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Dear Messrs

Dear Messrs. Bernstein and Bahr:

On behalf of the law firm of Greenblum and Bernstein, P.L.C., I would like to thank you and your colleagues at the PTO for the many excellent proposed rule changes ( 1228 OG 15, November 2, 1999) which should make practice before the PTO more "user friendly".

I would like to offer a few refinements which will hopefully be incorporated into the final rule changes.

(1) 37 CFR 1.27

While the changes proposed to 37 CFR 1.27 will make it much easier to comply with the formalities of claiming small entity status for those who choose to no longer file a small entity declaration form, the guidelines as to who can make the necessary assertion are very confusing and unnecessarily complex.

I would suggest further simplification by permitting any person authorized to act on behalf of the inventor/applicant to make the assertion. The PTO should have an announced policy of not verifying whether the person making the assertion is in fact authorized, as the benefits of the assertion are only financial in nature, i.e., lower payment of certain fees. Thus, the burden of ensuring that the person making the assertion has applicant's authorization should rest with the applicant. Situations where applicant brings to the attention of the PTO that the person who made the assertion was not authorized to act on behalf of the applicant should be handled by the PTO on a case-by-case basis. I would think that these situations would be so rare as to justify the PTO removing itself from the initial process of ensuring that the person making the assertion is in fact a person falling within the guidelines of the proposed rule changes.

(2) 37 CFR 1.121

The proposed changes to 37 CFR 1.121 include amending the claims by way of presenting a clean copy (for printing purposes once the application is allowed) and a marked-up copy for examination purposes.

I believe this practice will introduce a number of drawbacks, including increased size of application files and frequent inadvertent discrepancies between the clean copy of the claims and the marked-up copy. It is highly likely that examiners will focus their attention on the marked-up copy and completely ignore the clean copy, even though it will be the clean copy that will be printed in the issued patent. Additionally, it is not clear which will constitute the "official copy" where discrepancies exist, i.e., the clean copy, or the marked-up copy? Will discrepancies be correctable by certificate of correction and will the requests for a certificate of correction be granted automatically? In situations where a certificate of correction is not granted, applications will issue and thus become part of the public domain, even though the invention that applicant thought was claimed is not part of the patent that the Examiner allowed. How will this situation be corrected? Petitions to revive will not be effective, as there will be no abandoned application. It seems that the reissue process will be the sole remedy and one would guess that this would have to be relied on with some frequency.

As an alternative to the problems caused by having two sets of claims in an application, I suggest that the PTO no longer permit amendment of claims by underlining and bracketing. Instead, only clean copies of claims should be accepted.

By way of example, the original application contains independent claims 1 and 6 and dependent claims 2-5 depend directly or indirectly from claim 1, while claims 7-10 depend directly or indirectly from claim 6. Under the proposed rules, if an applicant wished to amend claims I and 6, two sets of claims would have to be filed, one marked-up and a clean copy. As mentioned above, the application file would contain more papers and the applicant would risk introducing some inconsistencies between the two sets due to clerical errors or a less than perfect text compare system.

My first suggestion is to only permit amendment by presentation of a clean copy. Thus, in the example above, applicant would cancel claims 1 and 6 in favor of claims 11 and 12. Additionally, claims 2-10 would have to be canceled in favor of claims 13-20 to reflect the correct dependency of those claims.

As a farther refinement of the suggestion above, I would propose retention of the numbering system of claims followed by letter designations. A first amendment of claim 1 would require a complete re-writing of the claim in clean form and be designated as claim la, a second amendment of claim I would be designated claim lb, and so on. There would not be a need to amend the claims which depend directly or indirectly from claim 1, if the sole reason for amending is to reflect the new numbering of claim 1. Rather, it would be understood that any claim making reference to claim I is making reference to the latest version of that claim which has been filed and approved for entry by the Examiners, i.3., claim 1a, or 1b, etc. Once the PTO makes the transition to electronic filing of claims, the PTO may elect at that point to remove the letter designation after the claim number.

(3) 37 CFR 1.312(b) and 1,313

The requirement that applicant acknowledge unpatentability of at least one claim in order to have the application withdrawn from issue to have an amendment considered after payment of the issue fee sets a trap for the unwary applicant or practitioner. This type of admission can come back to haunt an applicant or the practitioner when it turns out later that in fact the claim was not unpatentable.

If the PTO wishes to discourage amendments after payment of the issue fee, it would be better if they were simply prohibited. As a related issue, applicants have historically had problems with getting applications withdrawn from issue once the issue fee is paid. On occasion, practitioners receive critical information at a late stage in prosecution (IDS material, etc.), sometimes after payment of the issue fee. Once the petition to have the application withdrawn from issue is filed, applicant has no control over the handling, and, on occasion, the mishandling of the papers and the application file in the PTO. Thus, patents issue even though applicant and PTO staff make every effort to stop issuance of the patent. While this may be a necessary continuing problem for pre-GATT cases, where applicants benefit at times from delayed issuance of a patent, the urgency in having the patent issued is generally with the applicant for post-GATT cases.

It is proposed, therefore, that for post-GATT applications, a petition to withdraw an application from issue be effective as of the date of filing the request, rather than as of the date of grant of the petition. Thus, while the decision on petition may be rendered after the patent was printed, the decision itself would constitute a simple ministerial function on the part of the PTO acknowledging the effect of applicant's express abandonment of the application prior to issuance of the patent in favor of the request for continuing prosecution of the application. The benefit to this procedure is that applicants would be able to reliably avoid issuance of a patent until the material they wish to have considered is in fact considered.

As an additional refinement of the suggestion above (though not as critical), applicants would be refunded the issue fee if the application was in fact withdrawn from issue prior to issuance of the patent, but would not be entitled to a refund if the patent was printed in spite of the request to the contrary.

I hope that the suggestions above, or improvements on the suggestions, will be incorporated into the final rulemaking. Again, the continued steps taken by the PTO to simplify procedures to be followed by applicants are greatly appreciated.


Greenblum and Bernstein, P.L.C.

Abraham Hershkovitz Reg. No. 45,294

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:01:32 PM