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Box Comments -- Patents

Assistant Commissioner for Patents

Washington D.C. 202-31

Attention: Hiram H. Bernstein

Fax: (703) 308-6516


I. Topic 1 - Simplifying the request for small entity status

Simplifying the request for small entity status will make the application process faster, easier, and less expensive for the Patent Office, the applicant, and the applicant's attorney. This is a beneficial rule change,

II Topic 2 - Separate Surcharges

This rule change is of no benefit to the applicant or attorneys and, unless the surcharges are high will not substantially alter anyone's current practices. The only possible justification for this rule change is Goal 5, align fees with resource utilization, and this justification is dubious, because the incremental cost associated with processing one missing part versus two missing parts should be nominal, not double." The cost of processing the filing fee should be no higher at the "missing parts" stage than at the filing stage.

To expedite processing and reduce handling, the PTO could defer the requirement for submission of an executed declaration until a response to a first Office action on the merits is due.

With regard to corrected filing receipts, it has been my recent experience that most

filing receipts contain careless errors by the Patent Office, such as omitting priority claims, misidentifying or misspelling applicant names and addresses and application titles, etc. A helpful "user friendly" service might be asking a second employee to review a filing receipt created by a first employee. The PTO absolutely should include a copy of filing receipts in a file wrapper.

III Topic 3 - Oath or declaration and filing fee

There are no major problems with the handling of the oath now. The statement that a practitioner would be asked to provide is more cumbersome than simply having an oath prepared, and does not necessarily reflect the reality of a practitioner's practice. For example, for many corporate clients, a practitioner may be asked to transmit a single copy of an application to "in-house" counsel who disseminates it to the inventors, and asked not to disseminate an application directly to the inventors.

Imposing a deadline for submission of a filing fee, without issuing a notice, is a

disservice to pro se applicants.

Adding or deleting inventors should be freely permitted even after issuance of a notice of allowance, because canceling claims or adding claim limitations at the last moment (e.g., limitations suggested by an examiner during an inter-view after final rejection) could alter an inventorship determination.


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IV. Topic 4 - Limits on claims

The PTO's clients would be best served by imposing no limits on the number of claims that can be filed. To the extent that extra claims impose a burden on the PTO or on examiners in particular, the PTO should adjust its extra claim fees and permit the examiners additional time commensurate with the higher fee. In this regard, the PTO should consider that it could have a multi-tier surcharge for extra claims. In other words, independent claims 4-6 could bear a $50/claim surcharge; independent claims 7- 1 0 could bear a S 1 00/claim surcharge; independent claims 11-20 a $150/claim surcharge, and so on. Any limitation on claim numbers presumably could be circumvented, anyway, by additional applications.

Also, a "userfriendly" service would be a service whereby the Patent Office deferred assessment of charges for extra claims until after issuing a restriction requirement. It is a disservice to applicants to impose a surcharge for extra claims, then restrict the claims, and not examine all of them.

V. Topic 5 - Drawing Harmonization

Harmonizing the US drawing requirements with those of the PCT will make the application process faster, easier, and less expensive for the Patent Office, the applicant, and the applicant's attorney. This is a beneficial rule change.

VII. Time limit for formal drawings

A one month period for submission of formal drawings (which probably is effectively about a 20 day period from the date a notice is received in the mail) could pose a burden on applicants, especially pro se applicants, who must hire a draftsman and are subject tothe draftsman's backlog of work.

Requiring formal drawings upon indication of allowable subject matter imposes an unnecessary burden on applicants. There are many circumstances when an applicant may not want to prosecute an application with an allowable claim to issuance. 'For example an applicant may have an intention to file a CIP with improved disclosure and broader claims. Also, an applicant may not feel that an allowed narrow claim justifies the cost of prosecuting an application to issuance. The Applicant should continue to have the option of deferring formal drawings (which may cost several hundred dollars to prepare) until every claim that the applicant is pursuing is allowed.

