[Federal Register: October 5, 1998 (Volume 63, Number 192)]
[Proposed Rules]
[Page 53497-53530]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr05oc98-30]
[[Page 53497]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1
Changes To Implement the Patent Business Goals; Proposed Rule
[[Page 53498]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 980826226-8226-01]
RIN 0651-AA98
Changes To Implement the Patent Business Goals
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Advance notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (PTO) has established business
goals for the organizations reporting to the Assistant Commissioner for
Patents (Patent Business Goals). The Patent Business Goals have been
established in response to the Vice-President's designation of the PTO
as an agency that has a high impact on the public, and they are
designed to make the PTO a more business-like agency. The focus of the
Patent Business Goals is to increase the level of service to the public
by raising the efficiency and effectiveness of the PTO's business
processes.
The PTO is considering a number of changes to the rules of practice
and procedure to support the Patent Business Goals. The PTO is
publishing this Advance Notice of Proposed Rulemaking to allow for
public input at an early stage in the rule making process. The PTO is
soliciting comments on these specific changes to the rules of practice
or procedures.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before December 4, 1998. While comments
may be submitted after this date, the PTO cannot ensure that
consideration will be given to such comments. No public hearing will be
held.
ADDRESSES: Comments should be sent by mail message over the Internet
addressed to regreform@uspto.gov. Comments may also be submitted by
mail addressed to: Box Comments--Patents, Assistant Commissioner for
Patents, Washington, D.C. 20231, or by facsimile to (703) 308-6916,
marked to the attention of Hiram H. Bernstein. Although comments may be
submitted by mail or facsimile, the Office prefers to receive comments
via the Internet. Where comments are submitted by mail, the Office
would prefer that the comments be submitted on a DOS formatted 3\1/4\
inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Suite 520, of One Crystal Park,
2011 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
ftp.uspto.gov). Since comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: With regard to this Advance Notice of
Proposed Rulemaking in General: Hiram H. Bernstein or Robert W. Bahr,
by telephone at (703) 305-9285, or by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, DC 20231, or
by facsimile to (703) 308-6916, marked to the attention of Mr.
Bernstein.
With regard to simplifying request for small entity status (Topic
1): James E. Bryant, III, at the above telephone number.
With regard to requiring separate surcharges and supplying filing
receipts (Topic 2), and permitting delayed submission of an oath or
declaration, and changing time period for submission of the basic
filing fee and English translation (Topic 3), and creating a PTO review
service for applicant-created forms (Topic 21): Fred A. Silverberg, at
the above telephone number.
With regard to limiting the number of claims in an application
(Topic 4), providing for presumptive elections (Topic 14), and creating
alternative review procedures for applications under appeal (Topic 18):
Robert W. Bahr, at the above telephone number.
With regard to harmonizing standards for patent drawings (Topic 5),
printing patents in color (Topic 6), and reducing time for filing
corrected or formal drawings (Topic 7): Karin L. Tyson, at the above
telephone number.
With regard to permitting electronic submission of voluminous
material (Topic 8): Jay Lucas, at the above telephone number.
With regard to imposing limits/requirements on information
disclosure statement submissions (Topic 9), and refusing information
disclosure statement consideration under certain circumstances (Topic
10): Kenneth M. Schor, at the above telephone number.
With regard to providing no cause suspension of action (Topic 11):
Gerald A. Dost, at the above telephone number.
With regard to requiring a handling fee for preliminary amendments
and supplemental replies (Topic 12): Randall L. Green, at the above
telephone number.
With regard to changing amendment practice to replacement by
paragraphs/claims (Topic 13), requiring identification of broadening in
a reissue application (Topic 16), and changing multiple reissue
application treatment (Topic 17): Joseph A. Narcavage, at the above
telephone number.
With regard to creating a rocket docket for design applications
(Topic 15): Lawrence E. Anderson, at the above telephone number.
With regard to eliminating preauthorization of payment of the issue
fee (Topic 19), and reevaluating the Disclosure Document Program (Topic
20): John F. Gonzales, at the above telephone number.
SUPPLEMENTARY INFORMATION:
I. Background
For Fiscal Year 1999, the PTO is emphasizing its core business: (1)
the granting of patents; (2) the registering of trademarks; and (3) the
dissemination of the information contained in those documents. The
Presidential themes of encouraging innovation and investment, enhancing
our customers' satisfaction and seeking efficiencies through
international cooperation are embodied in the business goals of the
organizations reporting to the Assistant Commissioner for Patents
(Patent Business Goals).
President Clinton's Framework for Global Electronic Commerce
demands that the United States make its system for protecting
patentable innovations more efficient to meet the needs of the fast-
moving electronic age. The PTO was selected by Vice President Gore as
one of a small group of Federal agencies, known as High Impact
Agencies, that has a direct impact on the public. The products and
services that the PTO provides to its customers must enable them to get
their new inventions and new ideas into the American and global
marketplace.
The PTO's participation as a High Impact Agency is expressed in its
Year 2000 Commitments, part of the Fiscal Year 1999 Annual Performance
Plan. Some key objectives of that plan include:
1. The PTO will reduce its processing or cycle time (i.e., the
actual time spent by the PTO in processing an application, which does
not include the time when the PTO is awaiting a reply or other action
by the applicant) for inventions to twelve months by the year 2003.
2. The PTO will test reengineered processes and automated systems,
and
[[Page 53499]]
be ready to deploy electronic processing of patent applications by the
year 2003.
3. The PTO will work with the World Intellectual Property
Organization (WIPO) to achieve electronic filing of Patent Cooperation
Treaty applications, and by the year 2000, electronically receive and
process Patent Cooperation Treaty (PCT) applications at the PTO.
The activities in this plan call for changes in the very nature of
the patent prosecution activity as it currently exists. Such activities
are reflected in the regulations of the PTO, Title 37 of the Code of
Federal Regulations. This rulemaking is designed to be the vehicle of
the changes to these regulations, to embody the spirit and substance of
the PTO's activities for self-improvement.
II. Specific Patent Business Goals
The PTO has established five specific Patent Business Goals, which
have been adopted as part of the Fiscal Year 1999 Corporate Plan
Submission of the President. The five Patent Business Goals are:
Goal 1: Reduce PTO processing time (cycle time) to twelve months or
less for all inventions.
Goal 2: Establish fully-supported and integrated Industry Sectors.
Goal 3: Receive applications and publish patents electronically.
Goal 4: Exceed our customers' quality expectations, through the
competencies and empowerment of our employees.
Goal 5: Align fees commensurate with resource utilization and
customer efficiency.
The organizations reporting to the Assistant Commissioner for
Patents have developed a business plan (Patent Business Plan) to
achieve the Patents Business Goals. The rule and procedure changes
currently under consideration by the PTO, and to which this Advance
Notice of Proposed Rulemaking (Advance Notice) pertains, are in support
of the Patent Business Plan.
An example of how the PTO is considering changes to the rules of
practice and procedure to meet the varied demands of its customers is
shown by the consideration of both an expedited examination procedure
for design applications as well as an expanded suspension of action (or
deferred examination) procedure. Currently, all applications are, with
limited exceptions, scheduled for examination based upon their filing
date. See section 708.02 of the Manual of Patent Examining Procedure
(6th ed., rev. 3, July 1997) (MPEP). While the rules of practice do
provide for the advancement of applications for examination (37 CFR
1.102) and suspension of action in an application (37 CFR 1.103), the
current procedures are not sufficiently tailored to the varied needs of
the PTO's customers.
The PTO is considering providing a procedure under which those
design applicants who need rapid examination due to rapid style changes
will be able to request expedited examination of their applications.
The PTO is also considering providing a procedure under which those
applicants who do not need or desire examination (e.g., the cost of
prosecution is a burden and the invention is not yet commercially
viable) will be able to request a prolonged suspension of action.
Obviously, applicants may be required to pay additional fees (e.g., to
recover the PTO's costs of exception processing for an expedited
application) or waive certain rights (e.g., agree to publication of the
application as a condition of a prolonged suspension of action) to
avail themselves of the benefits of these procedures.
Finally, the changes under consideration are intended to improve
the PTO's business processes in the context of the current legal and
technological environment. Should these environments change (e.g., by
adoption of an international Patent Law Treaty, enactment of H.R. 400
or S. 507, 105th Cong., 1st Sess. (1997), or implementation of new
automation capabilities), the PTO would have to reconsider its business
processes and make such further changes to the rules of practice as are
necessary.
III. Topics for Public Comment
A. Introduction
The topics on which the PTO particularly desires public input at
this rulemaking stage are:
(1) Simplifying requests for small entity status (37 CFR 1.27);
(2) Requiring separate surcharges and supplying filing receipts (37
CFR 1.53);
(3) Permitting delayed submission of an oath or declaration, and
changing time period for submission of the basic filing fee and English
translation (37 CFR 1.52, 1.53);
(4) Limiting the number of claims in an application (37 CFR 1.75);
(5) Harmonizing standards for patent drawings (37 CFR 1.84);
(6) Printing patents in color (37 CFR 1.84);
(7) Reducing time for filing corrected or formal drawings (37 CFR
1.85);
(8) Permitting electronic submission of voluminous material (37 CFR
1.96, 1.821);
(9) Imposing limits/requirements on information disclosure
statement submissions (37 CFR 1.98);
(10) Refusing information disclosure statement consideration under
certain circumstances (37 CFR 1.98);
(11) Providing no cause suspension of action (37 CFR 1.103);
(12) Requiring a handling fee for preliminary amendments and
supplemental replies (37 CFR 1.111);
(13) Changing amendment practice to replacement by paragraphs/
claims (37 CFR 1.121);
(14) Providing for presumptive elections (37 CFR 1.141);
(15) Creating a rocket docket for design applications (37 CFR
1.155);
(16) Requiring identification of broadening in a reissue
application (37 CFR 1.173);
(17) Changing multiple reissue application treatment (37 CFR
1.177);
(18) Creating alternative review procedures for applications under
appeal (37 CFR 1.192);
(19) Eliminating preauthorization of payment of the issue fee (37
CFR 1.311);
(20) Reevaluating the Disclosure Document Program; and
(21) Creating a PTO review service for applicant-created forms.
A discussion of each of these topics is set forth below.
The topics discussed in this Advance Notice are those for which the
PTO is considering the greatest change from current practice. For this
reason, the PTO is publishing this Advance Notice (rather than a Notice
of Proposed Rulemaking) to obtain public input on these topics at the
inception of the rulemaking process. The public is invited to submit
written comments on any of the topics, including issues related to
changes in practice as well as the implementation of any such change in
practice. Certain topics do not conclude with questions; however, the
PTO desires comments on such topics in general.
Other Considerations
This Advance Notice is in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). It has been determined that this rulemaking is
significant for the purposes of Executive Order 12866 (September 30,
1993).
This Advance Notice involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collections of information involved in this Advance Notice
have been reviewed and previously approved by OMB under the following
control
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numbers: 0651-0021, 0651-0030, 0651-0031, 0651-0032, 0651-0033, 0651-
0035, and 0651-0037. Any collections of information whose requirements
will be revised as a result of the proposed rule changes discussed in
this Advance Notice will be submitted to OMB for approval. The
principal impact of the changes under consideration in this Advance
Rule is to raise the efficiency and effectiveness of the PTO's business
processes to make the PTO a more business-like agency and increase the
level of the PTO's service to the public.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the PTO has submitted a copy of this Advance Notice to OMB
for its review of these information collections. Interested persons are
requested to send comments regarding these information collections,
including suggestions for reducing this burden, to Robert J. Spar,
Director, Special Program Law Office, Patent and Trademark Office,
Washington, D.C. 20231, or to the Office of Information and Regulatory
Affairs of OMB, New Executive Office Bldg., 725 17th St. NW, rm. 10235,
Washington, DC 20503, Attn: Desk Officer for the Patent and Trademark
Office.
The PTO has determined that this Advance Notice has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
B. Discussion of Specific Topics
1. Simplifying request for small entity status (37 CFR 1.27)
Summary: The PTO is considering simplifying applicant's request for
small entity status. The currently used small entity statement forms
would be eliminated as they would no longer be needed.
Specifics of Change being Considered: Small entity status would be
established at any time by a simple assertion of entitlement to small
entity status without the currently required formalistic reference to
37 CFR 1.9. Payment of the (exact) small entity basic filing fee would
be considered an assertion of small entity status. To establish small
entity status after payment of the basic filing fee, a written
assertion of small entity status would be required to be submitted with
or prior to a fee payment. There would be no change in the current
requirement to make an investigation in order to determine entitlement
to small entity status; the PTO would only be changing the ease with
which small entity status can be claimed once it has been determined
that a claim to such status is appropriate.
Problem and Background: 37 CFR 1.27 currently requires that a
request for small entity status be accompanied by submission of an
appropriate statement that the party seeking small entity status
qualifies in accordance with 37 CFR 1.9. Either a reference to 37 CFR
1.9 or a specific statement relating to the provisions of 37 CFR 1.9 is
mandatory. For a small business, the small business must either state
that exclusive rights remain with the small business, or if not,
identify the party to which some rights have been transferred so that
the party to which rights have been transferred can submit its own
small entity statement (37 CFR 1.27(c)(1)(iii)). This can lead to the
submission of multiple small entity statements for each request for
small entity status where rights in the invention are split. The
request for small entity status and reference/statement may be
submitted prior to paying, or at the time of paying, any small entity
fee. In part, to ensure that at least the reference to 37 CFR 1.9 is
complied with, the PTO has produced four types of small entity
statement forms (including ones for the inventors, small businesses and
non-profit organizations) that include the required reference to 37 CFR
1.9 and specific statements as to exclusive rights in the invention.
Additionally, the statement forms relating to small businesses and non-
profit organizations need to be signed by an appropriate official
empowered to act on behalf of the small business or non-profit
organization. Refunds of non-small entity fees can only be obtained if
a refund is specifically requested within two months of the payment of
the full (non-small entity) fee and is supported by the required small
entity statement. See 37 CFR 1.28(a)(1). The two-month refund window is
not extendable.
The rigid requirements of 37 CFR 1.27 and 1.28 have led to a
substantial number of problems. Applicants, particularly pro se
applicants, do not always recognize that a particular reference to 37
CFR 1.9 is required in their request to establish small entity status.
They believe that all they have to do is pay the small entity fee and
state that they are a small entity. Further, the time required to
ascertain who are the appropriate officials to sign the statement and
to have the statements (referring to 37 CFR 1.9) signed and collected
(where more than one is necessary), results, in many instances, in
having to pay the higher non-small entity fees and then seek a refund.
These situations result in: (1) small entity applicants also having to
pay additional fees (e.g., surcharges and extension(s) of time fees for
the delayed submission of the small entity statement form); (2)
additional correspondence with the PTO to perfect a claim for small
entity status; and (3) the filing of petitions with petition fees to
revive abandoned applications. This increases the pendency of the
prosecution of the application in the PTO and, in some cases, results
in loss of patent term. For example, under current procedures, if a pro
se applicant files a new application with small entity fees but without
a small entity statement, the PTO mails a notice to the pro se
applicant requiring the full basic filing fee of a non-small entity.
Even if the applicant timely files a small entity statement, the
applicant must still timely pay the small entity surcharge for the
delayed submission of the small entity statement to avoid abandonment
of the application. A second example is a non-profit organization
paying the basic filing fee as a non-small entity because of difficulty
in obtaining the non-profit small entity statement form signed by an
appropriate official. In this situation, a refund pursuant to 37 CFR
1.26, based on establishing status as a small entity, may only be
obtained if a statement under 37 CFR 1.27 and the request for the
excess amount are filed within the non-extendable two-month period from
the date of the timely payment of the full fee. A third example is an
application filed without the basic filing fee on behalf of a small
business by a practitioner who includes the standard authorization to
pay additional fees. The PTO will immediately charge the non-small
entity basic filing fee without specific notification thereof at the
time of the charge. By the time the deposit account statement is
received and reviewed, the two-month period for refund may have
expired.
Accordingly, a simpler procedure to establish small entity status
would reduce processing time within the PTO (Patent Business Goal 1)
and would be a tremendous benefit to small entity applicants as it
would eliminate the time-consuming and aggravating processing
requirements that are mandated by the current rules. Thus, the proposed
simplification would help small entity applicants to receive patents
sooner with fewer expenditures
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in fees and resources and the PTO could issue the patent with fewer
resources (Patent Business Goals 4 and 5).
Simplified Request for Small Entity Status: The PTO is considering
allowing small entity status to be established by the submission of an
assertion of entitlement to small entity status. The current formal
requirements of 37 CFR 1.27, which include a reference to either 37 CFR
1.9, or to the exclusive rights in the invention, would be eliminated.
If small entity status is to be requested at the time of payment of the
basic filing fee, the payment of the (exact) small entity basic filing
fee will be considered to be a sufficient assertion. If small entity
status was not established when the basic filing fee was paid, a later
claim to small entity status would be by way of a written assertion.
Payment of a small entity fee (e.g., extension of time, or issue fee)
without inclusion of a written assertion would not be sufficient.
The written assertion will not be required to be presented in any
particular form. Written assertions of small entity status or
references to small entity fees will be liberally interpreted to
represent the required assertion. The written assertion could be made
in any paper filed in or with the application and need be no more than
a simple sentence or a box checked in an application transmittal letter
or reply cover sheet. Accordingly, small entity status could be
established without submission of any of the current small entity
statement forms (PTO/SB/09-12) that embody and comply with the current
requirements of 37 CFR 1.27 and which are therefore now used to
establish small entity status.
An applicant filing a patent application and paying the exact small
entity basic filing fee would automatically establish small entity
status for the application even without any further written assertion
of small entity status. If payment is made, but it is not the exact
small entity basic filing fee required and a written assertion of small
entity status is not present, the PTO would mail a notice of
insufficient filing fees as in current practice. The PTO would not
consider a basic filing fee submitted in an amount above the correct
small entity basic filing fee, but below the non-small entity filing
fee, as a request to establish small entity status unless an additional
written assertion is also present. Of course, the submission of a basic
filing fee below the correct small entity basic filing fee would not
serve to establish small entity status. Where an application is
originally filed by a party, who is in fact a small entity, with an
authorization to charge fees (including filing fees) and no indication
(assertion) of entitlement to small entity status, that authorization
would not be sufficient to establish small entity status unless the
authorization was specifically directed to small entity filing fees.
The general authorization to charge fees would continue to be acted
upon immediately and the full (not small entity) filing fees would be
charged with applicant having two months to request a refund by
asserting entitlement to small entity status. This would be so even if
the application were a continuing application where small entity status
had been established in the prior application.
Once small entity status is established in an application, any
change in status from small to non-small, would also require a specific
written assertion to that extent, similar to current practice.
The party who could request small entity status would be any party
permitted by PTO regulations to pay the basic filing fee and file a
paper in the application. This eliminates the additional requirement of
obtaining the signature of an appropriate party other than the party
prosecuting the application. By way of example, in the case of three
pro se inventors for a particular application, any of the three
inventors upon filing the application could pay a small entity basic
filing fee and thereby establish small entity status for the
application. For small business concerns and non-profit organizations,
the practitioner could supply the assertion rather than the current
requirement for an appropriate official of the organization to execute
a small entity statement form.
PTO policy and procedures already permit establishment of small
entity status in certain applications through simplified procedures.
For example, small entity status may be established in a continuing or
reissue applications simply by payment of the small entity basic filing
fee if the prior application/patent had small entity status. See 37 CFR
1.28(a)(2). The instant concept of payment of the basic statutory
filing fee to establish small entity status in a new application is
merely a logical extension of that practice.
There may be some concern that elimination of the small entity
statement forms will result in applicants requesting small entity
status who are not actually entitled to such status. On balance, it
seems that more errors occur where small entity applicants who are
entitled to such status run afoul of procedural hurdles formed by the
requirements of 37 CFR 1.27 than the requirements help to prevent
status claims for those who are not in fact entitled to such status.
Correction of any inadvertent and incorrect establishment of small
entity status would be by way of a paper under 37 CFR 1.28(c) as in
current practice.
Continued Obligations for Thorough Investigation of Small Entity
Status: Applicants should not confuse the fact that the PTO is making
it easier to qualify for small entity status with the need to do a
complete and thorough investigation and to assert that they do in fact
qualify for small entity status. It should be clearly understood that,
even though it would be much easier to assert and thereby establish
small entity status, applicants would continue to need to make a full
and complete investigation of all facts and circumstances before making
a determination of actual entitlement to small entity status. Where
entitlement to small entity status is uncertain it should not be
claimed. See MPEP 509.03. The assertion of small entity status (even by
mere payment of the exact small entity basic filing fee) is not
appropriate until such an investigation has been completed. Thus, in
the previous example of the three pro se inventors, before one of the
inventors could pay the small entity basic filing fee to establish
small entity status, the inventor would need to check with the other
two inventors to determine whether small entity status was appropriate.
The intent of 37 CFR 1.27 is that the person making the assertion
of small entity status is the person in a position to know the facts
about whether or not status as a small entity can be properly
established. That person, thus, has a duty to investigate the
circumstances surrounding entitlement to small entity status to the
fullest extent. Therefore, while the PTO is interested in making it
easier to claim small entity status, it is important to note that small
entity status must not be claimed unless the person or persons can
unequivocally make the required self-certification.
Consistent with 37 CFR 1.4(d)(2), which sets forth that for the
presentation to the PTO (whether by signing, filing, submitting, or
later advocating) of any paper by a party, whether a practitioner or
non-practitioner, the payment of a small entity basic filing fee would
constitute a certification under 37 CFR 10.18. Thus, a simple payment
of the small entity basic statutory filing fee will activate the
provisions of 37 CFR 1.4(d)(2) and, by that, provoke the self-
certification as set forth in 37 CFR 10.18(b), regardless of whether
the party is a practitioner or non-practitioner.
[[Page 53502]]
2. Requiring separate surcharges and supplying filing receipts (37 CFR
1.53)
Summary: The PTO is considering charging separate surcharges in a
nonprovisional application for the delayed submission of an oath/
declaration, and the application filing fee, and issuing another filing
receipt, without charge, to correct any errors or to update filing
information, as needed.
Specifics of Change Being Considered: The PTO would charge a
separate surcharge (currently $130) for each missing part item that is
submitted in a delayed manner. Thus, the delayed submission of both an
oath/declaration under 37 CFR 1.63, and the payment of the basic filing
fee in a nonprovisional application filed under 35 U.S.C. 111(a), would
result in the imposition of two surcharges (totaling $260). The change
under consideration would not apply to provisional applications filed
under 35 U.S.C. 111(b) and 37 CFR 1.53(c). In addition, as the basic
national fee must be submitted by the expiration of the applicable
twenty- or thirty-month period in 35 U.S.C. 371(b) in a PCT
application, the change under consideration would also be inapplicable
to applications filed under the PCT.
While the PTO would be charging a separate surcharge for each
missing part submitted in a delayed manner, the PTO would also be
providing three new user-friendly services which were requested by, and
would provide benefits that are desired by, our customers. The three
new user-friendly services are: (1) issuing a corrected filing receipt
without the fee presently required by 37 CFR 1.9(h) when an oath/
declaration, and/or the payment of the application filing fee are
submitted in a delayed manner; (2) issuing a corrected filing receipt
without the fee presently required by 37 CFR 1.19(h), and without a
question as to fault, for any error in the filing receipt; and (3)
placing a copy of each filing receipt supplied to the applicant in the
application file as evidence of issuance of the filing receipt.
