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Hon. Q. Todd Dickinson

Assistant Secretary of Commerce and Commissioner of Patents and Trademarks

Attn: Hiram R. Bernstein

U.S. Patent & Trademark Office

Washington, DC 20231


Intellectual Property Owners Association (IPO) appreciates the opportunity to comment on the proposed rule changes that were published in the Federal Register at 64 Fed. Reg. 53,772 (October 4, 1999). IPO is a nonprofit association that represents c o mpanies, universities, and individuals who own patents, trademarks, copyrights and trade secrets.

IPO supports the efforts of the Patent and Trademark Office (PTO) to reduce the processing time for patent applications and exceed the quality expectations of its customers. The opportunity to comment on changes in procedure that are being considered by the PTO before they are implemented is a useful procedure for identifying possible impacts on PTO customers that are either unwarranted or unintended. Unfortunately, the PTO has not followed its general practice in the proposed rulemaking of identif y ing the changes in the existing rules by brackets and underlining. This type of highlighting is very useful to the great majority of PTO customers who are not intimately familiar with the languate in the existing rules. We would urge the PTO to return to its former practice in future rulemaking proposals.

Both the Pto and its customers may want to reconsider the proposed changes in light of requirements and opportunities presented by the enactment of the Inventors' Rights Act of 1999. To the extent that the PTO modifies any of the proposed changes because of this new development, IPO encourages the PTO to publish the new proposals for comment by the interested public.

Our consideration has identified some concerns with the direction and potential impacts of several of the proposals. Our most significant conce rn s relate to the proposals set forth in Rule 105 and Rule 52(d)(2). Comments on specific proposals are provided below.

Rule 14(a): The PTO should continue to provide status information on continuing applications that claim the benefit of an application on which status information may be provided as in current Rule 14(a)(l)(ii). This information can be very useful to the public and provide some measure of certainty as to whether any continuing applications have been filed and their status. The PTO should continue to make this information available to the public.

Rule 14(d)(4): The provisions of this proposed rule should be linked to the presence of an executed power of attorney rather than an executed oath or declaration. While the power of atto rn ey is typically included in the oath or declaration document, this is not necessarily the case. Accordingly, access to the application by a registered atto rn ey or agent named in the papers filed with the application should only be operative when an executed power of attorney has been filed.

Rule 14: The regulations regarding access to applications should include a patent application, regardless of its status, that is a parent application of an issued patent. The prosecution history of an issued patent is very important in many aspects of claim construction and the enforcement of patents. The inability to obtain access to a parent application leaves a substantial void in the prosecution history that makes an assessment of the patent validity, scope and enforceability speculative at best. Having been granted a patent that relies on another patent application, the patent owner should not be in a position to withhold relevant information from the public.

Rule 27(b): In a worthwhile attempt to simplify the process for claiming small entity status, the PTO is proposing to establish a very complex procedure that won't be understood by the great majority of practitioners and their support staffs, and the Pto support staff that must administer this program. Simple, clear procedures should be the goal. If an applicant does not make a claim for small entity status, that applicant should not be entitled to the substantial discount in fees that are associated with that status. It is not too much to ask for those claiming a 50% discount that they make an affirmative statement regarding eligibility for small entity status. By making a proposed exception for filing fees, the PTO is only adding to the complexity of the process. While these procedures affect small entities to a greater extent, large entities are affected by the costs associated with the implementation of any plan or procedure to assign small entity status to applications that clearly quali f y for the statutory fee reduction.

Rule 52(d)(2): The PTO proposal to limit the requirement for an English-language translation of a non-English language provisional application only when a non-provisional applicati o n claiming the benefit of the provisional application is involved in an interference, or when specifically required by the examiner will cause problems and additional costs to the PTO and the public. The PTO must recognize the essential differences between a foreign priority application (that is never associated with a prior art effect date of an issued US patent) and a US provisional application (that can form the basis for the prior art effect date of a US patent). The filing of a non-English language provisional application provides essentially no benefit to a foreign patent applicant, who can submit that patent application in a Paris Convention cournty and obtain the priority date benefit, except that the provisional application could become prior art with respect to United States patents and patent applications.

It is to the benefit of the patent examiners and the public to have available an English-language translation of any provisional application that is not in the English language because of its prior art status when a patent is issued claiming the benefit of such a provisional application. It is

manifestly unfair to shift the burden and the cost of translation to either the PTO or the public when it is the provisional application applicant that is obtaining the primary benefit. While the PTO could consider some process to delay the filing of a English-language translation to a point in time closer to the filing of the non-provisional application, any procedure that is adopted by the PTO should ensure that an English-language translation is filed in any provisional application that could possibly have a prior art effect.

