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Howard B. Barnaby

330 Madison Avenue

New York. NY 10017

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Herbert F. Schwartz

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John F. Sweeney

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Robert Neuner

30 Rockefeller Plaza

Attention: Hiram H. Bernstein

New York. NY 10112

(212) 408-2552


John D. Murnane

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New York, NY 10112

(212) 408-2574



Melvin C. Garner

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Edward V Filardi

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Theresa M. Gillis

Richarcd L. DeLucia

Alice C. Brennan

John E Daniel

Thomas A. 0'Rourke

Charles P Baker

Edward M. Blocker

Susan E. McHale

and the



November 30, 1999

Box Comments - Patents

Assistant Commissioner for Patents

Washington, DC 20231

Attention: Hiram H. Bernstein

RE: Comments on Advance Notice of Proposed Rulemaking concerning 21 Topics to Implement the Patent Business Goals


Dear Mr. Bernstein:

As President of the New York Intellectual Property Law Association, I respectfully submit the attached comments on the Patent and Trademark Office's recent advance notice of proposed rulemaking setting forth 21 proposed changes to the rules of practice and procedure, the notice published at 63 Fed. Reg. 53498 on October 5, 1998. These comments were approved by the NYIPLA Board of Directors.

The NYIPLA supports most of the proposed changes in whole or in part; however, as detailed in the attached comments, several proposed changes are opposed. Among the proposed changes opposed by the NYIPIA are the following:


Topic 4: Limiting the Number of Claims In an Application (37 CFR 1.75)

Topic 9: Imposing LimitS/Requirements On Information Disclosure Statement Submissions (37 CFR 1498)

Topic 10: Refuting Information Disclosure Statement Consideration Under Certain Circumstances (37 CFR 1.98)

Topic 12: Requiring A Handling Fee For Preliminary Amendments And Replies (37 CFR 1.111)


Assistant Commissioner for Patents

November 30, 1998

Page 2


The NYIPLA Committee on Patent Law, which prepared the submitted comments, expressed a concern that at a time when the rest of the world in Europe, Japan and elsewhere are reducing fees to prosecute patent applications, these proposed changes could have the effect of increasing the cost of obtaining a patent in the United States. The increased costs are likely to be the result of (1) increased fees imposed by the PTO to obtain service8.4 and (2) increased complexity added by the proposed rules4 The proposed changes are likely to translate into increased time and expense incurred by patent practitioners and into escalated costs to their clients for procurement of U.S. patents.

On behalf of the NYIPLA, I appreciate the opportunity to be heard on this important matter.


Howard B. Barnaby





 The New York intellectual Property Law Association 

Comments on the 21 Topics in the PTO Advance Notice of Proposed Rulemaking (ANPR) concerning the changes to Implement the Patent s Goals

(Notice Published on October 5, 1998 at 63 Fed. Reg. 53498)

1. Simplifying Request for Small Entity Status (37 CFR 1.27)

The NYIPLA supports simplifying the procedure for requesting small entity status, but questions whether the proposed elimination of currently used small entity statement forms accomplishes that goal to any extent where small entity status still must be established by a statement by a person it a position to know the facts. The NYIPLA suggests that small entity status should be able to be established at any time by a simple assertion by the applicant, assignee and/or attorney of record. Attorney's assertions should be based on representations made to him or her by the applicant or assignee, after the applicant or assignee was apprised by the attorney of the applicable small entity criteria.

2. Requiring Separate Surcharges and Supplying Filing Receipts (37 CFR 1.53)

The NYIPLA (1) takes no position regarding requiring separate surcharges for the delayed submission of an oath/declaration and the application filing fee and (2) supports the sup lying of new filing receipts without charge to correct p

any errors or to update filing information, as needed.

Currently, the fees generated by the PTO are subject to confiscation by the Treasury for the general fund. Therefore,

some members believe that before fees are increased, as the proposed separate surcharges effectively do, the PTO should receive the full benefit of the fees currently collected. Otherwise, the argument that increased expense justifies the increased fees is unpersuasive; PTO customers are already paying far more than the expense generated.

Other members believe that the late charges are reasonable because if an applicant cannot do something on time, a late charge is fair.

