Chairman Smith, Ranking Member Berman, and
Members of the Subcommittee:
Thank you for inviting me to testify today
on H.R. 5120, a bill "to amend title 35, United States Code, to conform
certain filing provisions within the Patent and Trademark Office."
The bill would amend patent law to permit
the USPTO to consider certain late-filed applications for patent extension
under section 156 of title 35 if such applications are filed not later than
five days after the current 60-day time period and the applicants file a
petition that shows that the delay in filing the application was unintentional.
Mr. Chairman, as indicated in our recent
letters to you and Ranking Member Berman, the United States Patent and
Trademark Office (USPTO) does not at this time have a position on this proposed
legislation.
While there could be some benefits, and at
least one direct beneficiary, of providing the type of additional flexibility
provided by the proposal, there are also benefits to maintaining the certainty
inherent in the current law in this area.
While we have a sense of the potential
impacts on the possible direct beneficiary to this legislation, we do not yet
have a full sense of the impact on others in the invention, manufacturing,
consumer, and intellectual property communities.
Accordingly, we commend you for holding
this hearing to help determine the potential impact on all interested parties
and to otherwise examine the possible merits and limitations of the
proposal.
I am pleased to share with you a number of
our observations that may be helpful as the Subcommittee reviews the bill.
Precedent
This type of legislation is not without
precedent. Currently, patent laws
provide the USPTO with discretionary authority to accept late-filed submissions
in a number of situations, including: payment of maintenance fees (35 USC §
41(c)(1)); abandonment of applications (35 USC § 133); and payment of issue
fees (35 USC § 151). The trademark laws
have similar language, for example, regarding timely filing of a verified
statement of use (15 USC § 1051(d)(4)) and abandonment of an application for
failure to reply or amend (15 USC § 1062(b)).
Similarly, while we currently do not
believe the legislation requires additional restrictions or limitations in
order to ensure neutral application if enacted, further exploration of the
issue may be informative as the legislative process continues.
Previous
Applicants that Would Benefit from Enactment
We are aware of one current application
for patent term extension that would immediately benefit from enactment of the
bill. That application is related to
patent number 5,196,404 owned by the company represented at the table here
today. More generally, a review of our
records indicates that, of the over 700 applications for patent term extension
filed since 1984, three other applications were not granted due, at least in
part, to timeliness issues. One of these
applications was filed within 65 days of the "approval date," and
thus may have been eligible for a petition to have the delay excused, if the
proposed provision had been in effect.
Prospective
vs. Retrospective
It is not unprecedented for newly enacted
patent legislation to apply to issued patents and pending applications. That fact noted, prospective or retrospective
discretionary authority, as proposed in the bill, would have to involve a
careful balancing of all relevant interests involved. We are unable to make a particular
recommendation in this regard because we are unaware of any substantive input
by interested parties, other than the '404 patent owner.
Exercise
of Discretion
With respect to the circumstances under
which we would expect to exercise discretion under this bill, we believe it is
premature to attempt to list or identify particular examples at this
point. We would, of course, if granted
the subject authority, be likely to follow the policies reflected in the
administration of areas currently subject to discretionary review of delayed
filings.
Patent
Reform
Although our survey of patent term
extension applications reveals few issues related to timeliness, this
legislation would be of use to at least one current applicant and could be
utilized by future applicants who miss the patent term extension application
deadline due to unintentional delay. As
noted above, the discretionary authority contemplated by H.R. 5120 is similar
to other deadline-extending provisions in patent law.
As indicated in testimony before your
Subcommittee in April, the USPTO supports enactment of two patent proposals
pending before the Subcommittee that are widely supported throughout the
intellectual property community, namely, a post-grant review procedure and a
new procedure for submission of prior art.
We continue to review other proposals before the Subcommittee.
Thank you.