COMMISSIONER LEHMAN:  If not, I would like to call
       Kenneth Burchfiel.
 
       MR. BURCHFIEL:  Good morning.  My name is Kenneth
       Burchfiel.  I am a partner at Sughrue, Mion, Zinn, Macpeak &
       Seas, 2100 Pennsylvania Avenue, in the District.
 
       Mr. Commissioner, Madam Solicitor, distinguished
       staff, I appreciate the chance to come and talk briefly on
       two or three points that have been raised by the
       participants in the lectures that I have conducted.  I am
       not speaking on behalf of the firm or my clients, but as a
       person who has been doing lectures and who has coauthored a
       book on this topic.
 
       The first question that I would like to address is
       the transitional provision for examination of independent
       and distinct inventions in applications pending for three
       years or longer.  In response to the statutory requirement,
       the PTO has proposed 37 C.F.R. 1.129(b), that expressly
       permits the Office to maintain any restriction requirement
       made before April 8, 1995, and to require the applicant to
       file divisional applications after the effective date in
       such cases.
 
       This proposed regulation provides far too little
       help to industry and the bar, who are forced to adapt to the
       requirements of this new law very suddenly.  A devastating
       loss of term is going to occur in older cases where
       divisionals are filed after the effective date or are
       entitled only to the 20-year term.
 
       In order to retain the benefit of a 17-year term,
       all divisionals from all prior restriction requirements in
       all applications pending for whatever length of time must be
       filed before June 8, 1995, or loss of term will be
       automatic.  This is a very heavy penalty on the chemical and
       pharmaceutical industries who have less than four months to
       search through all the ancestors of all pending applications
       and identify all restriction requirements, however phrased,
       in whatever application they occurred.
 
       In areas such as pharmaceuticals where restriction
       requirements are frequent, a heavy financial burden is also
       imposed to file all of these applications immediately and to
       pay a separate fee.  This could easily double or quadruple
       the filing budget that was made by corporations in complete
       ignorance of the provisions that have now been enacted.
 
       It would be better for the rule to state that
       restriction requirements will not be made or maintained in
       any application pending for three years on the effective
       date, without reference to the April 8th cutoff.  Also,
       after the effective date, it will be mandatory for
       applicants to file simultaneous divisional applications
       immediately in response to any restriction requirement that
       is imposed in an application filed after the effective date.
 
       Examining groups are going to be flooded with new
       divisional applications, as applicants seek to preserve as
       much of the 20-year term as is possible.
 
       The PTO should at least consider fundamental
       change of its customary restriction practice and examination
       of more than one separately classified invention in a single
       application to avoid both the administrative burden and the
       cost to the industry.
 
       The second question that I will address is the
       proposed reduction of appellate extension for lack of due
       diligence provisions.  The PTO has proposed that examples of
       what may constitute lack of due diligence include requests
       for extension of time to respond to Office actions and other
       actions that are expressly permitted by the rules.  This is
       a punitive and harsh standard that erases the minimal
       protection against PTO delay that is mandated by the
       statute.
 
       How can the due diligence requirement require more
       than the patent statute and the rules of practice?  I can
       only emphasize, and second, the remarks of the earlier
       commentators.  I want to point out that this rule
       discriminates particularly harshly against chemical and
       pharmaceutical industries where we have to synthesize and
       test new compounds that we don't have on our shelves in
       order to provide comparative evidence with respect to prior
       art compounds identified during prosecution.
 
       Such testing may require months and at the current
       practice has required filing not only routine petitions for
       extension of time, but also continuation applications simply
       to gain the time necessary to synthesize compounds and test
       them to provide meaningful comparative evidence.
 
       The proposed interpretation further discriminates
       against foreign applicants who are required to wait for
       translations, both of the Office action and references going
       out, and of their foreign language responses in evidence
       necessary to respond.
 
       If this provision stands, it will be necessary to
       paper applications with lengthy explanations of any period
       of time required to respond in order to provide the basis
       for the inevitable petitions to your Office contesting
       inconsistent, adverse determinations by various examining
       groups who will be forced to contest adverse or incorrect
       determinations of extension term in District Court actions
       in important cases.
 
       It will lead to a huge amount of work that is
       entirely unnecessary, if the provision could be modified to
       make it more reasonable.
 
       I would suggest that in order to reduce the
       administrative burden and to provide more guidance to the
       industry with respect to the expiration term of a patent,
       which is important in other context in infringement, the
       Office should consider adopting a gross negligence standard
       that would apply only to delay occurring after the filing of
       a Notice of Appeal.
 
       Those are my remarks.  I thank you very much for
       your attention and consideration.
 
       COMMISSIONER LEHMAN:  Thank you very much, Mr.
       Burchfiel.  Any questions?
 
       [No response.]