Department of Commerce
Patent and Trademark Office
37 CFR Parts 1 and 5
[Docket #: 941098-4298]
RIN 0651-AA75
Notice of Public Hearing and Request for Comments on
18-Month Publication of Patent Applications
Agency: Patent and Trademark Office, Commerce
Action: Notice of public hearing and request for public comments
Summary: The Patent and Trademark Office (PTO) requests public comment on
issues associated with the 18-month publication of patent applications.
Interested members of the public are invited to testify at a public
hearing and to present written comments on procedures for implementing
18-month publication, including the topics outlined in the supplementary
information section of this notice.
Dates: A public hearing will be held on Wednesday, February 15, 1995, in
Room 912, Crystal Park Two, 2121 Crystal Drive, Arlington, Virginia,
starting at 10:00 a.m. Those wishing to present oral testimony must
request an opportunity to do so no later than February 13, 1995. Written
comments on the topics presented in the supplementary section of this
notice will be accepted by the PTO until February 17, 1995.
Addresses: Those interested in presenting written comments on the topics
presented in the supplementary information, or any related topics, may
mail their comments to the Commissioner of Patents and Trademarks,
Washington, D.C. 20231, marked to the attention of Stephen G. Kunin,
Deputy Assistant Commissioner for Patent Policy and Projects, or send them
by facsimile transmission to (703) 305-8825.
Written comments should include the following information:
-name and affiliation of the individual responding;
-an indication of whether comments offered represent views of the
respondent's organization or are the respondent's personal views; and
-if applicable, information on the respondent's organization, including
the type of organization (e.g., business, trade group, university,
non-profit organization).
Parties offering testimony or written comments are asked to provide
their comments in machine readable format. Machine- readable submissions
may be provided as electronic mail messages sent over the Internet to
early-pub@uspto.gov, or on a 3 1/2-inch floppy disk formatted for use in
either a Macintosh or MSDOS-based computer. Machine-readable submissions
should be provided as unformatted text (e.g., ASCII or plain text), or as
formatted text in one of the following file formats: Microsoft Word
(Macintosh, DOS or Windows versions) or WordPerfect (Macintosh, DOS or
Windows versions).
Requests to present oral testimony should be presented to Stephen G.
Kunin by mail or facsimile, at the address listed above. No requests for
presenting oral testimony will be accepted by phone or through electronic
mail.
Written comments and transcripts of the hearings will be available for
public inspection on or about March 3, 1995, in Room 520 of Crystal Park
One, 2011 Crystal Drive, Arlington, Virginia. In addition, transcripts of
the hearings and comments provided in machine readable format will be
available on or about March 3, 1995, through anonymous file transfer
protocol (ftp) via the Internet (address: ftp.uspto.gov).
For Further Information Contact: Stephen G. Kunin by telephone at (703)
305-8850, by facsimile at (703) 305-8825, by electronic mail at
rbahr@uspto.gov, or Jeffery V. Nase by telephone at (703) 305-9282, or by
mail marked to the attention of Stephen G. Kunin, addressed to the
Commissioner of Patents and Trademarks, Washington, D.C. 20231.
Supplementary Information
I. Background
Legislation was introduced, but not passed, in the 103rd Congress that
would have required the publication of pending patent applications. Both
S. 1854, The Patent Simplification Act of 1994, and S. 2488, The Patent
Application Publication Act of 1994, had provisions directed to publishing
patent applications after 18 months from an application's earliest
effective filing date. Copies of these bills may be obtained from the
individuals identified in the "For Further Information Contact" section of
this notice.