Background: Approximately thirty-one per cent of all nonprovisional
applications filed are missing parts applications, that is, an
application filed without an executed oath/declaration and/or the
application filing fee, with a substantial burden being placed on the
PTO to provide additional handling, storage and processing for these
missing part applications. Neither the payment of the application
filing fee nor an oath/declaration in compliance with 37 CFR 1.63 is
needed for an application to meet the minimum requirements to be
accorded a filing date in a nonprovisional application. See 37 CFR
1.53(b). Currently, the PTO charges a single surcharge of $130 for the
filing of an oath/declaration or the filing fee or both on a date later
than the application filing date. At present, the PTO issues a filing
receipt at the time a determination is made that an application meets
the minimum requirements to receive a filing date. The filing receipt
includes, among other things, bibliographic information (e.g.,
inventive entity/application identifier, title, continuing data,
inventor's city and state address, foreign priority, attorney docket
number), while also denoting, among other things, the application
number, filing date and receipt of the application filing fee. A
``Notice of Omitted Item(s)'' (form PTO-1669) or a ``Notice To File
Missing Parts'' (PTO-1533), if needed, are mailed separately. A
``Notice of Omitted Items'' is mailed by the PTO in an application
wherein the application papers so deposited have been accorded a filing
date, but a portion (e.g., some of the page(s) of or figure(s) of
drawings described in the specification) has been omitted from the
submitted application parts. See Change in Procedure Relating to an
Application Filing Date; Notice, 61 FR 30041 (June 13, 1996), 1188 Off.
Gaz. Pat. Office 48 (July 9, 1996), and MPEP 601.01(d)-(h). A ``Notice
To File Missing Parts'' is mailed by the PTO in an application wherein
a part of the application (e.g., the oath/declaration, or the
appropriate application filing fee) has been omitted on filing. See
Changes in Practice in Supplying Certified Copies and Filing Receipts;
Notice, 1199 Off. Gaz. Pat. Office 38 (June 10, 1997), and MPEP
601.01(a). Examination of the application does not begin until all the
required parts (e.g., filing fee, and oath/declaration) are received.
See 37 CFR 1.53(h).
In addition, the PTO recently amended 37 CFR 1.41 and 1.53
(effective December 1, 1997) to provide that the names of the inventors
are no longer required in order for an application to meet the minimum
requirements to be accorded a filing date. See Changes to Patent
Practice and Procedure; Final Rule Notice, 62 FR 53131, 53186-88
(October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 111-13 (October 21,
1997). The names of all the inventors are taken from an executed oath/
declaration timely submitted in compliance with 37 CFR 1.63, with the
inventive entity being set at that time, 37 CFR 1.41(a)(1). The filing
receipt is mailed even if an oath/declaration in compliance with 37 CFR
1.63, the application filing fee, or the actual names of the inventors
have not been submitted on filing. In an application which is entitled
to a filing date but not naming the actual inventors on filing, an
identifier (e.g., the attorney's docket number, or all or a part of the
names of the actual inventors) may be used to identify the application,
37 CFR 1.41(a)(3). In the past, upon the filing of an oath/declaration
in compliance with 37 CFR 1.63, the PTO did not issue a corrected
filing receipt, but only updated PTO records as to the actual inventors
for the application. If (1) the inventive entity being submitted by the
later filed oath/declaration was different from the identifier/
inventive entity used to identify the application on filing and (2)
applicant(s) desired a corrected filing receipt containing the
corrected information or correction of any other information contained
thereon (not due to PTO error), then applicant(s) had to request such
in a separate paper filed with the PTO along with the requisite fee
under 37 CFR 1.19(h). Further, where a proper small entity statement
was not submitted until after the mailing of the filing receipt and a
corrected filing receipt was desired to show small entity status based
on the small entity statement submitted after the mailing of the filing
receipt, a request for such a corrected filing receipt must have been
filed along with the requisite fee under 37 CFR 1.19(h).
Separate surcharges: The cost for processing these missing parts
applications has increased. Further, the separate submission of each
missing part in a delayed manner causes the PTO to perform double the
amount of work, as the application would be twice processed for a
submitted missing part, with presently only one surcharge being
required. Those who delay in submitting either of the items noted above
should bear the costs. Patent Business Goal (5) is to assess fees
commensurate with resource utilization and customer efficiency. In
support of that goal, it is being considered that a separate surcharge
be required for the filing of an oath/declaration in compliance with 37
CFR 1.63, and for the payment of the application filing fee on a date
later than the application filing date. Therefore, if both the oath/
declaration and the application filing fee were submitted on a date
later than the application filing date, a payment of $260 ($130 for the
late filing of the oath/declaration, and $130 for the late filing of
the application filing fee) in current fees would be due on the
application.
No incentive currently exists for the submission of the basic
filing fee on filing if an executed oath or declaration is not also
available for submission.
[[Page 53503]]
This change would encourage applicants to submit the basic filing fee
on filing, even if an executed oath or declaration is not available for
submission. Patent Business Goal (1) is to reduce PTO processing time
to twelve months or less for all inventions. This change, in
combination with the change under consideration in topic 3, would
reduce pre-examination processing time, since it would encourage the
submission on filing of an application in condition for examination,
even if an executed oath or declaration is not available for submission
on filing.
Three new services: While the PTO would be charging a separate
surcharge for each missing part submitted in a delayed manner, the PTO
would also be providing three new user-friendly services which were
requested by our customers and provide benefits that are desired by our
customers. As a first new service, in addition to the filing receipt
being mailed at the time the application is accorded a filing date, a
corrected filing receipt would always be mailed to reflect receipt of
the oath/declaration in compliance with 37 CFR 1.63, and/or the payment
of the application filing fee when they are submitted. No longer would
applicant have to file a request for a new filing receipt, to pay a
separate fee for it per 37 CFR 1.19(h), or submit a status letter to
see if PTO records were updated due to the filing of the oath/
declaration. The corrected filing receipt should reflect the actual
inventive entity of the application, if it was mailed in response to
the receipt of the oath/declaration in compliance with 37 CFR 1.63.
Patent Business Goal (4) is to exceed our customers' quality
expectations, through the competencies and empowerment of our
employees. This new service would be in support of that goal. The PTO
has begun this first new service in anticipation of the increase in
surcharge fees and to better serve our customers' needs.
As a second new service, if there is an error in the data printed
on the filing receipt and a request for a corrected receipt is
submitted, the PTO would issue a corrected filing receipt without a fee
and without a question as to fault. Patent Business Goal (1) is to
reduce PTO processing time to twelve months or less for all inventions.
Patent Business Goal (4) is to exceed our customers' quality
expectations, through the competencies and empowerment of our
employees. Without having to determine who caused the error in the
filing receipt, corrected filing receipts would be issued faster and
with less inconvenience to all, which would be in support of those
goals. Further, the PTO has received substantial feedback that timely
receipt of an accurate filing receipt is of great importance to our
customers. This second new service is in direct response to this
repeated message. Again, the PTO has already begun this second new
service in anticipation of the increase in surcharge fees and to better
serve our customers' needs.
As a third new service, every time a filing receipt is issued, the
PTO would place a copy of the filing receipt in the application file as
evidence thereof. Today, a copy of a filing receipt is not placed in
the application file, irrespective of the reasons for its issuance. By
always placing a copy of the filing receipt in the application file, it
will be easier to later determine whether there is still an error in
the filing receipt in question, or whether a filing receipt or a
corrected filing receipt was actually mailed. Further, since a copy of
the filing receipt would now be located in the application file, the
time for the PTO to answer questions regarding a particular filing
receipt would be greatly reduced. Patent Business Goal (4) is to exceed
our customer's quality expectations, through the competencies and
empowerment of our employees. This would be in support of that goal.
3. Permitting delayed submission of an oath or declaration, and
changing the time period for submission of the basic filing fee and
English translation (37 CFR 1.52, 1.53)
Summary: The PTO is considering amending 37 CFR 1.53 to provide
that an executed oath or declaration for a nonprovisional application
would not be required until the expiration of a period that would be
set in a ``Notice of Allowability'' (PTOL-37). The PTO is also
considering amending 37 CFR 1.52 and 1.53 to provide that the basic
filing fee and an English translation (if necessary) for a
nonprovisional application must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
Specifics of Change Being Considered: The PTO is considering
amending 37 CFR 1.53 to provide that an executed oath or declaration
for a nonprovisional application would not be required until the
applicant is notified that it must be submitted within a one-month
period that would be set in a ``Notice of Allowability,'' provided that
the following are submitted within one month (plus any extensions under
37 CFR 1.136) from the filing date of the application: (1) the name(s),
residence(s), and citizenship(s) of the person(s) believed to be the
inventor(s); (2) all foreign priority claims; and (3) a statement
submitted by a registered practitioner that: (a) an inventorship
inquiry has been made, (b) the practitioner has sent a copy of the
application (as filed) to each of the person(s) believed to be the
inventor(s), (c) the practitioner believes that the inventorship of the
application is as indicated by the practitioner, and (d) the
practitioner has given the person(s) believed to be the inventor(s)
notice of their obligations under 37 CFR 1.63(b). In addition, the PTO
is considering requiring an applicant to file a continuing application
to file an executed oath or declaration naming an inventorship
different from that previously stated by the practitioner once
prosecution in an application is closed.
The PTO is also considering amending 37 CFR 1.52 and 1.53 to
provide, by rule, that the basic filing fee and an English translation
(if the application was filed in a language other than English) for a
nonprovisional application must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
Applicants will not be given a notice (e.g., a ``Notice To File Missing
Parts'' (PTO-1533)) that the basic filing fee is missing or
insufficient, unless the application is filed with an insufficient
basic filing fee that at least equals the basic filing fee that was in
effect the previous fiscal year. Finally, the filing receipt will
indicate the amount of filing fee received and remind applicants that
the basic filing fee must be submitted within one month (plus any
extensions under 37 CFR 1.136) from the filing date of the application.
These changes will permit the PTO to virtually eliminate the
current practice of mailing notices (e.g., a ``Notice To File Missing
Parts'') during the initial processing of a nonprovisional application
to require submission of an oath or declaration, basic filing fee, or
an English translation.
Background: As discussed above, 37 CFR 1.53(b), as amended
effective December 1, 1997, does not require that a nonprovisional
application under 35 U.S.C. 111(a) include an executed oath or
declaration under 37 CFR 1.63, the names of the inventor(s), any filing
fee, or English language application papers for the application to meet
the minimum requirements to be accorded a filing date. The PTO,
however, does not examine the application until an executed oath or
declaration under 37 CFR 1.63 (naming the inventor(s)), the filing fee,
and English language application papers are submitted. If an
[[Page 53504]]
executed oath or declaration under 37 CFR 1.63, filing fee, or English
language application papers are not submitted with the filing of a
nonprovisional application, the PTO will mail a notice requiring that
they be filed (with a surcharge) within two months from the mail date
of the notice (plus any extensions under 37 CFR 1.136) to avoid
abandonment.
The PTO has received numerous comments from the public indicating
that there is great difficulty in filing an executed oath or
declaration (e.g., at times it is difficult to determine the names of
the actual inventor(s) or it may be difficult to locate the
inventor(s)), and that pre-examination processing of a nonprovisional
application is a long burdensome process. Difficulty in obtaining the
signatures of all the inventor(s) has often resulted in a petition (and
fee) under 37 CFR 1.47 (filing when an inventor refuses to sign or
cannot be reached). The PTO cannot eliminate the requirement for an
oath or declaration in a nonprovisional application without a statutory
change. See 35 U.S.C. 111(a)(2)(C) and 115. The Commissioner, however,
has latitude as to when an oath or declaration and the filing fee must
be submitted for a nonprovisional application. See 35 U.S.C. 111(a)(3).
Discussion: The PTO is considering amending 37 CFR 1.53 to provide
that an executed oath or declaration for a nonprovisional application
is not required until the expiration of a period that would be set in a
``Notice of Allowability'' (plus extensions under 37 CFR 1.136), rather
than prior to examination of the application. Permitting delayed
submission of the oath or declaration until the expiration of a period
set in the mailing of a ``Notice of Allowability'' would allow
practitioners additional time to have the oath or declaration executed
by all the inventor(s). In addition, if the invention turns out to be
unpatentable, no signatures for the oath or declaration would ever be
needed.
If an oath or declaration is not submitted within one month (plus
any extensions under 37 CFR 1.136) from the filing date of the
application, the PTO will require that within this period a registered
practitioner: (1) submit the name(s), residence(s), and citizenship(s)
of the person(s) believed to be the inventor(s); (2) submit all foreign
priority claims; and (3) make and submit a statement that he or she has
made an inventorship inquiry (i.e., ascertain the inventorship of the
application to the best of his or her knowledge) and that he or she
believes that the inventorship is in fact those person(s) so identified
as the person(s) believed to be the inventor(s). In addition, the
practitioner must state that he or she has sent such person(s) a copy
of the application (specification, including claims, and drawings)
filed in the PTO, and given such person(s) notice of their obligations
to review and understand the contents of the application and of their
duty to disclose to the PTO all information known to the person to be
material to patentability under 37 CFR 1.56. See 37 CFR 1.63(b).
The surcharge set forth in 37 CFR 1.16(e) would also be required if
the oath or declaration is submitted on a date later than the filing
date of the application, regardless of whether the oath or declaration
is filed before a ``Notice of Allowability'' is mailed.
For examination purposes, it would be presumed that the inventive
entity is that set forth by the practitioner in the application as
forwarded to the examiner. As discussed above, all claims for foreign
priority benefits under 35 U.S.C. 119 or 365 would be submitted prior
to examination. The examiner needs this foreign priority claim
information to determine whether an additional ``back-up'' rejection is
appropriate. See MPEP 904.02. If an oath or declaration is omitted on
filing, the first Office action would inform applicant(s) (e.g.,
through an attached Notice of Informal Application, PTO-152 ) that an
oath or declaration is outstanding.
37 CFR 1.48(f)(1) would continue to provide that, in an application
not including an executed oath or declaration, the submission of an
executed oath or declaration (such as in reply to a ``Notice of
Allowability'') naming an inventorship different from that previously
indicated by the practitioner as the person(s) believed to be the
inventor(s) would operate to correct the inventorship without the need
for the filing of a petition under 37 CFR 1.48. Nevertheless, this
action may cause examination-related problems with the application, in
that upon entry of such an oath or declaration the examiner would have
to consider whether new rejection(s) are necessary under, for example,
35 U.S.C. 102(a) (``invention * * * by others''), or 102(e)
(``invention * * * by another''), or 103/102(a) or (e). Therefore, the
PTO is considering requiring a processing fee (in addition to the
surcharge) for submission of such an oath or declaration after the
first Office action but before the close of prosecution on the merits.
In addition, if such an oath or declaration necessitates that a new
ground of rejection be made, the next Office action containing the new
ground of rejection, absent anything to the contrary, may be made
final. See MPEP 706.07(a). The PTO is also considering prohibiting the
submission of such an oath or declaration that names an inventorship
different from that previously indicated by the practitioner as the
person(s) believed to be the inventor(s) after prosecution on the
merits has closed (e.g., after a final Office action, allowance, or
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)), and
requiring that a continuing application be filed in order to permit
entry of such an oath or declaration.
The right to prosecute an application (e.g., appoint a
representative by a power of attorney or authorization of agent) flows
from ownership of the application, which in turn flows from
inventorship. In the absence of an assignment the inventor has the
right to conduct prosecution of the application (even if the
application was prepared and filed by the company for whom the inventor
works). Where there is an assignment, the assignee may intervene
pursuant to 37 CFR 3.71 and conduct the prosecution to the exclusion of
the named inventors. In a large percentage of applications, inventors
execute an assignment when the oath or declaration under 37 CFR 1.63 is
executed, and appoint representatives as part of the oath or
declaration.
Delaying execution of the oath or declaration will, most likely,
also encourage delaying execution of the assignment. 37 CFR 3.71
requires an actual assignee of record and does not provide a right of
prosecution for parties having an expectation of assignment (e.g.,
based on an employment contract or a shop right). Hence, since a delay
in executing the oath or declaration under 37 CFR 1.63 will probably
cause a delay in executing an assignment, an assignee may be unable to
avail itself of controlling prosecution under 37 CFR 3.71.
A registered practitioner may take some actions in a patent
application by providing his registration number on the paper. See 37
CFR 1.34(b). However, only an attorney or agent that is of record, the
inventor, or the assignee of the entire interest can take certain
actions in an application. For example, only an attorney or agent that
is of record can change the correspondence address. See 37 CFR 1.33(a).
In addition, only an attorney or agent that is of record may execute a
power to inspect. See 37 CFR 1.14(e)(2).
The PTO is also considering amending 37 CFR 1.34(b) to include in
the definition of ``attorney or agent of record'' the attorney or agent
that filed
[[Page 53505]]
the application. With such a change, an appointment as a representative
would not be required before the attorney could change the address in
the application file or authorize another to inspect the patent
application file, among other things. In addition, 37 CFR 1.34(b) would
be amended to provide that a pro se inventor who signs a transmittal
letter for an application is considered to represent all inventors for
the purposes of prosecuting the patent application. Pro se inventors
frequently do not realize that all inventors need to sign each piece of
correspondence to the Office (e.g., each amendment, see MPEP 714.01(a))
and a pro se inventor will frequently have difficulty obtaining the
other inventor's signature during the time provided. With such a
change, pro se applicants that do not have the foresight of appointing
a single representative will have an easier time filing a response to
Office actions.
Additionally, the PTO is considering amending 37 CFR 1.52(d) and
1.53 to provide that an English language translation (if the
application was filed in a language other than English) and the basic
filing fee be submitted no later than one month from the filing date of
the nonprovisional application. This one-month period would be
extendable under 37 CFR 1.136. The current process of mailing notices
(e.g., a ``Notice To File Missing Parts'' (PTO-1533)) which gives a
period (e.g., two months) for submitting the basic filing fee or
English translation in a nonprovisional application would be
eliminated, as: (1) the basic filing fee would be due on filing, or
required with the surcharge under 37 CFR 1.16(e) within one month (plus
extensions under 37 CFR 1.136) from the filing date of the application;
and (2) any English translation (if the application was filed in a
language other than English) would be required with the processing fee
set forth in 37 CFR 1.17(k) within one month (plus extensions under 37
CFR 1.136) from the filing date of the application. Except for the
situation discussed below, there is no apparent justification for the
PTO continuing to mail notices to advise applicants of that which they
should already know: (1) that they did not submit the basic filing fee
with the application; or (2) that they did not file the application in
English.
For example: (1) if the basic filing fee is submitted on filing, no
surcharge under 37 CFR 1.16(e) or extension fee under 37 CFR 1.17(a) is
required; (2) if the basic filing fee is not submitted on filing but is
submitted within one month of the application filing date, the
surcharge under 37 CFR 1.16(e) is required but no extension fee under
37 CFR 1.17(a) is required; and (3) if the basic filing fee is not
submitted on filing or within one month of the application filing date,
but is submitted within six months (the one month that would be
provided by rule plus five additional months that may be obtained
pursuant to 37 CFR 1.136) of the application filing date, the surcharge
under 37 CFR 1.16(e) and appropriate extension fee under 37 CFR 1.17(a)
are required. The processing fee set forth in 37 CFR 1.17(k) is
required whenever the original application is filed in a language other
than English, regardless of when the English translation is submitted.
Exception: In the situation in which an application is filed with
an insufficient basic filing fee (due to a fee increase) that at least
equals the basic filing fee that was in effect the previous Fiscal
Year, the applicant will be given a filing fee deficiency notice, which
notice will set a one-month period (extendable under 37 CFR 1.136)
within which the balance of the current basic filing fee and the
surcharge under 37 CFR 1.16(e) must be filed to avoid abandonment. In
all other situations, the current basic filing fee, if not submitted on
filing, must be submitted with the surcharge under 37 CFR 1.16(e)
within one month (plus any extensions under 37 CFR 1.136) from the
filing date of the application to avoid abandonment of the application.
The filing receipt will indicate the filing fee received and would be
modified to include language reminding applicants that the basic filing
fee must be submitted within one month (plus any extensions under 37
CFR 1.136) from the filing date of the application.
For PCT international applications: The PTO is considering amending
37 CFR 1.494 and 1.495 to provide that an English translation of the
international application, if filed in a language other than English
(35 U.S.C. 371(c)(2)), would be required within one month of the
expiration of the applicable twenty-or thirty-month period in 35 U.S.C.
371(b), which one-month period may be extended under 37 CFR 1.136. The
PTO is also considering amending 37 CFR 1.494 and 1.495 to provide that
an oath or declaration (35 U.S.C. 371(c)(4)) would not be required
until the applicant is notified that it must be submitted within a one-
month period that would be set in a ``Notice of Allowability,''
provided that the following are submitted within one month (which one-
month period may be extended under 37 CFR 1.136) of the expiration of
the applicable twenty-or thirty-month period in 35 U.S.C. 371(b): (1)
the residence of each inventor (the name and citizenship of each
inventor must be provided on the PCT Request); and (2) a statement
submitted by a registered practitioner that: (a) the practitioner has
sent a copy of the application (as filed) to each of the inventors, and
(b) the practitioner has given the inventor(s) notice of their
obligations under 37 CFR 1.63(b). The basic national fee (35 U.S.C.
371(c)(1)) would continue to be required by the expiration of the
applicable twenty-or thirty-month period in 35 U.S.C. 371(b), which
period is non-extendable.
Patent Business Goal (1) is to reduce PTO processing time to twelve
months or less for all inventions. Reducing pre-examination cycle time
of an application and forwarding applications for examination in a
shorter period of time would be consistent with that goal. This change
(in combination with the change to the period within which an oath or
declaration must be submitted) will greatly reduce the number of
notices that the PTO must issue during the pre-examination processing
of new applications. These changes will also result in applications
being initially processed and forwarded for examination in a shorter
period of time, and reduce the amount of storage space used for and
ease the tracking of applications in pre-examination processing.
The PTO considers the changes to permit delayed submission of an
oath or declaration and to require the basic filing fee and any
necessary translation within one month of the application filing date
to be linked, in that together they will permit a great reduction in
the number of notices that the PTO must issue during the pre-
examination processing of new applications. Thus, comments opposing any
change to require the basic filing fee and any necessary translation
within one month of the application filing date should consider that
the PTO will probably not adopt the change to permit delayed submission
of an oath or declaration if the PTO does not also adopt the change to
require the basic filing fee and any necessary translation within one
month of the application filing date.
Questions: The PTO is specifically requesting comments on the
following issues:
1. The submission of an oath or declaration after the first Office
action which changes the names of the inventor(s) from those originally
indicated by the practitioner may cause additional work to be performed
by the PTO, in particular, by an examiner, as set forth above. As a
result, the PTO is considering charging an additional processing fee
for the submission of
[[Page 53506]]
such an oath or declaration, and prohibiting the submission of such an
oath or declaration after the close of prosecution. Would the benefits
gained by the ability to delay the filing of the oath or declaration
outweigh the drawbacks resulting from: (1) the PTO charging a fee for
the submission of such an oath or declaration after the first Office
action but before close of prosecution; and (2) the PTO prohibiting the
submission of an oath or declaration that names an inventorship
different from that previously indicated by the practitioner as the
person(s) believed to be the inventor(s) after the close of
prosecution?
2. Over time, obtaining an executed oath or declaration from all of
the inventors becomes increasingly difficult: inventors may forget
about or lose interest in an application; they may leave the
corporation; and they may become disgruntled. While delaying obtaining
the inventor's signature on an oath or declaration may be initially
beneficial to the practitioner, it would be more difficult for the
practitioner to obtain all of the inventors' signatures on an oath or
declaration at the time of allowance (which may be years after filing).
