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.