[BILLING CODE 3510-16] DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1 and 5 [Docket #: 941098-4298] RIN 0651-AA75 Notice of Public Hearing and Request for Comments on 18-Month Publication of Patent Applications AGENCY: Patent and Trademark Office, Commerce ACTION: Notice of public hearing and request for public comments SUMMARY: The Patent and Trademark Office (PTO) requests public comment on issues associated with the 18-month publication of patent applications. Interested members of the public are invited to testify at a public hearing and to present written comments on procedures for implementing 18-month publication, including the topics outlined in the supplementary information section of this notice. DATES: A public hearing will be held on Wednesday, February 15, 1995, in Room 912, Crystal Park Two, 2121 Crystal Drive, Arlington, Virginia, starting at 10:00 a.m. Those wishing to present oral testimony must request an opportunity to do so no later than February 13, 1995. Written comments on the topics presented in the supplementary section of this notice will be accepted by the PTO until February 17, 1995. ADDRESSES: Those interested in presenting written comments on the topics presented in the supplementary information, or any related topics, may mail their comments to the Commissioner of Patents and Trademarks, Washington, D.C. 20231, marked to the attention of Stephen G. Kunin, Deputy Assistant Commissioner for Patent Policy and Projects, or send them by facsimile transmission to (703) 305-8825. Written comments should include the following information: - name and affiliation of the individual responding; - an indication of whether comments offered represent views of the respondent's organization or are the respondent's personal views; and - if applicable, information on the respondent's organization, including the type of organization (e.g., business, trade group, university, non-profit organization). Parties offering testimony or written comments are asked to provide their comments in machine readable format. Machine- readable submissions may be provided as electronic mail messages sent over the Internet to early-pub@uspto.gov, or on a 3½-inch floppy disk formatted for use in either a Macintosh or MSDOS-based computer. Machine-readable submissions should be provided as unformatted text (e.g., ASCII or plain text), or as formatted text in one of the following file formats: Microsoft Word (Macintosh, DOS or Windows versions) or WordPerfect (Macintosh, DOS or Windows versions). Requests to present oral testimony should be presented to Stephen G. Kunin by mail or facsimile, at the address listed above. No requests for presenting oral testimony will be accepted by phone or through electronic mail. Written comments and transcripts of the hearings will be available for public inspection on or about March 3, 1995, in Room 520 of Crystal Park One, 2011 Crystal Drive, Arlington, Virginia. In addition, transcripts of the hearings and comments provided in machine readable format will be available on or about March 3, 1995, through anonymous file transfer protocol (ftp) via the Internet (address: ftp.uspto.gov). FOR FURTHER INFORMATION CONTACT: Stephen G. Kunin by telephone at (703) 305-8850, by facsimile at (703) 305-8825, by electronic mail at rbahr@uspto.gov, or Jeffery V. Nase by telephone at (703) 305-9282, or by mail marked to the attention of Stephen G. Kunin, addressed to the Commissioner of Patents and Trademarks, Washington, D.C. 20231. SUPPLEMENTARY INFORMATION I. Background Legislation was introduced, but not passed, in the 103rd Congress that would have required the publication of pending patent applications. Both S. 1854, The Patent Simplification Act of 1994, and S. 2488, The Patent Application Publication Act of 1994, had provisions directed to publishing patent applications after 18 months from an application's earliest effective filing date. Copies of these bills may be obtained from the individuals identified in the "For Further Information Contact" section of this notice. The PTO anticipates that legislation with an 18-month publication provision similar to S. 1854 and S. 2488 will be introduced in the 104th Congress. In addition, the Secretary of Commerce and the Japanese Ambassador to the United States have exchanged letters in which the United States committed, among other things, to introduce legislation to provide for the publication of pending patent applications 18 months after their effective filing date. The Japanese Government also committed to significant changes in its patent system. The United States committed to begin publishing patent applications by January 1, 1996. If Congress enacts this change, the PTO will need to implement the legislation quickly to meet the January 1, 1996, date set out in the exchange of letters. In the event legislation with an 18-month publication provision is enacted next year, public comments will greatly assist the PTO in formulating any notice of proposed rulemaking implementing the legislation. Specifically, the PTO is considering ways to implement possible legislative changes which would require the PTO to publish all patent applications at 18 months from the filing date, including the earliest filing date for which a benefit is desired under 35 U.S.C. §§ 119, 120, 121, and/or 365. The PTO would publish sufficient