From: ambudde@hdp.com
Sent: Friday, October 05, 2001 12:28 PM
To: AB41 Comments
Subject: Proposed amendment of Rule 1.78
(1)     It is unclear whether a 35 USC 371 application make a reference under (a)(2)(ii) to its underlying international application.   If it does, this requirement is inconsistent with the wording of (a)(1), which describes an international application designating the US claiming priority to a prior-filed application; in other words, the international application is not itself the prior filed application of its national stage.

(2)     The surcharge for unintentional delay in filing the reference of (a)(2) is exorbitant.  This is especially true in the case of an international application, where all of the priority information has already been laid out in the Request.  Is this part of a larger plan to pay off the national debt?
     
          It is also relevant that national stage applications under 371 have already been published once as the international applications.  Note that European applications based on PCT applications are not published again for just this reason.

           The comment that the Office will not require the surcharge if it has recognized the claim to priority made elsewhere in the papers is not reassuring.  The surcharge appears to be incentive for the PTO to ignore the claim if there was no "reference" made.


(3)     I note with nostalgia how succinct and comprehensible the rules used to be ten years ago.