COMMISSIONER LEHMAN:  Thank you very much.  Next,
       I would like to ask Rene Tegtmeyer, please, to come forward.
 
       MR. TEGTMEYER:  My name is Rene Tegtmeyer.  I am a
       partner in the firm of Fish and Richardson.  The address is
       601 13th Street N.W., Washington, D.C. 20005.
 
       My comments today are on behalf of the American
       Bar Association's Section on Intellectual Property Law.  The
       comments that I am presenting have not been approved by the
       Board of Governors or the House of Delegates of the American
       Bar Association, and therefore, do not represent comments of
       the American Bar Association, but the comments only of the
       Section on Intellectual Property Law.
 
       My comments are going to sound a little like a
       broken record because I think most of the points I am going
       to make have been made, although a few of them I have a
       little additional information on, and I will try and be
       brief on the ones where I don't.
 
       I should compliment the Office on an excellent job
       of drafting the rules.  I think they amazingly cover a lot
       of the different points that needed to be covered for
       consistency throughout the whole rules package.
 
       One of the points that was raised by a couple of
       the speakers is the costs and the fact that the fees should
       be limited to recoup only the average additional costs of
       the extra work involved in connection with, for instance,
       the filing of a provisional application or the consideration
       of additional actions after a final rejection or multiple
       inventions in a single case.
 
       I will note in that respect that the Office, about
       10 or 12 years ago, made a proposal to enable applicants to
       substitute for continuation applications the payment of a
       fee in order to get an additional action after a final
       rejection.  There wasn't a lot of interest at the time, but
       there wasn't a 20-year term running against them, either,
       and there wasn't the prospect or possibility of 18 months
       publication facing them.
 
       So at that point in time, the fee that was
       proposed was a lower fee than it would have cost to file an
       additional continuation application to take into account
       some of the savings in processing by the Office.
 
       A second point which, I guess, has not been made
       by a number of the speakers relates to the requirement in
       Rule 45(c) where it refers to joint inventors and indicates
       that joint inventors must have made a contribution to the
       subject matter disclosed.
 
       That seems inconsistent with the statute and
       probably should be reworded, to be clear that it refers to
       the invention disclosed.  The present rule refers to the
       subject matter claimed and that does focus in on the
       invention, so the recommendation is that Rule 45(c) be
       amended in that manner.
 
       Another comment is on what appears to be a
       relatively minor point, but that is whether or not the
       provisional application file is maintained with the complete
       application file subsequently or sent to the Files
       Repository.  And for several reasons, we believe that it
       should be maintained with the complete application.  An
       examiner may need to refer to it in determining whether the
       complete application is entitled to the benefit of the
       provisional application or applications.  And also, an
       18-month publication, if it comes along subsequently, there
       will be a demand for accessibility by the public to that at
       the time of publication, and if it has to be ordered up from
       the Files Repository, that will cause problems.
 
       Another comment relates to the transitional
       provision in regard to restriction requirements, where the
       statute when it was amended mandates that the Commissioner
       shall institute regulations providing for the consideration
       of multiple inventions in a single application, where the
       application has been pending for three years or longer.  And
       the Statement of Administrative Action accompanying the
       legislation referred to an additional condition, which is,
       that the restriction requirement have been made within two
       months of the effective date of the legislation or June 8,
       and that does not appear in the statute and seems consistent
       with the statutory language.  A more logical date would be
       one of the other alternatives set forth in the rule, and
       that is, the time at which the examiner has acted on the
       elected invention after the restriction requirement in a
       case more than three years old.
 
       A number of people have made comments in regard to
       due diligence, and I will just reiterate their comments. 
       The Section is opposed to consideration of questions of due
       diligence outside the appeal period or process in a
       successful appeal situation.  That that is not what was
       intended by the statute.
 
       And in addition, also feels that while the rule,
       itself, has good language to characterize what constitutes a
       lack of due diligence for the purposes of reducing an
       extension for a successful appeal, the examples again that
       are given to explain that language in the rule go far too
       far in specifying that a request for extension of time or
       the like would constitute a lack of due diligence, and that
       would be a severe penalty for something that is not only
       permitted by statute, but also by existing rules.
 
       That concludes my comments.  I will be happy to
       answer any questions.
 
       COMMISSIONER LEHMAN:  Thank you very much, Mr.
       Tegtmeyer.  Are there any questions?
 
       [No response.]