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My name is Tom Streeter, Reg

My name is Tom Streeter, Reg. No. 32,007. I am employed in-house by Qualcomm, Inc., of San Diego, California. These views are my own and not necessarily those of my employer.

1. Small entity.

Not applicable to my practice.

2. (a) Separate surcharge for each missing part.

This should be modified to charge for each delayed submission, not each delayed part. If I file neither my declaration nor my filing fee on time, I should have an incentive to file them together, and not in separate envelopes three weeks apart. Separate envelopes would further drive up Office costs.

(b) Additional filing services.

These are welcome, and are well worth the additional fees discussed in 2(a).

3. (a) Delayed submission of oath/declaration/power of attorney.

Delayed submission of the declaration is an EXCELLENT idea. We often want to get an early date, but the inventor (or one of them) is unavailable. Delayed submission makes life easier for everyone. There should be a surcharge for submitting the declaration after the deadline for submitting preliminary amendments. See section 12, below. This surcharge would encourage prompt submission. Prompt submission would, in turn, result in inventors—as a condition for our obtaining their signatures—requiring us, their patent attorneys, to submit a preliminary amendment to the claims, when this is necessary to more accurately describe their invention. The examiner should not be forced to consider such an amendment only AFTER he has picked up the case for examination. 35 USC 102(e) is a problem, but it is just as much a problem under the current system of filing delayed declarations, under petition. Problems can arise out of extended-delayed filings of powers of attorney.

These same problems arise (but very rarely) when a foreign inventor and assignee file a PCT application designating/electing the USA. The assigneeÂ’s rights in the PCT application should be used as a template for the assigneeÂ’s rights in an extended-delayed power of attorney.

(b) Delayed submission of filing fee/translation.

Rather than requiring the filing fee to be paid a month after the filing date, it should be due a month after the mailing of the filing receipt. Maybe my Corporate Finance Department didnÂ’t get the replenishment check in to the PTO deposit account on time, and I need an emergency replenishment. Corporate Finance is going to start its clock on the day I walk into their office, not on the day (several weeks earlier) on which my application was granted a filing date.

Also, please state (on the filing receipt) not only the amount of fee that we paid, but also what we should have paid and what the balance due is (including surcharge, as appropriate).

As to translations, please consider a reciprocity agreement with other patent offices: "WeÂ’ll agree not to require from your citizens an English translation (except of the title, the inventorÂ’s name, and the technological field [so we can classify it]) at filing, but will wait until we are ready to search and examine. In return, we expect a similar right to submit a delayed translation when our citizens file in your office." Until such agreements can be worked out, the translation should be due at the same time as the fee: one month after issuance of the filing receipt.

4. Limiting number of claims.

Limiting the number of claims is reasonable, but only if parallel claims are excluded. If I have 10 step-plus-function method claims, I can file 10 >means-plus-function apparatus claims without requiring any additional search or examination effort.

Similarly, a claim which multiply depends from 10 claims should be counted as 1 claim—the way the EPO counts it—and not as 10 claims—the way the USPTO counts it.

Further, the JPO has a good practice, in counting claims, which should be adopted by the USPTO. Suppose that widgets are old in the art, but thatpainted widgets are not, and that only red and blue painted widgets arefunctional. The JPO lets me claim "A red painted widget", followed by a

long series of dependent claims, followed by the multiply dependent claim "The red painted widget of any of the foregoing claims, wherein the paint is blue instead of red." This form of "substitutional" multiple dependent claim should be allowable, and it should count as 1 claim.

These methods of counting claims should be applied both to the 6/40 limit and to fee calculations

5. PCT harmonization of patent drawings.

PCT harmonization principles for drawings should be the same as PCT harmonization principles for paper size or anything else. If I file a regular national application in PCT format (A4 paper, B&W photos, etc.), I should not be required to file a petition, nor should I be required to instead file a PCT application and auto-designate the USA. If the USPTO finds other formats convenient, either with (color photos) or without (8.5 x 11 paper) a petition, then these formats should be permitted, both in regular national applications and in PCT applications which have entered the USA national stage.

6. Printing patents in color.

Not applicable to my practice.

7. Reducing time for filing corrected or formal drawings.

The proposal to reduce this time from 3 months to 1 month is a good one, with one modification. I often submit what I consider to be formal drawings to the official draftsperson. They usually accompany a response to an office action. I request that the formal drawings be approved as such. I get no answer for well over 3 months. Worse, when the application is finally allowed, the official draftsperson finds defects, long after my private draftsman has retired.

The deadline should be 1 month, or the pendency of the longest current request for official draftspersonÂ’s approval (USPTO wide), whichever is longer.

