Comments from Kenneth E. Leeds

NAME:               KENNETH E. LEEDS

ADDR-1:             SUITE 700
                    25 METRO CRIVE
TELEPHONE:          (408)283-1222
FAX:                (408)283-1233


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.

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?

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

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)?


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?


Fourth, is there any diligence requirement to correct inventorshiD in
a provisional application?

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.

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?

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.

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.


8. I believe objective criteria for "diligence" ought to be set forth
in rule 1.701(d)(2).

I trust that the enclosed comments will be helpful.

Last Modified: March 1995