file the application in
English.
For example: (1) if the basic filing fee is submitted on filing, no
surcharge under 37 CFR 1.16(e) or extension fee under 37 CFR 1.17(a) is
required; (2) if the basic filing fee is not submitted on filing but is
submitted within one month of the application filing date, the
surcharge under 37 CFR 1.16(e) is required but no extension fee under
37 CFR 1.17(a) is required; and (3) if the basic filing fee is not
submitted on filing or within one month of the application filing date,
but is submitted within six months (the one month that would be
provided by rule plus five additional months that may be obtained
pursuant to 37 CFR 1.136) of the application filing date, the surcharge
under 37 CFR 1.16(e) and appropriate extension fee under 37 CFR 1.17(a)
are required. The processing fee set forth in 37 CFR 1.17(k) is
required whenever the original application is filed in a language other
than English, regardless of when the English translation is submitted.
Exception: In the situation in which an application is filed with
an insufficient basic filing fee (due to a fee increase) that at least
equals the basic filing fee that was in effect the previous Fiscal
Year, the applicant will be given a filing fee deficiency notice, which
notice will set a one-month period (extendable under 37 CFR 1.136)
within which the balance of the current basic filing fee and the
surcharge under 37 CFR 1.16(e) must be filed to avoid abandonment. In
all other situations, the current basic filing fee, if not submitted on
filing, must be submitted with the surcharge under 37 CFR 1.16(e)
within one month (plus any extensions under 37 CFR 1.136) from the
filing date of the application to avoid abandonment of the application.
The filing receipt will indicate the filing fee received and would be
modified to include language reminding applicants that the basic filing
fee must be submitted within one month (plus any extensions under 37
CFR 1.136) from the filing date of the application.
For PCT international applications: The PTO is considering amending
37 CFR 1.494 and 1.495 to provide that an English translation of the
international application, if filed in a language other than English
(35 U.S.C. 371(c)(2)), would be required within one month of the
expiration of the applicable twenty-or thirty-month period in 35 U.S.C.
371(b), which one-month period may be extended under 37 CFR 1.136. The
PTO is also considering amending 37 CFR 1.494 and 1.495 to provide that
an oath or declaration (35 U.S.C. 371(c)(4)) would not be required
until the applicant is notified that it must be submitted within a one-
month period that would be set in a ``Notice of Allowability,''
provided that the following are submitted within one month (which one-
month period may be extended under 37 CFR 1.136) of the expiration of
the applicable twenty-or thirty-month period in 35 U.S.C. 371(b): (1)
the residence of each inventor (the name and citizenship of each
inventor must be provided on the PCT Request); and (2) a statement
submitted by a registered practitioner that: (a) the practitioner has
sent a copy of the application (as filed) to each of the inventors, and
(b) the practitioner has given the inventor(s) notice of their
obligations under 37 CFR 1.63(b). The basic national fee (35 U.S.C.
371(c)(1)) would continue to be required by the expiration of the
applicable twenty-or thirty-month period in 35 U.S.C. 371(b), which
period is non-extendable.
Patent Business Goal (1) is to reduce PTO processing time to twelve
months or less for all inventions. Reducing pre-examination cycle time
of an application and forwarding applications for examination in a
shorter period of time would be consistent with that goal. This change
(in combination with the change to the period within which an oath or
declaration must be submitted) will greatly reduce the number of
notices that the PTO must issue during the pre-examination processing
of new applications. These changes will also result in applications
being initially processed and forwarded for examination in a shorter
period of time, and reduce the amount of storage space used for and
ease the tracking of applications in pre-examination processing.
The PTO considers the changes to permit delayed submission of an
oath or declaration and to require the basic filing fee and any
necessary translation within one month of the application filing date
to be linked, in that together they will permit a great reduction in
the number of notices that the PTO must issue during the pre-
examination processing of new applications. Thus, comments opposing any
change to require the basic filing fee and any necessary translation
within one month of the application filing date should consider that
the PTO will probably not adopt the change to permit delayed submission
of an oath or declaration if the PTO does not also adopt the change to
require the basic filing fee and any necessary translation within one
month of the application filing date.
Questions: The PTO is specifically requesting comments on the
following issues:
1. The submission of an oath or declaration after the first Office
action which changes the names of the inventor(s) from those originally
indicated by the practitioner may cause additional work to be performed
by the PTO, in particular, by an examiner, as set forth above. As a
result, the PTO is considering charging an additional processing fee
for the submission of
[[Page 53506]]
such an oath or declaration, and prohibiting the submission of such an
oath or declaration after the close of prosecution. Would the benefits
gained by the ability to delay the filing of the oath or declaration
outweigh the drawbacks resulting from: (1) the PTO charging a fee for
the submission of such an oath or declaration after the first Office
action but before close of prosecution; and (2) the PTO prohibiting the
submission of an oath or declaration that names an inventorship
different from that previously indicated by the practitioner as the
person(s) believed to be the inventor(s) after the close of
prosecution?
2. Over time, obtaining an executed oath or declaration from all of
the inventors becomes increasingly difficult: inventors may forget
about or lose interest in an application; they may leave the
corporation; and they may become disgruntled. While delaying obtaining
the inventor's signature on an oath or declaration may be initially
beneficial to the practitioner, it would be more difficult for the
practitioner to obtain all of the inventors' signatures on an oath or
declaration at the time of allowance (which may be years after filing).
National applications resulting from a PCT application entering the
national stage have a higher incidence of petitions under 37 CFR 1.47
than national applications filed under 35 U.S.C. 111(a). This may be
caused by delay in filing the oath or declaration, which could be
thirty months after the filing of the PCT application. Therefore,
permitting applicants to delay the submission of an oath or declaration
until the expiration of a period set in a ``Notice of Allowability''
may result in an increase in the number of petitions filed under 37 CFR
1.47. Would the benefits gained by delaying the filing of the oath or
declaration outweigh the drawbacks resulting from the increased
difficulty in obtaining the inventor(s)' signatures on the oath or
declaration, and an increased number of petitions under 37 CFR 1.47 due
to the inability to obtain an inventor's signature? Is it a concern to
applicants that these petitions under 37 CFR 1.47 will be filed during
the publishing (and not pre-examination) process?
3. Delaying submission of the oath or declaration in a PCT
application until the mailing of a ``Notice of Allowability'' would
delay its entry into the national stage. A PCT application is not
accorded a 35 U.S.C. 102(e) date until the applicant fulfills the
requirements of 35 U.S.C. 371(c)(1), (2) and (4), which include filing
an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR
1.497. See 35 U.S.C. 371(c)(4). Is it a concern that, if an applicant
in a PCT application delays submission of the oath or declaration until
the period set in a ``Notice of Allowability,'' the PCT application
would be accorded a 35 U.S.C. 102(e) date as of the date the oath or
declaration is submitted?
4. Assuming the above-noted change to 37 CFR 1.34(b) is made giving
control of the prosecution to the filer (the attorney or agent that
filed the patent application) and the attorney or agent's client is not
the inventor, can the client (a potential assignee) take actions
allowed an assignee, such as filing a reissue application under 37 CFR
1.172 and submitting a 37 CFR 3.73 statement establishing the right of
an assignee to take action?
