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