BEFORE THE
UNITED STATES DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
In RE:
Public Hearing and Request for Public Comment on Issues Associated with
Implementation of Eighteen- Month Publication of Patent Applications
Patent and Trademark Office
Room 912
Crystal Park Two
2121 Crystal Drive
Arlington, Virginia
Wednesday, February 15, 1995
The public hearing convened, pursuant to notice, at 4:35 p.m.
BEFORE:
BRUCE A. LEHMAN, Chairperson,
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
- - -
PATENT AND TRADEMARK REPRESENTATIVES PRESENT:
LAWRENCE J. GOFFNEY,
Assistant Commissioner for Patents
MICHAEL K. KIRK, Deputy Assistant
Secretary of Commerce and Deputy
Commissioner of Patents and Trademarks
STEPHEN G. KUNIN, Deputy Assistant
Commissioner for Patent Policy and
Projects
NANCY LINCK, Esquire,
Solicitor, Patent and Trademarks Office
- - -
COMMENTORS' LIST
Page
CORNELL D. CORNISH7
GARY L. GRISWOLD,
Intellectual Property Owners, Incorporated14
ANTHONY D. SABATELLI, Esquire
Procter and Gamble22
RICHARD L. DONALDSON, Senior Vice President
Texas Instruments, Incorporated30
R. J. RILEY,
Riley and Associates39
ORVILLE J. LITZSINGER, Vice President
Alliance for American Innovation45
ALAN W. FIEDLER,
Becton, Dickinson and Company50
ROBERT ARMITAGE,
American Intellectual Law Association59
PAUL WOLSTENHOLME, Inventor65
WILLIAM T. FRYER, III, Professor
University of Baltimore69
HAROLD C. WEGNER, Esquire
GWU National Law Center and Foley and Lardner74
LOUIS D. MAASSEL,
World Intellectual Property Organization,
Geneva, Switzerland83
FRANCIS M. VITAGLIANO, Inventor92
GLENN E. WISE, Professional Researcher98
H. JAY SPIEGEL, Esquire
Patent Attorney and Inventor104
RENE TEGTMEYER, Esquire
American Bar Association,
Section of Intellectual Property and Law110
PROCEEDINGS
COMMISSIONER LEHMAN: Good morning. I'd like to welcome everybody
this morning. My name is Bruce Lehman. I am Assistant Secretary of
Commerce and Commissioner of the Patent and Trademark Office.
Joining me this morning at this hearing are, on my immediate left,
Michael K. Kirk, who is the Deputy Assistant Secretary of Commerce
and Deputy Commissioner of Patents and Trademarks. On his left is
Nancy Linck, the Solicitor of the Patents and Trademark Office.
Then on my immediate right, is Lawrence J. Goffney, the Assistant
Commissioner for Patents and Steve Kunin, Deputy Assistant
Commissioner for Patent Policy and Projects. This is a hearing to
receive public comment on issues that are associated with
implementation of 18-month publication of patent applications. A
notice of public hearing and request for comments was published on
December 12th last year, in Volume 59 of the "Federal Register,"
pages 63966 through 63971, and on January 3 of this year, at Volume
1170 of the official "Gazette" of the U.S. Patent and Trademark
Office, at pages 390 through 394. The legislation has been
introduced and it was introduced in the 103rd Congress. It has not
yet been passed. It was really introduced too late in the Congress
to be acted on -- which would have required publication of pending
patent applications at 18 months. We anticipate that legislation
with 18-month provisions in it will be introduced in the 104th
Congress. We also anticipate that that legislation will be enacted.
In the event that such legislation is enacted, the Patent and
Trademark Office will have to implement the new law very quickly in
order to meet a January 1, 1996, target date. That is why the
public has been invited to comment on the advisability of
introducing an 18-month publication procedure into the patent system
of the United States, in a public hearing that we conducted on
October 8, 1993, a year and a half ago. At that hearing, over 70
percent of the speakers favored early publication of patent
applications. This hearing concerns what procedures the PTO should
adopt if we do have legislation enacted that requires publication of
patent applications 18 months after the first filing. The
transcript of the hearing will be prepared and a copy will be made
available for purchase by the public approximately ten days after
this hearing. Copies of the transcript will also be available for
purchase directly from the stenographer. I assume you can make
arrangements here today. The name of the stenographer's service is
Miller Reporting and their telephone number is area code (202)
546-6666, (202) 546-6666, Miller Reporting.
We have received 19 written comments and 20 requests to appear and
speak to us orally at this hearing this morning. Due to the number
of requests to appear orally and also to permit those persons
signing up today to present testimony, each speaker, we would
appreciate it if each speaker would limit their comments to ten
minutes. Of course, you can submit all the written comments that
you want, fleshing it out. Those persons who wish to provide
additional comments should submit them to us in writing. The
speakers have been listed in the order in which the requests were
received by us. Any persons who wish to speak and who have not
previously informed us of their desire are requested to add their
names to the list, located on the table at the rear of the room.
You may also pick up at that table copies of the "Federal Register"
publication of the notice of the hearing. Before we begin, I would
like to remind everybody here that there is no smoking here in the
conference room. That is pursuant to General Services Administration
regulations. We have a smoke-clean building here. When you present
your comments, please give us your name and address and also if you
would tell us whether the comments are your own, your personal
comments or whether they represent your law firm or your company or
whether you represent an organization and are presenting comments on
their behalf that represent their views. I would now like to call
forward the first person who got the first request in. That is
Cornell D. Cornish. So there's a podium right up here. If Mr.
Cornish wants to come forward and use that, he is welcome. MR.
CORNISH: My name is Cornell D., Judge Cornish and my address is
Suite 301, 1101 New Hampshire Avenue, Northwest, Washington, D. C.
20037, phone (202) 429-9705. I am a practitioner representing
myself. I'm not used to being first on the list, so I have to take
a moment just to make sure I have my thoughts in order. There is
nothing as consistent as the delusion of a paranoid or the story of
a swindler. So, I hope what I say here will be taken in terms of
what I feel is the best policy for the patent office and how they
implement the 18-month bill if it is enacted in the law. The reason
I'd like to speak is because I presented an amicus brief in the
Chakrabarty case. I think it's related to this whole issue of 18
months, because in that case, I think one of the most important
underlying issues was the workload of the Patent Office.
Chakrabarty was a little bit unusual in its impact on the Patent
Office. The Patent Office, I think, at that time and other people
perhaps were worried about the workload that was going to be
involved in implementing patents on living microorganisms. So, the
Patent Office had a big job and hiring a lot of people, doing some
things they never did before and also in acquiring art that wasn't
available theretofore. So, it seems like to me there is an analogy
here between that kind of thinking and what we have in front of us
now. Eighteen months means that these applications are going to be
published and there will be more of those applications published
than we have now in the terms of patent, because obviously some of
those patent applications drop out before they are published as
patents. So, we're talking about larger numbers, maybe
substantially larger numbers. I think the reason why it is really
important to address the issue now is because of the short time we
will have to implement it, but also the question of whether or not
some of these patent applications will be published. Certainly some
of them will not be published if they relate to subject matter that
is barred by statute, namely restricted data and secret information.
Therefore, those people who are denied publication of their
applications will have to have a hearing. There are perhaps other
areas in which the Patent Office will have difficult determining
whether or not to publish, certainly publish without a hearing
beforehand. So, I just urge the Patent Office to consider the
possibility of many areas, publishing many patent applications where
there is a question as to whether or not they are doing the right
thing. That brings up the whole issue of what we're doing here. I
think what we're doing here is presenting to the public a public
forum, in which case the First Amendment is very, very closely
implicated. That is to say, we have a government agency here who is
deciding whether to restrain publication by prior restraint before
this publication goes out to the public or to go ahead and publish
it. So, therefore, it sounds to me like this is an issue relating
to the First Amendment directly. If you, as a patent office, say
you can't publish your patent application, you obviously have
restrained prior to publication. It may be that I, as a solicitor
or as an inventor, don't have another place to publish. In other
words, I simply go to the Patent Office as my public forum, because
that's where I want to publish my invention. So, I feel that it is
important to distinguish at this point what we are doing, because I
think the 18-month publication will open the door to many, many
areas of publications that we were not used to heretofore. I think
that's a good thing. I think it is a very good thing to publish
what is a little bit controversial. As a matter of fact, the more
controversial it is, that's perhaps the more important it is to
publish it. So, I'm just urging at this point that, not only that
the Patent Office take this job seriously and become the best patent
office in the world by publishing everything that they can legally
publish and that they do so in the form of an application published
just like the patents are published now. You remember, in Britain
and Germany and other countries, they publish the full application
in a printed form. Obviously, it could be photo printed or
automatically printed or printed by computer, but what I'm saying
basically is, it is a printed document and it is available in the
shoes [phonetic] for everyone to look at. That, in effect, is the
most important document in the whole patent prosecution. There are
two issues involved in a patent. One is the publication, which is
dedicated to the public and, therefore, is open to the public to
use. The other issue is when that publication is dedicated, namely
how long the patent's exclusive rights last. Of course that has to
do with the claims and how broad or how narrow the claims are.
That's an entirely different issue. So, I look at the application
as the most important document. That is where the Patent Office has
to publish the whole thing, has to publish it in a form that is
available to the public, just like the patents themselves now are.
So, I urge the idea of addressing that particular aspect of the
workload. It's going to be a big one, but it is the most important
part of the patent process, to issue the letters patent at the time
the application is made in the 18-month form, just as we have now in
the German and the British and some of the other and the Japanese
Patent Office.
COMMISSIONER LEHMAN: Thank you very much. There are no questions,
so why don't we call the next witness, S. S. Fishman, who is
representing the Small Entity Patent Owners Association. Mr.
Fishman isn't here, because I see that he was coming from Pleasant
Hill, California, and the weather is pretty bad today. Maybe there
is someone else representing that organization. Is there someone
here from Mr. Fishman or the Small Entity Patent Owners Association?
[No response]
COMMISSIONER LEHMAN: If not, we will go on to Gary L. Griswold,
representing Electrical Property Owners, Incorporated.
MR. GRISWOLD: Good morning.
COMMISSIONER LEHMAN: Good morning. One of the things that the
people here -- you know, we're opening up in Sunnyvale, California.
We're cooperating with the City of Sunnyvale and we are going to
have a video conference facility there that will be available to
lawyers on the west coast who want to do interviews with patent
examiners and others. Perhaps in future hearings, we can use that
for our California friends. Then they won't have to deal with the
snow problems and so on and so forth. That's not quite in place
yet. Hopefully, by the next time we have one of these hearings it
will be.
MR. GRISWOLD: Snow is not a problem for us from Minnesota. Good
morning. I am Gary L. Griswold. I'm representing Intellectual
Property Owners. I am their president. Our address for
Intellectual Property Owners is 1255 Twenty-Third Street, Northwest,
Suite 850, Washington, D. C., 20037. I appreciate the opportunity
to speak on behalf of IPO relative to 18-month publication. IPO, as
you know, represents a substantial portion of the R&D in the United
States. In 1993, IPO members were granted 23 percent of all U.S.
patents granted to U.S. patent owners, U.S. nationals. IPO strongly
supports legislation that would provide for publication of patent
applications 18 months after the filing or priority date. We
supported S. 1854 and S. 2488 in the last Congress and look forward
to the introduction this year of the bill, as you mentioned. The
current U.S. patent system is causing uncertainty about the status
of patent rights and new technology and is unreasonably delaying the
dissemination of information to U.S. nationals. The uncertainty and
delay, we believe, are weakening the incentives for U.S. innovation
and investment in technology that the patent system is supposed to
provide. It is weakening our technological competitiveness. Of
course, we need to strike a balance between, on the one hand, the
interests of U.S. patent applicants in keeping their information
confidential and, on the other hand, the interests of the public in
knowing what patent protection is being sought. Technology owners
can rely indefinitely on trade secret protection instead of patents,
but once they elect to file, then the public should know what they
are seeking. Now, I'm going to speak initially here on three points
which we think are the key points in this hearing this morning.
