Comments from Gabriel P. Katona

NAME:               GABRIEL P. KATONA
                    ATTORNEYS AT LAW
ADDR-1:             230 PARK AVENUE

CITY, STATE ZIP:    NEW YORK, NY  10169-0059
TELEPHONE:          212)986-3377
FAX:                (212)986-6126


1. The purpose of the transitional provision of proposed 37 C.F.R.
1.129(a) is to secure the right of an additional examination and
reexamination of the application. Such an examination and
reexamination after a final rejection would normally be available
upon the payment of a filing fee and the refiling of the application.
The purpose of the transitional rule of 1.129(a) is to secure the
same result for certain applications pending as of June 8, 1995,
without the need to refile them and thus lose their status under the
current law as being entitled to a 17-years-from-issue term.
Therefore the submission after final and the second submission after
final pursuant to the proposed 1.129(a) are actually substitutes for
an exarnin2tion and a reexamination had the application be refiled.


However, if the application is refiled, the examination and the
reexami- nation are purchased by the payment of the single refiling
fee. Therefore, it is illogical and incongruous for 1.129(a) to
require the payment of the equivalent f two filing fees for what
would normally be available for the single filing fee. Accordingly,
it is proposed that 1.129(a) be ultimately promulgated by deleting
from the proposed rule the current requirement of a second fee for
the second ellhmieeinn


The $730 fee proposed under 1.17(r) is identical in magnitude, and
is of the nature of a filing fee. Filing fees have been routinely
subject to the small entity discount since that discount was
established some years ago, and there appears no logical reason to
exist for not extending the same discount to the fee payable pursuant
to 1.129(a) and 1.17(r).


Furthermore, the PTO publicizes an 18 month figure as the average
pendency of applications. Accordingly, in 1.129(a) a pendency of 18
months, rather than 2 years would be the logical pendency figure for
an application to qualify under the proposal.


2. The purpose of proposed 37 C.F.R. 1.129(b) is to-avoid the a new
20-years-from-filing term for certain applications pending as of June
8, 1995. Therefore, for the payment of the equivalent of a filing fee
the separable invention could be retained in the parent. First of
all, the fee for this under proposed 1.129(b) should be made subject
to snzall entity discounts, as filing fees generally are.
Additionally, the continuing of the pendency of applications pursuant
to 1.129(a) and (b) avoids any refiling and the costs to the PTO
associated with the processing of refiled applications.


No reason is seen for the apparently arbitrary 3-year pendency
requirement of an application to qualify under the provisions of
proposed 1.129(b). The most logical period of pendency to qualify,
would be the 18 month average pendency of applications.


3. A request for time extensions should not be viewed ipso facto as a
lack of due diligence under proposed 1.701.


I trust that you find these comments helpful

Last Modified: March 1995