National applications resulting from a PCT application entering the
national stage have a higher incidence of petitions under 37 CFR 1.47
than national applications filed under 35 U.S.C. 111(a). This may be
caused by delay in filing the oath or declaration, which could be
thirty months after the filing of the PCT application. Therefore,
permitting applicants to delay the submission of an oath or declaration
until the expiration of a period set in a ``Notice of Allowability''
may result in an increase in the number of petitions filed under 37 CFR
1.47. Would the benefits gained by delaying the filing of the oath or
declaration outweigh the drawbacks resulting from the increased
difficulty in obtaining the inventor(s)' signatures on the oath or
declaration, and an increased number of petitions under 37 CFR 1.47 due
to the inability to obtain an inventor's signature? Is it a concern to
applicants that these petitions under 37 CFR 1.47 will be filed during
the publishing (and not pre-examination) process?
3. Delaying submission of the oath or declaration in a PCT
application until the mailing of a ``Notice of Allowability'' would
delay its entry into the national stage. A PCT application is not
accorded a 35 U.S.C. 102(e) date until the applicant fulfills the
requirements of 35 U.S.C. 371(c)(1), (2) and (4), which include filing
an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR
1.497. See 35 U.S.C. 371(c)(4). Is it a concern that, if an applicant
in a PCT application delays submission of the oath or declaration until
the period set in a ``Notice of Allowability,'' the PCT application
would be accorded a 35 U.S.C. 102(e) date as of the date the oath or
declaration is submitted?
4. Assuming the above-noted change to 37 CFR 1.34(b) is made giving
control of the prosecution to the filer (the attorney or agent that
filed the patent application) and the attorney or agent's client is not
the inventor, can the client (a potential assignee) take actions
allowed an assignee, such as filing a reissue application under 37 CFR
1.172 and submitting a 37 CFR 3.73 statement establishing the right of
an assignee to take action?
5. Assuming the above-noted change to 37 CFR 1.34(b) is made, how
should an attempt by the inventor(s) to appoint another representative
be treated? Should the inventor(s) first be required to file an oath or
declaration under 37 CFR 1.63? Should an actual assignee of the
inventor(s) be allowed to take action in an application and revoke the
attorney of record if an executed oath or declaration of the
inventor(s) has not been filed?
6. Notwithstanding any change to 37 CFR 1.34(a), where the
inventors execute an assignment but not an oath or declaration under 37
CFR 1.63, is the assignment effective so that the assignee can control
prosecution under 37 CFR 3.71 and take necessary action in accordance
with 37 CFR 3.73? Note that if status under 37 CFR 1.47 is accorded, if
the inventor who originally refused to execute the oath or declaration
assigns his interest, the non-signing inventor's assignee cannot
control prosecution of the application even if the inventor executes a
declaration. Who should the attorney or agent be understood to
represent absent an express authorization to act as a representative in
the application, the persons indicated as the inventors or an actual or
potential assignee?
4. Limiting the number of claims in an application (37 CFR 1.75)
Summary: The PTO is considering a change to 37 CFR 1.75 to limit
the number of total and independent claims that will be examined (at
one time) in an application.
Specific Change Being Considered: The PTO is considering a change
to the rules of practice to: (1) limit the number of total claims that
will be examined (at one time) in an application to forty; and (2)
limit the number of independent claims that will be examined (at one
time) in an application to six. In the event that an applicant
presented more than forty total claims or six independent claims for
examination at one time, the PTO would withdraw the excess claims from
consideration, and require the applicant to cancel the excess claims.
This change would apply to all non-reissue utility applications filed
on or after the effective date of the rule change, to all reissue
utility applications in which the application for the original patent
was subject to this change, and to national applications filed under 35
U.S.C. 111(a), as well as national applications that resulted from a
PCT international application.
Discussion: Applications containing an excessive number of claims
present a specific and significant obstacle to the PTO's meeting its
business goals of reducing PTO processing time to twelve months or less
for all inventions. While the applications that contain an excessive
number of claims are relatively few in percentage (less than 5%), these
applications impose a severe burden on PTO clerical and examining
resources, as they are extremely difficult to properly process and
examine. The extra time and effort spent on these applications has a
negative ripple effect, resulting in delays in the processing and
examination of all applications, which, in turn, results in an increase
in pendency for all applications. In view of the patent term provisions
of 35 U.S.C. 154, as amended by the Uruguay Round Agreements Act
(URAA), Pub. L. 103-465, 108 Stat. 4809 (1994), PTO processing time and
pendency are concerns to the PTO and all applicants. Thus, the PTO
considers it inappropriate to continue to permit the proclivity of a
relatively low number of applicants (less than 5%) for excessive claim
presentation to result in delays in examination and unnecessary
pendency for the vast majority of applicants.
Approximately 215,000 utility applications were filed in the PTO in
Fiscal Year 1997. PTO computer records indicate that the approximate
number and percentage of applications filed in Fiscal Year 1997
containing the following ranges of independent and total claims breaks
down as follows:
[[Page 53507]]
------------------------------------------------------------------------
Percentage FY
Applications filed in FY 1997 containing Number 1997 filings
------------------------------------------------------------------------
Over 50 independent claims.............. 11 00.005
Between 41 and 50 independent claims.... 23 00.011
Between 31 and 40 independent claims.... 77 00.358
Between 21 and 30 independent claims.... 275 00.128
Between 16 and 20 independent claims.... 536 00.249
Between 11 and 15 independent claims.... 1,887 00.878
Between 7 and 10 independent claims..... 7,024 03.267
Between 4 and 6 independent claims...... 27,147 12.627
Over 6 independent claims............... 9,833 4.896
Over 500 total claims................... 5 00.002
Between 201 and 500 total claims........ 88 00.041
Between 101 and 200 total claims........ 652 00.303
Between 61 and 100 total claims......... 2,514 01.169
Between 51 and 60 total claims.......... 2,143 00.997
Between 41 and 50 total claims.......... 4,056 01.887
Between 31 and 40 total claims.......... 8,631 04.014
Between 21 and 30 total claims.......... 23,323 10.848
Over 40 total claims.................... 9,458 4.399
------------------------------------------------------------------------
These numbers indicate that over 95% of all applications filed in
Fiscal Year 1997 contained fewer than forty total claims and over 95%
of all applications filed in Fiscal Year 1997 contained fewer than six
independent claims. Thus, the rule change under consideration should
not prevent the overwhelming majority of applicants from presenting the
desired number of total and independent claims for examination. In
addition, the rule change under consideration will benefit the
overwhelming majority of applicants, since it will stop a relatively
small number of applicants from occupying an inordinate amount of PTO
resources.
While the problem with applications containing an excessive number
of claims is now reaching a critical stage, this problem has long
confronted the PTO. In 1926, Commissioner Robertson remarked that
applications containing an excessive number of claims constitute the
greatest abuse confronting the PTO (then the Patent Office). See Ex
parte McCullough, 1927 Dec. Comm'r Pat. 12, 13 (1926). The issuance of
patents containing an excessive number of claims has also long been
considered an abuse of the courts and the public. See Carlton v. Bokee,
84 U.S. (17 Wall) 463, 471-72 (1873) (needless multiplication of
nebulous claims deemed calculated to deceive and mislead the public);
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1551 n.6, 10
USPQ2d 1201, 1206 n.6 (Fed. Cir. 1989) (presentation of the
infringement issue on an overgrown claims jungle to a jury and judge at
trial is an unprofessional exercise in obfuscation). Put simply,
applications (and the resulting patents) that contain an excessive
number of claims are a problem that has long confronted the PTO, the
courts, and the public.
Historically, this problem (applications containing an excessive
number of claims) has been dealt with on a case-by-case basis, in that
the presentation of an unreasonable number of claims in an application
may result in an undue multiplicity rejection. See MPEP 2173.05(n). The
CCPA has affirmed rejections based upon undue multiplicity when the
degree of repetition and multiplicity'' in the claims ``beclouds
definition in a maze of confusion.'' See In re Chandler, 319 F.2d 211,
225, 138 USPQ 138, 148 (CCPA 1963); see also In re Chandler, 254 F.2d
396, 117 USPQ 361 (CCPA 1958). In subsequent decisions, however, the
CCPA has declined to hold that the presentation of any particular
number of claims is so excessive as to confuse or obscure the
inventions defined by the claims. See In re Wakefield, 422 F.2d 897,
164 USPQ 636 (CCPA 1970); and In re Flint, 411 F.2d 1353, 162 USPQ 228
(CCPA 1969). These subsequent decisions have severely cut back on the
use of rejections based upon undue multiplicity. See Ex parte Sheldon,
172 USPQ 319 (BPAI 1972).
After the 1970s, the PTO balanced the difficulty of making and
defending undue multiplicity rejections with likelihood of its success
on appeal against the burden of just examining applications containing
an excessive number of claims, and generally chose to simply suffer the
burden of examining such applications. Recently, however, this problem
(applications containing an excessive number of claims) has been
exacerbated by the advent of word-processing equipment, which
significantly reduces the skill and effort required to draft and
present a seemingly endless number of claims in an application. The
change during the last twenty years to the index of claims in the
application file wrapper illustrates this point: the file wrapper for
the 1979 series (the 06 series) applications had an index for fifty
claims; the file wrapper for the 1987 series (the 07 series) and 1993
series (the 08 series) applications had an index for 100 claims; the
file wrapper for the 1998 series (the 09 series) now has an index for
150 claims.
For these reasons, it is now time for the PTO to act to limit the
use of excessive numbers of claims in an application. The PTO is
specifically proposing to deal with this problem now on a systemic
basis by limiting, via rulemaking, the number of claims that will be
examined in an application. This proposal supports the PTO business
goals of reducing PTO processing time to twelve months or less for all
inventions, and aligning fees to be commensurate with resource
utilization and customer efficiency.
A rule limiting the number of claims in an application is within
the PTO's rulemaking authority under 35 U.S.C. 6(a) if it ``is within
the [PTO's] statutory authority and is reasonably related to the
purposes of the enabling legislation * * * and does no violence to due
process.'' See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606, 225 USPQ
543, 252 (Fed. Cir. 1985) (citations omitted).
35 U.S.C. 41(a)(1)(B) provides that an applicant must pay an
additional fee for the presentation of each independent claim in excess
of three and each claim in excess of twenty. This implies that an
applicant is entitled to present more than three independent claims,
and
[[Page 53508]]
more than twenty total claims, but it does not imply that the PTO may
place no limit on the number of claims that an applicant may present.
See Ex parte Jenkins, 1930 Dec. Comm'r Pat. 8 (1930) (that the patent
statute now requires a fee for additional claims does not mean that
there is no end to the number of claims that the applicant may
present). In addition, PCT Rule 6.1 specifically states that ``[t]he
number of claims shall be reasonable in consideration of the nature of
the invention claimed.'' Placing a reasonable limit (e.g., no more than
six independent claims and no more than forty total claims) will: (1)
permit the PTO to more equitably distribute its resources among the
vast number of applications that must be examined each year (35 U.S.C.
131 and 132); and (2) assist the PTO, public, and the courts in
ascertaining what it is that the applicant considers to be the
invention (35 U.S.C. 112, para. 2).
35 U.S.C. 131 and 132 require the PTO to examine the more than two
hundred thousand applications that are filed each year, and 35 U.S.C.
282 provides that each claim of the patents resulting from these
applications is presumed to be valid, each independently of the others.
It is the PTO's goal to issue patents containing claims whose validity
is based not solely upon presumptions resulting from the patent statute
and PTO regulations, but based upon the actuality that each claim of
the applications resulting in such issued patents has been subjected to
an effective, high-quality examination. In view of the ever increasing
number of applications filed each year, the PTO has determined that it
must place some limits on the number of total claims and independent
claims that an applicant may present in a single application to ensure
that the PTO continues to issue patents that contain only claims that
have been subjected to such effective, high-quality examination.
Such a rule would bear a reasonable relationship to the provisions
of 35 U.S.C. 112, para. 2, that an application conclude with one or
more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention. While 35
U.S.C. 112, para. 2, provides that the claims describe ``the subject
matter which the applicant regards as his invention'' (emphasis added),
it does not preclude the PTO from limiting the claims in regard to
matters of form. See Fressola v. Manbeck, 36 USPQ2d 1211, 1214 (D.D.C.
1995).
As discussed above, the historical basis for undue multiplicity
rejections was that the presentation of an excessive number of claims
in an application generally operated to confuse or obscure the
invention. This problem existed in the nineteenth century (Carlton) and
remains a problem today (Wahpeton Canvas). Limiting the number of
claims in an application will discourage applicants from presenting
claims that confuse or obscure the point of the invention. Thus, such a
rule would advance the statutory goal of 35 U.S.C. 112, para. 2, that
an application or patent conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention. See Fressola, 36 USPQ2d at 1214.
Any change to 37 CFR 1.75 to limit the number of claims in an
application must also take into account the situation in which a single
claim is, in actuality, a plurality of claims (e.g., multiple dependent
claims, Markush claims (see Ex parte Markush, 1925 Dec. Comm'r Pat. 126
(1924)), claims referencing plural sequence listings (see MPEP
2422.04), and claims setting forth (non-Markush) alternative
limitations (see MPEP 2173.05(h)). A multiple dependent claim will be
counted as the number of claims to which direct reference is made in
that multiple dependent claim. See 37 CFR 1.75(c). Limits (for a claim
to be counted as a single claim) would also be placed on: (1) the
number of species that may be embraced within a Markush claim; (2) the
number of sequence listings that may be referenced in a single claim;
and (3) the number of alternative limitations that may be included in a
claim.
The PTO is considering only a limit on the number of claims that
will be examined in a single application, not a limit of the number of
claims that may be presented for the invention(s) disclosed in an
application. Forty total claims with six independent claims should be
sufficient for an applicant to obtain adequate coverage for an
invention. An applicant who is unable to limit him or herself to forty
total or six independent claims in a single application may effectively
obtain examination of additional claims in another application. As the
PTO would expend more of its scarce processing and examination
resources on ten applications containing forty claims each than the PTO
would expend on a single application containing four hundred claims,
the PTO's objective is not to have applicants to spread-out excessive
numbers of claims among multiple applications to increase fee revenue.
The PTO's objective is to encourage the few applicants who currently
present an excessive number of claims in an application to place
reasonable limits on the number of claims presented for examination.
Nevertheless, an applicant would effectively be permitted to
present any number of claims for examination by filing any number of
continuing applications, each application presenting no more than forty
total or six independent claims for examination. Thus, the PTO's
refusal to examine more than forty total or six independent claims in a
single application is not tantamount to a rejection of such claims, as
the excess claims would be examined if presented in another
application. See In re Fressola, 22 USPQ2d 1828, 1831-32 (Comm'r Pat.
1992) (an objection or other requirement is not a rejection if it does
not interfere with applicant's substantive right of expression).
In the extraordinary situation in which it would be more beneficial
to the PTO, the public, and the applicant to permit the applicant to
maintain more than forty claims in a single application (e.g., numerous
species claims depending from a single allowable genus claim), the
applicant may file a petition under 37 CFR 1.183 requesting a waiver of
this limitation. Such petitions would be decided on a case-by-case
basis, and would be subject to such other requirements as may be
imposed. See 37 CFR 1.183.
5. Harmonizing standards for patent drawings (37 CFR 1.84)
Summary: The PTO is considering harmonizing the requirements for
patent drawings in 37 CFR 1.84 with the requirements for drawings in
the Patent Cooperation Treaty (PCT).
Specifics of Change Being Considered: Amending 37 CFR 1.84 to be
more similar to PCT Rule 11.13.
Discussion: The PTO is considering amending 37 CFR 1.84 to
harmonize the standards for drawings in U.S. national applications with
the standards for drawings in Patent Cooperation Treaty (PCT)
applications, which is a well-known and widely accepted standard. The
PTO has received a number of comments complaining that the same
drawings which were approved and printed in PCT published applications
have been objected to under 37 CFR 1.84 in U.S. national applications.
This inconsistency is not understood by patent applicants who feel that
a drawing that is acceptable for publication of a PCT application
should also be acceptable for publication in a U.S. patent. Making
corrections to drawings to comply with unnecessary requirements
increases the cost to the applicant and the time required to respond to
an Office action, both of
[[Page 53509]]
which patent applicants would like to reduce. In response to these
comments, the PTO is looking into replacing 37 CFR 1.84 with the PCT
standards for drawing requirements.
The requirements for drawings in a PCT application are set forth in
four places, namely: (1) PCT Article 7; (2) PCT Rules 7, 9, 10, 11, and
12; (3) the PCT Applicant's Guide, Vol. I/A, pages 24-25 (paragraphs
133-141); and (4) the ``Guidelines for Drawings Under the Patent
Cooperation Treaty (PCT),'' published in the PCT Gazette (No. 7/1978).
Current PTO processing of applications with drawings results in
some unnecessary delays in the handling of those applications contrary
to Patent Business Goal 1 (reducing PTO processing time). For example,
petitions are now required in order to accept black and white
photographs, color drawings or color photographs, and the PTO
processing of these petitions delays the handling of the application by
the examiner. The PCT permits black and white photographs, but does not
permit color photographs or color drawings. Thus, to harmonize with the
PCT, which does not require a petition to allow black and white
photographs, the PTO is considering deleting the requirement for a
petition while providing instead that black and white and color
photographs and color drawings would be permitted where it is
impossible to present in a drawing what is to be shown (e.g.,
crystalline structures). The examiner, however, may require drawings,
where it is possible to present the subject matter in a drawing. For
example, a syringe may be drawn. Thus, an examiner would require an
applicant who has submitted an application for a syringe and which
included a photograph of the syringe to submit a drawing to replace the
photograph. The PTO does not currently envision an examiner requiring
color drawings or photographs in a design or utility application where
black and white drawings or photographs have been submitted.
Question: The drawing standards for PCT applications may not be
clearly understood or known because the requirements are set forth in
the previously identified four different documents, and not everyone
has easy access to these documents. Nonetheless, it is apparent that
compliance with the PCT is easier given the experience of many patent
applicants of having drawings approved in a PCT application, but
objected to in a United States application. Accordingly, if adoption of
the PCT standards for drawings is not supported, comments are requested
as to whether the PTO should keep 37 CFR 1.84 as is, or how it should
be modified, or should the PTO adopt some other standard for the
drawings?
6. Printing patents in color (37 CFR 1.84)
Summary: The PTO is considering printing design and utility patents
that have color drawings or color photographs in color, along with
imposing a fee to cover the extra processing and publication costs.
Specifics of Change Being Considered: The PTO is considering
deleting the current requirement for a petition (and $130 petition fee)
to accept color drawings or photographs. The PTO is also considering
printing in color design and utility patents with color drawings or
color photographs, and charging a fee to recover the PTO's cost of
processing and printing design and utility patents with such color
drawings or color photographs. The cost to the public for ordering
color copies would continue to be governed by 37 CFR 1.19(a)(2) (for
plant patents) and 1.19(a)(3) (for utility patents).
Discussion: The PTO is considering amending 37 CFR 1.84(a) and (b)
to delete the current requirement for a petition (and $130 petition
fee) to accept color drawings or photographs. The PTO is also
considering amending 37 CFR 1.84 to provide for processing and printing
design and utility patents having color drawings or color photographs
in color rather than in black and white. A fee will be required.
Utility and design patents with color drawings or color photographs are
currently printed in black and white, with a note indicating that color
drawings or photographs were present in the application. Where color is
part of applicant's invention, such as where color is a feature of the
claimed invention in a design application, a member of the public
seeking to understand the subject matter that is claimed or an examiner
seeking to understand the invention disclosed in evaluating the patent
as prior art during examination of another application would have to
order a color copy of the patent drawings, thereby incurring delays for
the special handling required. If design and utility applications were
to be printed in color in the same manner as plant patents are printed
in color, the copy of the patent in the search files would be a color
copy and members of the public and examiners would not have to take
additional steps to understand the disclosure of the patent and the
scope of the claims. Patents printed in color would continue to have
legends indicating that drawings are in color so that a person
inspecting a black and white copy thereof would have notice as to the
existence of the color drawings.
Processing a patent in color would incur costs separate from those
incurred in the printing process in that identification of applications
filed in color would need to be made so that the printing contractor
would know the color printing was required. The PTO currently scans the
originally filed application papers in black-and-white images, and may
begin scanning color drawings or photographs included with originally
filed application paper in color images. The examination process may
also be more complex due to questions relating to the accuracy of the
color depiction in color photographs. In addition, printing a patent in
color would currently require an expensive photographic process to
ensure the proper coloring of the drawings, as is currently required
for plant patents. Pursuant to 35 U.S.C. 41(d), the PTO may recover the
cost of the service of making color copies of color drawings or
photographs included in an application as originally filed available as
scanned images and preparing color drawings or photographs as part of
the patent publication process. Charging a fee for such additional
costs (as compared to the normal patent publication process) would be
consistent with Business Goal 5 (assess fees commensurate with resource
utilization).
Accordingly, if design and utility patents are to be printed in
color, patentees would be required to pay the additional fee, and would
not be allowed to not pay the fee or request that the patent be printed
only in black and white. In addition, the two-tier fee system, in which
a higher fee is charged for color copies of a patent (37 CFR
1.19(a)(3)) than for a copy without color (37 CFR 1.19(a)(1)(i)), for
patent copy sales would continue so that customers could obtain a black
and white copy of a patent with color drawings for a reduced fee.
While plant patents are currently printed in color, electronic
copies of plant patents currently displayed with the Automated Patent
System or from CD ROM products are in black and white. The Office has
an ongoing project to create color images of plant patents for
electronic searching and dissemination. Accordingly, if design and
utility patents are printed in color, they also would be available in
color electronically.
[[Page 53510]]
7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)
Summary: The PTO is considering reducing the time period for
submitting corrected or formal drawings from three months to one month
from the mailing of the ``Notice of Allowability'' (extensions of time
under 37 CFR 1.136 being permitted). The PTO is also requesting comment
on the advisability of requiring submission of corrected or formal
drawings upon an indication of allowable subject matter.
Specifics of Change Being Considered: The PTO is considering
amending 37 CFR 1.85(c) to require either that: (1) corrected or formal
drawings be submitted within one month of the mailing of the ``Notice
of Allowability'' (extensions of time under 37 CFR 1.136 being
permitted); or (2) formal drawings be submitted in reply to any Office
action indicating allowable subject matter, and, if a drawing
correction has been required, requiring that corrected drawings be
submitted in reply to the next Office action indicating allowable
subject matter.
Discussion: Currently, 37 CFR 1.85(c) requires corrected or formal
drawings to be filed within a period of three months of the mailing
date of the ``Notice of Allowability,'' which period may be extended up
to six months under 37 CFR 1.136. This causes many problems. First,
permitting corrected or formal drawings to be filed as late as six
months after the mailing of the ``Notice of Allowability'' leads to a
lengthy delay in issuance of patents. Second, the corrected or formal
drawings may be submitted after the payment of the issue fee (which
must be paid within three months from the mail date of the ``Notice of
Allowance and Issue Fee Due''). Thus, if formal or corrected drawings
are not filed before payment of the issue fee, the application must
still be stored and tracked to await the required drawings. This
results in increased processing costs to the PTO, as greater storage
space is needed along with continued tracking and monitoring functions.
Thus, the current process not only causes delays in issuing patents
which is inconsistent with Patent Business Goal 1, reducing PTO
processing to twelve months or less, but it also increases our costs
which is inconsistent with Patent Business Goal 5, assessing fees
commensurate with resource use.
