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December 8, 1998

Assistant Commissioner for Patents

Box Comments - Patents

Washington, D.C. 20231

Attn. Hiram H. Berstein

Re: Changes to Implement the Patent Business Goals To Whom It May Concern:

This letter is to provide you with comments concerning the Advance Notice of Proposed Rulemaking Changes to Implement the Patent Business Goals as printed in the Federal Register on October 5, 1998 (Vol. 63, No. 192). Our comments relating to the twenty-one specific topics presented for comment are provided below under separate headings.

As a general comment pertaining to this Advance Notice of Proposed Rulemaking, the undersigned adamantly oppose any fee increases where the stated purpose for the fee increase is to cover specific expenditures at the United States Patent and Trademark Office (PTO). We base this opposition on the PTO's past inability to retain and utilize all of the surcharges it has collected through such fees. In the absence of assurances by the PTO that it can retain such fees, we oppose any further "taxes" imposed on those seeking protection for 'intellectual property.

The views expressed in this letter are only those of the undersigned individuals and are not necessarily those of Price, Heneveld, Cooper, DeWitt & Litton or its clients.

  • I Simplifying Request for Small Entity Status (37 CFR §1.27).
  • We support the proposed rule change to simplify filing requests for small entity status. It is our opinion that the proposed rule change to simplify filing requests for small entity status will be beneficial to practitioners and their clients, as well as to the PTO. In particular, it would eliminate the need for excluding the filing fee and fee authorization in an original application and paying a missing parts fee, or paying the large entity fee and subsequently requesting a refund, in those circumstances where it is not possible to file a verified statement with the original application.

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

    The undersigned oppose the proposed rule change which would charge a separate surcharge for each missing part item that is submitted in the delayed manner for a non-provisional application. The undersigned believe this would merely add another financial burden to a patent applicant.

    3.Permitting Delayed Submission of an Oath or Declaration, and Changing the Time Period for Submission of the Basic Filing Fee and English Translation (37 CFR §§I.52 and 1.53).

    The undersigned opposes the proposed changes to these rules for the following reasons:

    1 The one-month time period for submitting a list of persons believed to be inventors is too short. Many applications are filed in a rush, with numerous inventors spread throughout several geographic locations and/or companies. Excessive time pressure in resolving inventorship issues is not a good idea;

    2 . The undersigned believe the benefits, if any, gained by delaying the filing of an oath or declaration would clearly not outweigh the drawbacks resulting from the increased difficulty in obtaining an inventor's signature on an oath or declaration and an increased number of petitions under 37 CFR §1.47;

    3 . The undersigned believe that since PCT applications are not accorded a §102(e) date until the applicant files an oath or declaration, allowing the submission of the oath or declaration until the period set forth in the notice of allowability is a real and substantial concern,

    4 . The undersigned oppose the PTO amending 37 CFR §§I.52 and 1.53 to provide that the basic filing fee and an English translation (when required) must be submitted within one month from the filing date of the application. First, a practitioner may not realize something did not get placed in an envelope with the application. Therefore, since under the proposed rules change, a Notice of Missing Parts would not be sent to the applicant, there is a possibility that an application may inadvertently be abandoned. Second, the one-month time period would be difficult to meet in many instances. Consequently, this rule change requiring an English translation to be filed within one month would cause substantial additional expense for Japanese and other foreign applicants whose English translations normally take longer than one month to obtain. Lastly, shorter deadlines make it much more difficult for practitioners to handle day-to-day fluctuations in workloads;


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    5. The undersigned opposes the PTO's considered amendment to 37 CFR § 1. 34(b) -to include in the definition of attorney or agent of record the attorney or agent that filed the application. The PTO's own questions 4-6 posed to practitioners regarding this rule clearly highlights the ethical difficulties which would arise should this rule be implemented. Given the serious ethical questions raised by this proposed rule change which results in uncertainty regarding who the practitioner represents in certain instances and, as a result, wh o may control prosecution of an application, the undersigned opposes the rule change.

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

    We are opposed to the proposed limitation of the number of claims in an application. In particular, it is our opinion that the proposed limits are arbitrary; would not provide any benefit to the PTO, applicants, or the public; would prevent applicants from presenting all claims to which they are entitled in a single application; would unnecessarily complicate prosecution; and would ultimately lead to greater public confusion.

