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Proposed Rule Change to Eliminate CPA's in Utility and Plant Patent Applications

Sent: Tuesday, July 24, 2001 6:50 PM
To: AB37 Comments
Subject: Proposed Rule Change to Eliminate CPA's in Utility and Plant Patent Applications

Attention Eugenia A. Jones

The following are my individual comments, as a patent practitioner with
nearly 20 years of experience in patent prosecution, on the proposed
complete elimination of CPA practice in utility and plant patent

First, I have reviewed the comments submitted by Paul Morgan concerning
the substantive differences between CPA's and RCE's. I agree completely
with those comments, which I believe provide compelling reasons for
keeping the availability of CPA's for applications filed before May 29,
2001. In addition, I note that publication fees apply to CPA's, thus
offsetting the expense of their publication as intended by Congress.

Second, I believe that there are additional important differences
between RCE's and CPA's that require that CPA's be kept available for
applications filed before May 29, 2001. In particular,

(a) There is a strong public interest in publication of the
existence of patent applications filed before May 29, 2001 that are kept
pending by post-final or post-allowance action by the applicant after
November 29, 2001. Such applications are the very type for which
Congress determined that patent applications should be published --
potential submarine applications being kept pending in secret by the
applicant for any number of years. Thus it would contravene the intent
of Congress to make it more difficult for applicants to have such
applications published.

(b) Patent term guarantees do not apply to RCE's, whereas they do
apply to all further CPA's. Thus the protection of the AIPA provided in
the patent term guarantee provisions would be improperly denied to
applicants forced to choose an RCE by denial of the ability to file a

Third, the ability to file a Rule 53(b) continuing application would not
make up for denial of the ability to file a CPA, for at least the
following reasons:

(a) The filing process for a Rule 53(b) application is much more
complex and attorney-time intensive than that for a CPA. Thus a new
copy of the application and declaration must be prepared and reviewed
for every Rule 53(b) application. A new IDS must also be prepared and
reviewed for every Rule 53(b) application, covering all of the
references cited by the applicant as well as all of the references cited
by the Office in the parent application. Neither of these steps, which
can cost applicants well over $100 per application, is required for a

In addition, for a Rule 53(b) applicant to return the continuing
application to the point at which he or she left off in the parent, it
would be necessary to review and repeat all of the cumulative amendments
that were made in the parent application, including any proposed in an
unentered amendment after final rejection. This can take hours of
preparation and attorney review time, costing hundreds of dollars per
application, and is completely unnecessary in CPA's. The result is a
very significant hours and paperwork increase, with a resultant
substantial cost burden on all applicants. The burden is particularly
heavy on small entities, because the attorney cost is not reduced as a
result of small entity status, and because small entities are often more
likely to be in a position of requiring a CPA because they are often,
due to lesser experience and in-house assistance, not as efficient in
initial prosecution.

(b) Rule 53(b) applications also impose a much higher burden on the
PTO than do CPA's. For an RCE, the PTO needs to set up an entirely new
file and review and enter all of the papers described above that are not
required in CPA's. The file needs to be routed through the applications
branch, slowing examination. The additional delay increases the burden
of examination, since the examiner will lose familiarity with the
application (and particularly anything learned during examiner
interviews) during the many-month period of new-file processing and
waiting for the new file to work its way back through the queue of 1st
action cases. This additional PTO workload is not balanced out by any
higher fees for Rule 53(b) applications compared to CPA's, and thus Rule
53(b) applications create a higher financial burden on the PTO than do

Given the present examiner turnover rates in the PTO, it will
also more often occur that the continuing application is assigned to a
new examiner, causing further inefficiency and burden on the PTO and the
applicant. The new examiner will need to relearn the subject matter of
the application and redo many of the actions taken by the prior
examiner, and will lose the benefit of any insights obtained by the
prior examiner in any examiner interviews, requiring substantial
additional effort and cost by the applicant to return the new examiner
to the point where the old one left off.

These additional burdens and cost are especially significant in
view of the fact that CPA's are often filed at a stage where the CPA can
be allowed on first action by the Examiner familiar with the case,
whereas a new examiner or an examiner that has not seen the file for
many months will not be prepared to act so expeditiously on it.

(c) The substantial additional delay of a Rule 53(b) application
compared to a CPA is also detrimental to the public, which has a clear
interest in prompt examination and issuance of patents.

(d) Finally, Rule 53(b) applications also need to be published,
creating substantially the same publication burden and revenue for the
PTO as a CPA.

Thus in summary, I believe that the elimination of CPA's would have a
detrimental effect on applicants and the PTO, would have a significant
adverse impact on a substantial number of small entities, would have a
significant adverse economic impact on business, would create a
significant increase in paperwork needing to be handled by applicants
and the PTO, and would contravene the policy set by Congress in the
AIPA. Accordingly, I believe the proposed rule change should be

Respectfully submitted,
William P. Berridge
Oliff & Berridge, PLC
United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:51:11 PM