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Comments From


On the Proposed Rule Changes Entitled:


AS Published 1228 OG 15-81, NOV. 2, 1999

In response to the Notice appearing in the Official Gazette at 1228 OG 15,

November 2, 1999, the National Association of Patent Practitioners (NAPP) submits the following comments on the proposed Rule changes.


With the exception of the change to Rule 1.121 discussed below, all of the

Changes in this proposed rule making are acceptable and/or appreciated. The rationale of the U.S. Patent & Trademark Office (PTO) in making these changes has been fully set forth. Further, the prior comments have been well discussed and the conclusions and actions of the PTO based thereon have been reasonable. Accordingly, our comments are directed to one issue of concern; namely the proposed method for amending the specification.

Rule 1.121 – The merits

Presently, amendments to the specification of a patent application may be made by stating where to insert or delete specified text. These amendments are entered by hand at the PTO by docket clerks. Such hand written amendments prevent the PTO from being able to use scanning technology for preparing the patent application for issue.

Accordingly, the PTO seeks a new amendment methodology whereby a "clean" copy of

the amended text is available for scanning. As proposed, the methodology would be as follows:

  1. if the paragraphs of the specification are individually numbered, as suggested in proposed Rule 1.52, then a text change in a paragraph can be ame n ded by submitting a replacement section having the amended text;
  2. if section headings such as "Summary of the Invention," have been used, then a text change can be made by submitting a replacement section having the amended text; and
  3. in any event, a complete substitute specification containing the amended text can be submitted.

Missing from the proposed methodology is the ability to submit a replacement page or pages containing the amended text. If numbered paragraphs have not been used, then the applicant will have to re-submit the entire section or possibly the entire specification in order to amend the specification, regardless of the size of the amendment. We believe that this apparently purposeful omission of page replacement as a proper way to amend the specification is misguided.

In the instance where the patent application does not contain numbered paragraphs, making a simple amendment to correct a misspelling (e.g. to change the word "form" to "from") will result in the applicant having to submit multiple pages of text many of which will be identical to the pages already on file in the PTO. This type of submission is wasteful and unnecessarily onerous on the applicant. Why should the rules require unchanged pages to be resubmitted?

The fact that pagination may change is not a compelling or even reasonable argument for opposing the use of replacement pages. If needed, the applicant could replace page 7 with pages 7 and 7A (or 7 and 7.1). Page 8 following would remain unchanged. This approach is currently employed in PCT practice and should be incorporated here.

Submitting multiple pages of duplicate text will increase the cost to applicants without benefiting the applicant or the PTO. Consider the situation in which the practitioner does not have an electronic copy of the application. This practice is common when working with foreign origin applications. In general, only a hard copy of the text is sent to the U.S. practitioner. In accordance with the proposed Rule change, all of the pages in a section to be replaced would have to be re-typed and proofed, including those pages in the section that remain unchanged. The proofing of the pages could take a significant amount of time, resulting in increased costs to the applicant. Moreover, it may be possible that new errors would be introduced, despite careful proofing, thereby potentially increasing the number of certificates of correction filed. Thus, the procedure will ultimately place additional burdens on the PTO.

Moreover, the option of replacing paragraphs if they are numbered does ' not warrant omitting the page replacement methodology. The PTO should bear in mind that applications that are pending at the time the new Rule is instituted will not have numbered paragraphs. In tu rn , paragraph replacement will not be available for those

It may be possible to supply photocopies of the unchanged pages instead of retyping them. But this only points out the futility of the proposed Rule. Why re-submit a copy of that which the PTO already has? Such a submission only increases the chance of accidenta l error (i.e. omitting a page) without any real benefit to PTO.

applications. Rather, applicants will be forced to make amendments through the burdensome requirement of filing a section replacement or substitute specification.

After institution of the proposed Rule, paragraph numbering will be problematic until an easy computer based automatic paragraph numbering system (macro) is widely available. In the meantime, practitioners will have to manually number each paragraph. This activity is prone to error. The PTO is already aware that claims are often misnumbered. Manually numbering paragraphs will only magnif y this type of typographical error. Editing of the draft patent application will become more difficult because the paragraph numbers will have to be updated accordingly. To ens ur e proper numbering, one would assume that the practitioner would logically insert the nu mbers after all of the edits are complete. However, the realities of the practice are that last minute minor errors and/or last minute comments from the inventor cause the specification to change. With an impending statutory bar date, time is of the essence. Coping with having to renumber paragraphs because of last minute changes will place a large administrative burden on the applicants and their representatives. During the interim, large companies and other volume patent players will undoubtedly invest the money to be able to automatically number the paragraphs. However, pro-se applicants and small patent firms will not be able to take advantage of this Rule without incurring the extra cost and time of manually inserting and proofing the numbers. The Rules should not provide special treatment for the well healed.

The PTO did not directly answer a similar conce rn expressed in the last comments and is itself apparently uncertain as to whether a program is readily available to provide the required PTO format. See 1228 OG at 43, the last Comment and Response.

We recognize that the goals of the PTO will require a change in the way amendments are made to the specification. These changes will make the applicant – amendment practice more difficult. Numbered paragraphs appear to be a good idea and will most likely be the norm for patent drafting in the future. However, as the PTO notes in its comments, the electronic file wrapper (EFW) is still several years away. By allowing page replacement, the PTO will have an ideal transition device as the world moves closer to EFW and will bring their Rules in line with the current PCT and EPO practices. This practice will provide a clean copy of the text for scanning while reducing the burden on the applicant. We urge that the PTO reconsider this position and to allow for the submission of replacement pages.

Rule 1.121- The Formal Requirements

With respect to the formal requirements of amendments, the Rule does not clearly state whether the replacement text must be on a separate sheet. For example, can a replacement "Summary of the Invention" section be incorporated into a combined *amendment and traversal paper, or must it be attached as a separate clean copy as an appendix? One would assume that the replacement pages should be separate from t he rest of the amendment in order to facilitate scanning and to keep other amendment items or comments from being scanned. However, the Rule is unclear with respect this point.

Another question is whether the new pages must be complete pages or if partial be submitted? That is, can page 7 have a page 7A having only four lines on it,

See 1228 OG at 44, the second Comment and Response.

followed by original pages 8-12? If so, then photocopies of the original pages 8-12 can be used as replacement pages, thereby saving on re-typing and proofing (albeit raising an efficiency/waste issue as mentioned above). Clarification of these procedural aspects of the Rules is requested and s u ggested.

Respectively Submitted

Joy L. Bryant, President

Mark R. Buscher, Vice President

United States Patent and Trademark Office
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