information about pending applications to enable a knowledgeable reader to determine whether the technology described is relevant to the reader's interest. If such legislation is enacted, certain changes will be required in the way business is conducted both with and within the PTO. Accordingly, it is appropriate that the public be given an opportunity to comment prior to any rules being proposed. Currently, national patent applications are maintained in confidence by the PTO until a patent is granted as required by 35 U.S.C. § 122. In accordance with 37 C.F.R. § 1.14(a), information regarding the status of any such application may be given to a third party when "the application has been identified by serial number in a published patent document or the United States of America has been indicated as a Designated State in a published international application, in which case status information such as whether it is pending, abandoned or patented may be supplied." If legislation similar to S. 1854 or S. 2488 is enacted into law, all pending applications filed on or after the effective date of the legislation, except for those under a 35 U.S.C. § 181 secrecy order, will be published at 18 months from the earliest filing date for which a benefit is sought, unless the application has already issued as a patent. The earliest filing date for which a benefit is sought for purposes of 18-month publication of the application should not be confused with the filing date of an application for purposes of a 20-year patent term. The date of filing in the legislation concerning a patent term of 20 years from the date of filing, as proposed, is the date on which the application was filed in the United States, or, if the application contains a specific reference to an earlier filed application or applications under 35 U.S.C. §§ 120, 121 or 365(c), the date on which the earliest of such applications was filed. Although the benefit of a filing date under 35 U.S.C. §§ 119, 365(a) or 365(b), including provisional applications as provided for in the proposed 20-year patent term legislation, will not be taken into account for purposes of a patent term of 20 years from the date of filing, it will be taken into account for purposes of publication of the application at 18 months from the earliest filing date for which a benefit is sought. In order to plan for implementation of publication at 18 months, certain issues must be resolved. For example: What will be published? Will access to the application file be available following publication? How will submissions of prior art by third parties be treated? Should there be a fixed time in which an applicant must claim priority under either 35 U.S.C. §§ 119 or 120, or risk loss of priority or benefit of a previously filed application? PTO's current planning approach to implement early publication is to create an electronic data base which captures the content of the paper application file. This electronic data base will be used to provide a source for (a) meeting publishing requirements for the applications, (b) providing a basis for electronic searching and retrieval of applications, and (c) providing a basis for producing copies of the application file. It is currently contemplated that the publication of an application will take the form of publishing certain portions of the information in an application necessary to identify the technical subject matter of the application (a Gazette Entry) in a separate Gazette of Patent Application Notices, and a one-page paper document (a Patent Application Notice) containing similar information will be created for placement in the search files. It is further contemplated that public access will be provided to at least the bibliographical and technical content of the application (specification including claims and drawings) upon publication. The creation of an electronic data base which mirrors the content of the paper application file will provide the greatest degree of public access to the application, while causing the least disruption to the examination process. It is the PTO's intention to have such an electronic data base in operation when the proposed legislation becomes effective. However, provisions for providing access to the paper application file may be necessary in the event that the electronic data base is not fully operational when applications are first published. Accordingly, some access to the paper application file may be necessary for a short period of time. II. Issues for Public Comment Any interested member of the public is invited to testify and/or present written comments on any topic related to 18-month publication. The public was invited to comment on the advisability of introducing an 18-month publication procedure into the patent system of the United States in a public hearing conducted in October 1993. Accordingly, the public is encouraged to limit comments to the procedures that the PTO should adopt if an 18-month publication regime is enacted. Questions included at the end of this section are intended to illustrate the types of issues upon which the PTO is particularly interested in obtaining public comment. A. Creation of the Electronic Data Base 1. Data Capturing Operation A data capturing operation will enable the creation of a data base containing image and text equivalent to the content of