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Comments - Gimlan114

From: Gideon Gimlan []
Sent: Sunday, April 09, 2000 1:15 PM
Subject: Public Comment re Proposed Rule 1.114

Attention Robert W. Bahr.
April 9, 2000


Before embarking down an opposite slope, this commentator wishes to
applaud the USPTO for integrating the Internet into its rule-making and
comment process. This is a great boon for democratic government. It
enables many more people to easily watch over and participate in the
rule-making process.

Now to the main point. With all due respect to the work that the PTO has
put into rapidly formulating the proposed Rule 1.114 of March 2000, I
must protest that the one fee set forth therein is established without
reason and therefore constitutes arbitrary and capricious rule-making.
Moreover, the published basis for interim Rule 1.114 is founded on a set
of fictions rather than facts and therefore constitutes rule-making that
is not supported by reasons based on facts.

More specifically, the new version of 35 USC 132 limits the Director to
establishing "appropriate fees" and these fees are not merely for the
pursuit of file-wrapper-continuing practice (FWC), but rather for "such
continued examination" as set forth in 132(a).

Like the old version of 35 USC 132, the AIPA version states in
subsection (a), "Whenever on examination ...". The plain meaning of this
language is, no matter when during examination. It does not mean "two
bites at the apple" or some other fictional substitute. (The old Rule
1.113 does not override Constitutional and APA rights to due process
during agency adjudication over deprivation of a statutorily-created
property right.) Subsection (a) of 132 concludes with, "if the applicant
persists ... shall be reexamined". This means that if the Applicant does
something that qualifies as "persisting" in his or her claim for a
patent, the PTO has no choice but to again place the application into
examination, Rules 1.113 and 1.116 notwithstanding. That brings the PTO
back to the top of subsection (a) where it says, "Whenever on
examination ...". Neither the statute nor the case law has support for
the notion of "two bites at the apple." That is a fiction that the old
PTO created in order to limit its costs and maximize its revenues. The
old version of 35 USC 132 did not give the PTO any means by which to
cover the costs of dealing with a "persistent" applicant.

The new version does. But it calls for "appropriate fees". At minimum,
section 132 expressly recognizes two distinct forms of persistence,
namely that "with or without amendment". The proposed Rule 1.114 does
not differentiate between such forms and it does not explain why the
same fee as is charged for filing an application for an "original"
patent (35 USC 41) is appropriate for all instances where an applicant
persists under section 132(a).

Consider a case where an applicant "persists" without amendment by, for
example, filing new arguments with or without new evidence. The
following intake operations (OIPE) for a new and "original" application
do not have to be repeated by the USPTO: (1) scan in all the newly
received papers and accord a temporary identification to them; (2)
determine if enough is submitted to qualify for a serial number and
filing date; (3) determine if there are missing parts and issue a notice
thereof; (4) determine what art unit the application papers should be
forwarded to for initial, substantive examination. The following initial
examination work for a new and "original" application do not have to be
repeated by the Examiner: (5) read the entire application for a first
time including the oath or declaration to understand what initial issues
of patentability may exist; (6) if restriction is deemed appropriate,
make such restriction; (7) analyze the elected claims for novelty and
perform a broad search of the applicable prior art; (8) formulate and
write up the initial grounds of rejection and/or allowability; and (9)
receive and consider the first response from the applicant which
establishes the applicant's initial position concerning rejection or
changes the direction and/or scope of the claims. None of this has to be
repeated in the case where an applicant "persists" without amendment
under section 132. Thus the basic filing fee cannot be rationally
appropriate for such a case.

The new powers and duties of 35 USC 2 obligate the Office at (b)(2)(E)
to recognize the public interest in continuing to safeguard broad access
to the US patent system through its fee structure. Pro se and other,
like situated applicants with limited financial ability will be unduly
dissuaded from persisting with justifiable claims for a patent if the
basic filing fee is charged for every act of persistence, even if that
is the half rate charged to a small entity. Reconsideration and the
formulation of new rules are respectfully requested in view of the above

Respectfully submitted, Gideon Gimlan (Reg. 31,955)
[Disclaimer: The above are entirely my personal views as a concerned
citizen of the United States. They are not to be attributed in any way
to my firm or any client or any other constituency. Thank you again for
giving these comments due consideration.]

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