Comments from unknown

     TELEPHONE: (910) 607 7300
     FAX: 910) 607-7500
     REPRESENT: self

     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?

     Under current practice, application-related materials may be filed with the central mail room or hand-carried or sent via facsimile to the various examining groups. An advantage of delivering materi     als directly to the examining group is that materials reach the examiner in charge of the case more rapidly and thus can be provided, for example after an Interview, when the application is fresh In      the examiner's mind. In addition, for practice under Rule 116 (after final). it is advantageous for application-related materials to reach tine examiner as quickly as possible in view of the shorte     ned statutory time limits after a final office action. A requirement that mail be delivered to a central location would disadvantageously affect current practice in at least these two areas by delay     ing the receipt of mail or application-related materials by the examiner, and prevent spontaneous resolution of matters by the Examiner, Thus, if a central location system Is adopted, there needs to      be a parallel system that permits delivery to an Examiner.  
     Moreover, if the Patent Office adopts a procedure wherein all incoming application-related materials are electronically scanned for inclusion In a central database, it is believed that the scanning      operation will add unavoidable delays to the process of prosecuting the application. A possible solution to all of the concerns raised herein would be for application-related materials to be sent to      a central data capturing facility after their consideration by the examiner. For example, after an examiner receives an amendment and issues a Notice of Allowance or 3 final Office Action, the exam     iner could send the amendment and the Notice of Allowance to the data-capturing facility for entry into an electronic database. Of course, the disadvantage with this approach would be that the elect     ronic database would not be current.  
     If a central location system is adopted, there also needs to be a parallel system that permits simultaneous delivery of a copy to the Examiner. 

     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?

     Requiring that all applications conform to a standard paper size, print size and margin size will facilitate the creation of an electronic database end assist In the PTO's handling of applications f     or other purposes, e.g., publication of an application, imprinting of a patent. For these reasons; we do not have a strong objection to the adoption of a standard for these Items, In addition, the P     TO may wish to adopt standardized transmittal papers and/or declaration and power of attorney forms. However, the PTO is urged not to require standardization of the content of an application.
     In addition. the Patent Office is urged to continue to assign filing dates to applications under 35 U.S.C. s.111, whether the application as filed meets the established required standard format. It      is believed an appropriate surcharge for the late filing of an application and standard format should be equivalent to those currently specified under the rules for late filing of such items as the      filing fee and/or the oath or declaration
     It would be helpful to practitioners if the standards for paper size, print size. paper margins and the like, adopted by the PTO, were similar to those already adopted by WIPO and the EPO. This woul     d permit an application to be filed worldwide without the need for reformatting. 

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

     There is substantial disagreement among members of the Bar on the issue of whether patent applications should be published and/or patent application files made publicly available.
     An approach favored by the Bar is to make publication optional at the applicant's discretion. To encourage applicants to publish under this approach, the full application including the claims would      be published, and applicants would be entitled, if a patent subsequently issued on the application, to obtain damages from the date of the publication, It Is recognized by the members of the Bar tha     t this approach will require amendments to several sections of Title 35, United States Code, relating to prosecution of patent applications and relating to Infringement of issued patents. However, t     his approach will partially harmonize the U.S. system with current practice In Europe.
     Assuming that the foregoing approach is not adopted, and assuming that the entire application is not published, we believe that the following bibliographic data relating to the application should be      published:
     serial number;
     filing date; 
     title of invention; 
     assignee, if any; 
     group art unit; 
     representative drawing; and 
     This information could be made available in an "Official Gazette" of patent application notices. This Gazette could be a weekly publication along the lines of the current Official Gazettes. 

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

     The patent applicant should receive a copy of whatever is published by the PTO). This will enable the applicant to maintain accurate and complete files on the application. 

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

     The current accelerated examination procedure (MPEP, 708.02, 37 CFR 1. 102) should be maintained by the USPTO. If the PTO plans to adopt a new accelerated examination procedure, the PTO is urged to      require a large fee (significantly greater than 2,000) for applications that do not meet the current conditions under 37 CFR 1 .102. 

     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?

     As a preliminary matter, it is noted that the PTO's costs for publishing applications could be recovered from a direct appropriation or from the sales of copies of published applications, and not fr     om user fees.
     However, If the cost is recovered from user fee separate publication fee should be required. ;This publication fee could be designated as a separate fee, but collected at the time of filing an appli     cation in the same manner currently utilized to collect the filing fee. See also the answer to question 3 and the answer to 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?

     If the publication fee is collected as suggested In our response to question 6, the PTO should require an affirmative communication from a patent applicant Indicating that the applicant does not wis     h the application to be published. Upon receipt of such communication, the previously paid publication fee should be refunded to the applicant and the application deemed abandoned.
     As indicated in the response to question 6, late submission of a publication fee could be handled utilizing the procedures currently in place for the late submission of a filing fee. 

