Date: Thu, 24 Aug 1995 08:03:36 PDT
From: Paul_F._Morgan.roch@xerox.com
To: reexamrule@pioneer.uspto.gov
Cc: PMorg.roch@xerox.com, landerso@pioneer.uspto.gov,
permangreen@attmail.com, 70137.452@compuserve.com
Subject: Proposed New Reexamination Rules-Public
Comment-PFM-8/24/95

   As an initial informal and purely personal comment on
these proposed new rules (which are based on an assumption
of passage of a new Reexamination Statute), the aspect that
stands out immediately is the proposed $11,000. fee for
requesting reexamination of anyone elses patent, allegedly
cost based. That $11,000. fee is more than 14 times the fee
for the regular filing and examination of a patent
application, and it is respectfully requested that this cost
analysis should be seriously reevaluated.

   In my own limimd experience the time and effort expended
by the PTO on reexaminations has not been that much greater
than regular examinations. The same steps and same office
actions are involved. There is even less PTO effort in one
respect, in that no new PTO art search is required, and the
considered art is normally only that furnished to the PTO by
the requester. The limited additional requestor
participation the new Reexamination Statute would provide
should not logically add 1400 per cent to the PTO costs.

   A $11,000. fee for reexaminations is also questionable as
to its consistency with the previously expressed
Congressional intent for reexaminations to provide a LOW
COST ALTERNATIVE to patent litigation. $11,000. merely to
file a reexamination, not including any of the searching and
attorney fees, is a serious deterrent to the use of
reexaminations, which will still be essentially ex parte and
provide no discovery. For $11,000. one can as an alternative
prepare and file another patent application, where
appropriate, and initiate an interference proceeding in the
PTO to attack the patentability of the subject patent on any
grounds inter partes, which is vastly more costly to the PTO
than a reexamination, yet does not require any fees. 

Cordially, Paul F. Morgan