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.