The PTO hopes to address these problems in the following three
ways. First, as discussed with regard to 37 CFR 1.84, the PTO would
like to make drawing requirements consistent with those of the PCT so
as to make it easier to submit drawings which will be approved by the
PTO draftspersons and thereby reduce the burden on the applicant. If
drawing requirements are consistent with those of the PCT, as proposed
with respect to 37 CFR 1.84, applicants would be more likely to submit
formal drawings upon filing or while the application is being examined,
but prior to allowance. These formal drawings should have a greater
chance of being approved by the PTO Draftsperson. Thus, this should
reduce the number of applications that are allowed with drawings that
are not accepted by the PTO Draftsperson. Second, the PTO intends to
encourage drawing corrections and/or formal drawings to be submitted
earlier in the examination process. This is because the PTO intends to
deploy draftspersons into each of the technology centers where it will
be easier for the Draftsperson to review such corrected or formal
drawings without interrupting the examination process. Thus, this
should also reduce the number of applications with drawings that have
not been approved by the PTO Draftsperson. Third, with the current
proposal, the PTO proposes to reduce the time for submitting drawings
to one month from the Notice of Allowability. By reducing the window
for submitting drawings to one month, and then charging for extension
of time fees, applicants will be encouraged to quickly submit the
drawings within the one month period and, more than likely, before
payment of the issue fee, in order to avoid extension of time fees,
which rapidly increase as more extensions are requested. Thus, the
change in the period for submitting corrected/formal drawings under
consideration should have the effect of reducing the number of
applications that have drawing corrections or formal drawings submitted
after the payment of the issue fee.
Question: Should the PTO require corrected or formal drawings to be
filed in reply to an Office action indicating allowable subject matter?
8. Permitting electronic submission of voluminous material (37 CFR
1.96, 1.821)
Summary: The PTO is considering rule changes to permit the
voluntary submission of large computer program listings and nucleotide
and/or amino acid sequence listings in only a machine-readable form.
This would save the handling of heavy and voluminous paper listings.
Specifies of Change Being Considered: Suitable changes would be
made to 37 CFR 1.96 and 1.821 et seq. to: (1) permit machine readable
computer program listings to be submitted as the official copy provided
it is submitted in an appropriate archival medium; (2) permit a
machine-readable submission of the nucleotide and/or amino acid
sequence listings as the official copy provided it is submitted in an
appropriate archival medium; and (3) no longer require the voluminous
paper submissions of computer program listings or nucleotide and/or
amino acid sequence listings.
Background: Since 1990, the PTO has required the submission of the
nucleotide and/or amino acid sequence listings (sequence listings)
associated with biotechnology applications to be presented in computer
readable form on floppy disks, as well as in paper. The sequence
listings, which are often over ten thousand bases in length, are not
susceptible to human eye-searching. The magnetic storage and processing
is therefore the only practical means for examining this very important
branch of technology, which grew by fifty percent in 1997 and is
expected to undergo sustained growth. Not only are the number of
pending applications multiplying, but the number of sequence listings
per application and the size of the sequence listings themselves have
grown by one-hundred percent each year. The PTO recently received a
submission containing twenty-two thousand sequence listings, which
required eight boxes of paper for the sequence listing. The PTO is also
starting to see very long individual sequence listings of over one
million residues. As the genome projects complete more of the genomes
of various organisms, the PTO will see more of these voluminous
applications.
This sequence size expansion has had a significant effect on
electronic storage, but even worse has created paper files of gross
size which are very difficult to manage. The paper printouts are often
over five thousand pages in length, and require boxes to contain them.
Carts carry the applications to the examiners for processing. For
example, the Expressed Sequence Tags (EST) applications include up to
several thousand sequence listings and may be over a foot thick. In
some applications, the file wrappers are falling apart and contain only
the sequence listing, with the specification separately preserved.
Physically storing the applications becomes problematic because the
entire file takes up several cubic feet of space. Since each examiner
may have twenty or more of these applications, the applications may
take up the bulk of an examiner's office. The magnitude of these
problems is expected to increase. For example, an application with ten
[[Page 53511]]
thousand sequence listings could result in one thousand applications of
ten sequence listings each. See MPEP 803.04. Considering that the
growth rate of sequence listings is such that they now approach one
foot per application, this would require one thousand linear feet of
shelf space. With each rack holding twenty-four linear feet, the PTO
would need forty-two (1000/24) racks for the applications resulting
from that one application. Clearly, something needs to be done to
address this onslaught of paper.
The current regulations at 37 CFR 1.821(e) indicate that the
electronic version of the sequence listing is a ``copy'' of the paper
sequence listing, and that the paper sequence listing is the official
copy. In practice, however, the electronic version is the one that
enters the computer database of references, and serves as the basis for
examination, printing and copies. The concurrence of the electronic and
paper version is assured only by a statement of the registered attorney
or agent, and cannot be readily checked without the expensive and
laborious effort usually reserved only for litigation.
Considering the difficulty of maintaining the two independent
versions of the sequence listing, and the irony that the official paper
copy is effectively ignored while the unofficial electronic copy is the
only one that is used, the PTO is proposing that the paper copy be
eliminated in favor of the useful, handy and verifiable computer
readable version.
Difficulties with massive amounts of paper also plague the computer
arts. One of the major problems facing the computer areas is the filing
of applications having several boxes of printed material, which may
include computer program listings, appendices and boxes of prior art.
Often a single examiner may have several similar applications
containing multiple boxes of paper (i.e., programs, appendices and
prior art). Just the short-term storage of these boxes is becoming more
of a headache. For example, if an examiner has three or four of these
applications, he or she may be required to store six to eight boxes of
paper. These boxes are stored either in the examiner's office or in an
empty room if one is available. The examiner is expected to: (1) keep
track of these boxes of materials; (2) physically haul them to his or
her office; and (3) consider and be familiar with thousands of sheets
of paper. Often when related applications are transferred to another
Art Unit, these boxes of materials are misplaced and the applicant is
forced to resubmit the boxes of papers.
Computer program listings often come to the office on numerous
sheets of microfiche. However, the microfiche films are often copied to
paper before printing when a patent is allowed. Since the copies from
the microfiche are not copied to the standards of 37 CFR 1.52, the
applications are often sent back to the examiner as a printer rush,
slowing the publication of the patent.
The PTO may accept electronically filed material in a patent
application, regardless of whether it is considered ``essential'' or
``nonessential.'' The patent statute requires that ``[a]n application
for patent shall be made * * * in writing to the Commissioner.'' 35
U.S.C. 111(a)(1) (emphasis added). With regard to the meaning of the
``in writing'' requirement of 35 U.S.C. 111(a)(1), ``[i]n determining
any Act of Congress, unless the context indicates otherwise * * *,
`writing' includes printing and typewriting and reproduction of visual
symbols by photographing, multigraphing, mimeographing, manifolding, or
otherwise.'' 1 U.S.C. 1 (emphasis added); see also Fed. R. Evid.
1001(1) (writing defined as including magnetic impulse and electronic
recording). An electronic document (or an electronic transmission of a
document) is a ``reproduction of visual symbols,'' and the ``in
writing'' requirement of 35 U.S.C. 111(a)(1) does not preclude the PTO
from accepting an electronically filed document. Likewise, there is
nothing in the patent statute that precludes the PTO from designating
an ``electronic'' record of an application file as the PTO's
``official'' copy of the application.
The recognition of the electronically stored version of the
sequence listings as the official copy is expected to have a minor
consequence on our processing of these applications. Sequence listings
are already required to be submitted in electronic form, and a receipt
system is already in place to handle the acceptance and storage of the
electronic versions. Currently the machine-readable version is the copy
of choice for search, for printing and for reference purposes.
The submission of machine readable versions of computer program
listings, or other voluminous materials, would require the PTO to
establish an appropriate system for accepting and using such
submissions such that the paper versions of such information will no
longer be needed. The submitted archival media may be transferred to
centralized electronic office systems to facilitate in-house processing
of the information.
Discussion of change under consideration: The PTO is considering
revising 37 CFR 1.821 et seq. to permit the voluntary submission of a
machine readable version of the sequence listings to be the official
copy provided it is presented in an appropriate archival medium. The
PTO cannot simply make the current submissions of diskettes the
official copy in view of the regulations requiring a true archival
medium (36 CFR 1228.28(3) and 1234.30). In addition, the PTO is
considering revising 37 CFR 1.96 to permit the voluntary submission of
all computer program listings in machine readable form provided they
are in an appropriate archival medium.
The changes contemplated for sequence listings and computer program
listings would eliminate the need for submissions of voluminous paper
sequence listings and hard to handle and reproduce microfiche computer
program listings. To focus specifically on the PTO's difficult paper
handling problem, and to simplify this project so it can be deployed in
a short time span, only the nucleotide and/or amino acid sequences and
the computer program listings would be accepted in machine readable
format. The rest of the specification of a nonprovisional application
will be submitted in paper in the conventional manner, subject to 37
CFR 1.52 and other applicable regulations.
In addition to permitting the above-mentioned submissions in
nonprovisional applications, the PTO is also considering changing the
rules of practice to permit provisional applications to be submitted in
toto in a machine readable format, again provided that it is presented
in an appropriate archival medium.
This initiative is in support of the Patent Business Goal to reduce
PTO processing time to twelve months or less for all inventions (Goal
1) and to receive applications and publish patents electronically (Goal
3). Specifically, it would reduce the time and effort required to scan
into our electronic archival systems the text of sequence listings and
of computer program listings included in the applications as filed.
Appropriate Archival Media: Regulations promulgated by National
Archives and Records Administration define the acceptable archival
media and formats for transfer and storage of information. See 36 CFR
1234.30 and 1228.28.
Relationship to PTO automation plans: These changes being
considered are understood to be temporary
[[Page 53512]]
solutions to a difficult PTO paper-handling problem.
It should be noted that the PTO is planning for full electronic
submission of applications and related documents by Fiscal Year 2003.
The changes described above are a smaller step in that direction,
permitting the essential, but bulky parts of some applications to be
submitted on an acceptable archival medium.
Question: Other materials may also be subject to these large
submissions, and part of this endeavor would be the identification and
inclusion of definable entities from other technologies that are of a
similar nature. The PTO is requesting the public to suggest examples.
In considering responses to this question, issues of practical
implementation will be given weight. For example, elements of Technical
Appendices or documents of an Information Disclosure Statement may be
flowcharts, bound books or other items not suitable yet for electronic
submission.
9. Imposing limits/requirements on information disclosure statement
submissions (37 CFR 1.98)
Summary: The PTO is considering revising 37 CFR 1.98 to establish
new requirements and/or limits on information submitted as part of an
Information Disclosure Statement (IDS).
Specifics of Change Being Considered: In order to limit IDS
submissions to relevant information and to ensure full consideration of
an IDS by the PTO, the PTO is considering imposing the following
additional requirements for IDS submissions: (1) a statement in the IDS
that each citation has been personally reviewed by the registered
practitioner who represents applicant, or by at least one inventor
where applicant is not represented by a registered practitioner; (2) a
copy of each cited U.S. application; and (3) a unique description of
each citation's importance relative to each independent claim, or
specific dependent claim(s) if that is why it was cited, except that a
description would not be required for: (a) any ten citations, and (b)
any item cited in a corresponding application by a foreign patent
office, PCT international searching authority (ISA), or PCT
international preliminary examining authority (IPEA), provided the
search report or office action in the English language is also
submitted.
The description of each citation would have to set forth a teaching
or showing of a feature relative to the claimed invention which is not
taught or shown by other citations in the IDS or is taught in a
different manner. The description of each citation must be unique to
that citation, in that an applicant would not be permitted to provide a
description of a citation that is merely cumulative to that of other
citations.
Background: Under the current rules (37 CFR 1.56, 1.97 and 1.98),
the PTO is being overwhelmed with voluminous IDS submissions which, in
many situations, make it very difficult, if not impossible, for an
examiner to fully evaluate all of the citations that have been
submitted. This is especially true when the citations involved are
large in size and/or when large numbers of citations have been
submitted. The submission of large numbers of citations and of the
entire content of large citations may be due to the public's perception
that it must submit, in order to ensure compliance with the duty to
disclose requirements of 37 CFR 1.56, even questionable or marginally
related citations (i.e., cited items that are clearly not material to
patentability). The public appears to have taken the view that it
should submit, in compliance with 37 CFR 1.97 and 1.98, even
questionable citations in order to ensure that applicant is viewed by
the courts as having satisfied the duty of disclosure requirements.
MPEP 2001.04 points out as to noncompliance with 37 CFR 1.97 and 1.98
that ``the applicant will have assumed the risk that the failure to
submit the information in a manner that will result in its being
considered by the examiner may be held to be a violation'' by the
courts. MPEP 2004 adds: ``When in doubt, it is desirable and safest to
submit information. Even though the attorney, agent, or applicant
doesn't consider it necessarily material, someone else may see it
differently and embarrassing questions can be avoided''. Thus, an
environment has been established that promotes submission of citations
which might in some way be considered to be sufficiently relevant to
breach the duty of disclosure (once applicant or applicant's counsel
becomes aware of the citation) in order to avoid an inference of
intentional noncompliance. Applicant presumably does not wish to be
placed in a position (in court) of having to explain why a particular
document of which applicant was aware was not deemed relevant enough to
submit. Therefore, even a document of very questionable relationship to
the claims may very well be submitted by applicants (the public), in
order to err on the side of caution.
This approach has created an enormous burden on the PTO and
seriously jeopardizes the PTO's ability to examine applications in a
timely and efficient manner, or achieve its Business Goal to reduce PTO
processing time (cycle time) to twelve months or less for all
inventions (Goal 1). Applicants frequently cite large numbers of
unrelated documents in citation ``dumps'' where applicant does not wish
to expend the time to weed out the unrelated documents from large
groups of documents (for example those obtained by a pre-search or
found in a related U.S. application). In addition, large citations such
as compendiums are submitted where only one or two small unidentified
portions are relevant.
While it may have been intended under 37 CFR 1.97 and 1.98 that
applicant submit questionably related citations, it was never intended
that large numbers of unrelated documents be submitted solely to save
applicant the effort of reviewing each of them to determine their
relevance. Likewise, it was not intended that the entire volume of a
large citation be submitted so that applicant need not take the trouble
to target the one or two relevant portions.
A further concern arises in those situations where current 37 CFR
1.98 permits applicants to not supply copies of cited U.S.
applications. It is a real burden on the examiner to locate and copy
one or more pending applications, and this activity (removal of a cited
application for copying) has the potential for interfering with the
processing and examination of the cited application.
The following are examples of IDS submissions which have placed
inordinate demands on the PTO:
(1) For one family of related applications (of several hundred
applications), applicants have cited almost three thousand items in
each of the several hundred applications.
(2) In another family of five related applications, more than
one thousand items were cited in IDS submissions in each of the
applications. The items cited were not the same for each
application. The five related applications are the children of
numerous other applications, each of which had IDS submissions
citing at least seven hundred items. The examiner presently has in
his office sixteen containers of cited items for these applications,
and stacks of cited items which would fill at least eight more
containers.
(3) A pending application contains a citation of ten related
U.S. applications. Additionally, about eighty-five documents were
cited, including text citations which included sixty-nine pages from
one text book and 137 pages from another. The Examiner noted in his
Office action that these texts appeared to be background related to
the general area of the invention. In addition, some of the cited
documents were listed in more than one of multiple IDSs submitted,
and the additional listings had to be located and crossed through on
the appropriate form PTO-1449 accompanying the IDS.
[[Page 53513]]
While these three examples represent some of the more extreme IDS
submissions, submissions of this nature are not infrequent nor are they
isolated occurrences. Also, the PTO frequently receives IDS submissions
which are not only large submissions, but they contain unrelated or
non-relevant material, thereby making it difficult to identify and
evaluate the more significant citations. In conjunction with this,
there is a practical limit to the number of citations an examiner can
effectively consider, especially where the citations have not been
described and copies have not been supplied (and the more significant
citations are scattered throughout the lengthy IDS submission).
Although the PTO remains sensitive to the need for applicants to
comply with their duty of disclosure under 37 CFR 1.56, the PTO must
deal with the growing burden on PTO resources to handle IDS
submissions. The PTO obviously does not desire to receive bulky,
irrelevant IDSs and ``dumps'' of citations in an application. Also, to
the extent that these burdensome submissions are in fact received, it
is the intent of the PTO to make the information contained in them as
useful to the examiner as is effectively possible. Accordingly, the PTO
is considering imposing new limitations to (a) reduce both the number
as well as the size of citations that are submitted in IDSs, and (b)
impose requirements as to the citations which will make them more
usable by the examiner.
Proposal: The PTO is considering revising 37 CFR 1.98 to impose
three new requirements/limitations as follows:
I. A Statement of Personal Review of Each Citation Submitted in the
IDS Would Be Required
The IDS submitter would be required to state that he/she has
personally reviewed each submitted IDS citation to determine whether or
not that citation is relevant to the claimed invention(s) and is
appropriate to cite to the PTO in the IDS. This statement of personal
review would have to be made by:
A registered practitioner, where applicant is represented by a
registered practitioner, or
At least one of the inventors where applicant is not represented
by a registered practitioner.
II. A Copy of Each Cited U.S. Application Would Have To Be Supplied
The current exception in 37 CFR 1.98(a)(2)(iii) for pending U.S.
applications would be eliminated. Accordingly, 37 CFR 1.98(a)(2) would
require that an IDS include a legible copy of each cited pending U.S.
application.
III. Each Citation Submitted in the IDS Would Have To Be Uniquely
Described
Applicant would have to compare each of the citations to each of
the independent claims, or specific dependent claim(s), in a meaningful
way that is unique to each citation. The description of each citation
would have to point out why applicant believes the citation to be
unique in its teaching/showing relative to the claimed invention(s).
Exceptions to the unique description requirement for each of the
citations are:
(a) An item does not have to be described if--
The item was previously cited (i) by a foreign patent office,
and/or (ii) in a PCT ISA search report or IPEA office action, in a
corresponding application; and
Applicant submits a copy of the search report or office action
where the item was cited (issued by the foreign patent office or
PCT) in the English language;
(b) In addition, up to ten citations do not have to be
described.
It should be noted that no exception to the unique description
requirement will be made for items which were cited in a related U.S.
application, even if that related application claims 35 U.S.C. 120
priority from, or provides 35 U.S.C. 120 priority to, the application
in which the IDS is submitted. In addition, an exception will not be
made for items cited in litigation related to the application.
As to the exception to the unique description requirement made for
ten citations of any type: Where more than one IDS submission is made
in one application, all of the submitted IDS documents will be taken
together as one consolidated IDS. Thus, applicant would not be able to
circumvent the exception for up to ten citations by submitting multiple
but separate IDS submissions. For example, if six U.S. applications and
four patents are cited without descriptions in a first IDS submission,
then all additional items included in any subsequent IDS submission
must be described or they will not be considered by the PTO.
It should be noted that the choice of which ten citations would be
submitted without the unique description is that of the IDS submitter,
and there should be no negative inference as to compliance with the
provisions of 37 CFR 1.56 where it is chosen to submit the more
relevant citations without any description.
Copies of Citations Contain Confidential Information
Pending U.S. applications are an example of items containing
confidential information which might be submitted in an IDS. In
accordance with MPEP 724.02, IDS citations containing confidential
information (e.g., that which is considered by the party submitting
same to be either trade secret material or proprietary material, and
any such information which is subject to a protective order) are to be
clearly labeled as such and are to be filed in a sealed, clearly
labeled, envelope or container. The party submitting an IDS citation
containing information which is confidential may subsequently petition
to expunge that citation from the record as set forth in MPEP 724.05.
Explanation of the Unique Description Requirement for Each Citation
Each item must be individually and uniquely described relative to
each of the independent claims, or, if appropriate, to one or more of
the dependent claims, in a meaningful way. When determining whether
reexamination may be ordered in compliance with In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), the PTO
would consider a citation described in this manner during a prior
related PTO proceeding to have had ``its relevance to patentability of
any claim discussed.'' See Request for Comments on Interim Guidelines
for Reexamination of Cases in View of In re Portola Packaging, Inc.,
110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997); Notice and Request for
Public Comments; 63 FR 32646, 32646, 1212 Off. Gaz. Pat. Office 13, 13
(July 7, 1998).
Examples of ways to describe a citation (any of which would be
acceptable) are as follows:
(1) For the closest or most related citation(s): Point out the
features of the citation which are similar to the features of each
independent claim. For example--``Of the six ingredients recited in
the claim 1 breakfast beverage, Citation A teaches beverage
ingredients which are similar to the claimed protein, salt and gum.
Citation B teaches beverage ingredients which are similar to claimed
protein, sugar and carbonating agent.''
(2) Point out how the citation contains or teaches the general
inventive concept of each independent claim. For example--``Citation
C teaches the coating method of claim 4 using light to cure the
coating shortly after it is cooled in a wind tunnel.''
(3) Point out how the citation represents the invention upon
which the independent claim is an improvement. For example--
``Citation D shows the entire conveying
[[Page 53514]]
system of claim 7, except for the inventive friction roller placed
between the two mergers.''
(4) Indicate how the citation teaches at least one feature which
is similar to a claim feature that is not already taught. For
example--``Citation E shows a valve that is the same type of valve
set forth in dependent claim 7.''
(5) Indicate where the citation teaches, in a different way, an
already-taught feature which is similar to a claim feature. For
example--``Citation F teaches a force-cooling of the exiting
material (similar to that of dependent claim 8) as opposed to
citation X which taught the cooling as an inherent result of the
material exiting into the air.''
In each situation, an additional explanation would be required of
how each independent claim (or dependent claim(s), if the citation was
for same) patentably defines over the citation.
It is not necessary that the description for each citation be given
as related to all claims of the application. Rather, each citation
would be described as to its relevance vis-a-vis each independent claim
(or specific dependent claim(s) if that is why it was cited). Further,
it is contemplated that the closest citations would be described in the
greatest detail, and the remaining citations compared to the closest
citations.
Impact of Compliance With 37 CFR 1.98, as it Would be Amended
The examiner will fully consider each citation in an IDS which is
in compliance with 37 CFR 1.97 and with 1.98 as it would be amended.
Conversely, the examiner would not be required to consider any citation
in an IDS where the citation is not presented in compliance with 37 CFR
1.97 and 1.98 as it would be amended. It should be noted that the three
requirements set forth above would apply to any citation in an IDS.
Thus, for example, if a related U.S. application is cited in an IDS and
a copy of the specification, including the claims, and the drawings are
not provided, the examiner would not be required to consider that U.S.
application. Further, the PTO will discard copies of any citations that
are submitted where a unique description is required but is not
supplied, or where the statement of personal review is not made.
Prior to discarding the citations, the PTO would notify applicant
that the citations have been refused further consideration. In the
notice to applicant, the PTO would point out why consideration has been
refused and how the submission of the citations could be corrected. As
is currently the practice, the notice may, at the examiner's option, be
set forth in the next Office action on the merits issued by the
examiner or be provided in a separate notice giving the applicant an
opportunity to correct the IDS. See MPEP 609. Thus, the examiner could
delay action on the merits until the corrected IDS is received or the
time for correction has expired. If the notice is included in the next
Office action on the merits, then the application status would advance
with the issuance of that action on the merits. Thus, the timeliness of
the citations (and refusal of consideration for lack of timeliness)
would quite possibly become dependent on a more limiting subsection of
37 CFR 1.97. For example, if the action on the merits is a first Office
action, 37 CFR 1.97(b) will apply to the corrected IDS submission,
while 37 CFR 1.97(a) would have applied to the original IDS submission
(had it been in order). If appropriate correction is made and the
submission is considered timely under 37 CFR 1.97, the citations will
then be considered. If not, the citations would be removed from the
record and discarded. In such a situation, the list of citations (e.g.,
PTO-1449) which was submitted with the IDS (the citations which were
not considered being lined through by the examiner) would be retained
in the application file to serve as a permanent record of what item(s)
was/were cited.
