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December 3, 1999

December 3, 1999

Box Comments ? Patents

Assistant Commissioner for Patent

Washington D.C. 20231

Attention: Hiram H. Bernstein.


I would like co submit the following in response to request for comments on the proposed new rules for implementing the PTO Business Calls published in the October 4, 1999 issue of the Federal Register.

These comments represent solely my own opinions and are not intended to represent opinions or positions of any other attorney at Limbach & Limbach or of the firm itself.

First the PTO should be highly commended for listening to comments on the various topics put forth last summer and refraining from issuing new rules in many of the areas proposed.

The proposal to amend Rule 14 to provide that the PTO will no longer give status information or access on applications claiming priority of an application identified by the requestor retracts important information currently available to inventors and companies, namely whether a patent application is still pending which claims priority of an application which is already known to the requestor. The ability to determine whether or not a continuing application is still pending is an important piece of information in a party's determination as to whether to proceed with planned activities. Removal of the right to receive this information is in conflict with the PTO?s attitude against submarine patents. This proposed amendment should be retracted.

The procedures for simplifying assertion of entitlement to small entity status seemed practical. The concept is sensible and I am looking forward to seeing how these procedures will work in practice.

Box Comments - Patents

December 3, 1999

Page 2

With respect: to Sections 1.97 and 1.98 (Information Disclosure Statements) the Office is again to be commended for refraining from instituting a number of the proposals floated earlier this year. However, with respect to consideration of references by the Examiner, referring to the previously issued guidelines for reviewing requests for reexaminations, the carryover into this section (which unfortunately was expected) is basically inconsistent with the IDS procedures. To say on the one hand that applicants are not required to submit comments about references which are in English and on the other hand to suggest that should the applicant describe the references in an IDS, such references will be considered to be "discussed" and thus equivalent to references fully considered by the Examiner, does nothing more than make it desirable for applicants to submit IDS's with a lengthy list of documents each described somewhat so that all the references will legally have "been considered" by the Examiner. This, in addition to presenting an unrealistic picture of what occurred during examination, will significantly increase the cost to applicants particularly to individual inventors, of filing an IDS. The PTO should adhere to its present procedure that description of the references in the English language is not required, and that no advantage is to be obtained by providing a description.

The proposal for new rule 105 is totally unwarranted and the rule as written is an unwarranted extension of PTO authority.

While it is true that the PTO has certain inherent authority to request additional information, the attitude taken in the comments and the nature of the comments made indicate that the PTO is planning to extend its authority to require the applicant to conduct work on behalf of the PTO to an unwarranted extent. On the one hand I certainly agree that clarification of the date of a reference submitted by a party is something which the PTO has a right to request from that party; however, this is about the most innocuous example of those mentioned in the comments. The PTO's position that when any request for information is made the applicant must make a good faith attempt to obtain the requested information or make a reasonable inquiry is an unwarranted extension of authority. For example, should the PTO ask whether there is a commercial database available which could be searched for a particular aspect of the invention, then require the applicant to make an attempt to locate such databases prior to responding that the applicant is not aware of any such. There is absolutely no basis for assumption of authority by

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Box Comments ? Patents

December 3, 1999

Page 3

the PTO to require the applicant to conduct such a search for commercial databases.

Similarly a requirement of submission of any non-patent literature or patents used to draft the application or used in the invention process is not warranted. This procedure, which is similar to that required by the Chinese Patent *Office, requires an applicant or inventor to go back to what may be years of inventive effort to insure that every piece of literature read or considered in any way by the inventor during this period be submitted whether or not it is relevant to the invention as finally developed and claimed. Likewise a requirement for mark-ups of reformatted or continuation-in-part applications provide additional hardship to inventors, particularly small inventors and is not warranted.

Very truly yours



Joel Q. Ackerman

Joel Q. Ackerman JOA:pg

United States Patent and Trademark Office
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