    The PTO has arbitrarily assumed that claims in excess of forty total and six independent are excessive merely because less than 5 percent of the applications contain more than forty total claims or more than six independent claims, and has unjustifiably concluded that forcing applicants to file multiple applications would reduce processing and examination of all applications and would decrease pendency for all applications.

    The PTO's own statements argue against the rule change. The PTO has stated that "the rule change under consideration should not prevent the overwhelming majority of applicants from presenting the desired number of total and independent claims for examination." This is an admission that the proposed rule change would prevent certain applicants from presenting the desired number of total and independent claims for examination.

    The FITO has assumed that the proposed rule change "will benefit the overwhelming majority of applicants, since it will stop a relatively small number of applicants from occupying an inordinate amount of PTO resources." As suggested by the PITO, such applicants would be forced to file multiple applications. The PITO has stated that "the PTO would expend more of its scarce processing and examination resources on 10 applications containing 40 claims each dm the PTO would expend on a single application containing 400 claims. " The PTO's own statements amount to an admission that the proposed rule change would actually result in greater. inefficiencies, longer processing times, and increased pendency for all applications. Thus, the proposed rule change would not promote efficiency or benefit the vast majority of applicants.

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    As justification for the proposed rule change, the PTO has stated that excessive claims are a historical problem recognized by the courts, that the proposed rule will allow the PTO to more equitably distribute its resources among the vast number of applications that must be examined each year, and assist the PTO, public, and the courts in ascertaining what it is that the applicant considers to be the invention.

    The historical justification appears to be nothing more dm a recitation of dicta from isolated cases. Even if there are a very small number of applicants which have unreasonably presented an excessive number of claims which are calculated to deceive and mislead the public, such isolated incidents do not provide justification for arbitrarily penalizing all applicants who have determined that the various aspects of their invention cannot be adequately defined with forty total claims and six independent claims. Under the proposed limitations, such applicants would be forced to file multiple applications, which the Patent Office has admitted will result in the PTO expending more of its scarce processing and examination resources.

    Forcing applicants to file multiple applications for a single invention would not assist the PTO, public, and the courts in ascertaining what it is that the applicant considers to be the invention, but instead would force the PTO, public, and the courts to consider multiple patents, rather dm a single patent, in order to determine what the applicant considers to be the invention.

    It is our opinion that the proposed rule change would not benefit the public, the courts, or the PTO. Although the proposed rule change would result in a more equitable distribution of workload among the examiners, it would aggravate the problems which the rule change purportedly seeks to resolve (increasing the efficiency of the PTO and assisting the PTO, public, and the courts in ascertaining what it is that the applicant considers to be the invention). A more appropriate method of achieving equitable distribution of workload among the examiners would be to credit the examiners based on the number of total claims and independent claims. For example, the examiner could be credited with prosecuting two applications if the application contained forty to eighty claims in total or seven to twelve independent claims, and the applicant could be charged with twice the normal filing fee. This would serve to equitably distribute the workload among the examiners in the PTO, and discourage attorneys from filing applications with an excessive number of claims.

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

    We support the proposal to harmonize the PTO drawing requirements with that of the PCT. In most instances, U.S. formal drawings are prepared in accordance with the PCT format. The proposed harmonization, particularly if the PTO relaxes its overly stringent standards, will benefit everyone.

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    There is an inconsistency in the proposal relating to the use of color drawings and/or photographs. The PCT allows black and white photographs, but not color photos or drawings. If the PTO is going to "harmonize," we should be consistent, i.e., forget the color.

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

    We support this proposal. However, if the PTO persists in its proposal to allow color photographs and color drawings, the applicant-patentee should pay the additional fees.

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

    We object to this proposal. To reduce the "window" from three months to one month for the submission of formal drawings, appears to be only a ploy by the PTO to extract a few more dollars from the applicants as evidenced by the PTO observation that extensions of time under 37 CFR § 1. 136 are permitted.

