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commentary on new PTO guidelines

TO: Asst. Commissioner of Patents

Washington DC 20231

FROM: Arnold White & Durkee Biotech Prosecution Group (Austin)

DATE: December 4, 1998

RE: Comments on Proposed Rule Changes


The undersigned, practicioners in the area of biotechnology patent prosecution, provide the following commentary on the PTO’s proposed rules changes

· Simplifying small entity requests - Approved

· Requiring separate surcharges and supplying filing receipts - Opposed

for the following reasons:

The stated reason for the rule change is to decrease processing time. However, it is very difficult, in many instances, to provide a signed oath on the day the application is due. Submission of the basic filing fee with the application, which appears to be the primary outcome of the rule change, does not address the PTO's stated interest in decreasing processing time since the oath/declaration still will not be filed. Rather, it simply appears to be another revenue generating mechanism. Finally, the stated improvements of reissuing filing receipts at no cost (i) upon receipt of an oath/declaration and (ii) upon notification of an error. Neither of these improvements appears to provide significant advantages to applicants.

· Permitting delayed submission of oath/declaration and changing of time period for submission of basic filing fee and English translation - No comment

· Limiting the number of claims in an application - Opposed for the following reasons:

It is essential that applicants be permitted to prosecute related claims in a single application in order to issue these claims in a rapid and efficient fashion. There is no way to predict, for a given invention, how many claims are required to adequately represent that invention. Thus, a comment that "forty total claims and six independent claims should be sufficient for an applicant to obtain adequate coverage for an invention" is naïve in the extreme. This places an undue burden on the patent agent or attorney in predicting, in advance, which claims will be (i) the most commercially relevant and (ii) the most defensible in litigation. It also is unfair of the PTO to set a number of claims, beyond which the claims are deemed to "obscure" the invention. Limiting the number of claims in an application already is a priority given the added claim fees imposed over the total of 20 claims. Furthermore, if so few applications present excessive claims, as the notice indicates, then the burden should be minimal. It also should be pointed out that those applications with large numbers of claims (and even those with relatively small numbers of claims) usually are subject to restriction requirements that divide the claims into many smaller groups. Thus, existing restriction practice forces applicants to prosecute relatively small numbers of claims. In sum, this appears to be yet another thinly veiled attempt to increase revenues. If the PTO persists in maintaining a maximum number of claims to be prosecuted, then the number should be far more than 40 - perhaps 100.

· Harmonizing standards for patent drawings - Approved

· Printing patents in color - Approved

· Reducing time for corrected or formal drawings - No comment

· Permitting electronic submission of voluminous materials - Approved in part, opposed in part, for the following reasons:

It makes a great deal of sense to eliminate the paper copy of the sequence listing in favor of the already submitted CRF. However, the possibilty for loss or damage of the disk copy raises serious concerns about the integrity of the file. Perhaps a more reasonable solution would be to relax the overly stringent sequence listing requirements, which currently require submission of sequences that are neither claimed nor essential to searching the claimed invention.

· Imposing limits/requirements on IDS submissions - Opposed for the following reasons:

These proposed changes are totally unacceptable. If the duty of candor is to be maintained, there cannot be limits placed upon applicants' ability to discharge this obligation. This would place an undue burden on the applicant, patent agent and attorney to determine which references should or should not be submitted. If the PTO were to adopt some change of this kind, the following allowances must be made. First, the number of references must be at least 100. Second, there can be no limit on the number of submissions based upon related foreign prosecution, or based upon litigation.

As for the specific changes, these also are totally unacceptable. First, it would cost applicants thousands of dollars per IDS for a patent agent or attorney to review each IDS citation. This is totally impractical, and would effectively block patent filings on thousands of valuable inventions each year. It also raises a serious conflict of interest, and potentially a breach of attorney-client privilege, to make the statement suggested. Second, providing a copy of each cited U.S. application would appear totally contrary to the PTO's goal of reducing the volume of paper being submitted during prosecution. The PTO already has a copy of such applications, and the examiner may simply refer to those applications rather than copying them for the file. Third, the description of each citation will, again, increase the cost of IDS submissions to the point of eliminating a significant number of patent filings each year. Moreover, the United States runs the only patent-granting body in the world that requires citations of relevant art. It defies logic, in this period of world patent harmonization, that applicants' burden in this regard would be increased, and not diminished. It is the examiner's job to apply the art to the invention, not applicants'.

Implementation of new rules for the refusal of certain IDS submissions should address the PTO's concerns without the draconian measures proposed here.

· Refusing information disclosure statement consideration under certain circumstances - Approved

· Providing no cause suspension of action - Approved

· Requiring a handling fee for preliminary amendments and supplemental replies - Opposed in part, approved in part, for the following reasons:

The PTO often forces applicants into filing preliminary amendments, for example, by issuing restriction requirements and refusing amendments after final. Therefore, there should be no charge for preliminary amendments. However, if an appellant chooses to file a Reply Brief where no new ground of rejection is advanced in the Examiner's Answer, a fee would appear proper.

· Changing amendment practice to require replacement paragraphs - Opposed for the following reasons:

The bracketing/underlining amendment procedure currently utilized by the PTO provides the easiest way to analyze the file history. The replacement paragraph system, as currently utilized in the EPO, makes the nature and identification of amendments obscure. The PTO apparently realizes this fact in asking that applicants provide, in addition to the new type of amendment, a copy of the bracketed/underlined changes. This works against the PTO's desire to reduce paper submissions. The same efficiency could be achieved by (i) eliminating the short form amendment practice and (ii) relying on applicants' bracketed/underlined submissions.

· Providing for presumptive elections - Opposed for the following reasons:

It is not an undue burden for the examiner to contact applicants for an election. Furthermore, the first choice for prosecution may change after filing. Such a practice also will make examiners even less inclined to reconsider their restrictions if they already have formulated a first action on the merits.

· Creating a rocket docket for design applications - Approved

· Requiring identification of a broadening reissue - No comment

· Changing multiple reissue application treatment - No comment

· Creating alternative review procedures for applications under appeal - Approved

· Eliminating preauthorization of payment of issue fee - No comment

· Reevaluating the Disclosure Document Program - No comment

· Creating a PTO review service for applicant-created forums - No comment

Daniel S. Hodgins, Reg. No. 31,026

David L. Parker, Reg. No. 32,165

Mark B. Wilson, Reg. No. 37,259

Steven L. Highlander, Reg. No. 37,642

Shelley P.M. Fussey, Reg. No. 39,458

David W. Hibler, Reg. No. 41,041

Wes Enders, Reg. No. 41,735

Richard A. Nakashima, Reg. No. 42,023

Mark D. Moore, Reg. No. 42,903

Nabeela R. McMillian, Reg. No. 43,363





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