Comments from Charles L. Gholz

NAME:               CHARLES L. GHOLZ
                    ATTORNEYS AT LAW
ADDR-1:             FOURTH FLOOR
                    1755 JEFFERSON DAVIS HIGHWAY
TELEPHONE:          (703)413-3000
FAX:                (703)413-2220


    Further to my letter of December 27, 1994, I had another thought
about proposed 37 CFR 1.701(c)(1). What about uninvolved claims?


    It is frequently the case that some claims in an application in
interference are designated as corresponding to the or a count, but
other claims in the same application are not designated as
corresponding to any count. Under current law, the applicant has a
choice. He can either (1) allow the uninvolved claims to sit in the
involved application until after the interference is over, secure in
the knowledge that, even if he loses the interference, he can still
obtain a 17-years-from-the- issue-date patent containing the
uninvolved claims, or (2) file a 37 CFR 1.635/1.615 motion for leave
to cancel the uninvolved claims from the involved application and to
place the uninvolved claims in a continuation application, thereby
possibly speeding their issuance.


    It seems to me that the five-year extension of the patent term
provided by 37 CFR 1.701 should not apply to uninvolved claims. There
is a public policy in favor of getting patentable claims into a
patent. That is the core of the anti-submarine patent concern. If the
purpose of 37 CFR 1.701(c) is to prevent patentees from being
deprived of a portion of their 20-years- from-the-filing-date terms
by reason of being held up in interferences while they are still
applicants, why should the uninvolved claims get that benefit?


    Of course, one does not always know whether claims are
conclusively uninvolved. If one's opponent has filed a 37 CFR
1.633(c)(3) motion to redesignate initially uninvolved claims as
corresponding to the or a count and if the administrative patent
judge has denied that motion, it is possible that one's opponent will
raise that issue again at final hearing. Similarly, if one has filed
a 37 CFR 1.633(c)(4) motion to-have initially involved claims
designated as not corresponding to any count and if the
administrative patent judge has granted that motion, it is possible
that one's opponent will raise that issue again at final hearing.
However, if claims were initially uninvolved and if one's opponent
did not file a 37 CFR 1.633(c)(4) motion, then one can rest assured
that those claims are going to remain uninvolved.


    I think that 37 CFR 1.701(c)(1) should ensure that such
conclusively uninvolved claims do not get the benefit of the
extension. To ensure that this is so, I suggest that you provide (1)
that a applicant interferent does not need the administrative patent
judge's permission to cancel conclusively uninvolved claims from an
application in interference and to re-present those claims in a
continuation application and (2) that, if an applicant leaves
uninvolved claims in an application in interference for more than
one month after the first round preliminary motions are filed if no
37 CFR 1.633(c)(4) motion is filed directed to those claims, then the
applicant does not get the benefit of the extension for any claim.
That should motivate applicants to get their conclusively uninvolved
claims out of applications involved in interferences and into
continuation applications!

Last Modified: March 1995