In recent years, numerous complaints have been received regarding errors in filing receipts from the PTO. The proposed three new user-friendly services provided by the PTO may not help decrease the number of errors, but should help practitioners in getting such errors corrected. Accordingly, the NYIPLA supports the new services proposed.



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)

The NYIPLA supports the proposed rule permitting delayed submission of an oath or declaration provided that the rules make clear that in making the proposed required submission identifying the inventors one month after filing, the attorney or agent is entitled to rely on representations made by his client. Permitting such delayed submission upon payment of a fee










following the first Office Action and before the close of prosecution provides more flexibility to applicants than the current practice requiring the oath or declaration soon after the application is filed. The NYIPLA supports prohibiting after the close of prosecution the submission of an oath or declaration that names an inventorship different from that previously indicated, provided that the PTO allows the filing of a continuing application to permit entry of such an oath or declaration without loss of filing date.

The NYIPLA believes that in general practitioners will submit the oath or declaration on filing or soon thereafter because of the increased difficulty in obtaining an executed oath or declaration the more time passes. Accordingly, an increased number of petitions should not result.

The NYIPLA believes that if the delayed submission of an oath will prevent a PCT application from having the application filing date as the 35 U.S.C. 102(e) date, delayed submission of the oath should be prohibited. Otherwise, confusion would result.

The NYIPLA believes that if 37 CFR 1.34 (b) is changed to give control of the prosecution to the attorney or agent who filed the patent application, the attorney or agent's client (a potential assignee, not the inventor) should not be permitted to take actions allowed an assignee, such as filing a reissue application under 37 CFR 1.172 and submitting a 37 CFR 3.73 statement establishing the right of an assignee to take action.














The NYIPLA supports requiring an inventor to submit an oath or declaration under 37 CPR 1.63 before being permitted to appoint a representative other than the attorney or agent who filed the patent application; except in cases where status under 37 CPR 1.42 or 1.47 has been accorded because the inventor is dead or has refused to join in an application. An actual assignee of the inventor should be allowed to take action in the application and revoke the attorney of record unless an executed oath or declaration of the inventor, but no assignment, has been filed.

The NYIPLA believes that the executed assignment by the inventor should be effective to permit the assignee to control prosecution under 37 CPR 3.71 and take necessary action in accordance with 37 CPR 3.83 only when an oath or declaration under 37 CPR 1.63 is filed, unless status under 31 CPR 1.42 or 1.47 has been accorded. The attorney or agent should be understood to represent the inventors unless 37 CPR 1.42 or 1..47 status is present.

One problem that the proposed rulemaking does not address is the current practice where the PTO will not include the oath or declaration in a certified copy of the application if the applicant does not submit the oath or declaration at the time of filing the application. A procedure whereby such delayed submissions were routinely included in the certified copy would be beneficial.



  1. Limiting the Number of Claims in An Applicat4ion (37 CFR 1.75)

The NYIPLA opposes limiting the number of total claims in an application to 40 and independent claims to 6.

According to the USPTO, a relatively low number of applicants (less than 5%) who present excessive numbers of claims results in delays in examination and unnecessary pendency for the vast majority of applicants. It may well be that these "jumbo" type of applications are assigned to more than 5-. of the examining corps. On the other hand, applicants who file a large number of independent claims and-total claims are paying a premium to the USPTO to have these claims examined.

The proposal of the USPTO contains a subjective opinion by the USPTO that 40 total claims with 6 independent claims should be sufficient for an applicant to obtain adequate coverage for an invention. However, the NYIPLA believes that 40 total claims and 6 independent claims may often be inadequate, for example where the patent application is directed to a complex machine which has multiple sub-assemblies working together to produce a unitary result.

5. Harmonizing Standards For Patent Drawings (37 CFR 1.84)

The NYIPLA supports modifying 37 CFR 1.84 to provide that drawings that are acceptable for publication of a PCT application will be an acceptable alternative to compliance with the current requirements of 37 CFR 1.84. Increasing such flexibility will make it easier for applicants to comply with PTO requirements and will reduce delay. The NYIPLA also believes it


desirable to preclude a national office from objecting to a drawing once it has passed muster with any Receiving Office of a PCT application, regardless of whether the national phase was started in accordance with 35 U.S.C. 371 or 111.

