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Response to Proposed Rule Changes

Topic 1: Simplifying Requests for Small Entity Status

No comments.

Topic 2: Requiring Repeat Surcharges...

First, it would appear that the fees proposed by the U.S. Patent and Trademark Office are not necessarily related to the services for which they are intended to compensate. The proposed rules notice claims that the additional surcharge fees are necessary because:

"the separate submission of each missing part in a delayed manner causes the PTO to perform double the amount of work, as the application would be twice processed for a submitted missing part, with presently only one surcharge being required."

However, the proposed rule change would require separate surcharges for each missing part, regardless of whether the parts were filed separately or together. Thus, the proposed rule would require two processing fees for only one processing of the application.

Second, the PTO has stated the additional surcharge fee is for the provision of three new "services." With regard to the first service, the PTO proposes to issue a filing receipt each time a part of an application is filed. However, the PTO also has proposed to omit issuing a Notice to File Missing Parts, a service which is currently provided. (This proposal is contained in the section of the proposed changes entitled "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 current Notice To File Missing Parts will typically include all of the information needed for an applicant to confirm that the application has been accorded a filing date and to identify the relevant information for the application (i.e., serial number, filing date, first-named inventor). Thus, the PTO is not actually providing a new service. The substitution of one service for another cannot justify an additional fee.

Regarding the second service, the correction of filing receipts without question of error, the provision of this "service" in return for an additional surcharge is questioned. In our firm's experience, an overwhelming number of filing receipt errors are the fault of the PTO. Moreover, the fee for correcting a filing receipt because of an applicant's error is only $25. Exchanging an occasional $25 fee for a $130 fee does not seem to be of benefit to patent applicants.

The third service to be provided by the PTO in return for the additional surcharge is the maintenance of filing receipt copies in the PTO application files. It hardly seems necessary to add a $130 fee simply to have the PTO keep copies of papers it issues. This service should already have been included in the current surcharge.

For the reasons discussed above, it would seem more equitable to (1) adjust the surcharge to compensate for the alleged increase in processing missing parts of an application (including the maintenance of filing receipt copies in each file), and (2) charge an second surcharge fee only if missing parts of an application are actually filed separately.

Topic 3: Permitting Delayed Submission Of An Oath...

The comments regarding this proposed rule change suggest that the PTO intends to discontinue the issuance of a "Notice To File Missing Parts" in most applications, and instead will either: (1) require an applicant to voluntarily complete the application within one month from the filing date (subject to paid extensions), or (2) require an applicant to pay the filing fee within one month of the filing date and submit the executed Declaration after receiving a "Notice of Allowability" along with a statement confirming an inventorship inquiry. We disagree with the proposed one month period and the discontinuation of the issuance of a "Notice To File Missing Parts."

While the proposed rule change would permit an applicant to postpone submitting an executed Declaration until the application is allowed, a conscientious practitioner will prefer to submit an executed Declaration as soon as possible after the application is filed, in order to avoid problems contacting the inventor(s) and the requirement for an inventorship inquiry. However, after an application is filed, the PTO cannot process any paper for that application, including an executed Declaration or check, if the paper does not reference the serial number for the application. Further, it is desirable to have the executed Declaration specifically reference the application serial number, in order to avoid any questions as to the version of the application supported by the executed Declaration. However, we believe that one month is insufficient time for a practitioner to (1) have the PTO report the application serial number to the practitioner, (2) prepare a blank Declaration referencing the application serial number, (3) forward the blank Declaration to the inventor(s) for execution, (4) receive the executed Declaration from the inventor(s), and (5) file the executed Declaration in the PTO. Accordingly, we believe that the one month period proposed by the PTO should be extended to, e.g., three months from the filing of the application, two months after the PTO informs the applicant of the application's serial number, etc.

We also believe that it would be beneficial to most applicants for the PTO to continue to issue a "Notice To File Missing Parts" for incomplete applications, and reserve issuing a filing receipt for only those applications that have been completed and are ready for examination. Currently, there is no way to confirm that the PTO has received all of the parts of an application necessary to complete the application. For example, if an executed Declaration is lost in the PTO mail room, an applicant would be unaware of this loss until receiving a Notice of Abandonment for the application. If a filing receipt is issued for only completed applications, receiving a filing receipt would confirm the completion of an application.

Topic 4: Limiting The Number Of Claims In An Application

We disagree with this proposed change. The PTO already charges fees for both (1) independent claims in excess of three, and (2) total claims in excess of twenty, ostensibly to compensate for the additional burden required to examine these extra claims. Now, without explanation as to why the current system of charging for extra claims is insufficient, the PTO proposes to limit the total number of claims altogether.

The PTO proposal of limiting the number of claims is misguided. The PTO statistics set forth in the notice of proposed changes establishes that the number of claims is not a major problem for the PTO (less than 5% of all applications have more than six independent claims, while less than 5% of all applications have more than forty total claims). Patent applicants are allowed to claim everything under the sun, and not every invention can be fully recited (including each contemplated embodiment) with only six independent claims or forty total claims. Some inventions, by their nature, will require more than the arbitrary limitation proposed by the PTO.

