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USPTO Docket No. 980826226-9185-02

In re:

USPTO Docket No. 980826226-9185-02

R IN 0651-AA98

For: Notice of Proposed Rulemaking: Changes To Implement the Patent Business Goals

64 Fed. Reg.53772 (1999)

Comments In Reply To the Notice of Proposed Rulemaking Regarding Changes to Implement the Patent Business Goals

Assistant Commissioner for Patents Washington, DC 20231


In reply to the Reg. 53772(1999), Steme.Kessler, published October 4, 1999 at 64 Fed. Reg. 53772 (1999), Sterne, Kessler, Goldstein & FoxP.L.L.C.submits the following comments.

I. Proposal 37 C.F.R. §1.9(f)(1)

The definition of "person" for the purposes of Sec. 1.27(b) is confusing. The first sentence is an absolute statement that to be a person for the purposes of Sec. 1.27(b), no rights in the invention must have been assigned, granted, conveyed or licensed, etc. ( to any entity, large or small). By separating mention of "An inventor or other individual who has transferred some rights, ?" into a second sentence, the rule implies that an inventor or other individual who has transferred some rights is not a "person" within the meaning of Sec. 1.27(b) - as defined in the first sentence.

Further, while Sec. 1.27(b) states that "any party" who has made a determination of entitlement to small entity status... Sec. 1.27(b) specifically qualifies "any party" with "person, small business concern or nonprofit organization." Thus it seems that an inventor who has agreed to license some right in the invention to another small entity, would still within the meaning of "person" as used in Sec. 1.27(b).

Section 1.9(f)(l) would be clearer if the second sentence was deleted and the first sentence was amended to parallel the language of Sec. 1.9(f)(2)(I) and Sec. 1.9(f)(3)(i), and recite:

(1) Person: A person, as used in Sec. 1.27(b), means any

inventor or other individual. . . . who has not assigned, granted,
conveyed, or licensed, and is under no obligation under
contract or law to assign, grant, convey, or license, any rights
in the invention, to any individual, concern, or organization
which would not qualify under this section for small entity
status as a person, small business concern, or nonprofit

Alternatively, the first sentence could remain as is, and the second sentence of Sec. 1.9(f)(1)

could be amended to refer to Sec. 1.27(b), by paralleling the language of the first sentence:

A person, as used in Sec. 1.27(b) also means an inventor or other individual
who has transferred some rights, or is under an obligation to transfer some
rights in the invention to one or more parties, [can also qualify for small entity
status] if all the parties who have had rights in the invention transferred to them
also qualify for small entity status either as a person as defined in the first
sentence of this section, small business concern, or nonprofit organization
under this section.

II. Proposed 37 CF.R. §L9(f)(4)(ii)

The section is confusing because it states that a "license" to a Federal agency is not a "license" per se. The meaning can be clarified by amending the section as follows:

(ii) For small business concerns and nonprofit organizations

under paragraphs (f)(2) and (f)(3) of this section, a license to

a Federal agency resulting from a funding agreement with that

agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a

license for the purposes of paragraphs (f)(2)(i) and (f)(3)(i) of

this section.

Alternatively, the language of Sec. 1.9(f)(4)(ii) should be written to at least parallel the same language proposed for Sec. 1.9(f)(4)(i) and recite "?does not constitute a license so as to prohibit a small business concern or nonprofit organization from claiming small entity status."

III. Proposed 37 CF.R.§L19(b)(2)

The proposed fee of $250.00 for copies of certified or uncertified patent-related files of 400 or fewer pages is excessive. If it costs, as the Office proposes, $25.00 for every additional hundred pages ($0.25/page), then it ought to cost $25.00 for the first hundred or fewer pages is excessive. If it costs, as the Office proposes, $25.00 for every additional hundred pages ($0,25/page), then it ought to cost $25.00 for the first hundred pages too. Copying 400 pages at $0.25 per page comes to $100.00 ? far below the proposed fee of $250.00.

Also, there is no reason why a flat page charge could not be used. Even under the proposed rule, the number of pages will have to be ascertained if only to know whether the initial 400 page limit has been reached. Therefore, it will not be an additional burden to determine the number of pages that have been copied.

IV. Proposed 3 7C. F. R. § 1.52(b) (2)

Amend Sec. 52(b)(2) to recite:

"The specification (including the abstract and claims), and any amendments to

the specification, except as provided for in § 1.821 ?1.825, must have ?"

to clarify that sequence listings are exempt from this section.

Newly proposed Sec. 77(b) lists the sequence listing as a section of the specification ("The specification should include the following sections in order. . . (11) Sequence listing ?"). Therefore, the rules list the sequence listing as part of the specifications.

In addition, many older cases are still pending in which the sequence listings are inserted into the specification just before the claims, rather than being attached to the end of the application after the drawings. In those older cases, the specification pages were renumbered to include the pages of the paper copy of the sequence listings.

