---------------------------------------- QUESTION 07: 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 That is, should an application be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether a publication fee has been submitted?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? ---------------------------------------- FROM RESPONDENT 001: NAME: David E. Craword, Jr. (Reg No. 38,118) COMPANY: ROGERS, HOWELL & HAFERKAMP COUNSELLORS AT LAW ADDR-1: PIERRE LACLEDE CENTER, SUITE 1400 7733 F0RSYTH BOULEVARD CITY, STATE ZIP: ST.LOUIS, MISS0URI 63105-1817 TELEPHONE: (314) 727-5188 FAX: REPRESENT: unclear ---------------------------------------- COMMENT ON QUESTION 07: ------- 001-Q07.TXT The PTO should require an affirmative communication indicating that the application is to be published along with submission of a publication fee. If the fee is unpaid, the application should be automatically abandoned subject to revival due to unavoidable or unintentional delay in filling the fee. ---------------------------------------- FROM RESPONDENT 026: NAME: Louis Maassel COMPANY: World Intellectual Property Organization, Geneva, Switzerland ADDR-1: 12716 Buckingham Drive CITY, STATE ZIP: Bowie, Maryland 20715 TELEPHONE: 301) 464-4306 FAX: REPRESENT: self ---------------------------------------- COMMENT ON QUESTION 07: Under the PCT, all international applications are published promptly after the expiration of 18 months from the priority date except those which fall under the reservation of Article 64(3) and those which have been withdrawn prior to the date on which "technical preparations for international publication have been completed." (PCT Rule 90bis. l(c)). This date on which "technical preparations f or international publication have been completed" is 15 days prior to the international publication date. Publication is currently every Thursday. Withdrawal of an international application may also be made provisional so that if the notice of withdrawal arrives too late to stop publication that the applicant is not faced with a publication of a withdrawn application. A similar conditional aba ndonment practice should be adopted by the USPTO. ---------------------------------------- FROM RESPONDENT 041: NAME: Frederick S. Burkhart COMPANY: INTELLECTUAL PROPERTY LAW SECTION OF THE. STATE. BAR OF MICHIGAN ADDR-1: 306 TOWNSEND STREET CITY, STATE ZIP: LANSING, MICHIGAN 48933 TELEPHONE: 517-372-9030 FAX: REPRESENT: association ---------------------------------------- COMMENT ON QUESTION 07: The Patent and Trademark Office should publish an application unless affirmative communication is received from a patent Applicant, indicating that the Applicant does not wish the application to be published. ---------------------------------------- FROM RESPONDENT 019: NAME: Wilmot H. McCutchen, President COMPANY: HOUSTON INVENTORS ASSOCIATION ADDR-1: CITY, STATE ZIP: HOUSTON, TEXAS TELEPHONE: (713) 957 4344 FAX: (713) 868-4104 REPRESENT: COMPANY ---------------------------------------- COMMENT ON QUESTION 07: ------- 019-Q07.TXT Because the publication under option is (Appendix "A" format) is innocuous, ~ publication cutoff date (i.e. a date where the applicant would have to elect between publication or abandonment of his patent application) would be immaterial, except as to applicants guilty of dilatory prosecution. The concern with submarine patents may b~ addressed by compulsory full publication at some time later than a flat 18 months where it {s clear that dilatory prosecution is taking place, in the opinion of the examiner. We can see no good reason to publish under options it, iii, or iv, everyone's application- at 18 months, whether they are guilty of dilatory prosecution or not. Under our proposal, the only cave in which a publication sufficiently enabling to b~ harmful to the- applicant would be available would b~ where there is a finding of dilatory prosecution (potential submarine patent) by the examiner, whereupon the applicant should be given a choice whether to continue with prosecution (having had the application more fully published) or to abandon the application and avoid further publication of an enabling natures. But why treat all inventors as if they were guilty of dilatory prosecution? That is what this rule seeks to do presumes bad faith on the part of all applicants and then punish them by publishing an enabling disclosure of their applications after 18 months, which is often before even the first office action. ---------------------------------------- FROM RESPONDENT 010: NAME: Scott Weide COMPANY: QUIRK & TRATOS ADDR-1: 550 E. CHARLESTON BLVD. . SUITE D CITY, STATE ZIP: LAS VEGAS NEVADA 89104 TELEPHONE: (702) 386-1778 FAX: REPRESENT: firm ---------------------------------------- COMMENT ON QUESTION 07: ------- 010-Q07.TXT NWith the publication fee built into the filing fee, no separate publication fee is necessary. The PTO would not then need to address the issue of whether an application should be published. If the application has not been expressly abandoned, it should be published. There is then no need for latitude in submitting late publication fees. Allowing late payment of the publication fee is undesirable because it would provide an incentive to file multiple applications and would provide an undue advantage to foreign applicants. ---------------------------------------- FROM RESPONDENT 029: NAME: Marcia H. Sundeen COMPANY: PENNIE & EDMONDS ADDR-1: 1701 Pennsylvania Avenue, N.W. CITY, STATE ZIP: Washington, D.C. 20006-4706 TELEPHONE: (202) 393-0177 FAX: (202) 393 0462 REPRESENT: PTO Relations Committee ---------------------------------------- COMMENT ON QUESTION 07: ------- 029-Q07.TXT The PTO should require an affirmative communication from a patent applicant when the applicant does not wish for the application to be published. This should be done in a manner similar to that of the PCT where a communication must be submitted at least two weeks in advance of the anticipated publication date when an application is to be withdrawn. ---------------------------------------- FROM RESPONDENT 033: NAME: TOM EASTEP COMPANY: THE ALLIANCE FOR AMERICAN INNOVATION ADDR-1: 1100 Connecticut Ave. NW, Suite 1200 CITY, STATE ZIP: Washington, D.C 20036-4101 TELEPHONE: 202-293-1414 FAX: 202-467-5591 REPRESENT: ALLIANCE FOR AMERICAN INNOVATION ---------------------------------------- COMMENT ON QUESTION 07: ------- 033-Q07.TXT THE ANSWERS TO QUESTION 7 ARE YES, NO, AND SHOULD BE DEFINITE, IN THAT ORDER. ---------------------------------------- FROM RESPONDENT 008: NAME: Gabriel P. Katona COMPANY: Schweitzer Cornman & Gross Attorneys at Law ADDR-1: 230 Park Avenue CITY, STATE ZIP: New York, New York 10169-0059 TELEPHONE: (212) 986-3377 FAX: (212) 986-6126 REPRESENT: unclear ---------------------------------------- COMMENT ON QUESTION 07: ------- 008-Q07.TXT The applicant should have an opportunity to (and the burden of) affirmatively withdrawing the application from publication, via Express Mail, until up to 17 months after filing of the permanent application This is in keeping with the socially desirable purpose of making publication as early and as likely to occur by taking place as automatically as possible. ---------------------------------------- FROM RESPONDENT 004: NAME: Michael H. Minns COMPANY: INGERSOLL-RAND COMPANY Patent Department ADDR-1: 942 Memorial Parkway CITY, STATE ZIP: Phillipsburg, NJ 08865 TELEPHONE: (908)859-7700 FAX: (908) 859-7707 REPRESENT: self ---------------------------------------- COMMENT ON QUESTION 07: ------- 004-Q07.TXT The publication fee should be included with the application fee. The application should be published, even if abandoned, unless the applicant files an express request of abandonment.
Last Modified: March 1995