Number one is, whether the entire application should be published at
18 months. That is your question number three. In response to
that, we believe that the "Gazette" should include an abstract, a
representative claim, what kind of information, but we believe the
entire application should be published and be available for use by
the examiners in their examination of applications. That's the IPO
position relative to that.
COMMISSIONER LEHMAN: What about to the public? Should they be
available to them too upon request?
MR. GRISWOLD: Yes, I think the application should be available to
the public in a printed form, much like is the case in other parts
of the world. This will allow people to know what the information
is and also to look at the claim, so that they will be aware of what
possible problems will exist in the future relative to their
investment in this technology. On the other hand, we have a cost
issue. I think at the Patent Office, there is kind of a shortage of
cost data in this request for information. You need to, in my view,
get your process people together with your controllers and do some
heavy duty work on numbers. That's what we would do if we were
making a decision like that.
COMMISSIONER LEHMAN: Actually, we have done that pretty much. I
think it's $11 million.
MR. GRISWOLD: You need to translate that into what it would cost
individually to do this work for applications.
COMMISSIONER LEHMAN: Yes, 13.4 million basically for the capital
project. The planning will depend on obviously -- we would have a
cost to the people or a fee for people that requested copies. We
built that 13.4 million, I think, into our capital budget basically
for next year. So, I think the costs are pretty much under control.
MR. GRISWOLD: Okay.
COMMISSIONER LEHMAN: It will be done electronically. You know, we
will use our automated system. You will get a paper copy, but we
will push a button and you'll get the paper copy out of the
automated system.
MR. GRISWOLD: Okay, good. The idea here is, we would like to
believe that there should be a paper copy of the application
published and available to the public as well as the examination
corps. Now, the second is, whether access to the contents of the
application file should extend to materials added after publication.
That's your question number ten. Our answer to that is, yes, there
should be access to the application. The public needs to know what
is going on with the application. We need to do that in a way so
that it doesn't interfere with the prosecution of the application.
We need to have access to that application. So, we strongly urge
that that be available. The third key point is, whether protest
procedures should be limited to prevent third parties from having
opportunities to protest that would amount to opposition
proceedings. Our answer to that is, no. We want to make sure that
there are two things to balance it. One is to get the right
priority so you can have a good examination. On the other hand, we
don't like to set up a prehearing opposition like we, hopefully,
just got rid of in Japan. So, we don't want that. So, I think there
should be tight limitation on the access, on delivering information
during prosecution. I think there shouldn't be comments. It should
be considered in a finite period. Then after that, it's just put in
a file. Reexamination is available if we introduce the
--reexamination involves more activity on the part of the opposer,
we will have a better system in that respect. Those are the three
main issues that I wanted to comment on. I could hit the other
questions if you want me to hit those quickly, if I have time. The
first one, your question one related to: Should the PTO require that
all application-related materials be delivered to a central
location? That doesn't seem to be a problem. Even if you deliver
something directly to the art unit, you should be able to deliver
something to the central location.
Number two: Should the PTO adapt a standard format? We think that
would be okay. We certainly could live to that. I answered three.
Number four: Should the patent applicant receive a copy of the
published application? I believe they should and there will
obviously be some cost associated with that.
Number five: Should the PTO permit accelerated examination? I
believe that they should and if they ask for it and seek it, then
they should pay a fee for that.
Number six: Since the cost of publishing applications must be
recovered from fees, should the costs be allocated amongst the
various fees? I think it should be allocated across the fees,
probably front end loaded a little bit. Once again, you have to do
the math and work that out. I don't believe that there should be a
separate publication fee. I don't think we want to put in another
cost factor in the process of collecting and getting extensions.
All of that would be related to a separate publication fee.
Number eight, a question relative to claiming priority, should you
be able to -- what should be the deadline. I think we want to force
people to drive through the process rapidly. So, I wouldn't give
too much of an extension for requesting priority. Because of the
timing, it could be involved with the provisional applications and
what not. You might require -- it might be 15 months from the
original priority date. By the way, I think the system should be
set up that, once you file your application, you're on a track of
publication. There shouldn't be a bunch of stops and starts and
what not. It should be on a track of publication. If you want to
get off that track, you have to do an affirmative act. That would
be our position relative to that. Once the patent has issued,
should the patent documents contain the -- should the information be
removed from the search files? I think the search files should have
in there the published application. Perhaps, I think you'd have to
study whether or not the final, the patent as issued, should be
published. I think we should have not only a published application,
but a published patent that is a complete document, not a changed
style document.
Number eleven: After publication, should assignment records be
published? Yes.
Number twelve: After publication, should access include biological
materials? On that issue, I think we'd better -- we will leave that
up to the people that are in that business, because maybe they have
good reasons why not.
Number thirteen: What types of problems would be encountered if all
amendments must be made by various changes to the present way we do
things? We can live with that. We will just have to teach
everybody how to do it differently. That may be tough, but we can
try that. Then fourteen, I already answered. We will submit some
written comments. These are our oral comments. Questions?
COMMISSIONER LEHMAN: Thank you very much, Mr. Griswold.
Are there any questions from any member of the panel?
MR. GOFFNEY: I just wanted to be clear. When you said that you
believe that the application should be published in a printed form,
is that different in your mind than making it available upon seeing
some summary or abstract?
MR. GRISWOLD: I think it is. Having it in a published form is
different than having it in just an abstract. Yes, I do.
MR. GOFFNEY: So, isn't it a greater burden inasmuch as you want to
have access to the full record after publication for making
determinations about the specification and the claims?
MR. GRISWOLD: Would you repeat that question?
MR. GOFFNEY: I said, do you think that not to have the full
application published is a greater burden, inasmuch as you would
have to have access to the record in order to interpret --
MR. GRISWOLD: No, I think they may be used for different purposes.
So, yes, I think that they are different and distinguishable events.
So, that is separate in my mind from having the record available
later.
MR. GOFFNEY: Thank you.
COMMISSIONER LEHMAN: Next, Mr. Anthony D. Sabatelli.
MR. SABATELLI: My name is Anthony Sabatelli. I am employed at the
Procter and Gamble Company, 11511 Reed-Hartman Highway in
Cincinnati, Ohio, zip code 45241. My position is counsel of
patents. The phone number there is area code (513) 626-3266. The
comments I will be presenting represent the views of Procter and
Gamble. Assistant Secretary of Commerce Lehman, Deputy Assistant
Secretary Kirk, Commissioner Goffney, Deputy Assistant Commissioner
Kunin, Solicitor Linck, Procter and Gamble would like to thank the
Patent and Trademark Office for the opportunity to testify at this
public hearing. Procter and Gamble is also a member of the
Intellectual Property Owners, an organization that is presenting
testimony today. Because of the significance of the 18-month
publication change, we felt it was important to also testify on our
own behalf. Procter and Gamble strongly supports 18-month
publication. The major reasons why we support this change are
provided in our written comments. In anticipation of the change to
18-month publication, the PTO is now seeking comments in 14 question
areas. I will now address these. Our position is summarized on the
handout that I've given you. We support publishing the enter patent
application, including amendments as it exists at a fixed point,
such as three months before publication. We support providing the
public with continuing access to the entire application file after
publication. We support publishing assignment records and making
deposited biological samples available to the public. We support
three month deadline after filing for making a claim for priority.
We believe that 18-month publication should be automatic, unless the
applicant timely and affirmatively acts to abandon the application.
We support allowing third parties to submit prior art at the PTO up
to a period of three months after publication. We support the PTO's
proposal for submitting amendments to the application file.
However, we oppose establishing formal, pre-grant protests or
opposition procedures. Now, I will address some of these question
areas in more depth. Questions three and ten are related. These
questions seek comment on the scope of the information to be
published at 18 months and on the extent of the access to the file
to be given to the public after that time. Regarding the
publication issue, the PTO is proposing four options. Our position
is that the PTO should adopt option four, which proposes publication
of the entire patent application as amended at some fixed, such as
three months before publication. This option would make the
greatest amount of published information available to the public.
We do recognize that, this option might not presently be feasible
because of monetary and logistical restraints. However, once
electronic filing and a dedicated CD-ROM system are available at the
PTO, it should be relatively easy and economical to provide the
public with the entire application, at least, in electronic format.
In the interim, until the PTO establishes such a computer system, we
would support implementing option two, publication of an abstract,
similar in format to that now published in the official "Gazette,"
provided this option is coupled with granting continuing public
access to the application file. It is essential that the abstract
contain sufficient information to enable a knowledgeable reader to
determine whether seeking access to the application file is
warranted. Therefore, the abstract must contain the broadest or a
representative claim and appropriate bibliographical information.
Regarding access to the application file after publication, the PTO
proposes making the file available for public inspection either as
originally filed or as exists at some fixed point before
publication. We do not agree with this type of limited access. We
strongly believe that the public should be provided with continuing
access to the entire application file at the time that access is
requested. The PTO is reluctant to allow continuing access,
contending that it would require removal of the file from the
examiner, thereby interfering with the examination process and
causing delays. We do not agree with this reasoning and believe
that any potential delays can be easily minimized by keeping
duplicate or even triplicate file wrappers as is the practice at the
European patent office. Also, once the PTO installs an electronic
filing and CD-ROM system, the feared disruptions to examination
should become non-existent. We believe that continuing public
access to the complete file will provide the public with the
greatest amount of information. An interested party would be able
to check on the current status of the application, learn what prior
art is being considered by the PTO and get a reading on the possible
outcome of the examination. This information would help reduce the
uncertainties inherent in the present system and would help reduce
the potential for post issue litigation. This reduction in
litigation will reduce the costs associated with technology
development and will also provide more incentive for these
developments. Regarding questions eleven and twelve, we support the
PTO's proposal to make assignment information and deposited
biological samples available to the public. Regarding question
eight on handling claims for priority, we support the PTO's proposal
that a claim should be forfeited unless it is made within a
reasonable period, such as three months. Question seven relates to
the publication mechanism. We believe that all patent applications
should be automatically published unless some affirmative action is
taken by the applicant to withdraw and abandon the application.
Publication should proceed whether the applicant timely paid any
required publication fee. This procedure is preferable to the
alternative procedure where publication is made contingent upon
payment of a publication fee. The alternate procedure opens an
loophole whereby an applicant can potentially delay publication by
submitting a late fee payment along with a petition to revive the
application. We believe that the cost of publishing an application,
where the fee is lacking and the application is allowed to remain
abandoned, would be relatively small. This cost could be more than
offset by the benefit of reducing delays and reducing the potential
for abuse. Regarding question fourteen, the PTO seeks comment on
the submission of prior art by third parties and also on the
establishment of protest and opposition procedures. We do not agree
with permitting unrestricted submissions. Unrestricted submissions,
especially when coupled with continuing access to the file, could
interfere with examination and could also be abused by third parties
seeking to delay issuance of an application. We support a system in
which a third party would be permitted to submit relevant prior art
to the PTO up to a fixed period, such as three months after
publication. For all subsequent submissions, the third party would
be required to wait until the patent issues and then request the
reexamination, as is the practice under the current system. We do
not support establishing formal pre-grant protests or pre-grant
opposition procedures. Our experience in Japan has shown that these
procedures are costly and can unreasonably delay the prosecution and
ultimate issuance of a patent. Also, pre-grant protests and
opposition procedures could be abused by third parties seeking to
harass an applicant by purposely delaying prosecution. Instead, we
believe that post-grant reexamination and opposition procedures
should be used for challenging a patent. Regarding question
thirteen, we support the PTO's proposal for entering amendments with
some suggested safeguards that we have in our written comments. In
summary, Procter and Gamble supports 18-month publication of patent
application. We believe that the PTO should publish a patent
application as it exists at a fixed point, such as three months
before publication unless desirable but acceptable interim procedure
would be to publish an abstract containing the broadest or
representative claim along with appropriate bibliographical
information. In either case, we strongly believe that the public
must have continuing access to the entire application file. Any
potential disruption caused by such access could be minimized. We
support publishing assignment records and making deposited
biological samples available to the public. We support a three-month
deadline after filing for making a claim for priority. We believe
that 18-month publication should be automatic, unless the applicant
timely and affirmatively acts to abandoned the application. We
support allowing third parties to submit prior art to the PTO up to
a period of three months after publication. We opposed the
institution of formal pre-grant protest or opposition procedures.