6. Printing Patents In Color (37 CFR 1.84)

The NYIPLA favors keeping the current system whereby color drawings or photographs are accepted by petition and petition fee, rather than the proposed system whereby patentees of design and utility patents who submit color drawings or photographs would not be allowed to request that the patent be printed only in black and white. The NYIPLA, however, believes that the current system could be modified beneficially by eliminating the requirement of a formal petition to submit color drawings in favor of merely requiring the payment of a simple color surcharge.

7. Reducing Time For Filing Corrected Or Formal Drawings (37 CFR 1.85)

The NYIPLA favors requiring corrected or formal drawings to be filed in reply to an Office Action indicating .allowable subject matter, but opposes requiting that the drawings be submitted within one month of such office Action. The current practice of providing a 3-mbnth response period in which to submit such drawings should be retained. The delay in processing corrected or formal drawings takes place after the filing of the corrected or formal drawings, not before. By providing the applicant with a three month period from at indication of allowable subject matter within which to file the corrected or


formal drawings, the PTO would afford an applicants a reasonable amount of time to take action without causing an interruption of the further prosecution of the application. Any delay in processing the drawings would be under the full control of the USPTO and not attributable to applicant.

The NYIPLA believes that requiring the filing of formal drawings within one month from the mailing of a "Notice of Allowability" is unrealistic. For foreign based applicants, the time for obtaining and filing new formal drawings may well take more than a month from the date of the Notice of Allowability. Even obtaining drawings for a domestic applicant can take more than a month from the date of the Notice of Allowability.

In any event, the NYIPLA believes that any requirement to submit drawings within a shorter time than 3 months from the date of the Notice of Allowability should not impose a fee.

8. Permitting Electronic Submission Of Voluminous Material (37 CFR 1.96, 1.821)

The NYIPLA supports permitting electronic submission n of voluminous-material. Technologies other than computer program listings and nucleotide and/or amino acid sequence listings that would benefit from allowing electronic submission include chemical and manufacturing processes which involve precise computer control to carry out.

9. Imposing Limits/Requirements On Information Disclosure Statement Submission (37 CFR 1,98)The NYIPLA opposes the proposed rulemaking. The anecdotal evidence presented by the USPTO should not be a cause



for making sweeping changes in the requirements of an Information Disclosure Statement. More specifically, the NYIPLA opposes the proposed requirement for a description of each citation's importance relative to a claim. This requirement will present an undue time and cost burden and will increase charges of inequitable conduct in patent litigation.

The NYIPLA also opposes the proposed requirement for a formal certification that each citation has been personally reviewed by the registered practitioner. As a middle ground, the NYIPLA proposes that any such certification be allowed to rely on review by the practitioner's associates, the inventors, and the client.

10. Refusing Information Disclosure Statement Consideration Under Certain Circumstances (37 CFR 1.98)

The NYIPLA opposes the proposed rulemaking. It is the Patent Examiner's job to review all relevant art, and allowing unbridled authority to refuse consideration of Information Disclosure Statements is unwarranted.

11. Providing No Cause Suspension Of Action (37 CFR 1,103)

The NYIPLA takes no position on the proposed rulemaking as no consensus has been reached.

Some members believe that allowing an applicant to request deferred examination without a showing of good and sufficient cause and for an extended period of time can well cause havoc should a patent issue years later with claims of a


broad scope which were not contemplated at the filing of the application.

Other members welcome the possibility of a deferred prosecution after compliance with all outstanding formality requirements.

12. Requiring A Handling Fee For Preliminary Amendments And Replies (37 CFR 1.111)

The NYIPLA opposes the proposed rulemaking.

At present, an applicant is given but one chance as a matter of right to respond to a first Office Action on the merits. Once a Final Rejection has been issued, an applicant is not entitled as a matter of right to file a response and have the response entered of record.

Imposing a fee on an applicant when filing asupplemental response to a first Office Action on the merits is a penalty. Likewise, imposing a fee on filing a Preliminary Amendment with additional claims, aside from any additional claim fee, is a penalty on the applicant.

Charging a handling fee for Preliminary Amendments and supplemental replies will discourage such filings. The USPTO was not established to discourage applicants but to encourage the granting of patents on an applicant's invention.