The PTO anticipates that legislation with an 18-month publication
provision similar to S. 1854 and S. 2488 will be introduced in the 104th
Congress. In addition, the Secretary of Commerce and the Japanese
Ambassador to the United States have exchanged letters in which the United
States committed, among other things, to introduce legislation to provide
for the publication of pending patent applications 18 months after their
effective filing date. The Japanese Government also committed to
significant changes in its patent system. The United States committed to
begin publishing patent applications by January 1, 1996. If Congress
enacts this change, the PTO will need to implement the legislation quickly
to meet the January 1, 1996, date set out in the exchange of letters. In
the event legislation with an 18-month publication provision is enacted
next year, public comments will greatly assist the PTO in formulating any
notice of proposed rulemaking implementing the legislation. Specifically,
the PTO is considering ways to implement possible legislative changes
which would require the PTO to publish all patent applications at 18
months from the filing date, including the earliest filing date for which
a benefit is desired under 35 U.S.C. 119, 120, 121, and/or 365. The
PTO would publish sufficient information about pending applications to
enable a knowledgeable reader to determine whether the technology
described is relevant to the reader's interest. If such legislation is
enacted, certain changes will be required in the way business is conducted
both with and within the PTO. Accordingly, it is appropriate that the
public be given an opportunity to comment prior to any rules being
proposed.
Currently, national patent applications are maintained in confidence by
the PTO until a patent is granted as required by 35 U.S.C. 122. In
accordance with 37 C.F.R. 1.14(a), information regarding the status of
any such application may be given to a third party when "the application
has been identified by serial number in a published patent document or the
United States of America has been indicated as a Designated State in a
published international application, in which case status information such
as whether it is pending, abandoned or patented may be supplied." If
legislation similar to S. 1854 or S. 2488 is enacted into law, all pending
applications filed on or after the effective date of the legislation,
except for those under a 35 U.S.C. 181 secrecy order, will be published
at 18 months from the earliest filing date for which a benefit is sought,
unless the application has already issued as a patent.
The earliest filing date for which a benefit is sought for purposes of
18-month publication of the application should not be confused with the
filing date of an application for purposes of a 20-year patent term. The
date of filing in the legislation concerning a patent term of 20 years
from the date of filing, as proposed, is the date on which the application
was filed in the United States, or, if the application contains a specific
reference to an earlier filed application or applications under 35 U.S.C.
120, 121 or 365(c), the date on which the earliest of such
applications was filed. Although the benefit of a filing date under 35
U.S.C. 119, 365(a) or 365(b), including provisional applications as
provided for in the proposed 20-year patent term legislation, will not be
taken into account for purposes of a patent term of 20 years from the date
of filing, it will be taken into account for purposes of publication of
the application at 18 months from the earliest filing date for which a
benefit is sought.
In order to plan for implementation of publication at 18 months,
certain issues must be resolved. For example: What will be published? Will
access to the application file be available following publication? How
will submissions of prior art by third parties be treated? Should there be
a fixed time in which an applicant must claim priority under either 35
U.S.C. 119 or 120, or risk loss of priority or benefit of a
previously filed application?
PTO's current planning approach to implement early publication is to
create an electronic data base which captures the content of the paper
application file. This electronic data base will be used to provide a
source for (a) meeting publishing requirements for the applications, (b)
providing a basis for electronic searching and retrieval of applications,
and (c) providing a basis for producing copies of the application file. It
is currently contemplated that the publication of an application will take
the form of publishing certain portions of the information in an
application necessary to identify the technical subject matter of the
application (a Gazette Entry) in a separate Gazette of Patent Application
Notices, and a one-page paper document (a Patent Application Notice)
containing similar information will be created for placement in the search
files. It is further contemplated that public access will be provided to
at least the bibliographical and technical content of the application
(specification including claims and drawings) upon publication.
The creation of an electronic data base which mirrors the content of
the paper application file will provide the greatest degree of public
access to the application, while causing the least disruption to the
examination process. It is the PTO's intention to have such an electronic
data base in operation when the proposed legislation becomes effective.
However, provisions for providing access to the paper application file may
be necessary in the event that the electronic data base is not fully
operational when applications are first published. Accordingly, some
access to the paper application file may be necessary for a short period
of time.
II. Issues for Public Comment
Any interested member of the public is invited to testify and/or
present written comments on any topic related to 18-month publication. The
public was invited to comment on the advisability of introducing an
18-month publication procedure into the patent system of the United States
in a public hearing conducted in October 1993. Accordingly, the public is
encouraged to limit comments to the procedures that the PTO should adopt
if an 18-month publication regime is enacted. Questions included at the
end of this section are intended to illustrate the types of issues upon
which the PTO is particularly interested in obtaining public comment.