Finally, we support the PTO's proposal for submitting amendments to
the application.
COMMISSIONER LEHMAN: Thank you very much.
Next, I'd like to call Mr. Richard L. Donaldson.
MR. DONALDSON: Commissioner Lehman and panel, I am Richard L.
Donaldson. I am the Senior Vice President of Texas Instruments,
Incorporated and general patent counsel. I am appearing today on
behalf of Texas Instruments. I really do appreciate the opportunity
to address this hearing. Judging from the testimony given so far
today, I think we will be giving a little bit different view of what
you have heard so far. I do have a number of comments concerning
the procedures for implementing the 18-month publication. We are
submitting written responses to the 14 questions that were
identified in the December 12th "Federal Register." So, I'm not
going to dwell on those right now. We will submit those before the
end of the week. What I would like to discuss are a couple of
issues which have caused TI to have some serious concerns about the
effects the implementation of these procedures will have on the U.S.
patent system. I think from the bottom line point of view, our
conclusion is that the type of procedures that will be required to
implement the 18-month publication will have the effect or, at
least, the potential of significantly reducing the enforceability of
patents in the United States. There are two areas that I really
want to concentrate on and address this morning. One is what we
believe to be an incompatibility between procedures for implementing
an 18-month publication and the duty of candor as required by Rule
56 and the protest proceeding as we currently know it. The second
area I'd like to discuss is an area, again, of what we considered to
be an incompatibility between procedures for implementing an
18-month publication and our requirement in the United States for
disclosing the best mode. We'd like to address the conflict first
that we see between the duty of candor and the protest procedure.
As we all know, Rule 56 is an area that really sets U.S. patent
acquisition apart and above prosecution in the rest of the world.
We strongly support Rule 56, because you get stronger patents and
they are more enforceable. What it requires is for the applicant or
the attorney to have the affirmative duty to provide prior art to
the Patent Office that he thinks may be relevant. When you couple
this with the protest procedure, at least, as it currently exists,
we think that there is a very substantial potential for abuse. A
couple of the people who have testified already today have pointed
out part of the problem. If you have the 20-year term for the
patents, the delays that are possible by considering before the
grant of the patent prior art could very well delay issuance of the
patent and really make the effective life of the patent shorter.
But I think it goes beyond that. I think third parties would have
the opportunity, not only of submitting prior art to the Patent
Office, but submitting prior art to the applicant or attorney. We
see that quite often in our activities. This puts the attorney
really on the horns of a dilemma. He now has prior art that someone
has said may be more relevant. He may, perhaps, have no
opportunity, no choice other than to submit it to the Patent Office
and delay the issuance of the patent, otherwise he runs the risk of
violating Rule 56.
COMMISSIONER LEHMAN: Well, isn't that what we want, though? If
there is prior art that is relevant, we only want that to get into
the process.
MR. DONALDSON: Absolutely and if it is really relevant prior art,
the patent attorney will delay issuance if necessary to get the
Patent Office to consider it. Where abuse could come in is, if
someone gives you a piece of prior art that you don't think is
relevant, but you also do not feel comfortable in not submitting
that to the Patent Office, even if it delays, even if you have to
withdraw it from issuance, because if you are wrong, if someone else
disagrees with you, then you have violated Rule 56. I think there
are ways that can be addressed in the procedures for implementing
this, but I think two things would have to happen. One, the protest
period should not be permitted prior to grant, if you want to call
it a protest period. I think we should have opposition, post-grant
opposition where this material could be considered. I think the
second thing that would need to be addressed is relaxation of Rule
56. So, during this interim period, from the period of publication
to when the patent is finally granted and can now be opposed, the
attorney would not be required to submit prior art given to him by
third parties at his own risk. I mean, it could be considered
during the opposition period, but he shouldn't have to be faced with
that decision, whether to delay issuance of the patent or not. So,
I think those would be two types of changes that would be required.
MR. KIRK: In terms of your proposed grant opposition that you
referred to, would you contrast that with reexamination?
MR. DONALDSON: Yes, I would contrast that with reexamination. I
would support a more effective opposition than under the current
reexamination. I'd like it to be inter-parties.
MR. KIRK: But given the legislation that was introduced to part of
the last Congress that would open up reexamination, that would make
it more inter-parties in nature -- I'm not sure if you're familiar
with that, but that is a broadening of the participation by the
third party, yet still under some control. Assuming that that were
the type of reexamination that we had, would that be the same as
this protest procedure or would they be different?
MR. DONALDSON: No, I think that would be basically the same. I
think I would still want to see how that is going to -- I am
familiar with it and I still would be curious to see how exactly
that is going to be implemented. We are familiar with some
post-grant opposition systems that still permit very lengthy
periods. I think we need to address that. The second concern that
we have is a little bit more difficult to come to grips with. That
is the best mode, what we consider to be the best mode conflict. I
believe this places, when you couple this with the early publication
procedures, that this is going to place U.S. inventors at a
disadvantage to the rest of the world. I also believe that it will
have a chilling effect on innovation and R&D, particularly in one
aspect and that has to do with process patents. We currently -- and
I'm not sure how other companies handle it, but we currently do not
file process patents overseas, because of the disclosure, you know,
the early publication. They are basically unenforceable. In the
judicial system, you don't have discovery. So, we basically do not
file process patents overseas. We do file them in the United
States. We have the opportunity to determine whether or not we will
be able to obtain patent protection and make the choice. Do we want
to accept the patent or do we want to try to rely on trade secrets?
The 18-month publication, however that is implemented, will
basically take away that choice, because the 15 month period where
you're going to have to make a decision whether or not to have your
patent application published or not, you will not know whether
you're going to get a patent or not. I think what would happen in
our case is, we would elect in almost all cases to try trade secret
protection. I think this could have an unintended result and the
public will get less information about new inventions, particularly
with respect to processes. I don't think that was intended. I've
mentioned the uncertainty of whether you would get patent rights
after 15 months. I think the workload on the Patent Office is going
to be very heavy. I don't think it is realistic to expect that the
prosecution will have developed to a point where you can make a
realistic or informed choice as to whether or not or what kind of
patent you're going to get at 15 months. This leads to another
aspect. The potential patent right that you might get, we do not
think, is fair return for disclosing your best mode of operation. I
know there is the possibility of a post-publication, pre-grant
royalty, but this really puts an inventor in a difficult choice. He
still does not know what patent protection he's going to get. In
all likelihood, the claims will change from what was published and
what he finally gets. So, he may have no opportunity for royalty
during that period anyway. In addition to that, actual notice is
required. So, he has to go to his competitor and tell them his best
mode of doing something that he has no idea about whether he will
get a patent on or not. I think that is an unrealistic choice to
force an inventor or a company to make. So, I think it could have a
chilling effect also in that respect. I think part of the negative
impact of this could be having procedures that really restrict or
eliminate the best mode requirement. The U.S. is the only country
that has that requirement. I think this is a tremendous advantage
to people and companies and other countries, but also I don't think
it is in our interests to do that. I think the duty of candor and
the best mode requirements are two of the things that make the U.S.
patent system the strongest in the world. I really think we ought
to keep those. I also believe that there is some difficulty and
incompatibility with procedures that will implement this early
publication. Just as a final point, it perhaps goes beyond what the
comments are intended to address here. But TI really does support
patent harmonization. We think patent harmonization needs to be
looked at under the entire patent system basis, not a piecemeal
approach. I don't think that we should, in the interest of
harmonization, lower our standards to where we have uniform
mediocrity with the rest of the world. We had a strong system and
we need to keep that system. We have identified some changes that
we think are necessary if we go to the 18-month publication, but
even then, we will continue to have concerns about the effects it is
going to have long term on the U.S. patent system. Thank you very
much.
COMMISSIONER LEHMAN: Thank you very much, Mr. Donaldson.
Next, I'd like to call R. J. Riley.
MR. RILEY: My name is R. J. Riley. I represent Riley and
Associates. I'm an independent inventor. My address is 1323 West
Cook Road, Grand Blanc, Michigan, 48439. The phone is (810)
655-8830. I'm going to address each of the, I believe, 14 items in
order. I won't read the questions, since everybody should be aware
of them. Regarding question one, I do not believe it's reasonable
to require materials to be sent to one location. The practice would
add delays in processing materials and would make it likely that
material would not be processed in a timely manner. Question two, I
do not believe that a standard application format is practical. By
the nature of innovation, all inventions are unique. While many of
them might fit in a standard format, I suspect that there are always
going to be exceptions where it won't. I also believe that will add
significant costs, indirect costs to inventors. Number three, to
minimize burdensome costs associated with publishing, the "Gazette"
should only publish the patent description of an inventor. Any
additional information should be purchased by the party that wants
the information, with that party bearing all the costs associated
with publishing, including all administrative costs associated with
preparing the information for publication. Four, my answer is, yes,
the cost of sending the notice should be borne by those companies
who would benefit from the publication. Five, the PTO claims that
the average pendency is 19 and a half months. The PTO should face
sanctions for failure to process a patent within that time. I think
that the PTO should use the money that would be associated with
publishing to improve the system so that all patents are published
within the 18-month interval.
COMMISSIONER LEHMAN: Can I ask you a question?
What kind of sanctions would you consider?
MR. RILEY: I don't know. I think that would be an interesting
thing to discuss. I do believe that submarine patents are a direct
result of the Patent Office not prosecuting things in a timely
manner. I understand that some patents, once they become delayed,
become dogs for the examiners involved. I think that most examiners
are probably trying to do a good job, but if they get a file that
has a long history in, it represents a huge amount of work. You get
a job like that, you tend to put it on the bottom of the pile and it
makes the problem even worse. Six, all costs associated with
18-month publication should be borne -- did I address that or not?
I guess I tried to -- should be borne by those who wish to access
the patent information. Any indirect costs incurred by inventors
should also be passed on in the publication fee. The application
fee should be lowered to reflect a refund for those increased costs.
I do fee that this is going to add indirect costs in prosecuting
patents. Item seven, the PTO should not publish unless they receive
notice to do so. Patents are property, intellectual property. To
publish without an explicit consent, could cause publication to
occur where it wasn't intended. It is taking away the option of
using trade secrets as a method of protection. If something is lost
in the mail -- or there could be a lot of reasons, followups,
paperwork followups. Eight, my answer is, no. Nine, this will be a
moot point if the PTO processes all patents in a timely manner,
i.e., before 18 months. Ten, yes. Eleven, yes. Twelve, no.
Thirteen, no comment. Fourteen, I think like most other people, I
don't want to see an opposition system like we've had here in item
fourteen. I also have some other concerns. I don't think that the
estimate of cost on this, your estimates are reasonable. I have
done a great deal of systems work related to computers in the
industrial sector. I think we can look at your existing computer
system and the fact that it is dramatically beyond the original
schedule and my understanding is, at this point, it's over a billion
dollars. That is what I have been told. If that's wrong --
COMMISSIONER LEHMAN: No, we spent about a half a billion dollars
since it was initiated in 1983.
MR. RILEY: It's still significantly beyond its schedule. I think
that what is going to happen if you try to implement a system like
this, in a year, you aren't going to be successful. Then you're
talking about giving people access to the patent files. I believe
that's going to delay the patents and bog the system down even more.
I just don't think that the numbers are realistic. I think you have
past experience that indicate that that might be the case with the
existing computer system. It is dramatically over budget, right?
COMMISSIONER LEHMAN: It's not over budget, no.
MR. RILEY: Well, that's not the information that I had.
COMMISSIONER LEHMAN: Well, we have to operate on the basis of
facts. Probably nobody is more audited than we are by everybody,
from the General Accounting Office, to the Inspector General to
everybody else.
MR. RILEY: The last thing, all bureaucracies like to increase their
size and that's true whether you're talking corporate or government
or whatever. Most certainly, we are seeing dramatic downsizing in
corporate America, where it sort of crept up on them and they had
layers and layers of middle management. But almost every manager
wants a bigger organization under them. So, it's more budget and
everything associated with it. I can't help but wonder if the
18-month disclosure, the cynic in me wonders if this is a method to
dramatically increase the budget and the scope of what the Patent
Office does. So, with that comment, are there any other questions?