Rationale as to the Contemplated Revision:
I. Statement of personal review of each citation submitted in the IDS
With the requirement for personal review of each citation,
applicants must review an item so that applicant can then make an
informed decision that the item is relevant and appropriate to cite to
the PTO. This would be effected by requiring the attorney, or where
there is no attorney, at least one of the inventors, to do the personal
review. In addition, the examiner should only be required to consider a
citation where the person submitting the citation to the PTO has first
reviewed that citation and determined that the citation is relevant to
the claimed invention(s). If the submitter reviews the citation in its
entirety and determines that the citation is relevant to the claimed
invention(s), then the examiner should consider that citation in its
entirety. If only a portion of the citation is pertinent and thus only
that portion of the citation has been reviewed by the IDS submitter,
then that portion alone should be cited to the PTO, and that portion
alone will be considered by the examiner.
The personal review of each citation is a subjective and individual
determination of which citations the submitter wishes to make of
record, and the reason for doing so is not subject to review. It is
envisioned, however, that the very act of making this determination
should function as a screening process to effectively filter out
marginally related and unrelated citations. As to the requirement to
describe each citation relative to the claims, the PTO believes that
imposing this requirement is reasonable and fair, and is also highly
desirable, because this requirement (coupled with a requirement for
personal review of each citation) would enable the PTO to achieve the
relief it desires by:
(1) Providing meaningful, useful and relevant information to the
examiner, which would greatly facilitate the examiner's evaluation
of each IDS citation and the examiner's making a patentability
determination on each of the independent and dependent claims. Thus,
it would improve the quality of examination, while improving the
efficiency of the examination process;
(2) Providing an incentive to cite only the most relevant
citations (to avoid having to describe marginally related and
unrelated citations). Thus, the citation of large numbers of
marginally related and unrelated items would be diminished or
eliminated; and
(3) Reducing the overall number of IDS citations that are
submitted by eliminating the marginally related and the unrelated
citations.
II. A copy of each U.S. application would have to be supplied
Applicants often do not submit copies of cited pending U.S.
applications listed in IDSs. Applicant may list multiple application
citations in an IDS (sometimes as many as ten or twenty are listed),
and if no copies are supplied, the examiner must make a time-consuming
effort to obtain and copy all of the cited pending applications so that
they can be considered. This will interrupt the examination of the
application whenever the file of a cited pending application is not
available for inspection and copying. In addition, obtaining and
removing the cited application for copying will also interrupt the
examination of the cited application.
III. IDS citations would have to be uniquely described
The present proposal would permit filers of small IDSs (i.e., ten
or less citations) to continue filing IDSs without any description, as
they are currently filed under 37 CFR 1.98. While it is believed to be
unreasonably burdensome for the PTO to consider unduly large numbers of
IDS citations which are not described, the PTO is amenable to dealing
with ten (or less)
[[Page 53515]]
IDS citations which are not described, even though the examiner has no
guidance from applicant as to what is actually shown or disclosed in
the ten citations.
PTO Goals to be Furthered: The proposal being considered is
important to the PTO Goals of reducing PTO processing time (PTO Goal 1)
and enhancing the quality of examination (PTO Goal 4). Requiring copies
of all citations will reduce delays and help the PTO meet its twelve-
month pendency goal. The presence of the copies of cited documents will
permit those citations to be considered by the examiner at the earliest
possible point after their submission and thereby enhance the quality
of the examination. The descriptions of citations will provide for
better quality because the examiner will have a better understanding of
why applicant considers the citation to be relevant (i.e., the citation
will be made more useful to the examiner). Imposing a requirement of a
statement of personal review of the citations will force applicants to
evaluate all possible items being considered for citation to the PTO
such that only the most relevant items will be cited to the PTO, and
correspondingly, it should cut down on or eliminate the large dumps of
citations that the PTO is now receiving. This will save the examiner
time which is presently expended to read and evaluate cumulative and
minimally relevant citations. This time can be better spent evaluating
the more relevant citations, thus resulting in a higher quality of
examination.
The PTO has determined that it must do something to reduce the size
of the voluminous IDS submissions. Suggestions of other options are
welcomed. If another option is suggested, it should explain why and how
that option would be better.
The PTO expects that many will oppose the above-described proposal
for a variety of reasons. These reasons may include, for example,
concerns as to the burden being imposed on applicant to prepare the
IDS, the conflicting time requirements that will create problems (the
need to submit the IDS by a certain date conflicts with the extra time
needed to prepare the descriptions which would be required before the
IDS could be submitted), and concerns about not properly analyzing or
describing a citation (or all the features, embodiments or parts of the
entire disclosure of the citation) or even overlooking a relevant
citation. The comments, however, should be constructive and address how
(and why) some other option(s) would be better, or as effective, while
being more acceptable to the public.
10. Refusing information disclosure statement consideration under
certain circumstances (37 CFR 1.98)
Summary: The PTO is considering revising 37 CFR 1.98 to reserve the
PTO's authority to not consider submissions of an Information
Disclosure Statement (IDS) in unduly burdensome circumstances, even
where all the stated requirements of 37 CFR 1.98 are met.
Specifics of Change Being Considered: An unduly burdensome IDS
submission may be denied consideration even though it complies with 37
CFR 1.98. For example, extremely large documents and compendiums may
not be accepted if submitted. Applicant will, however, be notified and
given an opportunity to modify the submission to eliminate the
burdensome aspect of the IDS.
Background: 37 CFR 1.97 states that information will be considered
by the PTO if it satisfies the provisions of 37 CFR 1.97 and 1.98. In
the above proposal to revise 37 CFR 1.98 (see above), the PTO is
contemplating revision of 37 CFR 1.98 to deal with unduly burdensome
IDS submissions by imposing new requirements/limitations.
It should be noted that even if the rules of practice are revised
as per the above proposal for 37 CFR 1.98, applicants may still cite
compendiums, such as compilations of individual articles, entire
magazines, journals, encyclopedia or technical dictionary volumes,
textbooks, and volumes of technical abstracts. In addition, if a
compendium is submitted as one of the ``excepted ten citations,'' no
description would be required as to the entire compendium. Even though
such a submission might comply with the letter of 37 CFR 1.98,
consideration of the submission would be unduly burdensome to the
examiner. It clearly would not further the PTO mission and goals to
have the examiner consider the entire text of the compendium. Rather,
applicant should be required to submit and describe the specific
section(s) or portion(s) of the compendium which applicant deems to
provide the basis for making the citation, and such a specific citation
would be acceptable.
Therefore, the PTO should have a mechanism to deal with unusual IDS
circumstances where consideration of all or some part of an IDS would
be unduly burdensome to the examiner.
Proposal: The PTO is contemplating revision of 37 CFR 1.98 to
reserve the authority of the examiner to refuse consideration of an IDS
submission, or any part of it, where such consideration would be unduly
burdensome to the examiner (such that the PTO mission and goals would
not be furthered by requiring the examiner to provide consideration).
When an unduly burdensome IDS is submitted, the PTO would notify
applicant that the IDS, or a particular portion of it, has been refused
further consideration. In the notice to applicant, the PTO would point
out why it would be unduly burdensome for the examiner to consider the
IDS (or portion thereof) and how the IDS could be modified to eliminate
its burdensome aspect. As is currently the practice, the notice may, at
the examiner's option, be set forth in the next Office action on the
merits issued by the examiner or be provided in a separate notice
giving the applicant an opportunity to correct the IDS. See MPEP 609.
Thus, the examiner could delay action on the merits until the corrected
IDS is received or the time for correction has expired. If the notice
is included in the next Office action on the merits, then the
application status would advance with the issuance of that action on
the merits. Thus, the timeliness of the citations (and refusal of
consideration for lack of timeliness) would quite possibly become
dependent on a more limiting subsection of 37 CFR 1.97. For example, if
the action on the merits is a first Office action, 37 CFR 1.97(b) will
apply to the corrected IDS submission, while 37 CFR 1.97(a) would have
applied to the original IDS submission (had it been in order). If
appropriate correction is made and the submission is considered timely
under 37 CFR 1.97, the re-submitted citations will then be considered.
If not, the IDS documents objected to as unduly burdensome would be
removed from the record and discarded. In such a situation, the list of
citations (e.g., PTO-1449) which was submitted with the IDS (the
citations which were not considered being lined through by the
examiner) would be retained in the application file to serve as a
permanent record of what item(s) was/were cited.
Examples: Presented are some examples of IDS submissions (in
addition to the compendium submission which is discussed above) that
comply with the letter of 37 CFR 1.98, yet the PTO would, most likely,
regard as unduly burdensome to the examiner:
(1) An IDS presents ten or less citations; however, one or more
of the presented citations is a patent containing more than one
hundred pages. There is no explanation as to the nature of the
relevance of the patent(s) and no specific columns with lines are
identified.
(2) An IDS presents ten related U.S. applications with copies of
voluminous
[[Page 53516]]
records (including litigation documents) and there is no explanation
as to the nature of the relevance nor is there an identification of
specific parts of the application records.
(3) An IDS presents five hundred citations, each uniquely
described relative to the carving-member feature of claim 5 in a
slightly different manner.
(4) Applicant submits five hundred citations to a foreign patent
office in a foreign application. Applicant then submits the five
hundred citations in the corresponding U.S. application as citations
previously cited by a foreign patent office (see the above
discussion of 37 CFR 1.98) together with a copy of the foreign
patent office search report that does not identify relevancy as to
the citations, and without any citation description in the IDS.
The above are non-limiting examples of burdensome IDS submissions
where consideration would be appropriately denied by the examiner.
PTO Goals to be Furthered: This revision being considered is
important to PTO Goals of reducing PTO processing time (PTO Goal 1) and
enhancing the quality of the examination (PTO Goal 4). At present, non-
conforming and unduly burdensome IDSs are interfering with the PTO
effectively carrying out its function of fully considering IDS
documents. This second proposal for revision of 37 CFR 1.98 (coupled
with the above-presented first proposal) would enable the PTO to reject
abusive IDSs and thus permit examination of others in greater detail.
11. Providing no cause suspension of action (37 CFR 1.103)
Summary: The PTO is considering adding an additional suspension of
action practice, under which an applicant may request deferred
examination of an application without a showing of ``good and
sufficient cause,'' and for an extended period of time. The applicant
would be required to waive the confidential status of the application
under 35 U.S.C. 122, and agree to publication of the application.
Specifics of Change Being Considered: Prior to the first Office
action of an application, the applicant may request deferred
examination provided the application is entitled to a filing date, the
filing fee has been paid, any needed English-language translation of
the application has been filed, and all ``outstanding requirements''
have been satisfied, except that the oath or declaration need not be
submitted. If an oath or declaration has not been submitted, the names
of all of the persons believed to be the inventors must, in good faith,
have been identified. Upon request by the applicant, the PTO may defer
examination for a period not to exceed three years. Applicant would be
required to waive his or her right to have the application kept in
confidence under 35 U.S.C. 122, and pay a fee for publication of the
application.
Discussion: Under 37 CFR 1.103(a), an applicant may request
suspension of action of an application ``for good and sufficient cause
and for a reasonable time specified.'' There may be times, however,
when suspension of action is desired by the applicant even though
``good and sufficient cause'' is not present, and also for a period
greater than the six months permitted under MPEP 709. For example, an
applicant may desire deferred examination to obtain time to align
funding, or to resolve ownership or potential licensing issues. To
provide applicants some flexibility in their business affairs, and a
degree of relief from any business constraints due to the ongoing
pendency of an application, the PTO is considering permitting applicant
to request deferred examination solely at the discretion of the
applicant, and for a period of extended length. A showing of ``good and
sufficient cause'' would not be required.
This program is intended to provide better service to the public by
making it possible to defer action on an application merely by asking,
and paying a fee for it to be deferred. The PTO would benefit as well
as the PTO would be better able to redirect its limited examining and
processing resources to other applications in need of more immediate
processing. The suspension may also allow search and/or examination
results on counterpart cases in other countries to be received and
considered.
In contrast to suspension of action under 37 CFR 1.103(a), which
may not be granted for a period exceeding six months without approval
of the group director (see MPEP 709), deferred examination under this
option would continue until applicant requests resumption of
prosecution, or the maximum time permitted for such deferral has
expired.
A request for deferred examination under this option would only be
granted if, in addition to satisfying the formal requirements and
paying the required fee (set to recover PTO costs), applicant waives
his or her right to have the application kept in confidence under 35
U.S.C. 122 and agrees to publication of the application.
The PTO is considering imposing the following requirements for this
deferred examination program
(1) The application must be entitled to a filing date.
(2) The basic application filing fee must have been paid.
(3) Any needed English-language translation of the application must
have been filed.
(4) All ``outstanding requirements'' (e.g., requirements to a
Notice to File Missing Parts) must have been satisfied, except that the
oath or declaration need not be submitted. See the related discussion
on 37 CFR 1.53 where it is indicated that the PTO is considering
changing the rules of practice to permit submission of the oath or
declaration to be deferred until payment of the issue fee.
(5) If an oath or declaration has not been submitted, the names of
all of the persons believed to be the inventors must, in good faith,
have been identified.
(6) A first Office action on the merits must not have been mailed
in the application, or any prior application assigned the same
application number if the application is continued prosecution
application under 37 CFR 1.53(d).
(7) Applicant must submit ``A Request for Deferred Examination''
under this program which includes:
(a) A waiver of his or her right to have the application kept in
confidence under 35 U.S.C. 122, and payment of the fee for publication
of the application;
(b) Payment of the required fee for deferred examination; and,
(c) In a design application, a utility application filed before
June 8, 1995, or a plant application filed before June 8, 1995, a
terminal disclaimer dedicating to the public a terminal part of the
term of any patent granted thereon equivalent to the period of
suspension of the application (this terminal disclaimer must also apply
to any patent granted on any continuing design application that
contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to
the suspended application).
The PTO considered not making this suspension of action provision
inapplicable to any application not subject to the twenty-year patent
term provisions of 35 U.S.C. 154(a)(2). Rather than excluding such
applications from this program, the PTO is considering simply requiring
that a terminal disclaimer for the period of suspension be filed as a
condition of granting a suspension of action under this program in an
application not subject to the twenty-year patent term provisions of 35
U.S.C. 154(a)(2).
[[Page 53517]]
The PTO is further considering the establishment of the following
program guidelines
1. Maximum period of suspension. Because deferral of action would
delay development of final claim form, and in view of the public's
right to early knowledge of patent rights, a maximum time for
suspension would be set. The maximum time period of suspension would be
measured from the filing date of the application, not the date a
request for suspension is granted. The PTO favors a maximum period of
three years from the filing date or earliest filing date for which a
benefit is claimed under 35 U.S.C. 119, 120, 121, or 365. A longer
period would seem excessive, and is seen as permitting an applicant to
unduly delay issuance of the patent.
2. Time of publication. The PTO favors publication as soon as
practicable after the PTO grants the request. This would make the
specification a publication at the earliest possible time.
3. Form of publication. The PTO intends to publish a notice of the
application, and of the suspension of action in the Official Gazette.
The notice would include bibliographic information, an abstract of the
invention, a drawing figure and at least one representative claim. A
copy of the application, as filed, will be produced and made available
to the public in a manner similar to the present Statutory Invention
Registration (SIR) publications. This would include placement in the
PTO's Automated Patent System (APS) and classified search files. Copies
would be fully available to the public.
4. Effect of Publication. The application would be open to the
public on the date of publication. An application, indexed or
classified according to a classification system, and open to public
inspection, with a publication document including an abstract and claim
arranged with other such documents according to the classification
system is available as a prior art publication under 35 U.S.C. 102/103
(i.e., is ``published''). See In re Wyer, 655 F.2d 221, 210 USPQ 790
(CCPA 1981); see also In re Hall, 781 F.2d 897, 900, 228 USPQ 453, 456
(Fed. Cir. 1986) (a dissertation in a library open to public inspection
by the general public, and indexed and cataloged with the other
documents in the library, is available as a publication under 35 U.S.C.
102/103). The published application would not be prior art under 35
U.S.C. 102(e) effective from the filing date of the so-published
application. Obviously, if the application is subsequently issued as a
patent, the patent would be available as prior art under 35 U.S.C.
102(e).
Comments on the Following Questions Are Solicited
1. Should a maximum period for suspension be set for a period of
other than three years?
2. Should the application be required to include an executed oath
or declaration before a request for suspension of action may be
granted? It is noted that the Office is also considering changing 37
CFR 1.53 to permit submission of the oath or declaration to be
deferred.
3. Would publication of the application, coupled with the knowledge
that a patent may be issued in the future, have a chilling effect on
others active in the same field so as to freeze their activities in
this area?
12. Requiring a handling fee for preliminary amendments and
supplemental replies (37 CFR 1.111)
Summary: The PTO is considering imposing a handling fee for certain
preliminary amendments and for all supplemental replies.
Specifics of Change Being Considered: The PTO is considering
replacing the current practice of allowing unlimited preliminary
amendments and multiple supplemental replies to be filed without
requiring any fee with a new practice where a handling fee would be
charged for each preliminary amendment filed later than a specified
time period after the filing date of the application, and for each
supplemental reply that is filed after the initial reply to an Office
action has been filed.
Background: Preliminary amendments and supplemental replies cause
the PTO to perform administrative processing, the cost of which is not
covered by the filing fee. Some preliminary amendments and supplemental
replies cause the PTO to perform examiner rework resulting in increased
pendency time for the application when such submissions are timely
filed but do not reach the examiner prior to the examiner acting on the
application. For example, if a preliminary amendment or supplemental
reply crosses in the mail with a PTO Office action, the PTO must
perform rework including technical support processing of the
submission, and further examination of the application by the examiner,
and a new or supplemental Office action will most likely have to be
prepared and mailed. If the preliminary amendment or supplemental reply
is received by the examiner after the examiner has begun to examine the
application, or even after the examiner's action has been prepared, but
before the Office action was mailed, the examiner would still have to
reconsider, and then revise or even redo the action, whether it was
ready to be mailed or not, in light of the preliminary amendment or
supplemental reply. This may also require an additional search or that
the previous search be redone. See MPEP 714.05. Accordingly, the PTO is
considering revising its patent rules of practice to impose a handling
fee for the filing of certain preliminary amendments and for
supplemental replies to recover the costs associated with these
activities.
Such a change to the patent rules of practice would support the
PTO's business goals of reducing the PTO processing time to twelve
months or less for all inventions, and assessing fees commensurate with
resource utilization and customer efficiency. Processing time in the
PTO would be reduced in that applicants would have an incentive to
promptly file preliminary amendments and to timely file complete
replies to Office actions. The assessment of a handling fee for each
preliminary amendment filed outside of a specified time period, and
each supplemental reply, will offset the costs accrued by the PTO for
extra technical support and examination processing, including the time
spent by the examiner to reconsider, and (re)process, such submissions.
The PTO anticipates that charging a handling fee for such preliminary
amendments and supplemental replies will discourage such filings, thus
resulting in a reduction in the amount of time it normally takes to
complete the examination of an application, which now includes delays
associated with such preliminary amendments and supplemental replies.
The PTO is therefore considering charging a handling fee for each
preliminary amendment filed later than a specified time period after
the filing date of the application and each supplemental reply rather
than banning them in their entirety.
Preliminary Amendments: Current practice permits an applicant to
file preliminary amendments any time prior to the mailing of a first
Office action. This practice often results in a preliminary amendment
crossing in the mail with an Office action. Current practice has also
resulted in complaints (petitions) by applicants when the PTO has
refused to issue a new Office action when a preliminary amendment is
not filed in the PTO before the mailing date of an Office action, but
was mailed to the PTO before the applicant received
[[Page 53518]]
the Office action, since such a preliminary amendment did not cross in
the mail within the meaning of MPEP 714.05. Another area of concern
with preliminary amendments is that some preliminary amendments are
received at the PTO before the mail date of the first Office action,
but not far enough in advance of such mail date that the amendment can
be associated with the application file before the examiner has
completed the first Office action (i.e., filed a few weeks before the
mail date of the Office action). In either scenario, a hardship is
caused on both the Office and applicant due to the preliminary
amendments not being considered. Preliminary amendments also cause the
Office to incur extra expenses in technical support processing of the
amendments, and in most instances, the examiner having to modify and
mail a new Office action. The applicant suffers by having to inquire
about the preliminary amendment not acted upon by the examiner and from
having to request a new examiner's action when a timely filed
preliminary amendment did not reach the file before the examiner's
action was mailed.
An application should be ready for examination when filed, and an
applicant may expect the PTO to take up an application for examination
shortly thereafter. When the PTO reduces its cycle time to twelve
months, applications will receive a first Office action in less than
six months after filing. Therefore an effort should be made to have all
preliminary amendments before the examiner at the time the application
is filed. In the case of a continuing prosecution application (CPA),
since the application could be ready for the examiner to review in as
little as one day from the date the CPA is filed, the timely submission
of a preliminary amendment is of even greater importance.
Accordingly, the PTO is considering charging a handling fee for
each preliminary amendment filed: (1) later than one month from the
expiration of the applicable twenty-or thirty-month period in 35 U.S.C.
371(b) in a PCT application ; (2) later than one month from the filing
date of the application in an application filed under 37 CFR 1.53(b);
and (3) later than the filing date of the application in a continued
prosecution application (CPA) filed under 37 CFR 1.53(d). These time
periods would not be extendable. This handling fee will offset the
handling costs incurred by the PTO, and act as an incentive for
applicants to file an application in condition for examination. If the
handling fee is not paid, the preliminary amendment would merely be
made of record in the file but would not be entered.
Exceptions: Not every preliminary amendment filed outside this time
period would require a handling fee. For example, no handling fee would
be required for any paper submitted in reply to a requirement by the
PTO, either written or oral, such as a request to submit a signed copy
of a paper previously submitted, but which was not signed. Another
example would be when a preliminary amendment is required (e.g., filing
of an English translation from a foreign filed application) as a result
of a ``Notice To File Missing Parts of Application'' (37 CFR 1.53(f)).
Any amendments filed in reply to a ``Notice To File Correct Application
Papers'' would also not require a handling fee. It should be noted,
however, that if any other type of amendment were to be submitted with
the reply to the PTO requirement, which was not specifically required,
then a handling fee would be required for that reply. No handling fee
would be required for any preliminary amendment which is filed solely
for the purpose of reducing the number of claims in an application to
be examined, but amendments deleting some claims and adding new, or
substitute, claims would have to pay a handling fee even if the net
result of the amendment is that fewer claims would be present.
Supplemental Replies: Under current practice, an applicant must
file a timely reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR
1.135, but may then file one or more supplemental replies (which may
include additional arguments, amendments, evidence, or other material)
up until the mailing of the next Office action. This practice
encourages the filing of a reply that, while satisfying the
requirements of 37 CFR 1.111, may not include all of the amendments or
evidence that the applicant seeks to be considered, since the original
reply may be supplemented. 37 CFR 1.111(b), however, provides that a
proper reply by an applicant to an Office action ``must reply to every
ground of objection and rejection in the prior Office action.'' Thus,
no more than one reply to an Office action should be necessary in most
situations.
Accordingly, the PTO is considering a change to the patent rules of
practice to require that all supplemental replies to a non-final Office
action must be filed with a handling fee to be entitled to
consideration. Under this practice, an applicant would still be
permitted to file supplemental replies to an Office action but all
additional costs associated with the processing of the supplemental
reply would be offset by the handling fee that would have to be paid.
If the handling fee is not paid, the supplemental reply would merely be
made of record in the file but would not be entered.