5. Assuming the above-noted change to 37 CFR 1.34(b) is made, how
should an attempt by the inventor(s) to appoint another representative
be treated? Should the inventor(s) first be required to file an oath or
declaration under 37 CFR 1.63? Should an actual assignee of the
inventor(s) be allowed to take action in an application and revoke the
attorney of record if an executed oath or declaration of the
inventor(s) has not been filed?
6. Notwithstanding any change to 37 CFR 1.34(a), where the
inventors execute an assignment but not an oath or declaration under 37
CFR 1.63, is the assignment effective so that the assignee can control
prosecution under 37 CFR 3.71 and take necessary action in accordance
with 37 CFR 3.73? Note that if status under 37 CFR 1.47 is accorded, if
the inventor who originally refused to execute the oath or declaration
assigns his interest, the non-signing inventor's assignee cannot
control prosecution of the application even if the inventor executes a
declaration. Who should the attorney or agent be understood to
represent absent an express authorization to act as a representative in
the application, the persons indicated as the inventors or an actual or
potential assignee?
4. Limiting the number of claims in an application (37 CFR 1.75)
Summary: The PTO is considering a change to 37 CFR 1.75 to limit
the number of total and independent claims that will be examined (at
one time) in an application.
Specific Change Being Considered: The PTO is considering a change
to the rules of practice to: (1) limit the number of total claims that
will be examined (at one time) in an application to forty; and (2)
limit the number of independent claims that will be examined (at one
time) in an application to six. In the event that an applicant
presented more than forty total claims or six independent claims for
examination at one time, the PTO would withdraw the excess claims from
consideration, and require the applicant to cancel the excess claims.
This change would apply to all non-reissue utility applications filed
on or after the effective date of the rule change, to all reissue
utility applications in which the application for the original patent
was subject to this change, and to national applications filed under 35
U.S.C. 111(a), as well as national applications that resulted from a
PCT international application.
Discussion: Applications containing an excessive number of claims
present a specific and significant obstacle to the PTO's meeting its
business goals of reducing PTO processing time to twelve months or less
for all inventions. While the applications that contain an excessive
number of claims are relatively few in percentage (less than 5%), these
applications impose a severe burden on PTO clerical and examining
resources, as they are extremely difficult to properly process and
examine. The extra time and effort spent on these applications has a
negative ripple effect, resulting in delays in the processing and
examination of all applications, which, in turn, results in an increase
in pendency for all applications. In view of the patent term provisions
of 35 U.S.C. 154, as amended by the Uruguay Round Agreements Act
(URAA), Pub. L. 103-465, 108 Stat. 4809 (1994), PTO processing time and
pendency are concerns to the PTO and all applicants. Thus, the PTO
considers it inappropriate to continue to permit the proclivity of a
relatively low number of applicants (less than 5%) for excessive claim
presentation to result in delays in examination and unnecessary
pendency for the vast majority of applicants.
Approximately 215,000 utility applications were filed in the PTO in
Fiscal Year 1997. PTO computer records indicate that the approximate
number and percentage of applications filed in Fiscal Year 1997
containing the following ranges of independent and total claims breaks
down as follows:
[[Page 53507]]
------------------------------------------------------------------------
Percentage FY
Applications filed in FY 1997 containing Number 1997 filings
------------------------------------------------------------------------
Over 50 independent claims.............. 11 00.005
Between 41 and 50 independent claims.... 23 00.011
Between 31 and 40 independent claims.... 77 00.358
Between 21 and 30 independent claims.... 275 00.128
Between 16 and 20 independent claims.... 536 00.249
Between 11 and 15 independent claims.... 1,887 00.878
Between 7 and 10 independent claims..... 7,024 03.267
Between 4 and 6 independent claims...... 27,147 12.627
Over 6 independent claims............... 9,833 4.896
Over 500 total claims................... 5 00.002
Between 201 and 500 total claims........ 88 00.041
Between 101 and 200 total claims........ 652 00.303
Between 61 and 100 total claims......... 2,514 01.169
Between 51 and 60 total claims.......... 2,143 00.997
Between 41 and 50 total claims.......... 4,056 01.887
Between 31 and 40 total claims.......... 8,631 04.014
Between 21 and 30 total claims.......... 23,323 10.848
Over 40 total claims.................... 9,458 4.399
------------------------------------------------------------------------
These numbers indicate that over 95% of all applications filed in
Fiscal Year 1997 contained fewer than forty total claims and over 95%
of all applications filed in Fiscal Year 1997 contained fewer than six
independent claims. Thus, the rule change under consideration should
not prevent the overwhelming majority of applicants from presenting the
desired number of total and independent claims for examination. In
addition, the rule change under consideration will benefit the
overwhelming majority of applicants, since it will stop a relatively
small number of applicants from occupying an inordinate amount of PTO
resources.
While the problem with applications containing an excessive number
of claims is now reaching a critical stage, this problem has long
confronted the PTO. In 1926, Commissioner Robertson remarked that
applications containing an excessive number of claims constitute the
greatest abuse confronting the PTO (then the Patent Office). See Ex
parte McCullough, 1927 Dec. Comm'r Pat. 12, 13 (1926). The issuance of
patents containing an excessive number of claims has also long been
considered an abuse of the courts and the public. See Carlton v. Bokee,
84 U.S. (17 Wall) 463, 471-72 (1873) (needless multiplication of
nebulous claims deemed calculated to deceive and mislead the public);
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1551 n.6, 10
USPQ2d 1201, 1206 n.6 (Fed. Cir. 1989) (presentation of the
infringement issue on an overgrown claims jungle to a jury and judge at
trial is an unprofessional exercise in obfuscation). Put simply,
applications (and the resulting patents) that contain an excessive
number of claims are a problem that has long confronted the PTO, the
courts, and the public.
Historically, this problem (applications containing an excessive
number of claims) has been dealt with on a case-by-case basis, in that
the presentation of an unreasonable number of claims in an application
may result in an undue multiplicity rejection. See MPEP 2173.05(n). The
CCPA has affirmed rejections based upon undue multiplicity when the
degree of repetition and multiplicity'' in the claims ``beclouds
definition in a maze of confusion.'' See In re Chandler, 319 F.2d 211,
225, 138 USPQ 138, 148 (CCPA 1963); see also In re Chandler, 254 F.2d
396, 117 USPQ 361 (CCPA 1958). In subsequent decisions, however, the
CCPA has declined to hold that the presentation of any particular
number of claims is so excessive as to confuse or obscure the
inventions defined by the claims. See In re Wakefield, 422 F.2d 897,
164 USPQ 636 (CCPA 1970); and In re Flint, 411 F.2d 1353, 162 USPQ 228
(CCPA 1969). These subsequent decisions have severely cut back on the
use of rejections based upon undue multiplicity. See Ex parte Sheldon,
172 USPQ 319 (BPAI 1972).
After the 1970s, the PTO balanced the difficulty of making and
defending undue multiplicity rejections with likelihood of its success
on appeal against the burden of just examining applications containing
an excessive number of claims, and generally chose to simply suffer the
burden of examining such applications. Recently, however, this problem
(applications containing an excessive number of claims) has been
exacerbated by the advent of word-processing equipment, which
significantly reduces the skill and effort required to draft and
present a seemingly endless number of claims in an application. The
change during the last twenty years to the index of claims in the
application file wrapper illustrates this point: the file wrapper for
the 1979 series (the 06 series) applications had an index for fifty
claims; the file wrapper for the 1987 series (the 07 series) and 1993
series (the 08 series) applications had an index for 100 claims; the
file wrapper for the 1998 series (the 09 series) now has an index for
150 claims.