a paper application file. It is currently contemplated that those application materials not submitted in machine readable format will be image and/or optical character recognition (OCR) scanned by the PTO for entry into this electronic data base. The PTO currently contemplates that the content of the application as originally deposited in the PTO will be captured after the application is serialized, and application-related materials subsequently submitted will be captured after identification as directed to an existing application. Currently, the PTO accepts, either by hand-carried delivery or facsimile transmission, application related materials (e.g., amendments, petitions) in locations other than the central mailroom (e.g., the various Examining Groups). Unless the PTO requires that all official application-related materials be submitted at a central location (e.g., the mailroom), the PTO will have to either (1) forward such application-related materials to a central data capturing facility, or (2) provide data capturing facilities at every location at which application materials may be filed in the PTO. Notwithstanding the cost of either providing and operating numerous data capturing facilities, or routing all application- related materials to a central data capturing facility, the PTO is concerned that a decentralized operation will cause some application-related materials to elude capture onto this data base. See Question #1. 2. Standard Application Format The creation of an electronic data base which mirrors the content of the paper application file will be facilitated if papers filed in the PTO are either (1) submitted in machine readable format or (2) specifically arranged for image and/or OCR scanning by the PTO for entry into this electronic data base. To facilitate the scanning of papers not submitted in machine readable format, the PTO is considering requiring some type of standard application format to increase scanning accuracy and significantly reduce data capture costs. The PTO requests comments on the advisability of a standard format and on the type or extent of a standard format. This standard format could take the form of (1) requiring only bibliographic data (e.g., title, inventor(s) name(s), address(es), etc.), representative, correspondence address, priority claims, be arranged in a standard format, (2) requiring bibliographic data and portions of the technical content of the application such as the abstract, claims, and drawings be arranged in a standard format, or (3) requiring that the entire application be arranged in a standard format. In addition, the standard format could include requiring standard paper sizes (8½ by 11 inches and/or A4 only) for all application papers and/or requiring (1) that claims be located on a separate page from the specification, (2) special numbering for and/or spacing between each claim, or (3) that each claim be located on a separate page. See Question #2. B. Publication 1. Publication Content The PTO has considered a number of options regarding what the pre-grant publication might contain. These options included publishing the following: i. Only the title and certain limited bibliographical data. ii. Something similar to what the Official Gazette provides for an issued patent: a drawing figure, representative claim and certain bibliographical data, perhaps also including the abstract or the abstract rather than a representative claim (a Gazette Entry). iii. The entire application as filed. iv. The entire application file as it exists at a fixed time before publication. Options (i) and (ii) contemplate that, subsequent to publication, access will be made available on demand to the content of the application (specification, claims and drawings), hereinafter "application content," as of the filing date or some fixed time before publication. Option (iii) would require printing the entire application as filed (specification, claims, and drawings), costing substantially the same as the printing of the patent, and taking up considerable space in the search files. The costs and space requirements of option (iv) would be greater than those of option (iii), but option (iv) would provide the greatest amount of published information. At present, it is believed that implementation of option (ii), with access to the application content, will best serve the interests of both the PTO and the public. Costs will be minimized by keeping the published information to a single page and the impact on the public and examiners' search files will be minimal, as compared to options (iii) and (iv). Furthermore, the information provided by option (ii) should be sufficient to enable the reader to make an educated decision as to whether "detailed access" to the application itself is necessary. Option (i), although somewhat lower in cost, would most likely cause unnecessary requests for review of the application file since the published information would be limited to a title, which may not be reasonably indicative of the technical disclosure of the application, much less what is actually being claimed. Present thinking is to publish a Gazette Entry in a separate Gazette of Patent Application Notices, provide access to the application content, and create a Patent Application Notice containing similar information for placement in the search files. See Question #3. The PTO also requests comments as to whether separate delivery of a copy of the published application information, i.e., the Gazette Entry or the Patent Application Notice, to the applicant is desirable. As the published information will be available in the Gazette of Patent Application Notices, and applicants will know from their own files what is published, it is unclear that the additional delivery of a copy of such information to the applicant justifies the additional costs, and thus fees, for providing such information. See Question #4. 