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FROM RESPONDENT 048:
NAME: Thomas E. Smith, Chair
COMPANY: AMERICAN BAR ASSOCIATION
SECTION OF INTELLECTUAL PROPERTY LAW
ADDR-1: 750 N. Lake Shore Drive
CITY, STATE ZIP: Chicago, Illinois 60611
TELEPHONE: 312/988-5598
FAX: 312/988-5500
REPRESENT: unclear
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QUESTION 01:
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?
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COMMENT ON QUESTION 01:
No comments supplied
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QUESTION 02:
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?
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COMMENT ON QUESTION 02:
No comments supplied
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QUESTION 03:
If the entire application is not published, what information
concerning the application should be published in the Gazette of
Patent Application Notices?
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COMMENT ON QUESTION 03:
No comments supplied
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QUESTION 04:
Should the patent applicant receive a copy of the published
application -- either published notice and/or application content
at time of publication?
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COMMENT ON QUESTION 04:
No comments supplied
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QUESTION 05:
Should the PTO permit an accelerated examination? If so, under
what conditions?
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COMMENT ON QUESTION 05:
No comments supplied
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QUESTION 06:
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?
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COMMENT ON QUESTION 06:
No comments supplied
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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?
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COMMENT ON QUESTION 07:
No comments supplied
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QUESTION 08:
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 later claiming of priority or benefit?
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COMMENT ON QUESTION 08:
No comments supplied
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QUESTION 09:
Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notice, i.e., the Patent Application Notice, be
removed from the search files, and should publication information
be included on the issued patent?
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COMMENT ON QUESTION 09:
No comments supplied
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QUESTION 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 permilted? Should
access be limited to the content before publication, or should it
extend to materials added after publication?
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COMMENT ON QUESTION 10:
No comments supplied
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QUESTION 11:
11. After publication, should assignment records of a published
application also be made accessible to the public?
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COMMENT ON QUESTION 11:
No comments supplied
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QUESTION 12:
After publication, should access include the deposit of
biological materials as set forth in 37 CFR 1.802 et seq.?
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COMMENT ON QUESTION 12:
No comments supplied
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QUESTION 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?
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COMMENT ON QUESTION 13:
No comments supplied
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QUESTION 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 action should be taken with
respect to untimely submissions by a third party?
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COMMENT ON QUESTION 14:
No comments supplied
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GENERAL COMMENT:
RECOMMENDATIONS AND REPORT OF THE AMERICAN BAR ASSOCIATION - SECTION OF
INTELLECTUAL PROPERTY LAW APPROVED BY THE SECTION COUNCIL ON JANUARY
30, 1995
Subject 1. PROPOSED IMPLEMENTING REGULATIONS FOR 20 YEAR TERM AND
PROVISIONAL APPLICATION FILING
RESOLVED, that the Section of Intellectual Property Law opposes, in
principle, the establishment by the Patent and Trademark Office of fees
for (a) the filing of provisional patent applications, (b) the filing
of submissions after final rejection under proposed s. 1.129(a), and
(c) each additional invention requested to be examined under proposed
a. 1.129(b), where such fees are greater than t he average costs of
processing such matters by the Patent and Trademark Office.
RESOLVED, that the Section of Intellectual Property Law is opposed, in
principle, to a definition of joint inventors in provisional patent
applications which is determined by reference to the subjec t matter
disclosed in a provisional application, rather than the subject matter
which constitutes the invention contained in a provisional patent
application and, specifically, the Section opposes t he proposed
amendment to 37 C.F.R. s. 1.45(c) to implement the inventorship
requirements of the statutory amendments providing for the filing of
provisional patent applications.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, provision in Title 37, Code of Federal Regulations,
specifically permitting applications for patent to take the fullest
advantage of the provisions of Public Law 103-465, by expressly
providing that such applications may claim the benefit of the filing
date of more than one prior provisional patent application. so lo ng as
the applicant complies with all of the provisions of the statute
including co-pendency.
RESOLVED, that the Section of Intellectual Property Law opposes, in
principle, the forwarding of provisional applications to the Files
Repository for storage once a complete application is filed.
RESOLVED, that the Section of Intellectual Property Law opposes, in
principle, the proposed restriction on the 20 year term transition
provision relating to applications containing multiple inventio ns
beyond that which is specifically authorized by way of limitation in
Public Law 103-465, and specifically, the Section opposes proposed 37
C.F.R. s. 1.129(b)(1) in the proposed rules published by the Patent and
Trademark Office in the Federal Register on December 12, 1994, which
would limit the applications which can have more than one invention
examined to those where the requirement for r estriction was made
within two months of the effective date of the legislation.
