From

From: David A. Novais

Attention: Karin L. Tyson

The following comments are submitted in response to the interim rule

published in the Federal Register Notice of March 31, 2000 (Fed. Reg. Vol.

65, No. 63, pp 17215-17229)

Comments on PTO proposed Rules for Patent Term

Adjustment

The present comments focus on proposed section 1.703(f) of the rules. This

section discusses the calculation for periods of adjustment of a patent

term due to examination delay. Section 1.703(f) proposes that the date

indicated on any certificate of mailing or transmission under section 1.8

shall not be taken into account in this calculation. Therefore, although

the date indicated on a certificate of mailing or transmission under

section 1.8 is taken into account in determining timeliness in filing a

response to an action by the PTO, this date will not be used for

determining patent term adjustments. The result is that you can have a

timely filed response to an office action and at the same time fail to

"engage in reasonable efforts to conclude processing or examination of the

application" under section 1.704 of the proposed rules.

This would appear to be unfair to patent practitioners who are located

outside of the Washington DC metro area for the following reasons. First,

the practitioner would be forced to use costly express mail services to

secure an early filing date for responses, and second, any paper delayed by

the Post Office would adversely effect the practitcioners’ patent term

extensions. Therefore, under the rules a practitioner located in the

Washington DC area who prepares and hand-delivers a response to the PTO on

the day the response is due would be consider diligent, while a practioner

located outside of the Washington DC area who prepares and mails a response

several days or weeks before the due date may be considered non-diligent if

the response gets delayed in the mail.

Respectfully Submitted,

David A. Novais