COMMISSIONER LEHMAN: No, there aren't. Thank you very much. I'd
like to remind people that President Clinton actually has indicated
that we're going to eliminate a thousand people. President Clinton
has indicated that he is going to reduce the size the Federal
Government by 250,000 employees. We already have achieved about a
100,000 reduction already. So, I think that I want to make it
perfectly clear that, no one in this administration is interested in
expanding the size of the bureaucracy. Next, I'd like to ask Thomas
Irving, please, to come forward.
[No response]
COMMISSIONER LEHMAN: Is Mr. Irving not here?
[No response]
COMMISSIONER LEHMAN: I will then ask Mr. Litzsinger to come
forward, please, to fill this spot.
MR. LITZSINGER: Thank you, Mr. Commissioner. I sincerely
appreciate it. We had a conflict, as you are probably aware of,
later. I'm Nip Litzsinger and I'm the Vice President of the
Alliance for American Innovation. We're located on Connecticut
Avenue, downtown. The phone number is (202) 293-1414.
In Washington, the Alliance represents over 3,000 independent and
small business inventors along with working in the best interests of
a number of venture capitalists in a number of biotech firms. Our
clients are from coast to coast, border to border. We're the
fastest growing and only group within Washington that are actively
representing the independent inventors as we progress. You note a
large audience today and none of our over 3,000 affiliates are here
other than myself. I know many of them have submitted testimony for
the record. We have received information copies of that testimony.
I've taken their comments in the development of the response to your
14 questions. Most of our affiliates believe that the discussion of
the 18-month publication in isolation without discussing the 20-year
term, without discussing prior user rights might be improper because
they old fold together as far as the inventor is concerned and as
far as the innovative community in the nation is concerned.
Additionally, reference to the 18-month publication may be very
misleading, because I know I sat in on one of your presentations in
Houston two weeks ago, to the inventors group and also to the patent
attorneys down there. At that time, there was a lot of support
issued by your office for the provisional application. In response
to a question, the representative of your office indicated that the
clock on 18 months started ticking at the submission of the
provisional application. So, we're not talking about 18-month
publication. We're talking about six month publication in some
cases. Most of our folks are betting on the fact that, when their
application is reviewed in six months, large multinational and
foreign interests will have a product on the market that is
significant by the time their patent is issued. So, that, to us, is
a real threat. It's a real threat to the venture capitalists in
this country and the others that are interested and anxious about
what is happening as we go along.
COMMISSIONER LEHMAN: If that were true though, wouldn't the
patentee at that time have exclusive rights vis-a-vis that other
enterprise that would be on the market?
MR. LITZSINGER: He may or may not. It would depend on enforcement
and many of the patentees that we're speaking of find themselves on
the short end of the stick because they don't have the financial
resources to pursue the money that supports those other actions.
So, it isn't a given that this is a level playing field. It is not
a level playing field. If in fact most patents are granted in 19
and a half months, then why is 18-month publication required. Why
are we spending the money that we're spending on 18-month
publication if the data shows that we are now issuing in 19 and a
half months and we're going to get better? Well, it seems to me
that we're not going to get better. We're going to get worse.
We're adapting our system to harmonize with foreign systems inferior
to ours and less responsive to ours in issuing patents. Needless to
say, the following response that I have to your 14 questions does
not in any way endorse your basic proposal, but here it goes
quickly. I have submitted them in writing for you. These responses
are a gathering of the responses of our affiliates throughout the
country. All official application-related materials could be
delivered to one place. There is no problem with that as far as our
folks are concerned, in difference to what Mr. Riley said. Standard
application format is not necessary. Information to be published
may include the filing date, but not more than the abstract, if we
have to live with this system. The patent applicant should
absolutely receive a copy of the published information upon
publication. Accelerated examination under the present conditions
should be permitted and there should be absolutely no charge to the
applicant for filing and all costs should be borne by the PTO. The
answers to question seven are yes, no and should be definite, in
that order. Should priority or benefit be lost if not made within a
reasonable time after filing? The answer is no. The answer to
question nine is, that we do not care what is removed nor what is
enclosed on the issued patent. The answer is yes to questions ten,
eleven and twelve.
Our affiliates suggest that you tell us of the problems you
anticipate in question 13. Last but not least, protest procedures
should be modified to permit third party submission as suggested.
Our question is, how? Untimely submission by a third party should
be handled as they are now. I have been fortunate to travel in the
past five years to about 15 foreign countries. I am amazed at these
European and Asian countries, of all of the innovation that is ours
that is there, much of it under foreign corporate logos. It is our
innovation. This is our system that has been in place for 200
years. In the past six months, we have taken some gigantic steps to
put it out to sea, to be mediocre like the other systems are. We
are really playing with fire. We believe that not only on behalf of
the inventors, but of all of the innovative community in the United
States, whether you're in corporations or whether you act as
individuals or small business people, this could be tragic. We are
taking a successful system that served in not only our interests,
but the world's interests and we are submarining it. Thank you.
COMMISSIONER LEHMAN: Thank you very much, Mr. Litzsinger. Next,
I'd like to call Alan Fiedler, please. Is Mr. Fiedler here?
MR. FIEDLER: My name is Alan Fiedler and I'm a patent attorney at
Becton, Dickinson and Company, a medical devices and diagnostic
systems manufacturer international company. My comments are mine
and a co-author of mine. They are not necessarily the views of the
corporation, Becton Dickinson and Company. Basically, we didn't
present comments when the 18-month publication was first addressed.
I think it is important -- my comments will show that it is
different to separate the 20-year term of patents from the 18-month
publication. My colleague will be speaking tomorrow at the 20-year
term presentation. Our concern with 20-year term patents is, it is
very misleading. You're not getting 20 years of enforceability
rights. That is going to be shortened by the amount of prosecution
that takes place. I think it is unfair and unjustifiable to have
some patents issue with longer enforceability periods than other
patents. Today, every single patent that issues has a 17-year
enforceability period and I think that should continue. You should
be able to know how long your patent is going to be enforceable. It
is even more unfair to take the enforceability off the front end of
your rights. That is the time when you're more likely to be able to
reap rewards before the technology ages. I think that 18-month
publication would be a way to solve that problem that we have with
20-year terms, but I think we need to consider what is done in the
EPO in Japan and Australia, where provisional remedies are granted
when the application is published. Provisional remedies being that,
you are entitled to go back to your publication date to obtain
royalties or whatever may be necessary based upon what those claims
said, as compared to what the claims said when the patent issued. I
think it is important for us to consider this if we really intend to
harmonize our laws with the rest of the world, the major leaders.
Without provisional enforceability, I think that many inventors will
be harmed. The inventors that are most likely going to be harmed
are the inexperienced, pro se inventors who are trying to prosecute
their first application through the Patent Office. If they
unfortunately are assigned an inexperienced examiner who has to have
his work reviewed by a senior, that prosecution is going to be
delayed and delayed. Why should they suffer? I think the patent
system is really meant for their benefit as well as anybody else's
and they should be able to reap their rewards. The other people
that are going to suffer are technologies that are well-advanced,
biotech technologies. Software is where prosecution takes quite a
while. Why should they lose the front end of their royalty stream
because of the long prosecution? In addition, being a corporate
patent attorney, we try to value applications that are submitted to
us for purchase. The trouble we have is, if you have a patent
application where you have an indefinite enforceability period, the
more money you invest in an asset, the value of that asset
continually depreciates, because your enforceability period
continually decreases. So, it makes it even more difficult now to
value such assets. So, we understand the PTO has recognized that,
in certain situations, extensions should be permitted, say, if you
are up on appeal, secrecy orders or an interference. We don't see
that that kind of solution would solve the discrepancy between the
enforceability periods between patents. We also are encouraged with
H.R. 359 that was introduced on January 4th that seeks to amend the
term to be the longer of the 20 or the 17 years. I think that would
solve this discrimination problem between applications. However, we
are concerned with the publication provisions in there, because they
do not address providing any enforceability rights that you can go
back to when the application is published. Many applications we
file, in fact, all of them, contain proprietary information. The
only reason we're filing them is to obtain a patent. If we are
forced to publish applications, that technology will be turned over
to our competitors and they will have a jump on us where we cannot
proceed with any enforceability against them when our patent finally
issues. We will have to wait until the patent issues and then try
to get them off the market. So, basically before I get to the
specific questions that I want to address, we encourage the Patent
Office and Congress to consider publishing applications at 18
months, but also granting applicants and patent owners some form of
provisional protection and remedies after the patent issues covering
the period starting on the publication date of the application.
Now, specifically to the questions, I won't address them all. With
respect to question three, what should be published, we encourage
the Patent Office to see what the EPO does and analyze their
procedures on how they handle it. I think the publication could be
limited to something like in the office "Gazette." At a minimum, it
should be a selected claim by the applicant, a selected drawing by
the applicant and the abstract. Of course, then we also propose
that the full application, as filed, be available either on Internet
or at the Patent Office so people can make copies. It also should be
put into prior art database so that software examiners will have
those publications available to improve their search on their
software applications, as well as all the other examining fields.
Question seven, I think that applicants should be entitled to
abandon their applications maybe three months prior to the
publication date to avoid the application being published to protect
any trade secrets they may have if issuance seems doubtful.
Question ten, I think full access should be available upon
publication to the entire file wrapper. We do not want to hinder
the time of the application in the Patent Office. Maybe have copies
available like we do have patents available. There should be some
way to handle that, if at all. Question twelve, regarding
biomedical substances, I think access should be granted upon
publication. But of course, all of my views in favor of publication
are conditioned some provisional enforceability. We do not want
access to the biomedical materials unless we have some way of going
back to that publication date, if we do get a patent, to seek some
kind of royalty payments. We are not in favor of substitute sheets
for amendments, in response for question thirteen. We do not think
that is needed, because we hope the entire prosecution file will be
available. Regarding question fourteen, I think it would be wise to
have third parties submit prior art, with some description as to why
it is relevant to what they see in the application. I don't think
it should be an entire protest or opposition situation. That's it.
COMMISSIONER LEHMAN: Thank you very much.
MR. GOFFNEY: I have one question.
MR. FIEDLER: Yes.
MR. GOFFNEY: I was wondering how you characterize the
enforceability and the royalty flow being taken from the front end
under a 20-year term. How is that the case?
MR. FIEDLER: Well now, the term of the patent will be from the
original filing date up until 20 years from that filing date.
Enforceability --
MR. GOFFNEY: The term of the patent?
MR. FIEDLER: The term of a patent.
MR. GOFFNEY: No, the term of the patent is from the date it issues
up until 20 years from the filing date.
MR. FIEDLER: Right.
MR. GOFFNEY: That's different from what you said.
MR. FIEDLER: A basic situation that would get the point across is,
if you have two inventors who have substantially similar levels of
technology in their inventions. They are simple mechanical devices.
They shouldn't take more time to prosecute than another. You have
one inventor who is inexperienced. For some reason his application
is delayed. Let's say it issues 19 months after it was file. But
then the more experienced inventor gets a senior examiner and his
case gets through in 18 months. Somebody is being short changed one
month of enforceability. I think that's coming off the front end.
MR. GOFFNEY: Wouldn't that happen for a 17-month term? That is,
for a patent that issues at a time when the market is right for
using that particular patented device. The date it issues, then you
get your front end royalties and the better market. One that is
delayed in the process, regardless of how long the term of the
patent is would lose that opportunity. Isn't that the case in the
present system?
MR. FIEDLER: Yes, that would be the case, but basically what is
going on now is, you are forcing it to be off the front end because
we do have that 20-year cutoff at the end.
MR. GOFFNEY: Thank you.
COMMISSIONER LEHMAN: I think those questions will be more relevant
at tomorrow's hearing.
MR. FIEDLER: Yes, it will be addressed more tomorrow.
MR. KIRK: One question. You commented about the provisional rights
issue. Are the provisional rights that are provided, that were
provided in the bill that was introduced in the last Congress,
specifically S. 1854 and S. 2488, were those along the lines that
you're talking about here in terms of providing the provisional
rights that you have in mind?
