NAME: PAUL F. MORGAN COMPANY: ADDR-1: 330 OAKDALE DRIVE CITY, STATE ZIP: ROCHESTER, NY 14618 TELEPHONE: (716)423-3015 FAX: (716)423-5240 REPRESENT: SELF ------- 004-0001.TXT In response to your request for written comments on these PTO proposed Rule amendments, the following are purely personal initial observations, which I hope will be helpful. I fully appreciate that the PTO is under time pressures in preparing extensive rule changes necessitated by the recent major changes in the Patent Laws. ------- 004-0002.TXT First, as a general comment applicable to several of the specific rule comments below, l think it is important to keep in mind that a principal rationale for the provisional applications statute is its intended use is by university researchers and private inventors. Their motivation was to reduce losses of patent rights and interferences under the present patent system. They think they are getting a provisional patent application filing system in which a valid priority filing date can be obtained quickly and cheaply with minimal, or no, patent attornee involvement. E.g., by simply pro se filing a draft of a planned technical publication as a provisional application before the publication date. Ergo, the express statutory elimination of any requirement for any claims or signatures in a provisional application. ------- 004-0003.TXT Irrespective of whatever one thinks about the dangers of lay provisional applications with no claims providing an adequate 35 USC 112 priority case*, the public has been led (or misled) to expect its efficacy, and the PTO is thus duty bound to draft regulations to carry out the Congressional intent for provisional aPPlications. *It is noted that this will leave subsequent readers or litigators with little or no clue as to what the prctvisional inventors considered to be their invention, or novel, at the tfme of filing the provisional application since apparently it could be anything buried anywhere in the disclosure. It also begs the question of whether or not such pro se provisional appilcations will necessarily provide a sufficient disclosure for a foreign or U.S. priority clate, or a U S. interference constructive reduction to practice date. ------- 004-0004.TXT That necessarily includes making provisional applications as simple as possible for lay users. As will be discussed, to deprive inventors of a filinq date for provisional applications unless they use a new government paperwork form (a proposed 37 CFR 1.53(b)(2)(i) special cover sheet) and correctly name all of the "actual" inventor or inventors of the provisional application as per proposed 37 CFR 1.53(b)(2) and 1.45(c), is difficult, if not impossible, to reconcile with said Congressional intent for effective pro se provisional applications. ------- 004-0005.TXT The correct naming of all inventors is difficult and time consuming even in a complete application with a full set of claims. Determining correct inventorship in the absence of any claims (on pain of invalidity) is virtually an oxymoron, and logically impossible, since the two are inexorabla intertwined. That is long established "black letter lawn for which no citation of legal authority should be necessary. One of the disadvantages of the U.S. patent enforcement system as compared to the patent systems of other countries is that the uitimate inventorship determination is far more critical to patent validity. Why would anyone wish to impose such a time consuming and absolute criticality on a provisional application, which automatically ceases to exist after one year and cannot ever issue as a patent? Much less to deny it even a filing date? (See below). ------- 004-0006.TXT The proposed 37 CFR 1.45(c) would even further require that "if multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application. .". This unnecessary and absolute language "must have" will be an open invitation to litigation to invalidate provisional applications for having named an inventor not meeting such language requirements. Furthermore, this requirement does not even make any sense and is unworkable in that "the subject matter disclosed in the provisional application" will necessarily include disclosed prior art features which cannot be properly claimed by the named inventors! ------- 004-0007.TXT The illogical absolute requirement for "correct" inventorship is further exacerbated by the proposed language of 1.53(b)(2) stating that the filing date of a provisional application is [only] the date on which. . . [it is filed] . . in the name of the actual inventor or inventors as required by 1.41." ------- 004-0008.TXT This latter also appears inconsistent with language of proposed 1.53(c), which appears to state that the application can be filed without the name or names of the actual inventor or inventors providing they are provided in a specified time period, yet this important exception is not cross-referenced in the above- cited proposed absolute rules. Furthermore~ this latter proposed clause does not appear