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izes he has made some error which requires rewriting part of his rejection. His choice is to scratch out his error and write over it, or to start another PO-1142 and do it all over again. If the rejection were made the old fashioned way the examiner, who usually writes on every other line, would merely cross out his error and write in the space between the lines.

There are two types of situations in particular where the PO-1142 is difficult to use. First, a telephone restriction requirement contains a minimum of 150 words (at five letters per average word this equals 750 letters), and fresuently more. When a telephone restriction is combined with a rejection the number of characters to be squeezed into the PO-1142 increases accordingly. It is conspicuously obvious from the above that writing all this information in the meager space of a PO-1142, all the while bearing down sufficiently hard on your Ballerina ballpoint to insure an adequate impression, is no mean task. Frequently the rejection/restriction will slop over to another sheet. No matter bow you look at it the PO-1142 just was not designed for this type of situation. Second, the P0–1142 just does not cut the mustard when it comes to pointing out gross informalities. For instance, what do you do when a pro se inventor comes into the mill and the specification is riddled with errors? Should you simply flip the applicant the old chestnut about getting “the services of an experienced patent attorney or agent", or should you point out the errors so that he may correct them himself? MBut where do you find room on the PO-1142? Or, what about a foreign application that does not conform to standard United States patent practice? Shouldn't the examiner point out major areas of concern? Or, what if an examiner gets a highly sophisticated case that has been floating around the Office because no one could understand it? If the case is inherently hard to understand shouldn't the examiner tell the applicant what things there are that he can't grasp? But-how can you do that adequately on a PO-1142? Again the PO-1142 fails the test of sufficiency.

On March 1972 a memorandum was sent to all patent examiners concerning the "Abbreviated First Action Program". The memo suggested that the PO–1142 will be modified at some unspecified future date to include some extra distance between lines and that an additional line per box will be added. Even though this is a step in the right direction it is still not enough. Even twice as many lines would not make the P0–1142 satisfactory for anything more than simple 102 and 103 situations. Of course, the biggest problem remains, and that is that the P0–1142 is an inducement to quick and sloppy work. It is an easy way to help the examiner avoid his duty of fully and adequately explaining his rejection. That is where the cancer gnaws.

The March memo also told the examiner that “when filling out the form, the examiner should keep in mind the importance of legibility, clarity, and completeness in setting forth his position." What a strange thing to say! Were it not for the administration's insistence on using the form there wouldn't be any “legibility, clarity, and completeness" problem in the first place. The examiner is not the one to blame for he is merely coping with the form as best he can. It is almost as if the administration were trying to wish away the very reasons that this form is a failure. The problem and solution are not as simple as that.

As mentioned before, the PO-1142 is adequate for most 102 rejections and some simple 103 and 112 rejections. We do not suggest doing away with the PO–1142 entirely, even though it is definitely inferior in communicative ability to a personal letter. Rather, we would like to offer up some constructive suggestions that would improve upon the PO-1142's limited utility. First, and foremost, the PO-1142 must provide considerably more writing space both in terms of line height and line length. The administration should remember that few patent examiners will ever win a prize for penmanship. Many examiners look upon the task of writing a complicated 103 rejection on a PO-1142 with as much relish as if he had been asked to inscribe the Lord's Prayer on the head of a pin. Moreover, many sages through the ages have observed that it is often more difficult to write an abbreviated message than to write a long one. The P0–1142 should include enough space so that proper names can be used. Perhaps the administration would be more sympathetic to the attorney's plight if letters were used instead of names in amendments and appeal briefs. Second, an improved system must be found that allows the examiner to correct mistakes without messing up the original and the carbon copy. Perhaps the original could be done in dark pencil and then photoduplicated.

The Journal would welcome any constructive suggestions you may have concerning PO-1142.

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7

EXAMINER

TEL. NO.
(70) -5973/

• Capital letters representing references are identified on

accompanying Form PO-892.
The symbol **V between letters represents - In view of
The symbol "pior "&" between letters represents - and
A slash "p" between letters represents the alternative - of

NOTE: Sections 100, 101, 102, 103 and 112 of the Patent Statute

(Title 35 of the United States Code) are reproduced on the back of this sheel.