2. Publication Cut-Off Date The PTO is currently considering establishing a firm cut-off date at which time applicants must decide whether or not they wish their applications to be published, with the only alternative to publishing being abandonment of the application. Present thinking, based on experiences in the publishing of patents and SIRs, is that a cut-off time of 15 months from the earliest filing date for which a benefit is sought would be necessary to assure publication at 18 months. An applicant would have to notify the PTO of his or her wish to not publish, and thus abandon, the application by this cut-off date. The PTO recognizes that in certain instances an applicant may desire to maintain the invention as a trade secret if the protection to be afforded, in light of the prior art considered by the examiner, is limited in nature. Examination before the examiner in most non-continuing United States origin applications should be concluded, and a first Office action should be issued in most applications, by this cut-off date. Nevertheless, in certain circumstances, an applicant may request accelerated examination such that in a non-continuing United States origin application, prosecution before the examiner should be complete by the cut-off date. 3. Accelerated Examination Currently, the PTO will accelerate the examination of (make special) an application under the conditions set forth in 37 C.F.R. § 1.102, as described in M.P.E.P. § 708.02 and Petitioning to Make Applications Relating to Biotechnology Special, 1092 Off. Gaz. Pat. Office 55 (July 15, 1988). It is contemplated that some applicants will desire an accelerated examination of their respective applications to obtain a final patentability determination prior to the critical publication cut-off date, when an applicant must decide whether to have the application published. Of course, increasing the number of accelerated examinations may diminish the availability or speed of accelerated examination to an individual applicant, as there will be more applications receiving an accelerated examination. This will further delay the examination of applications not provided with accelerated examination. In view of the potential value of an accelerated examination to an individual applicant, thought must be given as to whether (1) the current requirements for receiving an accelerated examination are adequate, (2) accelerated examination also should be provided for a substantial fee, or (3) there is another alternative that would meet the needs of all applicants. See Question #5. 4. Recovery of Publication Costs The PTO estimates that 82 percent of the applications filed in Fiscal 1996 would be published under the proposed legislation, and that it would require about $14 million in Fiscal 1996 to recover the costs of publishing these applications in accordance with option (ii) discussed above. If the proposed legislation provides the flexibility to the Commissioner to recover the costs of publication by adjusting the filing, issue, and maintenance fees, or by charging a separate publication fee, or by any combination of these methods, how should this cost be allocated among the various fees? Should the cost of publication be recovered through a separate publication fee per se, or should all or part be distributed among the filing, issue, and maintenance fees? In addition, fees assessed under 35 U.S.C. §§ 41(a) and (b), such as filing, issue and maintenance fees, are subject to a 50 per cent small entity discount, whereas a publication fee may or may not be subject to a small entity discount. Accordingly, the manner of allocating the costs of publication will dictate the relative proportion of the costs paid by large and small entities. See Question #6. 5. Procedures for Collecting a Publication Fee If the legislation provides for charging a publication fee, how should the fee be collected, and what safeguards should be provided to ensure timely publication and prevent unnecessary loss of potential patent rights? The PTO contemplates that such a publication fee, if instituted, will be required prior to 15 months from the earliest filing date for which a benefit is sought, or, on filing, whichever is later, and that failure to timely submit this fee will result in abandonment and non- publication of the application. The PTO may institute a regimen under which (1) an application will not be published unless the applicant affirmatively requests publication by paying the publication fee, or alternatively, (2) an application will be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether the publication fee is timely submitted. The PTO recognizes that provisions for the acceptance of an unavoidably/unintentionally delayed payment of this fee, vis-a-vis 37 C.F.R. § 1.316, would be