Comments - Anderson

From: andrew.j.anderson@kodak.com
Sent: Thursday, May 18, 2000 6:50 PM
To: RCE
Subject: Changes to Application Examination and Provisional Application
Practice



From: Andrew J. Anderson

The following comments are submitted in response to the Interim
 rule published in the Federal Register Notice of March 20, 2000
(Fed. Reg. Vol. 65, No. 54, pp. 14865-73).

The "American Inventors Protection Act of 1999" simultaneously
changes 35 USC 119(e)(2) to remove the provisional application
copendency requirement for priority claims, and adds a new
section 35 USC 119(e)(3) to extend the pendency of a provisional
application to the next succeeding secular or business day if the
end of the 12 month term of a provisional application falls on a
Saturday, Sunday or Federal holiday.

While it is believed at least one of the goals of such changes is to
rectify the problem of late claims for priority for subsequently filed
111(a) applications wherein the 12 month term of a provisional
application has expired on a weekend or a Federal holiday, the
actual impact of the changes on the described problem is not clear.
One may argue that extending the pendency of a provisional
application to the next succeeding secular or business date under
new 35 USC 119(e)(3) actually has no impact on one's ability to
make a priority claim to the provisional application as copendency
is now no longer required in view of the changes to 35 USC 119(e)(2).
When further considering that the requirement in 35 USC 119(e)(1)
that a 111(a) nonprovisional application must be filed "not later than
12 months after the date on which the provisional application was
filed" in order to obtain the benefit of the provisional application filing
date was not changed, the impact of the combined effect of revised
section 35 USC 119(e)(2) and new section 35 USC 119(e)(3) is further
questionable.  While such uncertainty is based upon the legislative
changes and not the PTO implementating rule changes as set forth
in the Interim rule, it would be helpful if the rules could clarify the
PTO's interpretation of the impact of such legislative changes with
respect to this problem.

To the extent the PTO agrees that the purpose of new section
35 USC 119(e)(3) is to address the problem of late claims for priority
under the described circumstances, in view of the potential
misunderstanding discussed above it appears an explicit statement
explaining the impact of the legislative changes to 35 USC 119(e)(2)
and 119(e)(3) with respect to the requirements of 35 USC 119(e)(1)
would be helpful.  It is suggested that revised rule 37 CFR 1.78(a)(3)
as reported in the Interim rule should be further amended to include
an express statement such as:
 "Since the period of pendency of a provisional application shall
be extended to the next succeeding secular or business day under
35 U.S.C. 119(e)(3) and 37 CFR 1.7(b) if the day that is twelve months
after the filing of the provisional application falls on Saturday,
Sunday or on a Federal holiday within the District of Columbia, a
nonprovisional application filed under 35 USC 111(a) on such next
succeeding secular or business day shall be considered timely for
purposes of claiming priority of the filing date of the provisional
application under 35 USC 119(e)(1)."

Respectfully submitted,
Andrew J. Anderson