Public Hearing on Issues Associated with Implementation of Eighteen- Month Publication of Patent Applications




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.
	BRUCE A. LEHMAN, Chairperson,
	Assistant Secretary of Commerce and
	Commissioner of Patents and Trademarks

- - -


          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

	NANCY LINCK, Esquire,
	Solicitor, Patent and Trademarks Office	

- - -



Intellectual Property Owners, Incorporated14 

Procter and Gamble22 

RICHARD L. DONALDSON, Senior Vice President
Texas Instruments, Incorporated30 

Riley and Associates39 

Alliance for American Innovation45 

Becton, Dickinson and Company50 

American Intellectual Law Association59 


University of Baltimore69 

GWU National Law Center and Foley and Lardner74 

World Intellectual Property Organization, 
Geneva, Switzerland83 


GLENN E. WISE, Professional Researcher98 

Patent Attorney and Inventor104 

American Bar Association, 
Section of Intellectual Property and Law110 


	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]

	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.


	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

	MR. GOFFNEY:  Thank you.

	COMMISSIONER LEHMAN:  Next, Mr. Anthony D. Sabatelli.

	MR. SABATELLI:  My name is Anthony Sabatelli.  I am employed at the
        Procter and Gamble Company, 11511 Reed-Hartman Highway in
        Cincinnati, Ohio, zip code 45241.  My position is counsel of
        patents.  The phone number there is area code (513) 626-3266.  The
        comments I will be presenting represent the views of Procter and
        Gamble.  Assistant Secretary of Commerce Lehman, Deputy Assistant
        Secretary Kirk, Commissioner Goffney, Deputy Assistant Commissioner
        Kunin, Solicitor Linck, Procter and Gamble would like to thank the
        Patent and Trademark Office for the opportunity to testify at this
        public hearing. Procter and Gamble is also a member of the
        Intellectual Property Owners, an organization that is presenting
        testimony today.  Because of the significance of the 18-month
        publication change, we felt it was important to also testify on our
        own behalf.  Procter and Gamble strongly supports 18-month
        publication.  The major reasons why we support this change are
        provided in our written comments.  In anticipation of the change to
        18-month publication, the PTO is now seeking comments in 14 question
        areas.  I will now address these.  Our position is summarized on the
        handout that I've given you.  We support publishing the enter patent
        application, including amendments as it exists at a fixed point,
        such as three months before publication.  We support providing the
        public with continuing access to the entire application file after
        publication.  We support publishing assignment records and making
        deposited biological samples available to the public.  We support
        three month deadline after filing for making a claim for priority. 
        We believe that 18-month publication should be automatic, unless the
        applicant timely and affirmatively acts to abandon the application. 
        We support allowing third parties to submit prior art at the PTO up
        to a period of three months after publication.  We support the PTO's
        proposal for submitting amendments to the application file. 
        However, we oppose establishing formal, pre-grant protests or
        opposition procedures.  Now, I will address some of these question
        areas in more depth.  Questions three and ten are related.  These
        questions seek comment on the scope of the information to be
        published at 18 months and on the extent of the access to the file
        to be given to the public after that time.  Regarding the
        publication issue, the PTO is proposing four options.  Our position
        is that the PTO should adopt option four, which proposes publication
        of the entire patent application as amended at some fixed, such as
        three months before publication.  This option would make the
        greatest amount of published information available to the public. 
        We do recognize that, this option might not presently be feasible
        because of monetary and logistical restraints.  However, once
        electronic filing and a dedicated CD-ROM system are available at the
        PTO, it should be relatively easy and economical to provide the
        public with the entire application, at least, in electronic format. 
        In the interim, until the PTO establishes such a computer system, we
        would support implementing option two, publication of an abstract,
        similar in format to that now published in the official "Gazette,"
        provided this option is coupled with granting continuing public
        access to the application file.  It is essential that the abstract
        contain sufficient information to enable a knowledgeable reader to
        determine whether seeking access to the application file is
        warranted.  Therefore, the abstract must contain the broadest or a
        representative claim and appropriate bibliographical information. 
        Regarding access to the application file after publication, the PTO
        proposes making the file available for public inspection either as
        originally filed or as exists at some fixed point before
        publication.  We do not agree with this type of limited access.  We
        strongly believe that the public should be provided with continuing
        access to the entire application file at the time that access is
