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Comments on Advance Notice of Proposed Rulemaking Published in the Federal Register

12/04/98 FRI 10:00 FAX 212 949 9190 ABEL)M FRAYNE a 001


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December 4, 1998

United States Patent and Trademark Office

Attention: Hiram H. Bern4ein

RE: Comments on Advance Notice of Proposed Rulemaking Published in the Federal Register, October 5, 1998 (Volume 63, Number 192). Pages 53497-5@


These comments are submitted in response to a proposal to change 37 CFR 1.75 limiting the number of claims that will be examined at one time in an application to forty (40), and the number of independent claims that will be examined at one time in an application to six

We believe that the proposal could be improved. The improvement should increase the probability of achieving the stated goal of more efficient application examination in the USPTO. In addition, the proposal places a significant burden on applicants who can least afford the burden, and the consequence may well be a noticeable decline in innovation if those applicants are thereby denied the prospect of effective patent protection for their inventions.

As your proposal notes, these limits would not eliminate the possibility of filing multiple applications containing claims exceeding the limits for a single application. For example, you note that applicants would be able to file a series of continuing applications, each containing a


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number of claims within the limits. However, your proposal indicates that this result would frustrate your efficiency objectives, as You state, for example, that examining ten applications with forty claims each would be more inefficient than e g one application with four hundred claims. This undesired result may, nonetheless, very likely ensue with regard to large entity applicants who may well be able to afford the cost of filing multiple continuing applications presenting a large number of claims. To deter such a result, a filing fee surcharge could be added for each continuing application (excepting continuation-in-part applications) filed by a large entity applicant and which contains claims, when taken in aggregate with the number of claims in the parent application and in any other prior continuing application, exceeding the 40 and 6 claim limits. In addition, the filing fee, surcharge per application could be increased as the number of continuing applications filed increases.

Small entity applicants, however, should be exempted from the proposal to limit the number of claims examined in one application. Such applicants can least afford the cost of filing, multiple applications when a large number of claims are needed to secure effective patent protection. In addition, due to their small entity. status, such applicants may need more extensive patent protection dm large entities necessitating an increased number of claims since such applicants have, in general, less financial strength than large entities, consequent increased difficulty in enforcing their intellectual property rights, and may, therefore, be more vulnerable to potentially infringing activities.

Furthermore, independent inventors, such as Thomas Edison and Alexander Graham Bell, to name only a few, have been responsible for some of the most important inventions in American history, and making extensive claim protection, when needed, financially difficult or impossible for such inventors to obtain will only discourage the vitally important innovation from

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such sources. It should also be noted that "breakthrough' inventions often invented by small entity applicants may be precisely the type of inventions requiring large number of claims for effective patent protection because of the difficulty of anticipating all the possible methods of avoiding the patent claims in new areas of technology.

At most, if the USPRO wishes to discourage small entity applicants from filing applications with large numbers of claims, claims beyond the forty and six claim limit could be assessed at the large entity rate. However, the proposal as it stands, which will require small entities to file multiple applications to present large numbers of claims, which may be absolutely necessary for effective patent protection of highly significant inventions, places an unacceptably high burden on small entities, when their disproportionately great contribution to crucial innovation and their great vulnerability to such an additional burden is considered.


Michael I. Markowitz


United States Patent and Trademark Office
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