May 23, 2000
These comments are addressed to parts (2) and (3) of proposed rule 37 CFR
1.703 and part (12) and (13) of proposed rule 37 CFR 1.704.
Parts (2) and (3) of proposed rule 37 CFR 1.703 refer to the filing
date of a reply. ("reply under 1.111 was filed", "a reply in compliance with
1.113 was filed"). 37 CFR 1.8 provides that "correspondence required to be
filed in the Patent and Trademark Office within a set period of time will be
considered as being timely filed if the procedure described in this section
is followed." It is understood that it may take several days for the Patent
Office to receive mail sent with a Section 1.8 certificate of mailing and it
may take several more days for the Patent Office to enter a date of filing
into the computer. On May 22, 2000, I spoke to Robert A. Clarke, who
informed me that the date of filing is the date that the Patent Office
receives the paper and enters this information into the computer. Mr. Clarke
stated that responses should be filed by Express Mail or by facsimile in
order to obtain an earlier date of filing.
37 CFR 1.10 provides that any correspondence sent by US Express Mail
Post Office to Addressee will be considered filed in the Office on the date
of deposit with the US Postal Service. If this date of deposit cannot be
determined, the correspondence will be accorded the Office receipt date as
the filing date and reference is made to 37 CFR 1.6 (a). 37 CFR 1.6(a)
states that correspondence received in the Patent and Trademark Office is
stamped with the date of receipt. This rule does not state that the date of
receipt is the filing date.
Although 37 CFR 1.703 does not explicitly require that responses to
Office Actions be sent by Express Mail it implicitly requires this. If a
response is sent by facsimile, telephone calls to the Patent Office are
required to ensure that a "complete transmission" is received (37 CFR 1.6
(d)) resulting in additional work and expense. The use of Express Mail will
result in additional burdens and expense to applicants. Applicants and their
representatives will be required to wait on line at U.S. Post Offices to
obtain a date stamped receipt of Express Mail. Although Express Mail boxes
are available, applicants and their representatives must then monitor return
of the Express Mail receipt and be prepared to submit affidavits if the
Express Mail receipt is not returned.
Furthermore, in many locations, the U.S. Post Offices close before 6
p.m. leaving the applicants and their representatives with no satisfactory
way to obtain a date stamped receipt. As applicants and their
representatives will be under increased pressure to file responses within
the three month term set in Office Actions this will result in responses
that are not ready to be brought to a U.S. Post Office by 6 p.m. or earlier.
Most papers mailed by first class mail are received by the Patent Office
within a week of deposit with the US Postal Service. Use of first class
mail and a certificate of mailing under 37 CFR 1.8 will not delay an
Examiner from acting on an application and will eliminate the burden of
having to mail responses by Express Mail. The rules can be revised to
provide that the period of four months for an Examiner to issue an action or
notice of allowance is four months plus the number of days from the date the
response was mailed by first class mail and the date the paper is received
by the Patent Office.
The next point is the submission of a supplemental reply (37 CFR 1.704 (c)
In some cases, the filing of supplemental replies advance
prosecution of an application and may result in the issuance of a Notice of
Allowance rather than another Office Action. This will reduce the amount of
work that has to be done by an Examiner. It is foreseeable that a situation
will arise that a response is filed at the end of the 3 month term and after
review of the response it is determined that if a supplemental response is
filed prosecution may be advanced. The applicant or its representative may
refrain from filing the supplemental response because of the provisions of
37 CFR 1.704 (c) (12) which could result in a reduction of the patent term.
It is suggested that the proposed rule be revised so that the filing of a
supplemental response within 1 month of the response will not reduce the
number of days of the patent term. This will advance prosecution of the
application and will not increase the burden on the patent examiner.
- Janet Cord,Esq.
- Ladas & Parry
- 26 West 61st Street
- New York, NY 10023
- 212-708-1800 (p)