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Comments - Yamaguchi

Sent: Friday, May 19, 2000 3:11 PM
Subject: Comments to Proposed Rule Changes

Mr. Q. Todd Dickinson
Assistant Secretary of Commerce and Commissioner of Patents and Trademarks.

Dear Mr. Dickinson:

I am grateful for the opportunity to present brief comments on the proposed
rule changes for "Application Examination and Provisional Application"
published in the Federal Register of March 20, 2000, Volume 65 Number 54,
pages 14865-14873.  I would greatly appreciate consideration of the
following comments by the Office.

The comments below are my own, and are not views of my law firm or any
organization to which I belong or any client whom I represent.

Sincerely yours,

Yoichiro Yamaguchi
Rader, Fishman & Grauer
1233 20th Street, N.W.
Washington, DC 20036



1.  Request for Continued Examination for Design Application Rather Than CPA

I suggest that proposed Sec. 1.53(d)(B) and Sec. 1.114(d)(3)(4) and (5) be
amended as follows so that design patent applications are treated in the
same way as utility or plant patent applications:

    Sec. 1.53
    * * *
    (d) * * *

    (B) A design application that was filed under 35 U.S.C. 111(a)
before May 29, 2000, and is complete as defined by Sec. 1.51(b); or

    Sec. 1.114
    * * *
    (d) * * *

    (3)  An international application filed under 35 U.S.C. 363 before
June 8, 1995; or
    (4)  [An application for a design patent: or
    (5)]  A patent under reexamination.


    Under proposed Sec. 1.114, design patent applications are excluded
from the benefit of the newly created continued examination system.  The
Office explained that it is restricting CPA practice to 
    (a) utility and plant applications filed before May 29, 2000, and
    (b) all design applications 
because maintaining two practices (as to eligibility under Sec. 1.114) for
the same purpose (continued examination) is unnecessary and will cause

    However, if design applications are treated differently, then, in
effect, the Office will be permanently instituting two systems, namely,
continued examination for utility and plant cases under  the proposed rules
and the earlier form of CPA practice for design cases.  Such a situation
will indeed be confusing.

    By the changes I propose, a design patent application will have the
same status as a utility or plant application, and CPA practice will
eventually be phased out.


2. Requirements for Provisional Application

I suggest a change in proposed Sec. 1.78(a)(3) that adds the words "if an
invention disclosed in a provisional application is made in the United
States" after the words "have any required English-language translation
filed therein within the time period set forth in Sec. 1.52(d)".


A provisional application is not examined and is automatically withdrawn
after the expiration of 12 months from filing  Nevertheless, the current
Rules require an English translation, for the purpose of national security
review.  Such national security review, however, is not conducted for
applications disclosing invention made outside the United States because
U.S. law cannot control the extraterritorial activity.  Under that logic, an
English translation of a provisional application should not be required for
a provisional application disclosing an invention made outside the United

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