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Assistant Commissioner for Patents

  • Assistant Commissioner for Patents
    Washington, DC 20231
  • Attached as a Wordperfect 5.1 file "COMMENTS.PTO", and also aas unformatted text below, are comments on some of the proposed changes to the patent practice rules, published in the October 27, 1998 issue of the Official Gazette.

    Very truly yours,

  • Gwendolyn H. Yip
    Reg. No. 40,448



    TELEPHONE: (617) 542-2290

    FACSIMILE: (617) 451-0313


    December 4, 1998

  • Assistant Commissioner for Patents
    U.S. Patent and Trademark OFfice

    Washington, DC 20231

  • RE: Comments on Proposed Changes to Implement

  • the Patent Business Goals
  • Dear Sir:

    I am an associate of the firm of Weingarten, Schurgin, Gagnebin & Hayes, LLP, in Boston, Massachusetts. I prosecute patent applications primarily in the biotechnology and chemical areas. I am expressing, in an individual capacity, my concerns regarding some of the Patent and Trademark OfficeÂ’s (PTOÂ’s) proposed patent rule changes, published in the Official Gazette on October 27, 1998 (1215 TMOG 92-117).

    Proposed Change to 37 C.F.R. §1.75:

    It is critical that, if the PTO does limit the number of claims examined as proposed, the PTO will waive this limitation in cases where a waiver would benefit the PTO, the public, and the applicant, as provided in the proposed rule change. However, since the applicant must file a petition for the waiver to the Commissioner under 37 C.F.R. §1.183, obtaining this waiver may unduly delay examination of the application. The PTO should clarify the procedure for submitting a petition for the waiver (e.g., should it be submitted along with the application upon filing?). The PTO must also address how it will expedite processing waiver petitions so as to minimize delay.

    Proposed Change to 37 C.F.R. §1.85

    It seems too drastic to reduce the time period for submitting corrrected or formal drawings from three months to one month. A two-month period would be more reasonable.

    The PTO also asked whether it should require corrected or formal drawings to be filed in a reply to an Office Action indicating allowable subject matter. This proposal is reasonable.

    Proposed Change to 37 C.F.R. §1.98

    The PTOÂ’s proposed, additional requirements for the Information Disclosure Statement (IDS) creates an unreasonable burden on the applicant and applicantÂ’s attorney, in terms of both time and expense that an applicant may not be able to afford. (Several patent attorneys and agents with whom I have discussed this proposal, have expressed similar concerns.) As well, it is questionable how much these proposed requirements would actually achieve the PTOÂ’sstated goal of reducing the number and size of IDS submissions. Most applicants would continue to prefer erring on the side of caution in complying with their duty to disclose.

    Requiring that the IDS include a statement of personal review by the registered practitioner who represents the applicant, will add enormously to the cost of preparing an IDS in terms of attorney time. It should suffice if this statement states that each citation has been reviewed by either one inventor or the applicantÂ’s representative (whether or not the applicant is represented by a registered practitioner) to determine whether or not that citation is relevant to the claimed invention and is appropriate to cite in the IDS.

    It will also impose undue burden and expense on the applicant and applicantÂ’s representative to prepare a unique description of each citationÂ’s importance relative to each independent claim, or to specific dependent claim(s) for which the citation was cited. The proposed exceptions would not sufficiently alleviate the added burden and expense. While I sympathize with the PTOÂ’s plight in having to handle voluminous IDS submissions, this proposal is too drastic. This requirement would present a particular hardship in biotechnology-related applications, which by nature involve many relevant background references. Moreover, the relevance of many biotechnology references is readily apparent from their abstracts, so that preparing a unique description in many cases would be an unnecessary expense to the applicant.

    Preparing the proposed unique descriptions would also place an applicantÂ’s representative in an awkward situation of trying to be, simultaneously, patent examiner and advocate for the applicant, while trying to avoid making statements that could inadvertently compromise later enforcement of the patent that issues. This situation could prove unfairly prejudicial to an applicant.

    One possible alternative way of reducing excessive IDS submissions might be to charge additional fees for IDS citations in excess of some reasonable, threshold number, similar to the current practice for dealing with excess claims.

    If the PTO still believes that some description should be provided to the examiner for each citation (aside from those subject to exception), then perhaps the old IDS rule could be re- adopted, which required a summary of each citation but not a description of its relevancy to a particular claim. Furthermore, some thought should be given to excepting those citations that already include asbtracts or summaries.

    I hope that the preceding comments on several of the PTOÂ’s proposed rule changes are helpful as the PTO works on implementing its business goals.

  • Very truly yours,
    Gwendolyn H. Yip
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