    The question is raised concerning a requirement to file formal drawings in reply to an Office action indicating allowable subject matter. We object to this proposal because there is a significant difference between "allowable subject matter" and claims considered acceptable to the applicant. -

    The discussion raises various issues and perceived problems of the PTO to be solved by reducing the time for filing drawings. To us, however, the decreased pendency time is not worth the added pressure of meeting these shortened time constraints. If any applicants wish to speed prosecution of their own application, they can file their formal drawings earlier. We suggest that the rules be simply changed to require the submission of formal drawings on or before the payment of the issue fee.


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

    We support, in general, the rule change to permit the electronic submission of voluminous material such as computer program listings, nucleotide, and amino acid sequences. Since paper submissions of these materials can be extremely voluminous and lengthy requiring large quantities of storage volume when the unofficial electronic copy is the more widely used reference, making the electronic copy the official copy will further the objective of the PTO to make the process more "user friendly." The use of electronic files will also reduce the cost of obtaining file histories for those file wrappers containing voluminous material filed under 37 CFR § § 1. 96 and 1. 82 1.

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    We strongly suggest that as part of the rule change, the PIFO adopt the appropriate procedures to insure that electronic copies of the listings are readily available when a file history is requested which contains 66 voluminous material." We also recommend that the electronic format of the official copy, be standardized to a file format that can be readily read without requiring the acquisition of expensive or difficult-to-find software.

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

    Summary: The PTO is considering revising 37 CFR §1.98 to establish new requirements and/or limits on information submitted as part of an Information Disclosure Statement (IDS).

    Specifics of Change Being Considered: In order to limit IDS submissions to relevant information and to ensure full consideration of an IDS by the PTO, the PTO is considering ' sing the following,-additional IMPO requirements for IDS submissions: (1) a statement in the IDS that each citation has been personally reviewed by the registered practitioner who represents applicant, or by at least one inventor where application is not represented by a registered practitioner; (2) a copy of each cited U.S. application; and (3) a unique description of each citation's importance relative to each independent claim, or specific dependent claim(s) if that is why it was cited, except-that a description would not be required for: (a) any ten citations, and (b) any item cited in a corresponding application by a foreign patent office, PCT ' international searching authority (ISA), or PCT international preliminary examining authority (]PEA), provided the search report or office action in the English language is also submitted.

    The description of each citation would have to set forth a teaching or showing of a feature relative to the claimed invention which is not taught or shown by other citations in the IDS or' is taught in a different manner. The description of each citation must be unique to that citation, in that an applicant would not be permitted to provide a description of a citation that is merely cumulative to that of other citations.

    Comments: We oppose the proposed requirement that each IDS submission include a statement that each citation has been personally reviewed by the registered practitioner who represents the applicant or by an inventor where the applicant is not represented by a registered practitioner. Our basis for such opposition arises from the lack of clarification as to what is meant by "personally reviewed." Does this require that the practitioner/inventor read and understand each citation in its entirety? Would this then require that applicants obtain a complete English translation of each foreign language citation?

    Clearly, if a registered practitioner were required to personally review each citation in its entirety and obtain complete English translations of each foreign language citation, the proposed change would impose

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    substantial and costly burdens on an applicant. Many patent applicants simply do not have the financial resources to pay their attorney to personally review every single citation of which they may be aware.

    To the extent that the PTO is not requiring that such personal review be so extensive, we need clarification as to what the extent of such a review should be. Would merely reading the abstract be sufficient? If so, would this proposed requirement serve its intended purpose?

    Absent clarification on the questions noted above, we cannot support the proposed requirement that a practitioner personally review each cited reference.

    We also oppose requirement (1) because a registered practitioner or inventor may not have sufficient time to review all the citations as would be required while still meeting the deadlines set forth in 37 CFR §1.97, particularly when we receive a foreign search report with non-English references only weeks or even days before the three-month time period expires.

    We support the proposed change that would require that a copy of each cited U.S. application be supplied with the IDS. While we support this change for the time being, we would request that this requirement be revisited once the PTO accepts electronically filed applications, since those applications could conceivably be accessed by each examiner at their desktop without resort to requiring an applicant to file additional paper copies. In this regard, we ask whether it is now appropriate to consider @g copies of applications in electronic form rather fim paper form to reduce the volume of paper required to be submitted by applicants and retained by the PTO for each application.

