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December 4, 1998

December 4, 1998


Comments on PTO Notice on Planned Rule Changes

Docket No. 980826226-8226-01

Box Comments - Patents

Assistant Commissioner for Patents

Washington, D.C. 20231


I am a past Chair of the Intellectual Property Law Section of the Ohio State Bar Association. I write to present my personal views on the PTO’s Proposed Rule Changes.

Topic: Limiting the number of claims that may be presented in a

single application to 40 total claims and 6 independent claims.

Comment: The proposed rule change is opposed. The proposed number of claims may be adequate for many inventions. However, some inventions warrant greater numbers of claims. This is often true in situations where entities have spent many years and hundreds of millions of dollars in the development of the invention.

While the proposed rule would allow the filing of multiple applications each limited to 40 claims, this may result in inconsistencies where different examiners handle different applications. The duplicate paperwork associated with multiple applications is undesirable for both applicants and the PTO.

There should also be no restrictions on the number of dependent claims in an application that may be converted to independent claims after a first office action. Once patentable subject matter is recognized the applicant should have the option to amend dependent claims to independent form without concern about exceeding a limit on the number of independent claims. No significant additional burden is imposed on the examiner or the PTO when such amendments are made.

The PTO currently charges fees for additional claims. These additional claim fees should be sufficient to compensate the PTO for the additional resources required for examination. If examiners are given appropriate credit for the efforts associated with handling applications that include large numbers of claims, the presentation of such claims should impose less of a burden on the PTO and applicant resources than having an equal number of claims presented in multiple applications.

Topic: Imposing Limits/Requirements on Information Disclosure

Statement Submissions.

Comment: The proposed rule change is opposed. The proposed change among other things would require an applicant or their counsel to individually and uniquely describe the relevance of each item of cited art (in excess of ten) to each independent claim. Such a requirement will result in applicants having to characterize such items and each such characterization is likely to be called into question in litigation. This will present additional issues and complexities for patent litigation. It also imposes significant additional time and cost burdens on applicants.

An applicant for a patent should be able to satisfy the "duty of disclosure" by disclosing the information that they have to the PTO. In those limited circumstances where the PTO has received voluminous materials as part of an IDS, examiners who review such items should be given appropriate credit for their efforts. The PTO may also encourage applicants to point out by page number, etc. portions of submitted materials to assure appropriate consideration by the reviewing examiner. However such a requirement should not be mandatory.

Thank you for your consideration.

Very truly yours,

Ralph E. Jocke




Walker & Jocke

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