consistent with the further absolute provision of 1.53(b) that nif all the names of the actual inventor or inventors are not supplied when the specification and any required drawing are filed, the provisional application will not be given a filing date earlier than the date upon which the names are supplied unless a petition . . . is filed which sets forth the reasons the delay in supplying the names should be excused". ------- 004-0009.TXT Why is the PTO thus attempting to greatly exceed the statutory requirements, fosterlosses of priority dates, and defeat the Congressional intent for non- attorney pro se provisional application filings? Universite personnel and Drivate inventors are simolv not equinned to make lecial inventorshin determinations even if this proposed rule language were clarified to something far less stringent and more appropriate. Accordingiy, it is suggested that the only requirement for naming of inventors in provisional applications should be, e.g., simply to "name at least one person believed to have potentially made a contribution to what are believed to be novel aspects of the disclosure of the provisional application". ------- 004-0010.TXT As noted above, proposed 1.53 also includes in subsection (b)(i) an absolute requirement that a provisional application must also include a "cover sheet" [undefined] identifying the application as a provisional apprication. "Otherwise, the application will be treated as an application filed under 1.53(b)(1)". As noted above, not only is this inconsistent with the Congressional intent of simple lay filinq, it is unnecessarily rigid. If a provisional application is clearly identifiable as such, such as by a title of "provisional application" and/or otherwise, such as by a provisional application fee, the absence of any claims, signatures, declarations, etc., it would clearly be in the public interest and Congressional interest to prima facie treat the application as a provisional application, not a regular application (punishing the applicant for something which it is self-evidently not). Furthermore, requiring the public to submit a formal, legal, signed petition under 1.53(b)(2)(ii), further defeats the intended simple lay use of the system, not to mention being somewhat ludicrous for a mere temporary document not requiring anz signatures even for filinq. Any actual PTO confusion oughtto be easily clarifiable by a simple phone call or letter. Query whose interest is paramount here, the public's, or mere government employee convenience and fee increases? Not only do the above formal and rigid requirements thwart the legislative intent, they are equally incompatible with the present Commissioner's calls for "user friendliness" and "customer service". ------- 004-0011.TXT Continuing on to other matters, in 1.53(e)(2) the draft states that a provisional application . . . will become abandoned no later than 12 months after its filing date pursuant to 35 USC 111(b)(1). It is suggested that "no later than" be deleted, as superfluous and/or misleading, since it is not believed that ane provisional application can be abandoned prior to 12 months by the PTO Hdependently of some act or omission by the applicant), and this subparagraph is dealing with action by the PTO pursuant to the statute, which provides for 12 months, period. ------- 004-0012.TXT In regard to 1.62(a), since this section is being amended anyway, it is suggested thatthe PTO consider clarification of the language "and applicant's name of the prior complete application". This language is awkward and could be construed by some readers as confusing the title of the application as the "name" of the application. Furthermore, why should a file wrapper continuation name inventors which are not the inventors of the file wrapper continuation claims (as appears requiredEy the subsequent language of this rule)? Furthermore, in actual practice the PTO accepts file wrapper continuations identified by only the first listed name on the parent application, such as "Jones, et al". Again, there is no reason to make this an absolute requirement for a filing date, since it is merely a supplemental identification of the prior application. ------- 004-0013.TXT 37 CFR 1.53(d) and (d)(1) and proposed (d)(2) state that if an application or provisional application does not include the appropriate filing fee or oath (or the (undefined) "cover sheetn to be required for provisional applications), the "applicant" will be notified if a correspondence address has been provided. The person who is now, and ought to be, corresponded with, is not the applicant, it is the applicant's leqal representative, when there is one, and the rules ought to be corrected to reflect that. Where either a regular application or a provisional application is being filed by a legal representative, it is self- evidently presumable that said legal representative has authority from the applicants to file that case, even though, particularly in the case of a provisional application, there