Moreover, the proposed limitation could require an applicant to file multiple applications for the same invention. For example, consider a situation where a patent application included a genus claim with five dependent species claims, and where each species claim then required ten dependent claims. Under the current rules, if the genus claim were allowable, the species claims would be allowed as well (in a single application). However, under the proposed rules, even if the genus claim were allowable, the applicant would still be required to file at least one divisional application for two of the species claims. Moreover, the applicant could not then submit a single genus claim encompassing both species claims. Instead, the applicant would be forced to present an independent claim for each species. Under current restriction/election of species practice, the PTO would almost certainly then restrict one of the two species from consideration, thereby requiring the applicant to file a third application for the remaining species.

The proposed changes discuss a provision for waiving the claim number limits when, for example, there are a number of species claims depending from single genus claim, as described above. However, the PTO comments characterizing this situation as "extraordinary" and "subject to other requirements as may be imposed" suggest that the likelihood of actually having such a waiver granted would, in practice, be very low. Further, an applicant would have to delay applying for such a waiver until (1) all of the nonrefundable extra claim fees had been paid and (2) the genus claim had been allowed. Thus, by gambling that the PTO will permit a waiver of the claim number limits, an applicant would risk extra claim fees and the term of any patent issuing for the species claims.

As noted above, the PTO currently has a system in place (i.e., extra claim fees) to discourage an applicant from unnecessarily filing a large number of claims. We suggest that, instead of implementing arbitrary claim number limits, the current system be modified (perhaps by raising the extra claims fees after forty total claims and/or after six independent claims). This would serve the PTO's stated purpose of discouraging large numbers of claims in application, while allowing an applicant to present more claims where necessary to fully claim an invention.

Topic 5: Harmonizing Standards For Patent Drawings

No comments.

Topic 6: Printing Patents In Color

No comments.

Topic 7: Reducing Time For Filing Corrected Or Formal Drawings

We disagree with the proposed one month time period for submitting corrected formal drawings. One month simply does not allow sufficient time to (1) receive the Notice of Allowance by mail, (2) ascertain from the client whether the formal drawings are to be prepared by the client or by the attorney, (3) forward the drawings to a draftsman for preparation, (4) have the draftsman correct the formal drawings, (5) have the draftsman return the formal drawings to the attorney, (6) have the attorney review the draftsman's work for accuracy, and (7) prepare and file the formal drawings. Moreover, formal drawings often cannot be prepared in advance of the Notice of Allowance, since the examiner is allowed to require drawing changes up to the issuance of a Notice of Allowance. Also, the PTO has begun the policy of refusing to even review drawings which have not been declared formal, thereby further reducing the opportunity for an applicant to prepare corrected formal drawings in advance of a Notice of Allowability. (We point out that the PTO has, upon occasion, erroneously refused to consider drawings that were expressly declared formal.)

We also oppose the proposal to require formal drawings in reply to an Office Action indicating allowable subject matter. As noted above, even if formal drawings are prepared and submitted in response to an Office Action indicating allowable subject matter, the Examiner may still require additional drawing changes up to the issuance of a Notice of Allowance. Further, an examiner will often indicate allowability of a minor dependent claim long before an independent claim is allowed. In many of these situations, the allowable subject matter is not sufficiently broad to warrant the issuance of the patent, and the applicant will subsequently abandon the application unless a broader claim is allowed. In these instances, the preparation and submission of formal drawings is unnecessary and an extra expense for the applicant.

Topic 9: Imposing Limits/Requirements On IDS Submissions

We strongly oppose all of the proposed changes regarding Information Disclosure Statements.

The most misguided proposal regarding the submission of Information Disclosure Statements is the requirement that the registered practitioner review each submission for relevance and then set forth a specific statement of relevance for each submission. First, most practitioners are not expert in every technical field and are therefore not the best qualified person to make such a review and statement. Examiners examine applications for only one field in order to facilitate their understanding of the relevant prior art. However, most registered practitioners handle applications relating to a variety of fields, and therefore do not develop the level of technical expertise required to examine an application in any and all fields.

Second, requiring the registered practitioner to submit a unique description for each submission of its relevance to each independent claim will inherently destroy the presumption of validity for many issued patents. Currently, the presumption of validity applies relative to those prior art publications which were before the examiner during prosecution. However, the rule change proposed by the PTO will modify the applicability of this presumption to those documents before the examiner as explained by the registered practitioner . In every infringement suit involving a patent where a statement of relevance by a registered practitioner was made, the practitioner's interpretation of the prior art will be an issue. The examiner's review of the submission, and thus the supposed presumption of validity, may be irrelevant to the litigation. Further, this proposed change could easily lead to practitioners routinely being required to testify during litigation as to their interpretation of documents submitted to an examiner, jeopardizing the practitioner-applicant relationship.

Third, having the registered practitioner prepare a unique description for each submission of its relevance to each independent claim will significantly increase the cost of prosecuting a patent application. Currently, the examiner in the PTO need only review a submission cited in an Information Disclosure Statement. Under the proposed change, the registered practitioner would be required to review a submission and prepare a written discussion of the submission's relevance and then distinguish the submission from each independent claim. Thus, the proposed change not only shifts examination responsibilities from the examiner to the applicant, but it increases these responsibilities as well. Thus would result in significantly higher prosecution costs for many applicants.

