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Assistant Commissioner of Patents Washington DC 20231  Dear Sir

Assistant Commissioner of Patents
Washington DC 20231

Dear Sir,

Texas Instruments' comments on the proposed rules concerning changes to implement Patent Term Adjustment (PTA) under a twenty year patent term, are as follows:

The Office proposes in Section 1.703(f) that the date of mailing or transmission by first class mail under § 1.8 be taken into account in determining timeliness of filing a response, but that the date of filing (§ 1.6) will be the date used in patent term adjustment.  Texas Instruments strongly opposes this proposed rule.

Delays in the mail received by the Office have continued to be the result of mail room delays within the Office, any minor delays introduced by the U.S. Post Office, under most circumstances, will be insignificant when compared with those delays.  Furthermore, the Office's proposed solution of using Express Mail documents discriminates against those located outside the Washington, D.C. area by forcing them to spend more than 20 times the first class rate for Express Mail service, while those located nearer to the Office will not have to expend those higher fees.  The Office should adopt a procedure which is fair to all, regardless of their location.  We believe that the current rule should remain and that the § 1.8 date be utilized in any patent term adjustment. 

The proposed Section 1.704(c)(6) establishes that failure to file the basic filing fee, an English translation (if required) and an oath or declaration executed by all inventors will constitute a failure of applicant to engage in reasonable efforts to conclude processing or examination of the application.  Texas Instruments strongly opposes this proposed rule.

We do not see how these items, especially the requirement for an oath or declaration, impede the Office's processing of an application.  Under current procedure, applicants cannot file a missing document or fee until after receipt of a Notice of Missing Parts, which often takes months.  Thus, if a missing document is received the day after filing, applicant would lose months of patent term adjustment because of the delay in the Office.  Applicants believe that this action falls under § 132 as a "requirement made" and thus the provision of Subtitle D, Section 4402 paragraph (C)(ii) should allow applicant 3 months term to reply without any patent term adjustment penalty.  Furthermore, we note that under the proposed rules regarding publication 18 months from the earliest priority date, a redacted copy of an application can be supplied as late as 16 months from the priority date.  It is not seen why there should be any difference in between these two procedures.  If the Office maintains its position in this regard, the requirement for a Notice of Missing Parts form should be deleted, so that the missing document can be filed as soon as received, in order to minimize the term lost in a patent term adjustment.

The Office proposes reducing any term in a patent term adjustment by the time difference between filing an application and the receipt of a title and abstract as well as drawings in compliance with § 1.84.  We do not see why applicants should not be permitted to file any missing items within the 16 month term for receiving the redacted application discussed above.  Furthermore, the proposed rules for early publication at 18 months require drawings of sufficient quality to readily use the patent application publication as a prior art document.  We believe that, if applicant meets that requirement, applicant should not have a patent term adjustment reduced.

The proposed Section 1.704(c)(13) would reduce any patent term adjustment by the time between the filing of a Notice of Appeal to the Board of Patent Appeals and Interferences and the filing of an appeal brief and brief fee or if no brief is filed, the filing of an amendment after final rejection.  However, the statute, Subtitle D, Section 4402, paragraph (C) only provides for patent term adjustment for "(iii) appellate review by the Board of Appeals and Interferences ... ".  Appellate review requires an appeal brief.  Accordingly, it seems reasonable to consider any patent term adjustment from the date the appeal brief is filed, and thus a reduction in the patent term adjustment for the period between the notice of appeal an the filing of and appeal brief would not be necessary.

The propose Section 1.704(c)(15) that establishes a reduction in patent term adjustment for an amendment under § 1.312 or other paper after a notice of allowance should not apply if the need for this submission was the result of an action or omission on the part of the Office.

The fee for a request for reinstatement of all or part of the term pursuant to 1.705(b) should be refunded if it is found that an error occurred on the part of the Office.  In addition, we see no reason why the term to contest the change in patent term adjustment where the patent issuance is delayed beyond the Office's original estimate should be a nonextendable 30 days.  The patent has already issued, so this term will not affect the patent process.  Applicant should not be twice penalized; first by the delayed issuance and then by an unreasonably short, non-extendable term to contest the patent term adjustment.  We suggest that a term of 3 months is more reasonable.

Respectfully submitted,


Frederick J. Telecky, Jr.
Senior Vice President and
General Patent Counsel

United States Patent and Trademark Office
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Last Modified: 9/16/2009 12:16:29 PM