     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?

     It is suggested that the PTO require a claim for priority under 35 U.S.C. 119 or 35 U.S.C. 120 be made within three months of the actual filing date of the application or fifteen months from the pri     ority date of the application, whichever is later. Failure to claim priority should result In the applicant losing the benefits of priority. The PTO may wish to permit some latitude in the three mon     th date provided sufficient time for publication of the application at the "normal" time (e.g., 18 months from the priority date) would remain after the priority is claimed.
     As an alternative to complete 1035 of priority rights, the PTO could allow a priority claim to be made at any time, but have priority only extend back for a period of fifteen months prior to the dat     e of filing of the priority claim. For example, if a foreign patent application is filed on February 1, 1996, and a priority claim under 35 U.S.C. s. 119 is made in a corresponding U.S. application      on December 1, 1997, the effective "priority date would be September 1, 1996 (fifteen months prior to December 1. 1997). 

     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?

     Whatever is published, e.g., a published application and/or publication notice should remain in the search files. The publication information should also appear on the issued patent. There needs to      be a permanent accessible record of what was published on the publication date, for purposes of 35 U.S.C. 102, etc.
     The PTO should consider adopting a system similar to that utilized by the European Patent Office and the patent offices of other industrialized nations, wherein a letter designation Is used on a doc     ument to indicate whether the document is a published application or a patent. For example. the letter WA could follow the serial number for a published application. The document could then be repri     nted with a patent number when it Issues as a patent. 

     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?

     As Indicated in the response to question 3, a suggested approach to the Issue of publication of patent applications is to make publication optional, and provide an applicant who decides to publish h     is or her application the right to collect damages from the publication date if the application subsequently issues as a patent. If the necessary statutes and regulations are modified to permit this      enforcement right, the PTO should grant access to the complete application file, If a system of publishing applications is adopted which does not include any enforcement rights, members of the publ     ic, other than the applicant and his or her designated representatives, should not have access to the application file,
     If any access is to be granted to application files, the access should not be limited to the content before publication. Rather, it should extend to the complete contents of the application file up      until allowance or abandonment.
     However, It Is believed that allowing unlimited access to application files would unduly interrupt the examination process. Thus, If access to the application file is to be allowed by any interested      member of the public, it is recommended that the PTO establish a duplicate file system wherein the examining group maintains one copy of the file to which no access is permitted and a separate copy      of the file is maintained In a place where it can be retrieved for public access. Although a duplicate file system is likely to create numerous administrative headaches for the Patent Office, it Is      believed that allowing members of the public complete access to the examiner's file copy of an application would likely create more headaches and destroy the Integrity of the examiner's files. 

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

     After publication. assignment records of the published application should be made accessible to the public. In addition, as indicated in a prior response, the assignee of record, if any, should appe     ar on the published application and/or in the publication notice.

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

     If access is to be granted to the application file, such access should Include the right for interested members of the public to examine the deposit of biological materials required by 37 CFR 1.802      et seq. If granting access presents logistical problems, or file integrity problems unique to the deposit of biological materials, the PTO should consider implementing a procedure where access is al     lowed after a petition and fee are filed with the PTO. 

     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?

     It is believed that the examiner will encounter problems determining the changes made in the substitute paragraph and claims and/or substitute pages. Current practice emphasizes the amended language      enabling-the examiner to focus on the changes made by the amendment. Substitute paragraphs and claims will hinder the examiner's ability to focus on the changes.
     One way of overcoming this problem would be to continue to use the current procedure for amending claims and presenting amended claims to the examiner, However, after the examiner indicates that the      claims and application are in condition for allowance, substitute pages could be filed. 

     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?

     Third party submission of prior art should be allowed at any time prior to Issuance of the application. Current re examination procedures should also be retained.
     In order to encourage a third party to submit prior art In a timely fashion for consideration by the examiner, the PTO could adopt rules for the submission of art by third parties similar to those a     dopted in 37 CFR 1.97 and 1.98 for the submission of prior art by applicant, utilizing the publication date instead of the filing date. For example, a third party would be freely permitted to submit      prior art up to three months after the publication of the application. After the three month date, the third party would be required to certify that the art had just come to their attention and/or      be required to pay a fee. Submission of prior art after Notice of Allowance has been issued In the application would require a petition and very large fee.
     No matter what system is ultimately adopted by the PTO, the applicant should be notified of any third party submissions to the examiner. This could be accomplished by requiring third party submitter     s of prior art to provide a copy of the documents filed with the examiner to the applicant and to certify the same utilizing a certificate of service procedure.
     In addition, no presumptions should attach to art submitted by third parties, or to art not submitted by third parties. The submission of art should be optional and entirely within the third party's      discretion. If necessary, the current disclosure rules should be modified accordingly. 

    No comments supplied

Last Modified: March 1995