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Submitted by:

Joy L. Bryant, Director and President

Joseph Marasco, Director

Cheryl H. Agris, Esq., Ph.D., Member

Mark R. Buscher, Esq., Member

Jim Curley, Member

Lee Hollaar, Member

On behalf of:

The National Association of Patent Practitioners

We appreciate having the opportunity to submit comments on this important topic. The National Association of Patent Practitioners (NAPP) is a nonprofit organization dedicated to supporting patent practitioners and other individuals working in the field of patent law, in matters relating to patent law, its practice, and technological advances. Seventy-five percent (75%) of our members are registered patent practitioners whose practice is directed primarily toward patent prosecution. As part of our mission, we aim to create a collective, nationwide voice to respond to proposed changes in the patent statutes, rules, and PTO operations with a view to their impact on patent prosecution practice.

Our comments are as follows:

1. Simplifying request for small entity status (37 CFR 1.27).

There appears to be sufficient justification for eliminating the declaration claiming small entity status in view of PTO efforts to reduce paperwork, and the NAPP supports this proposal. However, the PTO may wish to accomplish its goal by adding a check box for claiming small entity status to the appropriate PTO forms. The PTO’s suggestion of using the payment of the fee as the indicia of whether or not the inventor has asserted small entity status opens the door for errors because the fee paid is not necessarily a positive indication of the status of the applicant; i.e., the wrong fee may be accidentally looked up and paid. In contrast, a check box on the application transmittal form indicating that the application is to be assumed to qualify for the small entity status is a positive statement made by the applicant.

2. Requiring separate surcharges and supplying filing receipts (37 CFR 1.53).

This proposal does not help inventors, but rather raises fees by imposing a $260 penalty for omissions by the applicant. It seems harsh to charge an individual inventor two-thirds of the amount of his filing fee as a penalty for missing paperwork. The initial filing fees are already too high for many individual inventors to compete in the patent arena, and this penalty for formalistic errors only raises the bar, preventing many from pursuing patent protection for their inventions.

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).

This proposal is generally acceptable in that it provides greater freedom to the applicants in meeting the formal requirements of the application. Since the oath can presently be submitted after the filing of the application, we are aware of no compelling reason to limit the late submission to only the first few months after filing. Because the extension of the submission time limit is more convenient, we support this proposal.

4. Limiting the number of claims in an application (37 CFR 1.75).

The NAPP vigorously opposes this proposal. Patent applications today are by necessity more complex than ever before, especially in the software and biotechnology arenas. For example, even simple inventions which combine software with computers and the like may generate 40 or more claims for just the overview flowcharts and many more claims to describe the specific details of the algorithms and processes used. To permit the PTO to limit claims in this matter would unduly burden these and other specific art areas. Additionally, the premise that more claims means more work is not entirely true. One very broad claim can cause an Examiner to search through mountains of prior art, while 50 very narrow claims may be a relatively simple and focused search. The fact that 50 claims were presented does not necessarily mean that more work is involved.

Moreover, since only one patent can be granted for a single invention, how does the PTO intend for practitioners to get around this artificial limitation in the case of applications having both broad scope and broad disclosure? File one additional application for each 40 claims and then submit terminal disclaimers? Why should multiple maintenance fees be forced on applicants. This does not seem to be an acceptable alternative.

It is not likely that the courts will simultaneously reduce the standards by which patent infringement will be determined given the applicant has been forced to reduce the number of claims in the application. So, the applicant is forced to pay more money, delay the patent process, and then lose in court because there are not enough claims to cover the invention disclosed in the patent specification. It is appropriate to emphasize that what is disclosed in a patent but not claimed is dedicated to the public.

The current system penalizes the applicant with excess claim fees. Perhaps a compromise is to impose the fees in a progressive fashion, double after 40 total/6 independent claims and triple after 60 total/9 independent claims.


Some of our members have suggested that a progressive claim-pricing structure would be even more advantageous if the PTO examiners' productivity standards were linked to the number of claims examined rather than the number of patent applications examined. This could have a significant positive impact on everyone; e.g., potentially fewer restrictions and fewer continuations and divisionals.

5. Harmonizing standards for patent drawings (37 CFR 1.84).

The NAPP concurs with this proposal. It will be good to have a single standard instead of a confusing group of standards, as the PTO did for years.

6. Printing patents in color (37 CFR 1.84).

The NAPP concurs with this proposal.

7. Reducing time for filing corrected or formal drawings (37 CFR 1.85).

A(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)@

This will put the practitioner in a challenging position between spending the client’s money on drawing corrections prior to an acceptable certainty of issue and the risk of the draftsman not being able to timely make the necessary corrections. Moreover, applications are becoming more complex and contain more drawings, especially for software systems disclosed via use of flow charts. The proposed time limitation will only serve to make a bad situation worse. Furthermore, added pressure to draftsmen may cause degradation in the quality of drawings, with minimal benefit.

(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.

The NAPP opposes this proposal because there will be cases where some subject matter is allowed while other subject matter is still being argued. It is more reasonable to permit an applicant to submit formal drawings only after knowing the complete scope of the allowed subject matter.

8. Permitting electronic submission of voluminous material (37 CFR 1.96, 1.821).

The NAPP concurs with this proposal.




9. Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98).

