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Assistant Commissioner for Patents

Washington, D.C. 20231

Attn: Hiram H. Bernstein

Re: Advance Notice of Proposed Rulemaking for "Changes to Implement the Patent Business Goals"



Texas Instruments ("TI") offers the following comments regarding the above-referenced Notice.

TI commends the U. S. Patent and Trademark Office ("PTO") for its initiatives to simplify and accelerate the patent examination process. TI generally agrees with most of the proposed changes, but specifically objects to shortening the time period for submitting an English language translation, imposing a strict limit on the number of claims in an application, reducing the time for filing corrected/formal drawings, imposing some proposed information disclosure statement limitations, and rejecting an IDS as unduly burdensome. Detailed comments are provided as an Appendix to this letter.

If you desire any additional comments or explanations, please contact me.

Very truly yours,




Richard H. Donaldson

Senior Vice President of

Texas Instruments Incorporated

and General Patent Counsel



Specific Comments

  1. Simplified Small Entity Status

    Although TI does not qualify as a small entity, this simplified procedure would appear to be of benefit to those who are.

  2. Separate Surcharges and Filing Receipts

    TI believes the prompt issuance of an original or corrected filing receipt and the placing of a copy of the filing receipt in the PTO’s application file will greatly benefit applicants and the PTO’s examining corps.

    TI has no objection to paying two separate surcharges in non-provisional applications when the oath/declaration and filing fee are separately mailed in a delayed manner. However, TI would recommend payment of a single surcharge when both are filed together at the same time (i.e. mailed together) in a delayed manner, rather than two surcharges. This would encourage simultaneous delayed submissions.

  3. Delayed Submission of Oath/Declaration and Accelerated Submittal of Filing Fee and English Translation

TI believes the option of delaying submission of the Oath/Declaration is of benefit to applicants. Although TI agrees with the shortened filing fee time period, TI believes that shortening the time period for submittal of the filing fee may work an injustice for small entities or individual inventors who are not familiar with the PTO’s rules and do not maintain a PTO deposit account.

TI does not agree with shortening the time period for submittal of an English language translation. TI finds it difficult but manageable to submit English language translations for foreign language applications within the current two-month period. If this time period is reduced, TI faces the prospect of paying substantially more money, in the form of extensions of time, to continue to operate as it currently does. TI does not believe its situation is unique to TI and accordingly, opposes any reduction in the time period for filing an English language translation.

TI is unsure what the purpose is of submitting a "new" statement by a registered practitioner that an inventorship inquiry has been made. The inventors have been provided a copy of the application as filed, the inventorship is as indicated, and the inventors have been given notice of their 37CFR 1.63(b) obligations serves. The new statement requirement is fraught with the potential for errors or missteps; what procedure will be available for correction of errors? It may be difficult for a registered practitioner in the U.S. to adequately conduct an inventorship inquiry in a foreign country or adequately instruct the foreign inventors of their 37CFR 1.63(b) duties.

The designation of the representative filing the application as the attorney/agent of record before submittal of an executed Oath/Declaration will benefit applicants. The early assertion of priority claims should not pose a problem in most instances and will also be of benefit to applicants.

The PTO should consider separating the "new" statement requirement from the delayed submission of an oath/declaration and allow practitioners to select either or both, subject to payment of appropriate surcharges or processing fees. The PTO should also identify the approximate cost for the processing fee for such submission after a first Office action. The PTO should also consider permitting a post-allowance change in inventorship, for a specified processing fee, if the inventorship change does not require a new rejection or a new art search.

It is unclear how applicants would be notified of a missing filing fee or English translation if the current "Notice to File Missing Parts form" is eliminated; the modification of a filing receipt to include this type of information will make this a very "busy" and "congested" form. In any event, applicants should be given a minimum of one month from the mailing date of the form identifying missing or partially completed items to make corrections or supply missing items.

As to the specific questions asked by the Notice, the answers are as follows:

Question 1 . The PTO should consider specifying the amount of such a processing fee. It is difficult to approve this procedure without knowing its cost. Again, the PTO should consider allowing a post-allowance change in inventorship if no new rejection or search is required, for a specified processing fee.

Question 2 . Generally, the benefit outweighs the risk. The problems with inventors not signing may be caused by employee mobility; that is, the non-signing inventor may work for a different or competitor company and his/her old company may not want to provide a patent application that contains potential trade secret information to the inventor for fear that trade secret information will "leak" to the non-signing inventor’s current company.

Question 3 . This is not a concern.

Question 4 . Yes, especially when the inventor is an employee with an employment agreement obligating assignment of inventions to the employer (assignee). Other cases may not be so clear.

Question 5 . It is not clear how the inventor(s) would "appoint" another representative. If another representative, unrelated to the filing representative, clearly has possession of information related to the application (and provided to the filing representative), and makes responses to examination actions and the filing representative does not, the PTO should accept these responses. The PTO may use the existing rule to challenge the authority of the prosecuting representative, if needed. TI frequently has outside representatives prepare and file applications that may not include an executed assignment or oath/declaration, but are prosecuted by in-house representatives; in most instances, the designated mailing address is an in-house representative, to avoid any uncertainty.

If all the inventors appoint a new representative in a written document, the PTO should notify the filing representative and allow the new representative to be the designated representative for the application. If less than all the inventors make such an attempt, it should be ignored by the PTO. Any change in representative by the inventor(s) should be in a written document.