MR. FIEDLER: I'm not prepared to address those. Basically what I
present there is what we're looking for and similar to what we have
obtained in Australia, Japan and the EPO.
MR. KIRK: I think that is very similar.
MR. FIEDLER: Yes. There are a lot of details as to what you're
claiming and what you end up with that would have to be analyzed.
So, I haven't looked specifically at those bills to see if they
address all of that.
COMMISSIONER LEHMAN: Thank you. Next, I would like to ask Robert
Armitage to come forward, please. Robert, the CD-ROM version will
come. We will all get them eventually.
MR. ARMITAGE: My name is Robert Armitage. I'm here on behalf of
the American Intellectual Law Association, although the views that I
will express here will largely be my own as well. We're located at
2001 Jefferson-Davis Highway in Arlington, Virginia. I'd like to
begin by offering to the Patent and Trademark Office and
particularly to you, Commissioner Lehman, a round of applause. I
think the initiative to move ahead in this Congress with 18-month
publication will be a magnificent achievement for the patent system
should Congress enact it. The American Intellectual Property Law
Association began its active support for 18-month publication
coupled with 20-year patent term from filing, coupled with an option
for accelerated examination back in May of 1990, when our board of
directors unanimously approved a set of legislative initiatives that
would accomplish these three objectives. We did not take this step
of proposing modifications to the U.S. patent system lightly at all.
We had a select committee that met for approximately three years,
under the chairmanship of one our past presidents, Bob Benson
[phonetic], that consulted leading academics and economists, as well
as a wide variety of members of the private sector to answer a
simple question. What is it we need to do for the 21st century to
make our patent system as competitive, as great an incentive as it
can possibly be to enhance the competitiveness of U.S. industry?
We believe that the Uruguay Round Agreements Act, enacted by the
last Congress, was an important first step because enactment of the
20-year patent term from filing obviously ended what had become a
potential for inventors and patent owners to take abuses of the
patent system. We hope now that, with this rulemaking and with the
favorable reception in Congress that, we can put the remaining
pieces of our proposed legislative initiatives of 1990 into effect.
Let me say that, in our written statement, we have taken what I view
to be a long term perspective on how 18-month publication should
take place. We realize fully that there is a relatively short
period of time between now and January 1, 1996 and it is certainly
our intention to work with you closely to make sure that what is
done is something that obviously can be done and can be done
successfully within the time interval. It is obviously a very
dynamic environment in which we work with electronic filing and
other technological changes in the offing. Let me say that, one
brief, cogent summary of all of our testimony would be that our
bedrock principle is that published patent applications should be
searchable and retrievable and citable with the same degree of
facility that issued U.S. patents are searchable, retrievable and
citable. We see, particularly when we review how foreign patent
offices work that, it is the published patent application that is
the primary document that is cited by examiners. It is the primary
document which patent applicants reference in their patent
applications as prior art. To us, that document needs to be
available in essentially the same form that issued patents are now
available. What this means, of course, is if the paradigm is a
paper search system, with search files for the examiner, that there
should be a printed document constituting essentially what is in the
issued patent in the examiner's search files. Similarly, where the
paradigm is the APS system of the Patent Office, this means that the
full text of the application is published and the image of the
application as published ought to be in the PTO database. In the
propose rules, there is a suggestion that a patent application
notice might be sufficient in the examiner's shoes. We question
whether this is feasible as an alternative either in the public
interest long term or in the interest of the examining corps long
term. Certainly, like every other witness who will testify here
today, we would like to see the PTO to minimize its costs, but we
also realize that it is our burden as applicants to help you recover
your costs from us. Therefore, what we are proposing in the way of
cost minimization is that, the Patent and Trademark Office take
every effort it can, by rule and otherwise, to prevent duplicate
technical disclosures from being put in the examining shoes and
being put in the APS system. If this means requiring applicants to
incorporate by reference technical disclosures from published
applications and issued patents, we think, particularly as
electronic search becomes the predominant form, that this would be
an excellent tool for reducing costs. Also, we would urge you not
to create a new fee for publication, because it not only costs the
office money to collect a new fee, but it costs applicants indeed
money to pay a new fee. We would rather suggest that the fees be
allocated an increase as necessary to meet any incremental costs,
particularly if we are accelerating the timing of the incurring of
costs for publication from around the time of issue to closer to the
time of filing. Then we propose perhaps the issue fees and filing
fees be readjusted. The last important issue for us, of course, is
the issue of public access. We believe that it is very important
that the patent application be available to the public, that the
patent prosecution history be available to the public on request,
but in a way that doesn't interfere with the examining process. If
this means that files can only be copied by examiners and only
copies of the files be made available and that this procedure only
be done evenings and weekends and on overtime, we would support it.
Obviously, any access to an application file that incurs costs,
ought to be borne by the person making the request. I will not go
through questions one through fourteen. You will note in our
materials that we have answered each of the questions fundamentally
and in accordance with the principles I have just enumerated.
COMMISSIONER LEHMAN: Thank you very much, Mr. Armitage.
If there are no questions, then we will go on to Paul Wolstenholme.
MR. WOLSTENHOLME: My name is Paul Wolstenholme. I live at 630
Dushane Drive in Bellefontaine, Ohio. I'm here to speak on my own
behalf, as an individual inventor. I've been awarded two U.S.
patents and one Canadian patent on a highly successful, low cost
grain storage structure. At this very moment, I estimate that over
50 million bushels of grain are being stored in my patented system
in this country. My system reduces the cost of storage by 75
percent, benefiting everyone from the farmer to the consumer. The
bad news is most of this use is unauthorized by me and, therefore,
infringing my patents. I'd like to speak to you today about how
third party involvement in a patent examining process would affect
middle class, individual inventors like myself. On December 12,
1995, the PTO invited testimony from the public to include comments
on procedures for accepting third party submitted prior art,
question fourteen. I don't speak from the perspective of a patent
law expert, a politician or a special interest spokesman, but from
the perspective of an ordinary citizen who invented something of
value almost by accident during the course of his normal activities.
This perspective is often overlooked but is important and should be
considered. Common sense is often lost in the technocratic details.
If we lose the critical components of our patent system, I don't
think we'll ever get them back. In my view, the ex parte nature of
the examining process is critical. I know what it is like to have
others to oppose the issuance of your patent. I have been forced to
initiate seven patent infringement suits against grain companies
like Cargill, ConAgri and Continental. The infringers have asked
the court to declare my patents invalid due to prior art, even
though that prior art had been fully considered by the PTO on
reexamination. Their actions forced me to pay attorneys to write a
total of four legal briefs in opposition to their motion for summary
judgment on non-validity. This latest 21-page brief filed on
November 30, 1994, I was billed for 45 hours of preparation time and
it cost me $6,750 for this one brief in opposition to the motion.
On February 10, 1995, the court ruled that my patent was not invalid
due to the prior art. If I had not been able to finance the
rebuttal, I would have lost by default. The only reason I was able
to bear this defense is because I have strong patents in hand and
I've been able to attract investors to buy a piece of them. I am
currently working on new systems that would result in even more
savings to our consumers. I feel that the cost of patent
prosecution under the new system would be out of my reach. If
potential infringers can offer prior art and arguments to defeat
your patent before it is even issued, investors would be impossible
to find. Foreign nations and large corporations will monitor all
the applications as they are published at 18 months. When they find
one that is of value and owned by an individual of moderate means,
they will unleash their attorneys and the results will totally
depend on whether you have the money to pay an attorney to argue
your case. The unintended result would be that, people like myself
would be well advised to stay out of the invention business. Thus
another unintended result would be that, American citizens are
deprived of the efforts of a large portion of current American
innovation. The framers of our Constitution had it right when it
came to encouraging invention, but it seems our leaders today just
don't get it. When I contemplate a patent system that makes our
application public after 18 months, I see an inventor-unfriendly
system. Illustrate my point, imagine being on a surgery table for a
heart transplant. You look at your doctors and are comforted by
knowing that they are highly competent and dedicated to saving your
life. Then you look at another team of competent doctors standing
on the opposite side of the table, highly paid by a third party and
equally dedicated to the opposing outcome. [Laughter]
MR. WOLSTENHOLME: What inventor would put himself in this
situation? What investor would support him? I respectfully
recommend that if the 18-month rule is implemented that third party
actions be severely restricted.
COMMISSIONER LEHMAN: I thank you very much. That is really one of
the questions that we have, what kind of protest procedures should
there be. I want to be clear that your opinion is there clearly
should be virtually no protest procedures.
MR. WOLSTENHOLME: Not being a patent attorney, I don't know how to
comment to that, but I think that it is something that the PTO has
to consider.
COMMISSIONER LEHMAN: Yes. Your primary concern is that you not be
subjected to pre-grant litigation?
MR. WOLSTENHOLME: Yes, sir.
COMMISSIONER LEHMAN: Thank you very much.
Next, I'd like to ask William T. Fryer to come forward, please.
MR. FRYER: I have a few handouts for the class.
[Pause]
MR. FRYER: Commissioner Lehman and other distinguished members of
the Patent Office staff, it is my privilege to speak to you today.
My name is William T. Fryer, III. I'm a professor at the University
of Baltimore School of Law. The address is 1420 North Charles
Street, Baltimore, Maryland, 21201. My work telephone number is
(410) 837-4553. I'm speaking today with my own views. I do not
represent any of the organizations with which I am involved. I will
skip over my background that is in my paper. Generally, I have been
involved in the development of design law. Particularly, I will
mention thought that I have been involved in the process that is
going on now concerning the Hague Agreement, the revision of the
Hague Agreement on industrial designs. With that background, I can
perhaps give you some insights that might not be available. I think
I'm adding another question to your list or perhaps I'm asking for
clarification on a question that is implied. My recommendations are
that the Patent and Trademark Office should not publish design
patent applications as a part of the proposed 18-month publication
plan.
COMMISSIONER LEHMAN: Professor Fryer, I think it is important to
understand that the legislation which was introduced in the last
Congress and that we contemplated introducing to date does not cover
design patents. So, your question is already answered and
affirmatively. We're not going to do that.
MR. FRYER: I'm very pleased to hear that and I had that general
information, but I felt it was important to lay a foundation for
this position. I think there was some question in some of the
earlier legislation that did not clear state whether there would be
publication of design patent applications. I do appreciate the fact
that this patent office is now on top of this matter. For that
reason, I have tried to be very brief in my paper and just make a
few points. The most important point, I think, is that, when we
have been discussing patent law harmonization over the years, I
think generally speaking we have been talking about technology
inventions. In the context of WIPO's discussions, which I
participated in to some extent, their discussions -- and there is
even a definition, a clarification in the notes that say that it is
not, that these discussions are not relevant, are not to be applied
to design patents and utility models. It is my view that the
discussions that are taking place now at WIPO in connection with the
revision of the Hague Agreement are the most important preliminary
steps to determine just how to change the design patent system. One
of these issues that we are discussing at these meetings is the
question of secrecy of the design registration. So, the question of
publication is involved. There is also an element of pendency. In
other words, when will things be published? I've given you a chart
from an article that will be published in the "University of
Baltimore Intellectual Property Law Review," which points out that,
in general, once an application is filed at WIPO, it is published in
three months. So, I am actually saying to you that we will probably
have in the long run a publication system of maybe six months for
design patents. But I think we should wait for that opportunity.
One of the continuing problems, I think, is when we speak, we speak
of patents. We speak generally. They cover design patents, utility
patents and plant patents. I think we imply and I think we should
recognize in these discussions that we are talking about utility
patents, possibly plant patents, but we are not talking about design
patents, I believe. I think that the organizations that have had
these debates and had these discussions have consciously excluded
that area, if not literally excluded it. So, my recommendation then
and my experience is that any legislation that we file clearly state
the exception, which you did with regard to provisional
applications. So again, I think you are on track. I'm so glad. I
will make another few comments that are not in my written records on
the issues that you really came here to listen to. In general, I
support 18-month publication with the right to control the
publication and to allow completion of the examination, at least, to
the final rejection. My reason for that is, the global picture of
information flow now requires us to have that information and we are
getting it overseas. So, there is a global dimension to this and I
think it's important that we have this. I am concerned about what
Mr. Donaldson from TI said of the inequitable conduct. I'm very
concerned about that in terms of making special an application.