    We oppose the proposed requirement that each IDS submission include a unique description of each citation's importance relative to each claim. Our past experience is that when similar statements of relevance were required, such comments were based on a very limited review of each reference, the statements were often of very limited value to the examiners, and often increased the time needed to review the IDS and its submissions, since examiners often did not express great confidence in the statements provided by applicants and proceeded to review the references in their entirety on their own.

    We also oppose the requirement for the statements of relevance insofar as they create additional burdens and pitfalls for the applicant. Requiring that a practitioner provide such statements of relevance obviously will add to the cost of preparing the IDS, as will the time required to determine which ten of the submissions do not require statements and which ones do. Conceivably, such decisions could ultimately result in an accusation of inequitable conduct when an applicant chooses not to comment on the ten most relevant citations.

    We also question whether this proposed rule change, along with some of the others, conflicts with the stated goals for other prior rulemaking packages, such as, for example, the December 1, 1997, rule package

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    which specifically stated its purpose was to "eliminate unnecessary rules or portions thereof as part of a government-wide effort to reduce the regulatory burden on the American public." Clearly, these additional rules for submitting an IDS do not simplify procedures for procuring a patent, but impose a substantial additional burden on the American public.

    To make these goals of the PTO more consistent, we suggest that the PTO consider an exemption for fifty patents, such that the requirement for a statement of relevance only be imposed in relatively rare circumstances. Based upon our experience, the number of IDS submissions our firm has made that exceed fifty citations is relatively low.

    With respect to raising the exception from ten citations to fifty, we do not see why there would be an additional burden on the examiners by such a modification to the proposed rule change. Each year examiners are required to search through more and more patents and yet are not given any additional time to conduct their searches. We suspect that for any given field of search, an examiner must search through at least twenty additional patents each year'. If the PTO were so concerned about the burden of considering perhaps forty more references, the PTO should consider increasing the time allowed for the examiners to conduct their searches.

    We also question if there is not a better way to discourage applicants from citing an excessive number of patents in an IDS. The courts have held that an inventor or practitioner can be guilty of. inequitable conduct if they bury a pertinent reference in an IDS that cites an excessive number of patents without identifying the particular pertinence of the buried patent. Therefore, the mere potential that a practitioner may render a patent unenforceable (and possibly be sued for malpractice) by citing an excessive number of citations is an already existing incentive for practitioners to limit the number of citations. Perhaps the PTO should consider sending out a notice when an excessive IDS (i.e., one hundred or more patents) is received that refers to the cited court decisions, while warning them that a failure to call out any particular pertinent information in the excessive citations may render their patent unenforceable.

    For the reasons stated above, we oppose the proposed requirements (1) and (3) listed above, and we support the proposed requirement (2) that an applicant be required to submit a copy of any applications identified in an IDS. We also ask that the PTO consider the alternative measures discussed above.

    Assistant Commissioner for Patents

    Box Comments - Patents

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    December 8, 1998

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

    Summary: The PTO is considering revising 37 CFR §1.98 to reserve the PTO's authority to not consider submissions of an IDS in unduly burdensome circumstances, even where all the stated requirements of 37 CFR §1.98 are met.

    Specifics of Change Being Considered: An unduly burdensome IDS submission may be denied consideration even though it complies with 37 CFR § 1. 98. For example, extremely large documents and compendiums may not be accepted if submitted. Applicant will, however, be notified and given an opportunity to modify the submission to eliminate the burdensome aspect of the IDS.

    Comments: We support the proposed changes that would allow the PTO to deny consideration of references in certain circumstances. However, we would like to receive clarification on the exact circumstances by which this could occur. We agree that the examples provided in the Advance Notice would be proper circumstances for invoking this proposed rule. However, we would need to review the specifics of the proposed rule to ensure that the proposed change is not imposed in less extreme examples. We also only support this change in the event the PTO allows, as promised, the opportunity for an applicant to correct the defect.


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

    In reply to the PTO's question regarding the effect of publishing suspended applications, it is possible that publication of suspended applications could have a chilling effect in certain circumstances. However, companies contemplating- product development already face the possibility of pending applications and attendant infringement issues. Any additional chilling effect caused by publication of suspended applications appears to be relatively minor in view of the existing uncertainties with respect to unpublished pending applications.