desirable. Under either option, any applicant who did not timely submit the publication fee must petition for acceptance of a late publication fee to revive the application. Under option (2), the costs of publishing applications lacking the publication fee, but also lacking an affirmative statement that the applicant does not desire publication, will be passed to other applicants, unless the application is subsequently revived; however, this option will avoid the delay in publication inherent where an application is not published until a delayed publication fee is submitted for the application. See Question #7. Finally, there is a question as to whether the PTO should develop procedures for the withdrawal (and abandonment) of an application from publication subsequent to payment of the publication fee. C. Priority Rights It had been proposed in S. 2488 that "each application for patent shall be published ... as soon as possible after the expiry of a period of 18 months from the earliest filing date for which a benefit is sought under this title." Both 35 U.S.C. §§ 119 and 120, as proposed in S. 2488, provided that the Commissioner (PTO) may determine the period within which a claim for priority must be filed; however, 35 U.S.C. § 119 expressly requires that this period be during the pendency of the application. To enable the PTO to publish applications as soon as possible after 18 months from the earliest priority date, the PTO must be aware of any claims for priority under 35 U.S.C. §§ 119 or 120 as early as possible, preferably on filing of the application. The PTO contemplates requiring applicants to state any claim for priority under 35 U.S.C. §§ 119 or 120 on filing, but accepting late claims for priority with a surcharge. The PTO further contemplates establishing, by regulation, a fixed period, such as within 3 months of filing, within which late claims for priority under 35 U.S.C. §§ 119 or 120 will be accepted with a surcharge to avoid the loss of such claim for priority. The time period for claiming priority under 35 U.S.C. § 119 should be distinguished from the time period for perfecting such claims, i.e., submitting a certified copy of the priority document, which would remain as set forth in 37 C.F.R. § 1.55(a). In view of the potential for delaying the publication of an application by delaying the filing of a claim for priority, the PTO is considering a requirement that any late claim for priority be accompanied by a verified statement that the delay in submitting such claim was unintentional. See Question #8. D. Prior Art Effect of Published Application It had been proposed in S. 2488 that 35 U.S.C. § 102(e) will include "an application for patent, published pursuant to section 122(b), by another filed in the United States before the invention thereof by the applicant for patent" within its scope. Accordingly, a published application would have constituted prior art under 35 U.S.C. § 102(e) by the express terms in S. 2488. A published application will also constitute prior art for its entire disclosure as a "printed publication" under 35 U.S.C. §§ 102(a) and (b) as of its publication date. Thus, a published application would have constituted prior art under 35 U.S.C. § 102(e) by the express terms in S. 2488 as of its filing date, and also it would constitute prior art under 35 U.S.C. §§ 102(a) and (b) as of its publication date. Of course, the published application also would be available as prior art under 35 U.S.C. § 103. While the PTO does not currently contemplate publication of the entire application, the application content will be accessible to the public. In addition, the Gazette Entry in the Gazette of Patent Application Notices will categorize the application (title, abstract and/or claim, U.S. classification) so as to make the application sufficiently accessible to those interested in the art. In re Hall, 781 F.2d 897, 900, 228 USPQ 453, 456 (Fed. Cir. 1986); see also, In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (application available to the public as prior art, with an abstract, claim, and classification published); and compare, In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989) (undergraduate student thesis not available as prior art where the thesis, while accessible to the public, was indexed or categorized only by the author's name, rather than by subject matter). As discussed above, it is currently contemplated that a Patent Application Notice will be placed in the search files. The PTO is undecided as to whether this Patent Application Notice should be removed from the search files if and when the application issues as a patent, or whether to include publication information on the issued patent. See Question #9. E. Access to Published Applications 1. Degree of Access Providing the public with access to the application content as originally filed will serve the legislative purpose of more rapid dissemination of the technical content of a patent application. Additional access to papers filed by an applicant, or issued by the PTO, will not add to the disclosure of the technical content of an application, but would be useful for (1) determining the metes and bounds of the invention claimed in an application, such that persons could ascertain their potential liability for infringement should the application issue as a patent, and (2) participating