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December 04, 1998

December 04, 1998

To: Office Of The Assistant Commissioner Of Patents

From: Peter F. Kulkosky Primary Examiner Art Unit 1615

Subject: Advance Notice Of Proposed Rulemaking October 27, 1998


The following comments are in response to the notice of rule changes

(1215 OG 88).

1 am a Primary Examiner, having handled dockets in the chemical arts continuously since October 1972. Also, I have presented 4 talks and 5 poster sessions on the subjects of patent application filing rules and prior art search procedures at meetings of the American Chemical Society.

Adoption by the PTO of rule changes as stated in topics (4), (5), (7), (9). (10), (12), (13) and (14) are considered to be desirable from my viewpoint as an Examiner. I would have no comment upon the other topics.

The above cited proposed rule changes will expedite and simplify the application and examination process.

It is in the Applicant's interest to present a thorough discussion of what is believed to be the closest prior art cited in the IIDS.

The proposed changes in the claims amendment system will be economical. since the exanu'ner will be able to use the saved time to improve written action quality.

A claims limitation system as suggested in Topic 4 is long overdue, although the details of same may require adjustment over a period of time.

Drawing corrections are a factor in increasing pendency time. They are too often left until the latter stages of the application process. Rule changes which would provide incentive for early correction are necessary.

The proposal to drop the petition fee for black and white photographs is a good idea and would provide incentive for the use of an increased of same in patent applications. A more clear illustration of the invention



is facilitated for cases which require such representation microphotography in the pharmaceutical field, etc.

Preliminary amendments often create paper handling problems for the examiner and docket clerk. Supplemental replies like-place a burden on the application cycle time. Thus, a fee for same or other form of discouragement may be in order.

Presumptive election or mandatory election in a telephone interview would constitute an improvement over the current system.



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