NAME: KENNETH E. LEEDS COMPANY: SKJERVEN, MORRILL, MACPHERSON, FRANKLIN & FRIEL ADDR-1: SUITE 700 25 METRO CRIVE CITY, STATE ZIP: SAN JOSE, CA 95110 TELEPHONE: (408)283-1222 FAX: (408)283-1233 REPRESENT: UNCLEAR ------- 007-0001.TXT I have the following comments on the proposed rules: 1. As a general housekeeping matter, proposed rule 1.9 defines a national application in a manner which includes provisional applications. Because of this, when the rules thereafter refer to an original application, they invariably parenthetically state "except provisional applications". See, for example, rule 1.16(d). Why not define a national application to exclude provisional applications. ------- 007-0002.TXT 2. Rules 1.12 and 1.14 deny the public access to assignment records for pending applications and the pending applications, respectively, unless one supplies a petition. Exactly what kind of showing must be in such a petition in order to gain access to these records? ------- 007-0003.TXT 3. New rule 1.48(d) is confusing for four reasons. First, if a provisional application errcneously names as an inventor somebody who did not invent the disclosed subject matter, a) is there any obligation to correct the provisional application inventorship by deleting the erroneously named inventor, and b) is it possible to correct the provisional application by deleting the erroneously named inventor? ------- 007-0004.TXT Second, suppose I file a provisional application which discloses subject matter A and B, I originally intend to claim only A, and I name as the inventor the person who invented A. I later decide that I also want to claim A coupled to B (e.g. because of newly discovered prior art)> and B was invented by a different person. Does that constitue an "error" as that term is used in new rule 1.48(d)? ------- 007-0005.TXT Third, suppose I file a provisional application, and then file a regular application. More than one year after my provisional filing date, I discover an error in the inventorship of the provisional application. Is there any obligation, need or reason to correct inventorship of the provisional application? ------- 007-0006.TXT Fourth, is there any diligence requirement to correct inventorshiD in a provisional application? ------- 007-0007.TXT 4. As 1OQ9 as the office is correcting rule 48, it ought to do away with sections 1.48(a)(1) and (4). I see no reaeon why inventorship changes CannOt be requested merely based on a petition signed by the attorney of record and submission of a regular declaration for patent application. The attorney of record will presumably make proper investigation of the relevant facts, and will not improperly add coinventors without proper authorization of his clients. Further, since rule 1.48(a)(2) requires a declaration for patent application signed by the correct inventors, there is no risk that inventors will be added without the knowledge and consent of the original inventors. Rule 1.48(a)(1) and (4) force attorneys and the office to incur needless expense generating and checking documents and obtaining signatures. I see no benefit to the public in having to go through this exercise. ------- 007-0008.TXT 5. I understand rule 1.60 is obsolete due to the Office's intention to eliminate the "stale oath" practice. Why not codify the removal of the stale oath practice? ------- 007-0009.TXT 6. I recommend specifying that it is unnecessary to provide formal drawings in a provisional application (see rule 1.83). Also, rule 1.83 is a bit ambiguous. A provisional application might disclose inventions A and B, but the applicant has nct decided which invention he will claim in a subsequent regular application. Thus, neither the office nor the applicant has any basis on which to determine whether the rule 1.83(a)(2) drawings requirement has been met. (One can only determine what drawings will ultimately be necessary when one knows what invention will be claimed.) I recommend that rule 1.83(a)(2) only oblige the applicant to submit drawings of ~ inVention disclosed iA the description, rather than the invention. Alternatively, the office could simply leave this rule out. Just because there is a statute setting forth this requirement does not mean that the Office has to enact parallel regulations. ------- 007-0010.TXT 7. IQ rule 1.701(a)(3), suppose I appeal the rejection of claims 1, 2 and 3, and rejection of claim 1. Am I entitled to an extension under rule 1.701? I think I should be. ------- 007-0011.TXT 8. I believe objective criteria for "diligence" ought to be set forth in rule 1.701(d)(2). ------- 007-0012.TXT I trust that the enclosed comments will be helpful.
Last Modified: March 1995