(105) 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.
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.šxn
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
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
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 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.
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 an additional 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. 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 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 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 is
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 on 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 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:
Percentage
Applications filed in FY 1997
FY 1997 containing Number filings
Over 50 independent claims: 11 00.005%
Between 41 and 50 independent 23 00.011%
claims:
Between 31 and 40 independent 77 00.358%
claims:
Between 21 and 30 independent 275 00.128%
claims:
Between 16 and 20 independent 536 00.249%
claims:
Between 11 and 15 independent 1,887 00.878%
claims:
Between 7 and 10 independent 7,024 03.267%
claims:
Between 4 and 6 independent 27,147 12.627%
claims:
Over 6 independent claims: 9833 4.896%
Percentage
Applications filed in FY 1997
FY 1997 containing Number filings
Over 500 total claims: 5 00.002%
Between 201 and 500 total 88 00.041%
claims:
Between 101 and 200 total 652 00.303%
claims:
Between 61 and 100 total 2,514 01.169%
claims:
Between 51 and 60 total 2,143 00.997%
claims:
Between 41 and 50 total 4,056 01.887%
claims:
Between 31 and 40 total 8,631 04.014%
claims:
Between 21 and 30 total 23,323 10.848%
claims:
Over 40 total claims: 9458 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 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,
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, 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,
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, 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 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.
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 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 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.
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 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 is
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) 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 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).
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 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 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. 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 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.
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 PTO would also require the applicant to conduct a
pre-examination search and file formal drawings. The applications would
be individually examined with priority and the clerical processing would
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). 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, 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, 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, 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, 6 (Johnston v.
Ivac Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed. Cir. 1989)
(35 U.S.C. 112, 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, 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
aim does not necessarily invoke 35 U.S.C. 112, 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, 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), 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, 4. See Graff,
111 F.3d at 877, 42 USPQ2d at 1473-74 (35 U.S.C. 251, 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 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 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 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, ÌpA 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, 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, 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, ÌpA 1, and can be used under the Paris Convention to
establish a priority date for foreign filing. On the other hand, a
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,
ÌpA 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 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 šbn(e.g.,šxn 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 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.
September 28, 1998 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1215 OG 87]