2

Exhibit H

TEXT OF AN ADDRESS BY HON. ROBERT GOTTSCHALK, COMMISSIONER OF PATENTS,

U.S. DEPARTMENT OF COMMERCE, BEFORE THE PHILADELPHIA PATENT LAW ASSOCIATION, UNION LEAGUE, PHILADELPHIA, PA. ON MARCH 9, 1972

THE PATENT OFFICE IN A CHANGING WORLD Introduction

I am very pleased to be here this evening and to have the opportunity to share with you some of my views concerning the Patent Office and the patent system, now and in the years ahead. I thought this topic might be especially challenge in the century to our national statute, our industrial strength, our nation.

We know that the founders of this nation, with rare wisdom and foresight, provided in the Constitution for a patent system “to promote the progress of the useful arts."

We know they were right-and that our patent system has made a tremendous contribution to the development of our country—to its industry and economy, its military strength, and the dignity and well-being of all our people.

We know that we face today, at home and abroad, what may be the greatest challenge in a century to our national statute, our industrial strength, our standard of living, and our social progress.

We know that our patent system can and must play a vital role in meeting that challenge.

We know that the very heart and soul of a sound patent system lies in a sound and effective Patent Office-one which understands its mission and performs it well.

Yet, we know, too, that the office today is not as sound or effective as it can and must be to meet that challenge. Where does this leave us? What do we have to do? How do we go about it? Where do we begin?

By taking a hard look at ourselves each of us. A long and careful look, analytical and free of bias, grounded in the experience of our history but free of its restraints and inhibitions—to see how we measure up—to see where we are falling short and to develop a sense of direction and purpose of urgency and need-of personal commitment, responsibility, and mission.

In the Patent Office, we are doing just that. As did Janus—the ancient Roman God of all new beginnings—we are looking in more than one direction.

We are looking to our past, as an aid to understanding the present, as a key
to preparing for the future.
We are looking outside ourselves, to

the public we serve, the better to serve their needs;
the nation and the world, the better to relate to the context within
which we must function; and
to the fast-moving changes in technology and trade, the better to keep
pace with the demands they make upon us and the new opportunities

they afford.
And we are looking within, as well, to

appraise our competence and performance;
identify faults and failures; and
ready our staff, our tools, our methods, our attitudes, and our will-for

the tasks at hand and those that lie ahead. Service Operations

Most of you realize that I have not come here to tell you that the Patent Office is operating smoothly and efficiently, and that all of our problems are behind us. It was in recognition of the many problems the Patent Office faced last fall that I asked a number of leading patent law associations throughout

the country to assist the Patent Office in identifying its problems and needs.

Indeed, they did! The response from the bar was overwhelming. It was factual, and right to the point. It was enlightening, if embarrassing.

But the call to action was clear and loud. And in response, a number of special programs were initiated.

For example, we established a Customer Relations Center to assist the public in obtaining copies of patents and other documents previously ordered and not received. Many positive comments—such as, “It's the best thing that ever happened at the Patent Office"—have convinced us that the Center is successfully filling a long-felt need. At the present time, the Center is responding to between three and four hundred requests each day.

To reduce the long delays in obtaining certified copies, we established an "on-the-spot” certifying service which enables the public to obtain immediate certification of copies of file wrappers, patent applications, patents, and selected papers from patented application files. Since we began this service last October, over 2,000 requests have been filled, and the response time reduced to only a few minutes.

The problem of delay in the processing of new applications presented greater difficulties. Prompt, efficient processing of a new application is important not only from the standpoint of advising you that an application has been accepted as complete and given a serial number, but also because it creates a record for each application as it begins its journey through the office. No shortcuts can be taken; and we were forced to address ourselves to the problem of speeding up an operation that was literally tens of thousands of applications in arrears.

Our first action was to create a Parallel Application Branch to process all applications filed after October 27, 1971.

Second, we began using the regular Application Branch to eliminate the backlog.

Third, we started planning to bolster the regular branch so that-with the backlog disposed of (and it almost is)-it could resume, and maintain on a current basis, the regular processing of new applications.

Perhaps one of the most important benefits of these efforts, however, is the way they pointed up the need for better management in the Patent Office. Professional Management

I am speaking here not only of management in general sense, but also in the terms of bringing to bear on Patent Office operations, professional administrative skills and experience.

