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Comments - Rosner

Sent: Monday, May 15, 2000 9:09 PM
Subject: Proposed rule changes to 37 C.F.R. 1.312

    Pursuant to the notice dated March 20, 2000 "Changes to Application
Examination and Provisional Application Practice", 37 C.F.R. 1.312 is
proposed to be amended so as to require any amendment after allowance to be
filed before or with the payment of the issue fee.

    The proposed change is neither workable nor practical for the following

    Within days after a notice of allowance is issued, the application file
is forwarded to an outside contractor for initial data capture.  Even if an
Amendment under 37 C.F.R. 1.312 is timely filed after the notice of
allowance isues (e.g., within three or four weeks after the notice of
allowance issues), the application most often is not returned to the
examiner for consideration of the Amendment under 37 C.F.R. 1.312 until
after the date the issue fee is due.  Practitioners will have no choice but
to pay the issue fee while waiting for the examiner, through no fault of
his/her own, to act on the propsed amendment.  Suppose that the examiner is
not able to enter the Amendment under 37 C.F.R. 1.312 as filed, and that
further changes are needed or recommended by the examiner.  Under the
proposed rule change, the applicant would be barred from filing a second
Amendment under 37 C.F.R. 1.312, thus forcing applicant to withdraw the case
from issue and to either (i) request continued examinaton accompanied by a
submission under 37 C.F.R. 1.114, or (ii) file a continuing application and
expressely abandon the parent.

    Both (i) and (ii) above are costly, would considerably delay issuance of
a patent, and would not be necessary if the Office were able to quickly act
on amendments after allowance.  However, as mentioned above, this is not the
case because the examiner does not have access to the file until intial data
capture is complete.  My current experience is that the file is not retured
to the examiner until well after the time that the issue fee is due.

    In my view, one of two further changes are needed.  Either the Office
should still allow for amendments after the issue fee is paid (present Rule
312(b)), or the Office must guarantee that amendments after allownace will
be promptly considered.  The second of these is not compatible with sending
the application file to an outside contractor for initial data capture.

Abraham J. Rosner
Reg. No. 33,276

United States Patent and Trademark Office
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