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.
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.šxn
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
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
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 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.
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 an additional 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. 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 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 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 is
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 on 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 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:
Percentage
Applications filed in FY 1997
FY 1997 containing Number filings
Over 50 independent claims: 11 00.005%
Between 41 and 50 independent 23 00.011%
claims:
Between 31 and 40 independent 77 00.358%
claims:
Between 21 and 30 independent 275 00.128%
claims:
Between 16 and 20 independent 536 00.249%
claims:
Between 11 and 15 independent 1,887 00.878%
claims:
Between 7 and 10 independent 7,024 03.267%
claims:
Between 4 and 6 independent 27,147 12.627%
claims:
Over 6 independent claims: 9833 4.896%
Percentage
Applications filed in FY 1997
FY 1997 containing Number filings
Over 500 total claims: 5 00.002%
Between 201 and 500 total 88 00.041%
claims:
Between 101 and 200 total 652 00.303%
claims:
Between 61 and 100 total 2,514 01.169%
claims:
Between 51 and 60 total 2,143 00.997%
claims:
Between 41 and 50 total 4,056 01.887%
claims:
Between 31 and 40 total 8,631 04.014%
claims:
Between 21 and 30 total 23,323 10.848%
claims:
Over 40 total claims: 9458 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 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,
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, 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,
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, 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 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.
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 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 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.
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 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 is
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. In addition, obtaining and removing the cited
application for copying will also interrupt the examination of the cited
application.
III. IDS citations would have to be uniquely described
The present proposal would permit filers of small IDSs (i.e., ten or
less citations) to continue filing IDSs without any description, as they
are currently filed under 37 CFR 1.98. While it is believed to be
unreasonably burdensome for the PTO to consider unduly large numbers of
IDS citations which are not described, the PTO is amenable to dealing
with ten (or less) IDS citations which are not described, even though
the examiner has no guidance from applicant as to what is actually shown
or disclosed in the ten citations.
PTO Goals to be Furthered: The proposal being considered is important to
the PTO Goals of reducing PTO processing time (PTO Goal 1) and enhancing
the quality of examination (PTO Goal 4). Requiring copies of all
citations will reduce delays and help the PTO meet its twelve-month
pendency goal. The presence of the copies of cited documents will permit
those citations to be considered by the examiner at the earliest
possible point after their submission and thereby enhance the quality of
the examination. The descriptions of citations will provide for better
quality because the examiner will have a better understanding of why
applicant considers the citation to be relevant (i.e., the citation will
be made more useful to the examiner). Imposing a requirement of a
statement of personal review of the citations will force applicants to
evaluate all possible items being considered for citation to the PTO
such that only the most relevant items will be cited to the PTO, and
correspondingly, it should cut down on or eliminate the large dumps of
citations that the PTO is now receiving. This will save the examiner
time which is presently expended to read and evaluate cumulative and
minimally relevant citations. This time can be better spent evaluating
the more relevant citations, thus resulting in a higher quality of
examination.
The PTO has determined that it must do something to reduce the size of
the voluminous IDS submissions. Suggestions of other options are
welcomed. If another option is suggested, it should explain why and how
that option would be better.
The PTO expects that many will oppose the above-described proposal for a
variety of reasons. These reasons may include, for example, concerns as
to the burden being imposed on applicant to prepare the IDS, the
conflicting time requirements that will create problems (the need to
submit the IDS by a certain date conflicts with the extra time needed to
prepare the descriptions which would be required before the IDS could be
submitted), and concerns about not properly analyzing or describing a
citation (or all the features, embodiments or parts of the entire
disclosure of the citation) or even overlooking a relevant citation. The
comments, however, should be constructive and address how (and why) some
other option(s) would be better, or as effective, while being more
acceptable to the public.
10. Refusing information disclosure statement consideration under
certain circumstances (37 CFR 1.98).
Summary: The PTO is considering revising 37 CFR 1.98 to reserve the
PTO's authority to not consider submissions of an Information Disclosure
Statement (IDS) in unduly burdensome circumstances, even where all the
stated requirements of 37 CFR 1.98 are met.
Specifics of Change Being Considered: An unduly burdensome IDS
submission may be denied consideration even though it complies with 37
CFR 1.98. For example, extremely large documents and compendiums may not
be accepted if submitted. Applicant will, however, be notified and given
an opportunity to modify the submission to eliminate the burdensome
aspect of the IDS.
Background: 37 CFR 1.97 states that information will be considered by
the PTO if it satisfies the provisions of 37 CFR 1.97 and 1.98. In the
above proposal to revise 37 CFR 1.98 (see above), the PTO is
contemplating revision of 37 CFR 1.98 to deal with unduly burdensome IDS
submissions by imposing new requirements/limitations.
It should be noted that even if the rules of practice are revised as per
the above proposal for 37 CFR 1.98, applicants may still cite
compendiums, such as compilations of individual articles, entire
magazines, journals, encyclopedia or technical dictionary volumes,
textbooks, and volumes of technical abstracts. In addition, if a
compendium is submitted as one of the "excepted ten citations," no
description would be required as to the entire compendium. Even though