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PGPUB Comments - phillips

Sent: Friday, April 07, 2000 12:10 PM
To: Pre Grant Pub

Philips Electronics North America Corporation and U.S. Philips Corporation submit the following comments with regard to the proposed changes to 37 CFR Parts 1 and 5 to implement the eighteen-month publication of patent applications (65 FR 17946: April 5, 2000).

I. We believe that it is inefficient and inappropriate for the USPTO to republish the full text of an international patent application which has already been published in the English language under Article 21 of the PCT. We believe, instead, that the publication required by 35 USC 122(b) can be effected by simple publication of a reference to the prior PCT publication with a substantial savings of cost. The benefit of this cost savings should be passed-thru to the applicant either by waiver of the $300 publication fee or alternatively by charging a substantially reduced publication fee.

2. We believe that the requirements in 37 CFR 1.17(p) and 37 CFR 1.99 for payment of a $240 fee by third parties who submit prior art in published patent applications is highly flawed and contrary both to the public interest and to the stated goals of the PTO. We feel that there is a crying need for the USPTO to develop an extensive library of non-patent prior art for use in the examination of method of doing business, computer software and other non-traditional patent applications and that third party submission of such prior art is an efficient process which should be encouraged. The imposition of the $240 fee is likely to have the opposite effect.

While we believe that the $240 fee should be completely eliminated from the Regulations, we recognise that the USPTO may be wary of the additional burden which third party submissions may place on the examiners. Therefore, if the Director determines that a fee is justified, we submit the following alternative suggestions for a fee structure which would encourage meaningful third party submissions while discouraging the large scale submission of less-relevant prior art:

A. The $240 fee could be substantially reduced or completely waived for submissions by small entities;
B. The $240 fee could only be charged for submission of patent-based prior art and not charged for submission of non-patent prior art;
C. The $240 fee could only be charged for submissions of more than a minimum number of pieces of prior art (for example, for submission of more than 5 pieces of prior art).

3. We feel that the USPTO's position, (as stated in the comments to Section 1.211(3) ) that the Office will not refund publication fees in the case where a publication is made after a patent has issued to be ingenuous and lacking in statutory authority and we hope that this process will not be put into practice. In particular, we point out that Section 4506 of the statute only authorises cost recovery by charging a separate fee after notice of allowance for early publication and that any publication which takes place after a patent has issued is not "early".


Jack Haken
Vice President
Reg. No. 26,902
Tel +1 914 333 9650
Fax +1 914 332 0615

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:41:46 PM