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Comments on the Proposed Rule Changes

Sent: Sunday, August 05, 2001 10:27 PM
To: AB37 Comments
Subject: Docket No.: 010606145-1145-01
Dear Sir or Madam
I am writing in opposition to the proposed rule-making which will abolish CPA practice
for utility patents. See Notice of proposed rulemaking
Federal Register: July 9, 2001 (Volume 66, Number 131)
Page 35763-35765.
First, I commend the USPTO for continuing to allow public comment by way of
email. This is a great boon for democracy.
With respect to abolishment of CPA practice, I respectfully submit that:
(1) small entities are exactly the parties that will be most negatively impacted
by the rulemaking; (2) RCE is no excuse for this proposed change to the rules;
and (3) the USPTO has no rationale basis for wanting to abolish the shortcut
practice that was previously known as File-Wrapper Continuing (FWC) practice.
(1) Of course, large entities who have deep pockets can well afford to recreate a
prosecution history by filing under 1.53(b) and re-presenting all amendments and other
papers as may be necessary for returning substantially to a position that they were in
in a previous application. And of course the PTO can reap additional revenues from
the repeated presentation of new claims and the presentation of other
pay-per-view documents. It is the small entities who have limited resources in terms
of man-power, time and monies who will be most severely impacted, and dissuaded
from taking advantage of a re-filing if CPA practice is abolished. A reason why one
may wish to re-file a pending application is to take advantage of a privilege that
Congress has accorded to those who file after a critical date but not to those who file
beforehand. It is understood that persons who filed between June 1995 and November
2000 are disadvantaged by not having benefit of Patent Term Adjustment (PTA),
provisional rights or protection under 103(c) from their own 102(e) references. Those
small entities that filed prior to June 1995 are most hurt by the proposed rule.
(2) The right to "persist" with prosecution has always been present within
35 USC 132. Section 132(b) does not create a new right for Applicants. It
creates only a new right for the PTO to charge "appropriate" fees for requests
to continue examination. Whether the PTO promulgated 1.114 with appropriate
fees and rationale is a separate issue to be debated. 35 USC 132(b) did not
change the situation for Applicants such that removal of FWC (CPA) practice
is now warranted. RCE is being used as a ruse rather than a valid reason.
(3) It has always been understood that with the old FWC practice,
and with the CPA practice which replaced it, the PTO was doing a favor to
Applicants by making it easier for them to refile and return to a situation
they were last in at the time of final rejection. There is nothing in the statute
that makes FWC/CPA a matter of right. However, now that the agency has
given the privilege to Applicants, under the APA, the PTO should articulate
a rational reason for "why" it seeks to remove the privilege. It has not done so.
RCE is not a reason. It is a sham excuse. Moreover, it is advantageous to the
PTO to retain CPA practice because that reduces the possibility of error on
the agency's side as well as on an Applicant's side in returning a case to a
condition it was in, in a previous filing. Reconsideration of this ill-though out
proposal is respectfully requested.
Submitted by a concerned citizen.
who wanted to continue prosecuting by amending after final rejection
United States Patent and Trademark Office
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Last Modified: 7/16/2009 11:27:52 AM