A. Creation of the Electronic Data Base
1. Data Capturing Operation
A data capturing operation will enable the creation of a data base
containing image and text equivalent to the content of a paper application
file. It is currently contemplated that those application materials not
submitted in machine readable format will be image and/or optical
character recognition (OCR) scanned by the PTO for entry into this
electronic data base. The PTO currently contemplates that the content of
the application as originally deposited in the PTO will be captured after
the application is serialized, and application-related materials
subsequently submitted will be captured after identification as directed
to an existing application. Currently, the PTO accepts, either by
hand-carried delivery or facsimile transmission, application related
materials (e.g., amendments, petitions) in locations other than the
central mailroom (e.g., the various Examining Groups). Unless the PTO
requires that all official application-related materials be submitted at a
central location (e.g., the mailroom), the PTO will have to either (1)
forward such application-related materials to a central data capturing
facility, or (2) provide data capturing facilities at every location at
which application materials may be filed in the PTO. Notwithstanding the
cost of either providing and operating numerous data capturing facilities,
or routing all application- related materials to a central data capturing
facility, the PTO is concerned that a decentralized operation will cause
some application-related materials to elude capture onto this data base.
See Question #1.
2. Standard Application Format
The creation of an electronic data base which mirrors the content of
the paper application file will be facilitated if papers filed in the PTO
are either (1) submitted in machine readable format or (2) specifically
arranged for image and/or OCR scanning by the PTO for entry into this
electronic data base. To facilitate the scanning of papers not submitted
in machine readable format, the PTO is considering requiring some type of
standard application format to increase scanning accuracy and
significantly reduce data capture costs. The PTO requests comments on the
advisability of a standard format and on the type or extent of a standard
format. This standard format could take the form of (1) requiring only
bibliographic data (e.g., title, inventor(s) name(s), address(es), etc.),
representative, correspondence address, priority claims, be arranged in a
standard format, (2) requiring bibliographic data and portions of the
technical content of the application such as the abstract, claims, and
drawings be arranged in a standard format, or (3) requiring that the
entire application be arranged in a standard format. In addition, the
standard format could include requiring standard paper sizes (8 1/2 by 11
inches and/or A4 only) for all application papers and/or requiring (1)
that claims be located on a separate page from the specification, (2)
special numbering for and/or spacing between each claim, or (3) that each
claim be located on a separate page. See Question #2.
B. Publication
1. Publication Content
The PTO has considered a number of options regarding what the pre-grant
publication might contain. These options included publishing the following:
i. Only the title and certain limited bibliographical data.
ii. Something similar to what the Official Gazette provides for an issued
patent: a drawing figure, representative claim and certain bibliographical
data, perhaps also including the abstract or the abstract rather than a
representative claim (a Gazette Entry).
iii. The entire application as filed.
iv. The entire application file as it exists at a fixed time before
publication.
Options (i) and (ii) contemplate that, subsequent to publication,
access will be made available on demand to the content of the application
(specification, claims and drawings), hereinafter "application content,"
as of the filing date or some fixed time before publication.
Option (iii) would require printing the entire application as filed
(specification, claims, and drawings), costing substantially the same as
the printing of the patent, and taking up considerable space in the search
files. The costs and space requirements of option (iv) would be greater
than those of option (iii), but option (iv) would provide the greatest
amount of published information. At present, it is believed that
implementation of option (ii), with access to the application content,
will best serve the interests of both the PTO and the public. Costs will
be minimized by keeping the published information to a single page and the
impact on the public and examiners' search files will be minimal, as
compared to options (iii) and (iv). Furthermore, the information provided
by option (ii) should be sufficient to enable the reader to make an
educated decision as to whether "detailed access" to the application
itself is necessary. Option (i), although somewhat lower in cost, would
most likely cause unnecessary requests for review of the application file
since the published information would be limited to a title, which may not
be reasonably indicative of the technical disclosure of the application,
much less what is actually being claimed. Present thinking is to publish a
Gazette Entry in a separate Gazette of Patent Application Notices, provide
access to the application content, and create a Patent Application Notice
containing similar information for placement in the search files. See
Question #3.
