COMMENTS OF THE SECTION OF INTELLECTUAL PROPERTY
COMMENTS OF THE SECTION OF INTELLECTUAL PROPERTY LAW OF THE AMERICAN BAR ASSOCIATION ON CHANGES TO IMPLEMENT PATENT TERM ADJUSTMENT UNDER TWENTY-YEAR PATENT TERM
General Comment - Section 154(b)(2)(C)(i) states that the period of adjustment of the term of a patent shall be reduced by a period equal to the period of time during which "the applicant failed to engage in reasonable efforts to conclude prosecution of the application." The Office has apparently made the decision that applicants are acting unreasonably if they do not file all formal papers at the time of filing an application under 111(a), an international application under 363, or a national application under 371(c). Accordingly, in each instance, the Office has determined that applicants must, among other things, submit declarations, obtain translations, prepare formal drawings and request national stage processing at the earliest date possible or else be deemed to have acted unreasonably. An applicant, however, is not being unreasonable when he or she first files the application, then circulates the declaration to inventors for execution or then delivers the application to a translator for translation or then submits drawings to a graphic artist to formalize the drawings. The Section strongly opposes the Office = s view. An applicant should be permitted to file a patent application on the earliest date that it meets the technical requirements to obtain a filing date without simultaneously being required to obtain joint execution of a declaration by several inventors, obtain a full translation and prepare a complete set of formal drawings. The Office requirement to satisfy all formal requirements as of the filing date or face term reduction is surprising in view of the likelihood that the application will not be examined by the Office for a period of up to 14-months. An applicant should not be required to accelerate all formal requirements only to wait while the application sits in queue for examination. The Section is opposed to any term adjustment rule that requires immediate action by the applicant. In other words, an applicant should not be required to meet a deadline that falls on the first date on which the action can be taken. For example, declarations cannot be filed before the filing date and therefore should not be required on the filing date. Similarly, an appeal brief cannot be filed before filing a notice of appeal, and therefore should not be required to be filed with the notice of appeal. The Section proposes that applicants be given 3- months to complete formal requirements, after receiving notice, before term reduction takes effect. This is consistent with Section 154(b)(2)(C)(ii) which states that an applicant shall be deemed to have failed to engage in reasonable efforts to conclude prosecution or examination of an application for the cumulative total of any periods of time in excess of 3-months that are taken to respond to a notice from the Office. The statute states that the notice from the Office includes "making any rejection, objection, argument, or other request." The Office should follow this guideline in determining a reasonable time period for satisfying formal requirements. In addition, since a 3-month time period should be considered prima facie reasonable, applicants should be permitted to petition and pay a fee to request reinstatement of additional time beyond 3-months if a sufficient showing is made pursuant to Section 154(b)(3)(C) that, in spite of all due care, applicant was unable to reply to the rejection, objection, argument or other requests within 3-months of the notice date.
The following additional comments are directed to specific rule changes proposed by the Office.1. Proposed 1.702(a)(1) states that the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to mail at least one of a notification under 35 U.S.C. 132 or a Notice of Allowance not later than 14-months after the date on which the application was filed. The discussion accompanying the proposed rule states that a written restriction requirement or a written election of species requirement is such a notification. The Section opposes such an interpretation. A restriction or election of species requirement is not an action on the merits and should not, by itself, be sufficient to meet the 14-month deadline. At a minimum, the Office should contact the applicant to satisfy the requirement by telephone, then issue a full action on the merits. Improper restriction and election of species requirements are a serious concern to applicants and the proposed rule will likely exacerbate the concern over whether the requirement is proper.
2. Proposed 1.703(f) provides that the date indicated on any certificate of mailing or transmission under 1.8 shall not be taken into account in adjusting the term. That is, while the date indicated on any certificate of mailing or transmission under 1.8 will continue to be taken into account in determining timeliness, the date of filing ( 1.6) will be the date used in a patent term adjustment calculation. The Section opposes this proposed rule. Since an Office action is effective as of its mailing date, any amendment or response should similarly be effective as of its mailing date, not its receipt date. It is not appropriate to draw a distinction between the time of mailing (as proven by a certificate of mailing) and the time of filing, since there does not seem to be any justification for this difference. Such a distinction will only result in confusion (there now being two different dates for determining the effective date of a response) and cause an increase in filings by express mail. According to the Office, a certificate of mailing is good enough for making the filing date but not good enough for avoiding the subtraction of a few days from when the response is mailed on the last day of the 3-month period until it is received by the Office. Since the Office has endorsed the reliability of U.S. Postal Service in delivering the mail, it should also calculate any time subtractions from the date of the certificate rather than the actual date of receipt. To do otherwise would make this complicated patent term adjustment procedure even more difficult for the applicant because the applicant will not know when the paper was received by the Office.
