Going back to Stephen Adams concern about submarine patents, the problem of
submarine patents is largely historic. Since the 20 year rule became
effective for applications filed after June 8, 1995, where patents only get
a term of 20 years from the first filing, there is much less incentive to
keep an application alive for extended periods of time at the USPTO.
Andy Berks
Merck & Co.
> ----------
> From: Edlyn Simmons-ES[SMTP:simmons.es@pg.com]
> Sent: Wednesday, November 24, 1999 6:06 PM
> To: Leland Ness
> Cc: Stephen Adams; PIUG Listserver
> Subject: Re: New US legislation
>
> The bill doesn't seem to have gotten through the Senate yet, if I'm
> reading the
> Thomas.loc.gov site correctly. It would be a good thing if the bill were
> amended one more time to change that particular item.
>
> As it stands, the only US patents that would be published in 18 months
> would
> also be published by another country. This would create a separate and
> unequal
> kind of patent protection for independent inventors who choose not to
> foreign
> file. It would also create several different publication routes for US
> patents
> - published only after grant, published before grant both in the US and
> elsewhere, published only after being granted less than 18 months after
> their
> priority date (which is in line with the USPTO's goal for quick
> prosecution).
> It will also complicate all the US patent databases and generate lots of
> redundant search results.
>
> Edlyn Simmons
>
>
>
>
> Internet Mail Message
> Received from host: luggage.tecc.co.uk
> [193.128.6.129]
>
>
>
> Envelope Sender: owner-piug-l@tecc.co.uk
>
> From: "Leland Ness" <lness@dgsys.com> on 11/24/99 05:16 PM
>
> To: "Stephen Adams" <stevea@magister.co.uk>, "PIUG Listserver"
> <piug-l@derwent.tecc.co.uk>
> cc: (bcc: Edlyn Simmons-ES/PGI)
> Subject: Re: New US legislation
>
>
>
>
> I agree. My reading of it was that the purpose was to introduce the
> publication of applications (where such publication would occur anyway due
> to foreign filings) into the US system. For US-only filings the state
> remains the same -- no publication until granting.
>
> Lee Ness
> Carlton Group Inc.
>
> ----- Original Message -----
> From: Martin Goffman <mgoffman@goffman.com>
> To: Stephen Adams <stevea@magister.co.uk>; PIUG Listserver
> <piug-l@derwent.tecc.co.uk>
> Sent: Wednesday, November 24, 1999 4:30 PM
> Subject: Re: New US legislation
>
>
> > Stephen:
> >
> > The correct code section is 35 USC (b)(2)(B)(i), not (1), and it does
> not
> > say what you thought that it said.
> >
> > 35 USC (b)(2)(B)(i) states that:
> >
> > [An application shall be published after 18 months after filing, unless
> the
> > applicant certifies that] the application has not and will not be [filed
> in
> > a jurisdiction that requires] publication of applications 18 months
> after
> > filing ...."
> >
> > Thus, only applications not filed abroad, generically speaking, can
> avoid
> > publication.
> >
> > Best regards.
> >
> > Marty
> > _______________________________________________________________________
> > _______________________________________________________________________
> >
> > Martin Goffman, Ph.D. Research*Consulting*Information Specialist
> > Martin Goffman Associates
> > mailto:mgoffman@goffman.com http://www.goffman.com
> > "TURNING INFORMATION INTO INTELLIGENCE (R)"
> > _______________________________________________________________________
> > _______________________________________________________________________
> >
> >
> >
> > ----- Original Message -----
> > From: "Stephen Adams" <stevea@magister.co.uk>
> > To: "PIUG Listserver" <piug-l@derwent.tecc.co.uk>
> > Sent: Wednesday, November 24, 1999 7:57 AM
> > Subject: New US legislation
> >
> >
> > > Does anyone have any comment (from the information specialist's point
> of
> > > view) on the effect of the proposed revision of section 122 of 35 USC,
> > > as proposed in HR.1554.?
> > > I'm surprised at the proposed wording of the new section 122
> > > (b)(2)(B)(1), which allows for non-publication of US cases at 18
> months
> > > if application has also been made into another 18-month publishing
> > > authority. Surely this will do nothing to remedy the problem of
> > > submarine patents?
> > > I understand that this bill was passed recently. Can you explain to a
> > > non-American what happens next?
> > >
> > > By the way, Happy Thanksgiving !
> > >
> > > --
> > > Stephen Adams
> > > Magister Ltd.
> > > Crown House, 231 Kings Road, Reading, RG1 4LS, GB
> > > Tel: +44 (0)118 929 9515
> > > Fax: +44 (0)118 929 9516
> > > e-mail: stevea@magister.co.uk
> > >
> > > Registered in England and Wales. Company No. 3407685
> > > Registered address : Canada House, 272 Field End Road, Eastcote,
> > > Ruislip, Middlesex HA4 9NA.
> > >
> > >
> > >
> >
> >
>
>
>
>
>
>
>
>
>