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Commissioner for Patents

Commissioner for Patents

Box Comments - Patents

Washington, DC 20231

ATTN: Karin L. Tyson

 

May 30, 2000

Dear Director Dickinson:

On behalf of Sterne, Kessler, Goldstein & Fox, P.L.L.C., I offer these remarks in response to the request for comments on the Changes to Implement Patent Term Adjustments Under Twenty-Year Patent Term (65 FR 17215) published on March 31, 2000. These proposed rules attempt to implement the patent term adjustments provided by Congress in the "American Inventors Protection Act of 1999" which compensates patentees for delays occurring during the application process. We believe that the proposed rules are inconsistent with the legislative intent of the statute, and we request modification and/or clarification of the proposed rules.

Throughout the legislative history, the Committee on the Judiciary expressed its intention that the new law compensate diligent applicants who experience delays beyond their control during prosecution of their patent application. Any reduction of the patent term adjustment period was the outcome of the Congress' intent to prevent "the few applicants who engage in intentional or unjustifiable delay tactics" from abusing the system. H.R. Rep. No. 105-39, at 66 (1997). Hence, a "reasonable efforts" clause was included in 35 U.S.C. § 154(b)(2)(C) "to avoid the submarine patent problem." Ibid. The intent of the Congress was that "only the most egregious and obvious delay tactics will go unrewarded by this provision." Ibid. Additionally, the legislative history indicates that "there should be no time period where a diligent patent applicant may lose term for reasons beyond his or her control without an opportunity for compensation." Ibid.

It appears that the proposed rules at least in some instances fall short of carrying out the Congress' intent. The examples of the types of events that would trigger reduction of the patent term adjustment (PTA) period are so restrictive that in effect would only allow a perfect applicant (rather than a diligent applicant, as intended by the Congress) be compensated for the PTO delays.

The comments that follow, more specifically point out the shortcomings of the proposed rules to implement the spirit of the statute:

§ 1.703 (b)(1) - After an applicant files a request for continued examination (RCE) of the application the patent term adjustment period should only be shortened from the date of filing of the RCE up to the time that a notice of allowance, notice of allowability, or notice of suspension for a potential interference is mailed.

Time spent in suspension for a potential interference is completely under PTO control. Cases are often suspended for years before an interference is declared. Applicants who did not file a RCE during prosecution and who are later suspended for a potential interference would have the potential of regaining the time spent suspended under the "three year to issue" part of the statute. However, as written, the rules unfairly compromise applicants who have filed a RCE and then later receive a notice of allowability with a suspension for a potential interference as an applicant who had filed a RCE could not recover time spent suspended for a potential interference. Once the notice of suspension for a potential interference is mailed, it does not matter whether or not a RCE had been filed in the case.

Time subtracted for the filing of a RCE should only extend from the date of the filing of the RCE until the date examination is complete and closed, as indicated by the mailing of the notice of allowance and issue fee due, as with any application that had not utilized a RCE. The statute is directed to time spent in continued examination. However, once examination is closed, a RCE application is like any other application.

At a minimum, time after payment of the issue fee or completion of all formalities (filing of formal drawings, etc) should not be included simply because a RCE had been filed while the case was in prosecution. Once the issue fee is paid, the application is under the control of the PTO and there is no reason to distinguish between an applicant who had utilized RCE during examination and an applicant who had not utilized a RCE during examination.

§ 1.704 (b) - It is requested that "or given" be deleted from this rule where it recites "measuring such three month period from the date the notice of action was mailed or given to the applicant. . . ." This rule if read to mean that notice from the Examiner to the applicant may be given by means other than a written Office Action, would make it impractical for both the PTO and the applicant to have accurate records and accounting for such dates, e.g. a date of a telephone call to the applicant or his representative.

It should be noted that 37 C.F.R. § 1.2 specifically requires that any correspondence with the PTO be in writing. This rule achieves the purpose of avoiding mis-communications as to the content of the communications as well as keeping track of the dates and the time periods. It is essential that the same safeguard be applied to the communication of any notice from the PTO to the applicant.

Oral notices over the telephone for a Restriction Requirement, for example, should not trigger the 3 month time period beyond which any extensions of time are counted against the patent term adjustment (PTA) period. Often it is not possible to ascertain the propriety of the Restriction Requirement without having seen a coherent written statement from the Examiner. Additionally, the applicant's representative may not have any authority to make a decision prior to presenting to the applicant/client, the Examiner's reasons for restricting the claims and providing his/her legal analysis and recommendations.

Other circumstances which may be interpreted as the PTO having "given" a notice to the applicant, may be when a voice message is left on the applicant's or the applicant's representative telephone answering machine. Such "notices" are not sufficient as the Examiner may have reached a wrong voice mailbox, the applicant or the applicant's representative may not be able to receive his/her message for a variety of reasons, the message may not get recorded properly or become corrupted, and a multitude of other similar circumstances.