For these reasons, it is now time for the PTO to act to limit the
use of excessive numbers of claims in an application. The PTO is
specifically proposing to deal with this problem now on a systemic
basis by limiting, via rulemaking, the number of claims that will be
examined in an application. This proposal supports the PTO business
goals of reducing PTO processing time to twelve months or less for all
inventions, and aligning fees to be commensurate with resource
utilization and customer efficiency.
A rule limiting the number of claims in an application is within
the PTO's rulemaking authority under 35 U.S.C. 6(a) if it ``is within
the [PTO's] statutory authority and is reasonably related to the
purposes of the enabling legislation * * * and does no violence to due
process.'' See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606, 225 USPQ
543, 252 (Fed. Cir. 1985) (citations omitted).
35 U.S.C. 41(a)(1)(B) provides that an applicant must pay an
additional fee for the presentation of each independent claim in excess
of three and each claim in excess of twenty. This implies that an
applicant is entitled to present more than three independent claims,
and
[[Page 53508]]
more than twenty total claims, but it does not imply that the PTO may
place no limit on the number of claims that an applicant may present.
See Ex parte Jenkins, 1930 Dec. Comm'r Pat. 8 (1930) (that the patent
statute now requires a fee for additional claims does not mean that
there is no end to the number of claims that the applicant may
present). In addition, PCT Rule 6.1 specifically states that ``[t]he
number of claims shall be reasonable in consideration of the nature of
the invention claimed.'' Placing a reasonable limit (e.g., no more than
six independent claims and no more than forty total claims) will: (1)
permit the PTO to more equitably distribute its resources among the
vast number of applications that must be examined each year (35 U.S.C.
131 and 132); and (2) assist the PTO, public, and the courts in
ascertaining what it is that the applicant considers to be the
invention (35 U.S.C. 112, para. 2).
35 U.S.C. 131 and 132 require the PTO to examine the more than two
hundred thousand applications that are filed each year, and 35 U.S.C.
282 provides that each claim of the patents resulting from these
applications is presumed to be valid, each independently of the others.
It is the PTO's goal to issue patents containing claims whose validity
is based not solely upon presumptions resulting from the patent statute
and PTO regulations, but based upon the actuality that each claim of
the applications resulting in such issued patents has been subjected to
an effective, high-quality examination. In view of the ever increasing
number of applications filed each year, the PTO has determined that it
must place some limits on the number of total claims and independent
claims that an applicant may present in a single application to ensure
that the PTO continues to issue patents that contain only claims that
have been subjected to such effective, high-quality examination.
Such a rule would bear a reasonable relationship to the provisions
of 35 U.S.C. 112, para. 2, that an application conclude with one or
more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention. While 35
U.S.C. 112, para. 2, provides that the claims describe ``the subject
matter which the applicant regards as his invention'' (emphasis added),
it does not preclude the PTO from limiting the claims in regard to
matters of form. See Fressola v. Manbeck, 36 USPQ2d 1211, 1214 (D.D.C.
1995).
As discussed above, the historical basis for undue multiplicity
rejections was that the presentation of an excessive number of claims
in an application generally operated to confuse or obscure the
invention. This problem existed in the nineteenth century (Carlton) and
remains a problem today (Wahpeton Canvas). Limiting the number of
claims in an application will discourage applicants from presenting
claims that confuse or obscure the point of the invention. Thus, such a
rule would advance the statutory goal of 35 U.S.C. 112, para. 2, that
an application or patent conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention. See Fressola, 36 USPQ2d at 1214.
Any change to 37 CFR 1.75 to limit the number of claims in an
application must also take into account the situation in which a single
claim is, in actuality, a plurality of claims (e.g., multiple dependent
claims, Markush claims (see Ex parte Markush, 1925 Dec. Comm'r Pat. 126
(1924)), claims referencing plural sequence listings (see MPEP
2422.04), and claims setting forth (non-Markush) alternative
limitations (see MPEP 2173.05(h)). A multiple dependent claim will be
counted as the number of claims to which direct reference is made in
that multiple dependent claim. See 37 CFR 1.75(c). Limits (for a claim
to be counted as a single claim) would also be placed on: (1) the
number of species that may be embraced within a Markush claim; (2) the
number of sequence listings that may be referenced in a single claim;
and (3) the number of alternative limitations that may be included in a
claim.
The PTO is considering only a limit on the number of claims that
will be examined in a single application, not a limit of the number of
claims that may be presented for the invention(s) disclosed in an
application. Forty total claims with six independent claims should be
sufficient for an applicant to obtain adequate coverage for an
invention. An applicant who is unable to limit him or herself to forty
total or six independent claims in a single application may effectively
obtain examination of additional claims in another application. As the
PTO would expend more of its scarce processing and examination
resources on ten applications containing forty claims each than the PTO
would expend on a single application containing four hundred claims,
the PTO's objective is not to have applicants to spread-out excessive
numbers of claims among multiple applications to increase fee revenue.
The PTO's objective is to encourage the few applicants who currently
present an excessive number of claims in an application to place
reasonable limits on the number of claims presented for examination.
Nevertheless, an applicant would effectively be permitted to
present any number of claims for examination by filing any number of
continuing applications, each application presenting no more than forty
total or six independent claims for examination. Thus, the PTO's
refusal to examine more than forty total or six independent claims in a
single application is not tantamount to a rejection of such claims, as
the excess claims would be examined if presented in another
application. See In re Fressola, 22 USPQ2d 1828, 1831-32 (Comm'r Pat.
1992) (an objection or other requirement is not a rejection if it does
not interfere with applicant's substantive right of expression).
In the extraordinary situation in which it would be more beneficial
to the PTO, the public, and the applicant to permit the applicant to
maintain more than forty claims in a single application (e.g., numerous
species claims depending from a single allowable genus claim), the
applicant may file a petition under 37 CFR 1.183 requesting a waiver of
this limitation. Such petitions would be decided on a case-by-case
basis, and would be subject to such other requirements as may be
imposed. See 37 CFR 1.183.
5. Harmonizing standards for patent drawings (37 CFR 1.84)
Summary: The PTO is considering harmonizing the requirements for
patent drawings in 37 CFR 1.84 with the requirements for drawings in
the Patent Cooperation Treaty (PCT).