The PTO also requests comments as to whether separate delivery of a
copy of the published application information, i.e., the Gazette Entry or
the Patent Application Notice, to the applicant is desirable. As the
published information will be available in the Gazette of Patent
Application Notices, and applicants will know from their own files what is
published, it is unclear that the additional delivery of a copy of such
information to the applicant justifies the additional costs, and thus
fees, for providing such information. See Question #4.
2. Publication Cut-Off Date
The PTO is currently considering establishing a firm cut-off date at
which time applicants must decide whether or not they wish their
applications to be published, with the only alternative to publishing
being abandonment of the application. Present thinking, based on
experiences in the publishing of patents and SIRs, is that a cut-off time
of 15 months from the earliest filing date for which a benefit is sought
would be necessary to assure publication at 18 months. An applicant would
have to notify the PTO of his or her wish to not publish, and thus
abandon, the application by this cut-off date. The PTO recognizes that in
certain instances an applicant may desire to maintain the invention as a
trade secret if the protection to be afforded, in light of the prior art
considered by the examiner, is limited in nature. Examination before the
examiner in most non-continuing United States origin applications should
be concluded, and a first Office action should be issued in most
applications, by this cut-off date. Nevertheless, in certain
circumstances, an applicant may request accelerated examination such that
in a non-continuing United States origin application, prosecution before
the examiner should be complete by the cut-off date.
3. Accelerated Examination
Currently, the PTO will accelerate the examination of (make special) an
application under the conditions set forth in 37 C.F.R. 1.102, as
described in M.P.E.P. 708.02 and Petitioning to Make Applications
Relating to Biotechnology Special, 1092 Off. Gaz. Pat. Office 55 (July 15,
1988). It is contemplated that some applicants will desire an accelerated
examination of their respective applications to obtain a final
patentability determination prior to the critical publication cut-off
date, when an applicant must decide whether to have the application
published. Of course, increasing the number of accelerated examinations
may diminish the availability or speed of accelerated examination to an
individual applicant, as there will be more applications receiving an
accelerated examination. This will further delay the examination of
applications not provided with accelerated examination. In view of the
potential value of an accelerated examination to an individual applicant,
thought must be given as to whether (1) the current requirements for
receiving an accelerated examination are adequate, (2) accelerated
examination also should be provided for a substantial fee, or (3) there is
another alternative that would meet the needs of all applicants. See
Question #5.
4. Recovery of Publication Costs
The PTO estimates that 82 percent of the applications filed in Fiscal
1996 would be published under the proposed legislation, and that it would
require about $14 million in Fiscal 1996 to recover the costs of
publishing these applications in accordance with option (ii) discussed
above. If the proposed legislation provides the flexibility to the
Commissioner to recover the costs of publication by adjusting the filing,
issue, and maintenance fees, or by charging a separate publication fee, or
by any combination of these methods, how should this cost be allocated
among the various fees? Should the cost of publication be recovered
through a separate publication fee per se, or should all or part be
distributed among the filing, issue, and maintenance fees? In addition,
fees assessed under 35 U.S.C. 41(a) and (b), such as filing, issue
and maintenance fees, are subject to a 50 per cent small entity discount,
whereas a publication fee may or may not be subject to a small entity
discount. Accordingly, the manner of allocating the costs of publication
will dictate the relative proportion of the costs paid by large and small
entities. See Question #6.
5. Procedures for Collecting a Publication Fee
If the legislation provides for charging a publication fee, how should
the fee be collected, and what safeguards should be provided to ensure
timely publication and prevent unnecessary loss of potential patent
rights? The PTO contemplates that such a publication fee, if instituted,
will be required prior to 15 months from the earliest filing date for
which a benefit is sought, or, on filing, whichever is later, and that
failure to timely submit this fee will result in abandonment and non-
publication of the application. The PTO may institute a regimen under
which (1) an application will not be published unless the applicant
affirmatively requests publication by paying the publication fee, or
alternatively, (2) an application will be published unless the applicant
affirmatively indicates that the application is not to be published,
regardless of whether the publication fee is timely submitted. The PTO
recognizes that provisions for the acceptance of an
unavoidably/unintentionally delayed payment of this fee, vis-a-vis 37
C.F.R. 1.316, would be desirable.