RESOLVED, that the Section of Intellectual Property Law opposes, in
principle, any definition of due diligence in implementation of
extension of the 20 year term, which does not limit the definition of
due diligence to activities which took place during the appeal process,
and which treats activities by an applicant, which are authorized by
statute and existing Patent and Trademark Office rule s as accepted
practices in connection with the filing and prosecution of patent
applications, as not constituting due diligence, and specifically, the
Section opposes (1) the definition of due dilig ence in s. 1.701(a)(2)
of the proposed rules published on December 1994, in so far as it
encompasses activities throughout the pendency of the application, and
(2) the explanation accompanying the p roposed rules, in that it treats
lack of due diligence as encompassing applicant requests for extensions
of time to respond to an office action or the submission of a response
which, through inadver tence. is not fully responsive.
Discussion: Some of the fees proposed by the PTO for implementing
Public Law 103- 465 seem excessive, particularly the fees for the
filing of a submission after final rejection under proposed s. 1.1
29(a) and for having an additional invention examined under proposed s.
1.129(b). Proposed s. 1.129(a) requires the PTO to process only a
single additional paper in an application already familiar t o the
Examiner. Considerable savings in processing such papers relative to
the processing of the average new patent application are realized by
the PTO. Yet, the fees proposed are equal to the filin g fees of a new
patent application. Similarly, the $150 processing fee for the filing
of provisional patent applications may also be excessive. It should
further be noted that the PTO is recovering more in fees overall than
it is budgeted.
The requirement of a listing of inventors in a patent application
absent some requirement for one or more claims is confusing and
antithetical. Title 35 U.S.C. s. 115 specifies that an application m
ake oath for that which he or she believes themselves to be the first
and original inventor for that which a patent is solicited. That is
inventorship stems from the claims of a patent. Requiring th at a party
must be named as an inventor because they contributed to the disclosure
of a patent application results in several anomalous outcomes. Parties
would have to be named as inventors when the y made no contribution to
the invention later claimed and believed to exist in an application.
Further, parties would have to be named when they contributed only to
subject matter which may be recog nized as prior art to the invention
disclosed in the provisional application itself. Further, the proposed
requirement on the naming of inventors who contributed to the
disclosure of a provisional p atent application is inconsistent with
the provisions of 35 U.S.C. s. 116 which requires that the inventors
have made a contribution to the invention disclosed and claimed, rather
than the whole sub ject matter of the disclosure in the patent
application. Further, a provisional patent application may contain
claims, in which case the inventors named must clearly be limited to
those who made a c ontribution to the invention as claimed rather than
just the subject matter disclosed.
Nothing in Public Law 103-465 prevents an application from claiming the
priority of more than one prior provisional application, if all of the
statutory requirements are met. This is not recognized in the proposed
regulations published by the Patent and Trademark Office. No mention is
made of an ability to claim the priority of more than one prior
provisional application. Such a practice is pe rmitted in Japan. The
proposed practice should permit an applicant within one year of the
date of filing of a first provisional application to file updating
provisional applications including additi onal subject matter, and
eventually file a complete patent application within one year of the
earliest provisional application filing date and claim the benefit of
the priority of all such prior pro visional patent applications.
The PTO explains that the reason for eliminating Rule 62 FWC
applications in the Notice proposing new regulations to implement
Public Law 103-465 is that the provisional applications will be sent to
the Files Repository for storage once a complete application is filed
rather than kept in the examining area. The Section appreciates that
the Statute does not require that provisional applications have either
a declaration or oath, and thus a Rule 62 FWC application filing
stemming from a provisional application will not constitute a complete
filing under 35 U.S.C. s. 111 and 115. Neverthele ss, the proposed
procedure is impractical since reference to the provisional application
may be needed by the Examiner to determine if the complete application
is entitled to the benefit of the fili ng date of the provisional
application. Further, it is desirable to keep these files together for
future reference, both before and after a patent issues, for ease of
access by the public as well as by the PTO and to minimize the effort
required in retrieving files.
Public Law 103-465 requires the Commissioner to prescribe regulations
to provide for the examination of more than independent and distinct
invention in an application that has been pending for three years or
longer as of the effective date of the 20 year term on June 8, 1995.
The law does not authorize the Commissioner to further limit this
facility to exclude applications where a restriction requirement was
made more than two months before the effective date of the legislation.
The reference to this two month period in the Statement of
Administrative Action containing a commentary on th e implementing
legislation is not supported by any provision in the legislation and
has no binding effect on, nor any basis in the legislation.
