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Q. Todd Dickinson, Esquire
Acting Deputy Assistant Secretary of Commerce and
Acting Deputy Assistant Commissioner Patents & Trademarks
U.S. Patent & Trademark Office
Washington, DC 20231
Sir:
I am very pleased to learn of the comments you made during your "PTO Day"
speech on December 9, 1998 to the effect that you had directed your staff to
attempt to find the resources to resume classification of foreign prior art
for search purposes. Foreign prior art, as I am sure you know from your years
in the public intellectual property sector, is often among the most pertinent
developed, particularly during in-depth search efforts such as validity and
right-to-use searches. Many public users of the foreign classified search
files have long felt that the decision to stop filing foreign patent documents
in 1995 was premature and not in the best interest of the patent related
portion of the intellectual property community
Since resumption of foreign prior art classification will necessarily require
modification of existing staffing requirements, now would appear to be an
appropriate time to also reconsider the decisions made in the recent past
which have pared the staff which performed traditional US patent
classification and re-classification efforts to a fraction of their former
levels. While it is possible that computerized classification and re-
classification schemes may some day supplant the mental work of trained
professionals it appears that such day is not close at hand (except perhaps
for rough or "first cut" sorting functions). In the meantime, not only does
in-house "know now" decrease as time passes and former staffers are scattered
or retire, but also more and more subclasses grow larger and larger, making
searching less efficient thereby cutting the productivity of both the
Examiners and public searchers whether they are doing manual or computerized
searching.
Finally, many public searchers believe any decision concerning withdrawal of
any US patent paper classified files from public availability any time in the
next few years, as some in PTO management positions have suggested might ensue
concurrent with a PTO move to new or renovated buildings, appears to be
premature. Even consideration of such file removal is such an important
matter that it should be contemplated only as a part of formal concurrent
discussion with public users.
Since each of the matters discussed herein is of great interest and
importance to patent practitioners and other public users of the PTO's
classified search files, and their clients, it is requested that you reply to
this communication by setting forth in as much detail as possible the PTO's
current intent relative the three subjects discussed above, namely updating
classification of foreign prior art, classification staff re-building and
reclassification effort expansion, and retention of US paper classified
patent files. In the interest of ease of reply to those who do note request
a personal reply it is suggested that your response be printed in a
forthcoming issue of "Searching Patents" which, as you may know, is published
monthly and distributed to users of the public patent search facilities.
Public users are also very interested in what the PTO is planning with regard
to any new or renovated public search facilities in the event that the PTO
either moves to a non-Crystal City location, or stays in Crystal City. Thus
it is requested that any reply include at least a summary of the PTO's intent
with regard to such public facilities.
Additional remarks of the undersigned:
Respectfully Submitted,
Date:_______________________
__ Check here if personal reply requested
_______________________________
Signature
_________________________________
Printed Name
_________________________________
Occupation
__ Check here if former Examiner
_________________________________
__________________________________
_________________________________
Address
This letter sponsored by The Coalition for the Preservation and Expansion of
Patent Searching Resources - Rupert J. Brady, Secretary
711 Chevy Chase Building
5530 Wisconsin Avenue
Chevy Chase, MD 20815
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Notice to Users of the PTO's Searching Resources
Attached hereto is a two page self-explanatory letter which has been prepared
as a communication vehicle to convey to the new Acting Patent Commissioner,
Todd Dickinson, some feelings and opinions prepared for those who wish to
assist in attempting to reverse what many public members of the patent
profession believe to be very serious degradation of patent searching
resources by the PTO currently and in the recent past.
The "coalition" set forth at the end of the letter is merely an ad hoc name
chosen to define the purposes of the letter. By filling in the information
requested and signing at the bottom of page two you are automatically welcomed
as a member of this ad hoc effort which is being shepherded by some long time
public users of the PTO's patent searching resources.
If you decide to join this effort, after filling in the information
requested, supplemented or not as you choose with you personal remarks, kindly
return the attached two page letter only, either to the person from whom you
received it (if they are willing to forward it), or send it to the address
shown at the end of the letter. Also, you are urged to copy this sheet and
the attached letter, and send or give it to as many of your associates or
clients, who use the PTO's patent searching resources, either directly or
indirectly, as you deem appropriate, and urge them to join this effort.
Hopefully within about the next sixty days or less this "grass roots" effort
will have produced a very respectable number of signed letters so that the
coalition's shepherds can personally present them to Commissioner Dickinson to
convey to him the depth of feeling and concern within the patent community
concerning the matters covered by the letter.
Thank you for your time and consideration.
The Coalition for the Preservation and Expansion of Patent Searching
Resources
Rupert J. Brady, Secretary
711 Chevy Chase Building
5530 Wisconsin Avenue
Chevy Chase, MD 20815