Introductory Comments

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]

Last Modified: March 1995