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PTO Proposed Rule Change to Eliminate CPA's - Public Comment

Sent: Thursday, July 19, 2001 10:48 AM
To: AB37 Comments
Cc:;;;;; Tyson, Karin;;
Kunin, Stephen
Subject: PTO Proposed Rule Change to Eliminate CPA's - Public Comment


    c. Robert J. Spar
    This is a personal response by the undersigned to the PTO request
for public comments to be sent by email to the above internet address,
before Sept. 7, in the Federal Register notice of 66 FR 35763, in which the
PTO proposes to eliminate from the patent rules the "Continued Prosecution
Application" (CPA) practice, which the PTO therein alleges is redundant with
the "Request for Continued Examination" (RCE) practice enacted in the
American Inventors Protection Act (AIPA) in 1999.  The PTO's indicated
motive for this proposed regulatory change is to reduce its workload of
publications of applications in which CPA's were filed.  

        It is first noted that this is only an interim PTO problem,
since the PTO will have to publish most patent applications filed after
11/29/00 anyway, and the PTO only needs to publish those prior-filed
applications in which a CPA was filed after 11/29/00.  The PTO does not need
to accept any CPA's (RCE's will become mandatory) for continuing the
prosecution of all applications filed after May 29, 2000.  I.e., a CPA can
only be used for re-filing applications filed before May 29, 2000.   Thus,
the use of CPAs will already end without this proposed rule change as the
PTO works off its pending application backlog. 

        This PTO proposal is to completely eliminate CPA practice,
even for CPA re-filing of applications filed before May 29, 2000.
Unfortunately, this proposal ignores the serious needs of many applicants to
use CPA's to avoid actual or potential 102(e)/103 rejections based on prior
filed commonly-owned patents for all patent applications filed before
11/29/99 (many, if not most, of which applications are still pending).  The
PTO's introduction to this rule proposal alleges that in view of RCE
practice "there no longer appears to be a need for continued prosecution
(CPA) practice as to utility and plant applications".  That is simply not
true, and the PTO must know it is not true from their own prior
publications, PTO web postings and their own JPTOS article on the
differences between CPA's and RCE's.  A CPA is a new patent application and
an RCE is not.  The above-noted very important advantage and function of
CPA's is not provided by an RCE.  
        Nor will an RCE obtain a desired publication of the
application (see below).  
        Nor will an RCE obtain the benefit of the new patent term
extension statute for PTO delays.  
    Further as to this PTO representation that an RCE is equivalent to a
CPA, and thus unnecessary, for many companies with large filing programs,
PTO 102(e)/103 rejections on prior-filed commonly-owned patents are not
infrequent, and RCE's are still  needed to overcome those rejections.
Furthermore, the PTO is also ignoring the dangerous situation many large
patent filers have with unknown, and hence uncited, earlier-filed co-pending
commonly-owned applications on similar technologies by different inventors
from different locations being handled by different patent attorneys or even
different firms, and with claims varying during prosecution.  The
earlier-filed applications will not become known potential sources of
allegations of 102(e)/103 prior art until after the later-filed applications
are issued and asserted.  This is cured by any CPA filed after 11/29/99, but
not cured by an RCE.  The PTO has said in an OG notice that the PTO thinks
this situation can be cured by a reissue, but there has been no blessing of
that by the CAFC, and this statute (the 11/29/99 AIPA amendment of 103(c))
is expressly not retroactive.  The CAFC does not necessarily agree with PTO
statutory interpretations, e.g., In re Portola.  In any case, filing a
reissue is much more difficult than filing a CPA, requiring a 35 USC 251
"error"? statement declaration, etc.. 
    The PTO's indicated reason for wanting to eliminate any further
CPA's is that CPA's now trigger a requirement for electronic publication of
applications filed before 11/29/00 which would otherwise not have to be
published.  This PTO Notice thus requests other public suggestions for
reducing that publication problem, to be provided to Bob Spar.  Three such
suggestions are provided below:

        First, it is suggested that a substantial number of
unnecessary CPA's are being filed because the PTO has failed to adequately
warn the patent bar and its clients (even in this Notice) that a CPA can be
more expensive for the client than an RCE.  That is due to both the $300
publication fee and the fees for any excess claims in a CPA, which an RCE
does not have.  If the PTO were to better educate the public on that cost
difference, the use of CPA's could be reduced.  

        Secondly, use of CPA's could have been further reduced if
the PTO had not de facto violated the intent of the 1999 AIPA legislation
giving applicants the statutory right to voluntarily publish their prior
pending applications to obtain statutory publication benefits.  The PTO has
refused to provide any applicants with that statutory publication right
unless the applications are re-written and re-submitted under the new, and
partially inoperative, PTO electronic filing system.  That electronic filing
is effectively impossible or extremely burdensome for many applicants,
especially for small inventors, or for applications with many formulas or
symbols, or for companies with "firewall" problems for transmissions of very
large documents by email.  Hence, the filing of CPA's is by far the best way
to obtain voluntary publications (and fully accurate reproductions) of most
applications filed before 11/29/00. 

        Thirdly, the greatest reduction of CPA's could be
accomplished during this interim period simply by changing the current  PTO
internal practice of refusing to consider even the most minor of 116
amendments (not requiring any new art search), since that is what is forcing
applicants to file thousands of otherwise unnecessary CPA's or RCE's, with
CPA's being the far more legally valuable choice for many applicants in
applications filed before 11/29/99 (as explained above), even though more
expensive than an RCE.  

            Respectfully submitted,
Paul F. Morgan
Assistant General Patent Counsel
Xerox Intellectual Property Law Department
Xerox Square 20A
Rochester NY, 14644
Tel. (716) 423-3015  FAX (716) 423-5240  
United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:51:55 PM