COMMISSIONER LEHMAN:  Thank you very much.  Next,
       I would like to call Thomas Irving.
       MR. IRVING:  Assistant Secretary Lehman,
       distinguished staff of the United States Patent and
       Trademark Office, ladies and gentlemen.  Good morning.
       My name is Thomas Irving.  I am a partner with the
       law firm of Finnegan, Henderson, Farabow, Garrett & Dunner. 
       My address is 322 Avenue Louise, Brussels, Belgium. 
       I am here today solely on my own, to offer my own
       conclusions, after having written and lectured extensively
       about the statute and proposed rules.  I am not offering
       these comments on behalf of any client or on behalf of my
       law firm.
       The first comments I would like to address are
       with respect to provisional applications that are provided
       for in the proposed rules 1.51 and 1.53(b).  And the
       question I would like to raise is the filing date of
       provisional application and effective date under either
       Section 102(e) or Section 102(g).
       Under our current law, when an application filed
       in the United States issues as a patent it becomes prior art
       under 102(e), as of its U.S. filing date against all other
       patent applicants.  Where the patent claims benefit of a
       foreign application under 119, that patent is still prior
       art as of its U.S. filing date, but not as of the date when
       the foreign party application was filed.
       This rule, as we know, was created judicially in
       In Re Hilmer, the 1966 version of that, with respect to
       Section 102(e); the 1970 version of that, with respect to
       Section 102(g).
       Now, under the new law and under the proposed
       regulations, one can argue that a provisional application
       would be a Section 102(e) reference as of its filing date,
       assuming of course that a Section 111(a) application,
       claiming proper benefit thereof, is subsequently filed and
       issues as a U.S. patent.  Because, after all, the
       provisional application is an application filed in the
       United States.
       Further support for this conclusion can be found
       in the express wording of new Section 119(e)(1), that talks
       about an application for patent filed under Section 111(a),
       for an invention disclosed in a provisional application
       filed under 111(b), shall have the same effect as the such
       Now I realize that very similar language to this
       is found in 119(a), which is old 119 that was already
       construed in the Hilmer cases.  It will be noted, however,
       that unlike 119(a), 119(e)(1) does not contain language that
       relates to the statutory bar that is determined by your
       actual U.S. filing date.
       Thus, unlike a conventional non-U.S. priority
       application, a provisional application provides protection
       against a statutory bar to a later-filed application under
       I have heard some argue that this is yet another
       reason why the Hilmer doctrine does not apply to provisional
       applications and why those applications should be accorded a
       102(e) date, subject to the assumptions we discussed above.
       On the other hand, one can argue, looking back at
       the Alexander Milburn Supreme Court case, that the policy
       considerations that led to the statutory enactment of 102(e)
       simply do not apply.  Since the provisional application is
       not examined, it is not possible that that could have issued
       as a patent on the same day it was filed, even if the PTO
       were a 100 sufficient.
       One could also argue that since priority to the
       provisional applications claimed under 119, the rationale of
       the Hilmer cases that Section 119 and Section 102(e) and (g)
       have nothing to do with each other may still apply.
       Now in the second Hilmer case, the Court
       reiterated that 119 and 102(g) are entirely different, but
       there again, a distinction is, those were foreign
       applications where here we are talking about applications
       filed in the United States.
       Since the provisional application is provided for
       in the applications section of the statute and since the
       statute requires that inventors be designated, one can argue
       that the filing of the provisional application constitutes a
       constructed reduction to practice of those inventions
       described therein, satisfying Section 112, first paragraph,
       and thus does create a 102(g) date that can be offensively
       against other applicants.
       Counter argument would still be to go back to
       Hilmer and point out the differences between Sections 119
       and 102.
       The U.S. PTO, in administering the Act, will have
       the opportunity to decide whether the filing of provisional
       application creates a prior art date against other patent
       applicants under either or both of 102(e) and 102(g). 
       Therefore, I urge the PTO in the forthcoming Notice of Final
       Rulemaking that will be published in the Federal Register,
       to indeed express its position with respect to whether the
       filing of provisional application under circumstances where
       a 111(a) application is timely filed and issues as a patent
       creates either or both a 102(e) or 102(g) date that can be
       applied against other patent applicants.   By doing so, the
       public will be aware of the PTO's position in what I think
       is a highly significant matter.
       Let me tough also on Rule 701(d)(2), due
       diligence, as it has been expressed by previous offerors of
       testimony.  Only with respect to extensions of patent term
       accorded a patent resulting from a successful appeal, as set
       forth in Section 154(b)(1), is the Commissioner charged
       under 154(b)(3)(C), to reduce the extension by the period of
       time during which the applicant for patent did not act with
       due diligence.