Proposed s. 1.701(d)(2) specifies that in determining due diligence for
the purpose of establishing whether a patent applicant is entitled to
an extension of the 20 year term equal to the length of a successful
appeal, the applicant's actions anytime during the pendency period of
the application are reviewed. The statute leaves open the possibility
that the Commissioner may limit the activitie s reviewed to those that
occur during the appeal process. It is submitted that the extension
based on appellate review should not be limited considerably more
strictly in relation to extensions in t he case interferences and
secrecy orders when the appeal is required to be successful.
Further, the examples used to illustrate the meaning of the definition
of due diligence set forth in 37 C.F.R. s. 1.701(d)(2) would define
existing routine practices of patent applicants as lacking in due
diligence. This seems entirely inappropriate. The statute provides for
a six month period of time to respond to office actions, permitting the
Commissioner to shorten this period. Existing ru les have, and would
still permit under the proposed regulations, extensions of time to
respond to office actions up to the six month statutory period of time.
It is both inconsistent and unfair to d esignate such requests for
extension of time to be lacking in due diligence under proposed s.
1.701(d)(2). It places undue pressure on patent applicants and their
attorneys and is entirely unfair, p articularly in circumstances where
time is required to appropriately respond to an office action, such as
where affidavits may be required as a part of the response.
The examples set forth in the notice of proposed rule making are- also
inconsistent with the standard as set forth in the proposed rule which
indicates that the Commissioner will examine the facts a nd
circumstances of the applicant's actions during the pendency of the
application to determine whether "the applicant exhibited that degree
of timeliness as may reasonably be expected from and, whi ch is
ordinarily exercised by, a person during the pendency of an
application." Action consistent with other Patent and Trademark Office
rules and with the six month period contemplated by the statu te for
responding to office actions makes any action by the applicant within
such a time period reasonable and timely. The rule, on its face,
appears to be satisfactory in this respect. However, exp lanation of
the proposed rule is entirely inappropriate and should be stated in an
exactly contrary matter.
Subject 2. PTO NOTICE REQUESTING COMMENTS ON 18-MONTH PUBLICATION
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, making the entirety of the prosecution history readily
accessible to the public any time subsequent to the 18 month publ
ication of patent applications, particularly in view of the provisional
rights which accrue upon publication of a patent application and the
dissemination purpose of 18 month publication.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, minimizing as much as possible the requirements placed on
applicants in connection with 18 month publication.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, minimizing as much as possible any obstacles caused by 18
month publication with the speedy examination and processing o f patent
applications.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, under an 18 month publication requirement, and 20 year term
limitation, limiting any interference with the prompt proces sing of
applications.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle. that the Patent and Trademark Office, under an 18 month
publication - requirement, provide a first office action on the merits
in all patent applications within 14 months after the actual filing
date of the application in the United States.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, that the Patent and Trademark Office, under an 18 month or
other pre-grant publication requirement, preclude, where appr opriate,
or limit access, generally in accord with current European Patent
Office practice, to biological deposits made in conjunction with the
filing of a patent application between the date of pre -grant
publication of a patent application and the date of grant of a patent.
Discussion. The following comments (1) address, in order, each of the
questions raised by the Patent and Trademark Office Notice published
December 12, 1994 in connection with the implementation of legislation
expected to be-enacted in 1995 providing for 18-month publication of
patent applications and (2) provide the rationale for the resolutions
set forth above:
The delivery of all official application-related materials to a central
location would cause obvious problems in many situations. Many papers
are delivered directly to an examining group for prompt consideration
by the Examiner. Delivering these papers to a central location would
substantially delay their consideration by the Examiner. The PTO should
consider requiring duplicate copies of all papers submitted to the PTO
to facilitate accessibility to published patent applications and their
file or prosecution histories.
The PTO should adopt a standard application format but only to the
extent necessary, with minimal standards and requirements necessary for
the 18-month publication. A bibliographic cover sheet, a de scription
section, claims, drawings, and the abstract, could all be designated as
separate portions of the application papers. A standard size of paper
and certain margin requirements would be accep table also.
Preferably, the entire application should be printed for ready access
by the public, especially to assure that the public can ascertain
possible liability under provisional rights that accrue and to assure
dissemination of the technology. At the same time, total costs of the
patent process should be minimized. The possibility of printing the
application, followed by printing amended claims and corrections to the
specification when a patent issues (as in the case of Reexamination),
should be explored. If the entire application is not published in
printed form, as much as possible by way o f information concerning the
application should be published, including at a minimum bibliographic
data, the claims (especially all of the independent claims), the
drawings, and the abstract. The re mainder of the application and the
entire file or prosecution history should be accessible on publication.