Specifics of Change Being Considered: Amending 37 CFR 1.84 to be
more similar to PCT Rule 11.13.
Discussion: The PTO is considering amending 37 CFR 1.84 to
harmonize the standards for drawings in U.S. national applications with
the standards for drawings in Patent Cooperation Treaty (PCT)
applications, which is a well-known and widely accepted standard. The
PTO has received a number of comments complaining that the same
drawings which were approved and printed in PCT published applications
have been objected to under 37 CFR 1.84 in U.S. national applications.
This inconsistency is not understood by patent applicants who feel that
a drawing that is acceptable for publication of a PCT application
should also be acceptable for publication in a U.S. patent. Making
corrections to drawings to comply with unnecessary requirements
increases the cost to the applicant and the time required to respond to
an Office action, both of
[[Page 53509]]
which patent applicants would like to reduce. In response to these
comments, the PTO is looking into replacing 37 CFR 1.84 with the PCT
standards for drawing requirements.
The requirements for drawings in a PCT application are set forth in
four places, namely: (1) PCT Article 7; (2) PCT Rules 7, 9, 10, 11, and
12; (3) the PCT Applicant's Guide, Vol. I/A, pages 24-25 (paragraphs
133-141); and (4) the ``Guidelines for Drawings Under the Patent
Cooperation Treaty (PCT),'' published in the PCT Gazette (No. 7/1978).
Current PTO processing of applications with drawings results in
some unnecessary delays in the handling of those applications contrary
to Patent Business Goal 1 (reducing PTO processing time). For example,
petitions are now required in order to accept black and white
photographs, color drawings or color photographs, and the PTO
processing of these petitions delays the handling of the application by
the examiner. The PCT permits black and white photographs, but does not
permit color photographs or color drawings. Thus, to harmonize with the
PCT, which does not require a petition to allow black and white
photographs, the PTO is considering deleting the requirement for a
petition while providing instead that black and white and color
photographs and color drawings would be permitted where it is
impossible to present in a drawing what is to be shown (e.g.,
crystalline structures). The examiner, however, may require drawings,
where it is possible to present the subject matter in a drawing. For
example, a syringe may be drawn. Thus, an examiner would require an
applicant who has submitted an application for a syringe and which
included a photograph of the syringe to submit a drawing to replace the
photograph. The PTO does not currently envision an examiner requiring
color drawings or photographs in a design or utility application where
black and white drawings or photographs have been submitted.
Question: The drawing standards for PCT applications may not be
clearly understood or known because the requirements are set forth in
the previously identified four different documents, and not everyone
has easy access to these documents. Nonetheless, it is apparent that
compliance with the PCT is easier given the experience of many patent
applicants of having drawings approved in a PCT application, but
objected to in a United States application. Accordingly, if adoption of
the PCT standards for drawings is not supported, comments are requested
as to whether the PTO should keep 37 CFR 1.84 as is, or how it should
be modified, or should the PTO adopt some other standard for the
drawings?
6. Printing patents in color (37 CFR 1.84)
Summary: The PTO is considering printing design and utility patents
that have color drawings or color photographs in color, along with
imposing a fee to cover the extra processing and publication costs.
Specifics of Change Being Considered: The PTO is considering
deleting the current requirement for a petition (and $130 petition fee)
to accept color drawings or photographs. The PTO is also considering
printing in color design and utility patents with color drawings or
color photographs, and charging a fee to recover the PTO's cost of
processing and printing design and utility patents with such color
drawings or color photographs. The cost to the public for ordering
color copies would continue to be governed by 37 CFR 1.19(a)(2) (for
plant patents) and 1.19(a)(3) (for utility patents).
Discussion: The PTO is considering amending 37 CFR 1.84(a) and (b)
to delete the current requirement for a petition (and $130 petition
fee) to accept color drawings or photographs. The PTO is also
considering amending 37 CFR 1.84 to provide for processing and printing
design and utility patents having color drawings or color photographs
in color rather than in black and white. A fee will be required.
Utility and design patents with color drawings or color photographs are
currently printed in black and white, with a note indicating that color
drawings or photographs were present in the application. Where color is
part of applicant's invention, such as where color is a feature of the
claimed invention in a design application, a member of the public
seeking to understand the subject matter that is claimed or an examiner
seeking to understand the invention disclosed in evaluating the patent
as prior art during examination of another application would have to
order a color copy of the patent drawings, thereby incurring delays for
the special handling required. If design and utility applications were
to be printed in color in the same manner as plant patents are printed
in color, the copy of the patent in the search files would be a color
copy and members of the public and examiners would not have to take
additional steps to understand the disclosure of the patent and the
scope of the claims. Patents printed in color would continue to have
legends indicating that drawings are in color so that a person
inspecting a black and white copy thereof would have notice as to the
existence of the color drawings.
Processing a patent in color would incur costs separate from those
incurred in the printing process in that identification of applications
filed in color would need to be made so that the printing contractor
would know the color printing was required. The PTO currently scans the
originally filed application papers in black-and-white images, and may
begin scanning color drawings or photographs included with originally
filed application paper in color images. The examination process may
also be more complex due to questions relating to the accuracy of the
color depiction in color photographs. In addition, printing a patent in
color would currently require an expensive photographic process to
ensure the proper coloring of the drawings, as is currently required
for plant patents. Pursuant to 35 U.S.C. 41(d), the PTO may recover the
cost of the service of making color copies of color drawings or
photographs included in an application as originally filed available as
scanned images and preparing color drawings or photographs as part of
the patent publication process. Charging a fee for such additional
costs (as compared to the normal patent publication process) would be
consistent with Business Goal 5 (assess fees commensurate with resource
utilization).
Accordingly, if design and utility patents are to be printed in
color, patentees would be required to pay the additional fee, and would
not be allowed to not pay the fee or request that the patent be printed
only in black and white. In addition, the two-tier fee system, in which
a higher fee is charged for color copies of a patent (37 CFR
1.19(a)(3)) than for a copy without color (37 CFR 1.19(a)(1)(i)), for
patent copy sales would continue so that customers could obtain a black
and white copy of a patent with color drawings for a reduced fee.
While plant patents are currently printed in color, electronic
copies of plant patents currently displayed with the Automated Patent
System or from CD ROM products are in black and white. The Office has
an ongoing project to create color images of plant patents for
electronic searching and dissemination. Accordingly, if design and
utility patents are printed in color, they also would be available in
color electronically.
[[Page 53510]]
7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)
Summary: The PTO is considering reducing the time period for
submitting corrected or formal drawings from three months to one month
from the mailing of the ``Notice of Allowability'' (extensions of time
under 37 CFR 1.136 being permitted). The PTO is also requesting comment
on the advisability of requiring submission of corrected or formal
drawings upon an indication of allowable subject matter.
Specifics of Change Being Considered: The PTO is considering
amending 37 CFR 1.85(c) to require either that: (1) corrected or formal
drawings be submitted within one month of the mailing of the ``Notice
of Allowability'' (extensions of time under 37 CFR 1.136 being
permitted); or (2) formal drawings be submitted in reply to any Office
action indicating allowable subject matter, and, if a drawing
correction has been required, requiring that corrected drawings be
submitted in reply to the next Office action indicating allowable
subject matter.