This is going to be the trade secret owner's only approach. This
Monday night in class, we picked out a current development, a
General Electro case, which had to define what a formal search was.
There is a real trap in that area about whether you have performed
the steps necessary under the present rules to make special. I
suggest you take a look at the requirements that must be met for
someone to make special, one of which is that you must conduct a
search. In that case, that Federal Circuit case said that that
particular patent attorney did not conduct a "formal search," within
the well meaning understanding of that term, although he did go
around and ask people and did check a few things. Admittedly, it
was not a strong case for the patent attorney. I think if you could
delete that provision, that requirement for a mandatory formal
search, that you perhaps might eliminate one of the obstacles Mr.
Donaldson had mentioned. That's essentially my statement on all the
issues. Thank you very much.
COMMISSIONER LEHMAN: Thank you very much, Professor. Next, I'd
like to ask Professor Harold C. Wegner to come forward, please.
MR. WEGNER: Thank you, Mr. Assistant Secretary, Mr. Deputy
Assistant Secretary, Mr. Assistant Commissioner of Patents, your
solicitor and Mr. Kunin. I consider it a privilege to address this
hearing. One of the highlights of this administration has been the
sunshine aspect of this administration, with unprecedented numbers
of opportunities for those of us in the public sector to speak. I
should identify myself first. I'm Harold C. Wegner, professor of
law, of the George Washington University National Law Center,
Director of the Dean Dinwoody Center for Intellectual Property
Studies and I'm counsel to Foley and Lardner. My address for
purposes of this hearing is, Foley and Lardner, Washington Harbor,
Suite 500, 3000 K Street, Northwest, Washington, D. C., 200007. All
of my views are personal, on my own behalf. I reserve answers to
all of the fourteen questions in written remarks. Two areas deserve
special comment, question ten, dealing with the publication of the
entire application and number fourteen, with what to do with
protests. Let's dispose quickly of number ten. The entire
application should be published. Most of the requests for
information will be satisfied by looking at the full application. A
bureaucratic nightmare will be created if we don't have these
published. There should be totally free access to the full contents
of the application, free in terms of the scope of the request, but
it should be at a fee, a user fee. I endorse the remarks of Mr.
Armitage who said, if has to be on weekends and at a fee for the
user so we don't slow the examiner down, so be it. It is
absolutely, totally vital that we have full access. It is ludicrous
to think of having just a printed application with no access.
Otherwise, we don't need the system at all. We can go to Europe and
get the parallel patent applications published in Europe and we are
wasting our time. So, 18-month publication implicitly means access
to everything.
Let's talk about number fourteen. Everyone in this room who has
testified expresses an implicit or explicit concern that there would
be time-consuming protests that would bog us down. Nobody wants to
permit games. Nobody wants to permit sandbagging of prior art.
Nobody wants to let third parties destroy prosecution before the
examiner. You have recognized this in your questions and in your
discussions. What we must do is strictly limit what can be filed.
I would go so far as to have a very strict limitation that prior art
could be submitted, but accompanied only by the briefest statement
identifying the prior art and what is relevant. This would be
followed by totally ex parte prosecution, with 0.000 percent chance
of intervention by a third party. By combining these features, you
would emulate the practice of the European patent office, where
interventions before grant are rare and unwise for a third party.
To put your powder exploded in an ex parte proceeding before a grant
is to shoot off your weapon before the grant and then you have
nothing left for an opposition. So, if we look at the experience of
Europe, I think we will completely, almost completely avoid any
problems of protests before grant and we must have careful rules to
do so. We need to modify Rule 56. Mr. Donaldson made a very good
comment. Now, in the overall picture, we should be changing Rule
56. Excuse me, may I take a glass of water?
COMMISSIONER LEHMAN: Certainly.
[Pause]
MR. WEGNER: In the overall scheme, we should be getting rid of Rule
56, getting rid of this curse on patentees and litigation where over
90 percent of patentees are accused of fraud, sham charges, real
charges and other charges. The public should protect itself. A
combination of 18-month publication and a post-grant opposition will
permit the public to take care of itself. This is a far superior
system. We should move in that direction. Short of that, we should
modify Rule 56. I share Mr. Donaldson's concern that, after
allowance, prior art may come in. I would say that if prior art is
submitted after allowance, that Rule 56 should be modified. The
third party prior art can simply be placed in the file. You
discharge your duty of disclosure under Rule 56 if you choose to
take the patent out and let the public take care of itself through a
reexamination or opposition or whatever and enhance the procedures
we are going to provide. We talk about a heart transplant. Really
what we have now with secrecy before grant, we have heart
transplants performed by charlatans, sometimes by good people. I
would rather have sunshine in the operating room. I would rather
have public scrutiny. We need to recognize that maybe 90 to 90 plus
percent of patent attorneys are excellent. The one or two percent
who are not, we need to expose them. Mr. Riley, I think, should
apologize for his slanderous comments about the corps generally.
The submarine patents, the one where we pay a submarine patent tax,
the major problem is due to refilings by applicants. Yet there are
occasionally bad actors inside the office. The way to weed this out
is through the bright spotlight of open prosecution. We don't need
sanctions. I think that goes without saying. The commissioners are
able to redistribute work and retrain, whatever else where
necessary. Again, I think on access, to return to access, access to
everything. Sunshine for everything is the best policy. I would go
even further and say that, the day that the law passes, there should
be access to pending applications, not publication of cases already
on file. One of the critical weaknesses in the office now, despite
the excellent reforms made by the assistant secretary made in
biotech, the most dramatic, wonderful reforms, still we have a cloak
of secrecy governing the Board of Patent Appeals and Interferences.
Virtually zero board opinions are now published by the Patent
Office. Those are the statistics for 1994. In previous years, there
may be ten to 20. Thousands of cases are available. They could all
be put on line. Then patent applicants, in seeking advice whether
to appeal or not, could search by a whole text of individual
examiners. What is their record on this issue? Has the examiner
made this rejection and been affirmed? If he or she has been
affirmed, can we work around this rejection? Can we challenge it?
Can scholars scrutinize, criticize, praise? This secrecy is one of
the strong weak points remaining that has been inherited in this
administration which has yet to be dealt with. So, I would take the
opportunity of using this legislation to open access to everything.
Everything that has been on file for 18 months should be made open
and we could make radical and great reforms at the board. Finally,
let's talk about strengthening America. This proposal is not about
copying foreign systems. It's not about weakening American systems.
It is about strengthening the United States' patent system. It is
about simplifying bureaucracy by getting better prior art available,
by getting the opportunity for interfering applicants to recognize
the existence of a potential interference and bring it to the
attention of the office. We are simplifying interferences. This is
about simplification. It is about parity. Just yesterday, it seems,
foreign systems started to introduce the 18-month publication
system. So, Japanese get native language publication at 18 months.
Americans, if they are in big companies and can afford Durwin's
Services and other services to get these translations from Japan to
get information about American inventions that have been filed in
Japan, they may be all right. The individual inventor can't afford
this. This is about parity with foreign systems. It's not about
weakening our system. It's about redressing something that happened
yesterday. Yesterday was 1964, when the Dutch introduced the
system. Once any system has an 18-month publication, with native
language publications in their home language, then why should that
one country have the benefit over the rest of the world? It was
only a couple of years, 1968, that Germany emulated this. Then
Japan followed. Well, we're only 30 years behind the times, 31
years now. So, I applaud you Assistant Secretary Lehman for
catching up. Thank you very much.
Any of you have any questions?
Yes, Mr. Kunin.
MR. KUNIN: I just have one clarification. You were talking about
modifying Rule 56 and I thought I heard you say that you were
talking about after allowance. There was a further statement made
earlier about further publication. Did you mean after allowance or
after publication?
MR. WEGNER: Well, I think what we're concerned with, I think if I
am prosecuting an application, I would welcome frankly getting every
bit of prior art information, if it is at an early stage, because
particularly if it is sham prior art, this strengthens my case.
Now, I can go and say, Mr. Examiner, this third party says that this
is dynamite prior art. Look how weak it is. Look how strong my
invention is. What would concern me is where the third party
sandbags the prior art and waits until it is procedurally too late
to submit it under the present rules. So, I think that has to be
addressed. Now, the overall scheme should in the long range, in my
opinion, be to abolish Rule 56 all together, abolish inequitable
conduct all together, but only at the time when we have not only
18-month publication, but a very strong, hardball inter-parties
opposition system in place so the public can take care of itself.
The reexamination law doesn't get quite that far. Various bar
groups and interested circles are studying the possibility of an
opposition system and, hopefully, that time is not that far off.
But on an interim basis, we must address Mr. Donaldson concern. It
is a very valid concern. Also with respect to the trade secret
issues, that is too much to address in the time today, but it is
another issue that has to be addressed and can be addressed.
COMMISSIONER LEHMAN: Thank you very much.
MR. WEGNER: Thank you very much, Mr. Assistant Secretary.
COMMISSIONER LEHMAN: Next, I would like to call Louis D. Maassel.
MR. MAASSEL: My name is Louis Maassel. I'm at 12716 Buckingham
Drive, Bowie, Maryland. The telephone is (301) 464-4006. I am
currently a consultant for the World Intellectual Property
Organization, Geneva, Switzerland, a specialized agency of the
United Nations. I am here on my own behalf and my comments are my
own. Most of my comments, I wish to direct it to something that was
really not discussed in the notice nor by any other people here this
morning. This relates to the Patent Cooperation Treaty and
international applications. I would like to submit the following
observations so that they can be considered in developing the
procedure and regulations for the publication of the U.S. patent
applications soon after 18 months from the priority date or original
filing date is no priority is being claimed. My comments relate
mainly to international applications filed under the Patent
Cooperation Treaty, international applications designating the
United States of America and international applications entering the
United States' Patent and Trademark Office as a designated office 20
or 30 months after the priority date. As you know, the Patent
Cooperation Treaty has been in effect for the filing of
international applications since June 1, 1978, over 16 years. The
PCT provides for the publication of all international applications
promptly after the expiration of 18 months from the priority date of
that application, subject to the reservation of PCT Article 64(3).
This reservation was taken by the United States of America and
provides that a PCT contracting state may declare that, as far as it
is concerned, international publication of international
applications is not required. The result is that, only those
pending international applications which designate only the United
States of America are not published by the International Bureau of
the World Intellectual Property Organization promptly after the
expiration of 18 months from the priority date of that application.
I should note that the PCT defines the priority date for the purpose
of computing time limits to mean the earliest claimed priority date
or if no priority of an earlier application is claimed under the
Paris Convention, the filing of the international application. The
matter of the United States of America withdrawing its reservation
under Article 64(3) should also be considered now, since the reason
for the reservation, no 18-month publication in the U.S., will no
longer exist. Any such withdrawal becomes effective three months
after the day on which the Director General has received the
notification. Therefore, any such withdrawal should be forwarded
three months prior to the effective date of the 18-month publication
procedure in the U.S. PTO. Note that, PCT Rule 48.5 currently
provides that if an international application is not published due
to Article 64(3), the U.S. PTO is required to notify the
international bureau promptly after effecting national publication
that is granted by the U.S. patent. When a national application or
a patent -- the United States the international application will
nevertheless be published by the international bureau [sic]. So,
when the U.S. patent issues, WIPO is to be notified and WIPO will
then publish. Almost all international applications designating the
United States of America as one of the countries in which the patent
protection is desired or published after promptly after the
expiration of 18 months of the priority date [sic]. Between 1978
through 1994, 207,696 international applications were filed
worldwide. In 1994, 34,104 international applications were filed
worldwide. Of these, 20,032 designated the United States of America
or 58.74 percent of all filings. I point this out to indicate that
publications promptly after the expiration of 18 months from the
priority date of the applications has occurred for many years for
United States' patent applications and have, therefore, been
publicly available for copying of claims for interference and the
citation of prior art by third parties. If the international
application is filed in Chinese, English, French, German, Japanese,
Russian or Spanish, the international application itself is
published in that language in which it was filed. International
applications filed in other languages are published in English. All
published international applications contain the title, abstract,
search report in English. Then I include a table which indicates
the language of publication. Basically, 68 percent are filed and
published in English, 14 percent German, six percent Japanese, five
percent French, one percent Russian, .4 percent Spanish, .3 percent
Chinese. Other languages such as Dutch and Swedish are published in
English and amount to four percent. Therefore, a total of 72.5
percent of the international applications are currently published in
their entirety in English. This is relevant when the U.S. PTO
considers whether to re-publish any, all or only non-English
international applications when they enter the international phase
at 20 or 30 months after the priority date. It should be noted that
the English version of the "PCT Gazette" publishes all of the
bibliographical information from the request form, figures if the
application contains drawings and the title of the abstract in the
English language. This provides the basic identifying information
for all published international applications to the public in
English. Consideration should be given as to whether the U.S. PTO
official "Gazette" should include basic information such as the
title of the invention, the name of the applicant, claim or
abstract, et cetera, at the time of an international application
designating the United States of America is published by the
international bureau. Such a practice is currently provided by the
European Patent Convention in Article 158, which provides that:
"Publication under Article 21 of the Patent Treaty of an
international application for which the European office is
designated as a designated office shall, subject to paragraph three,
take the place of the publication of a European patent application.
