COMMISSIONER LEHMAN:  Thank you, Mr. Wise.  Next, I'd like to ask
        Terrence Brown to come forward, please.  Is Mr. Brown here?  If not,
        Jay Spiegel.
 
        MR. SPIEGEL:  I'm H. Jay Spiegel.  My address is 703 King Street. 
        That's in Alexandria, Virginia.  I'm in private practice as a
        patent, trademark, copyright lawyer and the views expressed are my
        own.  By brief background, I was a primary examiner in the Patent
        Office.  I have been in private practice for over 12 years as a
        patent, trademark, copyright lawyer.  I also have the perspective of
        being an inventor.  I hold five United States patents.  Some
        corresponding foreign patents have some applications pending on
        diverse inventions including a football kicking tee, which was used
        by 23 NFL teams last year, including eight times by the San
        Francisco Forty-Niners in the Super Bowl.  [Laughter]
 
        MR. SPIEGEL:  And incidentally, no times by the Chargers.
        [Laughter]
 
        MR. SPIEGEL:  I bring this perspective and I believe it gives me a
        perspective to discuss some of the issues which are before the
        Patent and Trademark Office on the issue of publication.  I might
        say from the outset that, while I would characterize myself as being
        generally against the concept of publication, I realize that it is
        beyond the scope of this hearing to discuss that, because I think at
        this point it is a fait accompli.  We are going to have publication
        and so we have to figure out how to best operate that system.  I
        believe it is important for the United States Patent and Trademark
        Office to understand that, when it comes to reviewing published
        applications, I would think that the predominant reason for review
        of those applications by the public is to determine their status as
        prior art.  Of course, a patent is not enforceable until it is a
        patent. When it is an application, it has claims.  As they are filed
        and as the prosecution goes along, those claims are amended and
        cancelled and added.  I would think that the primary reason why a
        member of the public would want to have access to a pending patent
        application would be for its value as potential prior art.  Given
        that supposition, I think that the Patent and Trademark Office would
        be doing itself a big favor if it published as much as the
        application as possible at the publication time.  I think that
        because of the fact that the claims are not quite as important as
        the disclosure when the application is pending in terms of its value
        as prior art, if the Patent and Trademark Office wants to save some
        money, it might not be necessary to publish every claim which is in
        the application at the time that it is determined that publication
        is going to take.  For example, one could limit the publication of
        claims to each independent claim which is of record at the date on
        which we have determined that the subject matter in the application
        is going to be filed.  For example, if it is going to be at the
        15-month mark, I think that would be of the greatest value.  It is
        important for the Patent and Trademark Office to recognize that when
        people are reviewing these files, when they are patented files, they
        are normally reviewing to see if there has been fraud perpetrated on
        the United States Patent and Trademark Office, if there are any
        mistakes in the record which would raise issues concerning the
        validity and also to see what estoppels there are in the record
        which would limit the scope of the claim coverage.  Again, these are
        issues which are more pertinent to when the patent is actually
        issued than during the prosecution.  I think that if the maximum
        amount of information from the patent file on the date which is
        decided is actually published and is available for the public to
        review, that will limit the number of members of the public who will
        actually desire to actually review the patent application file.  I
        think that under that sort of a system where the most information is
        disclosed to the public at the publication time, it would not be
        necessary to create a separate area to allow review of pending
        patent applications.  I think that under those circumstances, the
        Patent and Trademark Office would discover that the system which
        currently exist where people with appropriate powers of attorney can
        go right to the examining group and review a pending application
        file could also be employed in this case and perhaps the files would
        be given some sort of a special designation by stapling or somehow
        attaching something to the file so that the clerks in the actual
        examining group would understand that this is a file which the
        public has access to.  Concerning the protest aspect, which seems to
        be a topic which is quite popular in the discussion today, I think
        if the Patent and Trademark Office limited the time period after the
        date of publication within which other members of the public could
        reveal prior art which was within their knowledge to the Patent and
        Trademark Office, that would only be allowed to limit their comments
        concerning the relevancy of that prior art.  Then the prosecution
        would continue between the actual applicant and the United States
        Patent and Trademark Office, with the applicant being given some
        opportunity to comment on the relevancy of that prior art prior to
        the issuance of a final office action or if a final office action
        has already been issued, giving that member, the applicant the
        opportunity to comment on the relevancy of the prior art.  I think
        that would be something which could balance the interests in an
        appropriate way in terms of giving the public an opportunity to give
        comments while doing the minimal disruption to the actual patent
        application prosecution.  I have submitted a letter, which I
        addressed to Jeff Nase.  I think in the interests of the economy of
        time, I think that I will leave it at that.  You can go on to the
        next speaker, unless there any questions.
 
        COMMISSIONER LEHMAN:  Thank you very much, Mr. Spiegel.
 
        MR. SPIEGEL:  You're welcome.