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Comments on the Proposed Rule Changes

Bernstein, Hiram


Sent: Thursday, December 03, 1998 7:22 PM

To: Regreform


I think that the PTO should be applauded for suggesting numerous changes that will streamline the patenting process. However, I believe that a number of the proposed rule changes are unlikely to achieve the desired goals and in some cases are entirely misguided. I will focus my comments on those proposed changes that I believe ar& flawed; I believe the remaining proposals are either good ideas, or deal with subject matter upon which I have too little experience to comment.

I would like to group proposals 4, 9, and 10 together because I believe that they have been motivated by similar problems in patent examination and I believe that they can be fixed with similar types of solutions. These proposals suggest: limiting the number of claims in an application (4); imposing restrictions and requirements for the IDS (9)" and refusing an IDS under certain circumstances (1 0).

First I suggest that refusing an IDS that satisfies all of the rules is a particularly poor idea. This will lead to an enormous amount of uncertainty in preparing an application and will make estimating costs for an application almost impossible. At the very least, such a proposal needs to place limits on what an examiner can request in order to consider an IDS.

Next, I suggest that the problems that have motivated the proposals to restrict the number of claims and limit IDS submissions are largely the result of mismatches between: the PTO's merit metrics (how they measure how good they are doing); examiner productivity metrics (how the PTO measures how productive the examiners are); the actual work required to examine an application; and the price that the applicant pays to have the application examined. I think that the problems with the current proposals stem from a lack of creativity in how to handle the mismatches. The current approaches are attempting to apply yesterday's metrics to today's technology. By essentially considering the PTO merit metrics, the examiner productivity metrics, and the general pricing philosophy as fixed, the only option the PTO is leaving itself is to artificially restrict the workload. I contend that complex patent applications with numerous claims and large IDS submissions are more a reflection of the technology for which patents are sought than an effort by practitioners to abuse the system. I believe that a more appropriate pricing system for which the costs of a patent application are more nearly proportional to the actual work involved in examining the applications will go a long way towards correcting any abuses of the current system. I*also believe that the PTO's own merit metrics and the examiner productivity metrics are largely artificial numbers and that everyone will be better served if the metrics are adjusted to reflect actual work, rather than trying to restrict the work needed to examine every patent application to be consistent with PTO and examiner productivity metrics. Towards this end, I make the following recommendations.

I think that the, workload required to examine a patent application is generally a weighted average of:

(a) the length of the application,

(b) the number of claims, and

(c) the amount of cited IDS material.

I suggest that the price of the application more nearly reflect the actual workload. Already surcharges are in place for extra claims in an application. If the surcharges do not accurately reflect the extra workload per claim, those charges ought to be adjusted. Perhaps a progressive pricing scale in which each new claim costs more than the previous claim should be considered. I definitely believe that claim pricing is a better tool for limiting the number of claims than is some arbitrary limit on the total number of claims in an application. Similarly, a pricing strategy can be used for IDS submissions. A per page cost per item in an IDS would encourage applicants to submit only truly relevant material. Finally, a


per page price for an application beyond a specified length, will encourage applicants to write what is necessary and only what is necessary. Per page p@6ing for IDS material and application matefial should probably be similar, since reading each should require about the same amount of examiner effort. I appreciate Chat the USPTO might be constrained by government statutes and rules in their ability to modify pricing structures. If this is the case, then the PTO leadership should seriously consider asking Congress to make the changes needed to make pricing more nearly proportional to workload. I think that the PTO leadership might be surprised by how receptive Congress might be to well-planned changes that assign costs to those who use the services.

Having made the price of a patent application proportional to the work, the next changes should be to bring the examiner and PTO productivity metrics in line with the workload. A weighted average metric can easily be used to measure examiner productivity. For original applications, the metric is straightforward to implement. For continuations, the examining effort involves re-examining the as yet unallowed claims. These can be treated as new claims in determining examiner productivity. Because the entire application need not be re-read, the length of the application should not be an issue for a continuation. However, CIP's probably should be treated as new applications for the purpose of examiner productivity metrics. More details of this sort of productivity metrics can be worked out later.

Although the weighted average metric is difficult for the public to appreciate when the PTO wants to claim improvements in its productivity, the patent community certainly understands the meaning and importance of gauging productivity by the work involved in examining an application and it is to the patent community that the PTO should be most responsive.

Other odd and end comments:

I don't think that sufficient motivation exists for implementing the alternative procedures for applications under appeal (1 8). Since the examiner isn't bound by the decision and time is not added onto the patent term, this course of action does not seem particularly fruitful to me.

A patentee is on his/her own time as far as preparing final drawings (7) and I don't think that a reduced time for filing corrected drawings is warranted. However, I would rather see a reduced time from the "Notice of Allowability" rather than requiring the drawings as soon as allowable subject matter is indicated. The applicant might decide that the allowable subject matter is too narrow to warrent the expense of the patent.

Thanks for giving me the opportunity to comment.

Bart Singer

United States Patent and Trademark Office
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