Comments from Charles L. Willis

NAME:               CHARLES L. WILLIS, REG NBR 31,067




I enclose a personal comment on the proposed rules to implement some
of the new GATT provlslons.


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


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.


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).


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