Discussion: Currently, 37 CFR 1.85(c) requires corrected or formal
drawings to be filed within a period of three months of the mailing
date of the ``Notice of Allowability,'' which period may be extended up
to six months under 37 CFR 1.136. This causes many problems. First,
permitting corrected or formal drawings to be filed as late as six
months after the mailing of the ``Notice of Allowability'' leads to a
lengthy delay in issuance of patents. Second, the corrected or formal
drawings may be submitted after the payment of the issue fee (which
must be paid within three months from the mail date of the ``Notice of
Allowance and Issue Fee Due''). Thus, if formal or corrected drawings
are not filed before payment of the issue fee, the application must
still be stored and tracked to await the required drawings. This
results in increased processing costs to the PTO, as greater storage
space is needed along with continued tracking and monitoring functions.
Thus, the current process not only causes delays in issuing patents
which is inconsistent with Patent Business Goal 1, reducing PTO
processing to twelve months or less, but it also increases our costs
which is inconsistent with Patent Business Goal 5, assessing fees
commensurate with resource use.
The PTO hopes to address these problems in the following three
ways. First, as discussed with regard to 37 CFR 1.84, the PTO would
like to make drawing requirements consistent with those of the PCT so
as to make it easier to submit drawings which will be approved by the
PTO draftspersons and thereby reduce the burden on the applicant. If
drawing requirements are consistent with those of the PCT, as proposed
with respect to 37 CFR 1.84, applicants would be more likely to submit
formal drawings upon filing or while the application is being examined,
but prior to allowance. These formal drawings should have a greater
chance of being approved by the PTO Draftsperson. Thus, this should
reduce the number of applications that are allowed with drawings that
are not accepted by the PTO Draftsperson. Second, the PTO intends to
encourage drawing corrections and/or formal drawings to be submitted
earlier in the examination process. This is because the PTO intends to
deploy draftspersons into each of the technology centers where it will
be easier for the Draftsperson to review such corrected or formal
drawings without interrupting the examination process. Thus, this
should also reduce the number of applications with drawings that have
not been approved by the PTO Draftsperson. Third, with the current
proposal, the PTO proposes to reduce the time for submitting drawings
to one month from the Notice of Allowability. By reducing the window
for submitting drawings to one month, and then charging for extension
of time fees, applicants will be encouraged to quickly submit the
drawings within the one month period and, more than likely, before
payment of the issue fee, in order to avoid extension of time fees,
which rapidly increase as more extensions are requested. Thus, the
change in the period for submitting corrected/formal drawings under
consideration should have the effect of reducing the number of
applications that have drawing corrections or formal drawings submitted
after the payment of the issue fee.
Question: Should the PTO require corrected or formal drawings to be
filed in reply to an Office action indicating allowable subject matter?
8. Permitting electronic submission of voluminous material (37 CFR
1.96, 1.821)
Summary: The PTO is considering rule changes to permit the
voluntary submission of large computer program listings and nucleotide
and/or amino acid sequence listings in only a machine-readable form.
This would save the handling of heavy and voluminous paper listings.
Specifies of Change Being Considered: Suitable changes would be
made to 37 CFR 1.96 and 1.821 et seq. to: (1) permit machine readable
computer program listings to be submitted as the official copy provided
it is submitted in an appropriate archival medium; (2) permit a
machine-readable submission of the nucleotide and/or amino acid
sequence listings as the official copy provided it is submitted in an
appropriate archival medium; and (3) no longer require the voluminous
paper submissions of computer program listings or nucleotide and/or
amino acid sequence listings.
Background: Since 1990, the PTO has required the submission of the
nucleotide and/or amino acid sequence listings (sequence listings)
associated with biotechnology applications to be presented in computer
readable form on floppy disks, as well as in paper. The sequence
listings, which are often over ten thousand bases in length, are not
susceptible to human eye-searching. The magnetic storage and processing
is therefore the only practical means for examining this very important
branch of technology, which grew by fifty percent in 1997 and is
expected to undergo sustained growth. Not only are the number of
pending applications multiplying, but the number of sequence listings
per application and the size of the sequence listings themselves have
grown by one-hundred percent each year. The PTO recently received a
submission containing twenty-two thousand sequence listings, which
required eight boxes of paper for the sequence listing. The PTO is also
starting to see very long individual sequence listings of over one
million residues. As the genome projects complete more of the genomes
of various organisms, the PTO will see more of these voluminous
applications.
This sequence size expansion has had a significant effect on
electronic storage, but even worse has created paper files of gross
size which are very difficult to manage. The paper printouts are often
over five thousand pages in length, and require boxes to contain them.
Carts carry the applications to the examiners for processing. For
example, the Expressed Sequence Tags (EST) applications include up to
several thousand sequence listings and may be over a foot thick. In
some applications, the file wrappers are falling apart and contain only
the sequence listing, with the specification separately preserved.
Physically storing the applications becomes problematic because the
entire file takes up several cubic feet of space. Since each examiner
may have twenty or more of these applications, the applications may
take up the bulk of an examiner's office. The magnitude of these
problems is expected to increase. For example, an application with ten
[[Page 53511]]
thousand sequence listings could result in one thousand applications of
ten sequence listings each. See MPEP 803.04. Considering that the
growth rate of sequence listings is such that they now approach one
foot per application, this would require one thousand linear feet of
shelf space. With each rack holding twenty-four linear feet, the PTO
would need forty-two (1000/24) racks for the applications resulting
from that one application. Clearly, something needs to be done to
address this onslaught of paper.
The current regulations at 37 CFR 1.821(e) indicate that the
electronic version of the sequence listing is a ``copy'' of the paper
sequence listing, and that the paper sequence listing is the official
copy. In practice, however, the electronic version is the one that
enters the computer database of references, and serves as the basis for
examination, printing and copies. The concurrence of the electronic and
paper version is assured only by a statement of the registered attorney
or agent, and cannot be readily checked without the expensive and
laborious effort usually reserved only for litigation.
Considering the difficulty of maintaining the two independent
versions of the sequence listing, and the irony that the official paper
copy is effectively ignored while the unofficial electronic copy is the
only one that is used, the PTO is proposing that the paper copy be
eliminated in favor of the useful, handy and verifiable computer
readable version.
Difficulties with massive amounts of paper also plague the computer
arts. One of the major problems facing the computer areas is the filing
of applications having several boxes of printed material, which may
include computer program listings, appendices and boxes of prior art.
Often a single examiner may have several similar applications
containing multiple boxes of paper (i.e., programs, appendices and
prior art). Just the short-term storage of these boxes is becoming more
of a headache. For example, if an examiner has three or four of these
applications, he or she may be required to store six to eight boxes of
paper. These boxes are stored either in the examiner's office or in an
empty room if one is available. The examiner is expected to: (1) keep
track of these boxes of materials; (2) physically haul them to his or
her office; and (3) consider and be familiar with thousands of sheets
of paper. Often when related applications are transferred to another
Art Unit, these boxes of materials are misplaced and the applicant is
forced to resubmit the boxes of papers.