        requested.  The PTO is reluctant to allow continuing access,
        contending that it would require removal of the file from the
        examiner, thereby interfering with the examination process and
        causing delays.  We do not agree with this reasoning and believe
        that any potential delays can be easily minimized by keeping
        duplicate or even triplicate file wrappers as is the practice at the
        European patent office.  Also, once the PTO installs an electronic
        filing and CD-ROM system, the feared disruptions to examination
        should become non-existent.  We believe that continuing public
        access to the complete file will provide the public with the
        greatest amount of information.  An interested party would be able
        to check on the current status of the application, learn what prior
        art is being considered by the PTO and get a reading on the possible
        outcome of the examination.  This information would help reduce the
        uncertainties inherent in the present system and would help reduce
        the potential for post issue litigation.  This reduction in
        litigation will reduce the costs associated with technology
        development and will also provide more incentive for these
        developments.  Regarding questions eleven and twelve, we support the
        PTO's proposal to make assignment information and deposited
        biological samples available to the public.  Regarding question
        eight on handling claims for priority, we support the PTO's proposal
        that a claim should be forfeited unless it is made within a
        reasonable period, such as three months.  Question seven relates to
        the publication mechanism.  We believe that all patent applications
        should be automatically published unless some affirmative action is
        taken by the applicant to withdraw and abandon the application. 
        Publication should proceed whether the applicant timely paid any
        required publication fee.  This procedure is preferable to the
        alternative procedure where publication is made contingent upon
        payment of a publication fee.  The alternate procedure opens an
        loophole whereby an applicant can potentially delay publication by
        submitting a late fee payment along with a petition to revive the
        application.  We believe that the cost of publishing an application,
        where the fee is lacking and the application is allowed to remain
        abandoned, would be relatively small. This cost could be more than
        offset by the benefit of reducing delays and reducing the potential
        for abuse.  Regarding question fourteen, the PTO seeks comment on
        the submission of prior art by third parties and also on the
        establishment of protest and opposition procedures.  We do not agree
        with permitting unrestricted submissions. Unrestricted submissions,
        especially when coupled with continuing access to the file, could
        interfere with examination and could also be abused by third parties
        seeking to delay issuance of an application.  We support a system in
        which a third party would be permitted to submit relevant prior art
        to the PTO up to a fixed period, such as three months after
        publication.  For all subsequent submissions, the third party would
        be required to wait until the patent issues and then request the
        reexamination, as is the practice under the current system.  We do
        not support establishing formal pre-grant protests or pre-grant
        opposition procedures.  Our experience in Japan has shown that these
        procedures are costly and can unreasonably delay the prosecution and
        ultimate issuance of a patent.  Also, pre-grant protests and
        opposition procedures could be abused by third parties seeking to
        harass an applicant by purposely delaying prosecution. Instead, we
        believe that post-grant reexamination and opposition procedures
        should be used for challenging a patent.  Regarding question
        thirteen, we support the PTO's proposal for entering amendments with
        some suggested safeguards that we have in our written comments.  In
        summary, Procter and Gamble supports 18-month publication of patent
        application.  We believe that the PTO should publish a patent
        application as it exists at a fixed point, such as three months
        before publication unless desirable but acceptable interim procedure
        would be to publish an abstract containing the broadest or
        representative claim along with appropriate bibliographical
        information.  In either case, we strongly believe that the public
        must have continuing access to the entire application file.  Any
        potential disruption caused by such access could be minimized.  We
        support publishing assignment records and making deposited
        biological samples available to the public. We support a three-month
        deadline after filing for making a claim for priority.  We believe
        that 18-month publication should be automatic, unless the applicant
        timely and affirmatively acts to abandoned the application.  We
        support allowing third parties to submit prior art to the PTO up to
        a period of three months after publication.  We opposed the
        institution of formal pre-grant protest or opposition procedures. 
        Finally, we support the PTO's proposal for submitting amendments to
        the application.

	COMMISSIONER LEHMAN:  Thank you very much.
	Next, I'd like to call Mr. Richard L. Donaldson.

