COMMISSIONER LEHMAN:  Thank you very much, Mr.
       Next, I would like to ask Kate Murashige to come
       forward, please.
       MS. MURASHIGE:  Thank you, Assistant Secretary
       Lehman, distinguished panel.  Good morning.
       My name is Kate Murashige.  I am a partner at
       Morrison & Foerster, at 2000 Pennsylvania Avenue N.W., here
       in Washington.  I am speaking for myself and on behalf of
       other members of the Patent Practicing Group.
       I appreciate the opportunity to comment on these
       rules.  In particular, I wanted to comment on the proposed
       transitional provisions, and what I am really going to
       suggest is that they both be simplified and be made
       permanent, as others have suggested, too.
       I have often wondered why file wrapper
       continuations are used to prolong prosecution when really
       all we are doing is continuing prosecution and paying the
       additional fees necessary to reimburse the Office for the
       additional examination.
       That has been used where a final rejection needs
       to be responded to and also after a Notice of Allowance
       where additional art has come to the attention of the
       applicant and needs to be cited.
       What I have in mind is that after the applicant
       has received either a Notice of Allowance or a final
       rejection, that he could open prosecution simply by filing a
       form and an additional filing fee, really equivalent to the
       filing fee that is charged now for a file wrapper
       continuation.  This would permit additional art to be
       submitted and additional arguments, additional evidence, and
       so forth.
       It also has the added benefit, I think, of taking
       a lot of the pressure off of the objections to the 20-year
       term because I think the fear of many people, who are in the
       kind of practice that I am in, are concerned that
       applications that are already on file won't be able to be
       finished up with the two bites of the apple that are
       provided.  If we had this mechanism, essentially the
       retroactive effect of the 20-year term from filing would be
       mitigated.  And I think that would take a lot of the
       pressure away from going back to a 17-year term from issue,
       which, I will have to say, would be a great disappointment
       to me and some of my fellow practitioners who are interested
       in seeing harmonization take place, because it would be a
       backward step.  If we could remove that sense of pressure,
       perhaps that would be a good way to mitigate some of it.
       It seems to me that in addition, the restriction
       practice transitional provision could also be revised in a
       similar manner.  I understand the convenience of having
       separate patents for separate inventions, having separate
       maintenance fees on separate patents for separate
       inventions, but I don't think that that is inconsistent with
       having a practice where multiple inventions could be
       examined for multiple fees in a single application and then
       issued, not necessarily all at the same time, as separate
       In most cases where I have run into restriction
       requirements, at least, it doesn't appear beyond the ability
       of the examiner to examine all the inventions.  I think
       someone earlier mentioned it is sort of a function of the
       classification system.  In those odd instances where perhaps
       there really was such a different invention that the same
       examiner wouldn't be able to examine it, I am sure some
       provision could be made whereby that could happen, as well.
       So what I would have in mind there, I think, is
       just a situation where a restriction requirement could be
       issued.  Either the applicant could pay an additional fee
       without quarreling, or if he or she objected to the
       restriction requirement, could petition.  If lost the
       petition, could then pay the additional fee, and there could
       still be the option for divisional application later.
       Similarly again, I think this simplifies things. 
       There is no reason really to make the transitional
       provisions transitional.  It seems to me that they could be
       applicable to all applications, including those filed after
       the effective date of the GATT Treaty implementing
       I understand the concerns that other people have
       about costs of filing fees and so forth.  I agree with the
       idea that they should be proportional to the burden on the
       Office, but I think the main focus that I want to emphasize
       is just simplifying this, making it fair to people who have
       to continue to prosecute applications that were filed before
       the Act is effective and essentially streamlining procedure.
       I have one further comment that is unrelated to
       the previous ones.  It is a straightforward, simple comment. 
       I notice that in the provisional applications, that there
       still will be a requirement for filing a paper copy of
       sequences, although not a machine readable copy.
       I just have to say that it is just as much trouble
       to make the paper copy as the machine readable copy and it
       is a fairly expensive procedure for the applicant.  Since
       those applications aren't going to be examined and since it
       really isn't the purpose of the provisional application to
       provide a data base, but rather to provide a means for an
       applicant to get his foot in the door, I think that should
       be changed so that no formal requirements for sequences
       should be included.
       I think that is all my remarks.  Thank you.