Computer program listings often come to the office on numerous
sheets of microfiche. However, the microfiche films are often copied to
paper before printing when a patent is allowed. Since the copies from
the microfiche are not copied to the standards of 37 CFR 1.52, the
applications are often sent back to the examiner as a printer rush,
slowing the publication of the patent.
The PTO may accept electronically filed material in a patent
application, regardless of whether it is considered ``essential'' or
``nonessential.'' The patent statute requires that ``[a]n application
for patent shall be made * * * in writing to the Commissioner.'' 35
U.S.C. 111(a)(1) (emphasis added). With regard to the meaning of the
``in writing'' requirement of 35 U.S.C. 111(a)(1), ``[i]n determining
any Act of Congress, unless the context indicates otherwise * * *,
`writing' includes printing and typewriting and reproduction of visual
symbols by photographing, multigraphing, mimeographing, manifolding, or
otherwise.'' 1 U.S.C. 1 (emphasis added); see also Fed. R. Evid.
1001(1) (writing defined as including magnetic impulse and electronic
recording). An electronic document (or an electronic transmission of a
document) is a ``reproduction of visual symbols,'' and the ``in
writing'' requirement of 35 U.S.C. 111(a)(1) does not preclude the PTO
from accepting an electronically filed document. Likewise, there is
nothing in the patent statute that precludes the PTO from designating
an ``electronic'' record of an application file as the PTO's
``official'' copy of the application.
The recognition of the electronically stored version of the
sequence listings as the official copy is expected to have a minor
consequence on our processing of these applications. Sequence listings
are already required to be submitted in electronic form, and a receipt
system is already in place to handle the acceptance and storage of the
electronic versions. Currently the machine-readable version is the copy
of choice for search, for printing and for reference purposes.
The submission of machine readable versions of computer program
listings, or other voluminous materials, would require the PTO to
establish an appropriate system for accepting and using such
submissions such that the paper versions of such information will no
longer be needed. The submitted archival media may be transferred to
centralized electronic office systems to facilitate in-house processing
of the information.
Discussion of change under consideration: The PTO is considering
revising 37 CFR 1.821 et seq. to permit the voluntary submission of a
machine readable version of the sequence listings to be the official
copy provided it is presented in an appropriate archival medium. The
PTO cannot simply make the current submissions of diskettes the
official copy in view of the regulations requiring a true archival
medium (36 CFR 1228.28(3) and 1234.30). In addition, the PTO is
considering revising 37 CFR 1.96 to permit the voluntary submission of
all computer program listings in machine readable form provided they
are in an appropriate archival medium.
The changes contemplated for sequence listings and computer program
listings would eliminate the need for submissions of voluminous paper
sequence listings and hard to handle and reproduce microfiche computer
program listings. To focus specifically on the PTO's difficult paper
handling problem, and to simplify this project so it can be deployed in
a short time span, only the nucleotide and/or amino acid sequences and
the computer program listings would be accepted in machine readable
format. The rest of the specification of a nonprovisional application
will be submitted in paper in the conventional manner, subject to 37
CFR 1.52 and other applicable regulations.
In addition to permitting the above-mentioned submissions in
nonprovisional applications, the PTO is also considering changing the
rules of practice to permit provisional applications to be submitted in
toto in a machine readable format, again provided that it is presented
in an appropriate archival medium.
This initiative is in support of the Patent Business Goal to reduce
PTO processing time to twelve months or less for all inventions (Goal
1) and to receive applications and publish patents electronically (Goal
3). Specifically, it would reduce the time and effort required to scan
into our electronic archival systems the text of sequence listings and
of computer program listings included in the applications as filed.
Appropriate Archival Media: Regulations promulgated by National
Archives and Records Administration define the acceptable archival
media and formats for transfer and storage of information. See 36 CFR
1234.30 and 1228.28.
Relationship to PTO automation plans: These changes being
considered are understood to be temporary
[[Page 53512]]
solutions to a difficult PTO paper-handling problem.
It should be noted that the PTO is planning for full electronic
submission of applications and related documents by Fiscal Year 2003.
The changes described above are a smaller step in that direction,
permitting the essential, but bulky parts of some applications to be
submitted on an acceptable archival medium.
Question: Other materials may also be subject to these large
submissions, and part of this endeavor would be the identification and
inclusion of definable entities from other technologies that are of a
similar nature. The PTO is requesting the public to suggest examples.
In considering responses to this question, issues of practical
implementation will be given weight. For example, elements of Technical
Appendices or documents of an Information Disclosure Statement may be
flowcharts, bound books or other items not suitable yet for electronic
submission.
9. Imposing limits/requirements on information disclosure statement
submissions (37 CFR 1.98)
Summary: The PTO is considering revising 37 CFR 1.98 to establish
new requirements and/or limits on information submitted as part of an
Information Disclosure Statement (IDS).
Specifics of Change Being Considered: In order to limit IDS
submissions to relevant information and to ensure full consideration of
an IDS by the PTO, the PTO is considering imposing the following
additional requirements for IDS submissions: (1) a statement in the IDS
that each citation has been personally reviewed by the registered
practitioner who represents applicant, or by at least one inventor
where applicant is not represented by a registered practitioner; (2) a
copy of each cited U.S. application; and (3) a unique description of
each citation's importance relative to each independent claim, or
specific dependent claim(s) if that is why it was cited, except that a
description would not be required for: (a) any ten citations, and (b)
any item cited in a corresponding application by a foreign patent
office, PCT international searching authority (ISA), or PCT
international preliminary examining authority (IPEA), provided the
search report or office action in the English language is also
submitted.
The description of each citation would have to set forth a teaching
or showing of a feature relative to the claimed invention which is not
taught or shown by other citations in the IDS or is taught in a
different manner. The description of each citation must be unique to
that citation, in that an applicant would not be permitted to provide a
description of a citation that is merely cumulative to that of other
citations.
Background: Under the current rules (37 CFR 1.56, 1.97 and 1.98),
the PTO is being overwhelmed with voluminous IDS submissions which, in
many situations, make it very difficult, if not impossible, for an
examiner to fully evaluate all of the citations that have been
submitted. This is especially true when the citations involved are
large in size and/or when large numbers of citations have been
submitted. The submission of large numbers of citations and of the
entire content of large citations may be due to the public's perception
that it must submit, in order to ensure compliance with the duty to
disclose requirements of 37 CFR 1.56, even questionable or marginally
related citations (i.e., cited items that are clearly not material to
patentability). The public appears to have taken the view that it
should submit, in compliance with 37 CFR 1.97 and 1.98, even
questionable citations in order to ensure that applicant is viewed by
the courts as having satisfied the duty of disclosure requirements.