Exceptions: A handling fee would not be required for supplemental
replies filed after a final Office action as such replies are not
automatically entitled to entry. A handling fee would also not be
required when the supplemental reply is filed after reaching an
agreement for such with the examiner.
An example in which a handling fee would not be required would be
when a supplemental reply is filed in response to an agreement reached
with an examiner. In this situation the examiner's interview summary
record should indicate that the filing of a supplemental reply was
approved, and the supplemental reply should clearly indicate that it
was filed after receiving approval from the examiner in order to not be
subject to payment of the handling fee. It should be noted that the
examiner will not be under any obligation to permit the submission of a
supplemental reply without a handling fee.
Handling Fee: As earlier indicated, the PTO is taking the approach
of charging a handling fee for certain preliminary amendments filed
after the application was filed and for each supplemental reply rather
than considering banning them in their entirety.
The PTO incurs costs associated with processing preliminary
amendments and supplemental replies. Depending on when such papers are
filed the costs include not only technical support processing time, but
also additional time on the part of the examiner. In order to offset
the costs accrued by the PTO in processing certain preliminary
amendments filed after the application was filed, or supplemental
replies, the handling fee will be set at the aggregate cost to the PTO
for both administrative and examiner processing time required for the
average preliminary amendment or supplemental reply. It is important to
note that the paying of the handling fee does not guarantee that the
submission forwarded therewith will be considered by the examiner, as
all submissions must still meet the timeliness limitations which
currently exist.
13. Changing amendment practice to replacement by paragraphs/claims (37
CFR 1.121)
Summary: The PTO is considering changing the manner of making
amendments to require that all amendments to the specification
including the claims be presented in the
[[Page 53519]]
form of replacement paragraphs and claims, respectively.
Specifics of Change Being Considered: The PTO is considering
replacing the current system for making amendments in non-reissue
applications with amendment to the specification by replacement
paragraphs and amendment to a claim by a replacement claim. This would
eliminate the PTO's need to enter changes by handwriting in red ink.
Deletions of a paragraph or a claim would be by instruction to cancel.
Replacement paragraphs and claims would be a clean copy that is
printer-ready, which can be optical character recognition (OCR) scanned
during the publishing process. A marked-up copy of the changed
paragraphs or claims, using the applicant's choice of mark-up system,
would also be supplied as an aid to the examiner. All paragraphs in the
specification, including charts, tables, equations, etc., would have to
be numbered. An option to provide substitute specifications would be
retained for submission of extensive changes.
Background: 37 CFR 1.121(a) permits an applicant to amend the
specification, and to a limited degree, the claims, by instructing the
PTO to make insertions or deletions at precise points in the
specification or claims. Alternatively, applicant may choose to cancel
a claim or rewrite a claim in amended form with underlining and
bracketing, designating additions or deletions, respectively. Under
these rules, amendments are often many pages long, involve extensive
and numerous changes to the specification and/or claims, have complex
entry instructions, and sometimes include typographical errors. Entry
of these amendments, especially when words and phrases must be inserted
in hand-written red ink, and many such changes are being made, is very
time-consuming and difficult to perform, frequently leading to entry
errors (including spelling, wording, and entry locations). In addition,
no clean copy of the specification or claims is available for scanning
as part of the patent publication process. Thus, the current amendment
process leads to printed patents being issued which contain many
errors, which is an unsatisfactory situation for both the PTO and
applicants/patentees for a number of reasons. First, the PTO has to
expend valuable resources to make needed corrections via Certificates
of Correction. Second, applicants/patentees want their patents to be
correctly printed, without errors, and they are very disappointed when
they receive patents that do contain errors. Further, while
Certificates of Correction are issued at no cost to applicants/
patentees if the errors are the fault of the PTO, applicants/patentees
must expend a substantial amount of time and effort carefully reviewing
their printed patents, then preparing and submitting requests to the
PTO for any needed corrections. It can be readily seen, therefore, that
the PTO and its customers both feel that there is a real need for
changes to be made to the current system for making amendments so as to
reduce the number and causes of Certificates of Correction.
The PTO has been considering changes to the procedure for making
amendments to an application for several years. See Notice of Public
Hearing and Request for Comments on 18-Month Publication of Patent
Applications; Advance Proposed Rule Notice, 59 FR 63966, 63970
(December 12, 1994); 1170 Off. Gaz. Pat. Office 390, 393-94 (January 3,
1995). The PTO made a specific proposal for changing the procedure for
making amendments to an application in late 1996. See 1996 Changes to
Patent Practice and Procedure; Proposed Rule Notice, 61 FR 49819,
49830-31, 49852-54 (September 23, 1996); 1191 Off. Gaz. Pat. Office
105, 113-14, 133-34 (October 22, 1996). This proposal, however, was
withdrawn for further study in view of the public comments received.
See Changes to Patent Practice and Procedure; Final Rule Notice, 62 FR
53131, 53153 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63, 82
(October 21, 1997).
Comments received to date in response to both notices have been
taken into account in arriving at the currently proposed procedure for
making amendments.
Discussion: The preferred option under consideration is a change to
37 CFR 1.121 eliminating the current system for making amendments in
non-reissue applications and requiring applicants to present amendments
in the form of replacement paragraphs for changes to the specification
and replacement claims for any changed claims. The replacement
paragraphs/claims would be entered by the PTO as substitute inserts for
the paragraphs in the specification or for the affected claims. Should
an applicant merely wish to cancel a claim, a specific instruction to
cancel or delete the claim would be sufficient. Similarly, a paragraph
of the specification could be canceled by a specific instruction to
cancel or delete. Except as currently provided, no claim would be
canceled by the PTO without specific and direct instructions from the
applicant to do so.
In order for the replacement paragraph system to work, all the
paragraphs, including headings, charts, graphs, tables, and equations
in the specification would have to be numbered. Thus, it is further
contemplated that, in conjunction with the change to 37 CFR 1.121, a
change to 37 CFR 1.52 may be necessary in order to provide a
requirement for the numbering of paragraphs of the specification. Once
all the paragraphs are numbered, amendments would be made merely by
submitting a replacement paragraph (with the same number) with the
desired changes made in the replacement paragraph. If an amendment
results in the addition or deletion of one or more paragraphs, an
arrangement for identifying any such added or deleted paragraphs shall
be established so that the numbering of other paragraphs shall not have
to be changed.
It should be noted that the PTO will retain the option of being
able to require the submission of a substitute specification, as well
as permitting the submission of a substitute specification. 37 CFR
1.125.
In addition to submitting a replacement paragraph/claim to make an
amendment, applicant would also be required to submit a marked-up copy
of the paragraph/claim to show the differences between the original and
the replacement. The marked-up copy would be generated by any method
applicant chooses, such as underlining and bracketing, redlining, or by
whatever system is available with the compare function of applicant's
software. However, it must be clear enough to be readily understood by
the examiner.
The replacement paragraph/claim, which would be a clean version
without any underlining or bracketing, would be able to be completely
scanned as part of the printing process in the Office of Patent
Publications which will result in a higher quality of printed patents.
Complete scanning of amended portions of the specification and amended
claims is not possible today because insertions of words, phrases or
sentences made by handwriting in red ink and deletions made by words
which have been lined through with red ink are ignored by the scanner.
Further, while text marked with underlining and bracketing can be
scanned, extra processing is required to delete the brackets and the
text within the brackets and to correct misreading of letters caused by
the underlining. Thus, using clean replacement paragraphs and claims
would permit complete scanning which is a faster and more accurate
method of capturing the application for printing while eliminating an
extensive amount of key-entry of subject matter.
[[Page 53520]]
This should result in patents with fewer errors in need of correction
by certificate of correction, which clearly would be a benefit to the
patentees while also conserving PTO resources.
When an amendment in the future is presented in an Electronic File
Wrapper (EFW) environment, applicants would only have to submit a
single clean copy of the replacement paragraph/claim, as the PTO's
system (software) would be designed to allow the examiner to see the
differences between the original and the amended versions.
Adoption of the preferred option would make the amendment process
simpler, reduce processing time and operating costs, and reduce the
opportunity for error associated with amendment entry. In addition, it
would be consistent with the PTO objective of standardizing processing
of amendments in both paper and electronic format in anticipation of a
total EFW environment, which is currently under development. Further,
the changes being considered are consistent with the PTO's efforts to
harmonize with PCT practice and any changes being contemplated for that
system.
The change in amendment procedure being considered would have a
significant impact on several of the PTO's business goals.
Specifically, amendment entry practice would be much easier and would
increase efficiency in the technical support area with better resource
utilization (Business Goal 5) and a reduction in cycle time (Business
Goal 1). In addition, the changes proposed herein are consistent with
the PTO's concurrent development of receiving applications and
publishing patents electronically (Business Goal 3), in that they
provide for enhanced and more efficient paper processing, in addition
to establishing the groundwork for transition into a full EFW
environment. Further, the simplified amendment entry practice would
exceed our customers' quality expectations (Business Goal 4) by saving
applicants a substantial amount of time and resources as: (1) it will
be easier and take less time for applicants to prepare amendments to be
submitted to the PTO; (2) it will be easier and take less time for
applicants to enter amendments into and update their own application
files; and (3) the printed patents should have less typographical
errors, reducing the need for requesting Certificates of Correction.
A secondary option under consideration is that of replacement
sections of the specification and claims. A standardized form of
section and heading identification would also be required to achieve
uniformity in practice. Parts of the specification, as well as
individual claims, would be defined as ``sections'' and would be
replaced in a manner similar to that described above for replacement
paragraphs/claims. While the procedure seems viable for electronic
processing, it does not lend itself to paper format, primarily due to
the larger number of replacement sheets which might be required.
One other option that was considered involved replacement pages of
the specification and/or claims. Although this procedure currently
enjoys limited success in PCT amendment practice in paper format, its
future in electronic filing raises some apprehension. In an electronic
environment, page numbering is dependent on word processing style and
formatting and can be inconsistent; thus, sequential page numbering as
in paper format would not be possible. For this reason, this option is
not being further pursued.
It is noted that 37 CFR 1.121 is primarily directed to setting
forth the procedural requirements for making amendments. Thus,
consideration is being given to shifting several of the more
substantive sections of this rule to more appropriate sections of the
rules. For example, the provisions of 37 CFR 1.121(b)(2)(iii) and
(b)(5), which are specific to reissue requirements, may be relocated to
37 CFR 1.173, and the provisions of 37 CFR 1.121(a)(6) relating to new
matter may be relocated to 37 CFR 1.111.
14. Providing for presumptive elections (37 CFR 1.141)
Summary: The PTO is considering a change to restriction practice to
eliminate the need for a written restriction requirement and express
election in most restriction situations.
Specifics of Change Being Considered: The PTO is considering a
change to restriction practice to provide: (1) that if more than one
independent and distinct invention is claimed in an application, the
applicant is considered to have constructively elected the invention
first presented in the claims; (2) for rejoinder of certain process
claims in an application containing allowed product claims; and (3) for
rejoinder of certain combination claims in an application containing
allowed subcombination claims. This will, in most restriction
situations, eliminate the need for a written restriction requirement
separate from an Office action on the merits and an express election by
the applicant, which will reduce pendency and PTO cycle time. This
change would apply to nonreissue applications filed under 35 U.S.C.
111(a), and would not apply to reissue applications or applications
filed under the PCT.
Discussion: The PTO is considering amending the rules of practice
(37 CFR 1.141 et seq.) to avoid the delays inherent under current
restriction practice. Specifically, when claims to more than one
independent and distinct related invention are presented in an
application, current practice is to require restriction and an express
election by the applicant prior to an action on the merits. See 37 CFR
1.142(a). The PTO is considering amending restriction practice to
provide, by rule, that if claims to more than one independent and
distinct related invention are presented in an application, the
applicant is considered to have constructively elected the invention
first presented in the claims. That is, the PTO is considering adopting
a PCT-type practice in regard to how the PTO determines the invention
to be examined when multiple inventions are presented in an
application. See PCT Article 17(3)(a) (when the unity of invention
requirement is not met, the search report shall be established on the
parts of the application that relate to the invention first mentioned
in the claims unless additional fees are timely paid). This change
should eliminate the need for a requirement for an express election
prior to action on the merits in many restriction situations, and would
support the PTO's business goal to reduce PTO processing time to twelve
months or less for all inventions.
The PCT practice of permitting an applicant to obtain examination
of additional inventions in a single application upon payment of
additional fees is not currently under consideration. Except for the
specific authorization in Sec. 532(a)(2)(B) of Pub. L. 103-465 for the
practice set forth in 37 CFR 1.129(b), there is currently no statutory
authority for the PTO to simply charge the patent fees set forth in 35
U.S.C. 41(a) for the examination of additional inventions in a single
application. 35 U.S.C. 41(d) would authorize the PTO to examine
additional inventions in an application for a fee that recovers the
estimated average cost to the PTO of such further examination; however,
as 35 U.S.C. 41(h) is applicable only to fees under 35 U.S.C. 41(a) and
(b), the PTO would not be authorized to provide a small entity
reduction in regard to such fee. Thus, the only mechanism by which the
PTO may provide examination of additional inventions for a fee to which
the small entity reduction is applicable is via the divisional
application practice.
[[Page 53521]]
The PTO is also considering providing, by rule, that the PTO will
examine the claims to the product if either: (1) the first presented
claims are claims to a product; or (2) the first presented claims are
claims to a process of either using or making a product and the
application contains claims to the product. If the claims to the
product are determined to be allowable over the prior art, the PTO will
also examine (permit joinder of) the corresponding process of making
claims or the corresponding process of using claims (if the application
contains claims to the process of using or making the product) that
depend from or otherwise include all the limitations of the product
claims that are allowable over the prior art. See Guidance on Treatment
of Product and Process Claims in light of In re Ochiai, In re Brouwer,
and 35 U.S.C. 103(b), 1184 Off. Gaz. Pat. Office 86 (March 26, 1996).
The process of making claims or the process of using claims that do
not depend from or otherwise include all the limitations of the product
claims that are allowable over the prior art will, by rule, be treated
as constructively non-elected due to the presentation of product
claims. If the claims to such product are not determined to be
allowable over the prior art, then, by rule, the presentation of
product claims will be treated as a constructive election of the
product for examination. Thus, a process claim will, by rule, be
treated as constructively non-elected due to the presentation of a
product claim in either of the following two situations: (1) if no
constructively elected product claim is allowable over the prior art;
or (2) if the process claim does not depend from or otherwise include
all the limitations of a constructively elected product claim that is
allowable over the prior art.
The PTO is also specifically considering providing, by rule, that
the PTO will examine the claims to the subcombination if either: (1)
the first presented claims are claims to a subcombination; or (2) the
first presented claims are claims to a combination and the application
contains claims to the subcombination. If the claims to the
subcombination are determined to be allowable over the prior art, the
PTO will also examine (permit joinder of) the corresponding combination
claims (if the application contains claims to the combination) that
depend from or otherwise include all the limitations of the
subcombination claims that are allowable over the prior art.
Restriction is currently not permitted in the situation in which
the combination includes all the limitations of the subcombination
(i.e., the subcombination is essential to the patentability of the
combination), unless there is at least one combination claim that does
not include all the limitations of the subcombination (i.e., a claim
that evidences that the applicant does not consider the subcombination
is essential to the patentability of the combination or an ``evidence
claim''). See MPEP 806.05(c). Restriction may be permitted in the
situation in which the combination does not include all the limitations
of the subcombination (i.e., the subcombination is not essential to the
patentability of the combination). See id.
The combination claims that do not depend from or otherwise include
all the limitations of the subcombination claims that are allowable
over the prior art will, by rule, be treated as constructively non-
elected due to the presentation of subcombination claims. If the claims
to the subcombination are not determined to be allowable over the prior
art, then, by rule, the presentation of subcombination claims will be
treated as a constructive election of the subcombination for
examination. Thus, a combination claim will, by rule, be treated as
constructively non-elected due to the presentation of a subcombination
claim in either of the following two situations: (1) if no
constructively elected subcombination claim is allowable over the prior
art; and (2) if the combination claim does not depend from or otherwise
include all the limitations of a constructively elected subcombination
claim that is allowable over the prior art.
The examiner would still be required to set forth the restriction
requirement in the first Office action, and would then follow the
requirement with an indication of which claims were constructively
elected. If the applicant disagrees with the propriety of the
restriction requirement, the applicant would continue to have the right
to request reconsideration (37 CFR 1.143) and review (37 CFR 1.144) of
the restriction requirement. The only change is that an applicant's
election would be a constructive election based upon the order of
presentation, rather than an express election in reply to a restriction
requirement.
This change would apply to nonreissue applications filed under 35
U.S.C. 111(a), and would not apply to applications filed under the PCT.
The PTO is also considering changes to restriction practice for reissue
applications, which are discussed below. The discussion in this topic
applies solely to restriction practice for a nonreissue application.
15. Creating a ``rocket docket'' for design applications (37 CFR 1.155)
Summary: The PTO is considering an expedited procedure to reduce
the processing time for the examination of design applications.
Specifics of Change Being Considered: The PTO is considering a
change to the rules of practice, so that design applicants may for a
fee (roughly estimated at approximately $900) request to have their
applications expedited. The applications will be individually examined
with priority and the clerical processing will be conducted by special
expediters and/or monitored by special expediters to achieve
expeditious processing through initial application processing and the
Design Examining Group.
Discussion: Because of the marketplace, there is a need for rapid
protection of certain articles which are easy to copy, such as athletic
shoes, toys or consumer goods. Consequently, the time spent securing
patent protection may severely erode the benefit of design patent
protection, since if the process is lengthy, once the design is
patented, the damage in the form of infringement may already be done.
Currently the ``Petition to Make Special--Accelerated'' procedure set
forth at MPEP 708.02(VIII) provides an under-utilized process for
applicants seeking timely examination. Presumably this is because the
procedure required to grant a Petition to Make Special is time-
consuming in that the petitions must first be located from amongst the
application papers and oft-times a considerable amount of time may
transpire before the petition is acted upon by the required high-level
official. Utilizing the proposed expedited procedure, this will be
solved by having the request hand-delivered to the Director's Office
where the PTO can be assured that it will be acted upon quickly.
Moreover, the current Petition to Make Special procedures are primarily
directed to prioritizing the application while it is on the Examiner's
docket as opposed to decreasing time spent routing the application and
clerical processing time. Certain design applicants have requested that
additional measures, for an additional cost, be made available to
design applicants so that their applications may be processed and/or
monitored by expediters, who will assure hand-carrying of the
applications between processing steps and top priority clerical
processing of the applications. This is consistent with the PTO's goals
of reducing the cycle time for applications (Goal 1) and exceeding
customers' expectations (Goal 4).
[[Page 53522]]
Accordingly, there is a need for a separate, streamlined, expedited
procedure for designs.
Consequently, the PTO is considering amending 37 CFR 1.155 to
create an additional avenue for design applicants seeking expedited
processing during examination before the PTO. The fee for this
expedited processing is that fee necessary to recover the PTO's cost of
providing such expedited examination. See 35 U.S.C. 41(d). The initial
estimate (approximately $900) is for the additional cost of: (1) hand-
carrying/walking an application through processing stages in initial
application processing and the Design Examining Group; (2) prioritizing
the processing of the application and (3) individually searching and
examining the application by itself and not along with other design
applications.
Unlike utility and plant applications, design applications are
generally searched (and examined) in groups of ten to twenty which
reduces the search and examination time needed for each design
application, which in turn permits a relatively low design application
filing fee. Under this practice, the general procedure results in all
applications being searched before any are completed and mailed. Given
that expedited cases will be searched and examined individually by
themselves rather than with many other design applications, a higher
processing fee is justified.
The expedited procedure for design cases will afford expeditious
treatment from the date of filing to the date of issuance or
abandonment, except if the application is appealed or if a petition is
filed there is no expedited treatment while the application is within
the jurisdiction of the Board of Patent Appeals and Interferences
(BPAI) or Special Program Law Office (SPLO) under the proposed 37 CFR
1.155. As to processing during the printing cycle, the time for
processing prior to printing is expected to be reduced to eight weeks,
so no special expedited procedure is deemed necessary.
Requirements
(1) The Request to Expedite along with the design application
should be filed by hand in the Design Group Director's Office. If the
application has been previously filed, the request, which must indicate
the application number, should be hand-carried or faxed to the Group
Director's Office.
(2) The Request to Expedite will be treated promptly but will not
be considered until the application is complete (i.e., includes the
basic filing fee, executed oath or declaration and drawings).
(3) Applicant will be required to conduct a preexamination search.
The results of the search must be reported as set forth in MPEP
708.02(VIII) ``Special Examining Procedure for Certain New
Applications--Accelerated Examination.'' See MPEP 708.02(VIII) at 700-
71.
(4) The requisite fee must accompany the Request to Expedite. The
fee (roughly estimated at approximately $900) charged will be based on
expenses for additional work and processing time (e.g., search and
examination on an individual application basis and special clerical
processing/handling and stoppage of other work in progress). There will
be no time limit on when the Request to Expedite may be filed, but the
fee will be the same regardless of the point in the examination
expedited status begins.
(5) Formal drawings are required for expedited status.
As to restriction practice, there will be a constructive election
of the first presented invention. No right to traverse is to be
provided. As an alternative, the applicant is given the right to
traverse immediately following an Office action in which a constructive
election has been set forth; but once the right to traverse is claimed,
the expedited status under 37 CFR 1.155 will be terminated.
Benefits of Expedited Status
Once the Request to Expedite is granted, the application will be
provided special expedited processing including (a) essentially walk-
through processing through initial application and Design Examining
Group stages and (b) processing out-of-turn on an immediate basis.
There will be specially designated expediters for clerical processing
who will personally perform certain processing steps where possible,
and if not possible, will wait with the application for immediate
performance of processing steps by regular personnel. The applications
will be hand-carried from step to step. These special expediters might
be designated employees in existing organizations or a special central
clerical operation that would serve as expediters and do or oversee the
processing for most other operations.
Examiner processing of expedited applications (for first as well as
subsequent actions) will be given the highest priority for examination
and each application will be searched and examined individually by
themselves and not along with a batch of other applications. A courtesy
copy of all Office actions (with references if feasible) will be faxed
if a fax number is provided.
The design group will monitor application progress using the Patent
Application Locating and Monitoring (PALM) system to ensure that
expedited applications are not misplaced or delayed. Distinctive
markings or tags will be placed on the filewrapper. The applications
will be specially coded with a PALM transaction code and specially run
PALM reports will be generated to ensure that any expedited application
in the same status for more than a predetermined period of time will be
noted and brought to the attention of the monitoring officials.
The PTO will set a one-month Shortened Statutory Period (SSP) for
reply for each action.
In addition, the PTO envisions setting aside an adequate number of
``expedited status'' slots at the printer for expedited cases. However,
the time for the printing process is expected to be reduced to eight
weeks, so no special provision is expected to be required.
The PTO is interested in whether you find this program desirable
and, if not, why not. Please include with your comments an estimate of
the number of expedited requests that your office or firm expects to
file, should the expedited procedure be implemented.
16. Requiring identification of broadening in a reissue application (37
CFR 1.173)
Summary: The PTO is considering a change to 37 CFR 1.173 to require
reissue applicants to identify all occurrences of broadening of the
claimed invention in the reissue application.
Specifics of Change Being Considered: Reissue applicants would be
specifically required to point out all occurrences of broadening of the
claims. This will alert examiners to consider issues involving
broadening relative to the two-year limit and the recapture doctrine.
While this requirement is being imposed on applicants, the examiner
will still be expected to independently look for and to appropriately
treat any broadening issues under 35 U.S.C. 251, Paras. 1 and 4. If
applicant fails to note a broadening and the examiner does identify a
broadening, the examiner would not be permitted to make any rejection
or objection as to the failure of applicant to identify the broadening.