Also, it is pointed out that in many cases, the indicated date of mailing of an Office Action is several days (occasionally weeks) before the actual date of mailing of the Office Action, i.e. the date which appears on the envelope in which the Office Action is received from the PTO. Hence, if the reply period is counted from the date of issue of an Office Action rather than the day it was actually mailed out of the office (or received by the applicant) it would deny unjustly the applicant, the amount of time s/he is entitled to in replying to the notice.

This requirement should be compared and contrasted with the inverse of this situation, i.e. the date from which the PTO will begin to count against the 14/4/4/4 periods. The PTO has indicated that the start of each of these periods is triggered on the date the applicant's filing is received in the PTO mail room (not honoring the date that appears on a Certificate of Mailing). It is respectfully requested that this bi-standard be eliminated.

 

§ 1.704 (c)(6) - It is not clear why the period of reduction of the PTA period should be counted starting from the filing date of the application or the date of entry into the national phase, rather than the date the PTO issues a notice to the applicant regarding the non-compliance.

At least in one set of circumstances, the proposed rule would in effect penalize an applicant for the PTO's delay in assigning an application number at the filing date of the application. This is so because once an application is filed, the rules require that any inventors' declaration submitted to the PTO identify the application by its application number. Often, the PTO does not assign the application number weeks if not months after the filing date. As a result, the applicant cannot file the declaration until the PTO assigns the application number. Since it is the PTO, rather than the applicant, who has control over the assignment of the application number, it is improper to penalize the applicant for this post filing delay in filing of the declaration.

Also, it is not clear why a post-filing submission such as a supplemental or substitute declaration should trigger the reduction of the PTA period. In many instances, it is necessary to file a supplemental or substitute declaration. For example, such a submission may be necessary upon amendment of the claims during the examination process when the allowable claims have substantially changed from the claims as originally filed. These circumstances beyond the control of a diligent applicant should not trigger the reduction of the PTA period. The Congress intended that only the most egregious applicants who have engaged in obvious delay tactics go unrewarded. Therefore, in the absence of clear evidence showing egregious behavior by the applicant to delay processing and examination of the application, the PTA period should not be reduced because of post-filing submissions to correct or supplement inventorship.

Furthermore, this proposed rule is in conflict with rule 47 with regard to the diligence requirements of the applicant and frustrates the achievement of a fundamental objective of the patent law, i.e. encouraging an inventor to file his application for patent as soon as possible. Rule 47 requires that the applicant employ diligent effort to obtain signatures of all inventors. Only when a joint inventor cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. Under such circumstances, an application cannot be completed until enough time and effort is spent to show diligence on the part of the signing applicant. Since the inventorship of a claim can only be determined when the claim has been finalized, and because of the mentioned rule 47 requirement of diligence, it would not be possible to file a complete declaration under rule 47 for days, weeks, if not months after the application is ready for filing. The proposed rule 704(c)(6) would, therefore, discourage an applicant from filing the application as soon as possible since s/he cannot yet file the declaration under rule 47.

§ 1.704 (c)(9) - This rule is too harsh and/or unclear as to the required extent of compliance with the requirements of filing the various parts of the application, e.g. specification, title, abstract, figures, and the sequence listing, under the applicable rules of practice. It appears to be requiring that these application parts may not contain any errors or need any modifications to better describe the invention. Those applicants who arguably fail to be in 100% compliance with the applicable rules would be penalized by reduction of the PTA period starting from the date of filing through the date on which the applicant makes the final adjustment. Many post-filing adjustments to these various parts of the application are simple changes and affect the form rather than the substance of the application. They are routinely discussed in the Office Actions and the applicant is given a period of time to make the appropriate changes. As all other issues raised in an Office Action, applicant should not be penalized for taking three months or less to argue against the objection or rejection or bring the application into compliance. However, the proposed rule as written would penalize the applicant for the entire period between the filing date and the date the applicant complies with the requirement.

Additionally, many of the potential changes to these parts of the application are beyond the control of the applicant. For example, upon examination of an application, the Examiner may amend the title (note: the Examiner may do so voluntarily and without the consent of the applicant) or require the applicant to amend the abstract to reflect the ultimately allowable claims. Such amendments may also be required when restriction of the claims and division of the application redirect the focus of each divisional application. An applicant who has filed an application which contains the enumerated parts cannot know in advance whether a given Examiner will object to the title or the abstract upon examination of the application or how, if at all, the claims may be restricted.

Similar penalties are imposed on any applicant who, at the time of filing the application, fails to file formal drawings or a sequence listing in compliance with the applicable regulations. Thus, if the patent office fails to act on a case for many years, and then determines that the drawings or the sequence listing is not in compliance, the diligent applicant will not be awarded any patent term adjustment because of the offsetting reduction. Such results cannot be the intent of the Congress.

