Comments on Question 5

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QUESTION 05:
     Should the PTO permit an accelerated examination? If so, under
     what conditions?

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FROM RESPONDENT 001:
     
     NAME:               David E. Craword, Jr. (Reg No. 38,118)
     COMPANY:            ROGERS, HOWELL & HAFERKAMP
                         COUNSELLORS AT LAW
     ADDR-1:             PIERRE LACLEDE CENTER, SUITE 1400
                         7733 F0RSYTH BOULEVARD
     CITY, STATE ZIP:    ST.LOUIS, MISS0URI 63105-1817
     TELEPHONE:          (314) 727-5188
     FAX:
     REPRESENT:          unclear
     

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COMMENT ON QUESTION 05:
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     001-Q05.TXT
     The PTO should not permit accelerated examination because it gives an
     unfair advantage to large entities. An acceptable alternative to
     accelerated examination is to stay publication until some period
     after the first examination, e.g. three months after examination.
     This procedure would encourage the PTO to examine applications
     earlier which is especially desirable in view of the new twenty year
     requirements.

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FROM RESPONDENT 019:
     NAME:	Wilmot H. McCutchen, President
     COMPANY:	HOUSTON INVENTORS ASSOCIATION 
     ADDR-1:	
     CITY, STATE ZIP:	HOUSTON, TEXAS
     TELEPHONE:	(713) 957 4344
     FAX:	(713) 868-4104
     REPRESENT:	COMPANY
     

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COMMENT ON QUESTION 05:
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     019-Q05.TXT
     	Accelerating the- application 1s probably impractical as a solution
     to the problem created by early publication. Better not to create
     those problems in the first place. As noted in the Notice,
     acceleration of some will mean delay for the rest. Everyone will want
     to be accelerated. Sifting through the pleas will be a dismal chore
     for the examiners. The real solution is to publish a summary format
     such as Appendix "A" so that disclosure (and consequent hardship) is
     a matter of private contract between the interested parties and not a
     matter which is the responsibility of the PT0, except in the case of
     dilatory prosecutions (see questions 7 and 10). 	Consider the case of
     an application filed 12 months after a provisional application. The
     publication would occur 6 months after the filing of the formal
     application, so the applicant would have to decide- whether to
     abandon the invention only 3 months after filing it, before getting
     even a first office action for his filing fee. Just to discover
     initial prospects Of patentability, he would have to pay a suroharge
     for acceleratson. If this rule should be adopted, at least make the
     cutoff date 18 months-after formal filing or 12 months after-the
     first office action whichever greater.

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FROM RESPONDENT 010:
     NAME:	Scott Weide 
     COMPANY:	QUIRK & TRATOS 
     ADDR-1:	550 E. CHARLESTON BLVD. . SUITE D 
     CITY, STATE ZIP:	LAS VEGAS NEVADA 89104
     TELEPHONE:	(702) 386-1778
     FAX:	
     REPRESENT:	firm
     

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COMMENT ON QUESTION 05:
     -------
     010-Q05.TXT
     Yes, the PTO should permit accelerated examination on the following
     basis: 1) upon a showing of the conditions which currently allow for
     accelerated examination and payment of a small fee, or 2) upon
     payment of a much larger fee for requests which do not have any
     specific reason other than the applicant's desire to accelerate
     examination.

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FROM RESPONDENT 029:
     NAME:	Marcia H. Sundeen
     COMPANY:	PENNIE & EDMONDS 
     ADDR-1:	1701 Pennsylvania Avenue, N.W.
     CITY, STATE ZIP:	Washington, D.C. 20006-4706
     TELEPHONE:	(202) 393-0177
     FAX:	(202) 393 0462
     REPRESENT:	PTO Relations Committee
     

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COMMENT ON QUESTION 05:
     -------
     029-Q05.TXT
     Yes, the PTO should permit accelerated examination under the criteria
     currently set forth in 37 C.F.R. S 1 102 (advancement of
     examination). The PTO should strive to reduce the pendency for first
     actions in all cases to a period of time which is sufficiently early
     so that the applicant can determine whether or not to withdraw the
     application from publication.
     
