Comments from Wilmot H. McCutchen

     NAME:	Wilmot H. McCutchen, President
     TELEPHONE:	(713) 957 4344
     FAX:	(713) 868-4104

     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?

     Yes. Fax transmissionb tc. may bQ sent to satellite locations and
     given a filing date there, but a hard copy should follow to the
     central location. There should always be certainty as to what is in
     the file, and that means that there should be one Archival file for
     referen›e. Scanning of thess documents would present a bottleneck, so
     perhaps th~ applicants could be required to submit diskettes at so>e
     timz after the initlal fillng.

     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?

     Yes, provided that it is widely published 60 that any college student
     would be able to find out how to file a patent application. Failure
     to comply should not be penalized with a surcharge, but the applicant
     should be informed of the consequences of informality Included in
     this standard application format would be a Notice of Pending
     Application substantially like Appendix "A".

     If the entire application is not published, what information
     concerning the application should be published in the Gazette of
     Patent Application Notices?

     	No information amounting to a substantial disclosure of the
     teachings of the intention should b~ permitted. According to 35 USC
     122 the file must be kept confidential and not disclosed without the
     consent of the applicant. 	There should be no publication in the
     present Gazette or any new fat weekly volume. After spending so much
     money on creating a functional computer system, the PT0 should be
     ready to move out of exclusive reliance on broadside paper
     publications. Publications should be by particular copies addressed
     to particular interested third parties, either by paper copy or ail.
     These third parties should pay for those copies and thus cover the
     cost of publication. Subscriptions should b~ made available by
     subclass BO that interested third parties would be immediately mailed
     a copy of each new publication. Revenues from this database-e could
     be significant. 	The information in the publication would be that
     in Appendix "A" hereto: information on how to contact the inventor' 5
     representative, the title of the- invention, the field of search
     (provided by the examiner), and a summary provided by the applicant
     for publication, It would then b~ up to the interested third party to
     contact the applicant and arrange for further disclosure. The
     notice should be just that -- a notice-, with how to get further
     information. 	Publication should not include a picture or the
     abstract, because these may b~ enough to teach others how to
     practice the invention. This would violate 35 USC 122. 	Publication
     should not include claims. when the PT0 tried the TVPP program, 10%
     of the issued patents (i.e. with claims in allowable condition) were
     protested. The publication of unexamined w$11 be an even greater
     stimulus to protests, and will also chill innovation as prior art.
     Should the patent applicant receive a copy of the published
     application -- either published notice and/or application content
     at time of publication?

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

     	Accelerating the- application 1s probably impractical as a solution
     to the problem created by early publication. Better not to create
     those problems in the first place. As noted in the Notice,
     acceleration of some will mean delay for the rest. Everyone will want
     to be accelerated. Sifting through the pleas will be a dismal chore
     for the examiners. The real solution is to publish a summary format
     such as Appendix "A" so that disclosure (and consequent hardship) is
     a matter of private contract between the interested parties and not a
     matter which is the responsibility of the PT0, except in the case of
     dilatory prosecutions (see questions 7 and 10). 	Consider the case of
     an application filed 12 months after a provisional application. The
     publication would occur 6 months after the filing of the formal
     application, so the applicant would have to decide- whether to
     abandon the invention only 3 months after filing it, before getting
     even a first office action for his filing fee. Just to discover
     initial prospects Of patentability, he would have to pay a suroharge
     for acceleratson. If this rule should be adopted, at least make the
     cutoff date 18 months-after formal filing or 12 months after-the
     first office action whichever greater.

     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?

     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?

     	Because the publication under option is (Appendix "A" format) is
     innocuous, ~ publication cutoff date (i.e. a date where the applicant
     would have to elect between publication or abandonment of his patent
     application) would be immaterial, except as to applicants guilty of
     dilatory prosecution. 	The concern with submarine patents may b~
     addressed by compulsory full publication at some time later than a
     flat 18 months where it {s clear that dilatory prosecution is taking
     place, in the opinion of the examiner. We can see no good reason to
     publish under options it, iii, or iv, everyone's application- at 18
     months, whether they are guilty of dilatory prosecution or not.
     	Under our proposal, the only cave in which a publication
     sufficiently enabling to b~ harmful to the- applicant would be
     available would b~ where there is a finding of dilatory prosecution
     (potential submarine patent) by the examiner, whereupon the applicant
     should be given a choice whether to continue with prosecution (having
     had the application more fully published) or to abandon the
     application and avoid further publication of an enabling natures.
     	But why treat all inventors as if they were guilty of dilatory
     prosecution? That is what this rule seeks to do presumes bad faith on
     the part of all applicants and then punish them by publishing an
     enabling disclosure of their applications after 18 months, which is
     often before even the first office action.

     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 later claiming of priority or benefit?

