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November 11, 2007


The USPTO has all this information already in its PALM system. If the information is as important/valuable as the Rules say, why isn't the USPTO mining it from PALM *now* rather relying on applicants to perhaps do it in the future? Shouldn't the USPTO be taking concrete initiatives to improve patent quality that are more tangible than merely asserting to the applicants, "Do as I say, not as I do"? Double standards reign supreme at the USPTO.

To retroactively add new duties to completed patent applications (which have in many cases already been published) would be to "impose new duties with respect to transactions already completed", which is apparently impermissible under Landgraf. Isn't inferring that such a course of conduct may have expedient "side effects" on the backlog (while the rule of law is held in disregard) a Machiavellian "ends justify the means" sort of thinking that can only lead to our destruction as a civilized nation? Doesn't it also hold in disregard the Duty to Disclose (37 CFR 1.56) which is more potent in the U.S. than in any other country in the world, and which was not at all ineffective in McKesson? (The implied question here is why should there be an additional duty to disclose information which is "immaterial" to patentability that Rule 78(f) creates?)

The manner in which the date correspondence between the priority and parent documents is set up in new Rule 78(f) produces arbitrary and capricious results (including "immaterial" disclosure) that will cloud rather than clarify patentability issues, as indicated in questions 23 and 24 of the NIPRA quiz linked at:


I agree with NIPRA, this rule is unnecessary - the PTO has the information already, and is an unnecessary burden on applicants. And why does IBM need help from the PTO on culling its pending applications? I think they can manage this just fine on their own. This rule will not reduce backlog in a significant way.

As a former U.S. patent examiner, I agree that the U.S. PTO should not burden applicants with new requirements such as the enjoined 37 CFR 1.78(f) that can easily be carried out by the patent examiners and their staff.

The PTO seems to have a tendency to become increasingly bureaucratic vis-a-vis patent applicants. In my view, there is a danger that the expense and inefficiency associated with implementing and applying complicated or burdensome new rules will cancel or exceed the targeted cost and time savings, resulting in a lose-lose proposition.

Does anyone have any thoughts on how the PTO could streamline the patenting process in a user-friendly way?

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