in the prosecution of the application, e.g., submitting prior art or a protest in the application. Unless the contemplated electronic data base is in operation when the proposed legislation becomes effective, or contingency arrangements permitting equivalent access to the application content are developed, any access to a pending application will require the removal of the application file from the examiner to allow copying of the accessible portions. The degree of access provided to pending applications may well have an adverse impact on the examination process by increasing the pendency of applications. Balancing the desires for reasonable access to applications subsequent to publication with the continued desirability for limiting pendency of applications, the PTO currently contemplates that access will be limited to the content of the originally filed application papers as amended prior to the 15th month from the earliest filing date for which a benefit is sought, or, on filing, whichever is later. In other words, publication of the application at 18 months would entitle any member of the public to purchase a copy of the application (specification, claims, and drawings) as amended at a point in time prior to publication. Other options regarding access to the application file after publication include access to the entire content of the application file from filing up to the date of publication, or continuing access to the application file after publication, including all papers contained in the file wrapper from filing to grant of the patent. As access is increased, more information about the course of prosecution is available to the public, but the opportunity for disruption of the examination process, and the opportunity for increased costs and pendency, also increases. See Question #10. Finally, the PTO also requests comments on whether, subsequent to publication, access should be provided to (1) the assignment records of an application, or (2) the deposit of biological materials as set forth in 37 C.F.R. § 1.802 et seq. See Questions #11 and #12. The PTO currently contemplates that access fees, either for copying the paper application file, or searching and copying information from an electronic data base, will be required to compensate for the costs of providing these services. 2. Submission of Amendments The current procedures for entering amendments into applications sometimes cause errors in the entry of amendments into applications and in the printing of applications as patents. To facilitate the accurate entry of amendments into applications and the printing of applications as patents, as well as the understanding of the applications (specification, claims, and drawings) by a person seeking access, the PTO is also considering altering the current procedures for entering amendments into applications. The procedures for entering amendments into an application could take the form of requiring (a) substitute paragraphs of specification and the complete rewriting of any amended claim, (b) substitute pages or sheets of specification, drawings or claims, or (c) replacement of the entire application. See Question #13. F. Third Party Activity The current protest practice as provided for in 37 C.F.R. § 1.291 and M.P.E.P. § 1901 et seq. requires that the protest identify the application under protest by application number or serial number and filing date and include a listing of all patents, publications or other information relied upon, a concise explanation of the relevance of each listed item, an English translation of non-English language documents and be accompanied by a copy of each document. In addition, the protest papers must reflect that a copy of the same has been served upon the applicant or upon the applicant's attorney or agent of record, or be filed with the PTO in duplicate in the event that service is not possible. It is important that any protest against a pending application specifically identify the application with as much detail as possible. In 1974, a Trial Voluntary Protest Program (TVPP), which included two trial programs, was undertaken by the PTO. A total of 6,745 applicants were given the opportunity to participate in the TVPP. In response, 1,970 or 29.2 percent of the applicants elected to participate. Protests were subsequently filed in 128, or 6.5 percent, of the 1,970 published applications. Prosecution was re-opened in eighty, or 62.5 percent, of the protested applications. The pendency of published applications which were not protested was delayed by 6 to 8 months. The pendency of protested applications was further delayed for varying periods. As noted above, 6.5 percent of all of the TVPP applications were protested. If we assume that ten (10) percent of the published applications are protested this would lead to a dramatic increase of protests. In fact, the ten (10) percent figure may be on the low side, since the claims in the TVPP applications were in allowable condition. As of the contemplated cut-off date, many of the applications may not, as yet, have isolated the metes and bounds of allowable subject matter. The PTO requests comments as to when the submission of prior art by third parties should be permitted subsequent to publication of the application. Traditionally, applications are maintained in secrecy during their entire