may well be no signed power of attorney. Even under the present practice, where an application is filed without signatures, so that there is no signed power of attorney, the Patent Office corresponds with the attorney, at his address, as it should. If the Patent Office starts sending papers to applicants, except in situations where there is no leaal representative, it will obviously result in delayed or lost papers, to the detriment of the PTO itself as well as the public. Since there is no prosecution of a provisional application itself, there is no logical reason for the PTO to require a formally executed power of attorney. The address of a licensed attorney or agent filincz the provisional application (and the very fact of possession of it) should be more than sufficient prima facie evidence of a power of attorney such that the PTO should be corresponding with that representative, not the named inventors. ------- 004-0014.TXT The rules also need to accommodate the likely scenario of provisional applications filed directly by the "inventors" on a rush basis followed by further subsequent correspondence in connection with that provisional application by a patent attorney attempting to straighten out the resultant messes, especially if the above-discussed rigid rules are adopted. ------- 004-0015.TXT In 1.101, it is suggested that "which are not examined" is superfluous and already obvious from the Statute and other rules. It could even create an erroneous "negative pregnant" implication that some provisional applications are examined. ------- 004-0016.TXT Likewise, in 1.139, and elsewhere in these rules, the repetition of language such as "so as to be pending for a period of no longer than 12 months . . . " and "under no circumstances will the provisional application be pending after 12 months" which is repeated twice in that same rule, are verbose repetitions which could be eliminated. ------- 004-0017.TXT As to 1.701(1), --interference-- should be inserted before "proceedings under 35 USC 135(a)" so as to identify what is being talked about here (for those of us who do not have total recall of every section of the patent statute by number), and to be consistent with the Statute itself and the subsequent 1.70b provisions (2) and (3) here which do explain what they are applying to. ------- 004-0018.TXT In 1.701(3), it is suggested that "a decision reversing an adverse determination of patentability" should be clarified. Is this satisfied by the Board reversal of any one rejected claim on appeal? If so, should not it say so? Further in the same sentence, what does "if the patent, if not subject to a terminal disclaimer," mean? Does "subject to" mean a terminal disclaimer which has been actuallv filed, or is this language so broad as to encompass a double patenting rejection by an examiner suaqestina a terminal disclaimer, i.e., "subject to" seems ambiguous. Also, what if the terminal disclaimer was only for one year of the life of the patent but the PTO delay was for the full 5 years? Does the PTO consider that this would deprive patent owners of their right to the other 4 years extension? This also raises an interesting question as to what if the terminal disclaimer would only affect part of the 5 year extended life of the patent, not any of its original 20 year term? Further clarification is suqqested . ------- 004-0019.TXT With respect to 1.701(c)(1)(i), I agree with the previous comment letter of Charles L. Gholz of December 27 that "the date the interference was declared or redeclared needs to be corrected; to "the date the interference was initialiv declared". There is no valid reason for a PTO delay between the original declaration of an interference and its redeclaration (which is often to correct original count mistakes by the PTO) to be subtracted from the statutory period of extension for interference delays. ------- 004-0020.TXT With regard to the following subparagraph 1.701(c)(1)(ii), the PTO should be complimented for appreciating and compensating for the fact that applications can be delayed for interferences by suspension of prosecution in the PTO for interferences with other applications. ------- 004-0021.TXT As a general or overall commentwith regard to 1.701 and its implementation, it is self-evident that the calculation of the extension of a patent term under these provisions can be complicated, especially for Appeal delays. This raises some important questions, not addressed in these rules, as to who will be doing the calculation of the life of the patent, and whether that calculation can be challenged, and for how long, and by whom. It is obviously vital and essential to ascertain the exact actual expiration date of a licensed or potentially infringed patent. If a date is to be printed on the patent it should be dependable. The undersigned has some trepidation as to these complex calculations being done accurately in all cases by PTO clerical personnel. The "comments" accompanying these proposed rules indicate that: "applicants