NAME: CHARLES L. GHOLZ COMPANY: OBLON, SPIVAK, MCCLELLAND, MAIER, NEUSTADT, P.C. ATTORNEYS AT LAW ADDR-1: FOURTH FLOOR 1755 JEFFERSON DAVIS HIGHWAY CITY, STATE ZIP: ARLINGTON, VA 22202 TELEPHONE: (703)413-3000 FAX: (703)413-2220 REPRESENT: UNCLEAR ------- 012-0001.TXT Further to my letter of December 27, 1994, I had another thought about proposed 37 CFR 1.701(c)(1). What about uninvolved claims? ------- 012-0002.TXT 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. ------- 012-0003.TXT 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? ------- 012-0004.TXT 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. ------- 012-0005.TXT 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