Comments from Questions on 18-Month Publication of Patent Applications

Note: The comments submitted in written form were scanned using OCR software and may contain minor errors.

Please be advised that this is an incomplete list of persons submitting comments. All comments will appear in this list by March 10.

You can review the comments made by all individuals to the following questions:

Question 1: Should the PTO require that all official application-related materials be delivered to a central location? Specifically, what problems would a requirement that all official application-related materials be delivered to a central location cause?

Question 2: Should the PTO adopt a standard application format? If so, what portions of the application papers should the PTO require be submitted in a standard size and/or format, and what sanction (e.g., surcharge) should be established for the failure to comply with these requirements?

Question 3: Assuming that the entire application is not published, what information concerning the application should be published in the Gazette of Patent Application Notices?

Question 4: Should the patent applicant receive a copy of the published application -- either published notice and/or application content at time of publication?

Question 5: Should the PTO permit an accelerated examination? If so, under what conditions?

Question 6: Since the cost for publishing applications must be recovered from fees, how should the cost of publication be allocated among the various fees, including the possibility of charging a separate publication fee?

Question 7: Should the PTO require an affirmative communication from a patent applicant indicating that the applicant does not wish the application to be published, or should failure to timely submit a publication fee be taken as instruction not to publish the application? That is, should an application be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether a publication fee has been submitted? What latitude should the PTO permit for late submission of a publication fee?

Question 8: The delayed filing of either a claim for priority under 35 U.S.C. 119 or 120 may result in the delayed publication of the application. Should priority or benefit be lost if not made within a reasonable time after filing? What latitude should the PTO permit for late claiming of priority or benefit?

Question 9: Once the patent has issued, should the paper document containing information similar to that published in the Gazette of Patent Application Notices, i.e., the Patent Application Notice, be removed from the search files, and should publication information be included on the issued patent?

Question 10: After publication, should access to the content of the application file be limited to the originally filed application papers? If not, what degree of access should be permitted? Should access be limited to the content before publication, or should it extend to materials added after publication?

Question 11: After publication, should assignment records of a published application also be made accessible to the public?

Question 12: After publication, should access include the deposit of biological materials as set forth in 37 C.F.R. 1.802 et seq.?

Question 13: What types of problems will be encountered if all amendments must be made by (a) substitute paragraphs and claims, (b) substitute pages, or (c) replacement of the entire application?

Question 14: Should protest procedures be modified to permit the third party submission of prior art only prior to a specific period after publication of the application? What action should be taken with respect to untimely submissions by a third party?

Last Modified: March 1995