     	Because under our proposal the burden is on the applicant to submit
     a complete Notice form [Appendix "A" including priority information}
     as part of his formal patent application, the effect of delayed
     filing should be cleat from existing rules. 	We support the
     requirement that any late claim for priority, if allowed to be
     submitted, be supported by affidavit that the delay was not

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

     	With only an option i (non-enabling, no access allowed) publication
     in the format of Appendix "A", there would be no prior art effect,
     thus the- question is moot. 	But if there is a picture published, as
     under option ii, that is enough of a disclosure that prior art effect
     may be considered. Difficult questions of prior art would arise that
     would be a big waste of time for the examiners and all concerned.
     Such a prior art document would have to stay in the search files,
     further adding to bulk and complexity, and thus delay in processing. 
     Better to have a11 enabling pre-issue disclosure by private contract
     rather than as a matter of public policy, to avoid both prior art
     questions and unintended harm to the applicants. Any publication
     should serve merely as notice to interested third parties that they
     should arrange- for a private disclosure by the applicant. 	Date of
     publication might be included in the patent at the beginning, along
     with the filing date

     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 permilted? Should
     access be limited to the content before publication, or should it
     extend to materials added after publication?

     	No access at all without the inventor's express consent should be
     permitted 35 USC 122 [Appendix "D"] The principle of our law is that
     the inventor trades off an enabling public disclosure for a limited
     property right, and this rule seeks to adopt Japanese law in the
     United States by a rulemaking instead of by legislation, with the
     evident purpose of destroying the technology base of the United
     states in the long term Let the- advocates of this startlingly bad
     idea lay their proposal before Congress instead of trying to sneak it
     through the PTO. 	Third party access to the patent file, before the
     inventor has any rights to enforce, benefits only bad faith
     infringers who would cream the market before the patent issues, and
     giant companies who would destroy the value of fundamental patents
     by a multitude of peripheral patent applications, as they do now in
     Japan [see Appendix "B"] No access at all should be permitted without
     the consent of the inventor, and this consent should not be implied
     from failure to pay some onerous fee 	As for the plea that relief
     from submarine patents is necessary, this problem can be resolved by
     a means less drastic than allowing third party access to a11 files We
     suggest that only those- applicants that the examiner finds guilty of
     dilatory prosecution should be punished by involuntary disclosure
     Such a rule would surfaces the submarines, while avoiding unnecessary
     harm to other applicants 	It later in the course of the examination
     there should arise a question of dilatory prosecution (submarine
     patent), the examiner should have additional publication or a grant
     of file access available for preventing harm to the industry by this

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

     	Yes. The intent of the non-enabling publication under option i
     (Appendix "A" format) is to bring the applicant and interested third
     parties together so that they may come to their own agreement as to
     further disclosure of the contents of the application. The PTO should
     not be rying to cram down the terms of a disclosure deal against the
     protests of inventors. Lt the interested parties work it out,
     Assignment information reveals the existence of all interested
     parties and would be consistent with this goal of bringing the
     parties into contact.

     After publication, should access include the deposit of
     biological materials as set forth in 37 CFR 1.802 et seq.?

     Biological materials should not be made accessible to the public
     after publication without the express consent of the applicant, for
     the- reasons stated in response to Question 10 Our law forbids file
     access without consent 3S USC 122 Appendix "D"]

     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?

     	Publications should be allowed to be amended by replacement with a
     new one in the same format (Appendix "A") A record of amendment dates
     should appear on the form published. 	With the wide- use of word
     processors to prepare patent applications, the proposed rule should
     not be a hardship to inventors but might make it difficult for the
     examiners to see exactly what has been changed in the amendment.
     	Option ii, as is clear from In_re Hall, 781 F.2d 897 (Fed. Cir.
     l986) and In re Wyer, 655 F.2d 221 (CCPA 1981) [cited in the Notice],
     would be sufficient public disclosure as to constitute prior art,
     especially with a drawing figure and abstract of the invention, and
     especially if public access is allowed to the complete file after

     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?

     	We fear repetition, on a grand scale, of the bad experience that the
     PTO had with the TVPP, as described in the Notice. We can expect
     tag-team interferences by giant companies to protect their market
     position [see Appendix ~B~, a description of the practice in Japan],
     Frivolous or not, these challenges would take up lots of valuable
     examiner time. 	We urge ~ reconsideration of the rules of evidence.
     Only 1X) documents already on file at the PTO as or the filing date
     of the application (such as provisional applications and disclosure
     documents), and (2) widely disseminated journals, should be
     admissible evidence of priority, within 2 months of publication.  	-
     If evidence outside of publications or materials on file at the PTO
     is admitted, the application process will turn into a melee of
     conflicting sworn testimony, often with evidence in foreign
     languages. 	This of course would further retard the patent process,
     making patents practically worthless by the time they finally issue
     In light of Appendix ~B", this seems to be what the foreign interests
     desire confusion and delay 1n the PTO, and discouragement of American
     invention With this publication/access/protest proposal and their
     "prior user rights" proposal, they seek by accelerated administrative
     rulemaking to undermine the national interest of the United States
     Let the paid advocates of these ideas make their case to Congress,
     where the elected representatives of the people can decide whether
     they have merit or not,

