Comments from Jeffrey H. Ingerman

NAME:               JEFFERY H. INGERMAN, REG NBR 31,069
COMPANY:            FISH & NAEVE

ADDR-1:             1251 AVENUE OF THE AMERICAS

TELEPHONE:          (212)596-9000
FAX:                (212)596-9090


          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.


          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.


          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


          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.


          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?


          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.


          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.


          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.


          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.


          These comments represent the views of the undersigned and
do not necessarily reflect the views of this firm. 

Last Modified: March 1995