	MR. DONALDSON:  Commissioner Lehman and panel, I am Richard L.
        Donaldson.  I am the Senior Vice President of Texas Instruments,
        Incorporated and general patent counsel. I am appearing today on
        behalf of Texas Instruments.  I really do appreciate the opportunity
        to address this hearing.  Judging from the testimony given so far
        today, I think we will be giving a little bit different view of what
        you have heard so far.  I do have a number of comments concerning
        the procedures for implementing the 18-month publication.  We are
        submitting written responses to the 14 questions that were
        identified in the December 12th "Federal Register." So, I'm not
        going to dwell on those right now.  We will submit those before the
        end of the week.  What I would like to discuss are a couple of
        issues which have caused TI to have some serious concerns about the
        effects the implementation of these procedures will have on the U.S.
        patent system.  I think from the bottom line point of view, our
        conclusion is that the type of procedures that will be required to
        implement the 18-month publication will have the effect or, at
        least, the potential of significantly reducing the enforceability of
        patents in the United States.  There are two areas that I really
        want to concentrate on and address this morning.  One is what we
        believe to be an incompatibility between procedures for implementing
        an 18-month publication and the duty of candor as required by Rule
        56 and the protest proceeding as we currently know it.  The second
        area I'd like to discuss is an area, again, of what we considered to
        be an incompatibility between procedures for implementing an
        18-month publication and our requirement in the United States for
        disclosing the best mode.  We'd like to address the conflict first
        that we see between the duty of candor and the protest procedure. 
        As we all know, Rule 56 is an area that really sets U.S. patent
        acquisition apart and above prosecution in the rest of the world. 
        We strongly support Rule 56, because you get stronger patents and
        they are more enforceable. What it requires is for the applicant or
        the attorney to have the affirmative duty to provide prior art to
        the Patent Office that he thinks may be relevant.  When you couple
        this with the protest procedure, at least, as it currently exists,
        we think that there is a very substantial potential for abuse.  A
        couple of the people who have testified already today have pointed
        out part of the problem.  If you have the 20-year term for the
        patents, the delays that are possible by considering before the
        grant of the patent prior art could very well delay issuance of the
        patent and really make the effective life of the patent shorter. 
        But I think it goes beyond that.  I think third parties would have
        the opportunity, not only of submitting prior art to the Patent
        Office, but submitting prior art to the applicant or attorney.  We
        see that quite often in our activities.  This puts the attorney
        really on the horns of a dilemma.  He now has prior art that someone
        has said may be more relevant.  He may, perhaps, have no
        opportunity, no choice other than to submit it to the Patent Office
        and delay the issuance of the patent, otherwise he runs the risk of
        violating Rule 56.

	COMMISSIONER LEHMAN:  Well, isn't that what we want, though?  If
        there is prior art that is relevant, we only want that to get into
        the process.

	MR. DONALDSON:  Absolutely and if it is really relevant prior art,
        the patent attorney will delay issuance if necessary to get the
        Patent Office to consider it.  Where abuse could come in is, if
        someone gives you a piece of prior art that you don't think is
        relevant, but you also do not feel comfortable in not submitting
        that to the Patent Office, even if it delays, even if you have to
        withdraw it from issuance, because if you are wrong, if someone else
        disagrees with you, then you have violated Rule 56.  I think there
        are ways that can be addressed in the procedures for implementing
        this, but I think two things would have to happen.  One, the protest
        period should not be permitted prior to grant, if you want to call
        it a protest period.  I think we should have opposition, post-grant
        opposition where this material could be considered.  I think the
        second thing that would need to be addressed is relaxation of Rule
        56.  So, during this interim period, from the period of publication
        to when the patent is finally granted and can now be opposed, the
        attorney would not be required to submit prior art given to him by
        third parties at his own risk.  I mean, it could be considered
        during the opposition period, but he shouldn't have to be faced with
        that decision, whether to delay issuance of the patent or not.  So,
        I think those would be two types of changes that would be required.

	MR. KIRK:  In terms of your proposed grant opposition that you
        referred to, would you contrast that with reexamination?

	MR. DONALDSON:  Yes, I would contrast that with reexamination.  I
        would support a more effective opposition than under the current
        reexamination.  I'd like it to be inter-parties.

