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Comments on the United States Patent Office's proposed new rules and a disk copy thereof (RULESPTO)


December 4, 1998



Facsimile: 703-243-6410 InternetAddress: Writer's Direct Dial: (703) 243-6333 Telephone No.: Writer's Internet Address: Re: Propsed New Rules


Assistant Commissioner for Patent

Washington, DC 20231

Attn: Hiram H. Bernstein

Arlington Courthouse Plaza I

2200 Clarendon Boulevard, Suite 1400

Arlington, VA 22201 (U.S.A.)

Facsimile: 703-243-6410 InternetAddress: Writer's Direct Dial: (703) 243-6333 Telephone No.: Writer's Internet Address: Re: Propsed New Rules

Total No. of Pages: ; if you do not receive all pages, please call 703-243-6333


The following are comments on the United States Patent Office's proposed new rules and a disk copy thereof (RULESPTO). If any portion is illegible or if the disk cannot be read, please contact the firm of Millen, White, Zelano & Branigan, P.C., at the number above.

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

The proposal to simplify requests for Small Entity status by eliminating small entity statement forms is endorsed.

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

No advantage is seen in requiring separate surcharges for the delayed submission for the Oath/Declaration and the Application fee. The change will not accelerate the completion of applications and will further complicate the procedure. Therefore, this proposal is not endorsed. With respect to issuing corrected filing receipts without the fee presently required by 37 CFR 1.9(h), it is preferable that the USPTO invest additional resources in ensuring the Filing Receipt is correct. Over one-half of the filing receipts issued in 1998 had errors due to the fault of the USPTO.

3. Permitting Delayed Submission of an Oath or Declaration and Changing the Time Period for the Submission of the Basic Filing Fee and English Translation (37 CFR§ 1.52 and 1.53)

Permitting the delayed submission of an Oath will not simplify the determination of inventorship or simplify the location of inventors. Often many years pass between filing and issuance such that memories fade and inventors pass away. More oaths will be executed by executors, the integrity of which is diminished since they do not have inventor's knowledge of the invention and prior art. Therefore, this proposal is not endorsed.

The proposed requirement that a registered practitioner provide statements with respect to the determination of inventorship is an unnecessary burden on both foreign and domestic applicants and is not endorsed. In applications which claim foreign priority, inventorship determinations are typically made by a foreign attorney or agent. In addition, many domestic corporations have internal procedures for determining inventorship which do not involve a registered practitioner unless complicated issues arise.

4. Limiting the Number of Claims in an Application (37 CFR § 1.75 )

This proposal is not endorsed. Limits to the number of claims in an application would prejudice inventors of complex inventions which often require a large number of claims to ensure protection. The few high claim number cases do not merit restricting an inventor's ability to protect an invention. Limiting the number of claims also will not simplify examination since Examiners typically examine the broadest independent claim initially, independent of the total number of claims. Where there are multiple independent claims necessitating multiple searches, Examiners have typically issued restriction requirements. Because the proposal will permit applicants to file multiple cases, it will not limit the examination effort--it will just be spread out over several cases.

5. Harmonizing Standards for Patent Drawings (37 CFR § 1.84)

The proposal to harmonize the standards of patent drawings with the PCT requirements is endorsed. However, applicants should not lose the ability to file color photographs.

6. Printing Patents In Color (37 CFR § 1.84)

Eliminating the requirement to file a petition with the submission of color photographs is endorsed.

7. Reducing Time for Filing Corrected or Formal Drawings (37 CFR § 1.85)

Reducing the time for filing Formal Drawings from three months to one month following the mailing of a "Notice of Allowability" is not endorsed. One month is too short a time frame to provide formal drawings and does not take into account potential mail delays.

Requiring the submission of corrected or formal drawings upon the indication of allowable subject matter is not endorsed in that the application may contain other essential claims which must be prosecuted before the application is allowed to issue. Requiring the submission of formal drawings where the essential claims are never allowed would result in an unnecessary expense. In addition, an allowed claim may be further amended so as to necessitate a new rejection. Requiring formal drawings would be premature in this circumstance.

8. Permitting Electronic Submission of Voluminous Material (37 CFR § 1.96 and§ 1.821)

Permitting applicants to voluntarily submit large computer program listings and neucleotides and amino acid sequence listings in only a machine-readable form is endorsed. However, clarification is requested as to whether machine-readable includes both microfiche and digitally stored information.

