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12/04/98 15:39 0202 659 1462 BEVERIDGE DEGRA 002/005

Beveridge, Degrandi, Weilagher, & Young, LLP






December 4, 1998


Via Facsimile and E-mail

Asst. Commissioner for Patents

Washington, D.C. 20231

  • Attn: Hiram H. Bernstein
  • Re: Comments regarding the advanced notice of proposed role making imposing limits/requirements on Information Disclosures Statements (37 C.F.R. 5 1.98)
  • Dear Mr. Bernstein;

    The following four changes listed below, if implemented, will achieve the specific business goals which have been adopted as part of the Fiscal Year 1999 Corporate Plan Submission of the President.

  • 1. Withdraw 37 C.F.R. § 1.97 and 1.98
  • By eliminating the requirement to submit Information Disclosure Statements, the need to store and review such references cited therein will be eliminated. Such elimination will achieve Goal I of the Patent Business Goals which is to reduce the PTO processing time to 12 months or less for all inventions, since the need to review and consider the patents disclosed in an Information Disclosure Statement will be eliminated.

  • 2. Purchase search report from EPO's searching facility at The 14ague or establish searching authority that-parallels the EPO's searching-authority
  • By paying the European Patent office for search reports, the need for the patent practitioner to file Information Disclosure Statements or the need for the Examiner to find the most pertinent. art will be eliminated. The EPO's searching authority has been named a competent searching authority unlike the United States Patent Office. Therefore, by using a competent

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    search authority, the United States may also achieve a subsidiary goal of becoming qualified as a competent search authority.

  • Alternatively, the USPTO can establish a search authority that parallel the searching
  • authority at The Hague. Certainly the establishment of such a searching authority will achieve Goal 4 of the Patent Business Goals, which is to exceed .the customer's quality expectations through the competencies and empowerment of PTO employees. Also, with regard to Goal 5, by using the EPO's searching authority, resources will be utilized more efficiently especially because it will not be necessary to purchase a report or search an invention if the search report is used for national stage applications filed in the USPTO based on PCT applications.

    It is respectfully submitted that an Examiner at the USPTO or the professional searchers at The Hague can provide a more efficient search and accompanying comments than a patent practitioner. The patent examiner and presumably the Professional patent searcher, both perform searches in a particular area of technology with which they are familiar, unlike the average patent practitioner.

    A patent practitioner, in contrast, works in a variety of technological areas, and thus must educate himself or herself in each particular area of an application in order to effectively study each particular specification, and the references to be cited in an IDS. Such education is necessary in order to comply with proposals for the practitioner to uniquely describe the references with respect to each independent or dependent claim and certainly to certify that such references have been considered.

    Familiarizing himself or herself with the subject matter of the patent application as well as the references cited therewith is inefficient since such evaluation can be better made by an Examiner or searcher or one that is familiar with a particular area of technology. Such review by the practitioner will increase the inventors' costs which may influence inventors to file fewer applications thereby ultimately lowering the PTO's revenue. Although patent practitioners can rely on the inventor's comments, a detailed evaluation by the practitioner must still be made if a patent practitioner must make a certification as proposed.

    If the search report that is obtained from the EPO, for example, does not take into account specific u.s. Patent Laws, for example 35 U.S.C. S 103, the -Examiners or searchers can do a 12/04/98 15:40 'V202 659 1462 BEVERIDGE DEGRA Q004/005


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    December 4, 1998

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    supplemental search using the references cited in the search report as the primary references.

  • 3. 'Request Funds from Congress
  • Patent office customers have donated over $100 million for non-patent related uses. If money is needed to .establish an arrangement with the EPO or to establish a competent searching authority, the PTO should request such funds from Congress.

