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December 23, 1999

To: Office Of The Assistant Commissioner Of Patents

From: Peter F. Kulkosky Primary Examiner Art Unit 1615

Subject: Changes To Implement The Patent Business Goals November 02, 1999

Notice Of Proposed Rulemaking

The following comments are in response to the notice of proposed rule changes (1228 OG 15).

I am a Primary Examiner, having handled dockets in the chemical arts continously since October 1972.

Comment upon topic (4):

The number of claims and type thereof (Markush-group elements, etc.) would not be as important a criterion as the number of restrictable inventions these claims represent.

The Unity of Invention is a weaker restriction policy in which an examiner must carry out burdensome searches since more than one invention can be defined under "Unity of Invention".

It is economical for the examiner in view of the production quota to restrict applications containing a large number of claims. In the final check of claims for allowance, much more work is done by the examiner and docket clerk in regard to claim numbering dependency checks and other form points when a large number of claims are present.

An increased fee is reasonable to discourage applications containing claims beyond a certain number. It may be possible to analyze a sample of allowed applications to check for examiner and docket clerk time relative to the number of claims in each application. However, the Office utilizes a "complexity factor" which is also relevant to this problem (see Parker Report To Commissioner Dann, December 31, 1975 – Relative Complexities of Examining Groups). In view of amendment changes throughout the examination process, it may be difficult or impossible to determine "complexity" or its' relationship to the number of original claims at the pre-examination stage.

Search time relative to the number of claims in each application is another function which should be studied. Authorities outside the Government should be called upon for answers to the question of measuring the difficulty level ("complexity") of patent applications. So, one application may require much more employee work time to process as compared to another application ofidentical total prosecution fee payment.

Comment upon topic (9):

Information Disclosure Statement consideration by the examiner is equivalent to reopening of prosecution. That is, the initial examination is being repeated each time newly cited Prior Art is considered by the examiner.

Group storage rooms such as that of Group 1600's Cm-l central storage room are littered with cartons and boxes comprising lengthy disclosure statement document collections. A monthly storage fee would be reasonable in view of comparisons with applications of ordinary disclosure statement size. The PTO should not store such boxes after allowance or abandonment of the related applications. Applicants should be encouraged to submit statements of relevancy when many documents are part of an IDS Statement ( identify which documents the Applicant considers to be the most pertinent).

Examiners are not accorded a time increment to process late-submitted IDS statements. Thus, the examiner who has to handle many applications containing such IDS submissions is at a disadvantage in comparison to examiners who have few of same.

The number of CPA filings for the purpose of having an IDS statement considered by the examiner should be survey reported (printed in the Official Gazette ).

CPA filings may be a more efficient way of obtaining a careful consideration by the examiner of the Prior Art of late-submitted IDS statements.

U.S. Patent application first actions and PCT search reports should not be permitted until all foreign search reports are of record. That is. The PTO should hold applications and not allow action until all disclosure staements are received from Applicants who have definite plans to submit Prior Art later (i.e., the Applicant knows that a foreign search report will be available at a given date). This system would prevent duplication of work effort by the examiners, docket clerks, typists and other application file handling employees.

A CPA should be required to properly accomodate late submitted Information Disclosure Statements.

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