Discussion: 35 U.S.C. 251, para. 4, provides that no reissue patent
may enlarge (broaden) the scope of the claims of the original patent,
unless the reissue patent was applied for within two years from the
grant of the original patent. See In re Graff, 111 F.3d 874,
[[Page 53523]]
877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997). The standard for
determining whether there has been a ``broadening'' has been set forth
by the Court of Appeals for the Federal Circuit as follows:
a claim of a reissue application is broader in scope than the
original claims if it contains within its scope any conceivable
apparatus or process which would not have infringed the original
patent * * *. A claim that is broader in any respect is considered
to be broader than the original claims even though it may be
narrower in other respects.
See In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed.
Cir. 1994) (quoting Tillotson Ltd. v. Walbro Corp. 831 F.2d 1033, 1037
n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987)); see also Westvaco Corp.
v. International Paper Co., 991 F.2d 735, 741-42, 26 USPQ2d 1353, 1358-
59 (Fed. Cir. 1993); and In re Self, 671 F.2d 1344, 1346-47, 213 USPQ
1, 3-4 (CCPA 1982).
Further, even if a broadened reissue is applied for within two
years (of the patent grant date), any broadening must also be
considered in view of the recapture doctrine which prevents a patentee
from regaining through reissue subject matter that the patentee
surrendered in an effort to obtain the original patent claims. See, In
re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997);
see also Hester Indus., Inc. v. Stein, 142 F.3d 1472, 1480-82, 46
USPQ2d 1641, 1648-49 (Fed. Cir. 1998) (arguments during prosecution of
the original patent may, even in the absence of an amendment to the
claims, give rise to a surrender that bars recapture by reissue).
Therefore, to properly examine any reissue application, the examiner
must be aware of all occurrences of broadening of the original patent
claims.
While it is often clear when a reissue application contains one or
more claims that are broader than the claims of the original patent,
sometimes issues of claim interpretation arise where it is not clear
that the reissue application contains claims that are broader than the
claims of the original patent. For example, a reissue application
changing the phrase ``perforation means'' in the original patent claims
to ``perforations'' is a broadening change if that phrase in the
original patent is considered to have invoked 35 U.S.C. 112, para. 6
(Johnston v. Ivac Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386
(Fed. Cir. 1989) (35 U.S.C. 112, para. 6, operates to cut back on the
types of means which could literally satisfy the claim language)), but
is not a broadening if that phrase in the original patent is not
considered to have invoked 35 U.S.C. 112, para. 6 (Cole v. Kimberly-
Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996)
(presence of the word ``means'' in a claim does not necessarily invoke
35 U.S.C. 112, para. 6)). Thus, in a significant number of reissue
applications, it is not readily apparent from an inspection of the
claims in the reissue application whether they are broader than the
original patent claims. See Freeman, 30 F.3d at 1464-65, 31 USPQ2d at
1448 (``we cannot agree with [applicant] that simply because
[applicant] added words to [the] claims that those claims are further
narrowed in scope * * * [t]he English language is not that simple'').
The PTO recently amended 37 CFR 1.175(a) (effective December 1,
1997) to require that a reissue applicant identify in his or her
reissue oath or declaration only a single error being corrected in the
reissue. See Changes to Patent Practice and Procedure; Final Rule
Notice, 62 FR 53131, 53196 (October 10, 1997), 1203 Off. Gaz. Pat.
Office 63, 121 (October 21, 1997). Thus, in a reissue application
containing claims that have been both broadened and narrowed, the
applicant may meet the literal requirements of 37 CFR 1.175(a) by
identifying only the error involving the narrowing of the original
patent claims, while still asserting a correction of ``more or less''
than applicant had a right to claim in the original patent and without
addressing the issue of broadening. Without the identification of all
occurrences of broadening, it may not be clear when a reissue
application contains claims that are broader than the claims of the
original patent.
Since this recent rule change did not specifically retain the
requirement for indicating when an amendment (change to the original
patent) will actually be a broadening amendment, or an attempt to be a
broadening, amendment, the PTO is considering imposing a requirement
for reissue applicants, at the time any changes are made, either at the
time of filing or during the course of prosecution, to specifically
identify the changes that involve, or may involve, broadening of the
claims. Thus, applicants would be required to identify all occurrences
of broadening of the patent claims in the reissue application. For
example, a change from the term ``rigid material,'' which might appear
in an original patent, to the term ``material'' in a corresponding
reissue application, is an easily identifiable broadening of the claim.
Another example would be a totally rewritten new claim in a reissue
application which may not have an easily recognizable correspondence to
any original patent claim.
The intent is to impose on applicant a burden to identify all
instances of broadening so as to alert the examiner in a timely manner
to the fact that broadening has occurred so that the examiner can
consider the questions of whether the broadening has occurred outside
the two-year time period or whether the broadening amounts to an
attempt to recapture subject matter previously given up in obtaining
the patent. The examiner, however, is not relieved of his/her
obligation to fully evaluate and examine the reissue application,
including any issues related to broadening, as required by 35 U.S.C.
251, para. 4.
If an applicant fails to identify any broadening but the examiner
has detected occurrences of broadening, the burden on applicant has
been satisfied and there would be no point to having the examiner
object and require the applicant to identify the broadening already
detected by the examiner. An objection or rejection under 37 CFR 1.173
(or under 35 U.S.C. 251) would not be warranted. While the examiner
would not be required to indicate that broadening had been found if an
examination issue is not present based on the broadening, the examiner
would have the option of reminding applicant of the requirement for
identification of all instances of broadening and request applicant to
identify any instance of broadening not yet identified by the examiner.
The intent of the change is not for the examiner to rely upon
applicant's duty to identify each broadening, but to have the applicant
and the examiner each have responsibility to address the issue.
An intentional failure to identify material broadening to the PTO
may result in a court finding that the reissue applicant has violated
the duty of candor and good faith to the PTO under 37 CFR 1.56. If,
however, an applicant makes a good faith attempt to alert the examiner
to where broadening has occurred in the reissue claims but
inadvertently omits one or more instances of broadening, or the
applicant in good faith does not identify any broadening in that the
applicant had no intent to broaden, the applicant may not have the
requisite intent necessary for a finding that the applicant violated 37
CFR 1.56. In any event, such issues would not be addressed by the PTO.
The change to 37 CFR 1.173 under consideration would support the
PTO's Business Goal 1 (reduce PTO processing time to twelve months or
less for all inventions) because it would lead to an early
identification of issues of broadening (within two years),
[[Page 53524]]
recapture, and claim interpretation and, thereby, help to ensure that
the examination process is efficiently performed. The change to 37 CFR
1.173 under consideration would also support the PTO's Business Goal 4
(exceed our customers' quality expectations, through the competencies
and empowerment of our employees) because it would help to ensure that
broadening and recapture doctrine issues are addressed. Since it is the
reissue applicant (and not the PTO or the public) who is seeking to
change (or broaden) the original patent claims, the reissue applicant
is in the best position to identify such broadening. In addition, if it
is not clear that the reissue application contains claims that are
broader than the claims of the original patent, the applicant's
identification on filing of all occurrences of broadening may assist
the applicant in meeting the two-year statutory requirement in 35
U.S.C. 251, para. 4. See Graff, 111 F.3d at 877, 42 USPQ2d at 1473-74
(35 U.S.C. 251, para. 4, requires that a reissue applicant give notice
of proposals to broaden the claims of a patent to the public within two
years of issuance of the patent). Thus, it is appropriate to place some
responsibility for identifying all occurrences of broadening in the
reissue application on the reissue applicant (rather than solely on the
PTO examiner or the public).
The recent amendment to 37 CFR 1.175, inter alia, eliminated the
requirement that an applicant submit an oath or declaration setting
forth detailed showings concerning each and every change being made to
the patent via reissue. See Changes to Patent Practice and Procedure,
62 FR at 53165-66, 1203 Off. Gaz. Pat. Office at 92-93. The changes to
37 CFR 1.173 under consideration do not readdress the requirements of
former 37 CFR 1.175 because: (1) 37 CFR 1.175 relates to oath/
declaration requirements and the identification of all occurrences of
broadening need not (but may) be provided in the reissue oath or
declaration (e.g., they may be identified by a preliminary remarks
paper, or in the application transmittal letter); (2) the
identification requirement applies only to broadening changes, not to
all of the changes being made by reissue; and (3) the identification of
all occurrences of broadening need not include a discussion of the
nature of the broadening as was required by former 37 CFR 1.175.
17. Changing multiple reissue application treatment (37 CFR 1.177)
Summary: The PTO is considering an amendment to 37 CFR 1.177 to
streamline the processing of divisional (or multiple) reissue
applications.
Specifics of the Change Being Considered: The PTO is considering an
amendment to 37 CFR 1.177 to: (1) eliminate the current requirements of
37 CFR 1.177 that multiple reissue applications be referred to the
Commissioner and issue simultaneously; and (2) require that each of the
multiple reissue applications contains a specific cross-reference to
each of the other reissue applications. Each reissue application would
have to present all original claims (amended, unamended, or deleted).
Issuance of reissues where no changes have been made would not be
permitted.
Discussion: 37 CFR 1.177 currently provides that divisional reissue
applications: (1) must be referred to the Commissioner; and (2) will
issue simultaneously, unless otherwise ordered by the Commissioner. The
specifics of the exception processing given to divisional reissue
applications is set out at MPEP 1451. The PTO has determined that it is
unnecessary to give this exception processing to divisional (or
multiple) reissue applications.
Therefore, the PTO is considering amending 37 CFR 1.177 to: (1)
eliminate the requirements that multiple reissue applications be
referred to the Commissioner and issue simultaneously; and (2) require
that each of the multiple reissue applications contains (at the
beginning of the specification) a specific cross-reference to each of
the other reissue applications. This cross-reference would serve as a
notification to the public that more than one reissue patent may/will
replace the single original patent. If applicant fails to present such
an amendment to the specification(s) when filed, or if the first
reissue fails to include a cross-reference to a later filed second
reissue application, and the error is not detected by the PTO before
the reissue application issues, the PTO would issue a certificate of
correction under either 37 CFR 1.322 or 1.323 to provide such notice in
the issued reissue patent(s).
The numbering of the claims in the multiple reissue applications
should follow a simple basic numbering scheme. For several reissue
patent applications being filed from a single original patent, all
claims of the original patent should be presented in each reissue
application as either amended, unamended, or deleted (shown in
brackets) claims, respectively, with each claim bearing the same number
it had in the original patent. The same claim of the original patent
should not be presented in its original unamended form for examination
in more than one of such several reissue applications or a double
patenting rejection under 35 U.S.C. 101 shall be made. Added claims may
be presented in any of the several applications and should be numbered
beginning with the next number following the highest numbered patent
claim. For example, an original patent containing fifteen claims may be
filed as three separate reissue applications, each presenting all
fifteen of the original claims but, of the fifteen, a different five
claims for examination. The selected five claims being presented for
examination in each reissue application could be amended or unamended
and they would still carry their original numbering. The ten respective
deleted claims (appearing in brackets) would also appear in each
reissue application. Any added claims, even if different in each of the
applications, would be numbered ``16'' and above. Each of the printed
reissue patents would include all of the original claims (with or
without brackets) as well as any claims added only into that reissue
patent.
If the same or similar claims were presented in more than one of
the multiple reissue applications, statutory double patenting (35
U.S.C. 101) or non-statutory (judicially created doctrine) double
patenting considerations would be made by the examiner during
examination, and appropriate rejections made.
The amendment to 37 CFR 1.177 being considered would support Patent
Business Goals 1 (reduce PTO processing time to twelve months or less
for all inventions) by eliminating: (1) the processing time needed for
a petition for non-simultaneous issuance of multiple reissue
applications; and (2) the suspension time of a reissue application in
order to provide for simultaneous issuance of the multiple reissue
applications.
18. Creating alternative review procedures for applications under
appeal (37 CFR 1.192)
Summary: The PTO is considering alternative review procedures to
reduce the number of appeals forwarded to the Board of Patent Appeals
and Interferences.
Specifics of Change Being Considered: The PTO is considering two
alternative review procedures to reduce the number of appeals having to
be forwarded to the Board of Patent Appeals and Interferences (Board)
for decision. Both review procedures involve a review that would be
available upon request and payment of a fee by the appellant, and would
involve review by at least one other PTO official. The first review
would occur after the filing of a notice
[[Page 53525]]
of appeal but before the filing of an appeal brief and involve a review
of all rejections of a single claim being appealed to see whether any
rejection plainly fails to establish a prima facie case of
unpatentability. The second review would occur after the filing of an
appeal brief and involve a review of all rejections on appeal.
Discussion: To expedite resolution of appeals, the PTO is
considering two optional review procedures. The first review under
consideration would take place prior to the filing of an appeal brief,
and the second review under consideration would take place after the
filing of an appeal brief. The procedures under consideration would be
optional as to the appellant, in that the appellant need not request
either such review as a prerequisite to obtaining a decision by the
Board. The appellant, however, upon making a timely request accompanied
by the appropriate fee, would be entitled to either such review (or
even both such reviews) prior to the appeal going forward to the Board.
A patentee is entitled to patent term extension if, inter alia,
``the issue of a patent is delayed due to appellate review by the Board
of Patent Appeals and Interferences or by a Federal court and the
patent is issued pursuant to a decision in the review reversing an
adverse determination of patentability.'' See 35 U.S.C. 154(b)(2).
Since the appeal reviews under consideration would not be by either the
Board or a Federal court, the issuance of a patent as a result of a
decision reached during such an appeal review to withdraw a rejection
would not entitle the patentee to patent term extension under 35 U.S.C.
154(b)(2). Nevertheless, this should not dissuade applicants from using
these appeal review procedures because: (1) patent term extension under
35 U.S.C. 154(a)(2) is preconditioned upon a decision by the Board or a
Federal Court in the review reversing an adverse determination of
patentability, which is never certain; and (2) the appeal reviews under
consideration will take place before the preparation of any examiner's
answer, and, as such, will not result in the delays inherent in Board
or court review.
The purpose of these review procedures is not to place applications
in better condition for appeal, but to reduce the number of
applications that must be forwarded to the Board for a decision. The
PTO anticipates that the appeal reviews under consideration will lead
to the elimination of the need for Board review in appeals involving
weak rejections.
a. Limited pre-brief review
The PTO is considering an optional, limited review that would take
place after a notice of appeal has been filed, but prior to the filing
of an appeal brief. Under the limited pre-brief review, the appellant
may file a request (accompanied by the requisite fee) for review of all
of the rejections in the final rejection (or rejection being appealed
if non-final) of a selected claim. The application will be given to a
second primary examiner (reviewer) who will review the application to
determine whether each rejection(s) of the selected claim plainly fails
to establish a prima facie case of unpatentability. The reviewer is
expected to make an independent evaluation of the merits of the
appealed rejection(s), but may consult with the primary examiner (or
examiner responsible for the application if not a primary examiner).
The limited pre-brief review would be based on the final rejection
(or rejection being appealed) without the need for the filing of an
appeal brief. All that would be required is a request for such a review
and an identification of the claim to be reviewed. Arguments would, of
course, be permitted, but the review would be limited to whether the
rejection(s) plainly failed to establish a prima facie case of
unpatentability of the identified claim. For example, a request for a
review of whether affidavits or declarations under 37 CFR 1.132
overcome a prima facie case of unpatentability would exceed the limits
of the limited pre-brief review under consideration.
The limited review would focus on whether the rejection(s) of the
selected claim plainly fails to establish a prima facie case of
unpatentability. In determining whether a rejection plainly fails to
establish a prima facie case of unpatentability, the reviewer will
evaluate the record (e.g., the applied references) to determine whether
it is plain that the primary examiner has failed to meet the burden of
establishing a prima facie case of unpatentability, but will not
evaluate the adequacy of the expression of the appealed rejection in
the action. Obviously, if the reviewer must change the basic thrust of
an appealed rejection as applied in the action to avoid the conclusion
that it plainly fails to establish a prima facie case of
unpatentability, the reviewer will consider the rejection to plainly
fail to establish a prima facie case of unpatentability, since changing
the basic thrust of a rejection would require a new ground of rejection
and the reopening of prosecution. Thus, such a limited review is
expected to lead to the withdrawal of clearly meritless rejections, but
may also lead to either the suggestion of amendments which could be
made to avoid the rejection(s), or to a reopening of prosecution.
Although the reviewer would not have the authority to overrule the
primary examiner, that primary examiner would be made aware of
situations in which another experienced examiner (the reviewer) not
only disagreed with any or all of the rejections of the selected claim,
but considered such rejection(s) to plainly fail to establish a prima
facie case of unpatentability. It is generally expected that the
primary examiner would withdraw such a rejection. Unless the review
resulted in the withdrawal of all rejections and allowance of the
application, the PTO would provide a notice to the appellant advising
the appellant: (1) that the review occurred and that the period set in
37 CFR 1.192 for filing an appeal brief runs from the mail date of such
notice (see discussion below); and (2) of any rejection(s) that is
withdrawn as a result of the review.
Consideration is also required for the time frames for this type of
review. Under the current rules, the mere filing of a such request
would not satisfy the requirement for the filing of an appeal brief
(and its fee) to avoid dismissal of the appeal. The PTO could, however,
amend 37 CFR 1.192 to, in effect, stay the period for filing an appeal
brief (and its fee) until completion of the review. Obviously, once an
appellant has requested such a limited pre-brief review, the appellant
would not be permitted to stay the period for filing an appeal brief by
requesting another such limited review, but would be required to timely
file an appeal brief to avoid dismissal of the appeal.
The benefit to applicants of a limited pre-brief review is that it
permits the appellant to obtain review of what is considered a
rejection that plainly fails to establish a prima facie case of
unpatentability, while saving the costs involved in preparing an appeal
brief. The PTO expects that this type of limited pre-brief review would
be most useful in the situation in which there is a single
representative claim upon which the appeal hinges, and the appellant
considers the rejection(s) of such claim to be deficient on its face.
In such a situation, a prompt resolution of the disagreement(s) as to
that claim would in all likelihood lead to a resolution of all other
issues. Specifically, the PTO anticipates that an appellant using this
procedure would choose the narrowest claim that the appellant would be
willing to accept (which may be a dependent claim) as
[[Page 53526]]
the selected claim, and that the limited review would either lead to
the examiner being informed by an experienced examiner that one or more
rejections plainly fail to establish a prima facie case of
unpatentability, or the appellant being informed by another experienced
examiner that the rejection(s) do not plainly fail to establish a prima
facie case of unpatentability.
b. Post-brief review
The PTO is also considering adding an optional review that would
take place after an appeal brief has been filed. Under the post-brief
review, the appellant may file a request (accompanied by the requisite
fee) and the application will be given to a second primary examiner
(reviewer) who will review the application, focusing on the final
rejection (or rejection being appealed) and the appeal brief. After
this review, the primary examiner (and the examiner responsible for the
application if not a primary examiner) and the reviewer will confer
prior to mailing of an examiner's answer to review the appealed
rejections and the brief. The conference would thus include at least
two PTO officials, but may also include an examiner who is not a
primary examiner. Such a post-brief review would focus on the
tenability of the appealed rejection(s) and, accordingly, is expected
to lead to the withdrawal of rejections of doubtful merit. Such a
review may also lead to either the suggestion of amendments which could
be made to avoid the rejections of record, or to reopening of
prosecution.
Although the reviewer would not have the authority to overrule the
primary examiner responsible for the appeal, that primary examiner
would be made aware of weaknesses in his or her position as perceived
by another experienced examiner. It is generally expected that the
primary examiner will withdraw those rejections which another
experienced examiner considers unlikely to be successful on appeal. If,
however, a reasonable difference of opinion exists among the examiners
as to the merits of the rejection(s), it should be expected that appeal
will go forward to the Board. Unless the review resulted in the
withdrawal of all rejections and allowance of the application, the
examiner's answer would be initialed by the reviewer and would
indicate: (1) that the review occurred; and (2) any rejection(s) that
is withdrawn as a result of the review.
c. Issues for public comment
The PTO requests public comment on each of the above-mentioned
procedures, since the PTO may implement neither, one, or both
procedures depending upon the public comments and internal feasibility
concerns.
The PTO also desires public comment on the pool of PTO employees
from which the reviewer for both reviews is taken. For example, the PTO
could select as the reviewer: (1) a primary examiner from the same or
related art; (2) a primary examiner from a different art; (3) a manager
(e.g., a Supervisory Patent Examiner, Group Special Program Examiner,
or Quality Assurance Specialist); (4) a Legal Advisor from the Special
Program Law Office; or (5) a Quality Review Examiner.
The PTO also desires public comment on whether it should establish
a uniform procedure for both reviews to be used throughout the
Examining Corps, or whether each technology center should be free
(within specified guidelines) to establish its own procedures for such
reviews.
19. Eliminating preauthorization of payment of the issue fee (37 CFR
1.311)
Summary: The PTO is considering amending 37 CFR 1.311(b) to
eliminate the option of filing an authorization to charge an issue fee
to a deposit account before the notice of allowance is mailed.
Specifics of Change Being Considered: 37 CFR 1.311(b) currently
permits an authorization to be filed either before or after the mailing
of a notice of allowance. The PTO is considering an amendment to 37 CFR
1.311(b) to permit an authorization to be filed after, but not before,
the notice of allowance is mailed.
Discussion: Generally, it is in applicant's best interest not to
pay the issue fee at the time the notice of allowance is mailed, since
it is much easier to have a necessary amendment or an information
disclosure statement considered if filed before the issue fee is paid
than after the issue fee is paid. See 37 CFR 1.97 and 1.312(b). Also,
once the issue fee has been paid, applicant's window of opportunity for
filing a continuing application is reduced and the applicant no longer
has the option of filing a continuation or divisional application as a
continued prosecution application (CPA) under 37 CFR 1.53(d). Many
applicants find the time period between the mailing date of the notice
of allowance and the due date for paying the issue fee useful for re-
evaluating the scope of protection afforded by the allowed claim(s) and
for deciding whether to pay the issue fee and/or to file one or more
continuing applications.
Therefore, the PTO is considering amending 37 CFR 1.311(b) to
permit an authorization to be filed after, but not before, the notice
of allowance is mailed. This change in procedure would support the
PTO's business goal to reduce PTO processing time to twelve months or
less for all inventions.
37 CFR 1.311 (b), as currently written, causes problems for the PTO
that tend to increase PTO processing time. The language used by
applicants to authorize that fees be charged to a deposit account often
varies from one application to another. As a result, conflicts arise
between the PTO and applicants as to the proper interpretation of
authorizing language found in their applications. For example, some
applicants are not aware that it is current PTO policy to interpret
broad language to ``charge any additional fees which may be required at
any time during the prosecution of the application'' as authorization
to charge the issue fee on applications filed on or after October 1,
1982. See Deposit Account Authorization to Charge Issue Fee; Notice,
1095 Off. Gaz. Pat. Office 44 (October 25, 1988), reprinted at 1206
Off. Gaz. Pat. Office 95 (January 6, 1998).
Even when the language pre-authorizing payment of the issue fee is
clear, the pre-authorization can present problems for both the PTO and
practitioners. For example, it may not be clear to the PTO whether a
pre-authorization is still valid after the practitioner withdraws or
the practitioner's authority to act as a representative is revoked. If
the PTO charges the issue fee to the practitioner's deposit account,
the practitioner may have difficulty getting reimbursement from the
practitioner's former client.
