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I will refer to the items by number as they appear in the OG

I will refer to the items by number as they appear in the OG.

4. Arbitrary limit on claims. Restriction is an adequate remedy for excessive claims. The arbitrary limits are way too low as PTO must know. What about the applicant who uses multiple dependent claims? The phrase "any one of the preceding claims " could get you from 25 to 50 which would be 10 too many. Multiple dependent claims should be counted as one claim.

7. Reduced time for formal drawings.

One month is not enough time to communicate with the client and the draftsman in order to get formal drawings prepared and filed. The delay fee penalty is sufficient incentive to encourage prompt filing. In this regard, the system isnÂ’t broken.

9. Requiring comments on prior art submissions. This is a Draconian measure which puts the applicant in an untenable position of not saying enough or saying too much. With the recent case law which places greater emphasis on file wrapper estoppel, applicant will be required to walk too fine a line between the duty of disclosure and injecting claim limiting statements. It will tend to cause a reduction in art cited just to avoid the problem. To require applicant to submit to this risk will encounter unwarranted extra cost in the guise of helping the examiner. Litigators will have a field day with this. Litigation cost will increase because of the "admissions " that will be there. To do this assumes that the practitioner has a comprehensive understanding of each piece of prior art, an assumption that often is not true. We should expect the examiner to apply the prior art against the application, we should not have to argue against our clients position or be put in the position of explaining to the client why our "admission" has damaged his or her position. The examiner working in a particular art should be in a far better position to understand it than a practitioner who may have only a single application. This proposal is like compelled testimony against interest. The length of the PTO explanation itself speaks volumes about the unworkability of the proposal.

14. Presumptive election of claims.

This is another example of the adage "if it ainÂ’t broke, donÂ’t fix it." There is no great delay in present restriction practice and it gives applicant some control over what to prosecute in an application once he sees how the examiner views the claims. Until then we cannot know what claims will be grouped together and it is often surprising what they are. I cannot predict in advance what an examiner will do. The claims are written to try to cover the invention without much regard to what may or may not happen in restriction. In addition, the world changes between the time of filing and the time of examination. Sometimes there are business reasons to pick claims further down the chain of claims than what were thought to be most desirable at the time of filing. I think much injustice will result if this proposal is adopted and for very little real gain.

While I cannot comment on all the proposals, I do believe the PTO has made a great deal of progress and that previous changes have been beneficial. I believe there are some good proposals here also. I hope these comments will be helpful.

Harry J. Watson, Locke Purnell Rain Harrell

Dallas, Texas

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:58:22 PM