We took a major step in this direction early in January with the hiring of Bill Merkin as our Assistant Commissioner for Administration. Mr. Merkin was formerly associated with the Census Bureau which, like the Patent Office is also part of the Department of Commerce. He brings to our clerical and administrative operations the capabilities of a professional administrator. developed over more than 20 years. We are very proud and pleased to have him as a member of our team.

He has continued earlier initiatives and instituted important new improve ments in our operation. In all of this, I should mention also, we have had full cooperation and assistance from the Department of Commerce, which has in no small measure helped make these efforts successful.

During his 7 weeks with us, Bill Merkin has brought his considerable expertise to bear on-among other things-our continuing efforts to speed up the operation of our Mail Room, reduce the time it takes to mail filing receipts for new applications, and restore the printing of patents to a current schedule. Let me amplify:

Less than 6 weeks ago, for example, it took 10 to 15 days to deliver nonfinancial papers from the Mail Room to the Examining Groups. At the present time, these papers are arriving at the Examining Groups within 8 hours of receipt in the MIL Room. If fees are involved, the finance section requires an additional day or two.

When the Parallel Application Branch was established late last year, it took us at least 11-12 weeks to mail filing receipts for new applications. As of yesterday, the Parallel Branch was mailing filing receipts within 6 weeks. By March 31, 1972, all filing receipts will be mailed within 4 weeks.

I need not tell you that not too long ago, newly issuing patents were not available until 6 or 7 weeks after the scheduled date of issue. Our program to restore the printing of newly-issuing patents to a current basis has been given top priority. I can now announce that, as of this past Tuesday, the Patent Office has again achieved a current status with regard to the mailing of grant copies of patents. Moreover, also effective with that issue, copies of patents are also available for sale to the public on the date of issue. People Orientation

Although I have been emphasizing our efforts to improve operations, especially those service operations which are most visible, I remain deeply concerned with the morale and motivation of the employees of the Patent Office. In point of fact, I have perhaps concentrated even more on the “people problems" than on our operations themselves because, as I have said before, morale and operating efficiency are opposite sides of the same coin.

Although we had many problems when I assumed responsibility for the Office last fall, these have probably been most critical in the “paper-handling" operations of the Patent Office.

For that reason, I began an all-out effort to bring our administrative employees back into the mainstream of Patent Office operations, and to impress upon them the importance of what they do. We are doing all we can to improve communications with these employees; to demonstrate a genuine concern for them as well as for their contributions; and to make them aware that real opportunities for training and advancement do exist. In addition, I think it fair to say that we now have in the Patent Office a more highly sensitized personnel operation which is more responsive to the needs of these employees and correspondingly more effective.

In short, we are striving to build a Patent Office team—with support and participation from every grade level, and every area of the operations of the Office—which is tightly knit, smoothly operating, and mission-oriented. And these efforts will continue-for, in my judgment, such an organization is essential to the success of our operations. The Patent Examining Operation

These same considerations apply, with equal force, to our Patent Examining Operation. Certainly I have attempted to make the examiners aware of my conviction that this is our most basic and important activity-and one which we must perform well.

At the present, examiners are, on the average, reaching cases for first action in about 1042 months, and overall pendency of applications is only slightly in excess of 28 months. This represents—as against the situation 15 months earlier -reductions of almost 2 months in the pendency-to-first action, and 3 months in the pendency-to-issuance. So we seem to be well on the way to our goal of 18 month average pendency during FY 1975.

It might seem to some that we are shooting for two inconsistent goals: A meaningful examination and the issuance of strong patents on one hand, and on the other, the accomplishment of this process in a short period of time.

I want to emphasize, however, that in our effort to reduce pendency, we do not intend to sacrifice the development of an adequate record of all important issues, or meaningful examination, or justice and fair treatment for the applicant. On the contrary, I believe we can cut down on pendency time without adverse affect on the examination process.

This was one reason, I recently initiated a program to revive the manual classification effort. The aim is to improve the search of patent examiners, without requiring additional time, by providing them with better tools. Obviously, the more complete, up-to-date and thorough the classification of the

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