  • 4. Require Examiners to certify that they have read and considered all references in the specification
  • Many applications include a background of the invention section in which the inventors or the inventors' counsel describe the relevant prior art and have distinguished the claimed invention in the application from such references. The proposed requirement for inventors' counsel to include a unique description of the references and to review the references is submitted to be analogous to providing the USPTO with an obviousness rejection. Most patent applications, if written as described above, however, will go one step further. Such applications also include comments on how such "obviousness rejection" can be overcome. Therefore, if Examiners are required to certify that these relevant references have beet considered by certifying that they have read the specification, then perhaps obviousness rejections based on relevant references can be obviated or at least minimized. Such certification will certainly reduce processing time (Goal 1) by eliminating unnecessary rejections.


    By a) eliminating the requirement to provide Information Disclosure Statements and b) obtaining a search report from the EPO, or establishing a searching authority similar to that established by the EPO, and c) by requiring the Examiners to read the specification that will offer a rebuttal, if you will, to any potential prior art rejections, the Patent Business Goals can he obtained.

    With regard to goal 1, processing time can be reduced

    since Examiners will no longer review Information Disclosure Statements.


    More resources can be used to establish fully supported and integrated industry Sectors as in Goal 2 instead of using inefficient searching means as currently in place.




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    December 4, 1998 Page 4
  • If a proper searching authority is established, it can be combined with an automated
    system to receive applications and publish patents electronically according to Goal 3.

    Regarding goal 4, the patent customers, quality expectations will invariably be exceeded if the USPTO can be recognized as A competent searching authority.

    Finally, if the searching authority at The Hague is utilized, resources will be utilized efficiently, and any added expense can be budgeted or charged to the patent customer. Of course, the PTO should budget for such changes before the new procedure is in place so that patent fees would not be considered a surplus to be returned to the U.S. Treasury.

  • Respectfully submitted,
    Carolyn Favorito
    Beveridge, DeGrandi, Weilacher
    & Young, LLP
  • 998 13:32 5128557755 GEORGE S MAY A@Y PA@ 02
  • George S. Gray


  • From: George S. Gray <>
  • To:

    Subject Comments on Proposed Changes to Regulations - Topic 9/IDS

    Date: Tuesday, November 10, 1998 11:21 AM

    I am opposed to the proposed changes to the Information Disclosure Rules which would require a statement that each citation has been personally reviewed by the attorney/agent, and the "unique description.

    As a practical matter searchers "dump" marginally related patents in their search results to cover themselves, Attorneys, in turn, put these in the IDS to avoid any chance of being accused of withholding information. Most attorneys review these "marginal" patents only to the extent they need to reach a justifiable conclusion that the references are not prior art which would negate filed claims. They do not want to bill their clients for the time it would take to exhaustively read each one, which would be significant, and would be extremely hard on small entities and individual inventors. The "personal review" required by the proposed rule, would carry an implication that the citation had been exhaustively reviewed forcing honest attorneys to spend the time to do it, and waste their clients money, and dishonest attorneys to lie about it

    The "unique description" proposal is unwise, because any failure by the attorney to perfectly analyze a cited reference, and then distinguish it, would be labeled as fraud on the patent office, and ALL future infringement actions would be bogged down by a comprehensive, word by word review of the attorneys' analyse of each cited reference to see if the attorney correctly complied with this new requirement. Furthermore, the proposal presumes that the law concerning 35 USC 112, Para. 6, is settled and understandable, which it is not, what would result is the attorney would feel obligated to file long-winded discussions of why the claims in prosecution are not affected by various means and process clauses which, depending on the current case law, may or may not literally cover some of such claims. By the time the attorney has tried to cover himself from an accusation of fraud by fully discussing all of such possibilities, he or she will have unnecessarily added many hours to the client's bill, which is unfair to small entities and individuals in particular.

    I realize that examiners generally need help. I would recommend a pre-first office action option for the examiner to call the attorney, after advance notice, and have an informal discussion of the cited references, without an interview summary. If, after that discussion the examiner needs further help he could require a written analyse of cited references which he feels should be explained by the attorney. This would allow the examiner to perform his own cull of the obviously tangential, followed by a second cull after this informal, unsummarized review, and then have the remaining cites addressed in more detail only If necessary.

    George S. Gray

    Registered Patent Attorney


    Fax: 512-855-7755

    4659 Everhart, Suite 102

    Corpus Christi, TX 78411

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