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

    We oppose the imposition of an additional fee upon the applicant for preliminary amendments and supplemental replies. The imposition of such fees adds to an already burdensome fee schedule born by applicants to have their applications examined by the PTO. The added fees for submitting preliminary amendments after a one month grace period and for all supplemental replies does not provide any additional

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    incentive for an applicant to refrain from such submittals. Applicants already run the risk that an application or reply will be taken up by the examiner before a preliminary amendment or supplemental reply can be filed. Thus, the added fees add no incentive to refrain from such practice.

    The PTO has implemented previous changes to patent rules where its stated goal was to simplify the patenting procedures and to make the procedures more user friendly. This proposed rule change runs counter to those stated goals. Preliminary amendments and supplemental replies are often the result of the applicant discovering new and relevant prior art, thereby necessitating the submittal of these documents. The imposition of a fee for submittals after an arbitrary deadline unfairly penalizes applicants for circumstances beyond their control. It appears that the problem of preliminary amendments and supplemental replies arriving on the examiner's desk after the examiner has issued an office action is one of clerical delay at the PTO. The longer the delay between receipt of a preliminary amendment or supplemental reply and delivery to the examiner, and between completion of an office action and mailing to the applicant exacerbates the "crossing" problem of the documents.

    We believe that rather than impose a burdensome fee upon the applicant, the problem should be resolved where it really lies, the delay in delivery of amendments and replies to the examiner after receipt by the PTO and the delay in mailing of office actions to applicants from the time the examiner completes the office action. Furthermore, if a fee is to be imposed for late submission of preliminary amendments and supplemental replies, there should be provisions in place for the fee to be waived upon a showing that the late submittal was unavoidable by the applicant such as newly discovered art after the expiration of the grace period.


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

    We oppose the proposed requirement to submit with each amendment both bracketed and underlined changes to an application and a clean copy with the changes incorporated for use by the official printer. We also oppose the requirement to number individual paragraphs in the specification.

    If a dual submittal of bracketed and underlined changes in combination with a clean copy with changes incorporated is required with each amendment, there will be increased chances for discrepancies between the two versions increasing the potential for errors in the final version received by the official printer ' Furthermore, numbering of the paragraphs will not alleviate the confusion, since any numbering scheme of paragraphs will invariably require confusing schemes to identify new paragraphs inserted between sequentially numbered paragraphs from a previous version of the specification. These changes also run contrary to the PTO's stated goal of making the prosecution process "user friendly."

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    We support the elimination of allowing changes to claims of five words or fewer to be made by specifying the changed words in combination with identifying the insertion point for the change. With the widespread use of word processing, submitting a bracketed and underlined revision of an entire claim is not burdensome and improves the clarity of claim changes. We also recommend that all changes to the specification and claims be made by the bracket and underline method now used for claim changes of more dm five words with no concurrent requirement to provide a parallel "clean" copy with the changes incorporated. As a compromise, we suggest that the PTO consider only requiring applicants to submit a clean copy of the specification and claims at the time that a notice of allowance is issued. This procedure would lessen the burden on the applicant to continually incorporate and submit "clean" copies when the only clean copy required would be one after issuance of the notice of allowance.

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

    We oppose this proposal. We do not understand why the PTO considers a simple telephone call to the applicant to be such a burden as to require the proposed changes. We would rather have the opportunity to make elections for ourselves dm to knock one month off the pendency of our applications.

    Because this presumptive election requires an Office action on the merits before an applicant has the opportunity to traverse the restriction requirement, we question whether the PTO will expedite the handling of petitions in traversal of such requirements. Currently, one cannot petition until the examiner has made the restriction requirement final, which is often done in the first action on the merits. As a result, an applicant is often under final rejection before a decision on such a petition is received. If applicants will now be prevented from petitioning until they are already under final rejection on the merits, there would exist a strong likelihood that a decision on the petition is rendered before any divisional applications would need to be filed.

