NAME: ALLEN J. HOOVER COMPANY: DRESSLER, GOLDSMITH, SHORE, & MILNAMOW, LTD. ATTORNEYS AT LAW ADDR-1: WASHINGTON, DC OFFICE 2001 JEFFERSON DAVIS HIGHWAY CITY, STATE ZIP: ARLINGTON, VA 22202 TELEPHONE: (703)415-0880 FAX: (703)415-0883 REPRESENT: SELF ------- 014-0001.TXT With reference to the proposed rulemaking for Changes to Implement 20-Year Patent Term and Provisional Applications, your attention is invited to 1.129 as proposed and to the commentary published in the Federal Register, Vol. 59. No 237, at pages 63951 et seg. ------- 014-0002.TXT The commentary on page 63956, in the paragraph bridging the second and third columns, discusses an applicant's entitlement to have a first submission entered and considered on the merits after final rejection and explains that "[i]f applicant complies with the requirements of the proposed rule, the finality of the previous rejection would be withdrawn...." ------- 014-0003.TXT In 1.129 as proposed, there is no express provision for the finality of the previous rejection to be withdrawn if an applicant complies with the proposed rule. It would be important to an applicant to know whether the finality of the previous action would be withdrawn, so that the applicant could decide whether to file a notice of appeal and if so when to file it. ------- 014-0004.TXT My recommendation is for the proposed rule to provide expressly, as explained in the commentary, that the finality of the previous action would be withdrawn if applicant complied with the rule when making a first or second submission after a final action. Others in my firm may or may not agree with my recommendation. ------- 014-0005.TXT Today, I appreciated having an opportunity to discuss my recommendation briefly in a telephone conversation with Ms. Greenlief, who was very helpful.
Last Modified: March 1995