From: Paul.Morgan@usa.xerox.com Sent: Thursday, July 19, 2001 10:48 AM To: AB37 Comments Cc: robert.spar@uspto.gov; AZupcic@FCHS.com; wberridge@oliff.com; vanhorn@finnegan.com; Herb@IPO.org; Tyson, Karin; JMThesz@HHLAW.com; Kunin, Stephen Subject: PTO Proposed Rule Change to Eliminate CPA's - Public Comment To: ab37.comments@uspto.gov c. Robert J. Spar This is a personal response by the undersigned to the PTO request for public comments to be sent by email to the above internet address, before Sept. 7, in the Federal Register notice of 66 FR 35763, in which the PTO proposes to eliminate from the patent rules the "Continued Prosecution Application" (CPA) practice, which the PTO therein alleges is redundant with the "Request for Continued Examination" (RCE) practice enacted in the American Inventors Protection Act (AIPA) in 1999. The PTO's indicated motive for this proposed regulatory change is to reduce its workload of publications of applications in which CPA's were filed. It is first noted that this is only an interim PTO problem, since the PTO will have to publish most patent applications filed after 11/29/00 anyway, and the PTO only needs to publish those prior-filed applications in which a CPA was filed after 11/29/00. The PTO does not need to accept any CPA's (RCE's will become mandatory) for continuing the prosecution of all applications filed after May 29, 2000. I.e., a CPA can only be used for re-filing applications filed before May 29, 2000. Thus, the use of CPAs will already end without this proposed rule change as the PTO works off its pending application backlog. This PTO proposal is to completely eliminate CPA practice, even for CPA re-filing of applications filed before May 29, 2000. Unfortunately, this proposal ignores the serious needs of many applicants to use CPA's to avoid actual or potential 102(e)/103 rejections based on prior filed commonly-owned patents for all patent applications filed before 11/29/99 (many, if not most, of which applications are still pending). The PTO's introduction to this rule proposal alleges that in view of RCE practice "there no longer appears to be a need for continued prosecution (CPA) practice as to utility and plant applications". That is simply not true, and the PTO must know it is not true from their own prior publications, PTO web postings and their own JPTOS article on the differences between CPA's and RCE's. A CPA is a new patent application and an RCE is not. The above-noted very important advantage and function of CPA's is not provided by an RCE. Nor will an RCE obtain a desired publication of the application (see below). Nor will an RCE obtain the benefit of the new patent term extension statute for PTO delays. Further as to this PTO representation that an RCE is equivalent to a CPA, and thus unnecessary, for many companies with large filing programs, PTO 102(e)/103 rejections on prior-filed commonly-owned patents are not infrequent, and RCE's are still needed to overcome those rejections. Furthermore, the PTO is also ignoring the dangerous situation many large patent filers have with unknown, and hence uncited, earlier-filed co-pending commonly-owned applications on similar technologies by different inventors from different locations being handled by different patent attorneys or even different firms, and with claims varying during prosecution. The earlier-filed applications will not become known potential sources of allegations of 102(e)/103 prior art until after the later-filed applications are issued and asserted. This is cured by any CPA filed after 11/29/99, but not cured by an RCE. The PTO has said in an OG notice that the PTO thinks this situation can be cured by a reissue, but there has been no blessing of that by the CAFC, and this statute (the 11/29/99 AIPA amendment of 103(c)) is expressly not retroactive. The CAFC does not necessarily agree with PTO statutory interpretations, e.g., In re Portola. In any case, filing a reissue is much more difficult than filing a CPA, requiring a 35 USC 251 "error"? statement declaration, etc.. The PTO's indicated reason for wanting to eliminate any further CPA's is that CPA's now trigger a requirement for electronic publication of applications filed before 11/29/00 which would otherwise not have to be published. This PTO Notice thus requests other public suggestions for reducing that publication problem, to be provided to Bob Spar. Three such suggestions are provided below: First, it is suggested that a substantial number of unnecessary CPA's are being filed because the PTO has failed to adequately warn the patent bar and its clients (even in this Notice) that a CPA can be more expensive for the client than an RCE. That is due to both the $300 publication fee and the fees for any excess claims in a CPA, which an RCE does not have. If the PTO were to better educate the public on that cost difference, the use of CPA's could be reduced. Secondly, use of CPA's could have been further reduced if the PTO had not de facto violated the intent of the 1999 AIPA legislation giving applicants the statutory right to voluntarily publish their prior pending applications to obtain statutory publication benefits. The PTO has refused to provide any applicants with that statutory publication right unless the applications are re-written and re-submitted under the new, and partially inoperative, PTO electronic filing system. That electronic filing is effectively impossible or extremely burdensome for many applicants, especially for small inventors, or for applications with many formulas or symbols, or for companies with "firewall" problems for transmissions of very large documents by email. Hence, the filing of CPA's is by far the best way to obtain voluntary publications (and fully accurate reproductions) of most applications filed before 11/29/00. Thirdly, the greatest reduction of CPA's could be accomplished during this interim period simply by changing the current PTO internal practice of refusing to consider even the most minor of 116 amendments (not requiring any new art search), since that is what is forcing applicants to file thousands of otherwise unnecessary CPA's or RCE's, with CPA's being the far more legally valuable choice for many applicants in applications filed before 11/29/99 (as explained above), even though more expensive than an RCE. Respectfully submitted, Paul F. Morgan Assistant General Patent Counsel Xerox Intellectual Property Law Department Xerox Square 20A Rochester NY, 14644 Tel. (716) 423-3015 FAX (716) 423-5240