Rule 56(e): The proposal to amend Rule 56 to advise applicants of their duty in a continuation-in-part application is unnecessary. The reason that the proposed language was adopted as a requirement of the oath or declaration was as a reminder to inventors who must sign such a document that this duty exists in continuation-in-part applications. Furthermore, it is unlikely that an inventor, who at least has an opportunity to appreciate the meaning of this provision in the oath or declaration that is executed, is likely to be apprised of that aspect of the duty of disclosure by putting a statement in Rule 56. Finally, there does not appear to be any more reason to add such a provision to the rule than other reminders about public use or sale or, indeed, every other provision regarding a form of prior art.

Rule 67(a): It is not understood what is intended by an "applicant" other than an inventor. While it may apply to those who represent an inventor that is dead or otherwise incapacitated or unavailable, clarification of this language should be made.

Rule 97: The PTO should clarif y what responsibilities an examiner has relative to the prior art that is considered during the examination process. For example, is the cursory review given to a citation on an IDS any different than the review of any document in the classified search file that is searched by an examiner? What documents receive a thorough review? The public has a right to know what the official responsibilities of an examiner are when examining a patent application. We note that the PTO is planning to publish a notice dealing with the printing of IDS citations on the face of a patent. We see little value in segmenting cited documents by the source, especially since the interested public can access such information through the file histories of patents. We urge the PTO to use this opportunity to clarify the official responsibilities of a patent examiner on which the public is entitled to rely. If the examiner considers a reference, no benefit to the patentee or the public is achieved by having , tw o classes of citations given on the patent, and such a procedure will necessarily increase the burden on the PTO.

Rule 97(d): The PTO has not justified the additional costs associating with processing an IDS after a final determination of patentability. The PTO has stated that there is no reason for the reduced fee of $130 as opposed to the larger $240 IDS fee which is associated with submitting an IDS without a certification between a first Office action and a final decision on patentability. However, the fundamental difference is that the $130 fee can only be submitted when applicants can submit a certification that they are promptly bringing to the attention of the PTO information that is not of record. The $240 fee was set to recover the costs of submitting information at an advanced stage of prosecution and as an inducement to submit information prior to the first Office action. In proposing to raise each fee to $240, the PTO has blurred the distincti o n between these procedural requirements and the public policy supporting them, and has not justified any increase in the fee amount. For example, how many times is prosecution reopened when an examiner considers an IDS after a final determination of patentability.

Rule 97(e)(l): It is not clear whether the reference to "first cited" refers to a citation by the Patent Office that cites the information in an official action, or refers to the citation by any patent office in a counterpart application. In other words, if a patent is cited in a German Office action, and it is the first time that that patent is cited in that application, but the same patent was previously cited in a Japanese counterpart application, could the item of information be cited as the first citation in a communication from the German Patent Office? Unless that is the correct interpretation, the coordination of citations among a plurality of foreign applications would create a very significant administrative burden on applicants and their representatives.

Rule 98(a)(2): The PTO should reconsider and withdraw the proposed requirement to submit copies of patent applications that are cited in an information disclosure statement. The proposal runs counter to the worthwhile effort of reducing the burden on the PTO and applicants in submitting papers to the PTO that are already available to the examiner. The PTO acknowledges that the citation of a patent application is relatively rare, yet apparently is troubled by the real burden to locate "and copy" the cited patent applications. It is not understood why a patent examiner has to copy a patent application that is considered any more than a examiner has to copy every reference in a subclass that is considered during the conduct of a search. The PTO has failed to demonstrate that the overall efficiency of the examination process can be improved by adopting this requirement.

Rule 105: The PTO has an inherent authority to request information in the examination of a patent application. Should the PTO explicitly set forth this authority through the promulgation of rules, we believe that it is incumbent upon the PTO to establish and enforce a uniform policy and practice with respect to the exercise of this authority by almost 3,000 patent examiners. The PTO does not address any mechanism to assure that the burden and cost of prosecuting a patent application will not be increased without contribution to either the efficiency or quality of examination. For instance, what protection exists for the patent applicant should an examiner routinely request the submission of published articles authored by any of the inventors that relate to the claimed invention, or the submission of documents that were used in the drafting of a patent application? Clearly, these types of documents usually would not be material to the examination of the application. In a recent notice, the PTO sought comments from the public on whether to impose these additional burdens as mandatory items of the duty of disclosure. IPO is of the view that such an additional burden is unnecessary and inappropriate, and this is true whether it is mandatory or optional with each individual examiner.

Since the potential burdens and risks to patent owners of this proposal are significant, IPO strongly believes that this proposal should not be adopted.

