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Comments on Proposed Rule Changes re 18 Month Publication

Sent: Thursday, October 04, 2001 4:07 PM
To: AB41 Comments
Subject: Comments on Proposed Rule Changes re 18 Month Publication

    This is a purely personal* response to the 66 FR 172 notice of
9/5/01 containing a PTO request for public comments before 10/5/01 on this
rule proposal entitled: "Requirements for Claiming the Benefit of
Prior-Filed Applications under Eighteen-Month Publication of Patent

This PTO proposal is intended to clarify the practice for claiming benefit
under 35 U.S.C. §§ 119(e) and 120, as amended by § 4503(b) of the American
Inventors Protection Act of 1999 (AIPA).  However, it is suggested here that
several points should be addressed in the final rule package. 

First, since the reference requirements for claiming benefit within the 4/16
month limits are to implement the 18-month publication requirements of AIPA,
those limits should only apply to applications filed AFTER November 29,
2001.  § 1.78(a)(2)(ii) as presently drafted could conceivably apply to
applications filed prior to November 29, 2000.  Accordingly, it is suggested
that the United States Patent and Trademark Office (USPTO) make clear that
there is no waiver of priority benefit for failure to comply with the 4/16
month reference requirements of § 1.78(a)(2)(ii) in cases filed prior to
November 29, 2000.

Second, the paragraph bridging columns 1 and 2 of 66 Fed. Reg. 46411
indicates that if the USPTO recognizes a claim for benefit "elsewhere in the
application and not in the manner specified in § 1.78(a)(2)(i) ... but
within the time period specified in § 1.78(a)(2)(ii)", no petition will be
required.  In light of this, it is suggested that proposed § 1.78(a)(2)(ii)
should be amended to clarify that if the priority data is recognized by the
USPTO and appears on the patent application publication, or, if priority was
timely and properly legally claimed by the applicant but erroneously not
noted by the PTO,  then the requirements of § 1.78(a)(2)(i) and (ii) and the
patent statute have been satisfied and benefit is not waived.  

Third, it is noted that it is in the public interest to have any reference
with any priority benefit claim to have that priority benefit claim on the
face thereof, especially including published patent applications.
Therefore, the USPTO should take all steps necessary to insure that if an
applicant has made a statutorily proper priority claim that it will be
clearly indicated or printed on the patent application publication.  If it
is not, the USPTO should provide some mechanism to directly associate that
correct 102(e) or 102(g) reference date with the patent application
publications without the burdensome requirement to inspect application

Most importantly, the PTO should be providing applicants with the greatest
possible flexibility for satisfying priority claim requirements, and helping
applicants to avoid waivers of  benefit claims, not adding another basis for
invalidating patents on minor procedural technicalities.  It is contrary to
the PTO's public interest obligations for innocent clients to be deprived of
patent rights and have patents rendered fatally defective by adding
hyper-technical requirements merely for the clerical convenience of the PTO
in a PTO publication process.  For example, § 1.78(a)(2)(iii) should further
be amended to permit the priority reference required by § 1.78(a)(2)(ii) to
be included in the declaration, as it has always been before.  USPTO
employees are familiar with checking the declaration for formal requirements
and must do so already.  Moreover, and most importantly, the USPTO should
make it clear in comments accompanying the final rules that if the
requirements of § 1.78(a)(2)(iii) have been met, then applicant has not
waived benefit even if the priority claim is not included in the patent
application publication.

§ 1.78(a)(3) provides a mechanism for correcting an error in claiming
benefit.  Will there be any mechanism for correcting a defective priority
claim when a PCT application is filed designating the United States but then
a continued application is filed instead of entering the U.S. national
stage?  If, for example, there was an original provisional application
filed, but its benefit was never claimed in the PCT application, is there a
way to correct the defect in the benefit claim after the time for entering
the national stage has expired?  If so, would correction be possible even if
the PCT application had been filed in a non-U.S. receiving office?

    The proposal to eliminate the requirement that an English language
translation of a provisional application filed in a language other then
English be filed within the 4/16 month time period in order to avoid waiver
of a § 119(e) benefit claim for a provisional application is desirable.
However, in doing so, if the USPTO fails to issue any notice requiring an
English translation, will voluntary submission  be likely, since it is not
required?  In such case, might the public be disadvantaged when the
subsequent regular patent application publication is cited as § 102(e) prior
art?  In the absence of a USPTO notice, will such a change transfer the
burden to obtain a translation from the applicant claiming benefit to the
applicant against whom the patent application publication is cited as a

            Thank You, 
Paul F. Morgan
330 Oakdale Dr.
Rochester NY, 14618
Work Tel. (716) 423-3015   FAX (716) 423-5240  

*Grateful appreciation is expressed for the preparation of extensive prior
drafts on this subject by Anthony Zupcic, current Chair of the involved
AIPLA Committee, and Charles Van Horn, which I have extensively plagiarized,
but substantially modified, in preparing this personal (non-AIPLA) comment.

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