Under either option, any applicant who did not timely submit the
publication fee must petition for acceptance of a late publication fee to
revive the application. Under option (2), the costs of publishing
applications lacking the publication fee, but also lacking an affirmative
statement that the applicant does not desire publication, will be passed
to other applicants, unless the application is subsequently revived;
however, this option will avoid the delay in publication inherent where an
application is not published until a delayed publication fee is submitted
for the application. See Question #7. Finally, there is a question as to
whether the PTO should develop procedures for the withdrawal (and
abandonment) of an application from publication subsequent to payment of
the publication fee.
C. Priority Rights
It had been proposed in S. 2488 that "each application for patent shall
be published ... as soon as possible after the expiry of a period of 18
months from the earliest filing date for which a benefit is sought under
this title." Both 35 U.S.C. 119 and 120, as proposed in S. 2488,
provided that the Commissioner (PTO) may determine the period within which
a claim for priority must be filed; however, 35 U.S.C. 119 expressly
requires that this period be during the pendency of the application. To
enable the PTO to publish applications as soon as possible after 18 months
from the earliest priority date, the PTO must be aware of any claims for
priority under 35 U.S.C. 119 or 120 as early as possible, preferably
on filing of the application. The PTO contemplates requiring applicants to
state any claim for priority under 35 U.S.C. 119 or 120 on filing,
but accepting late claims for priority with a surcharge. The PTO further
contemplates establishing, by regulation, a fixed period, such as within 3
months of filing, within which late claims for priority under 35 U.S.C.
119 or 120 will be accepted with a surcharge to avoid the loss of such
claim for priority. The time period for claiming priority under 35 U.S.C.
119 should be distinguished from the time period for perfecting such
claims, i.e., submitting a certified copy of the priority document, which
would remain as set forth in 37 C.F.R. 1.55(a). In view of the
potential for delaying the publication of an application by delaying the
filing of a claim for priority, the PTO is considering a requirement that
any late claim for priority be accompanied by a verified statement that
the delay in submitting such claim was unintentional. See Question #8.
D. Prior Art Effect of Published Application
It had been proposed in S. 2488 that 35 U.S.C. 102(e) will include
"an application for patent, published pursuant to section 122(b), by
another filed in the United States before the invention thereof by the
applicant for patent" within its scope. Accordingly, a published
application would have constituted prior art under 35 U.S.C. 102(e) by
the express terms in S. 2488. A published application will also constitute
prior art for its entire disclosure as a "printed publication" under 35
U.S.C. 102(a) and (b) as of its publication date. Thus, a published
application would have constituted prior art under 35 U.S.C. 102(e) by
the express terms in S. 2488 as of its filing date, and also it would
constitute prior art under 35 U.S.C. 102(a) and (b) as of its
publication date. Of course, the published application also would be
available as prior art under 35 U.S.C. 103. While the PTO does not
currently contemplate publication of the entire application, the
application content will be accessible to the public. In addition, the
Gazette Entry in the Gazette of Patent Application Notices will categorize
the application (title, abstract and/or claim, U.S. classification) so as
to make the application sufficiently accessible to those interested in the
art. In re Hall, 781 F.2d 897, 900, 228 USPQ 453, 456 (Fed. Cir. 1986);
see also, In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (application
available to the public as prior art, with an abstract, claim, and
classification published); and compare, In re Cronyn, 890 F.2d 1158, 13
USPQ2d 1070 (Fed. Cir. 1989) (undergraduate student thesis not available
as prior art where the thesis, while accessible to the public, was indexed
or categorized only by the author's name, rather than by subject matter).
As discussed above, it is currently contemplated that a Patent
Application Notice will be placed in the search files. The PTO is
undecided as to whether this Patent Application Notice should be removed
from the search files if and when the application issues as a patent, or
whether to include publication information on the issued patent. See
Question #9.
