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Comment re 1

Comment re 1.18(e) and (f):   

The fees for filing an application for patent term adjustment under Rule 1.705 and for filing a request for reinstatement of all or part of the term reduced pursuant to Rule 1.704(b) under 1.18(e) and (f) should be reduced for small entities. Understandably, this would result in an increase in the fee for large entities, but it would be in conformance with U.S. patent public policy allowing small entities to take full advantage of the U.S. patent system.    

Comment re Rule 1.702(a)(1)   

The inclusion of a restriction requirement or election of species  requirement as an action that satisfies the USPTO's congressional mandate  to issue an action within 14 months is likely to increase the issuance of  spurious, baseless, or at least questionable, restriction or election  requirements.  Any improper election or restriction requirement is, of course, an undue  burden on the Applicant. Increasing the likelihood of such actions should  be avoided.  Only a first office action on the merits (FOAM) should be sufficient for satisfying the USPTO's statutory requirement to issue an action within 14  months. This modification to the proposed rules would also help to  minimize the total pendency of patent applications and would be more  inline with the congressional intent of the new legislation.  

Comment re Rule 1.704:   

The Patent Office rule appears to be based upon a strange and flawed presumption that the unreasonable delays within the Patent Office should be excused or offset by delays on the Applicant's part. This presumption often results in a double counting or penalty against the Applicant's resulting patent term due to the Applicant's "delay". For example, in a patent issuing upon an application in which the Patent Office delayed in responding to an Amendment by 4 months (8 months from reply), but where the Applicant delayed in prosecution by 3 months (3 month extension of time in responding to the first office action) the patent term extension granted is reduced to 1 month. Without the Applicant's delay, the entire term of the issued patent would be extended by 6 months, not just the 3 months due to "applicant's delay". Specifically, the patent would, presumably, issue 3 months sooner and the patent term extension would be 3 months longer. It appears that the Applicant is being penalized twice for the manner in which he chooses to prosecute his application which is categorized by the USPTO as the Applicant's delay. In short, Applicant's delays are already counted against him by delaying the issuance of the patent and such delays should not be counted twice by both delaying the issue date and reducing the total patent term. The Applicant's delay should only be considered where the delay would otherwise be counted in the calculated extension. In other words, the extension granted should be reduced where the Applicant's delay itself results in the term extension. The proposed rules have not been drafted in this manner. The current construction or application of the proposed rules is not required by the statute and is against the legislative intent of the statute. Section 4402 of the patent term guarantee act of 1999 sets forth two distinct adjustments of patent term in sections (b)(1)(A) {The 14-4-4-4 rules} and (b) (1) (B) {the three year pendency rule}. Section (b)(2)(C) sets forth reduction of the period for adjustment. Sections (b)(2)(C)(i) and (iii) indicate that the period of patent term adjustment under paragraph 1 shall be reduced by a period of time during which the Applicant failed to engage in reasonable efforts to conclude prosecution and that the Director shall prescribe regulations identifying such circumstances. Section (b)(2)(C)(ii) sets forth that the patent term adjustment of paragraph Section (b)(1)(B) will be reduced by the period of time beyond three months that an Applicant takes to respond to an office action. This is explicitly limited to Section (b)(1)(B) extensions relating to the three year term. This certainly makes sense because in this circumstance the excessive pendency over three years can be attributed, in part, to the Applicant and the Applicant should not receive a patent term extension due to his own delay. The proposed rules have expanded this and used the Applicant's extension of time to offset all patent office delays {i.e., including the 14-4-4-4 adjustments}. This result is certainly not required by the statute and seems at odds with both the wording and intent of the statute. The statute explicitly discussed Applicant's extensions of time {greater than three months} only in respect to section (b)(1)(B). Had Congress wished this to apply to both sections (b)(1)(A) and (B), it certainly could have and would have said so without the explicit limitation to section (b)(1)(B). In conclusion, the Applicant's failure to engage in reasonable efforts to conclude prosecution of the application should be prescribed in the regulations as those actions which would otherwise result in a term extension.   

Comment re Proposed rule 1.704 (c) (1)  

The suspension of action at applicants request should only be considered as an unreasonable effort to conclude prosecution with regard to any period of adjustment that this suspension has caused. For example if the pendency is over three years then the adjustment should be reduced by the suspension of action at the applicants request. Currently the applicant is already being penalized in terms of a shortened patent term for requesting a suspension. Offsetting inappropriate patent office delays not associated with applicant's request for suspension of action by the time in suspension is clearly inappropriate. 