need not file a request for the extension of patentterm under proposed 1.701. The extension of patent term is automatic by operation of law. It is currently anticipated that applicant would be advised as to the length of any patent term extension at the time of receiving the notice of allowance and issue fee due. Review of any determination as to the length of any patent term extension would be by way of petition under 1.181. " ------- 004-0022.TXT If this is intended to provide a specific time period in which the calculation of the patent extension may be changed, this should be spelled out in these new rules for the PTO's own benefit, as well as the publics. If the term of the patent is to be printed on the patent and not be subject to subsequent challenge in litigation or otherwise, that should be spelled out. Should the rules provide an express finite time period in which the calculation may be corrected by petition after the issuance of the patent or by certificate of correction? The massive disruptions which will be caused by the statute's extension of many existing patents is bad enough, without creating further future ambiguities as to Datent term lenqth for further patents. ------- 004-0023.TXT Further in regard to the calculation of the actual term length of a patent under the December 8 statute, and potential indefiniteness therein, the proposed rules and comments do not seem to explain what wili happen if the applicant(s) in a CIP application delete, by amendment or post issuance reissue deletion, an original priority claim to an earlier filed application. Will that extend the patent term to 20 years from the CIP date? And, if not, is that fair to applicant(s) whose final allowed claims are all narrowed to the point that they are now only supported by the CIP specification, so that any priority claim should be removed from the specification, as inappropriate and misleading? This clearly needs to be addressed in these rules. ------- 004-0024.TXT Proposed 1.83(2) statesthat "the drawing in a provisional application . . must show every feature of the invention disclosed . . ". As a minimum, this should be changed to --an invention disclosed--, because there may well be more than one disclosed invention, not even to mention there is no way for anyone to know what "the invention" is until the subsequent filing of a real application with claims which define what invention is being claimed and thereby define what drawings are actuallv required, for the first time at that time. There is no legal requirement for patent drawings of unclaimed subject matter, and it is beyond the authority of the PTO to demand it by rule. ------- 004-0025.TXT Finally, on a positive note, proposed 1.129 is a long sought and long overdue solution to the present PTO practice of forcing thousands vf unnecessary continuations annually, at major labor and costburdens on the PTO and the public, merely to enter claim amendments after final rejections. Thus, the only question is, why is this rule limited only to the transition period, and limited to only those applications pending for two years before the effective date of the new statute? This proposed rule should be applicable to all applications. The only justification the undersigned has ever heard for the present PTO practice of forcing continuations after only one amendment opportunity is that it enables the PTO to give artificially inflated filing statistics to Congress and artificially inflated ndisposal" statistics to examiners, at the expense of massive public and PTO inefficiencies and application time delays. ------- 004-0026.TXT The proposed Rule 129(a) here will allow entry of one or two amendments after final upon payment of a fee sufficient to deter its misuse and yet without wasting everyone's time creating new application files simply to have an application reconsidered or placed in much better condition for appeal. That will also reduce the burden on the Board of Appeals. This rule revision did not require its recent statutory mandate, and is not limited by that statute. ------- 004-0027.TXT This rule revision was always possible, and has been requested by bar associations for years. The present PTO practice of normally refusing to enter any substantive amendment (to force an unnecessary continuation) after only one single amendment is entirely a creature of internal PTO "compact prosecution" rule changes in the 1960's, and thus readily correctible by another rule change like 1.129. ------- 004-0028.TXT It will be appreciated that the above are merely preliminary pro bono review comments, and that the PTO may well have explanations or different understandings of the proposed rule language in some cases. However, given the normally inadequate response of the patent bar to new rule proposals, the undersigned offers these observations well in advance of the February 17 deadline in the hope that they may be helpful in drafting the final rules and/or inspiring other public input.
Last Modified: Match 1995