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From: ts t reete@qual co m m . co m

Sent: Wednesday, October 13, 1999 5:58 PM

To: regrefo rm

Subject: Topic 3, Delayed submission of oath or declaration

Dear Mr. Bernstein:

I am an in-house patent attorney for Qualcomm, Inc. in San Diego Califo rn ia. These comments are my own, however, and should not be attributed to my employer.

The Off i ce had considered permitting a delayed filing of the inventor's declaration until after the Notice of Allowability had been filed. This permission would be conditioned upon filing, instead, a long document naming the apparent inventors, submitting foreign priority claims, sta l ing that the practitioner had mailed a copy of the application to every named inventor, etc. Many commenters complained that the substitute document was onerous in itself, and would also lead to additional onerous consequences. In particular, many commenters rely upon a Notice of Missing Parts as a reminder that the oath needs to be executed.

Rather than intending to create a burden, the Office was attempting to remove a burden – both from itself and from those who practice before it. Often the only thing which a practitioner cannot obtain is a signature from one or more inventors. The Off i ce is then put to the burden of sending out a Notice of Missing Parts, and we practitioners are put to the burden of fairly rapidly obtaining those signatures.

I can understand the practitioners who inadvertently send in an unsigned oath, and who want the Off i ce to give them a quick notif i cation that there may be a problem. Such situations require that existing Office practice be continued.

Some of us, however, know full well that, in some situations, we are submitting an unsigned oath. We have made a good faith attempt to get a signature, although we have not generated copious documentation to prove the extent of our attempts. We know that we can get a signature, or can generate sufficient documentation to support a petition, by the time Notice of Allowability is mailed. We probably can get it by the f i rst Office Action. All we want is an early filing date, and the opportunity to clean up the administrative details later.

For us, the rules should be amended to provide for a no-fee petition to file executed copies of the oath later. It would be granted as a matter of course on the face of the filing receipt, just as foreign f i ling licenses (when the defense agencies do not object) are granted as a matter of course on the face of the filing receipt. Without this petition – an affirmative act on the part of the practitioner - the existing Notice of Missing Parts practice would continue. With this petition, signatures on the oath would be treated as a mere informality, and not as a substantive defect.

An unsigned oath, under this proposal, would be treated much like informal drawings are treated: they have to be corrected fairly promptly after the Notice of Allowability, and the informality is noted in the f i rst Off i ce Action. Inventors are sometimes slow to respond, but draftsmen are also sometimes slow to respond. All that should be required is a reminder, contained in the f i rst Off i ce Action, that there needs to be some follow-up. Indeed, the current Off i ce practice with respect to informal drawings shows how well this proposal would work. If the practitioner designates drawings as "informal", they are not even sent to the draftsman for review. This saves time and effort for everyone.

Note that no onerous substitute document would be required in order to obtain a delay in submitting a signed oath. The practitioner might eventually have to do all the things set out in the proposed substitute document, but this would be done in order to support a conventional petition to file (or proceed to issuance) without a signature on the oath or declaration. Much more often, however, the signature would be obtained and the extensive di l igence (and documentation thereof) could be avoided.

Speaking of signatures on the declaration, the trademark side of the Office takes a much more practical view: a photocopy of a signature is acceptable, as is a fax copy, or even a person keyboarding in his name on an electronic document sent over the Internet. The patent side of the Office should adopt this progressive attitude. It would lead to a much reduced number of Notices of Missing Parts, and of petitions to file (or proceed to issuance) on an unsigned declaration.

I urge you to reconsider the abandonment of Topic 3.

Respectfully submitted,

Tom Streeter

Reg. No. 32,007

Be rn stein, Hiram


Sent Friday, October 29, 1999 3:21 PM

To: regrefo rm @ u

Subject: Topic 3, Changing amendment practice to replacement by paragraphs/claims;

Dear Mr. Bernstein:

I am an in-house patent atto rn ey for Qualcomm, Inc. in San Diego, California. These comments are my own, however, and should not be attributed to my employer.

Rule 52(b)(6) is proposed to be amended to require a paragraph number, of at least four digits (including leading zeros), in brackets, and highlighted in bold. Most word processors do not have the capability of prepending leading zeros. Most word processors do have the capability of consecutively numbering paragraphs with four digits, but only if the first paragraph is assigned a four-digit paragraph number, such as [1000] or [1001 ]. The proposed rule does not explicitly prohibit this practice, but seems to indicate that the first paragraph should be assigned paragraph number [0001 ]. Please give consideration to exp l icitly allowing the first paragraph to be numbered [1000] or [1001 ]. The USPQ has had great success in similarly numbering its pages,

The proposed rule also seems to indicate that paragraph numbers will be used during prosecution, but will not appear in the final issued patent. Please give consideration to including these numbers in th final issued patent – both in print and in electronic form.

I am often able to download a reference - an issued U.S. patent - from the Office's web site, but it is in Word format rather than in Acrobat format. I therefore do not have the column and line numbers which appear in the print version of the patent. This complicates matters when I wish to point out to the Examiner a particular part of the patent. If the electronic version of the issued patent had paragraph numbers, it would be straightforward to point out the exact section of interest. If the print version of the issued patent also had. paragraph numbers, the Examiner could see what I was referring to, even if he had only the print version, and not the electronic version, of the patent.

Of course, the Examiner could point out particular sections to me with equal ease.

During prosecution, paragraphs in the specification not only get amended, but also get moved around, cancelled, expended into multiple paragraphs, and the like - just as the claims do. The f i nal issued patent should show the paragraphs in consecutive numerical order, just as the claims of the final issued patent are shown in consecutive numerical order. The paragraph numbers will be in brackets and highlighted in bold. It should be straightforward for the OCR and word processing software used by the Office to detect the paragraph numbers and to renumber them consecutively, much as the Office already renumbers the c l aims consecutively.

Respectfully submitted,

Tom Streeter

Reg. No 32,007*

United States Patent and Trademark Office
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