COMMISSIONER LEHMAN:  Thank you very much.  Next,
       I would like to call on Richard Donaldson.
       MR. DONALDSON:  Good morning, Assistant Secretary
       Lehman, distinguished staff.
       My name is Richard L. Donaldson.  I am Senior Vice
       President of Texas Instruments Incorporated and General
       Patent Counsel for Texas Instruments.           We are located in
       Dallas, Texas.  I am representing Texas Instruments, today,
       in my comments.
       I would like to make the general statement that
       Texas Instruments does fully support the 20-year patent term
       and provisional applications.  We are submitting some
       written comments with respect to the proposed rules and
       those will be submitted today.
       I would like to direct my comments, and focus my
       comments today, just on two points, and I think it can be
       fairly short.  The first point has to do with Section
       129(a), dealing with transitional procedures.  And the
       second point, deals with Section 701(d)(2).
       First, with respect to transitional procedures for
       the limited examination after final, we think this is a
       great idea.  And I guess our comment would be, we would like
       to see this made permanent.  I think it would avoid
       additional papers being filed.  It would avoid prosecution
       delays, and so, we would hardily support consideration of
       The second issue, the 701(d)(2), dealing with the
       limit to an extension of the term, when you have
       successfully appealed, we believe that this conduct that you
       look at with respect to the lack of due diligence should
       only apply during the appeal process.  Or if that is not
       possible, then we would like to see a clarification of the
       term, due diligence, because we think otherwise their
       conduct during the prosecution of the patent application
       would be punished, which is really normal conduct that
       should not be punished.
       As worded, the proposed rules, I think, clearly do
       apply to conduct any time during the prosecution of the
       patent application.  And it would apply to conduct such as
       extensions of time, nonresponsiveness, and informal
       When you look at the underlying statute, 35 U.S.C.
       154, however, we think it is clear in that statute that due
       diligence refers to conduct during the appeal process and we
       believe that is the right standard to use.
       For the appeal process, if you look at the
       prosecution, this treats differently the successful
       appellant and term extensions where secrecy is involved or
       where you are involved in an interference.  We do not
       believe there is a good reason to treat what happens in
       prosecution different in those three cases.
       The statute does not address due diligence during
       prosecution and we don't believe that the rules should,
       either.  The 20-year term, we believe, already covers that
       aspect.  If you delay or are not diligent during prosecution
       of your patent, you will get a shorter effective patent
       life.  We think that is an incentive not to delay during
       As the rules are presently stated, however, the
       successful appellant could be penalized, if you want to call
       it a penalty, twice for the same conduct.  He gets a shorter
       patent life, plus he would get a shorter effective extension
       of his patent.
       I guess, in the general sense, we believe that
       abusive delay should be applied to all applicants, not just
       a successful appellant.  However, if it is necessary to
       include in the rules a provision for the appellant that it
       covers prosecution delays, we would like to see the term,
       due diligence, clarified so that normal conduct would not be
       covered.  There are good reasons for extensions of time and
       for some of the other examples that have been given, and we
       think that you should not be penalized for that.
       We think that, also, there could be an
       administrative burden on the Patent Office if the Patent
       Office is required to evaluate, for example, extensions of
       time to see if good cause is present. 
       A change had been made where you can get an
       extension of time, just by paying the fee.  Now, under these
       proposed rules, the Office may be faced with looking at the
       intent of the conduct years after the fact to determine
       whether or not to shorten the period of extension of the
       patent term.
       We would like to see an affirmative provision that
       says actions for adequate cause would be deemed due
       diligence, and we would like to see the applicant be given
       notice that the Patent Office believes that conduct will
       shorten his term so that he has an opportunity to at least
       rebut that and provide his point of view.
       That concludes my remarks.  If there are any
       COMMISSIONER LEHMAN:  Yes, Ms. Linck?
       MS. LINCK:  Mr. Donaldson, you limited your
       remarks on transition practice to 129(a) and not 129(b). 
       Was there a reason for that?
       MR. DONALDSON:  Yes, if you cover different
       inventions in the same application, I think it makes a lot
       of sense to have different patents, particularly if you are
       involved in a licensing program where you may want to
       consider one invention separately from another when you
       license it.  It just makes it a cleaner operation and we
       would support still having the separate patents.
       MS. LINCK:  Thank you.
       MR. DONALDSON:  Yes.