The undersigned hereby submits the following comments on the Notice of

The undersigned hereby submits the following comments on the Notice of

Proposed Rulemaking regarding Changes to Implement Patent Term Adjustment

Under Twenty-Year Patent Term (65 Fed. Reg. 17215). The undersigned is a

partner in the New York City intellectual property law firm of Fish & Neave,

but these comments are personal and not those of Fish & Neave.

The undersigned is distressed that the Patent and Trademark Office ("PTO")

is choosing to implement the patent term adjustment provisions of the

American Inventors Protection Act ("the Act") in a manner that unnecessarily

burdens applicants. The undersigned understands that the Act placed many

new burdens on the PTO, to be implemented in a very short time. However,

the PTO's grievance should be with Congress, not the applicant community.

It appears to the undersigned that the proposed rules unfairly set off

applicant "delay" of one type, which may not result in patent term

adjustment (even before calculation of the reduction of adjustment), against

PTO delays of another type that do result in patent term adjustment. For

example, if an applicant files an application with an unsigned declaration

(37 CFR 1.704(c)(6)) and follows up with a signed declaration two months

later, but the Examiner nevertheless is able to act within 14 months of the

filing date, and the PTO later delays issuance of the patent until six

months after payment of the issue fee, there is no logical reason why the

patentee should not be entitled to the term adjustment set forth in 35 USC

154(b)(1)(A)(4). Yet under the proposed rules, the patentee would not get

that adjustment, because the two month "delay" in filing the signed

declaration would be set off against the PTO delay in issuing the patent,

even though the initial "delay" in fact did not delay prosecution.

In another example, imagine a case where through no fault of applicant, the

first action in the application does not issue until 15 months after filing,

meaning the patentee would be entitled to a one-month term adjustment. If

applicant files a Notice of Appeal and follows up with an appeal brief one

month later, and the Examiner is still able to issue an Answer within four

months of the Notice of Appeal, then under the proposed rules the one month

"delay" in filing the appeal brief would be set off against the delay in

issuing the first action, so that the net term adjustment is zero. But if

the "delay" in filing the appeal brief did not prevent the Examiner from

issuing a timely answer, why should the patentee not receive the one-month

term adjustment?

Other examples can be constructed. The point is, the PTO should revise the

proposed regulations so that applicant delay of one type is offset against

PTO delay of another type only when it is logical for that to happen.

In addition, in two specific instances, the proposed rules create client

relations difficulties for practitioners.

First, Congress set the deadline for a first action by the PTO at 14 months

from the "actual filing date" of an application in the United States. In

the case of a PCT national phase application, the PTO is interpreting that

to mean the Section 363 filing date, which is technically correct. However,

the undersigned believes that Congress intended "actual filing date in the

United States" in its vernacular sense -- i.e., for a PCT application, the

Section 371 date. Given that, the proposed rules make sense because they

subtract out of any term adjustment the period between the Section 363 and

371 dates. However, doing so creates a client relations problem for

practitioners, because the client applicant will see a determination by the

PTO that the practitioner caused a delay resulting in loss of what appears

to be otherwise deserved term adjustment. Although this is the result of

poor drafting by Congress, and the PTO cannot change the statute, a better

approach would be for the PTO to deem, by regulation, the "actual filing

date" of a PCT national phase application for term adjustment purposes to be

the Section 371 date. This would not be beyond the authority of the PTO; in

the view of the undersigned, the PTO would be going no farther than it did

in deeming, under 37 CFR 1.53(d), that a CPA request, which is a separate

paper from the specification, is the reference in the specification required

by 35 USC 120.

Second, Congress required the PTO to act on an appeal (by issuing an

Examiner's Answer) within 4 months of the appeal "being taken," which

traditionally refers to the filing of the Notice of Appeal. The PTO

correctly points out that it cannot begin to act until the appeal brief is

filed, and proposes to reduce any term adjustment by the time between the

filing of a Notice of Appeal and the filing of an appeal brief. Again, the

result comes out the same as what Congress probably intended, which is that

the PTO act within four months of the filing of the appeal brief. Again,

however, it causes client relations difficulties. Again, the PTO cannot

change the statute, but again, the PTO could deem, by regulation, the

"taking of an appeal" for term adjustment purposes to be the filing of the

appeal brief.

Respectfully submitted,

Jeffrey H. Ingerman

Reg. No. 31,069

Fish & Neave

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New York, New York 10020-1104