    This proposal presents numerous difficulties for the practitioner. It is often unclear when the application is initially being drafted which set of claims should ultimately be prosecuted, based on market conditions, etc. Under the proposed rule, a practitioner would need to determine the likelihood of a restriction requirement at the time the application is being drafted, and arrange the claims accordingly. This is potentially a time consuming task for the practitioner, resulting in delay and additional expense. This could also cause considerable difficulty in situations where an application needs to be filed quickly to preserve foreign rights or to avoid a bar date. Although a preliminary amendment to rearrange the claims could presumably be filed, substantial unnecessary effort could be expended with no value added for the client.

    Furthermore, as a practical matter, the proposed rule would often result in election of claims that do not provide the most desirable protection. This would require filing of an otherwise unnecessary additional application at the expense of the applicant.

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    Currently, many examiners make a requirement for an election of species based upon the different embodiments shown in the drawings and require the applicant to identify which claims correspond to which embodiments and which claims are generic. How will these situations be handled if this proposal is adopted?

    We also question whether such presumptive elections would also apply to unity of invention determinations in PCT applications.


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

    Although it would be beneficial to have the option of expediting design applications in certain situations, our firm would most likely only file a very small number of cases under the proposed "rocket docket" procedure. We also question whether regular design applications would then take a back seat to such expedited cases and thus experience an increase in pendency.


    16. Requiring Identification of Broadening in a Reissue Application (37 CFR §1. 173).

    The PTO is considering requiring reissue applicants to specifically point out all occurrences of broadening of claims. Although this requirement would be imposed on the applicants, the examiner would still be expected to independently look for and to appropriately treat any broadening issues. 'Furthermore, even if an applicant failed to note a broadening and the examiner did identify broadening, the examiner would not be permitted to make any rejection or objection as to the failure of applicant to identify the broadening. However, an intentional failure to identify material broadening to the PTO would be a violation of the duty of candor and good faith to the P'FO under 37 CFR § 1. 56.

    The undersigned oppose the proposed rule change for the following reasons:

    I . It would not save time (which the PTO proports this change would support (i.e., PTO's business goal 1)). If this rule were changed as the PTO proposes it, even though the applicant would have a duty to identify all broadened claims 'in a reissue application, the examiner would still be required to do his or her own independent evaluation of broadening issues. Thus, although there would be an additional duty on the applicant, the examiner would not save any time because the examiner would still have to take the time to do an independent evaluation. Therefore, this proposed rule change would not reduce the PTO processing time.

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    2. The proposed rule change would result in increased litigation over the issue. As the PTO states, "in a significant number of reissue applications, it is not readily apparent from an inspection of the claims in the reissue application whether they are broader than the original patent claims." Thus, if the applicant's agent or attorney determines that a claim is not broadened, but the applicant's competitor has a different opinion, the competitor will surely try to render the patent unenforceable due to inequitable conduct if the patent is involved in litigation. Thus, if the court determines that the claim was broadened in a reissue application, surely the issue of whether there was an intentional failure to identify the broadening would be litigated by a defendant in order to try and render the patent unenforceable.

    3. The proposed rule change would put an unnecessary burden on the applicant and the applicant's attorney or agent. Because the examiner would still be required to do his or her own independent evaluation of broadening issues, this proposed rule change would only result in another potential area for an attorney or agent to "slip up. " Because the examiner is required to do his or her independent search, there is no need for the applicant or his or her attorney or agent to do one. Because the issue of whether a claim in a reissue application is broadened or not is often not readily apparent, the additional unnecessary burden put on the applicant would increase time, cost, and the potential for malpractice litigation.


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

    The PTO is considering amending 37 CFR § I..l 77 to (1) eliminate the current requirements that multiple reissue applications be referred to the Commissioner and issued simultaneously; and (2) require that each of the multiple reissue applications contains a specific cross-reference to each of the other reissue applications.

    The undersigned do not oppose this proposed rule change. Currently, 37 CFR 1. 177 requires that divisional reissue applications must be referred to the Commissioner and that they issue simultaneously. Under the proposed rule change, both of these requirements would be repealed and the applicant would instead be required to include a specific cross.-reference in each of the multiple reissue applications to each of the other reissue applications. If the cross-reference is not included and the error is not detected by the PTO before issuance, the PTO would issue a Certificate of Correction under either 37 CFR 1.322 or 1.323 to provide the notice in the issued/reissue patents. This rule would alleviate the need for filing a petition to the Commissioner and paying a petition fee of $130 under 37 CFR § 1. 17(i). The numbering of the claims in the multiple reissue applications would follow a simple numbering scheme, i.e., all claims of the original


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    patent would be presented in each reissue application as either amended, unamended, or deleted (shown in brackets) with each claim bearing the same number it had in the original patent. - If the same claim of the original patent is presented in its original unamended form for examination of more dm one reissue application, a double patenting rejection under 35 U.S.C. §101 would be made.

