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.