8. Electronic submission of voluminous material.

The proposal is good, and needs to be expanded beyond "sequence listings" and "computer program listings". ANY material should be permitted to be filed in an electronic, archival format (such as CD-ROM), provided that it accompanies a paper-formatted transmittal sheet which identifies the applicant, serial number, examiner, etc. The examiner (or classification division, or anyone else) should be allowed to require that the applicant resubmit, in paper format, any or all information on the CD-ROM. However, anything filed on CD-ROM must be given the same filing date as if it had been filed on paper, or there will be endless disputes on whether the information really was or was not a "computer program listing".

9/10. Requirements for Information Disclosure Statements.

The IDS, under current practice, serves two contradictory functions.

First, it serves as a vehicle for "I want to force the examiner to consider this reference, determine that my invention is patentable over it, and print it on the front page of the patent." Second, it serves as a vehicle for "When litigation comes, I donÂ’t want the infringer to discover this reference in my files and scream that I defrauded the Patent Office (or even engaged in inequitable conduct) by not sending a copy of it to the examiner."

As regards the first vehicle (the conventional Form PTO-1449), the OfficeÂ’s proposal is fair: a reasonable number of free determinations of non-anticipation/non-obviousness; additional determinations must be purchased at the price of a unique description of the referenceÂ’s importance; and certification of a personal review of each reference by the practitioner.

The selection of 10 as the reasonable number of free determinations seems arbitrary. The 6/40 proposed claim limitation was based on the statistic that over 95% of all applications already meet the standard. The same statistic should be used on IDSs. What is the largest number of references which 95% of current IDSs cite?

As an alternative price, perhaps the Office should accept a fee ($5 a page?) for not requiring a unique description. This would certainly slow down the practitioners who submit 500-page textbooks without further specificity. Perhaps the fee should also apply after the first 20 pages of an exempt (10/reasonable number/foreign cited) reference.

As regards the second vehicle, there should be a form other than PTO-1449.

This alternate form should state that these references are being cited simply to discharge the duty of candor. These references should be given the same effect as those in the examiner’s shoe—which the examiner leafs through in making a preliminary determination as to whether it would be worthwhile to read beyond the first page. The practitioner’s certification should be similarly circumscribed: "I skimmed the first page of this reference, and it was worth making a photocopy of (or printing out from the computer data base, after I read the abstract), but it was not worth reading (or even skimming) beyond the first page."

In any event, it is a very good idea to require that a copy of the reference (including pending applications) be submitted, and to not permit a mere citation to it on the PTO-1449.

11. Deferred prosecution.

Deferred prosecution is better than the mere deferred examination which many other countries allow. However, the 3 year proposed limit is out of line with the 5-7 years allowed by our major trading partners. The argument is made that final development of claim form should not be unreasonably delayed. As long as we can file an unlimited number of continuation applications, however, final development of claim form can continue until 20 years after filing the parent application. There should therefore be NO limitation on how long prosecution can be deferred. What there should be, perhaps, is a requirement that a new petition, to further defer prosecution, be filed every 3 years. The fee for such petitions should escalate in much the same way that maintenance fees on issued patents escalate.

12. Handling fee for preliminary amendments/supplemental replies.

The Office already publishes, by examining group, the filing date of the oldest application which has not yet had a first office action. The Office should also publish, by examining group, the filing date of the YOUNGEST application which has not yet been picked up for examination. Preliminary amendments filed more than a month before this date should not be subject to a handling fee; those filed thereafter should, and it should be steep enough that no more than 1% of all applications draw a late preliminary amendment. Otherwise the examiner will be tempted to take the attitude of "I shouldnÂ’t bother with this; the applicant is only going to change it in 3 weeks." This justified attitude toward lazy practitioners will spill over to those of us who took the trouble to get it right the first time (or at least before the examiner picked the case up), and will prevent prompt examination of our applications.

The same goes for supplemental replies. Publish the time length of the shortest backlog for any examiner in the examination group, and impose a steep (99% attenuation) fee for submitting supplemental replies after that time.

A modest mail-room processing fee (over and above the fee to cover the examinerÂ’s time) would not be out of line, even for preliminary amendments and supplemental responses filed before the deadline.

13. Amendment by replacement paragraphs (numbered) and claims.

This is a good idea. As a transitional measure, it should be made voluntary for a year of two, to get all the kinks out, and then made mandatory.

14. Restriction requirement; constructive election.

This proposal is designed to conform USPTO practice as closely as possible to PCT practice, which is a good idea. When it is implemented, it should incorporate the PCT rules by reference as much as possible, so that later changes to the PCT rules will automatically apply in the USPTO. This will avoid subsequent non-conformances—however transitory—between USPTO and PCT practice.

15. Design patent rocket docket.

Not applicable to my practice.

16. Reissue, broadening, identification.

Not applicable to my practice.

17. Multiple reissues.

Not applicable to my practice.

18. ADR on appeal.

Not applicable to my practice.

19. Eliminate preauthorization of issue fee payment.

Not applicable to my practice.

20. Disclosure Document program.

Not applicable to my practice.

21. USPTO review of private forms.

Not applicable to my practice.

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Last Modified: 7/4/2009 4:58:34 PM