Comments from John R. Inge

NAME:               JOHN R. INGE
COMPANY:            SUGHRUE, MION, ZINN, MACPEAK & SEAS

ADDR-1:             TOEI HISHI SHIMBASHI BLDG, 4F
                    13-5, NISHI SHIMBASHI 1-CHOME
CITY, STATE ZIP:    MINATO-KU, TOKYO 105, JAPAN
TELEPHONE:          +81-3-3503-3760
FAX:                +81-2-3503-3756
REPRESENT:          UNCLEAR


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 009-0001.TXT

          I think that there may be an inconsistency between proposed
new PTO Rule 701 (37 C.F.R.  1.701) and newly amended Section 154 of
the Patent Statute.

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 009-0002.TXT

          Section 154(b)(2), in connection with extensions for
appellate review, states: ^... the term of the patent shall be
extended for a penod of time but in no case more than 5 years."
Section 154(b)(3) then states that gThe penod of extension referred
to in paragraph (4 ... (B) shall be reduced by any time attributable
to appellate review before the expiration of 3 years from the filing
date of the application for patent ..." atalics added.)

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 009-0003.TXT

          In other words, the period of extension, which in no event
can be more than 5 years, shall be reduced by times attributable to
appellate review occurring within 3 years of the application's filing
date. Thus, it would appear that Section 154 anticipates that the
5-year limit will be imposed before the subtraction for appellate
reviQw occurring within 3 years of filing.

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 009-0004.TXT

          On the other hand, proposed new Rule 701 requires that the
5-year limit be imposed after the subtraction for such periods of
appellate review. That is, the 5- year limit imposed by 701 (b) is
applied after the subtraction for periods of appellate review
occuring within 3 years of filing imposed by 701 (d)(l).

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 009-0005.TXT

          Admittedly, this difference would not result in any change
in patent term in most instances. However, for example, if an
application were pending for one year prior to the filing of a Notice
of Appeal, and then went through a sequence of a PTO appeal followed
by court proceedings lasting a total of 6 years, then a 4-year
extension wuld result Eom applicafion of pro~ed Ru]e 701, whHe only a
3->= extension wu]d result bom Secfion 154 ~t lent the ww I rei the
Statuth.

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 009-0006.TXT

          I tould supst that this k cl=Med. Sthou~ I kliew that
propmed Rule 701 prrdes the Mrer result to the patentee, I think that
the presently proposed lmpa~ mw not Kcurately reRect the amendatow
lmpa~ of Secfion 154 br i1 situations.

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 009-0007.TXT

Thank pu ww much br pur ind considerabon.

Last Modified: March 1995