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RE: Changes to Implement the Patent Business Goals, Advance Notice of

Proposed Rule Making

November 30, 1998

Dear Sirs,

This E-mail letter is in response to the request for comments on the advance notice of proposed rulemaking.

1. Ten (10) references will often be too few. No matter what down select is made by counsel for a patent applicant, this is almost certain to give rise to an inequitable conduct claim in subsequent litigation. Where there is a chain of related patent applications, whether or not CIPs, this problem is even more acute. I know because I have been there; unfortunately the case was privately settled after loss of the defendantÂ’s summary judgment motions, so no case opinion is available to unequivocally prove my point. Also, I know of a single inventor who has over 125 US patents to various aspects of acrylonitrile synthesis (catalyst) technology. How are the inventor and his attorney to respond under the proposed rule? The proposed rule and the need to invoke exceptions to it in many applications will only add to the burden on applicants and their attorneys, and likely result in patents being invalidated by the courts who are not bound by any such rules.

2. Limiting applications to 40 claims is unacceptable US practice given the recent tendency of the Office and the courts to narrowly construe claims and narrow the doctrine of equivalents. US practice is becoming more like classical Japanese practice—the Office wants to grant claims only to what is described in the examples. The courts only want to "expand" the literal language of the claims to what embodiments are expressly described in the specification. Either way, it seems that expanded descriptions and a greater number of claims are needed to attempt to protect the true invention. The inventor should not be penalized because the courts, congress and Office are trying to wrest the invention away from him / her. Concurrently, present restriction practice serves to reduce the USPTO examiner’s workload in a single application, but results in some additional costs and difficulties in subsequent patent enforcement. A better revised practice would be to provide an appropriate additional fee for examination of the "excess" claims where there is lacking unity of invention and an appropriate allotment of time to the examiner for the additional searching and substantive examination needed. This additional fee should already be coming to the USPTO in the form of fees for any claims over 20, and any independent claims over 3; all that is needed is an additional fee to cover searching in addtional class(es) for the subject matter that might otherwise be restricted. Give the patent applicant the option of which course to take.

3. Substitute sheets instead of marked retyped claims—this has been in effect in European and Canadian practice for years. I can live with it. I urge the USPTO to retain the concept of Examiner’s amendments so that any small final language changes (including Rule 312 amendments) can be efficiently implemented during a telephone interview.

4. A4 paper—again, this is already the de facto standard for other countries and is acceptable for USA. Making this a formal requirement in the USA will create a burden for independent inventors and small businesses, as they are unlikely to have A4 paper on hand.


David M. Ronyak

Reg. No. 29106

United States Patent and Trademark Office
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