| Subject:
Comments on proposals to amend 37 C.F.R. Sections 2.66(a) and 2.102(c) |
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To whom it may concern: |
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| I am writing to oppose the proposals to amend the sections referenced above, as outlined in Volume 68 Number 60 of the Federal Register, issued on March 28, 2003. | |
| (1) |
The Patent and Trademark Office (PTO) proposes to amend section 2.66 (a) so that it will no longer allow an applicant to revive an abandoned application based on unintentional delay unless the petition to revive is filed within two months of the mailing date of the notice of abandonment. It would eliminate the current provision that allows for the filing of a petition within two months of actual knowledge of the abandonment if the applicant did not receive the notice of abandonment. This would penalize diligent applicants who, for some reason not their fault, do not receive a notice of abandonment from the PTO. For example, one of our paralegals recently made a docketing error by entering the Notice of Allowance date as one month later than its actual issuance date. As a result, we believed that we had timely filed an extension of time to file a statement of use nearly one month after the deadline for filing it had passed -- the E-TEAS system accepted the filing. We did not discover the error until 4 months later, as we prepared to file a statement of use for the application and realized that the application had been abandoned. We had not received a notice of abandonment, but PTO records showed that the application had been abandoned more than two months earlier. In this case, even though we acted diligently by checking status within six months of the last action, we would not have been able to file a petition to revive under the proposed rule. The rule has potential for unfair application in cases where applicants do not receive a notice of abandonment through PTO or mail carrier error. |
| (2) |
The PTO also proposes to amend section 2.102(c) to disallow extensions of time to oppose past 120 days after publication. It is rare for matters to settle this quickly, and being able to get extensions of time to oppose facilitates settlement discussions. I understand why the PTO wants to set a limit on extension requests, as it does not want cases to remain in limbo indefinitely, but 120 days is far too short a time. I would suggest extending this proposed limit for requesting extensions to 180 days, retaining the current requirement that the applicant's consent be obtained for extensions past 120 days. |
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Michelle Brownlee |
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