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Sent: Friday, December 03, 1999 5:18 PM


Subject: Letter

December 3, 1999

By E-mail

Attn: Mr. Hiram H. Bernstein

Washington, D.C. 20231

Dear Mr. Bernstein:

Please consider the following comments concerning the Proposed Rulemaking on Changes to Implement the Patent Business Goals, published at 64 Fed. Reg. 53772.

I believe that two of the proposed rule changes, both relating to confidentiality, adversely affect the patent system and its users. These changes are (1) the proposed requirement in Rule 98(a)(2)(iii) that copies of copending patent applications be submitted when they are cited in Information Disclosure Statements, and (2) the proposed elimination of the provisions of Rule 14 making available status information on the U.S. national stage of PCT applications and continuations and divisions of patented applications.

Both of these proposed changes involve complex interactions with the recent legislation providing for publication of patent applications. Thus they should be addressed in a single, comprehensive rulemaking relating to that legislation, with all relevant issues and proposed rule changes considered together rather than piecemeal here in the present rulemaking and again in the application-publication rulemaking.

Furthermore, these changes are counterproductive on their own merits.

Rule 98

Proposed amended Rule 98(a)(2)(iii) eviscerates the confidentiality requirements of 35 U.S.C. §122. It requires that text of otherwise confidential applications be exposed to public inspection upon issuance of any patent in which they were drawn to the attention of the Examiner.

Examiners are already required to conduct interference searches of copending, secret applications. The contents of the applications that they consider sua sponte, regardless of their degree of materiality, are not made of public record unless an interference is declared. Under the proposed rule change, applicants will be penalized for assisting in the Examiners' efforts. Applicants would have to forfeit their secrecy rights if they assist Examiners by pointing out potentially relevant pending applications. Furthermore, applicants are obligated to provide that assistance under the duty of disclosure. This creates an unjustifiable and unprecedented burden

on applicants. Never before have applicants been forced to forfeit their express statutory rights to confidentiality in order to comply with the duty of disclosure.

Furthermore, this compulsory forfeiture of rights is not counterbalanced by a legtimate inability of the Examiners to access the information in a less prejudicial way. The present rule provides them all of the information they need to walk down the hall and look at the cited application in its own file without breaching the applicantsÂ’ statutory right to secrecy. Any added convenience of avoiding that short walk is far outweighed by the loss of secrecy to applicants.

If file tracking is a problem in the PTO, that problem should be addressed by the PTO directly rather than being sidestepped by violating applicants' right to secrecy. Particularly as electronic tracking and storage of applications expands, the file tracking and review process will become easier and easier for Examiners. The burden on Examiners of reviewing related applications in their own files is minimal and shrinking. Thus there is no excuse for the compelled forfeiture of rights that would be imposed by the proposed rule change.

The §122 confidentiality rights are a fundamental aspect of the patent system. That system is based on the quid pro quo of disclosure of an invention being exchanged for issuance of a patent on that invention. The importance of confidentiality rights has been highlighted in the lengthy legislative debate over patent application publication, and the detailed and carefully drafted provisions of the recent legislation for maintaining secrecy of otherwise unpublished inventions. The proposed change to Rule 98 tramples on these carefully preserved secrecy rights by requiring copies of secret, unpatented applications to be dispersed through the files of applications on related inventions under threat of the devastating effects of charges of inequitable conduct.

Rule 14

Rule 14 was amended to provide public access to the subject status information for good reasons following public notice and comment. The proposed change to that rule is not accompanied by any explanation or comment on why those reasons no longer apply. The fleeting reference to "an expectation of confidentiality" provides no explanation of why or whether such expectations have changed since the current rule was put in place. Such arbitrary flip flops without any rational explanation should not be permitted.

Furthermore, proposed amended Rule 14 removes the ability of the public to know whether it is safe to practice technology disclosed but not claimed in issued patents and published PCT applications designating the United States (PCT/US applications). Existing Rule 14 allows the public to know whether an applicant has finished prosecuting claims based on the disclosure of an issued patent or PCT/US application, without breaching confidentiality of the content of any continuing prosecution. This fairly balances (1) the right of the public to a reasonable level of certainty in deciding how to allocate millions of dollars in research and development efforts and (2) the right of the patentee-applicant to confidentiality as to the contents of pending applications.

The present unamended rule complements the recent publication legislation. That legislation provides for publication of applications (including continuing applications) so that the public can be aware of the filing of potential "submarine" patents. Much of this public benefit would be eliminated by the proposed rule change that prevents the public from knowing whether such applications are pending or abandoned, thus chilling research and development as to unpatented subject matter.

Furthermore, issues concerning availability of status information concerning published applications will need to be addressed in the rulemaking relating to the recent application-publication legislation. Such issues are closely related to the issues involved when the content of pending applications is published by issuance of a parent patent. Thus these issues should all be addressed together in a single rulemaking.

Respectfully submitted

William P. Berridge

Registration No. 30,024

Oliff & Berridge, PLC

United States Patent and Trademark Office
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