The Federal Register Notice indicates that the "Office must require these items during its preexamination processing of an application to implement the pre-grant publication provisions." Though this may be a valid reason for requiring the various parts of the application to be present at the time of filing, it does not justify penalizing diligent applicants, such as those described above, who may be required to or choose to amend the title, the abstract, or even the figures. Furthermore, an error in the sequence listing, when recognized and then diligently corrected, should not delay the pre-grant publication process. At a minimum, once the application has been published, any changes to these various parts of the application should not trigger the reduction of PTA.

Generally, the patent term should be reduced only during the time taken for extensions of time to bring the application in full compliance. In those few cases where the record clearly shows that amending a figure or resubmitting multiple sequence listings delays substantive examination, the patent term should be reduced from the time the applicant is notified of the problem to the time that the application is brought into compliance.

§§ 1.704 (c)(10), (12), (14), and (15) - These sections state that filing of "other paper" (preliminary or non) under certain conditions will result in reduction of any patent term adjustment period. Thus, if a diligent applicant files a supplemental IDS within three months of learning of the reference (e.g., under 1.97(c)(1)), the applicant will still be penalized by the reduction of the PTA period. The citation of references in corresponding foreign applications is clearly beyond the control of a diligent applicant, and thus should not be used when calculating PTA period reductions. At a minimum, these sections should be modified to exclude the filing of a supplemental IDS under Rule 1.97(c)(1) and (d).

§ 1.704 (c)(12) unlike sections (10), and (14) does not even recite that the reduction period will be triggered if the filing of such "other paper" takes place "less than one month before the mailing of an Office action . . . or notice of allowance . . . that requires the mailing of a supplemental Office action or supplemental notice of allowance." There are a multitude of papers such as a request for recordation of assignment, small entity status, and the like, which do impede the progress of the substantive examination of the application. It is not clear why the applicant should be penalized for filing such "other papers."

Also, there are many circumstances that the PTO loses the applicant's filings. In such situations, an improper Notice of Abandonment may have been issued or the applicant may have found out of the loss of the documents through a Status Inquiry or by other means. An applicant resubmitting the lost filing or petitioning to reinstate an improperly abandoned application must not be penalized for PTO's error and delay.

§ 1.704 (c)(13) - This proposed rule arbitrarily requires filing of the appeal brief with the notice of appeal. The applicant who does not file the brief with the notice will be penalized for any time after the filing of the notice until a brief or an amendment under rule 113 is filed. This rule improperly penalizes diligent applicants. For example, an applicant files a reply to the final Office Action in two months after the mailing of the final Office Action, and the Examiner takes a full month to issue the Advisory Action. Under such circumstances, the applicant is bound to lose time towards reduction of the PTA period as s/he cannot be reasonably expected to be able to file an appropriate appeal brief with the notice of appeal on the same day that the Advisory Action is mailed by the PTO. Clearly, the applicant has been diligent in such a circumstance having responded to the Office Action in less than the allotted three months. Nevertheless, and contrary to the Congress' intent, the PTO would reduce any PTA period to which s/he may be entitled.

The applicant should be given the regularly allotted two month time period after the filing of a Notice of Appeal, to prepare and file an appeal brief or an amendment under rule 113. Absent clear evidence of intentional or unjustifiable delays on part of the applicant, the PTO should not arbitrarily penalize a diligent applicant, particularly for delays not under his/her control.

§ 1.704 (c)(14) - In the same way that rule § 1.704 (c)(15) caps the period of reduction of PTA at 4 months, this rule should also cap the period at 4 months.

Also, it is not clear how strictly the term "designated" within the phrase "other than a decision designated as containing a new ground of rejection" will be construed. It should be noted that the intention of the Congress was that "the language [of the decision of the board] should not be viewed in a mechanistic way." H.R. Rep. No. 105-39, at 66 (1997). Hence, as stated in the legislative history, the PTO "should look carefully at the substance of each particular case and not arbitrarily deny any extension of term simply because an application was not immediately ready for patent grant following an action by the Board or the [c]ourt." Ibid. For example, the PTO was warned from arbitrarily denying any term adjustment in cases that have emerged part victorious from interferences or appeals.

Conclusion:

We urge the PTO to modify the proposed rules to reflect more fairly the legislative intent of this statute. Although there may be a "few applicants who engage in intentional or unjustifiable delay tactics," and thus abuse the system, the legislative history makes it clear that "only the most egregious and obvious delay tactics will go unrewarded" by patent term adjustment. H.R. Rep. No. 105-39, at 66 (1997). Therefore, in order to properly implement the statute, reflecting the intent of the Congress, the PTO should err on the side of compensating too much than too little.

Sincerely,

 

Raz E. Fleshner, Esq.

Sterne, Kessler, Goldstein & Fox, P.L.L.C.

United States Patent and Trademark Office
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