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December 4, 1998

December 4, 1998

Hiram H. Bernstein


Dear Mr. Bernstein,

In response to your invitation to comment on the proposed rule changes (Fed. Reg. Oct. 5, 1998, 1215 OG 87), I have the following comments.

1. Simplifying Request for Small Entity Status

I agree with this proposed rule.

2. Requiring Separate Surcharges and Supplying Filing Receipts

I do not agree with this rule. This rule appears to me to be a proposal to merely charge the applicant twice as much with no benefit to the applicant. The reasons put forward in support of the proposal do not support this kind of fee hike.

One reason given is that the cost for processing missing parts has increased. Unless the cost has doubled, the proposed new fee is unwarranted. The PTO, which has now for some years made enough money off of applicants to be looked upon by Congress as a source of revenue, should look long and hard at fee increases above the actual cost of the service.

A second reason given for the doubled fee is that separate late submissions of each missing part doubles the amount of work for the PTO. While the PTO did not supply any data on how often this situation arises, I would guess that it is rather infrequent compared to how often the missing parts are submitted together. Moreover, the rule does not address the "double work" scenario. If the issue is really the separate submission of two missing parts, then the fee should be assessed for that and that alone -- no added fee when the two missing parts are submitted together.

As for the comment that those who delay in submitting items should bear the costs, I suggest that they already do. It has been my experience that the cause for submitting items late has not been to merely make work for the PTO. Even big corporations don't want to pay the added fee and avoid missing parts if possible. As the PTO must recognize, sometimes it is not possible to execute the oath or declaration before the application must be filed. The inventors may not be available, or the inquiry into inventorship may not have been completed.

Regarding the comment that the added fee further a goal of reducing PTO processing time to twelve months or less, I believe that the surcharge will be ineffective for the reasons given in the preceding paragraph: In addition, I think that an applicant would realize that a delay in submitting all parts will naturally result in a delay in when a complete application can be examined. Rather than extracting more money from its clients, the PTO might instead take the delay caused by the applicant out of its calculation of PTO processing time.

I would also like to comment on the new services proposed in exchange for the doubled fee for missing parts.

There are probably few applicants who would consider waiver of a $25 charge for generating a new filing receipt in exchange for an additional fee of $130 for the missing parts to be a good deal. The second service -- no longer having to identify whether the fee is due because the error was the fault of the applicant or not due because the error was the fault of the PTO -- does not seem to be any different from the first service.

The third new service of putting a filing receipt in the PTO's own file seems to me to be something that the PTO should have been doing all along. I was surprised that the PTO sends correspondence for an application without keeping a copy of it in the application file. I certainly keep a copy of everything I send to the PTO on behalf of an applicant. While it is a service for the PTO to improve its business practices, I don't see the connection to the proposed fee increase.

3. Permitting Delayed Submission of an Oath or Declaration and Changing the Time Period for Submission of the Basic Filing Fee and English Translation

I disagree with all three of these proposed rule changes.

With respect to the delayed submission of an oath or declaration, I believe that the oath or declaration should be submitted, and the application should thus be complete, before the application is examined. The proposed rule has not taken into account a number of difficulties with a delay in executing the oath, including the inventor's duty of candor, the law on best mode (what if it changes before the oath is executed?) and continuation practice. I think these are far more serious considerations than the "invention . . . by others" problem noted in the PTO's discussion. I also note that the Power of Attorney is often combined with the Declaration or Oath, and this will also make it impractical to delay the filing of that document.

I also wish to protest the proposed deadline of one month after filing for late submission of items, such as the filing fee, translation, and that proposed onerous representation required of a practitioner if the oath is delayed. I remind the PTO that it does not want to get parts for an application after the filing date that do not have the application serial number. Because the PTO often does not get serial numbers back to the applicant before the month deadline (I'm talking return postcards -- applicants who wait on filing receipts don't stand a chance), I believe such a rule would be unworkable and result in increased delays and lost correspondence instead of increased efficiency.

4. Limiting the Number of Claims in an Application

I strongly disagree with this proposed rule. While the PTO has identified a handful of applications with amazing numbers of claims, those percentages sure don't support the arbitrary limits of 6 independent claims and 40 total claims.

To begin with, the fees for independent claim in excess of three and total claims in excess of 20 seem to be to be a reasonable and effective means to controlling the number of claims. In fact, the PTO numbers reflect this, as only a tiny fraction of applications have the very large numbers of claims.

Secondly, with respect to the number of independent claims, it is my experience that restriction practice limits the burden on the examiner by removing any independent claims that would require search and consideration of different areas of art. The PTO comments focused on the number of claims as filed; my guess is that those applications with the astounding numbers of claims were subject to restriction and that the number of claims that was actually examined was more manageable.

In the situation where there are many claims, but those claims cannot properly be withdrawn as a result of restriction, it would seem that it would make more sense to examine claims that are so closely related at one time in one application.

The applicant pays an extra fee for each independent claim in excess of three and each claim in excess of twenty. The added fees, I thought, were to pay for the added burden of examination. The examiner should be given an increased amount of time for examining applications that have more claims, and a proportionately increased disposal credit.

5. Harmonizing Standards for Patent Drawings

I agree with this proposed rule.

6. Printing Patents in Color

I have no comments on this proposed rule.