E. Access to Published Applications
1. Degree of Access
Providing the public with access to the application content as
originally filed will serve the legislative purpose of more rapid
dissemination of the technical content of a patent application. Additional
access to papers filed by an applicant, or issued by the PTO, will not add
to the disclosure of the technical content of an application, but would be
useful for (1) determining the metes and bounds of the invention claimed
in an application, such that persons could ascertain their potential
liability for infringement should the application issue as a patent, and
(2) participating in the prosecution of the application, e.g., submitting
prior art or a protest in the application. Unless the contemplated
electronic data base is in operation when the proposed legislation becomes
effective, or contingency arrangements permitting equivalent access to the
application content are developed, any access to a pending application
will require the removal of the application file from the examiner to
allow copying of the accessible portions. The degree of access provided to
pending applications may well have an adverse impact on the examination
process by increasing the pendency of applications. Balancing the desires
for reasonable access to applications subsequent to publication with the
continued desirability for limiting pendency of applications, the PTO
currently contemplates that access will be limited to the content of the
originally filed application papers as amended prior to the 15th month
from the earliest filing date for which a benefit is sought, or, on
filing, whichever is later. In other words, publication of the application
at 18 months would entitle any member of the public to purchase a copy of
the application (specification, claims, and drawings) as amended at a
point in time prior to publication. Other options regarding access to the
application file after publication include access to the entire content of
the application file from filing up to the date of publication, or
continuing access to the application file after publication, including all
papers contained in the file wrapper from filing to grant of the patent.
As access is increased, more information about the course of prosecution
is available to the public, but the opportunity for disruption of the
examination process, and the opportunity for increased costs and pendency,
also increases. See Question #10. Finally, the PTO also requests comments
on whether, subsequent to publication, access should be provided to (1)
the assignment records of an application, or (2) the deposit of biological
materials as set forth in 37 C.F.R. 1.802 et seq. See Questions #11 and
#12. The PTO currently contemplates that access fees, either for copying
the paper application file, or searching and copying information from an
electronic data base, will be required to compensate for the costs of
providing these services.
2. Submission of Amendments
The current procedures for entering amendments into applications
sometimes cause errors in the entry of amendments into applications and in
the printing of applications as patents. To facilitate the accurate entry
of amendments into applications and the printing of applications as
patents, as well as the understanding of the applications (specification,
claims, and drawings) by a person seeking access, the PTO is also
considering altering the current procedures for entering amendments into
applications. The procedures for entering amendments into an application
could take the form of requiring (a) substitute paragraphs of
specification and the complete rewriting of any amended claim, (b)
substitute pages or sheets of specification, drawings or claims, or (c)
replacement of the entire application. See Question #13.
F. Third Party Activity
The current protest practice as provided for in 37 C.F.R. 1.291 and
M.P.E.P. 1901 et seq. requires that the protest identify the
application under protest by application number or serial number and
filing date and include a listing of all patents, publications or other
information relied upon, a concise explanation of the relevance of each
listed item, an English translation of non-English language documents and
be accompanied by a copy of each document. In addition, the protest papers
must reflect that a copy of the same has been served upon the applicant or
upon the applicant's attorney or agent of record, or be filed with the PTO
in duplicate in the event that service is not possible. It is important
that any protest against a pending application specifically identify the
application with as much detail as possible.
In 1974, a Trial Voluntary Protest Program (TVPP), which included two
trial programs, was undertaken by the PTO. A total of 6,745 applicants
were given the opportunity to participate in the TVPP. In response, 1,970
or 29.2 percent of the applicants elected to participate. Protests were
subsequently filed in 128, or 6.5 percent, of the 1,970 published
applications. Prosecution was re-opened in eighty, or 62.5 percent, of the
protested applications. The pendency of published applications which were
not protested was delayed by 6 to 8 months. The pendency of protested
applications was further delayed for varying periods.
As noted above, 6.5 percent of all of the TVPP applications were
protested. If we assume that ten (10) percent of the published
applications are protested this would lead to a dramatic increase of
protests. In fact, the ten (10) percent figure may be on the low side,
since the claims in the TVPP applications were in allowable condition. As
of the contemplated cut-off date, many of the applications may not, as
yet, have isolated the metes and bounds of allowable subject matter.
