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From: s t ewa rt g@exc h . h pl. h p. com

Sent: Friday, December 03, 1999 8:00 PM

To: regrefo rm @ u

Subject: Comments on Proposed Rule Revisions Published Oct. 4/99

Comments on Proposed Rule Revisions Published Oct. 4/99 by Gordon M. Stewart (patent attorney)

The PTO's continuing efforts to update and enhance patent prosecution efficiency are, as always, greatly appreciated. The only section currently being commented upon is the proposed amendment to 37 CFR 1.14.


The Office has proposed to delete paragraph 1.14(a)(1)(ii). This paragraph previously provided status information in the case of continuing applications which claimed priority from a parent U.S. application referenced in a U.S. patent or foreign patent publication. Paragraph 1.14(a)(1)(ii) is needed to avoid misleading the pubic. This is particularly true when: (i) one obtains information from the PTO on either a parent application from which priority is claimed in a foreign published app l ication, or (ii) where a parent application has issued as a U.S. patent. The availability of the continuing data avoids such persons being misled into believing that there is no need to be further concerned with a U.S. application reported as abandoned by the PTO, or that a granted U.S. patent defines the scope of the patentee's rights from the application on which that patent was based.

The PTO itself, in introducing the forerunner of paragraph 1.14(a)(1)(ii) succinctly recited exactly this rationale (61 FR 42790; 08/19/96: emphasis added):

" Section 1.14(a) is also amended to add a paragraph (a)(2) to provide that status may be supplied: (1) Conce rn ing an application or any application claiming the benefit of the filing date of the application, if the application has been identified by application number or serial number and f i ling date in a published patent document; (2) conce rn ing the national stage application or any application claiming the benefit of the filing date of a published inte rn ational application, if the United States of America has been indicated as a Designated State in the inte rn ational application; or (3) when it has been determined by the Commissioner to be necessary for the proper conduct of business before the Off i ce. Status information includes information such as whether the application is pending, abandoned, or patented, as well as the application number and filing date. THE INCLUSION OF APPLICATIONS CLAIMING THE BENEFIT OF THE FILING DATE OF APPLICATIONS SO IDENTIFIED IS TO AVOID MISLEADING THE PUBLIC IN INSTANCES IN WHICH THE APPLICATION IDENTIFIED AS SET FORTH IN SEC.1.14(a)(2) IS ABANDONED, BUT AN APPLICATION CLAIMING THE BENEFIT OF THE FILING DATE OF THE IDENTIFIED APPLICATION (E.G., A CONTINUING APPLICATION) IS PENDING."

The exact same rationale advanced by the PTO itself, would appear to be equally applicable today

In the background discussion to the current proposal to eliminate 1.14(a) the PTO appears to indicate that the intent of eliminating 1 . 14(a)(1)(ii) is to "eliminate making available data on continuing cases of an application identi fi ed in a patent." Assuming this is a desirable goal, the paragraph could be amended to specif i cally ONLY eliminate this category of continuations, without eliminating the beneficial effects of the paragraph. To completely eliminate paragraph 114(a)( 1 )(ii) would cause the Office to provide results which are "misleading".

Gordon Stewart

Patent Atto rn ey

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:08:44 PM