It shall be mentioned in the 'European Patent Bulletin.'" That is to
say, the European office does not re-publish them. However, it's
"Gazette" includes a notice identifying the application and the fact
that it has been published by the international bureau. As to the
questions raised, really no comment on question one. On question
two, on the standard application format. It should be noted that
the PCT provides in Article 27(1) that, no national law shall
require compliance with requirements relating to the form or content
of the international application different from or in addition to
those that are provided for in this treaty and the regulations. The
provisions for the physical requirements of the international
application is set forth in PCT Rule 11. The current U.S. PTO rules
of practice take these provisions into account. To require
international applications entering the U.S. PTO as the designated
office to meet different or additional formal requirements would be
contrary to the Patent Cooperation Treaty. Also note that PCT Rule
49.5 provides that no designated office shall require that the
translation of the international application comply with physical
requirements other than those prescribed by the international
application that is filed. Although the PCT provisions do not
control what a patent office require in non-international
applications, it seems to be preferable to have only one set of
formal requirements for patent applicants to follow and that these
requirements be that that are internationally used so that U.S.
applicants need not reformat their applications for foreign filing
and that foreign applicants need not reformat their applications for
filing in the U.S. PTO.
It should also be noted that the PCT regulations may be changed by
action of the PCT Assembly, however any substantial change would
probably not be acceptable to the 76 other member countries of the
PCT who have all changed their requirements to be those of the PCT.
Rule 11.5 requires that the size of all sheets of an international
application be A4, that is 29.7 by 21 centimeters. U.S. PTO rules
of practice are more flexible and provide that the range of sizes
for international application sheets and drawings [sic]. The
sanctions under the PCT are that, if the receiving office believes
that the international application does not comply with the
prescribed formal requirements, it invites the applicant to correct
the defects within a prescribed period which may be extended,
failing which the application is considered withdrawn. That is
abandoned in U.S. PTO terminology. The PCT also requires that the
description claims drawing as an abstract, each commence on a new
sheet. No surcharge is made for any correction of any lack of
compliance when a time limit for correction is set.
COMMISSIONER LEHMAN: Mr. Maassel?
MR. MAASSEL: Yes.
COMMISSIONER LEHMAN: We have to keep things to ten minutes, because
it wouldn't be fair to the other individuals who are here. We have
your complete set of comments. So, we will study those.
MR. MAASSEL: May I ask how much time I have consumed?
COMMISSIONER LEHMAN: You've consumed all your time.
MR. MAASSEL: The major reason I asked is because I presented this
as oral mainly to inform other people of some of these concerns that
they may wish to comment on.
COMMISSIONER LEHMAN: Well, this will be available to other people
as well. As we indicated at the beginning, the transcript will be
available and people will have access to it.
MR. KIRK: And we have copies of all the submissions.
COMMISSIONER LEHMAN: We have copies of all the submissions too that
you can get here.
AUDIENCE MEMBER: Are you going to break for lunch?
COMMISSIONER LEHMAN: No, we are going to continue straight on
through. It may be if we don't finish before 12:30, then I will
have to leave the rest of the hearing for my colleagues. We will
try to move right along. Next, I'd like to call Francis Vitagliano.
MR. VITAGLIANO: My name is Francis Vitagliano, from Boston,
Massachusetts. The address is 117 Revere Street. I am a private
inventor. The views I present today are only my own and I thank you
for the opportunity of coming here today. I have received one
patent with a co-inventor and we are working with others. We have
looked at the issue of the 18 months. I have looked at the fourteen
questions and I notice that you did ask us to try to stick to that.
I will address question number three: What information concerning
application should be published in the "Gazette?" As a private,
independent inventor, the only information I would be happy about
having you publish is the fact that an application came in from
somebody, somewhere on that day. As an inventor, we tend to answer
questions that others have not asked. My experience has indicated
that the 18-month publication rules and the information that would
be published about it might very well not add to the fuel that
President Lincoln had talked about, but rather throw cold water from
a private inventor's point of view. We are concerned, my colleague
and I, that our application, once it goes in, if it were to be
published in 18 months, our names would be published. We have not
checked out the coordination of publishing the entire application
with the Privacy Act. Some 20 years ago, I worked at the National
Security Agency and I've been quite sensitive to those issues. I've
heard distinguished colleagues in the area talk about the research
that they can do in CD-ROMs and what have you. As private
inventors, our research and development budget is quite constrained.
Here, in 1995, we've had to cut it back a little bit, because of the
increase of the postal rates from 29 to 32 cents in '95. Our
governmental relations budget was taken up entirely by my plane
ticket today. Our patent research is done, however, at the Boston
Public Library and we appreciate the fact that the system is set up
to let us get into the system for free. I have spent about 12 or 15
years, along with Professor Modigliano [phonetic] who is my
co-inventor, doing research on that. We have retained, we believe,
competent, capable patent attorneys, but we try to do as much of the
work as we can. We obsessed over the issue of when we filed that
patent of whether or not we should also file overseas. The market
was rather large for our patent and we knew it had some value. We
obsessed over the fact that it was going to be published when
applied for and that was a real issue for us. So, we delayed up
until the last day and we made some changes. We would have made
changes in our application in the United States if the rules had
been changed and said that the application would be published.
COMMISSIONER LEHMAN: You did file overseas?
MR. VITAGLIANO: We did finally file overseas, but because we had
already had a little bit of interaction with the Patent Office here
in the United States, we changed the claims. What happened is, as a
result of the interaction with the Patent Office in the United
States -- by the way, it's just been extremely responsive and very
positive. We changed our claims. We took one out and we're now
working on that separately. It would have been detrimental to our
process and our licensing process, in finding a large company, if
that had already been published. That is a very, very important
issue to us.
COMMISSIONER LEHMAN: If subsequent to the 18 months you still
change your claims, you can hold off on that decision. That's not
in your 18-month publication. I mean, I don't understand the
difference between -- you published abroad at 18 months.
MR. VITAGLIANO: Right.
COMMISSIONER LEHMAN: If you were published in the United States at
18 months, you are apparently subsequently making these changes in
claims. What is the difference between if we had an 18-month
publication and all the other countries you have operated in?
MR. VITAGLIANO: Okay.
The issue is, if we could get a response, a guaranteed response for
the Patent Office within 18 months so that we could determine which
claims we are going to take out or expand, then I think we could
feel comfortable in having that published. We were able to make
those changes as the result of a very qualified examiner. He asked
the right questions and challenged us in the right places, so that
we changed our claims, took a major one out, having to now rework
that. When we filed abroad, that filing did not include that claim.
We would have been hurt if that claim had been published. So, we
have taken that out. One of the things that -- I want to do it in
summary, because I was very happy you gave us only ten minutes to do
14 questions, but I really like that from a governmental agency. If
at all, if there is anything I think from a private inventor's point
of view that we can do to help the Patent Office move along your
reaction time so you can begin to either grant or absolutely deny
patents within 18 months, that would be very helpful. The second
best answer is a quick no. So, in summary, I'd just like to say
that the 18-month publication rule, no matter what is published,
could very well increase the number of inactive private inventors in
the United States.
COMMISSIONER LEHMAN: Thank you very much.
MR. VITAGLIANO: Thank you.
COMMISSIONER LEHMAN: I think that point about helping us to
streamline the process is a really important one. Commissioner
Goffney is heading up an effort to reinvent the patent operation to
try to apply modern business process, engineering techniques to an
analysis of the office. At some point, he will want to have
hearings and get some ideas from people. Thank you very much.
MR. VITAGLIANO: Thank you.
COMMISSIONER LEHMAN: Next is Glenn Wise.
MR. WISE: Commissioner Lehman, ladies and gentlemen, I am here
representing myself and two ad hoc groups that have formed in the
search room. They were formed by what I will call the nuts and
bolts guys that have to do the outside searching, somebody
equivalent to the examining corps on the inside. We are the liaison
between the PTO and corporations, firms and individual inventors who
don't want to come down here or can't come down here. My address is
6450 Georgetown Pike, McLean, Virginia, 22101. I am representing
not only myself, but these two ad hoc groups. I'm not going to read
the entire ad hoc group name, because it is rather long. The first
group is for having both the application as filed in the classified
files as well as the OG notice section. That is a second ad hoc
group which is against imposition of access fees to obtain the file
history or electronic equivalent thereof should you be peeped by an
OG notice. I might start out by using a very trite expression that,
those who ignore history are bound to repeat it. We may be about to
do that. I'll mention three different occasions where the Patent
Office has started something and then backed off. In 619OG258, back
on 1/25/49, the Patent Office, then the Patent Office published a
notice whereby you could publish abstracts of applications. That
went on for a while. I'm not able to tell you exactly when it
stopped, but I know now that maybe one in 250,000 documents in the
office is an abstract only. This will all be submitted with my
written testimony on Friday. So, they decided to go to what I'll
call option two in the "Federal Register" notice, whereas we are
requesting options two and three and then they backed off from
option two later. Later on, they decided to do the space
requirements, which I'll address a little later. We will take the
jumbo patents and instead of giving you the jumbos, we will give you
one sheet, which you can see throughout the Patent Office now. But
after several years of complaining, we told them that that just
wasn't sufficient notice for search purposes. So now, we have them
up to a magnificent normally five sheets and depending on the
particular application involved, sometimes more. What they promise
now to give us is the front sheet, the first two pages of
specifications and all the claims. The one I have in my hand has a
total of seven pages, which it took to do that. So, in both cases
where the Patent Office was considering option two only, they have
backed away from that. The third situation I'll mention where they
backed down -- that was in the early, primitive days of
microcapture. They had the machine tool arts on microfiche. Within
about two years of its institution, everybody knew that it was bad
news. Both in and out and the outside was as strong about trying to
get rid of it as the inside, but it took about 15 years to get that
microfiche back on paper and full copies of the patents, during
which time we suffered through unreadable 'fiche and the like, I'm
just suggesting that, we are at a point now where it is decision
making time again if this legislation goes through. Let's not
repeat the same mistakes. We have different search requirements
than the corps on the outside. We have to do what are called
infringement searches, which the examiners do not do. We have to
study claims. I am submitting examples of three patents into the
record which on their face would appear to relate only to apparatus.
Here is one of them. The first seven claims are to apparatus and
the title is apparatus. The claim made is a method. If you give me
one sheet with just what is on that one sheet, I'd never know there
was a method claim in that. The documentation classification system
is based on claim disclosure. The subclasses are formed by reading
the claims in the active area at least and they are put in the
subclasses based on claim disclosure. Without that, we'd almost
have to check every patent in some subclasses by taking the
abstract, if it went that way and going to the file room or wherever
to get the full disclosure, at least, as filed. So, we're not
asking beyond the as-filed in the classified files, but we do need
that to be able to do our business. Now, whenever I mention this
around the corps and I see a lot of people every day, not only in
the corps, but you gentlemen sometimes and others in the hierarchy,
I get the answer, well, where are we going to put it. I've worked a
long time with the PTO on various problems and I have suggestions
and we will submit that, as to where you can put it without
involving any more floor space than you now have. Another thing is
that I think some people have overlooked. If you publish an
application and then it goes abandoned, it's still going to be prior
art forever. So, what we're talking about here, if my recollection
is correct, you issue now about 65 percent and abandoned about 35.