When the issue fee is actually charged at the time the notice of
allowance is mailed, a notice to that effect is printed on the notice
of allowance (PTOL-85) and applicant is given one month to submit/
return the PTOL-85B with information to be printed on the patent.
However, applicants are sometimes confused by the usual three-month
time period provided for paying the issue fee and do not, therefore,
return the PTOL-85B until the end of the normal three-month period.
Because the PTO recognizes that the information provided on the PTOL-
85B is needed in order to print the assignee and the attorney
information on the patent, the failure to respond within the one month
period is waived and the later
[[Page 53527]]
submission of the PTOL-85B is accepted. Thus, even though the issue fee
was paid early, the issue process is delayed until the PTOL-85B is
actually returned, or three months from the mail date of the notice of
allowance passes, whichever occurs first. If no PTOL-85B is timely
returned, the patent is published without the information provided on a
PTOL-85B.
If prompt issuance of the patent is a high priority, applicant may
promptly return the PTOL-85B (supplying any desired assignee and
attorney information) and pay the issue fee after receipt of the notice
of allowance. In this way, the PTO will be able to process the payment
of the issue fee and the information on the PTOL-85B as a part of a
single processing step. Further, no time would be saved even if the
issue fee was pre-authorized for payment as the PTO would still have to
wait for the return of the PTOL-85B. Thus, while it is not seen that
the proposal to eliminate the pre-authorization to pay the issue fee
would have any adverse effects on our customers, comments on this
proposal are requested.
20. Reevaluating the Disclosure Document Program
Summary: The PTO is seeking customer feedback to assess the value
of the Disclosure Document Program. From a preliminary evaluation it
appears that: (1) it is unclear whether many inventors actually get any
benefit from this program; (2) some inventors use this program as a
result of actions by invention promotion firms which mislead them into
believing that they are actually filing an application for a patent;
and (3) better benefits and protection are afforded to inventors if
they file a provisional application for patent instead.
Specifics of Change being Considered: The PTO is evaluating the
Disclosure Document Program under the Paperwork Reduction Act (44
U.S.C. ch. 35) in order to determine if it is serving the needs of
those inventors who have been using it and whether the PTO can
encourage use of provisional application practice instead of the
practice of filing a Disclosure Document and, subsequently, filing
either a provisional or nonprovisional application.
Discussion: The PTO implemented the Disclosure Document Program in
1969 in order to provide a more credible form of evidence of conception
of an invention than the ``self-addressed envelope'' form of evidence
formerly used by inventors. See Disclosure Document Program; Notice, 34
FR 6003 (April 2, 1969), 861 Off. Gaz. Pat. Office 1 (May 6, 1969). An
inventor may, under the Disclosure Document Program, file in the PTO a
Disclosure Document which includes a written description and drawings
of his or her invention in sufficient detail to enable a person of
ordinary skill in the art to make and use the invention to establish a
date of invention in the United States prior to the application filing
date under 35 U.S.C. 104. The inventor must sign the Disclosure
Document and include a separate signed cover letter identifying the
papers as a Disclosure Document. A Disclosure Document does not require
a claim in compliance with 35 U.S.C. 112, para. 2, nor an inventor's
oath under 35 U.S.C. 115, and is not accorded a patent application
filing date. A Disclosure Document is supposed to be destroyed by the
PTO after two years unless it is referred to in a separate letter in a
related provisional or nonprovisional application filed within those
two years. The filing fee for a Disclosure Document set forth in 37 CFR
1.21(c) is $10. See MPEP 1706.
The PTO currently processes Disclosure Documents as follows: Each
Disclosure Document is assigned an identifying number, the identifying
number is stamped on the actual Disclosure Document, and the Disclosure
Documents are stored in sequential number order. The PTO also prepares
and mails a notice with the identifying number and date of receipt in
the PTO to the customer. When a paper referring to a Disclosure
Document is filed in a patent application within two years after the
filing of a Disclosure Document, a retention label is attached to the
Disclosure Document and the applicant is notified that the Disclosure
Document will be retained. The paper filed by the applicant which
referred to the Disclosure Document is retained in the application
file.
Lately, the PTO has been receiving approximately twenty-five to
thirty-five thousand Disclosure Documents per year. Of all the
Disclosure Documents filed each year, however, only about 0.1% (about
thirty per year) are actually retained at the inventor's request. The
PTO perceives that inventors often file Disclosure Documents to
establish a date of invention before exploring the feasibility of their
ideas and disclosing their inventions to major corporations, prototype
builders, investors, patent attorneys, patent depository library staff,
prospective partners, or small business development companies to guard
against misappropriation of their inventions. The vast majority of
these inventions may simply be put aside if the inventors are
unsuccessful at attracting interest and are not pursued until they do
get support or interest in their inventions. The PTO also perceives
that inventors file a Disclosure Document on each incremental
modification of a basic invention. This may result in a dozen or more
Disclosure Documents being filed before a patent application is filed,
if ever, on the ``final'' version of the invention.
In 1995, Pub. L. 103-465 amended title 35, U.S.C., by providing for
the filing of a provisional application for patent. A provisional
application must contain a specification in compliance with 35 U.S.C.
112, para. 1, and drawings, if drawings are necessary to understand the
invention described in the specification. A provisional application
must name the inventors and be accompanied by a separate cover sheet
identifying the papers as a provisional application. The basic filing
fee for a provisional application by a small entity is $75 (37 CFR
1.16(k)). The filing fee and the names of the inventors may be supplied
after the provisional application is filed, but a surcharge is
required. A provisional application does not require a claim in
compliance with 35 U.S.C. 112, para. 2, or an inventor's oath under 35
U.S.C. 115. While a provisional application is automatically abandoned
twelve months after its filing date, the file of an abandoned
provisional application is retained by the PTO for at least twenty
years, or longer if it is referenced in a patent. A provisional
application is considered a constructive reduction to practice of an
invention as of the filing date accorded the application, if it
describes the invention in sufficient detail to enable a person of
ordinary skill in the art to make and use the invention and discloses
the best mode known by the inventor for carrying out the invention. In
other words, except for adding the best mode requirement, the
disclosure requirements for a provisional application are identical to
the disclosure requirements for a Disclosure Document and provide users
with a filing date without starting the patent term period. Thus,
almost any paper filed today as a proper Disclosure Document can now be
filed as a provisional application with the necessary cover sheet.
A provisional application is, however, more valuable to an inventor
than a Disclosure Document. A provisional application, just like a
nonprovisional application, establishes a constructive reduction to
practice date for any invention disclosed therein in the manner
required by 35 U.S.C. 112, para. 1, and can be used under the Paris
Convention to establish a priority date for foreign filing. On the
other hand, a
[[Page 53528]]
Disclosure Document may only be used as evidence of a date of
conception of an invention under 35 U.S.C. 104. A Disclosure Document
is not a patent application and the filing of a Disclosure Document
does not establish a constructive reduction to practice date for an
invention described in the Document. As a result, in order to use a
Disclosure Document to establish prior invention under 35 U.S.C. 102(g)
or under 37 CFR 1.131, an inventor may rely on the Disclosure Document
to demonstrate that he or she conceived of the invention first, but the
inventor must then demonstrate that he or she was reasonably diligent
from a date just prior to: (1) the date of conception by the other
party in an interference proceeding; or (2) the effective date of a
reference being used by the PTO to reject one or more claims of an
application until the inventor's actual or constructive reduction to
practice. A provisional application, however, may be used to establish
prior invention all by itself (without any need to demonstrate
diligence) simply by its filing date being before the earliest actual
or constructive reduction to practice date of the other party or the
effective date of the reference.
Under 35 U.S.C. 102(b), any public use or sale of an invention in
the U.S. or description of an invention in a patent or a printed
publication anywhere in the world more than one year prior to the
filing of a patent application on that invention will bar the grant of
a patent. In addition, many foreign countries have what is known as an
``absolute novelty'' requirement which means that a public disclosure
of an invention anywhere in the world prior to the filing date of an
application for patent will act as a bar to the granting of any patent
directed to the invention disclosed. Since a Disclosure Document is not
a patent application, it does not help an inventor avoid the forfeiture
of U.S. or foreign patent rights. For example, an inventor offers to
sell his invention in the U.S. in March 1996. In April of 1996, the
inventor files a Disclosure Document. In April of 1997, the inventor
files a nonprovisional application referring to the Disclosure
Document. Because the inventor did not file either a provisional or a
nonprovisional application within twelve months of the first offer to
sell in the U.S., the inventor has forfeited all U.S. patent rights. On
the other hand, if the inventor files a provisional application in
April of 1996 instead of a Disclosure Document, the offer to sell in
March of 1996 would not be a bar under 35 U.S.C. 102(b) to any
invention claimed in the nonprovisional application filed in April 1996
which is disclosed in the provisional application in the manner
required by 35 U.S.C. 112, para. 1. Thus, a provisional application
protects inventors from losing patent rights whereas a Disclosure
Document does not.
Based on a sampling of Disclosure Documents filed in 1997,
approximately 56% were filed by inventors with the assistance of an
invention promotion firm. A recent Federal Trade Commission (FTC)
consumer alert entitled ``So You've Got a Great Idea? Heads Up:
Invention Promotion Firms May Promise More Than They Can Deliver''
(July 1997), warned that some invention promotion firms were using the
Disclosure Document Program to mislead independent inventors into
believing that a Disclosure Document affords some form of patent
protection. In requesting a temporary restraining order against a
number of invention development companies, the FTC indicated that:
In a large number of cases, the [defendant invention development
company] promises that it will ``register'' the inventor's idea with
the U.S. Patent Office's Disclosure Document Program, and that doing
so will ``protect'' the idea for 2 years. In fact, filing with this
program provides no patent protection whatsoever. In some instances,
customers are promised a patent application, but no such application
is every [sic., ever] prepared or filed.
See Plaintiff's Mem. In Support of Application for a T.R.O. at 13-
14, FTC v. International Product Design, Inc., Civ. Act. No. 97-1114-A
(E.D. Va., filed July 14, 1997) (footnotes omitted).
Patent Business Goal (4) is to exceed our customer's service
expectations. The Disclosure Document Program is being evaluated
because it has been brought to the PTO's attention that this program
has been the subject of numerous abuses and complaints, and therefore
may be detrimental to the interests of a vast majority of the PTO's
customers. This evaluation of the Disclosure Document Program is in
support of that goal.
In view of the very small number of Disclosure Documents requested
to be retained each year (less than one-tenth of one percent) versus
the twenty-five to thirty-five thousand Disclosure Documents filed each
year, the minimum benefits provided to an inventor by a Disclosure
Document, the misuse of the Disclosure Document Program by some
invention promotion firms and the better benefits and protection
afforded by the provisional application option (which was not available
when the Disclosure Document Program was initiated in 1969), the PTO is
soliciting the opinion of its customers on whether the Disclosure
Document Program should be continued in its present form, terminated,
or substantially revised to serve their needs better.
Replies to the Following Questions are Solicited
1. As substantially fewer than one percent of the Disclosure
Documents that are filed each year are requested by inventors to be
retained by the PTO and the PTO does not know of any substantial
reliance being had on Disclosure Documents, is there any factual
evidence that Disclosure Documents do provide meaningful benefits and
value to those who file Disclosure Documents? If so, please supply a
copy of such evidence with your comments.
2. Does the Disclosure Document Program create a worthwhile sense
of security? If so, why?
3. Do you know of a Disclosure Document that has actually been
relied on in a nonprovisional application to successfully establish a
conception date in an interference proceeding or in a 37 CFR 1.131
affidavit or declaration? If so, please identify the Disclosure
Document number and whether it was successfully relied on in an
interference proceeding or in a 37 CFR 1.131 affidavit or declaration.
4. Is the Disclosure Document Program addressing any need that is
not being addressed by the provisional application practice? If so,
please identify such needs.
5. In what ways can the PTO better address the needs of those who
use the Disclosure Document Program that are not being addressed by
provisional applications without the risks associated with the existing
Disclosure Document Program? If so, please elaborate.
6. Do you know of any instance in which an invention development
firm misled an inventor into believing that a Disclosure Document
provides more benefit (patent protection) than it actually does? If so,
please indicate what, if any, harm this caused?
21. Creating a PTO review service for applicant-created forms
Summary: The PTO is considering establishing a new service, where
the PTO would review, for a fee, a form prepared by a member of the
public that is intended to be used for future correspondence to the
PTO.
Specifies of Change Being Considered: A form intended to be used
for future correspondence with the PTO could be submitted to the PTO
for review. The
[[Page 53529]]
PTO would charge a fee (roughly estimated at approximately $200) for
each form up to four pages long for this review service. After the
review is completed, the PTO would send the submitter a written report,
including comments and suggestions, if any, even though the PTO will
not formally ``approve'' any form. The form and all related documents
submitted for the review would also be returned to the submitter. If a
(reviewed) form is modified in view of a PTO written report, comments
and/or suggestion, the revised form could be resubmitted to the PTO for
a follow up review for an additional charge (roughly estimated at
approximately $50). After a form has been reviewed and revised, as may
be needed, to comply with the PTO's written report, it will be
acceptable for the form to indicate if it is a substitute for a PTO
form and/or that it has been ``reviewed by the PTO.''
Background: Currently, the PTO prepares and makes available forms
(e.g., application transmittal forms) for use by our customers when
submitting correspondence to the PTO. The PTO forms are formatted to
induce one to supply specific information. There is no requirement,
however, that such PTO forms be used. Frequently members of the public,
in particular, law firms and corporations, modify the PTO forms to
include matter specific to their law firm or corporation, or find it
convenient to create forms of a different nature or layout specific to
their needs. A PTO form properly modified by a member of the public
should induce one to supply at least the same information as the PTO
form that was modified.
In the future, the submissions to the PTO would be either by
specially formatted paper templates or by electronic transmission.
However, until such efficiencies become the norm, many of our customers
will be relying on pre-printed forms, created either by the PTO or by
our customers themselves. While fully supporting the move to
standardized formats and electronic submissions, it is important to
today's customers to have complete and accurate forms for their daily
work.
New Service: PTO Review of Applicant's forms: To better serve our
customer's needs, the PTO is considering providing a new service where,
upon request and payment of a non-refundable fee, the PTO will review
blank forms prepared by a member of the public that are intended to be
used for future correspondence to the PTO. Non-English language forms
will not be reviewed. The PTO will not formally ``approve'' any forms
that are submitted. The rationale for not formally approving a form
that is submitted for review by the PTO is the following: (1) a form
designed/reviewed for a specific purpose may actually be used for a
different purpose, and the PTO cannot control how a form may be used
after it is reviewed (e.g., filing a patent application under 37 CFR
1.53(b) using a Continued Prosecution Application (CPA) Request
Transmittal form); (2) forms that have been reviewed may become out-of-
date and be rendered obsolete due to subsequent changes in the patent
statute (35 U.S.C.), rules of practice (37 CFR) and office policy and
procedure as set forth in the MPEP; (3) any approval of a form would
tend to discourage improvements in the form by the customer; and (4)
non-approval of any form avoids the appearance that the PTO endorses a
person, a product (e.g., a particular form) or supports a business.
The PTO would primarily review the submitted forms to note any non-
compliance (e.g., errors, problems, defects, inaccuracies) with the
patent statute (35 U.S.C.), rules of practice (37 CFR) and established
office policy and procedure as set forth in the MPEP, and give a
written report which would also include comments or suggestions. The
PTO may also give advice as to matters which are related to the
usefulness of the forms. Patent Business Goal (1) is to reduce PTO
processing time to twelve months or less for all inventions. This new
service would be in support of that goal since a properly prepared and
used form by a member of the public would reduce the chance for error
and the need for correction, and result in reduced PTO processing time.
Patent Business Goal (4) is to exceed our customers' quality
expectations, through the competencies and empowerment of our
employees. The proactive role the Office will take in this area would
be in support of that goal since this service will help our customers
create better forms.
In general, modified versions of PTO forms associated with PCT
practice (e.g., ``REQUEST FOR FILING A CONTINUATION OR DIVISIONAL
APPLICATION OF AN INTERNATIONAL APPLICATION'' (PTO/SB/13/PCT) and
``PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT
DESIGNATING THE U.S. ABANDONED UNINTENTIONALLY UNDER 37 CFR 1.137(b)''
(PTO/SB/64/PCT)) would be subject to review. However, user-generated
versions of the PCT Request (PCT/RO/101) and the Demand (PCT/IPEA/401)
would be excluded from this new review service at this time because
they are subject to further review, study and consultation with the
International Bureau (IB), as the IB has control over these forms.
The PTO is considering charging a flat fee (roughly $200) to
recover the cost of the review of and report on any one form containing
up to a limit of four pages, with a further charge (again roughly $200)
for each additional four pages or portion thereof. The fee is based
upon an in-office, activity-based cost analysis. All fees submitted for
this new service would be non-refundable. Only complete forms, not
parts of forms, would be reviewed. Therefore, all pages of a multiple
page form would need to be submitted together. Forms for review would
have to be submitted to the PTO with the required fee, as a separate
wholly contained mailing and not with other papers for another purpose
to keep handling and paper processing time to a minimum. However,
multiple forms could be submitted at the same time, with the cost for
each form being as set forth above. Anyone who submits a blank form
(and the requisite fee) for review would also be encouraged to submit a
completed form and a cover letter. The cover letter would provide the
PTO with clear guidance as to what was intended to be reviewed. The
completed form would aid the PTO in the review process as it would
provide the PTO with guidance as to how the form was intended to be
completed and used. Resubmission of a (reviewed) form, which was
modified in view of the PTO written report, and comments and/or
suggestions made by the PTO in their review of the form, for a second
(follow up) review would require an additional charge (again roughly
$50). The resubmission would need to include a resubmission of all
documents (copies are acceptable) submitted for the review, and a
submission of the previously reviewed form containing any PTO comments
or suggestions thereon and any review papers (review sheet) prepared by
the PTO. See discussion on the matter below. Patent Business Goal (5)
is to assess fees commensurate with resource utilization and customer
efficiency. The charging of a fee for this new service would be in
support of that goal since the fee charged would recover both the cost
of the review and the preparation of the report.
Any form submitted to the PTO for review would need to be formatted
as it is intended to be submitted to the PTO; and must: (1) be either
21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by
11 inches, commonly referred to as ``letter size''), (2) have a left
side margin of at least 2.5 cm. (1 inch), and a top, right, and bottom
[[Page 53530]]
margin of at least 2.0 cm. (3/4 inch), and (3) have writing on only one
side. See 37 CFR 1.52.
Forms intended to be a substitute for a PTO form would be permitted
to contain an indication thereon that the form is a substitute for a
particular PTO form. To properly identify the particular PTO form, such
indication should include, among other things, the form's actual PTO
form number and the PTO's version date (which may be located in the
upper right hand corner of the form), and the PTO form's actual title
(e.g., ``SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION
TRANSMITTAL,'' with the words ``SUBSTITUTE for''being separated from
(on a different line from) the rest of the header to particularly
denote that the form is a substitute for a PTO form.). The indication
that the form is a substitute for a PTO form should be in a header, in
the upper right hand corner of the form. See Example 1 below. Forms
submitted for review are encouraged to include a header indicating that
the form is a substitute for a particular PTO form. It should be noted
that the other verbiage contained in the header of the PTO forms should
not be reproduced on any PTO form that would be modified.
Example 1: A sample first header to be placed in the upper right
hand corner of the form containing an indication that the form is a
substitute for a PTO form. Note that the words ``SUBSTITUTE for''
are on a different line from the rest of the header to specifically
denote that the form is a substitute for a PTO form.
SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION TRANSMITTAL
The PTO will review each submitted form and prepare a report,
which will include a review sheet, and then return the original form
with the completed review sheet to the submitter of the form. In the
PTO review report, the PTO will identify, among other things, items
or changes that are deemed to be critical. Also, the reviewed form
itself may be marked up with comments by the PTO. The PTO will not
retain a copy of any reviewed form. The PTO will, however, keep a
record of the reviewing process. If the submitter of a form for
review has a question about the review of the form after the review
process has been completed and the reviewed form is no longer in the
possession of the PTO, a submission of, among other things, (a copy
of) of the reviewed form containing any PTO comments or suggestions
thereon, all documents (copies are acceptable) submitted for the
review, and any review papers (review sheet) prepared by the PTO may
be necessary. Any form that has been reviewed by the PTO and has
been modified to include, among other things, the items or changes
that are deemed to be critical by the PTO, may include an indication
on the form that the form has been reviewed by the PTO, provided
that the date of the review is also included (e.g., ``REVIEWED by
PTO on XX/XX/XX'' (Date)). The indication that the form has been
reviewed by the PTO should be in a header, in the upper left hand
corner of the form. See Example 2 below. Forms submitted for review
are encouraged to include a header indicating that the form has been
reviewed with the date left blank. If the items or changes noted in
the review report as being critical are not adopted, no indication
may be placed on the form that the form has been reviewed. Since the
PTO will not formally ``approve'' any forms that are submitted, the
use of the word ``APPROVED'' on any form that has been reviewed
would be misleading and must not be used.
Example 2: A sample second header to be placed in the upper left
hand of the form containing an indication that the form has been
reviewed.
Reviewed by PTO on XX/XX/XX
Note: When the first and second headers contained in Examples 1
and 2 are used together, it is recommended that the left hand header
in Example 2 (``Reviewed by PTO on XX/XX/XX'') be on the same line
with, but spaced from the first line of the right hand header in
Example 1 (``SUBSTITUTE for''). See Example 3 below.
Example 3: A single header combining the first and second
headers set forth in Examples 1 and 2.
Reviewed by PTO on XX/XX/XX
SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION TRANSMITTAL
Any PTO form that has been modified by a member of the public to
be a substitute for a PTO form, but has not been submitted for
review, would be permitted to contain an indication thereon, as set
forth above, that the form is a substitute for a particular PTO
form. Since such modified PTO form has not been reviewed, no
indication may be placed on the form that the form has been
reviewed. See Example 1 above.
Any pending form submitted for review is not subject to the
confidentiality requirements of 35 U.S.C. 122, and may be subject to
a request under the Freedom of Information Act (5 U.S.C. 552).
It should be recognized that the ultimate responsibility for
complying with statutory and regulatory requirements lies with an
applicant(s) and their attorney, whether they utilize a form
prepared by the PTO or some other form which may or may not have
been reviewed by the PTO.
It is predictable that the largest number of requests for a
review of forms would come at a time when there has been a change in
the PTO rules and/or procedures. The turn-around time for review of
any form will be based on the workload of the area of the PTO
selected to perform the review. Anyone desiring a form to be
reviewed should allow ample time for PTO review. No assurances can
be given that any form will be reviewed in a particular amount of
time. Further, subsequent rule changes may render unusable a form
that was previously used and/or reviewed by the PTO.
To jump-start this new service, and to avoid problems with
electronic incompatibility that can take a lot of time to resolve,
the PTO will only review forms that have been properly submitted in
either paper form or by facsimile transmission. In the future, the
PTO will consider expanding the service to include submission of the
forms in an electronic format.
Current PTO Forms Availability
PTO forms are available on the PTO Home Page, and are available
either individually or in a single zip-compressed file from the PTO ftp
server at ftp://ftp.uspto.gov/pub/forms/. Individual forms for patent
and trademark submissions can also be requested from 800-PTO-8199 or
703-308-HELP. A specimen book of Patent Forms can be purchased for $25
from the Office of Electronic Information Products, telephone number
703-306-2600.
Conclusion
This is a new service that the PTO is considering and would involve
significant start-up costs. Therefore, absent positive feedback on the
matter, the PTO does not intend to implement this new service.
Dated: September 28, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-26429 Filed 10-2-98; 8:45 am]
BILLING CODE 3510-16-P
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