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PGPUB Comments - Ingerman

Sent: Thursday, May 04, 2000 2:36 PM
To: Pre Grant Pub
Subject: Comments on Changes to Implement Eighteen-Month Publication of
Pa tent Applications

The undersigned hereby submits the following comments on the Notice of
Proposed Rulemaking regarding Changes to Implement Eighteen-Month
Publication of Patent Applications (65 Fed. Reg. 17946).  The undersigned is
a partner in the New York City intellectual property law firm of Fish &
Neave, but these comments are personal and not those of Fish & Neave.

The undersigned is distressed that the Patent and Trademark Office ("PTO")
is choosing to implement the patent application publication provisions of
the American Inventors Protection Act ("the Act") in a manner that
unnecessarily limits applicants' substantive rights for what appears to be
mainly the administrative convenience of the PTO.  The undersigned
understands that the Act placed many new burdens on the PTO without
providing a corresponding amount of new resources.  However, the PTO's
grievance should be with Congress, not the applicant community.

The undersigned offered similar observations in comments filed in response
to the 1995 proposed rulemaking on the publication of applications, and
regrets that the PTO has chosen not to address any of the comments received
at that time, to the extent that they address issues that are relevant to
the publication provisions of the Act and the current implementation of
those provisions by the PTO.

The undersigned is particularly disturbed by the various proposed rules
limiting when a priority claim, whether under 35 USC 119 ("Section 119") or
35 USC 120 ("Section 120"), may be made.  While Congress gave the PTO the
power to impose such limitations, Congress did not mandate such limitations.
One of the things that has up until now distinguished the United States
patent system from those of other jurisdictions is the flexibility of the
system.  Specifically, in the context of priority claims, a claim for
priority could be made whenever it became apparent to applicant that the
claim was needed.  While it is usually clear at the time of filing whether
or not a claim under Section 119 should be made, it is less clear with
respect to claims under Section 120, particular after enactment of the
20-year patent term pursuant to the Uruguay Round Amendments Act ("URAA").
Prior to enactment of the URAA, continuing status under Section 120, usually
in the form of continuation-in-part ("CIP") status, was routinely claimed in
the case of an application directed to improvements on the subject matter of
an earlier application.  Such claims were made without regard to whether or
not the earlier filing date was actually needed, because there were no
negative consequences in making the claim.  After enactment of the URAA,
unnecessarily claiming CIP status resulted in the diminution of patent term
for no reason.  Therefore, it has become common since the URAA not to claim
CIP status when it is not clear at the outset that the status is needed, and
to claim the status later if, for example, an item of intervening prior art
is discovered.

The proposed rules would take away applicants' freedom in this regard.  It
will now be necessary to make any potential claim under Section 120 at the
outset or risk losing it, thereby reducing patent term when it may not be
necessary to do so.  The undersigned understands from a discussion with a
PTO official that the PTO's concern is that applicants will delay priority
claims merely to delay publication.  There are other ways to deal with that
concern.  For example, a sufficiently steep penalty (i.e., a late fee) for
late priority claims under Section 120 would deter the routine delay of
priority claims without forcing an applicant to choose between making an
unnecessary priority claim and thereby reducing his/her patent term
unnecessarily, or not making a priority claim and finding him/herself unable
to later use a priority claim to "get behind" prior art of which he/she was
unaware at the time of filing.

Similarly, the PTO is proposing to penalize applicants' patent terms for
filing informal drawings.  By, as proposed, not releasing an application for
examination until formal drawings are filed, the PTO will be delaying the
issuance of patents whose terms are running against expiration dates fixed
by their filing dates.  The stated reason for doing this is to make sure
that all data necessary for publication have been captured in the PACR
system.  This is a non-sequitur.  There is no apparent reason why the PACR
data file corresponding to an application cannot be flagged in some way to
indicate its incompleteness while the physical file is released for
examination.  The PTO position reflects an apparent lack of understanding of
the reasons for using informal drawings in the first place.  Frequently,
applicants are racing against upcoming bar dates as patent applications are
prepared.  The time simply is not available for preparing formal drawings.
Other times, applicants are concerned that competitors may be working on
similar inventions and want to establish an earlier filing date,
particularly if the application is to be filed later in a first-to-file
jurisdiction.  It is unfair to applicants to force them to choose between
filing early and losing patent term.  It is also unfair to practitioners to
force them to choose between a malpractice claim for filing too late and a
malpractice claim for filing with informal drawings resulting in a loss of
patent term.  A better solution might be to release the physical file for
examination and flag the PACR data file, while setting a deadline by which
formal drawings must be filed -- say, three months after filing -- beyond
which the application would be deemed abandoned.

The undersigned's final comment relates to the nonpublication request under
proposed 37 CFR 1.213(a) ("Rule 213(a)").  Applicant understands that both
the required certification under Rule 213(a) -- that the application has not
been AND WILL NOT BE filed in another publishing patent office, and the
requirement that the nonpublication request be filed with the application or
not at all, were mandated by Congress.  Nevertheless, this represents
another unnecessary limitation of substantive rights.  Up to now, applicants
have had the flexibility to delay the decision on whether or not to keep
their inventions unpublished to as late as the 12-month foreign filing
deadline under the various treaties that provide foreign priority.  Congress
has now required that that decision be made at the time of filing in the
United States.  There is no reason why that should be necessary.  If the PTO
were advised by the twelfth month whether or not the application was
foreign-filed, there would still be plenty of time to publish the
application at the eighteenth month if foreign filing had occurred.  The
undersigned realizes that the PTO cannot change the statute.  However, the
PTO can, by regulation, deem a certification that (1) the application has
not been foreign filed, (2) final decision on foreign filing has not yet
been made, and (3) the PTO will be advised promptly if the application is
foreign filed, to be the certification required by statute.  This would not
be beyond the authority of the PTO; in the view of the undersigned, the PTO
would be going no farther than it did in deeming, under 37 CFR 1.53(d), that
a CPA request, which is a separate paper from the specification, is the
reference in the specification required by 35 USC 120.

Respectfully submitted,

Jeffrey H. Ingerman
Reg. No. 31,069
Fish & Neave
1251 Avenue of the Americas
New York, New York 10020-1104

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