Is that correct, Mr. Kunin? I think under the publication system
the abandonment will be less at 18 months, because some people won't
even have an action. They won't even know. So, I would just guess
off the top of my head that maybe 25 percent will go abandoned and I
think that's probably high. But at any rate, 75 percent of what is
filed, let's say, is going to have to go into the files somehow,
either option two or option three, preferably option three. Based
on that, it just seems to me that since the patent is going to go in
one of the issues anyway, you might as well go the other half mile
and put the whole thing in. Now, if anybody has seen recent
reexamines, they are kind of like the re-issue in that, whereas, new
matter is added where they Italicize it and if it is taken out, they
put the brackets around it as most of you are probably familiar
with. I believe myself that the ideal way to do this would be to
put the as-filed application in and then put the changes in,
perhaps, on a different color of paper, like the reexams I've read
now are pink. Just attach, in this case, just three sheets to what
is probably a rather large reexam. I don't know how big it is,
because I didn't get the whole patent. It would seem to me that
that would make sense to do it that way. I might close just by
saying, if we go back to the founding fathers, one of them had some
expressions that were pretty good. Mr. Franklin was that gentleman.
He said that a job worth doing is worth doing well. I hate to
almost say it, it's so trite, but I think that's where we are at the
moment. I thank you for your time and I will be submitting
testimony. I have one more thing to say, excuse me. These ad hoc
groups will be submitting signature sheets stating their position as
to as-filed and access fees we have been circulating two or three
weeks. So, there are scores of signatures. Most of the people on
what we need in the search files are professional searchers. A lot
of people on no access fees are photocopy personnel or service
personnel who don't have all the money in the world. Often times,
an access fee might even kill their ability to get a file that
somebody requests them to copy. I know many occasions where
especially the younger people are waiting for the check from the
last job to come in before they can do the next job. I'm not
kidding. Thank you very much.
COMMISSIONER LEHMAN: Thank you, Mr. Wise. Next, I'd like to ask
Terrence Brown to come forward, please. Is Mr. Brown here? If not,
Jay Spiegel.
MR. SPIEGEL: I'm H. Jay Spiegel. My address is 703 King Street.
That's in Alexandria, Virginia. I'm in private practice as a
patent, trademark, copyright lawyer and the views expressed are my
own. By brief background, I was a primary examiner in the Patent
Office. I have been in private practice for over 12 years as a
patent, trademark, copyright lawyer. I also have the perspective of
being an inventor. I hold five United States patents. Some
corresponding foreign patents have some applications pending on
diverse inventions including a football kicking tee, which was used
by 23 NFL teams last year, including eight times by the San
Francisco Forty-Niners in the Super Bowl. [Laughter]
MR. SPIEGEL: And incidentally, no times by the Chargers.
[Laughter]
MR. SPIEGEL: I bring this perspective and I believe it gives me a
perspective to discuss some of the issues which are before the
Patent and Trademark Office on the issue of publication. I might
say from the outset that, while I would characterize myself as being
generally against the concept of publication, I realize that it is
beyond the scope of this hearing to discuss that, because I think at
this point it is a fait accompli. We are going to have publication
and so we have to figure out how to best operate that system. I
believe it is important for the United States Patent and Trademark
Office to understand that, when it comes to reviewing published
applications, I would think that the predominant reason for review
of those applications by the public is to determine their status as
prior art. Of course, a patent is not enforceable until it is a
patent. When it is an application, it has claims. As they are filed
and as the prosecution goes along, those claims are amended and
cancelled and added. I would think that the primary reason why a
member of the public would want to have access to a pending patent
application would be for its value as potential prior art. Given
that supposition, I think that the Patent and Trademark Office would
be doing itself a big favor if it published as much as the
application as possible at the publication time. I think that
because of the fact that the claims are not quite as important as
the disclosure when the application is pending in terms of its value
as prior art, if the Patent and Trademark Office wants to save some
money, it might not be necessary to publish every claim which is in
the application at the time that it is determined that publication
is going to take. For example, one could limit the publication of
claims to each independent claim which is of record at the date on
which we have determined that the subject matter in the application
is going to be filed. For example, if it is going to be at the
15-month mark, I think that would be of the greatest value. It is
important for the Patent and Trademark Office to recognize that when
people are reviewing these files, when they are patented files, they
are normally reviewing to see if there has been fraud perpetrated on
the United States Patent and Trademark Office, if there are any
mistakes in the record which would raise issues concerning the
validity and also to see what estoppels there are in the record
which would limit the scope of the claim coverage. Again, these are
issues which are more pertinent to when the patent is actually
issued than during the prosecution. I think that if the maximum
amount of information from the patent file on the date which is
decided is actually published and is available for the public to
review, that will limit the number of members of the public who will
actually desire to actually review the patent application file. I
think that under that sort of a system where the most information is
disclosed to the public at the publication time, it would not be
necessary to create a separate area to allow review of pending
patent applications. I think that under those circumstances, the
Patent and Trademark Office would discover that the system which
currently exist where people with appropriate powers of attorney can
go right to the examining group and review a pending application
file could also be employed in this case and perhaps the files would
be given some sort of a special designation by stapling or somehow
attaching something to the file so that the clerks in the actual
examining group would understand that this is a file which the
public has access to. Concerning the protest aspect, which seems to
be a topic which is quite popular in the discussion today, I think
if the Patent and Trademark Office limited the time period after the
date of publication within which other members of the public could
reveal prior art which was within their knowledge to the Patent and
Trademark Office, that would only be allowed to limit their comments
concerning the relevancy of that prior art. Then the prosecution
would continue between the actual applicant and the United States
Patent and Trademark Office, with the applicant being given some
opportunity to comment on the relevancy of that prior art prior to
the issuance of a final office action or if a final office action
has already been issued, giving that member, the applicant the
opportunity to comment on the relevancy of the prior art. I think
that would be something which could balance the interests in an
appropriate way in terms of giving the public an opportunity to give
comments while doing the minimal disruption to the actual patent
application prosecution. I have submitted a letter, which I
addressed to Jeff Nase. I think in the interests of the economy of
time, I think that I will leave it at that. You can go on to the
next speaker, unless there any questions.
COMMISSIONER LEHMAN: Thank you very much, Mr. Spiegel.
MR. SPIEGEL: You're welcome.
COMMISSIONER LEHMAN: Frampton Ellis, please.
MR. ELLIS: Most of my comments concern tomorrow's subject matter and I'll make them then.
COMMISSIONER LEHMAN: Right, thank you very much.
Rene Tegtmeyer is our final witness.
MR. TEGTMEYER: My name is Rene Tegtmeyer. I am associated with the
Law Firm of Fisch [phonetic] and Richardson. My address is 601
Thirteenth Street, Northwest, Washington, D. C., 20005. I am here
today to present the views of the Section of Intellectual Property
Law of the American Bar Association in response to the request by
the Patent and Trademark Office for comments on 18-month
publication. The section's views are set forth in the form of a
number of resolutions that were recently approved by the section and
in a report that accompanied those resolutions, which was also
presented to counsel for the section, which approved the
resolutions. The views, I should say, are the comments that I am
submitting here today. They have not been approved by the Board of
Governors or the House of Delegates of the American Bar Association.
They do represent, however, the views of the Section on Intellectual
Property Law of the American Bar Association. The comments that I
have given to you in the form of resolutions have accompanying them
a report, which I mentioned before. In that report, each of the
fourteen questions that are posed by the Patent and Trademark Office
have been individually addressed. So, you will see in writing there
the response and a formal set of comments will be submitted by Tom
Smith, the Chair of the Intellectual Property Law Section by mail
which will reach you before the February 17th deadline. I'm going
to give some abbreviated comments of what is contained in the paper
presented to you and in what will be presented to you by Tom Smith.
I'm going to do so by addressing three broad issues or broad areas
of questions. One is publication. A second is a protest question
and the third is what I'm calling under the heading of service.
With respect to publication, there are several things that ought to
be taken into account in deciding what to publish and what should be
made accessible to the public. I think several speakers have already
mentioned the fact that the document that is being published at 18
months will be prior art. In fact, it will be prior art under
Section 102(e) as of the filing date of the application in this
country. Accordingly, information needs to be published which will
support the use of that document as prior art. Secondly, the
document being published broadly is new technology, new information,
probably in most cases being published for the first time with
18-month publication and parallel possibly with publication in other
countries. So as such, both as prior art and as a publication of
technology, the publication should be such that it is disclosive to
the public, to the users of those documents. That means in effect
what some of the earlier speakers have said, a printed publication,
one that is feedable into databases, accessible to the public and
the like. It is also a grant of provisional rights in the situation
where the claims that ultimately issue are substantially the same as
those which are published. So, what gets published needs to be
suitable for that purpose as well. In other words, the publication
should include a readily accessible disclosure in printed form of
the claims which create the provisional rights or may create
provisional rights. So, that is another very important aspect of
the publication. In regard to the question of the availability or
accessibility to biological deposits, again, consideration has to be
given to the fact that only provisional rights will accrue with
publication, which means an injunctive relief against other parties
who are practicing the claimed invention in the publication will not
be able to be stopped. Therefore, the section's views are, that
access to the biological deposit should be restricted much in the
manner that they are in the European patent office. That is that,
parties that want to have access to the deposit should make a
certification that it is for experimentation only and, if requested,
be limited to access to third party experts. The second issue which
I will address is protests. I think most of the earlier speakers
have already addressed it, but protest should be limited in time and
in such a way not to interfere with the process of the examination.
That is very important because of the 20-year term that may be
running. In some cases it may be important at that stage to the
applicant so the protest should be kept to a minimum for that reason
and also because they offer an opportunity to harass or interfere
with the ultimate issuance of the patent and with the enjoyment of
that patent in as much of its term as possible by the applicant. I
think a question was raised as to whether there should be any stays.
I think the answer is obviously, no, there shouldn't be any stays
for consideration of protests. Under the heading of service, I'll
just briefly address a few key points. This just means the views of
the section are to allow applicants as much flexibility and make
procedures as simple as possible. That means that it should be
possible to abandon the application as late as possible before
publication. The first office action should be received as early as
possible, preferably within 14 months of the U.S. filing date or 14
months, I should say, of the U.S. filing of a complete application
or a provisional application, which may be difficult in the case of
provisionals. That will give the patent owner an opportunity to
amend claims, which will go in the published application and an
opportunity to abandon if that is the preference. The ability to
submit late priority claims should be possible, but with limitations
obviously. I think in terms of fees, they should be spread over the
various existing fees if possible and should be reasonable if a
separate fee is set at the time of publication. I think that is a
summary of the views of the section. I'd be happy to answer any
questions.
COMMISSIONER LEHMAN: Thank you very much, Mr. Tegtmeyer. If there
are no questions, that brings us to the end of our scheduled
witnesses. Is there anyone else here who would like to present
testimony?
[No response]
COMMISSIONER LEHMAN: If not, let me mention that the written
comments can be received until February 17, 1995. A transcript of
this hearing, as soon as it is available, as well as the written
comments that we have received, will be available for review on or
about March 3rd, in Room 520 of Crystal Park One, which is at 2011
Crystal Drive. These comments will also be available on the
Internet through the anonymous file transfer protocol, that is FTP,
address FTP.USPTO.GOV. All written comments and the oral comments
made here today will be taken into consideration before proposed
rules are published. Any written comments received after February
17, 1995, however, can't be assured of consideration. I want to
thank everybody for coming. It has been very useful to me to hear
these comments. It is a good example of the value of doing things
in the sunshine, hearing what everybody else has to say. So, this
concludes today's hearing and I want to thank everybody for coming
out on a snowy day like this. [Whereupon, at 12:38 p.m., the
hearing was concluded.]
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