[BILLING CODE 3510-16]
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 3½-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 (8½ 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 action
should be taken with respect to untimely submissions by a
third party?
Date:___________ ______________________________________
Michael K. Kirk
Deputy Assistant Secretary of Commerce and
Deputy Commissioner of Patents and Trademarks
Last Modified: February 1995