The proposed amendment would clarify that sequence listings, whether or not they are inserted into the specification with pages numbered as part of the specification, are exempt from Sec. 52(b)(2).

V. Proposed 37 C.F.R. §1.85(c)

Cases in which the notice that formal drawings are now due, and especially cases in which the period for filing a corrected or formal drawing is already into extensions of time on the date that the final rules go into effect should be grandfathered under the old rule that allowed for extensions of time. This could be achieved by amending the last sentence of this section to read:

"Unless otherwise indicated in the Office?s notice to the applicant, this time

period is not extendable under § 1. 136(a) or (b)."

Alternatively, the Office should publish a notice to this effect.

VI. Proposed 3 7C F. R. § 1.9 7(i)

The comments mention amendments to Sec. 97(i) (64 Fed. Reg. 53796 (1999)). However, amended Sec. 97(i) was not present in the listing of the revised rules as published in the Federal Register (see 64 Fed. Reg. 53833).

VII. Proposed 37CF.R. §1.98(b)

  1. Comments on the proposed requirement for submission of a copy of an a application cited on the IDS.

The burden should not be on the applicant to provide the Office with a copy of a pending application. All new applications are being scanned in by the Office. Therefore many if not most pending applications will soon be, if not already, available to the Examiner in electronic form.

The stated problem, that copies of application are often difficult for examiners to obtain, will soon be moot. Note that the basis for the proposed amendments to rule 121 is that the Office intends to be working with electronic copies of all pending applications and that page numbers and line numbers cannot be easily determined on the electronic copies. Since the Office intends to be working with electronic copies, the electronic copies of related applications should be accessible for examiners and thus any current problem in obtaining a copy of an application will soon be obviated.

To the extent that an electronic copy is not available to the examiner, there is already a mechanism in place that examiners can utilize should they have a difficult time obtaining a copy of a pending application. That is, the examiner can simply ask the practitioner for a copy. The proposed rule changes would require the practitioner to comply with the examiner?s request.

Thus, the combination of the accessability of electronic copies of applications for the use of the Office in making amendments, and the proposed rule change in which the examiner can require certain information from practitioners, obviates the need to require submission of paper copies of pending applications for the purposes of having the same considered on an IDS, simply because the examiner may have difficulty in locating an application file.

Additionally, a copy of a pending application is not required to bring an application to the attention of the Office under the Cross Reference to Related Applications. There is no reason to have different standards for bringing an application to the attention of the examiner depending upon whether it is submitted under Rule 98 or cited in the Cross Reference to Related Applications.

(B) Comments on the requirement to identify applications on IDS' by naming inventors

Applications can now be made of record by submission of the same on Form 1449 in an IDS and the application numbers will appear on the face of patents ? however, only the application number appears on the face of the patent, the names of the inventors do not. There is no reason to change this practice.

Also, due to the late stage of prosecution of a first filed application, it may be necessary to draw a newly filed second application to the attention of the Office prior to the naming of any or all inventors on that newly filed second application. In such a case, the name of the inventor is not only unknown but even superfluous for the purposes of the IDS.

The name of an inventor in most cases will generally be only to confirm that the application number is the one intended by applicants. Therefore, even if an inventor name must be given, it should only be necessary to identify an application by the name of the first inventor, similar to naming of the first patentee for patents listed on the IDS. However, the comments in the Notice imply that all inventors must be named. The discussion of Part (8) "How To Identify a Cited U.S. Application 64 Fed. Reg. 53797 states that each listed U.S. application must be identified "by the inventors, . . . ." That seems inconsistent with the intent and language of the proposed rule.

Lastly, a requirement to name any or all inventors for efficiency of examination purposes is unnecessary because the names of all the inventors should be easily obtained from the PALM system by the examiner.

Therefore, the second sentence of Sec. 1.98(b) should be amended to either

  1. Delete any reference to the requirement for identifying a pending application by the inventor when it is submitted for consideration in an IDS;

or amend it to recite

(2) "Each listed U.S. application shall be identified by the first named inventor or identification number, application number and filing date."

VIII. Proposed 37 CF.R § 1.111(a)

The proposed rule states that the applicant must reply [to an Office action] and request reconsideration or farther examination. Thus, the language of the rule could be interpreted to mean that a Reply that fails to request reconsideration or further examination would not be considered. However, Sec. 112 states that the application will be reconsidered and again examined, "after reply by applicant." Sec. 112 does not mention a request for reconsideration or further examination.

Any Reply by the applicant should be taken as an implicit request for reconsideration or for further examination, even if such languages does not appear in the papers. Absent a petition or request to suspend prosecution, it is unlikely that an applicant would file a Reply and not desire reconsideration or further examination. Additionally, such a construction would be consistent with the Office?s desire to simplify the patenting rules, especially for pro se applicants.

