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Bernstein, Hiram

Bernstein, Hiram


Sent: Friday, December 04, 1998 5:51 PM

TO: Regreform

Subject: Proposed rulemaking comments

December 4, 1998

VIA TELEFAX: 703-308-6916

Attn: Hiram H. Bernstein

Box Comments - Patents

Assistant Commissioner for Patents Washington, DC 20031

Dear Sir:

The proposed changes in rules to implement the patent business goals are, for the most part, excellent. All persons involved in the creation of this wonderful work are entitled to the highest praise.

I think, however, that two points need further consideration, these points being numbered 7 and 9 in the presentation of the planned rule changes, and relating respectively to reducing the time for filing corrected or formal drawings, and imposing requirements on information disclosure statement submissions.

As to reducing time for filing corrected or formal drawings, in cases originating abroad, one month simply is not enough time. At the attorney's office, the Notice of Allowability must be studied for accuracy and docketed and then reported to the client. In the case of applications originating abroad, the client, in most of such cases that we handle, is a private patent firm. This private patent firm, in turn, must study, docket and report to its client (either the inventor or inventors or the assignee) the Notice of Allowability and request instructions as to the production of formal drawings and payment of the government issue fee. Then, the procedure must be reversed, with the result that the instructions for payment of the issue fee often do not reach us, in such cases originating abroad, until almost three months after the date of the Notice of Allowability.

Were we to anticipate the instruction to pay the issue fee, then of course we could immediately order the production of formal drawings (or ask the client to supply the same) within the one-month limitation. But it is not that simple: if we produce new drawings on our own initiative, and at the end of the three months from the Notice bf Allowability the client overseas decides not to pay the issue fee, then who pays for the drawings? In a case with multiple sheets of drawings, the cost of producing formal drawings can be the largest expense encountered in the course of prosecution.

Even with the present three-month window for formal drawings, and the opportunity to extend, we often find ourselves pressed to the wall under the above circumstances.

Reducing pendency is not a good argument for a one- month time for submission of new drawings. In each such case, increased pendency is at the expense of the term of the patent to issue; and so applicants already have all the needed incentive to supply formal drawings at the earliest possible moment.

So I would prefer that the procedure be left as it is.

However, if a change must be made, then the alternative proposal, namely, to require new drawings to be filed in reply to an Office Action indicating allowable subject matter, would be preferable to the one-mo6th limitation. Indeed, such a procedure would presumably eliminate, in such cases, the hassle of matching new drawings to an allowed application.

In short, if you must make a change, change to the requirement that new drawings be filed in reply to an Office Action indicating allowable subject matter.


The requirement (numbered 9) that the attorney state that he/she has personally reviewed each submitted I.D.S. citation to determine whether the citation is relevant to the claimed invention, would impose a quite unnecessary burden on the attorney and a corresponding unnecessary cost to the applicant.

In cases originating abroad, the U.S. attorney files the application without necessarily having any knowledge of the claimed invention, much less what citations might be relevant to the claimed invention. These citations ordinarily have one of two origins:

1) either they were citations known to the inventor or inventors or the assignee; or

2) they were cited in the search report of a corresponding application such as the International, European or Japanese, among others.

The fact that the inventor or inventors or assignee consider certain citations to be the most pertinent, should suffice: the U.S. attorney should not have to make an entirely duplicative and costly study to confirm this.

Moreover, as to citations made abroad, if a patent examiner anywhere in the world thinks a citation is worth citing, then that should suffice: why should a U.S. attorney, having no knowledge of the claimed invention or the content of the citation, have to second-guess a patent examiner in another country who has already made a determination of relevance?

So long as there is a ten-citation limit on those citations that can be provided with no explanation of them, such a statement of relevance is quite unnecessary.

Moreover, the burden is on the applicants and everyone connected with them, to produce the most relevant known citations. Failing this, the resulting patent may be unenforceable. This fact makes it completely unnecessary for the U.S. attorney to add his or her determination of relevance.

In short, if the ten-citation limitation is imposed, as I think it

should be, then the requirement of a statement of relevance by the U.S. attorney becomes a useless, burdensome and expensive exercise.

Respectfully submitted,



Robert J. Patch

United States Patent and Trademark Office
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