From: Paul.Morgan@usa.xerox.com Sent: Thursday, October 04, 2001 4:07 PM To: AB41 Comments Cc: AZupcic@FCHS.com Subject: Comments on Proposed Rule Changes re 18 Month Publication This is a purely personal* response to the 66 FR 172 notice of 9/5/01 containing a PTO request for public comments before 10/5/01 on this rule proposal entitled: "Requirements for Claiming the Benefit of Prior-Filed Applications under Eighteen-Month Publication of Patent Applications". This PTO proposal is intended to clarify the practice for claiming benefit under 35 U.S.C. §§ 119(e) and 120, as amended by § 4503(b) of the American Inventors Protection Act of 1999 (AIPA). However, it is suggested here that several points should be addressed in the final rule package. First, since the reference requirements for claiming benefit within the 4/16 month limits are to implement the 18-month publication requirements of AIPA, those limits should only apply to applications filed AFTER November 29, 2001. § 1.78(a)(2)(ii) as presently drafted could conceivably apply to applications filed prior to November 29, 2000. Accordingly, it is suggested that the United States Patent and Trademark Office (USPTO) make clear that there is no waiver of priority benefit for failure to comply with the 4/16 month reference requirements of § 1.78(a)(2)(ii) in cases filed prior to November 29, 2000. Second, the paragraph bridging columns 1 and 2 of 66 Fed. Reg. 46411 indicates that if the USPTO recognizes a claim for benefit "elsewhere in the application and not in the manner specified in § 1.78(a)(2)(i) ... but within the time period specified in § 1.78(a)(2)(ii)", no petition will be required. In light of this, it is suggested that proposed § 1.78(a)(2)(ii) should be amended to clarify that if the priority data is recognized by the USPTO and appears on the patent application publication, or, if priority was timely and properly legally claimed by the applicant but erroneously not noted by the PTO, then the requirements of § 1.78(a)(2)(i) and (ii) and the patent statute have been satisfied and benefit is not waived. Third, it is noted that it is in the public interest to have any reference with any priority benefit claim to have that priority benefit claim on the face thereof, especially including published patent applications. Therefore, the USPTO should take all steps necessary to insure that if an applicant has made a statutorily proper priority claim that it will be clearly indicated or printed on the patent application publication. If it is not, the USPTO should provide some mechanism to directly associate that correct 102(e) or 102(g) reference date with the patent application publications without the burdensome requirement to inspect application files. Most importantly, the PTO should be providing applicants with the greatest possible flexibility for satisfying priority claim requirements, and helping applicants to avoid waivers of benefit claims, not adding another basis for invalidating patents on minor procedural technicalities. It is contrary to the PTO's public interest obligations for innocent clients to be deprived of patent rights and have patents rendered fatally defective by adding hyper-technical requirements merely for the clerical convenience of the PTO in a PTO publication process. For example, § 1.78(a)(2)(iii) should further be amended to permit the priority reference required by § 1.78(a)(2)(ii) to be included in the declaration, as it has always been before. USPTO employees are familiar with checking the declaration for formal requirements and must do so already. Moreover, and most importantly, the USPTO should make it clear in comments accompanying the final rules that if the requirements of § 1.78(a)(2)(iii) have been met, then applicant has not waived benefit even if the priority claim is not included in the patent application publication. § 1.78(a)(3) provides a mechanism for correcting an error in claiming benefit. Will there be any mechanism for correcting a defective priority claim when a PCT application is filed designating the United States but then a continued application is filed instead of entering the U.S. national stage? If, for example, there was an original provisional application filed, but its benefit was never claimed in the PCT application, is there a way to correct the defect in the benefit claim after the time for entering the national stage has expired? If so, would correction be possible even if the PCT application had been filed in a non-U.S. receiving office? The proposal to eliminate the requirement that an English language translation of a provisional application filed in a language other then English be filed within the 4/16 month time period in order to avoid waiver of a § 119(e) benefit claim for a provisional application is desirable. However, in doing so, if the USPTO fails to issue any notice requiring an English translation, will voluntary submission be likely, since it is not required? In such case, might the public be disadvantaged when the subsequent regular patent application publication is cited as § 102(e) prior art? In the absence of a USPTO notice, will such a change transfer the burden to obtain a translation from the applicant claiming benefit to the applicant against whom the patent application publication is cited as a reference? Thank You, Paul F. Morgan 330 Oakdale Dr. Rochester NY, 14618 Work Tel. (716) 423-3015 FAX (716) 423-5240 *Grateful appreciation is expressed for the preparation of extensive prior drafts on this subject by Anthony Zupcic, current Chair of the involved AIPLA Committee, and Charles Van Horn, which I have extensively plagiarized, but substantially modified, in preparing this personal (non-AIPLA) comment.