     For PCT applications, the examiners are already familiar with
     procedures for accelerated searching of an application for the
     purposes of providing the international search report. Consideration
     should be given for a similar operation for the publication
     requirement of U.S. applications when initial Office Actions are not
     available prior to the publication date. The applicant should
     have the benefit of a patentability search by the Examiner prior
     to the date upon which they must decide whether to withdraw the
     application from publication.

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FROM RESPONDENT 033:
     NAME:	TOM EASTEP
     COMPANY:	THE ALLIANCE FOR AMERICAN INNOVATION 
     ADDR-1:	1100 Connecticut Ave. NW, Suite 1200
     CITY, STATE ZIP:	Washington, D.C 20036-4101
     TELEPHONE:	202-293-1414
     FAX:	202-467-5591
     REPRESENT:	ALLIANCE FOR AMERICAN INNOVATION
     

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COMMENT ON QUESTION 05:
     -------
     033-Q05.TXT
     ACCELERATED EXAMINATION UNDER THE PRESENT CONDITIONS SHOULD BE
     PERMITTED.

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FROM RESPONDENT 008:
     NAME: Gabriel P. Katona
     COMPANY: 	Schweitzer Cornman & Gross
     		Attorneys at Law
     ADDR-1:	230 Park Avenue
     CITY, STATE ZIP:	New York, New York 10169-0059
     TELEPHONE: (212) 986-3377
     FAX: (212) 986-6126
     REPRESENT: unclear
     

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COMMENT ON QUESTION 05:
     -------
     008-Q05.TXT
     An optional accelerated examination should be available with the
     objective of producing a first search report prior to publication,
     but only upon the payment of a substantial fee by the applicant (and
     the submission by the appli- cant of a prior private US, or an
     official EPO search report) For the magnitude of the fee, and other
     considerations, see the answer to the next Question No 6

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FROM RESPONDENT 004:
     NAME:     Michael H. Minns
     COMPANY:  INGERSOLL-RAND COMPANY
               Patent Department
     ADDR-1:   942 Memorial Parkway
     CITY, STATE ZIP:    Phillipsburg, NJ 08865
     TELEPHONE:     (908)859-7700
     FAX: (908) 859-7707
     REPRESENT:     self
     

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COMMENT ON QUESTION 05:
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     004-Q05.TXT
     Accelerated examination should be provided under either the current
     requirements or for a substantial fee.

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FROM RESPONDENT 016:
     NAME:	CEiRISTO PH[E R J ON[N }2U nY 
     	REGIHTERED tJ.S. PATENT ATTOlllNEY
     	AND CANADIAN PATENT AGENT
     	AL90 ADMITTED IN TIIE DIt3TRICI~ OF COLUMIIIA
     COMPANY:	CEiRISTO PH[E R J ON[N }2U nY 
     	ATT0SRNEY AND COUN1E3ELOR
     ADDR-1:	209 HURON AVENUE 
     CITY, STATE ZIP:	PORT HURON, MICHIGAN 48069
     TELEPHONE:	(8t0) 982-422t 
     FAX:
     REPRESENT:	self
     

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COMMENT ON QUESTION 05:
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     016-Q05.TXT
     It would prematurely add a substantial amount of literature to the
     art, a good share of which may be of insignificant nature. 

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FROM RESPONDENT 028:
     NAME:	John B. Pegram
     COMPANY:	DAVIS HOXIE FAITHFULL & HAPGOOD LLP 
     ADDR-1:	45 ROCKEFELLER PLAZA 
     CITY, STATE ZIP:	NEW YORK, N.Y. 10111
     TELEPHONE:	(212) 757-2200
     FAX:	(212) 586-1461
     REPRESENT:	self
     

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COMMENT ON QUESTION 05:
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     028-Q05.TXT
     Accelerated examination should be provided in the case of
     infringement.


Last Modified: March 1995