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 ------- 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. ------- 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.) ------- 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. ------- 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). ------- 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. ------- 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. ------- 009-0007.TXT Thank pu ww much br pur ind considerabon.
Last Modified: March 1995