3. Proposed 1.704(c)(3) and (c)(4) imposes a potential double penalty for unintentional abandonment of an application. The applicant loses time if the case becomes abandoned (even if it is due to the loss of a paper by the PTO) and then more time is lost if the petition to revive is not filed within 2-months of the date of abandonment. It would be fairer to have only one time reduction for abandonment and revival that combines these subsections. Also, there should be some mechanism for reinstatement of this time if the abandonment is not due to the fault of the applicant.4. Proposed 1.704(c)(6) states that failure to file the basic filing fee, any English translation or an oath or declaration executed by all of the inventors constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The Section opposes this proposed rule. One of the applicant's key concerns is obtaining an early filing date. Oftentimes this means filing an application before obtaining an executed oath or declaration, a translation or even payment of the filing fee. This does not mean that an applicant has failed to engage in reasonable efforts to conclude processing or examination of an application. To the contrary, applicants generally act diligently to obtain signed declarations and certified translations to avoid the payment of late filing fees. Sometimes it is extremely difficult to obtain a signed declaration from an uncooperative inventor. Again, this does not mean that applicants are failing to engage in reasonable efforts to conclude processing or examination of an application. Since the Office is not required to submit a first action until 14-months after the filing date, there would seem to be some room to compromise and to permit applicants to file a signed declaration, a translation and/or a filing fee at some reasonable period of time after the filing date (e.g. 3-months). Fulfillment of the requirements of 35 U.S.C. 371(c) and 1.494 or 1.495 should also be permitted to be made subsequent to the date the International Application was filed, for the same reasons. (See proposed 1.704(c)(7)). It is also believed unnecessary to require formal compliance of the specification with 1.52, of the title and abstract with 1.72, of the drawings with 1.84, and of a sequence listing with '' 1.821-1.825 as of the filing date of the application (see proposed 1.704(c)(91)). Again, since an action by the Office can be established up to the 14-months without penalty, applicants should be permitted some period of time (e.g. 3-months) after the filing date to satisfy all formal requirements. See also General Comment.
5. Proposed 1.704(c)(12) states that submission of a supplemental reply or other paper after a reply has been filed constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The Section opposes this proposed rule. Oftentimes, a supplemental reply expedites prosecution and avoids the necessity of continued examination. Accordingly, the filing of a supplemental reply should not have an automatic negative impact on the term.
6. Proposed 1.704(c)(13) states that failure to file an appeal brief in compliance with 1.192 with the Notice of Appeal is a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application. The Section opposes this proposed rule. An appeal brief requires a significant effort on the part of the applicant. Such effort should not be required at the same time that the applicant is trying to negotiate an agreement with the examiner concerning patentable subject matter. Applicants should not be required to go through the costly, and often unnecessary, effort of preparing an appeal brief prior to filing a notice of appeal. See also General Comment.
7. Proposed 1.704(c)(15) establishes submission of an amendment under 1.312 or other paper after a Notice of Allowance as a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The Section opposes this proposed rule. Oftentimes, upon receipt of the notice of allowance, applicant finds it necessary to comment on the examiner's statement of reasons for allowance, or finds errors in an examiner's amendment, or does not receive a properly completed PTO form 1449. In each of these instances, and others, the applicant should not be penalized for making appropriate views of record or in correcting examiner errors. The Section believes that only amendments which require further examination should be listed under 1.704.8. Proposed 1.705(b) provides that any request for review or reconsideration of the patent term adjustment indicated in the notice of allowance must be accompanied by a fee. However, the proposed rule does not indicate the amount of detail which will be provided in the notice of adjustment which will accompany the notice of allowance. An Applicant will have to review each paper in the file to determine whether or not the PTO has made a correct determination. As the PTO moves to an electronic filing and data base system there should be some mechanism for an applicant to be able to monitor the determinations as to patent adjustments entered in the file of the application. Presumably, the PTO will instruct its clerical personnel to maintain a log of patent term adjustments, as the application progresses, and the applicant should be able to access this log without interfering with the routine of the PTO. Thus, the applicant should not be hit with some shock at the receipt of the notice of allowance as to some unexpected adjustment downward. Moreover, the applicant can better preserve or assemble the data required for a reconsideration of the adjustment if aware of what is coming. Furthermore, the applicant should not be penalized if the PTO does not calculate the extension properly. Accordingly, the fee should be refundable if the applicant's position is found correct.