Comments - colby
Sent: Friday, May 19, 2000 4:31 PM
Subject: Comments Regarding Changes to Application Examination and
Provisi onal Application Practice
Dear Mr. Bahr,
In the Federal Register Notice (Vol . 65, No. 54, Pp.
14865-14873; March 20, 2000; "Changes to Application Examination and
Provisional Application Practice"), comments were requested regarding
changes made to 37 C.F.R. §§ 1.17(i) and 1.53, relating to implementation of
§4801(a) of the American Inventors Protection Act of 1999 ("AIPA").
As I understand the proposed new rule 37 C.F.R. §1.53(c)(3),
an application which is filed as a provisional patent application can
(regardless of whether the application includes a claim) be converted to a
non-provisional application by filing a request ("a petition" in 37 C.F.R.
§1.17(i)), accompanied by a fee and (in the event the provisional
application does not include a claim) a preliminary amendment which adds at
least one claim. It is also my understanding that this request/petition can
be filed prior to the earlier of
(i) abandonment of the provisional application and
(ii) expiration of twelve months after the filing date of the
Patent Term Calculation
Proposed new rule 37 C.F.R. §1.53(c)(3) provides that a
non-provisional application filed by conversion of a provisional application
will be accorded the original filing date of the provisional application.
Thus, pendency of a provisional application which is converted to a
non-provisional application will be deducted from the term of any patent
which claims priority to the non-provisional application. This seems to me
to be contrary to at least the spirit of 35 U.S.C. §154(a)(3).
The Federal Register Notice points out that AIPA contains no
provision for according the 'converted' non-provisional application a filing
date other than the original filing date of the provisional application.
However, AIPA also contains no provision for deducting pendency of a
subsequently-converted provisional application from the term of a patent
entitled to priority to that provisional application. A general rule of
statutory construction is that a statute should, in the absence of some
indication of a contrary intent by the legislature, generally be given the
plain meaning attributable to its wording, at least to the extent that the
wording does not lead to an absurd result.
Section 4801(a) of AIPA provides that "upon" timely request
and as prescribed by the Director, a provisional application may be treated
as a non-provisional application. The plain meaning of "upon" seems to me
to be 'following' or 'after'. Thus, the plain meaning of this section
appears to me to be that following a timely request by the applicant, a
provisional application can (i.e. thereafter) be treated as a
non-provisional application. This section does not seem to me to mandate
that the application be retroactively treated as if it has been a
non-provisional application as of its filing date. Instead, §4801 of AIPA
appears to me to indicate that the Director should prescribe rules by which
a non-provisional application can be filed by converting a provisional
application (i.e. preserving separate provisional and non-provisional
pendency periods). In my view, these rules should indicate that the filing
date accorded to the corresponding non-provisional application should be the
date on which the request to convert the provisional application is filed in
the Office (presumably referencing the Express Mail procedures of 37 C.F.R.
My view of the plain meaning of §4801(a) of AIPA preserves
the legislative intent to provide a period of domestic priority
(corresponding to the term of a provisional patent application) which does
not reduce the term of a patent which claims priority to the provisional
If the Office's understanding of Congress' intent in
enacting §4801(a) of AIPA is accurate, then it seems to me that proposed new
rule 37 C.F.R. §1.53(c)(3) does not permit patent applicants to do anything
they are not able to do now, unless the 'converted' application is to be
advanced in the order of examination to match the filing date of the
provisional application. The Federal Register notice was silent with regard
to the order in which non-provisional applications filed by conversion of a
provisional application will be examined.
If non-provisional applications filed by converting a
provisional application are not to be accorded the order-of-examination
benefit of the filing date of the provisional application, then the Office's
interpretation of the intent behind §4801(a) of AIPA seems to me to be
untenable. Patent applicants can presently file a non-provisional
application which claims priority to the filing date of a provisional
application up to one year after filing the provisional. Applicants can
also disclaim the terminal portion of a patent issuing on such a
non-provisional application which extends beyond twenty years following the
provisional application filing date. According to the Office's
interpretation, applicants can now perform these same functions and be
charged an additional fee. It does not seem reasonable to me that this was
Order of Examination
In order to aid practitioners who wish to inform their
clients regarding when an initial office action can be expected from the
Office, it would be helpful if the Office would provide clarification
regarding the order in which applications will be examined, in the event the
proposed rule is adopted. Specifically, will a non-provisional patent
application filed by converting a provisional patent application (per
proposed new rule 37 C.F.R. §1.53(c)(3)) be examined before non-provisional
applications (filed as such, pursuant to 37 C.F.R. § 1.53(b)) which are
filed after filing of the provisional application, but prior to conversion
of the provisional application to a non-provisional application.
For example, consider the following situation: Provisional
application 'A' is filed on January 1, 2001. Non-related non-provisional
application 'B' is filed on June 1, 2001. Provisional application 'A' is
converted to non-provisional application 'A' (per proposed new rule 37
C.F.R. §1.53(c)(3)) on December 31, 2001. If non-provisional applications
'A' and 'B' are assigned to the same Examiner, which should be acted upon
Consideration of these comments and revision of proposed new
rule 37 C.F.R. 1.53(c)(3) as suggested herein are respectfully requested.
If I can better explain this comment, or if I can be of
assistance in any other manner, please do not hesitate to contact me using
the information set forth below.
Very truly yours,
Gary D. Colby, Ph.D., J.D.
Akin, Gump, Strauss, Hauer & Feld, L.L.P.
One Commerce Square, Suite 2200
2005 Market Street
Philadelphia, PA 19103-7086
215-965-1200 (General Inquiries)
215-965-1285 (Direct to GDC)