9. Imposing Limits/Requirements on Information Disclosure Statement Submissions (37 CFR § 1.98)

The proposal is completely unacceptable. Attorneys under Canon VI of the Canon of Ethics have an ethical obligation to zealously defend the interests of their clients. They often do this by vigorously distinguishing the prior art.

The rule requires an attorney to violate this duty by, e.g., pointing out the features of the citation which are similar to the features of each independent claim...pointing out how the citation contains or teaches the general inventive concept of each independent claim...pointing out at least one feature which is similar to claim features that is not already taught...or pointing out where the citation teaches in a different way an already-taught feature which is similar to a claim feature. Such statements may be against the client's interests. In addition, there would be diverse interpretation of these requirements resulting , for example, in charges of inequitable conduct by the PTO and defendants in litigation and malpractice suits by applicants against attorneys for being inaccurate in describing what is "similar."

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

The proposal to permit the PTO not to consider an Information Disclosure Statement as unduly burdensome, although all of the stated requirements of 37 CFR § 1.9 are met, is unacceptable. The standard of "unduly burdensome" is too subjective and can lead to abuse in that no provisions have been made for recourse by an applicant who complies with the rule.

11. Providing No Cost Suspension of Action (37 CFR § 1.103)

This proposal is endorsed with the exception that the maximum period should not be limited to three years from the filing date. There may be occasions where a delay of longer that three years is desired, particularly where a related application is on appeal. In the final analysis, the longer the suspension, the shorter the patent term--so there would be no incentive for the applicant to request longer suspension except under extraordinary circumstances.

It is also suggested that this proposal be extended to allow suspension of applications already in examination. This is sometimes desirable when, e.g., an application is on appeal and a copending application is prosecuted to finality without the appeal being heard. It would be useful at that point to be able to suspend a decision on what to do next in the second application until the copending appeal is decided.

12. Requiring a Handling Fee for Preliminary Amendment and Supplemental Replies (37 CFR § 1.111)

It is often difficult to have a preliminary amendment or supplemental reply entered into the official file before the Examiner acts on the application thereby requiring a corrected office action. The time for processing a required fee will increase these occurrences. Therefore, this proposal is not endorsed.

13. Changing Amendment Practice with Replacement by Paragraphs/Claims (37 CFR§ 1.121)

A proposal to change the amendment practice to require that all amendments in the specification and claims be presented in the form of replacement paragraphs and claims, is endorsed.

14. Providing for Presumptive Elections (37 CFR §1.141)

The proposal to permit the PTO to consider the first invention presented in the claims as constructively elected is unacceptable and not endorsed. At the time of filing an application, an applicant may not have decided which invention to prosecute first. In addition, applicants will have no idea how an Examiner will restrict an application in advance of filing. The number and type of claims in each group will influence an applicant's choice when making an election. Constructive election forecloses all choice.

15. Creating a Rocket Docket for Design Applications (37 CFR § 1.155)

No comment.

16. Requiring Identification of Broadening In a Reissue Application (37 CFR § 1.173)

This proposal is not endorsed. Requiring identification of broadening within a reissue application places too great a burden on the applicant and provides little benefit to the examination process. The new requirement is particularly burdensome for a reissue application filed within two years of issuance where the issue of broadening is irrelevant to the PTO.

17. Changing Multiple Reissue Application Treatment (37 CFR § 1.177)

A proposal to permit multiple reissue applications without the need for the Commissioner's authority is endorsed.

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

The proposed review prior to filing a brief would serve only to enhance the credibility of poor rejections and is not endorsed. Since the review procedure does not provide for an independent determination of a prima facie case, and does not provide adequate time for a thorough review of the file, these reviews will result in few withdrawals of improper rejections and will serve more as an endorsement of improper rejections.

The proposed review after the brief is filed will also serve to endorse improper rejections unless the reviewer can overrule the Examiner. An appeal conference involving the original Examiner and two additional Primary Examiners or a specialist which can overrule the Examiner would be preferred.

19. Eliminating Preauthorization Payment of the Issue Fee (37 CFR § 1.311)

No comment.

20. Reevaluating the Disclosure Document Program

No comment

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

This service will have little value unless the forms achieve an unambiguously "approved" status once reviewed.


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