Question 6 . An actual assignee of the inventor(s) should be able to perform any action in an application, whether or not the inventors have executed an oath/declaration. Any inventor refusing to sign an oath/declaration, but who individually executed an assignment should not be able to have his/her assignee control prosecution, unless all the inventors executed this same assignment. If an assignment is executed by all inventors, the representative works for the assignee. If an inventor refuses to execute an oath/declaration after executing an assignment, the assignment should control. If an inventor refuses to execute an oath/declaration and also refuses to sign an assignment that the majority of inventors have executed, the assignment should control. For non-majority cases, the filing representative should retain prosecution control.

4. Limitation on Number of Claims

Although TI generally agrees with the concept of limiting the total number of claims in an application to facilitate the examination process, there are circumstances when more claims may be appropriate. For example, a very lengthy specification may require many different claims to protect multiple embodiments. It does not appear that carving up the claims and assigning them to multiple Examiners will provide uniform or speedy prosecutions.

The PTO should consider a multi-level and escalating fee structure for claims in excess of 40 total and six independent with claims above 160 total and 25 independent being rather expensive. The PTO should reevaluate the need to affect all applicants because of the activities of less than 5% of applicants.


  1. Harmonizing Patent Drawing Standards

    This change is overdue.

  2. Color Patents

    This change is overdue.

  3. Reduced Time for Filing Corrected/Formal Drawings

    TI does not see the need for this reduced time. A one-month response time is inadequate, even for in-house draftspersons, given normal processing times of a week or more to receive the mail and get it docketed, two weeks for draftsperson corrections, and one week for a representative to review/approve the change(s) made by the draftsperson.

    Question. The PTO should consider allowing submittal of formal drawings in response to an Office action indicating allowable subject matter as an option.

  4. Electronic Submissions of Voluminous Materials

    This change is overdue. Providing provisional applications in an electronic form should be an option. Also as an option, when electronic versions of documents are available, such documents should also be able to be submitted in electronic form.

  5. Information Disclosure Statement (IDS) Limitations

    Although TI generally agrees with the concept of reducing IDS "dumps", the alternative of an Examiner rejecting an IDS without an objective standard for such rejection, shifts the balance too far the other way. Providing copies of pending applications or copies of U.S. Patents should not pose a problem to applicants. If the PTO implements this proposal, the number of references not described should be increased from ten to twenty-five total to allow for additional references, if needed. In most instances, applicants are merely providing documents or information it has found related to an application to the Examiner.

    TI objects to a requirement in 37 CFR 1.98 that any cited reference in an IDS include a unique description of how that reference applies to identified claim elements. Why doesn't the PTO allow the Examiner more time to review IDS submissions? An alternative proposal is to have a multi-tiered fee structure for references in an IDS above some identified number or volume.

  6. Refusing Information Disclosure Statements

    TI objects to this procedure without a clear definition of what "unduly burdensome" means. Some of the examples do not seem to be "unduly burdensome", and are merely time consuming to review. What procedure will exist for correcting a rejected IDS? Again, the PTO should consider a multi-tiered fee for "excessive" numbers/volume in an IDS.

  7. No Cause Suspension

    This change is overdue. The PTO should consider a longer period of suspension than 3 years. Question 1. The PTO should match its maximum deferred period to that of the EPO and JPO. Question 2. No.

    Question 3. No. Publication in the EPO and JPO has not produced any "chilling" effect.

  8. Preliminary Amendment/Supplemental Reply Fees

    TI has no objection to charging preliminary amendment fees, but not for a time period of one month following the filing date. Current PTO practices do not provide applicants with a serial number within this time period. Further, these time periods should be extendable. TI has no objection to supplemental reply fees as described in the Notice.

  9. Replacement paragraphs/claims

    This change is overdue.

    The PTO should identify which is the "official" version, the "clean" copy or the "markup" copy, in case there are unintentional differences between the "clean" and "markup" copies.

  10. Presumptive Elections

    TI has no objection to this procedure.

    The PTO should consider adding the PCT practice of allowing examination of additional inventions in an application upon payment of an additional fee.

  11. Rocket Docket for Design Applications

    TI has no objection to this procedure.

  12. Identification of Broadening Reissue

    TI has no objection to this procedure.

  13. Multiple Reissue Application Treatment

    TI has no objection to this procedure.

  14. Alternative Review Procedures

    TI has no objection to these procedures.

    TI notes that some of these review procedures should already be in place in the PTO and appear to be a way to generate additional revenue from activities already being performed by PTO personnel. The use of a second primary examiner as the reviewer may not result in an unbiased review since that examiner will also be subject to this same review process.

    The time period for submitting an appeal brief should begin to run from the notification to applicant of the review decision.

  15. Preauthorization of Issue Fee

    TI has no objection to this procedure.

  16. Disclosure Document Program

    TI has no objection to encouraging the use of provisional applications rather than a disclosure document. The elimination of the disclosure document program may work an injustice on small/individual inventors.

  17. PTO Form Review Service

TI has no objection to this procedure.

If the PTO does not "approve" a form, it is not clear why anyone (other than businesses who provide these forms for a fee to applicants) would submit a form to the PTO under this procedure.

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Last Modified: 7/4/2009 4:47:37 PM