7. Reducing Time for Filing Corrected or Formal Drawings

I disagree with this proposed rule. One month after the mailing date of the Notice of Allowance will not be enough time to obtain formal drawings from a draftsperson.

8. Permitting Electronic Submission of Voluminous Material

I agree with this proposed rule.

9. Imposing Limits/Requirements on Information Disclosure Statement Submissions

I strongly disagree with this proposed rule.

As I'm sure the PTO realizes, this is already an area filled with danger for the prospective patentee. First, what is "material to patentability" is a matter of opinion. The duty runs to each of those named in section 1.56. Each of those persons has the duty to submit any information which that person believes to be material to patentability. Another problem is that the applicant must, at least to some extent, guess what the examiner is going to consider to be material to patentability. While the practitioner has been working with the inventors and thus tends to look at the invention in their terms, the examiner approaches the application from a fresh perspective and, usually, with a different background. The examiner cites art that applicants had not considered to be relevant. Then, when a continuation or related application is examined, what are the applicants to do?

I recognize the burden placed on the PTO to consider all the references that can accumulate in continuation practice. I note that the examiner's burden to determine patentability of any invention is great, as the examiner to the best of any human's ability, must consider novelty and nonobviousness in view of the whole field of art. [On the plus side for hefty disclosure statements, the cited references are likely to be at least a relevant subset of the art that the examiner is likely to search.]

I believe that the PTO's proposal goes too far. The examples provided in the Proposal read like a rejection. Applicants would have to prepare a detailed explanation of the patentability of each claim over all the references, singly and in combination, as a part of the Information Disclosure Statement. This would be time-consuming, expensive, and, in the end, no improvement over the current system.

Because the problem appears to arise mainly in continuing and related applications, may I suggest that (1) a copy of each cited U.S. application would be supplied, as the PTO proposes; (2) a copy of each item of information cited in that application would be supplied and identified as of record in that application. The examiner would be alerted to the reason for citing the reference is that it was considered relevant in a related application. Would it be helpful for the applicant to designate which references were cited by the examiner of the related application and which by applicant?

I urge the PTO to be sensitive to the need of the persons named in rule 1.56 to err on the side of caution to avoid any appearance of lack of candor that might later raise an issue as to the validity of the patent.

10. Refusing Information Disclosure Statement Consideration Under Certain Circumstances

I agree that applicants should identify particular relevant portions of any submissions that are lengthy. I disagree to the extent that this proposal would impose requirements similar to Proposal 9.

11. Providing No Cause Suspension of Action

I have no comment on this proposed rule.

12. Requiring a Handling Fee for Preliminary Amendments and Supplemental Replies

I strongly disagree with this proposed rule. Preliminary amendments and supplemental responses are submitted to resolve issue and further prosecution before the examiner. The application fee should cover the full and complete examination. The application fee should cover all the correspondence back and forth between the examiner and the applicant.

The one month time limit for submitting a preliminary amendment without a fee is entirely unreasonable. Applicants will not even have received a serial number for the application in that time. Moreover, the limit is arbitrary and contrary to the purposes for filing a preliminary amendment. For example, when the applicants discover a new reference and wish to amend the claims in view of the reference, it shortens everyone's processing time to let them present claims that they think are patentable.

13. Changing Amendment Practice to Replacement by Paragraphs/Claims

I strongly disagree with the proposal to number all paragraphs. What a nightmare!!!!! Why couldn't paragraphs be identified as they are now, "the paragraph beginning on line 5 of page 8?" or "on page 4, the paragraph of lines 3-12?" No one has trouble finding the location of insertions and deletions now. Moreover, I know don't know of any easy way to handle number of paragraphs, whereas word processors number lines automatically.

14. Providing for Presumptive Elections

I strongly disagree with this proposed rule. It is not always clear at the time of filing that the claims define separate patentable inventions, let alone which of those inventions will be most important to elect at a future date. Currently, the examiner usually telephones the practitioner and an election with or without traverse is made over the phone, immediately or in a day or two after consultation with the applicant. This process appears to me to be working very well. If it ain't broke, don't fix it.

15. Creating a "Rocket Docket" for Design Applications

I agree with this proposed rule.

16. Requiring Identification of Broadening in a Reissue Application

I have no comments on this proposed rule.

17. Changing Multiple Reissue Application Treatment

I agree with this proposed rule.

18. Creating Alternative Review Procedures for Applications Under Appeal

I disagree with this proposed rule to the extent that it requires added fees for the proposed services. An applicant already pays $300 to file a Notice of Appeal and another $300 for filing the appeal brief. I agree that the PTO should institute some review procedure for more timely resolution of those cases in which the examiner, for whatever reason, clearly erred in rejecting the claims. I disagree that the applicant, who was not in any way at fault, should have to pay for the review. I suggest that the applicant's $300 fee for filing a Notice of Appeal might pay for this quality check.

In my opinion, review should be by a manager or a Quality Review Examiner.

19. Eliminating Preauthorization of Payment of the Issue Fee

I agree with this proposed rule.

20. Re-Evaluating the Disclosure Document Program

I have no comment on this proposed rule.

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

I have no comment on this proposed rule.

Thank you for your consideration of these comments.


Respectfully submitted,

Anna M. Budde

Reg. No. 35,085

United States Patent and Trademark Office
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