The PTO requests comments as to when the submission of prior art by
third parties should be permitted subsequent to publication of the
application. Traditionally, applications are maintained in secrecy during
their entire prosecution, thus rendering the entire prosecution of an
application ex parte. Nevertheless, the third party submission of prior
art may improve the quality of issued patents by providing examiners with
the best prior art. Should it be considered desirable to substantially
maintain the ex parte nature of application prosecution, it is unclear as
to what limits should be placed on the submission of prior art by third
parties.
As the prosecution of an application may be closed (under final
rejection or Notice of Allowance) at the time of publication, the time
periods for the submission of prior art by third parties must be limited
to avoid delays in prosecution. In addition, the PTO requests comments on
whether to stay the proceedings for a set period following the publication
of the applications to permit the third party submission of prior art.
Providing any time period subsequent to the publication of an application
for the submission of prior art by third parties could result in the
reopening of prosecution in an application. Such continued prosecution of
applications, if permitted, would lead to increases in pendency, the
adverse effects of which will be further exacerbated under a 20-year
patent term regime.
If the submission of prior art in a pending application by third
parties is considered desirable, what procedures should be adopted to
accommodate such submission and take advantage of its potential benefits?
In addition, a specific time period, e.g., the earlier of the mailing of a
Notice of Allowance in the application or two months after publication of
the application, must be established during which prior art may be
submitted to ensure its consideration. The PTO currently contemplates that
prior art submitted outside this time period by third parties would simply
be placed in the application file. Finally, the PTO does not currently
contemplate providing third parties with any opportunity that would amount
to an opposition proceeding. See Question #14.
III. Questions
1. Should the PTO require that all official application-related materials
be delivered to a central location? Specifically, what problems would a
requirement that all official application-related materials be delivered
to a central location cause?
2. Should the PTO adopt a standard application format? If so, what
portions of the application papers should the PTO require be submitted in
a standard size and/or format, and what sanction (e.g., surcharge) should
be established for the failure to comply with these requirements?
3. Assuming that the entire application is not published, what information
concerning the application should be published in the Gazette of Patent
Application Notices?
4. Should the patent applicant receive a copy of the published application
-- either published notice and/or application content at time of
publication?
5. Should the PTO permit an accelerated examination? If so, under what
conditions?
6. Since the cost for publishing applications must be recovered from fees,
how should the cost of publication be allocated among the various fees,
including the possibility of charging a separate publication fee?
7. Should the PTO require an affirmative communication from a patent
applicant indicating that the applicant does not wish the application to
be published, or should failure to timely submit a publication fee be
taken as instruction not to publish the application? That is, should an
application be published unless the applicant affirmatively indicates that
the application is not to be published, regardless of whether a
publication fee has been submitted? What latitude should the PTO permit
for late submission of a publication fee?
8. The delayed filing of either a claim for priority under 35 U.S.C.
119 or 120 may result in the delayed publication of the application.
Should priority or benefit be lost if not made within a reasonable time
after filing? What latitude should the PTO permit for late claiming of
priority or benefit?
9. Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent Application
Notices, i.e., the Patent Application Notice, be removed from the search
files, and should publication information be included on the issued patent?
10. After publication, should access to the content of the application
file be limited to the originally filed application papers? If not, what
degree of access should be permitted? Should access be limited to the
content before publication, or should it extend to materials added after
publication?
11. After publication, should assignment records of a published
application also be made accessible to the public?
12. After publication, should access include the deposit of biological
materials as set forth in 37 C.F.R. 1.802 et seq.?
13. What types of problems will be encountered if all amendments must be
made by (a) substitute paragraphs and claims, (b) substitute pages, or (c)
replacement of the entire application?
14. Should protest procedures be modified to permit the third party
submission of prior art only prior to a specific period after publication
of the application? What actionshould be taken with respect to untimely
submissions by a third party?
Dec. 5, 1994 MICHAEL K. KIRK
Deputy Assistant Secretary of Commerce
and Deputy Commissioner of Patents
and Trademarks