prosecution, thus rendering the entire prosecution of an application ex parte. Nevertheless, the third party submission of prior art may improve the quality of issued patents by providing examiners with the best prior art. Should it be considered desirable to substantially maintain the ex parte nature of application prosecution, it is unclear as to what limits should be placed on the submission of prior art by third parties. As the prosecution of an application may be closed (under final rejection or Notice of Allowance) at the time of publication, the time periods for the submission of prior art by third parties must be limited to avoid delays in prosecution. In addition, the PTO requests comments on whether to stay the proceedings for a set period following the publication of the applications to permit the third party submission of prior art. Providing any time period subsequent to the publication of an application for the submission of prior art by third parties could result in the reopening of prosecution in an application. Such continued prosecution of applications, if permitted, would lead to increases in pendency, the adverse effects of which will be further exacerbated under a 20-year patent term regime. If the submission of prior art in a pending application by third parties is considered desirable, what procedures should be adopted to accommodate such submission and take advantage of its potential benefits? In addition, a specific time period, e.g., the earlier of the mailing of a Notice of Allowance in the application or two months after publication of the application, must be established during which prior art may be submitted to ensure its consideration. The PTO currently contemplates that prior art submitted outside this time period by third parties would simply be placed in the application file. Finally, the PTO does not currently contemplate providing third parties with any opportunity that would amount to an opposition proceeding. See Question #14. III. Questions 1. Should the PTO require that all official application-related materials be delivered to a central location? Specifically, what problems would a requirement that all official application-related materials be delivered to a central location cause? 2. Should the PTO adopt a standard application format? If so, what portions of the application papers should the PTO require be submitted in a standard size and/or format, and what sanction (e.g., surcharge) should be established for the failure to comply with these requirements? 3. Assuming that the entire application is not published, what information concerning the application should be published in the Gazette of Patent Application Notices? 4. Should the patent applicant receive a copy of the published application -- either published notice and/or application content at time of publication? 5. Should the PTO permit an accelerated examination? If so, under what conditions? 6. Since the cost for publishing applications must be recovered from fees, how should the cost of publication be allocated among the various fees, including the possibility of charging a separate publication fee? 7. Should the PTO require an affirmative communication from a patent applicant indicating that the applicant does not wish the application to be published, or should failure to timely submit a publication fee be taken as instruction not to publish the application? That is, should an application be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether a publication fee has been submitted? What latitude should the PTO permit for late submission of a publication fee? 8. The delayed filing of either a claim for priority under 35 U.S.C. §§ 119 or 120 may result in the delayed publication of the application. Should priority or benefit be lost if not made within a reasonable time after filing? What latitude should the PTO permit for late claiming of priority or benefit? 9. Once the patent has issued, should the paper document containing information similar to that published in the Gazette of Patent Application Notices, i.e., the Patent Application Notice, be removed from the search files, and should publication information be included on the issued patent? 10. After publication, should access to the content of the application file be limited to the originally filed application papers? If not, what degree of access should be permitted? Should access be limited to the content before publication, or should it extend to materials added after publication? 11. After publication, should assignment records of a published application also be made accessible to the public? 12. After publication, should access include the deposit of biological materials as set forth in 37 C.F.R. § 1.802 et seq.? 13. What types of problems will be encountered if all amendments must be made by (a) substitute paragraphs and claims, (b) substitute pages, or (c) replacement of the entire application? 14. Should protest procedures be modified to permit the third party submission of prior art only prior to a specific period after publication of the application? What action should be taken with respect to untimely submissions by a third party? Date:___________ ______________________________________ Michael K. Kirk Deputy Assistant Secretary of Commerce and Deputy Commissioner of Patents and Trademarks
Last Modified: February 1995