Comment re Proposed rule 1.704 (c) (2)  

The deferral of issuance of a patent at applicants request should only be considered as an unreasonable effort to conclude prosecution with regard to any period of adjustment under rule 1.703 (a) (6) and (b). Currently the applicant is already being penalized in terms of a shortened patent term for requesting a deferral in the issuance of the patent (i.e. the patent will naturally issue later). Offsetting inappropriate patent office delays not associated with applicant's request for deferral of the issuance is clearly inappropriate. 

Comment re Rule 1.704(c)(3)

The rule seems to penalize applicants even in those circumstances where the abandonment were due to a patent office error {such as a response lost in the patent office or placed in the file and not entered in PALM}. In such cases the abandonment is routinely withdrawn, but now the patent term extension will be effected causing the applicant to petition (with additional fee) under rule 1.705. The rule should be limited to unintentional abandonment. "Unavoidable" abandonment should not invoke this reduction since, by definition, the applicants have shown to the satisfaction of the commissioner that the abandonment was unavoidable. Finally the enumerated reductions in rule 704 should be limited to only those adjustments in patent term to which they are specifically related. 

Comment re Proposed rule 1.704 (c) (5)  The conversion of a provisional application should only be  considered as an unreasonable effort to conclude prosecution with regard  to any period of adjustment under rule 703 (a)(1) and (b) that this  conversion may have caused. For example if the pendency is over three  years then the adjustment should be reduced by the pendency of the  application until the conversion. Currently the applicant is receiving a shortened patent term for converting a provisional application since the patent term in such a converted case will begin with the filing date of the {originally provisional} application. The term is "shortened" as opposed to filing a regular application claiming the benefit of the provisional application. Offsetting inappropriate patent office delays not associated with applicant's conversion is inappropriate. 

Comment re Proposed rule 1.704 (c) (6)  

The filing of an "informal" application should only be considered as  an unreasonable effort to conclude prosecution with regard to any period  of adjustment under rule 703 (a) (1) and (b) that this informal or  incomplete filing has caused. The applicant is already being penalized in  terms of a shortened patent term for informal or incomplete filing due to,  presumably, a longer pendency. Offsetting inappropriate patent office  delays not associated with applicant's informal filing is inappropriate. 

Comment re Proposed rule 1.704 (c) (9)  The filing of an application on papers not in compliance with rule  52 having a title and an abstract does not necessarily delay or impede  examination or prosecution. Examiners often not the omissions, if any, in  the first office action and request the applicant to attend to the  appropriate corrections. It does not appear that this should always,  automatically, be counted against an extension in patent term to which the  applicant would otherwise be required. Furthermore, offsetting  inappropriate patent office delays not associated with applicant's actions  is inappropriate. 

Comment re Proposed rule 1.704 (c) (11)(12)  The submission of a supplemental reply should only be considered as  an unreasonable effort to conclude prosecution with regard to any period  of adjustment that this supplemental reply has actually caused.  Offsetting inappropriate patent office delays not associated with  applicant's actions is clearly inappropriate. Supplemental reply's are often a result of interviews with the examiner, in which case a supplemental reply advances the prosecution faster than awaiting an official response from the office and then replying to this response. In this regard the proposed rule may actually increase total pendency by discouraging filings which would otherwise expedite the prosecution. For example, in an application where the pantentee would be entitled to significant term adjustment the applicant may be reluctant to file a supplemental reply, even if it expedites the application to issue, 

Comment re Proposed rule 1.704 (c) (13)  The failure to file an appeal brief with the notice of appeal should  not be considered as an unreasonable delay. The filing of a notice of  appeal is often required to allow the applicant time to receive and  respond to an after final response from the PTO. The requirement that the  appeal brief be filed with the notice can result in many needless appeal  briefs and also needless examiner's answers. This will waste the patent  office and the applicant's time and recourses. It is suggested that the  adjustment under rule 703 (a) (4) begin with the filing of the appeal brief and the reduction in rule 704(c) (13) be limited to offsetting only  adjustments under rule 703(b). Alternatively proposed rule 704 (13)  should be limited to offsetting only adjustments due to rule (703 (a) (4)  and (b). Offsetting inappropriate patent office delays not associated  with applicant's actions is clearly inappropriate.


Blynn L. Shideler
The Webb Law Firm
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436 Seventh Ave.
Pittsburgh, PA 15219-1818
Phone (412) 471-8815
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United States Patent and Trademark Office
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Last Modified: 9/16/2009 12:14:49 PM