MPEP 2001.04 points out as to noncompliance with 37 CFR 1.97 and 1.98
that ``the applicant will have assumed the risk that the failure to
submit the information in a manner that will result in its being
considered by the examiner may be held to be a violation'' by the
courts. MPEP 2004 adds: ``When in doubt, it is desirable and safest to
submit information. Even though the attorney, agent, or applicant
doesn't consider it necessarily material, someone else may see it
differently and embarrassing questions can be avoided''. Thus, an
environment has been established that promotes submission of citations
which might in some way be considered to be sufficiently relevant to
breach the duty of disclosure (once applicant or applicant's counsel
becomes aware of the citation) in order to avoid an inference of
intentional noncompliance. Applicant presumably does not wish to be
placed in a position (in court) of having to explain why a particular
document of which applicant was aware was not deemed relevant enough to
submit. Therefore, even a document of very questionable relationship to
the claims may very well be submitted by applicants (the public), in
order to err on the side of caution.
This approach has created an enormous burden on the PTO and
seriously jeopardizes the PTO's ability to examine applications in a
timely and efficient manner, or achieve its Business Goal to reduce PTO
processing time (cycle time) to twelve months or less for all
inventions (Goal 1). Applicants frequently cite large numbers of
unrelated documents in citation ``dumps'' where applicant does not wish
to expend the time to weed out the unrelated documents from large
groups of documents (for example those obtained by a pre-search or
found in a related U.S. application). In addition, large citations such
as compendiums are submitted where only one or two small unidentified
portions are relevant.
While it may have been intended under 37 CFR 1.97 and 1.98 that
applicant submit questionably related citations, it was never intended
that large numbers of unrelated documents be submitted solely to save
applicant the effort of reviewing each of them to determine their
relevance. Likewise, it was not intended that the entire volume of a
large citation be submitted so that applicant need not take the trouble
to target the one or two relevant portions.
A further concern arises in those situations where current 37 CFR
1.98 permits applicants to not supply copies of cited U.S.
applications. It is a real burden on the examiner to locate and copy
one or more pending applications, and this activity (removal of a cited
application for copying) has the potential for interfering with the
processing and examination of the cited application.
The following are examples of IDS submissions which have placed
inordinate demands on the PTO:
(1) For one family of related applications (of several hundred
applications), applicants have cited almost three thousand items in
each of the several hundred applications.
(2) In another family of five related applications, more than
one thousand items were cited in IDS submissions in each of the
applications. The items cited were not the same for each
application. The five related applications are the children of
numerous other applications, each of which had IDS submissions
citing at least seven hundred items. The examiner presently has in
his office sixteen containers of cited items for these applications,
and stacks of cited items which would fill at least eight more
containers.
(3) A pending application contains a citation of ten related
U.S. applications. Additionally, about eighty-five documents were
cited, including text citations which included sixty-nine pages from
one text book and 137 pages from another. The Examiner noted in his
Office action that these texts appeared to be background related to
the general area of the invention. In addition, some of the cited
documents were listed in more than one of multiple IDSs submitted,
and the additional listings had to be located and crossed through on
the appropriate form PTO-1449 accompanying the IDS.
[[Page 53513]]
While these three examples represent some of the more extreme IDS
submissions, submissions of this nature are not infrequent nor are they
isolated occurrences. Also, the PTO frequently receives IDS submissions
which are not only large submissions, but they contain unrelated or
non-relevant material, thereby making it difficult to identify and
evaluate the more significant citations. In conjunction with this,
there is a practical limit to the number of citations an examiner can
effectively consider, especially where the citations have not been
described and copies have not been supplied (and the more significant
citations are scattered throughout the lengthy IDS submission).
Although the PTO remains sensitive to the need for applicants to
comply with their duty of disclosure under 37 CFR 1.56, the PTO must
deal with the growing burden on PTO resources to handle IDS
submissions. The PTO obviously does not desire to receive bulky,
irrelevant IDSs and ``dumps'' of citations in an application. Also, to
the extent that these burdensome submissions are in fact received, it
is the intent of the PTO to make the information contained in them as
useful to the examiner as is effectively possible. Accordingly, the PTO
is considering imposing new limitations to (a) reduce both the number
as well as the size of citations that are submitted in IDSs, and (b)
impose requirements as to the citations which will make them more
usable by the examiner.
Proposal: The PTO is considering revising 37 CFR 1.98 to impose
three new requirements/limitations as follows:
I. A Statement of Personal Review of Each Citation Submitted in the
IDS Would Be Required
The IDS submitter would be required to state that he/she has
personally reviewed each submitted IDS citation to determine whether or
not that citation is relevant to the claimed invention(s) and is
appropriate to cite to the PTO in the IDS. This statement of personal
review would have to be made by:
A registered practitioner, where applicant is represented by a
registered practitioner, or
At least one of the inventors where applicant is not represented
by a registered practitioner.
II. A Copy of Each Cited U.S. Application Would Have To Be Supplied
The current exception in 37 CFR 1.98(a)(2)(iii) for pending U.S.
applications would be eliminated. Accordingly, 37 CFR 1.98(a)(2) would
require that an IDS include a legible copy of each cited pending U.S.
application.
III. Each Citation Submitted in the IDS Would Have To Be Uniquely
Described
Applicant would have to compare each of the citations to each of
the independent claims, or specific dependent claim(s), in a meaningful
way that is unique to each citation. The description of each citation
would have to point out why applicant believes the citation to be
unique in its teaching/showing relative to the claimed invention(s).
Exceptions to the unique description requirement for each of the
citations are:
(a) An item does not have to be described if--
The item was previously cited (i) by a foreign patent office,
and/or (ii) in a PCT ISA search report or IPEA office action, in a
corresponding application; and
Applicant submits a copy of the search report or office action
where the item was cited (issued by the foreign patent office or
PCT) in the English language;
(b) In addition, up to ten citations do not have to be
described.
It should be noted that no exception to the unique description
requirement will be made for items which were cited in a related U.S.
application, even if that related application claims 35 U.S.C. 120
priority from, or provides 35 U.S.C. 120 priority to, the application
in which the IDS is submitted. In addition, an exception will not be
made for items cited in litigation related to the application.
As to the exception to the unique description requirement made for
ten citations of any type: Where more than one IDS submission is made
in one application, all of the submitted IDS documents will be taken
together as one consolidated IDS. Thus, applicant would not be able to
circumvent the exception for up to ten citations by submitting multiple
but separate IDS submissions. For example, if six U.S. applications and
four patents are cited without descriptions in a first IDS submission,
then all additional items included in any subsequent IDS submission
must be described or they will not be considered by the PTO.
It should be noted that the choice of which ten citations would be
submitted without the unique description is that of the IDS submitter,
and there should be no negative inference as to compliance with the
provisions of 37 CFR 1.56 where it is chosen to submit the more
relevant citations without any description.
Copies of Citations Contain Confidential Information
Pending U.S. applications are an example of items containing
confidential information which might be submitted in an IDS. In
accordance with MPEP 724.02, IDS citations containing confidential
information (e.g., that which is considered by the party submitting
same to be either trade secret material or proprietary material, and
any such information which is subject to a protective order) are to be
clearly labeled as such and are to be filed in a sealed, clearly
labeled, envelope or container. The party submitting an IDS citation
containing information which is confidential may subsequently petition
to expunge that citation from the record as set forth in MPEP 724.05.