My biggest complaint with the PTO in 1997-98 has been horrendous handling of

formal drawings and other formal papers filed after allowance. More often than not, approval of such drawings has taken several months, sometimes delaying issuance for more than one year after payment of the issue fee. Often, drawings are lost and I receive telephone calls, several months later, asking me to resubmit formal drawings at needless additional cost to the applicant. Telephone calls to the drawing branch are poorly handled and, notwithstanding promises, almost never returned by the person who promises to locate a file and provide a status report. As a "user friendly" improvement, every allowed application should be placed on an individual employee's docket in the drawing processing branch, and that individual should have a limited time and a responsibility to process the drawings, just like an examiner. The only explanation for the poor service that cases seem to receive after allowance is that no one in the PTO is held accountable for the poor service. It is embarrassing for me as a practitioner to report to clients, especially

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foreign clients, why their allowed applications are not issuing, and this should be embarrassing to the PTO.

VIII. Electronic submissions

It has been my recent experience that the PTO is not equipped to handle machine-readable only submissions of biological Sequence Listings. The PTO often loses machine-readable submissions, as evidenced by the fact that I often receive notices that no machine-readable copy of a Sequence Listing was filed in cases where a diskette was indeed filed, and a post card receipt is available to prove it. This seems to happen much less frequently with pages of a patent application. In another significant portion of cases, I receive notices that the machine-readable copy was unreadable when the PTO attempts to evaluate it. Since the sequences are a critical portion of many biotechnology applications under Section 112, first paragraph and the PTO is not yet equipped to handle wholly electronic submissions of @s portion of the application, the rule change is premature.

The PTO asserts that sequences are not susceptible to human-eye searching. This may be true at the examination stage. However, at the point of questioning a patent's validity, or in an interference, it is important that the public or interfering party be able to scrutinize a sequence as it was filed -- not as it was resubmitted in response to a notice to file missing or unreadable parts -- even if this examination process is laborious.

The problem of handling large volumes of sequence should be handled with other rules, such as limiting the number of claimed, unrelated individual sequences per application. If the PTO receives 1000 applications with ten sequences, it also receives more than one half million dollars in filing fees to process the applications. Perhaps a Sequence Depository of some sort could be established.

IX. Information Disclosure Statements

These proposed rules changes are by far the most troubling and non-User friendly, contrary to the goal of increasing the level of service to the public.

The pressures created by "duty of candor" and the presumption of validity over art considered by the PTO certainly influence practitioners to cite large volumes of art in an IDS, and there is no simple answer to this problem. However, the proposed rule changes are not the answer.

Patent applicants (PTO "customers") who provide their attorneys with art for submission in an IDS do not wish to pay their patent attorney to review and summarize prior art references for the Patent Office. This is not a value-added service to a client. Most applicants would probably rather pay higher examination fees to the PTO. The applicant wants Ws attorney to bring the art to the PTO's attention and distinguish whatever art or combinations or art that an examiner applies against the claims in an office action-

Moreover, any examiner who relies wholly on an applicants summary of a document as a substitute for reviewing the document is doing a disservice to the U.S. public. The applicant's duty of candor does not extend to doing the examiner's work.

Applicants especially do not wish to pay their attorneys to apply references against their claims. The applicant pays an examiner for this service by paying a filing fee. The applicant hires the attorney to distinguish references.

Moreover, the PTO seems to be setting an artificially low ceiling of ten references

Dec. 4. 1998 10: 56AM MARSHALL. O'TOOLE No. 4128 P. 5/5 to control a limited problem of some applicants citing hundreds of references.

One way for the PTO to control the size of IDS submissions is to provide "safe harbor" type guidelines in its rules as to what volume of information the PTO @ useful, and what volume becomes burdensome to an examiner, hindering examination. The PTO also could specify categories of references that normally should not be submitted. I am confident that Applicants would attempt to satisfy guidelines relating to the quantity and quality of references that the PTO found helpful, and would attempt to avoid filing ]IDS submissions that the PTO characterized as creating an undue burden. Such guidelines should not require an applicant or Ids attorney to characterize references or apply them to claims. Most references already have abstracts and/or drawings that serve to characterize; and it is the examiner's job to apply art to the claims.

To the extent that the PTO still receives "burdensome" IDS submissions after promulgating guidelines, the PTO should address the burden by imposing surcharges based on the number of references or document pages submitted by the applicant, and using the surcharges to hire more examiners and permit additional hours for an examiner to examine an application.

XVIII. Alternative review procedures

An alternative review that is less expensive and more expeditious than briefing at the Board of Appeals is a desirable goal. However, the most helpful review is not likely to be a review to see if an examiner has created a proper prima facie rejection, but whether the applicant has overcome/rebutted such a rejection based on the entirety of the prosecution history. Perhaps this could occur before the filing of an appeal brief?

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