Notice of Public Hearing and Request for Comments on 18-Month Publication of Patent Applications

DEPARTMENT OF COMMERCE

37 CFR Parts 1 and 5

[Docket No. 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

[email protected], or on a 3\1/2\-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 [email protected], 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, DC 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 CFR 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 paper 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 (8\1/2\ 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 CFR 1.102,

as described in M.P.E.P. Sec. 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 nonpublication 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 CFR 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. Secs. 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 CFR 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 to the

patent. As access is increased, more information about the court 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 CFR 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 CFR 1.291 and

M.P.E.P. Section 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 of Notice of Allowance) at the time of publication, the time

periods for the submission or 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 averse 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 CFR 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?

Dated: December 5, 1994.

Michael K. Kirk,

Deputy Assistant Secretary of Commerce and Deputy Commissioner of

Patents and Trademarks.

[FR Doc. 94-30311 Filed 12-9-94; 8:45 am]

BILLING CODE 3510-16-M