Explanation of the Unique Description Requirement for Each Citation
Each item must be individually and uniquely described relative to
each of the independent claims, or, if appropriate, to one or more of
the dependent claims, in a meaningful way. When determining whether
reexamination may be ordered in compliance with In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), the PTO
would consider a citation described in this manner during a prior
related PTO proceeding to have had ``its relevance to patentability of
any claim discussed.'' See Request for Comments on Interim Guidelines
for Reexamination of Cases in View of In re Portola Packaging, Inc.,
110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997); Notice and Request for
Public Comments; 63 FR 32646, 32646, 1212 Off. Gaz. Pat. Office 13, 13
(July 7, 1998).
Examples of ways to describe a citation (any of which would be
acceptable) are as follows:
(1) For the closest or most related citation(s): Point out the
features of the citation which are similar to the features of each
independent claim. For example--``Of the six ingredients recited in
the claim 1 breakfast beverage, Citation A teaches beverage
ingredients which are similar to the claimed protein, salt and gum.
Citation B teaches beverage ingredients which are similar to claimed
protein, sugar and carbonating agent.''
(2) Point out how the citation contains or teaches the general
inventive concept of each independent claim. For example--``Citation
C teaches the coating method of claim 4 using light to cure the
coating shortly after it is cooled in a wind tunnel.''
(3) Point out how the citation represents the invention upon
which the independent claim is an improvement. For example--
``Citation D shows the entire conveying
[[Page 53514]]
system of claim 7, except for the inventive friction roller placed
between the two mergers.''
(4) Indicate how the citation teaches at least one feature which
is similar to a claim feature that is not already taught. For
example--``Citation E shows a valve that is the same type of valve
set forth in dependent claim 7.''
(5) Indicate where the citation teaches, in a different way, an
already-taught feature which is similar to a claim feature. For
example--``Citation F teaches a force-cooling of the exiting
material (similar to that of dependent claim 8) as opposed to
citation X which taught the cooling as an inherent result of the
material exiting into the air.''
In each situation, an additional explanation would be required of
how each independent claim (or dependent claim(s), if the citation was
for same) patentably defines over the citation.
It is not necessary that the description for each citation be given
as related to all claims of the application. Rather, each citation
would be described as to its relevance vis-a-vis each independent claim
(or specific dependent claim(s) if that is why it was cited). Further,
it is contemplated that the closest citations would be described in the
greatest detail, and the remaining citations compared to the closest
citations.
Impact of Compliance With 37 CFR 1.98, as it Would be Amended
The examiner will fully consider each citation in an IDS which is
in compliance with 37 CFR 1.97 and with 1.98 as it would be amended.
Conversely, the examiner would not be required to consider any citation
in an IDS where the citation is not presented in compliance with 37 CFR
1.97 and 1.98 as it would be amended. It should be noted that the three
requirements set forth above would apply to any citation in an IDS.
Thus, for example, if a related U.S. application is cited in an IDS and
a copy of the specification, including the claims, and the drawings are
not provided, the examiner would not be required to consider that U.S.
application. Further, the PTO will discard copies of any citations that
are submitted where a unique description is required but is not
supplied, or where the statement of personal review is not made.
Prior to discarding the citations, the PTO would notify applicant
that the citations have been refused further consideration. In the
notice to applicant, the PTO would point out why consideration has been
refused and how the submission of the citations could be corrected. As
is currently the practice, the notice may, at the examiner's option, be
set forth in the next Office action on the merits issued by the
examiner or be provided in a separate notice giving the applicant an
opportunity to correct the IDS. See MPEP 609. Thus, the examiner could
delay action on the merits until the corrected IDS is received or the
time for correction has expired. If the notice is included in the next
Office action on the merits, then the application status would advance
with the issuance of that action on the merits. Thus, the timeliness of
the citations (and refusal of consideration for lack of timeliness)
would quite possibly become dependent on a more limiting subsection of
37 CFR 1.97. For example, if the action on the merits is a first Office
action, 37 CFR 1.97(b) will apply to the corrected IDS submission,
while 37 CFR 1.97(a) would have applied to the original IDS submission
(had it been in order). If appropriate correction is made and the
submission is considered timely under 37 CFR 1.97, the citations will
then be considered. If not, the citations would be removed from the
record and discarded. In such a situation, the list of citations (e.g.,
PTO-1449) which was submitted with the IDS (the citations which were
not considered being lined through by the examiner) would be retained
in the application file to serve as a permanent record of what item(s)
was/were cited.
Rationale as to the Contemplated Revision:
I. Statement of personal review of each citation submitted in the IDS
With the requirement for personal review of each citation,
applicants must review an item so that applicant can then make an
informed decision that the item is relevant and appropriate to cite to
the PTO. This would be effected by requiring the attorney, or where
there is no attorney, at least one of the inventors, to do the personal
review. In addition, the examiner should only be required to consider a
citation where the person submitting the citation to the PTO has first
reviewed that citation and determined that the citation is relevant to
the claimed invention(s). If the submitter reviews the citation in its
entirety and determines that the citation is relevant to the claimed
invention(s), then the examiner should consider that citation in its
entirety. If only a portion of the citation is pertinent and thus only
that portion of the citation has been reviewed by the IDS submitter,
then that portion alone should be cited to the PTO, and that portion
alone will be considered by the examiner.
The personal review of each citation is a subjective and individual
determination of which citations the submitter wishes to make of
record, and the reason for doing so is not subject to review. It is
envisioned, however, that the very act of making this determination
should function as a screening process to effectively filter out
marginally related and unrelated citations. As to the requirement to
describe each citation relative to the claims, the PTO believes that
imposing this requirement is reasonable and fair, and is also highly
desirable, because this requirement (coupled with a requirement for
personal review of each citation) would enable the PTO to achieve the
relief it desires by:
(1) Providing meaningful, useful and relevant information to the
examiner, which would greatly facilitate the examiner's evaluation
of each IDS citation and the examiner's making a patentability
determination on each of the independent and dependent claims. Thus,
it would improve the quality of examination, while improving the
efficiency of the examination process;
(2) Providing an incentive to cite only the most relevant
citations (to avoid having to describe marginally related and
unrelated citations). Thus, the citation of large numbers of
marginally related and unrelated items would be diminished or
eliminated; and
(3) Reducing the overall number of IDS citations that are
submitted by eliminating the marginally related and the unrelated
citations.
II. A copy of each U.S. application would have to be supplied
Applicants often do not submit copies of cited pending U.S.
applications listed in IDSs. Applicant may list multiple application
citations in an IDS (sometimes as many as ten or twenty are listed),
and if no copies are supplied, the examiner must make a time-consuming
effort to obtain and copy all of the cited pending applications so that
they can be considered. This will interrupt the examination of the
application whenever the file of a cited pending application is not
available for inspection and copying. |