13. Changing Amendment Practice To Replacement By Paragraphs/Claims (37 CFR 1.121)



The NYIPLA opposes the proposed rulemaking.

The current system should be implemented for Amendments to the description. If more them five words are to be changed in a paragraph, then substitution of a paragraph as requested by the USPTO should be required.

The present rule which limits changes to a claim to 5 words or less deleted or added is not believed to be over-taxing on the part of the USPTO.

Requiring the applicant to supply a marked-up copy of the changed paragraphs or claims imposes an additional burden on the applicant and, more particularly, the practitioner. Where an application has been processed on a word processor, a marked-up, copy may not even be available.

14. Providing For Presumptive Elections (37 CFR 1.141)

The NYIPLA takes no position on the proposed rulemaking as no consensus has been reached.

15. Creating a "Rocket Docket" for Design Applications (37 CFR



The NYIPLA opposes the proposed rulemaking.

Permitting applicants who have a deep pocket to take advantage of expedited examination will only cause applicants who do not have deep pockets to be further delayed in obtaining early issuance of a patent.


At one time, the pendency of design applications was two years before a first Office Action Would be issued. Recently filed design applications take less than one year. Rather than have the USPTO hire "special expediters" or to provide a higher GS rating to "clerks as special expediters"', the resources of the USPTO would be better spent by assigning a few more Examiners to the design application dockets to continue to reduce the backlog.

16. Requiring Identification of Broadening In A Reissue Application,(37 CFR 1.173)

The NYIPLA supports the-proposed rulemaking.

17. Changing Multiple Reissue Application Treatment (37 CFR


The NYIPLA supports the proposed rulemaking.

18. Creating Alternative Review Procedures For Applications Under Appeal (37 CFR 1.192)

The NYIPLA supports the proposed rulemaking as long overdue.

The USPTO currently has a procedure for an Appeal Conference (MPEP 1208) which provides for a review once an Appeal Brief has been filed by conference in the Group with those participating being (1) a Primary Examiner, (2) the Examiner charged with preparation of the Examiner's Answers and (3) another Examiner, known as the conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal.

The USPTO proposal for the "post-brief review" represents an extension of the Appeal Conference. One


distinction is that the USPTO now wishes to charge an additional fee which was not charged for the Appeal Conference.

The public should have expected that the Appeal Conference of MPEP 1208 would have led to the withdrawal of objections of doubtful merit. In view of the past history of the Appeal Conference, it appears that the proposed po8t"brief review or even the limited pre-brief review will fail to reduce the number of appeals to the Board of Patent Appeals and Interferences.

The proposed reviews do not provide the applicant with the views of any of the conferees except that of the Examiner in charge of the application. Hence, an applicant is not provided with information as to the "weaknesses." The NYIPLA believes that it would be beneficial if the applicant were informed of the results of the Appeal Conference. Even in cases where the Appeal Conference concludes the appeal should go forward, the Appeal Conference may conclude that only certain issues have merit or that certain issues could be eliminated by voluntary amendment by the applicant and so at least reduce the number of issues on appeal.

The NYIPLA also believes that to require an applicant to now pay for a pre-brief review which has been an established practice of the USPTO is burdensome to the applicant.

19. Eliminating Preauthorization Of Payment Of the Issue Fee *37 CFR 1.311)

The NYIPLA supports the proposed rulemaking.



20. Reevaluating the Disclosure Document Program

The NYIPLA believes that the maintenance of an officially indexed and searched database for defensive publications to prevent the issuance of a patent on a subsequently filed application, is a desirable objective. Its manner of implementation is immaterial, as long as it is subject to as few requirements as possible-, so that it can be done on a pro se basis by those who intend to avail themselves of it for defensive publication purposes. A disclosure document should remain unavailable for any other purpose. Its use for any other purpose should be discouraged.

21. Creating a PTO Review Service For Applicant-Created Forms

The NYIPLA takes no position on the proposed rulemaking as no consensus has been reached. The NYIPLA believes that in any event the PTO would be better served if the PTO got the users involved in coming up with forms and formats for other filings with the PTO, rather than the PTO proffering unsuitable forms without input from the users.






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