The NAPP strongly opposes this proposal. We take the position that it is not an excessive burden on the PTO to review large numbers of submitted documents, but actually helps the process. Examiners read many patents in the course of searching and are accustomed to reviewing documents quickly to determine relevancy to an invention. Requiring applicants to write a unique description for each document, including English language documents, is deceptively burdensome. For example, how detailed must the statement be in order to meet the rule? Does each claim have to be addressed or only the independent claims? What if the feature is only arguably suggested in the document, must that be specifically described and, if so, how without leading the Examiner to apply improper hindsight reconstruction? Conversely, failure to sufficiently recite such generic disclosure may be the basis for a charge of inequitable conduct. Same where the practitioners overlooks the disclosure. The requirement for a separate statement of the content of the document is a double edged sword; creating the possibility for both overly broad admissions or the appearance thereof and encouragement of improper hindsight due to a too detailed characterization of the document while at the same time providing the basis for allegations of inequitable conduct and fraud due to an insufficient description of the document. Also in cases where it is appropriate to submit numerous references, the required description may put an undue cost burden on the applicant, especially on independent inventors.

It is believed that this issue was visited during the promulgation of the present Rule 98 and that the PTO correctly found that having Examiners reviewing all documents submitted would not constitute an excessive burden. Moreover, to the extent that a few large disclosures would be filed, such was a reasonable price to pay for increasing the flow of information to the Examiners and the concomitant increase in examination quality. Simply put, the goal of Rule 98 should be to encourage disclosure, not discourage disclosure as the proposed rule would. Therefore, the proposed rule should not be adopted.

Nonetheless, to the extent the PTO feels compelled to make some changes, the following less burdensome schemes are offered for consideration.

(1) The easiest way to control large disclosures is to adopt a surcharge based on the number of documents submitted over a threshold level. The monetary incentive will discourage the kind of abusive disclosures the PTO has encountered without the drawbacks as discussed above.

(2) Allow an unlimited number of patent documents (US or foreign patents) and a certain number of journal articles to be submitted before either a fee or a written description of some kind is required. The logic here is that patent documents are generally organized in the same order and that Examiners are especially efficient at reviewing such documents. Thus an unlimited number of patent documents will not unduly burden the PTO. Journal articles are not organized in a consistent pattern and thus may be more difficult to quickly read and search. Accordingly, providing 10 "free" journal articles before a fee or description is needed seems a reasonable compromise.

(3) In view of the concern regarding the ability to conduct reexamination, modify the rule to require the Examiner to consider all documents that are submitted but without a mandatory listing of the documents on the face of the patent. That is, allow applicants’ submission of documents to satisfy Rule 56, barring extraordinary circumstances, but let the Examiner decide if the information is sufficiently relevant to being made "officially of record" and listed on the PTO-892 or initialed on a 1449 form. This is analogous to the process by which the Examiner searches patents in a sub-class where many are read but few are chosen. If applicants desire to have the submitted documents listed as on the face of the patent as a mater of right, then applicants could satisfy the proposed rule for supplying a description. In this way, the information is before the Examiner, Rule 56 obligations are discharged, and only the documents the Examiner finds relevant are listed on the face of the patent. The other submitted documents would be available as a basis for reexamination just as the other documents in a sub-class searched by the Examiner are available as a basis for reexamination.

(4) Registered Practitioner or one inventor in a pro se application submits statement of personal review of references submitted except that no statement of personal review is required for any item cited in a corresponding application by a foreign patent office, PCT international searching authority, or PCT international preliminary examining authority, provided the search report is also submitted.


10. Refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98).

The NAPP vigorously opposes this proposal for the same reasons set forth hereinabove in response to topic 9.

11. Providing no cause suspension of action (37 CFR 1.103).

The NAPP concurs with this proposal with the exception wherein deferred applications are immediately published.

12. Requiring a handling fee for preliminary amendments and supplemental replies (37 CFR 1.111).

The NAPP opposes this proposal because the PTO has provided an insufficient basis for charging extra fees under these circumstances.

13. Changing amendment practice to replacement by paragraphs/claims (37 CFR 1.121).

Generally the NAPP opposes this proposal because dealing with larger blocks of text increases the chance of error. Most of the NAPP members prefer the well established means of amendment practice which precisely point out the exact changes to be made in the pending application. However, some members support the proposal.

14. Providing for presumptive elections (37 CFR 1.141).

This proposal is unreasonable in view of the PTO’s aggressive attitude toward restriction practice. A presumptive election is an invitation to a restriction requirement. Moreover, claim grouping in a presumptive election is very likely to be different than the claim grouping in the subsequent actual restriction requirement.


15. Creating a "rocket docket" for design applications (37 CFR 1.155).

The NAPP concurs with this proposal.


16. Requiring identification of broadening in a reissue application (37 CFR 1.173).

The NAPP is opposed to this proposal because it opens the practitioner to liability. What appears to be a broadening to one person may appear to be a limitation to another. It is the examiner’s duty to determine the breadth of claims submitted to the PTO. How does applicant’s affirmation of claim breadth affect examination? Claim language stands or falls on its own regardless of any statement by applicant with respect to breadth.

17. Changing multiple reissue application treatment (37 CFR 1.177).

The NAPP concurs with this proposal.

18. Creating alternative review procedures for applications under appeal (37 CFR 1.192) .

This proposal would be beneficial if it expedites the appeal process. However, an additional layer of review may actually lengthen the process. Supervisory review should provide informal quality control.

19. Eliminating pre-authorization of payment of the issue fee (37 CFR 1.311).

Pre-authorization is considered very useful by many practitioners and should not be eliminated. Those who do not like it do not have to use it.

20. Reevaluating the Disclosure Document Program

The disclosure document program should be reevaluated and perhaps eliminated. Recent changes in the statutes and rules have reduced the need for this program.



21. Creating a PTO review service for applicant-created forms.

The NAPP opposes this proposal because there is insufficient value added for the costs that would be incurred.



Lastly, the NAPP would like to suggest that the PTO consider holding hearings with respect to proposal 9.

Respectfully submitted,

National Association of Patent Practitioners

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:43:37 PM