It is essential that the claims be set forth in the Gazette in order
for parties to be able to determine whether they have more detailed
interest in the subject matter. Provisional patent rights are
associated with published patent applications and are dependent upon
the claims in the pub lished application (as well as in the issued
patent). Accordingly, ready access to these claims and their scope is
essential to determining what rights may accrue as of the time of
publication, shou ld a patent subsequently issue. This information must
be readily accessible or a large number of orders and requests for more
complete information will be filed with the Patent and Trademark
Office.
The patent applicant should receive a copy of the published application
to assure that it is complete and accurate, particularly in respect to
the claims and to subject matter which may be keyed for publication.
OCR entry of data from the patent application in a standard format does
not assure that the information entered will be complete or that errors
in data entry will be properly resolved.
The PTO should permit an accelerated examination under minimal
conditions. More particularly, the PTO should assure that every patent
application has an office action issued before it is too late to stop
18 month publication of the application and that accelerated
examination be automatically granted with no conditions and no fee
where necessary to assure such timely receipt of a first office action.
Otherwise patent applications should be accelerated on the same basis
as under present rules.
The cost for publishing patent applications, if it is to be recovered
from fees, should be spread among the various fees presently in
existence including the filing fee, the issue fee, and maintenan ce
fees, and in addition, part of the publication costs should be born by
fees charged for copies of and access to copies of published
applications. If a separate publication fee is required it shou ld be
payable at filing but not be due until 15 months from the earliest
effective filing date or priority date. However, PTO fees should be
adjusted so that the Patent and Trademark Office does not recoup more
in total fee income than it expends in the processing of patent
applications as is presently the case in connection with fees paid into
the Patent Surcharge Fund.
The PTO should require an affirmative communication from a patent
applicant indicating that the applicant does not wish the application
to be published, unless a publication fee is charged, in which case
either timely notice of abandonment of the application or non-payment
of the publication fee should be taken as an indication that the
applicant does not wish the application to be published. The PTO
should provide latitude for late submission of a publication fee on two
grounds, (1) a relatively high surcharge fee for late submission
without cause within six months of the date that the publication fee
was due, providing applicant has at least two months notice from the
PTO regarding the non-receipt of the publication fee and (2) relatively
low surcharge fee with the late submissio n of the publication fee for
cause, with essentially the same criteria as apply in the case of
unavoidable delay petitions on the merits to revive an abandoned patent
application.
Claims for priority should be able to be submitted at least up to the
17-months from the earliest effective filing date or priority date of
the application. In addition applications should be able t o be
abandoned up until 17 months after the priority date, as long as any
fee charged for publication has been paid by the applicant if the
application is abandoned or the claim for priority is not submitted
within 15 months from the priority date.
Once the patent has issued, publication information should be included
on the issued patent including the text of the claims in the published
application. There is no reason to keep the paper docume nt in the
Patent Search files in such case.
After publication, access to the content of the application should
include all papers filed in connection with the application without
limitation. Third parties need to be able to determine as quick ly as
possible and as completely as possible their potential liability for
provisional patent rights which accrue with the publication of the
application. These rights are determined by the claims a t publication
and the claims in the ultimately issued patent as interpreted by the
specification and the prosecution history. Access to the original
specification and the prosecution history are ess ential.
After publication, assignment records of a published application should
also be made accessible to the public, since provisional rights accrue
upon publication. Members of the public need to be able to approach the
owner in regard to possible licenses relating to published applications
and in regard to determining rights in published applications.
After publication, access should include access to the deposit of
biological materials, to the extent necessary to determine potential
liability with respect to provisional patent rights, but with s uch
limitations as will preserve to the extent possible access which would
permit use of the deposit by a third party before a patent issues. A
giveaway of such an ability to the public when injunct ive relief is
not available would be unfair to the inventor.
The submission of amendments by substitute paragraphs and claims on
substitute pages, or replacements for entire applications, is a
satisfactory method of operating with 18 months publication, if ne
cessary to assure adequate access to applications, if done in a
reasonable way with reasonable limitations.
Protest procedures should be modified to permit third party submission
of prior art only within very limited time periods after publication of
an application and in such a way as not to delay the ex amination of a
patent application. Untimely submissions by a third party should be
returned to the third party and not placed of record in the patent
application. Protests may be resubmitted for inc lusion in the patented
file after a patent issues. This is the only effective way of
preventing the filing of protests from delaying the processing of a
patent application. With a 20 year term measu red from earliest
effective filing date, there should be no delay in the issuance of a
patent. Extensive protest procedures are the kind of procedures and
delays which the U.S. sought to eliminate f rom the Japanese law
permitting pre-grant oppositions. This was accomplished in agreements
which resulted in part in the 20 year term and 18 month publication
concessions on the part of the United S tates. It would be inconsistent
as well as unwise for the U.S. to adopt a protest procedure somewhat
akin to a pre-grant opposition procedure.
Last Modified: March 1995