In addition, the proposed rule changes would have a chilling effect on the submission of documents to the PTO. If a registered practitioner believes that his only choices during prosecution of an application are (1) submit a document, and have his interpretation of the document scrutinized and second-guessed during infringement litigation, or (2) not submit the document, and have his decision not to submit the document scrutinized and second-guessed during infringement litigation, the practitioner may be more likely to decide not to submit the document on the chance that the document will not be noted during litigation. Further, if an applicant believes that disclosing potentially relevant documents to his registered practitioner will substantially increase the cost of the application, the applicant also will be much more likely to decide not to submit the document on the chance that the document will not be noted during litigation. Again, the proposed changes will erode the presumption of validity accorded to issued patents, and place the entire patent bar in a no-win situation.

Further, while the examples of abuse noted by the PTO in the proposed rule changes are on the order of hundreds of submissions, the PTO inexplicably seeks to limit the number of submissions to only ten. It has not been demonstrated that the problem cases where hundreds of documents are submitted justifies limiting all applicants to a maximum of ten submissions. It would be better to request those submitting hundreds of documents to reduce the number to a reasonable number relative to the field of technology.

The PTO has imposed the duty of disclosure upon the applicant, and now wishes to have the full consequences of this duty imposed upon the applicant as well. The PTO cannot have both and still expect to issue patents with the presumption of validity. The proposed changes regarding Information Disclosure Statements put the registered practitioner in the untenable position of determining whether each document is sufficiently relevant to be cited in an Information Disclosure Statement, and then to explain that relevance in detail. Unlike examiners at the PTO, registered practitioners are liable to their clients for malpractice, and do not have the luxury of interpreting a document (relating to a field for which the practitioner will probably not be an expert) in a manner which may be deemed improper during later litigation. The potential damage to the profession far outweighs any burdens currently felt by the PTO from its own requirements.

As an alternative to the proposed changes, we suggest eliminating the duty of disclosure altogether, or eliminating the duty of disclosure at least with respect to publically available documents. The first step usually taken by an accused infringer (or someone seeking to avoid infringement of a patent) is to conduct an independent review of all publically available documents, and this search will almost always be more comprehensive than any search undertaken by the examiner or the applicant during prosecution. Most registered practitioners will continue to submit relevant documents of which they are aware, but they will no longer feel pressured to submit every document brought to their attention, as is currently the case.

Also, the PTO could charge a reasonable consideration fee for each submission in an Information Disclosure Statement in excess of, for example, twenty (excluding those documents cited in a foreign search report or a PCT ISA search report).

Topic 10: Refusing IDS Consideration Under Certain Circumstances

We disagree with this proposed rule if for no other reason than it is too vague. This rule would seem to give the PTO unlimited authority to refuse consideration of a properly filed Information Disclosure Statement. The "burdensome" standard provides no guidance to the practitioner as to what will and will not be accepted. There are some examiners who believe that reading the specification of an application is too burdensome.

Moreover, this ambiguous standard is coupled with the ability of the examiner, at the examiner's discretion , to advance the status of the application, quite possibly to a point where even a corrected Information Disclosure Statement could not be submitted so as to be considered timely. Thus, this proposed rule would appear to provide the examiners with unlimited discretion to consider or refuse Information Disclosure Statements according to personal whim.

Topic 11: Providing No Cause Suspension Of Action

We first point out that the PTO already provides a three-year no cause suspension of action when the applicant files a Notice of Appeal, and this de facto suspension of action does not require publication of the application.

We generally agree with the proposal for a formal no cause suspension of action, but question the need for an application to waive confidentiality under 35 U.S.C. 122 and pay to have the application published. The proposed rule change already provides that the suspension will not extend the term of the patent. Therefore, this proposed requirement for publication would penalize an applicant who requests a suspension in order to raise funds over an applicant who simply has a slow examiner or who has sufficient funds to refile his application.

Topic 12: Requiring A Handling Fee For Preliminary Amendments...

No comments.

Topic 13: Changing Amendment Practice...

No comments.

Topic 14: Providing For Presumptive Elections

No comments.

Topic 15: Creating a "Rocket Docket" For Design Applications

No comments.

Topic 16: Requiring Identification Of Broadening...

No comments.

Topic 17: Changing Multiple Reissue Application Treatment

No comments.

Topic 18: Creating Alternative Review Procedures...

In reviewing this proposed rule change, we noted that, while a fee is required from the applicant for each proposed review, there is no guarantee that the reviewer's position, even if favorable to the applicant, will be adopted. Accordingly, we believe that there should be some provision for applicant to obtain a refund of the review fee when the reviewer's decision is not adopted by the primary examiner.

Topic 19: Eliminating Preauthorization Of Payment...

No comments.

Topic 20: Reevaluating The Disclosure Document Program

No comments.

Topic 21: Creating A PTO Review Service...

No comments.

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Last Modified: 7/4/2009 4:44:34 PM