NAME: CHARLES L. WILLIS, REG NBR 31,067 COMPANY: ADDR-1: CITY, STATE ZIP: TELEPHONE: FAX: REPRESENT: SELF ------- 003-0001.TXT I enclose a personal comment on the proposed rules to implement some of the new GATT provlslons. ------- 003-0002.TXT This comment relates to proposed 37 CFR 1.83(a)(2). That paragraph pertains only to the drawing in a provisional application. In describing the contents of an application that need have no claim, it makes repeated use of the word "invention." In- rny experience, the word "invention" has virtually always been reserved for describing that which is set forth in the claims. It would be troubling to see it used in the manner proposed. Indeed, I think that the meaning of the proposed rule would be uncertain at best, at least in the case where there is no claim in a provisional application. The question is this: In a provisional application that has no claim. what is "the invention"? ------- 003-0003.TXT I would suggest that it will be common to see considerable differences between the contents of a provisional application and the contents of a subsequently-filed regular application-differences both between the specifications and the drawings. One example might be where an author files a provisional application that is, in essence, a technical publication that he or she intends to deliver at a conference. The technical paper, and therefore the provisional application, might have contained technical discussion that is not appropriate for inclusion in a patent application (or at least that particular patent application). Of course, the intent of the inventor would be to edit the materials at some later time into a form that is appropriate for filing as the regular application. ------- 003-0004.TXT Given the range of possibilities, it requires no stretch of the imagination to postulate a case where the drawings of the provisional and regular application are identical, where the drawing of the regular application under 35 USC l l l(a) complied with 37 CFR 1.83(a)(1), and where same drawing in the provisional application failed to comply with 37 CFR 1.83(a)(2), as interpreted. In such a case, it would be inappropriate to cast a pall over the provisional application or over the subsequent regular application because of some theoretical failure of the provisional application to show a drawing of some technical matter that eventually will be (or was) omitted from the regular application. In this regard, I have found no statement in the proposed rules as to the effect, if any, on the regular application of a failure of the drawing of the provisional application to comply with 1.83(a)(2), even where the subsequent regular application was in compliance with 1.83(a)(1). ------- 003-0005.TXT In view of the nature and intended use of a provisional application, there is no need for any rule that prescribes the requirements for its drawing in any but the broadest terms. If a drawing must be required, you need only state that there be a drawing illustrating at least a portion of the subject matter of the text, assuming that the subject matter of the text admits of a drawing. In addition, there should be a provision somewhere in the rules to the effect that a violation per se of 37 CFR 1.83(a)(2) will not affect the patentability of a subsequent application under 35 USC l l l(a). Such an exemption would not affect the operation of 37 CFR 1.83(a)(1); it would remain a necessity that the regular application comply with the latter rule.
Last Modified: March 1995