The language of Sec. 111(a) should be amended to delete the language " and request reconsideration or further examination... Also, a new sentence should be inserted at the end of Sec. l.lll(a) that states: "The filing of a Reply will be an implicit request for reconsideration of further examination.

IX. Proposed 37 C.F.R. §1.121

There should be some grandfathering of older applications under the current amendment rules - for example, applications or continuing cases thereof with specifications that have been on file for 5 years or more, especially 10 years or more. The grandfathering of such cases should not be an undue burden of the office as far as typesetting for issuance is concerned since the number of those cases should to get smaller with time.

The proposed rules require replacement of entire sections of specifications, even if one word is to be changed. Compliance with the new rules, especially for older applications, will be a very harsh burden on the practitioner. Most of those cases are not available to the attorney or inventor in electronic form. For example, an older application may have been written with a word processor that current word processors do not recognize. Also, many applications have been transferred from one owner to another, and the original owner may no longer be available or willing to provide an electronic copy.

It is expected that at least one-third of our applications will need to be retyped from scratch - and each will need to be text entered in two version - one as filed (as a base application for use in filing divisional and continuation applications) and one version with all the amendments made during prosecution thus far in that instant application). The time needed to even proof such documents will cost the client many unnecessary dollars.

lt is unnecessarily wasteful of resources and inconsistent with the Paperwork Reduction Act to require submission of complete sections of specifications, for example, a long "Detailed Description of Preferred Embodiments" section, simply to change one word or a few lines within that section. There is no reason why the common practice of other patent offices of submitting a substitute page could not be used, especially if the examiners do not have the applications in electronic format.

The proposed changes to Sec. 121 will conflict with the Office allowing hand editing of paper copies by Examiners, as the proposed changes to Sec. 121 would not obviate the need for hand editing of the Office files. The examiners will still make amendments by hand. Therefore, the efforts of the practitioner in giving the Office a clean copy of entire sections are an unnecessarily unilateral harsh standard.

Instead of the unduly harsh amendment practice proposed by the Office, the goals of the Office would be achieved and the current amendment practice could continue, by simply requiring that the practitioner provide the Office with a substitute specification in both paper and electronic form at the time the issue fee was paid in Reply to the Notice of Allowance and Issue Fee Due. At that time, the practitioner could submit an electronic copy in which all of the amendments that had been made during prosecution were incorporated, including all examiner amendments. If amendments under 37 C.F.R. § 1.312(a) were submitted at the time the Issue Fee was paid, or were otherwise still unentered in the case, the practitioner could submit two versions, one with and one without the Rule 312(a) amendments. A marked up copy of the application could also be submitted if desired. This practice would not only allow the practitioner three months to prepare such an electronic copy, but would also eliminate the need for all older cases to be text entered at once in the practitioner's office. Instead, each older case would be text entered only as it became allowed.

It is unclear whether proposed Sec. 121 would take effect immediately even on outstanding office actions. If the effective date is relatively close to the date of publishing the Notice of Final Rulemaking, the applicant may not have sufficient time to properly re-key in the entire specification or even the entire section that needs amending to Reply to the Office Action. The mere publishing of the Notice of Proposed Rulemaking cannot be used justify the expense of retyping the application from scratch just on the change that this rule made be made final. If the new amendment practice is finalized, it should not apply to office actions that were outstanding on the effective date.

X. Proposed 3 7 CF.R. § 1.121 (a) (1)

(1) Amend the header to read: "Specification other than the claims and sequence listing. New Sec. 77 makes it clear that the sequence listing is part of the specification. However, the manner of amending the sequence listings is provided in the sequence listing sections.

(2) Amend the text of Sec. 121(a)(1) to read: ".. other than the claims and sequence listing ?."

XI. Proposed 37C.F.R. §1 125 (c)

The text should be amended to clarify that paragraph numbering does not apply to sequence listings, for example, by stating

"The paragraphs of any substitute specification, other than the claims, and sequence listing,...."

XII. Proposed 37 C.F.R . §1.133

The text should be amended to allow for interviews in Continuing Prosecution Applications prior to the first Office Action, for example by stating:

"Interviews for the discussion of the patentability of pending applications will not occur before the first Office action unless the application was filed under § 53(d) and the prior application have been examined."

XIII. Proposed 37 C.F.R. §1.154

Amend the header to read "Arrangement of application elements in a design application" for clarity and to avoid confusion. This also parallels the header language of Sec. 1.155.

XIV. Proposed 37 C.F.R. §1.163

Amend the header to read "Specification and arrangement of application elements In a plant patent application" for clarity and to avoid confusion.

XV. Proposed 37 C.F.R. §1.173(b)(l)

Amend the header to exclude sequence listings: "Specification other than-the claims and sequence listing."

XVI. Summary

Consideration of the above comments, and entry of the propose amendments is respectfully requested.

Respectfully submitted,

Sterne, Kessler, Goldstein & Fox p.l.l.c.

Michele A. 139">Cimbala


Registration No. 33,851


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