     Comments of the Houston Inventors- Association Regarding 18-Month
     Publication   	Answers to the particular questions posed by the
     Notice follow. First some preliminary comments:   	With 418 paid-up
     ($36 a year) members as of the close of 1994, the Houston Inventors
     Association (a 501(c)(3) non-profit) is a strong voice for the
     independent inventors of America's most inventive city.   	We are
     against any enabling pre-issue publication, such as publication
     options ii, iii, and iv. We are also against saving file access to
     third parties against the will of the applicant, except in the case
     where the examiner finds dilatory prosecution that poses a danger to
     the industry affected by the application. The PT0 cannot repeal 35
     USC 122 [Appendix "D"] and should not try.   	We favor early
     publication (even before 18 months) in a standardized, non-enabling
     format (Appendix ""A" hereto) submitted by the applicant as part of
     his formal application, giving the data necessary for interested
     third parties to contact the inventor's representative, with the
     title of the invention, the search field, and the summary provided
     for publication. It will then be up to the interested third party
     and the inventor to come to terms on further disclosure. The PT0 in
     its rulemaking should not be attempting to dictate the terms of this
     disclosure deal, flouting 35 USC 122, but it should be attempting to
     foster technology development and transfer by private contract
     through some form of early, non-enabling disclosure.   	For those
     applicants who foreign-file, publication will be redundant and
     wasteful because their applications are already laid open abroad. So
     all it will mean to them is increased fees. As for those who do not
     foreign-file (Which is the majority of our membership and of U.S.
     applicants in general) it will mean not only increased fees but
     peripheral patent filings by the giant Japanese companies who will
     thus destroy the value of their fundamental patents. With a balance
     of royalty payments of $19 billion received to $4 billion paid in
     1991 [see Appendix "C"], the United States is the only country that
     is a net exporter of technology, principally due to the fundamental
     patents of its independent inventors. We can see no good reason why
     the United States should crush its inventors so that it can arrive at
     the same state of retarded innovation development as the rest of the
     world   	Cost of publication should be borne by those it benefits,
     who are the third parties. The applicants get no benefit from early
     publication and should not have their fee increased yet again to pay
     for it   	The submarine patent' argument is only a red herring --
     what the advocates of full publication seek is replication of the
     Japanese yen in the United States, which would crush fundamental
     patents. Appendix ""B" hereto is a recent article from les Nouvelles
     (Journal of the Licensing Executives Society) Vol XXIX, No 3, pp
     124-29, written by two Japanese researchers. Its title is "Survey of
     Japanese Strategies" and it concerns the approach of Japanese firms
     to intellectual property The respondents in the survey agreed that U
     S companies patent portfolios were more innovative (pp 126-27) The
     strategy of the Japanese i6 to set up ›corporate divisions to file
     multitudes of peripheral applications to wall off the fundamental
     patent, and what makes this possible is the kokai (laid open to the
     public) procedure of Japanese patent law (p. 128, columns 1-2).
     Please note that 60 7% of all respondents and 80% of a11 extremely
     large Japanese firms practice this strategy (p. 128, column 3).   	We
     submit that it is not in the interest of the United States that
     these Japanese giants be allowed to crush American innovation by
     peripheral patents, protests, and practicing the teachings of the
     invention before issue of a patent, which is the likely result if
     enabling publication or file access becomes the law. We recommend
     that commentors b- asked whether they have any affiliation to firms
     that are registered lobbyists, and whether those firms have clients
     that are foreign firms or governments We also recommend that the PTO
     let Congress decide whether to repeal 35 USC 122 [Appendix "D""]  
     	Of course there is no need to dwell on the dangers Of publishing an
     enabling disclosure, or even a hint, to the Chinese and other East
     Asians, who will tool up and cream the market before the inventor can
     get any protection at all. imagine what would have happened if the
     East Asians had seen the television, personal computer,
     microprocessor chip, transistor, or VCR technology before the patents
     were granted.   	In industries with short product life cycles and in
     industries with long examination times (such as computers,
     biochemical, chemical, and electrical cases), publication of anything
     close to an enabling disclosure would put the inventor at a
     disadvantage so the best advice would be not to file for a patent and
     to maintain the- technology as a trade secret. Why spend $10,000 to
     get a worthless patent, teaching the whole world how to practice your
     invention before you have any property rights?
      Our Proposal   	Require submission of a Notice of Pending
     Application (in the format of Appendix "A") as part of the formal
     patent application. The examiner would fill in the search field and
     then post this 1- page document to an electronic bulletin board. The
     space provided for an invention summary would allow the inventor to
     describe the usefulness of the invention without necessarily
     disclosing information that would amount to prior art, so as to
     serve- as an advertisement for marketing the invention. Thus the
     publication could be even earlier than 18 months if done in this
     format.   	Searchers and other interested third parties would see the
     invention title and date of Notice in the subclass of interest, then
     they would order e-mail or paper copies, for a fee. Subscribers such
     as businesses interested in a particular subclass would receive a
     mailout immediately upon posting. These users would cover all costs
     of publication and may even pay more.   	Applications that the
     examiner finds guilty of dilatory prosecution would be published more
     completely in a subsequent publication, to surface potential
     submarine patents. In other words, enabling pre- publication will
     only be for good cause. 

Last Modified: March 1995