NAME: JEFFERY H. INGERMAN, REG NBR 31,069 COMPANY: FISH & NAEVE ADDR-1: 1251 AVENUE OF THE AMERICAS CITY, STATE ZIP: NEW YORK, NY 10020 TELEPHONE: (212)596-9000 FAX: (212)596-9090 REPRESENT: SELF ------- 008-0001.TXT These comments are directed to the Notice of Proposed Rulemaking at 1177 OG 377 et seq., in which the Patent and Trademark Office has proposed amending various rules of practice to implement the 20-year patent term measured from the filing date of an application, and to implement provisional applications. ------- 008-0002.TXT I would like to address the proposed eliminatlon of 37 C.F.R. 1.60 ("Rule 60") covering the filing of continuation and divisional applications. While not specifically related to either the 20-year term or the provisional application, this proposed change in practice appears to be part of the restructuring of filing procedures growing out of the introduction of the provisional application. ------- 008-0003.TXT I would like to state first that this proposed change is a major change that should have been given more prominent notice, rather than being hidden, even if unintentionally, in the amendments related to the much hiqher-profile 20-year term and provisional application. ------- 008-0004.TXT This firm has found that Rule 60 has worked well for a long time. There have been no major problems with its use here, and there would not seem to be any greater likelihood of omitting a required portion of a Rule 60 application than of an application under 37 C.F.R. 1.53 ("Rule 53"), which is one of the justifications put forth in the notice of proposed rulemaking for eliminating Rule 60. ------- 008-0005.TXT Indeed, I foresee problems with filing continuations as suggested under Rule 53, including the possibility of omitting required papers, unless the Patent and Trademark Office publishes a notice more specifically detailing the procedure to be followed. As just one example, if the original application had been filed with an unexecuted declaration, and an executed decla^ation was filed later, should the continuation application include hoth declarations. or onlv the executed declaration? ------- 008-0006.TXT More significantly, I have some difficulty with the major justification in the notice of proposed rulemaking for the elimination of Rule 60 -- i.e.~ the "recent rule change" allowing filing of copies of executed declarations in place of originals. I believe that the notice is referring to the November 1993 amendments of 37 C.F.R. 1.4 (although the notice refers to Section 1.6). Although Section 1.4(d), which identifies those documents for which original signatures are not required, does not explicitly exclude original patent applications, no one in this firm has ever understood it to mean that an original signature was not required for a patent application. ------- 008-0007.TXT Indeed, original patent applications are specifically included on the list of documents in 37 C.F.R. 1.8 which cannot be faxed, and that list is incorporated into 37 C.F.R. 1.6(d), which is in turn incorporated, at least with respect to facsimiles, into 37 C.F.R. 1.4(d). I believe it has been widely interpreted as being incorporated with respect to photocopies as well. Certainly, nothing in the comments at 1157 OG 86 et seq. accompanying the November 1993 rule changes suggests that an original application can be filed based on a photocopy. Whether or not the elimination of Rule 60 is implemented, the Patent and Trademark Office should better publicize the ability to file an original patent application based on a photocopy. The notice should also clarify whether or not the photocopy could be based on a facsimile from the inventor to the attorney, with the original ultimately sent to the attorney and retained in the file. Such a practice would not burden the Patent and Trademark Office with long facsimile transmissions, and would appear to be within the spirit of 37 C.F.R. 1.4 as apparently interpreted by the Patent and Trademark Office. ------- 008-0008.TXT Finally, the elimination of Rule 60 would result in a significant financial cost to applicants in many cases. Under current Rule 60 practice, an applicant can specify certain of the original claims to be cancelled before computation of the filing fee. Under the proposed practice, that would not be possible. If the original specification were used, but with an altered claim set, the original declaration could no longer be used because the application would have been altered after execution. The applicant is thus required to file all of the original claims in the continuation or divisional application. Where the original application had 20 or fewer claims and three or fewer independent claims, it would not make a difference. But where there were excess claims in the original application, and the continuation or division would have fewer claims, it will make a difference. In fact, that is a likely scenario in divisional applications. Applicants should not be forced to incur these additional fees because of a rule change for which there is no clear need and from which there is no clear benefit. ------- 008-0009.TXT To sum up, I do not believe that Rule 60 should be eliminated. If Rule 60 is eliminated, the Patent and Trademark Office should publish clear guidelines, with examples, for filing applications that currently would be filed under Rule 60. ------- 008-0010.TXT These comments represent the views of the undersigned and do not necessarily reflect the views of this firm.
Last Modified: March 1995