Comments from Paul F. Morgan

NAME:               PAUL F. MORGAN

ADDR-1:             330 OAKDALE DRIVE

TELEPHONE:          (716)423-3015
FAX:                (716)423-5240


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.


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.


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.

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.


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


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!


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."


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".


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".


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".


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.


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.


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.


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.


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.


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.


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.


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 .


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.


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.


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. "


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.

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.


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.


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.


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.


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.

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

Last Modified: Match 1995