Comments from Anthony J. Zelano

NAME:               ANTHONY J. ZELANO

ADDR-1:             SUITE 1400
                    2200 CLARENDON BOULEVARD


     I have the following personal comments on the proposed new

          1. Proposed 37 C.F.R. 1.48ld) and 1.53(b)(2) refer to
wthe actual inventor, or inventorsW in provtsional applinations,
s.e., the correct inventive entity. This requires a stanEdard for
determination of svho these people are.


          For regulat applications, there is rzo problerrs-the
clainis provide the necessary standard under Rule 45Xc) in
conjunction with the judicial definition of wcor~ plete conceptionw
(e.g., Burroughs VVe/come Co. v. Barr LaboratorSes, Inc., 32
U.S.P.Q.2d 1915 (Fed. Cir. 1994). Psule 45Xc)'s definition for
provisional application inventor(s), hovvever, is too irnprecise,
referring only to wsubject matter disclosed in the provisional
application". Thus, the rules imply that the correct inven- torsMf a
provision31 appl®catiof: are al1 those who hate contributed to the
stisclosed inventions.


          What if subject rnatter is disciosed but vvill not be
clainced. s.g., an intention of another entity which iS considered to
be part of ~e best mode for the invention of the provisional
application, or simply is disclosed with no intention of being
clainned? Do the ~actual inventorsw of the provisional application
include the inventors of suctl subject matter althouah It is not
intended on the filing date to claim the same in a subsequent regular
applica:ion? If not, I could not find where this is precluded in the
rules. Perhaps the last sentence of Rule 45(cl ›an be changed tn
rQfRf tO:

          each narned inventor rnust have made a contribution,
          individually or jointly, to the subject matter
          disclosed in the ptovisional application for which the
          latter on its filing date is contemplated by the actual
          inventor or inventors to be the basis for a claim of
          priority under 35 U.S.<  119{e).


In other words, unless disstosed subject rnatter is intended to be
subsequently clairned and to receive prioritY based on the
provisional application, its inventors are not wactual^.


          2. Please do not elin~;nate ths retention fee pra›tice. Our
firm has found it to be a taluable resource for changing inventorship
when an originallv,r filed Plule 53 application narnes an incortect
inventive entitz,r. e.g., with respect to new rhatt er not in a
priority filing {Paris Convention filing or provislonal application).
It has also been useful for Rule 53 foteign priority-based
applications whete the technology is tapidly developing, and ClP's
ate filed quickly, even after the priority year. ln these scenarios.
provisional applications cannot be used, and applicants would be
prejudiced by the need to pay a fuil $730 filing fee for the refiling
instead of only a retontion fee. {In addition to the full fee, would
applicants also nead to file oaths or declarations to protect p.
iority rights under the proposed rules? Now, a retention fee anly is
needed to retain priority rights for a refiled application.)


          3. Rule 1.129 is unfair. Currently, a full filing fee of
t730 in a Rule 62 application not only buys an applicant entS of a
previously refused amendrrsent, but also a non-flrxal first office
actson. Why should the same fee buy less under the transitional
rules? Plesse lovver the fee by one-half, or provide two office

Last Modified: March 1995