While it is recognized that judges at the Board of Patent Appeals and Interferences and trademark examiners operate under regulations that are similar to proposed Rule 105, these officials have had formal legal training which is neither required nor possessed by the great majority of patent examiners or their supervisors. Further, the nature of these proceedings enables pivotal information to be better identified and a more focused inquiry fashioned.

Rule 11 l(a): Is a second supplemental reply the third reply to an Office action, or the second? Is it appropriate to assume that the chronology is: reply, supplemental reply, second supplemental reply? While the frustration of dealing with replies that cross in the mail is understood, and nothing new in the prosecution of patent applications, the authority to deny entry of a supplemental reply because of the inefficiency of the PTO in matching a paper with the file is fundamentally unfair. At the very least, the decision whether to admit a second supplemental reply should be dependent on the state of preparation of the examiners next action at the time the reply is received by the PTO. In all too many cases these days, replies hand carried to the group or even faxed to the technology center are misplaced for inordinate amounts of time.

Rule 115(b): The remarks above with respect to second or subsequent supplemental replies also applies to the handling of preliminary amendments by the PTO. It is manifestly unfair to the patent applicant to condition the consideration of a preliminary amendment on what is often the inefficiency and inability of the PTO to match a paper with the file.

Rule 121(a)(l): The requirement to submit a substitute specification to make an amendment to a specification where numbered paragraphs or headings are not employed is a substantial burden on bot the PTO and patent applicants. At least one problem with substitute specifications is that the PTO printer sometimes does not select the right specification to print when the examination process is concluded. The thought of multiple substitute specifications being submitted during the course of examination is going to aggravate this problem. Until the Office gets closer to an electronic filing environment, the desirability or necessity of this approach to amendments to the specification is not understood. The PTO should retain the procedure of adding or deleting text to the specification by providing specific instructions for insertions and deletions.

Rule 121(a)(2): This proposal is both confusing, and, as presently understood, a potential sacrifice in the quality of examination for the purpose of simplifying the printing process. The instruction to rewrite an amended claim with all changes included therein is likely to be understood by most practitioners as requiring the indication of insertions and deletions, and not a requirement to submit a clean copy of the amended claim. The apparent motivation for this proposal appears to be something generated to simplify the printing process as opposed to improving the examination process. The PTO should consider whether this approach to amending claims will encourage applicants to submit a new schedule of amended claims in the form of a new schedule of renumbered claims, thereby avoiding the requirement for both a clean copy and a marked-up copy of pending claims. Such a procedure is not likely to advise the examiner of the changes that were made to the claims that were examined in the previous Office action, and thereby would not contribute to the efficiency or quality of the examination process.

Rule 155: If the PTO is going to charge a significant fee for accelerated examination of a design application, the applicant should obtain a refund when the service that is paid for is not provided. The PTO clearly has the statutory authority to provide a refund when a service is not provided. One example is for a request for reexamination – when reexamination request is not granted, a significant portion of the fee is refunded. Accordingly, instead of requiring the fee for filing a request for expedited treatment of a design application, the fee should be paid for expedited examination of the design application. When that service is not provided, the fee paid is clearly in excess of that required and could be refunded on that basis. If the PTO is serious about being considered a performance based organization, this fee should be based on performance and not on unfilled promises.

Rule 313(c): The proposed limitation on the ability of applicant to request withdrawal , from issue is too limiting. While it is recognized that the Office has a goal to grant patents sh o rtly after the issue fee is paid, this goal has not been realized. The rule should not preclude a request to withdraw from issue when reasonably efficient processing could prevent a patent from issuing without having some important matter considered. Again, the PTO has apparently established the wrong priority – the integrity of the patent grant is potentially being sacrificed to facilitate patent printing. The process of withdrawing an application from issue is a problem even in the present system, but the PTO has demonstrated that it can maintain an appropriate balance between PTO efficiency and patent quality when good people are assigned to the task of making these close calls at the last minute.

Rule 322: The PTO should not delete the opportunity for a member of the public to request a certificate of correction. The public has a right to know whether an apparent error in the printing of a patent should or should not be a part of the patent grant. The PTO has neither established why this particular procedure is an unreasonable burden, nor why it could not be addressed by a reasonable fee.

Rule 324: The PTO should require that an oath or declaration by executed by an inventor added after the patent grant. All available inventors should execute an oath or declaration in accordance with the requirements of 3 5 U.S.C. § 115, even though they may be added after the patent grant. This requirement of the statutes should be consistently applied throughout the regulations pertaining to inventorship.

IPO looks forward to working with the PTO to address the problems identified in the proposed rules in a way that will create workable solutions that will benefit the PTO and its customers.


Norman L. Balmer President

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:00:24 PM