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Comments - Greenblum and Bernstein

Sent: Monday, May 15, 2000 12:15 PM
Cc: Bahr, Robert
Subject: Comments Relative to the Interim Rule Changes to Application
Exam ination and Provisional Application Practice

> These comments are being submitted on behalf of the Greenblum and
> Bernstein law firm in Reston, VA, relative to the interim rule Changes to
> Application Examination and Provisional Application Practice.  Our law
> firm welcomes most of the changes proposed in the interim rules.  However,
> the following observations are made:
> 1.    Where applicant files a request for continued examination (RCE)
> under 37 CFR 1.114 and inadvertently fails to enclose a required
> submission, i.e., response to prior adverse Office action or file a
> petition to withdraw the application from issue if the application was
> allowed, applicants should be given a one month extendable period within
> which to file the required submission.   
> 2.    Entry of amendments after final, upon a showing of good and
> sufficient reasons why they were not presented earlier should still be
> permitted (current 37 CFR 1.116(b).
> 3.    Permissible submissions accompanying the filing of an RCE should
> include amendments directing cancellation of previously examined claims,
> along with a request to have non-elected claims now examined (in effect
> conversion of parent application to continued examination of a divisional
> application).
> 4.    Examiners should be prohibited from making final any first action
> after a submission along with an RCE.  After all, the equivalent of the
> basic filing fee has been submitted, expedited prosecution should not be
> as much of a factor since all these applications will be post-GATT and the
> PTO will realize a net saving from not having to deal with petitions and
> other disputes relative to premature first final rejections.
> 5.    Since amendments after payment of the issue fee will have been
> eliminated, applicants need to have more control over the withdrawal from
> issue process.  Currently, applicants must contact the Office of Petitions
> for inquiries relative to petitions filed to withdraw an application from
> issue during a period when the files are difficult to obtain.  The
> suggestion is to have petitions to withdraw an application from issue
> become effective as of the date of filing, i.e., a date certain, rather
> than the current haphazard effective date determined based on when the
> appropriate PTO official decides the petition.  Thus, a grantable petition
> to withdraw an application from issue, is withdrawn as of the date of
> filing the petiton (actual filing date, without consideration of any
> certificate of mailing benefits under 37 CFR 1.8), rather than the date of
> the decision.  In this manner, a patent scheduled to issue on June 20,
> 2000, having a grantable petition to withdraw from issue filed on June
> 19th and decided on June 30th would be withdrawn from issue as of June
> 19th.  Had the petition been filed on June 20th, it would not have been
> granted.  Similarly, if it was filed on June 19th along with a request to
> have it abandoned in favor of a continuing application which was
> inadvertently not filed, again, the petition would not be granted and
> applicant's rights would be protected.  However, if all requirements of
> the rules are met, applicants should not be penalized for the PTO's
> inability to render a decision (here the PTO would be performing a simple
> ministerial act of placing its stamp of approval on an otherwise grantable
> petition) before issuance of the patent.  This change would not be subject
> to abuse, due to applicants' loss of patent term, likely publication of
> their invention before the grant of a patent and additional prosecution
> costs.  This would only be used where applicants had no choice, but to
> file these late submissions.  If this suggestion is adopted, the PTO may
> wish to review 37 CFR 1.138 to see if similar changes could be adopted
> relative to recognition of express abandonments being effective as of the
> date of filing (similar to old 37 CFR 1.62 practice).
> The following specific language is offered as possible modification of the
> interim rules:     
> A (relates to comment 4)--insert new paragrah in 37 CFR 1.113:
>   (d) A first examination by the examiner subsequent to filing a
> request for continued examination under Sec. 114 or a continued
> prosecution application under Sec. 1.53(d) shall not be made final.
> B (relates to comment 5)--change interim rule 1.313 (d) to read as
> follows:
>   (d) Withdrawal of an application from issue after payment of the
> issue fee may not be effective to avoid publication of application
> information.
>       (1) For applications filed before June 8, 1995:
>           A petition under this section will not be effective
> to withdraw the application from issue unless it is actually received and
> granted by the appropriate officials before the date of issue.
>       (2) For applications filed on or after June 8, 1995:
>           A petition under this section, will be effective to
> withdraw the application from issue as of the date of filing a grantable
> petition.  No petition will be granted under this section, unless it was
> filed before the date of issue of the patent. 
> Thank you for the opportunity to comment.  You may direct any questions
> relative to these proposals by the Greenblum and Bernstein law firm to Abe
> Hershkovitz of the firm.

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