    The undersigned believes that this proposed rule change would support patent business goal 1 (to reduce PTO processing time) by eliminating the processing time needed for the application to go to the Commissioner and in turn back to the examiner, and also would eliminate the suspension time of a reissue application in order to provide for simultaneous issuance of the multiple reissue applications. Furthermore, this proposed rule contemplates all potential problems (including cross-referencing and claim numbering) that need be considered.


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

    We generally oppose the introduction of further patent review proceedings which, 'm effect, reduce the availability of PTO resources. The two proposed alternative review procedures involve a substantive review by at least one other PTO official on the merits of the rejection(s)during an appeal proceeding. To be effective, the review would have to be conducted by a qualified PTO official such as a primary examiner. It is our opinion that the proposed review procedures would place an added burden on primary examiners, thereby limiting the availability of primary examiners to perform their normal duties. Accordingly, the proposed review procedures would likely result in a reduction of available PTO resources.

    As an alternative to this proposed rule change, we suggest that the PTO consider establishing an optional review procedure whereby an applicant on appeal may request, upon payment of a reasonable fee, the selection of-a panel made up of one or more patent attorneys to review the merits of an application and render a binding, yet appealable, decision. It is further suggested that the members of the review panel could be selected from a list of qualified patent attorneys established by an independent organization, such as the AIPLA. Such an optional proceeding would utilize reviewers not employed by the PTO and therefore would not divert primary examiners and other qualified PTO employees from their responsibilities and, in effect, would not dilute available PTO resources to the same extent as proposed rule change No. 18.


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

    We support the proposal to eliminate permitting authorization to pay the issue fee before a notice of allowance is mailed. It is our opinion that the elimination of pre-authorization to pay an issue fee prior to

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    issuance I of a notice of allowance will bring the rules into conformance with the actual practice of patent practitioners, while purporting to support the PTO's goal to reduce processing time.


    20. Reevaluating the Disclosure Document Program.

    The PTO has expressed concern that the current Disclosure Document Program ("DDP") does not serve the needs of the inventors for which it was designed to aid, and further, that the current system lends itself to abuses particularly by so-called "invention development" companies. The solution proposed by the PTO is the abolishment of the DDP.

    It is our opinion that the proposed solution will not curb the abuses of the patent process. More specifically, those entities currently abusing the system to take advantage of the unwary inventor will not be dissuaded from such abuses. The PTO suggests that "almost any paper filed today as a proper Disclosure Document can now be filed as a provisional application with the necessary cover sheet'. " If true, the only difference between those documents filed with the PTO under the DDP and those I d as provisional patent applications is the difference in fees. The insignificant difference in fees between a document filed in the DDP and a provisional patent application will not dissuade those currently abusing the system and will, in effect, result in inventors being bilked for even more funds by unscrupulous opportunists.

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

    We are opposed to such a change.

    Respectfully submitted,

    Richard C. Cooper, Registration No. 19 164

    Randall G. Litton, Registration No. 24 013

    William W. DeWitt, Registration No. 22 300

    Assistant Commissioner for Patents

    Box Comments - Patents

    Page 16

    December 8, 1998

    James A. Mitchell, Registration No. 25 120

    Robert J. Carrier, Registration No. 24 219

    Terry S. Callaghan, Registration No. 34 559

    Gunther J. Evanina, Registration No. 35 502

    Steven C. Wichmann, Registration No. 37 758

    Eugene J. Rath III, Registration No, 42 094

    Jeffrey S. Kapteyn, Registration No. 41 883

    Kevin T. Grzelak, Registration No. 35 169

    Daniel L. Girdwood, Registration No. 34 827

    Assistant Commissioner for Patents

    Box Comments - Patents

    Page 17

    December 8, 1998

    Todd A. Van Thomme, Registration No. P 44 385


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