[Federal Register Volume 59, Number 237 (Monday, December 12, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-30311]


[[Page Unknown]]

[Federal Register: December 12, 1994]


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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.

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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]
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