       Now in the discussion of specific rules set forth
       in the December 12, 1984, Federal Register, examples are
       given of what may -- and I emphasize may -- constitute lack
       of due diligence, including requests for extension of time
       to respond to Office communications, submission of response
       which is not fully responsive to an Office communication,
       and filing of informal applications.
       It is believed by many, in my travels and
       lectures, that these examples are overly broad and they
       should be modified in the discussion that will accompany the
       forthcoming final rules.
       For example, with respect to extensions of time,
       the examples are not limited to those related to a filing of
       the appeal brief that can be read to cover any extension of
       time, taken at any time during prosecution.  Similarly,
       filing of informal applications includes filing an
       application without an oath or without a fee which results
       in the issuance by the PTO of a Notice to File Missing
       Parts.  Thus, it seems to be contemplated in the discussion
       of the Federal Register that acts during the entire course
       of prosecution will be considered and not just those arising
       on or after the filing of a notice of appeal.
       There seems to be at least two problems with this
       possibly overly broad approach.  First, Rule 136 expressly
       provides for extensions of time and, second, the statute,
       Section 111(a)(3) allows for the fee and oath to be
       submitted after the 111(a) application has been filed
       without losing the filing date.
       How can it be lack of due diligence if a patent
       applicant takes actions expressly authorized by the statute
       and rules of practice?
       Second, in a 20-year-term world, that will exist
       under the Act, any extension of time, any informal
       application that is filed, is filed at its peril because it
       inevitably results in loss of effective patent term.
       So why, since this is already the case, should
       that same period of time be again subtracted from the
       possible extension under 154(b)(2)?
       I would urge the PTO to reconsider and withdraw
       these comments in the final version.  Perhaps an appropriate
       example of lack of due diligence would be actions taken by
       the applicant to postpone the date of an oral hearing,
       either before the Board of Patent Appeals or the Court of
       Appeals for the Federal Circuit.
       The last point I would like to touch on is the
       effective date of international applications filed under the
       PTC designated in the U.S.  I have heard questions raised
       repeatedly whether the proper filing before June 8, 1995, of
       an international application, designating the U.S. under the
       PCT, whether or not that filing is effected in receiving
       office other than the PTO will preserve the possibility that
       any patent resulting from entry of the United States
       national stage will have a 17-year term, even if entry of
       that national stage occurs after June 7, 1995.
       The question, of course, assumes that no
       continuation application is later filed in the U.S.  That
       is, that the patent issues directly from the application by
       which entry into the U.S. national stage was effected.
       Now according to Section 154(c)(1), the term of a
       patent that is enforced on June 8, 1995, or the results from
       an application filed before June 8, 1995, is the greater of
       17 years from issue or 20 years from filing.
       The issues are whether in the circumstance
       described the international application qualifies as, under
       154(c)(1), an application filed before June 8, 1995, for
       purposes of Section 154(c)(1) and whether the subsequent
       post-June 7, 1995, filing of the application by which entry
       into the U.S. national stage is effected somehow eliminates
       the possibility of a 17-year patent term.
       I would direct your attention to Section 363 of
       the Act, which states:
       "[a]n international application designating the
              United States shall have the effect, from its
              international filing date under article 11 of the
              treaty, of a national application for patent
              regularly filed in the Patent and Trademark Office
              except as otherwise provided in Section 102(e) of
              this title."
       This suggests that a PTC application filed before
       June 8, 1995, an international application designating the
       U.S., should be subject to 154(c)(1), even if it
       subsequently enters the U.S. national stage after June 7,
       This would retain, of course, the possibility of a
       17-year term from issue.
       It is important to the public to know whether the
       PTO interprets the Act to mean that entry into the national
       stage in the U.S. must occur before June 8, 1995, in order
       to preserve the 17/20 possibility of patent term
       Specifically, patent applicants must know and want
       to know whether their pre-June 8, 1995, PTC international
       filing date will preserve the possibility of a 17-year term
       from issue for a patent obtained by entry into the U.S.
       national stage after June 7, 1995.
       I would respectfully urge the PTO to make clear in
       the commentary associated with the final rules what
       interpretation it is going to follow and to answer the
       question:  Does the international filing date or the date of
       entry into the U.S. national stage control for purposes of
       Section 154(c)(1).
       COMMISSIONER LEHMAN:  I think your time has
       MR. IRVING:  And so have my comments.  Thank you.
       COMMISSIONER LEHMAN:          You came all the way from
       Belgium.  To give you an extra 30 seconds seemed reasonable.