	MR. KIRK:  But given the legislation that was introduced to part of
        the last Congress that would open up reexamination, that would make
        it more inter-parties in nature -- I'm not sure if you're familiar
        with that, but that is a broadening of the participation by the
        third party, yet still under some control.  Assuming that that were
        the type of reexamination that we had, would that be the same as
        this protest procedure or would they be different?

	MR. DONALDSON:  No, I think that would be basically the same.  I
        think I would still want to see how that is going to -- I am
        familiar with it and I still would be curious to see how exactly
        that is going to be implemented.  We are familiar with some
        post-grant opposition systems that still permit very lengthy
        periods. I think we need to address that.  The second concern that
        we have is a little bit more difficult to come to grips with.  That
        is the best mode, what we consider to be the best mode conflict.  I
        believe this places, when you couple this with the early publication
        procedures, that this is going to place U.S. inventors at a
        disadvantage to the rest of the world.  I also believe that it will
        have a chilling effect on innovation and R&D, particularly in one
        aspect and that has to do with process patents.  We currently -- and
        I'm not sure how other companies handle it, but we currently do not
        file process patents overseas, because of the disclosure, you know,
        the early publication.  They are basically unenforceable.  In the
        judicial system, you don't have discovery.  So, we basically do not
        file process patents overseas.  We do file them in the United
        States.  We have the opportunity to determine whether or not we will
        be able to obtain patent protection and make the choice.  Do we want
        to accept the patent or do we want to try to rely on trade secrets?
        The 18-month publication, however that is implemented, will
        basically take away that choice, because the 15 month period where
        you're going to have to make a decision whether or not to have your
        patent application published or not, you will not know whether
        you're going to get a patent or not.  I think what would happen in
        our case is, we would elect in almost all cases to try trade secret
        protection.  I think this could have an unintended result and the
        public will get less information about new inventions, particularly
        with respect to processes.  I don't think that was intended.  I've
        mentioned the uncertainty of whether you would get patent rights
        after 15 months.  I think the workload on the Patent Office is going
        to be very heavy.  I don't think it is realistic to expect that the
        prosecution will have developed to a point where you can make a
        realistic or informed choice as to whether or not or what kind of
        patent you're going to get at 15 months.  This leads to another
        aspect.  The potential patent right that you might get, we do not
        think, is fair return for disclosing your best mode of operation.  I
        know there is the possibility of a post-publication, pre-grant
        royalty, but this really puts an inventor in a difficult choice.  He
        still does not know what patent protection he's going to get.  In
        all likelihood, the claims will change from what was published and
        what he finally gets.  So, he may have no opportunity for royalty
        during that period anyway.  In addition to that, actual notice is
        required. So, he has to go to his competitor and tell them his best
        mode of doing something that he has no idea about whether he will
        get a patent on or not.  I think that is an unrealistic choice to
        force an inventor or a company to make.  So, I think it could have a
        chilling effect also in that respect.  I think part of the negative
        impact of this could be having procedures that really restrict or
        eliminate the best mode requirement.  The U.S. is the only country
        that has that requirement.  I think this is a tremendous advantage
        to people and companies and other countries, but also I don't think
        it is in our interests to do that.  I think the duty of candor and
        the best mode requirements are two of the things that make the U.S.
        patent system the strongest in the world.  I really think we ought
        to keep those.  I also believe that there is some difficulty and
        incompatibility with procedures that will implement this early
        publication.  Just as a final point, it perhaps goes beyond what the
        comments are intended to address here.  But TI really does support
        patent harmonization.  We think patent harmonization needs to be
        looked at under the entire patent system basis, not a piecemeal
        approach.  I don't think that we should, in the interest of
        harmonization, lower our standards to where we have uniform
        mediocrity with the rest of the world.  We had a strong system and
        we need to keep that system.  We have identified some changes that
        we think are necessary if we go to the 18-month publication, but
        even then, we will continue to have concerns about the effects it is
        going to have long term on the U.S. patent system.  Thank you very

	COMMISSIONER LEHMAN:  Thank you very much, Mr. Donaldson.
	Next, I'd like to call R. J. Riley.

	MR. RILEY:  My name is R. J. Riley.  I represent Riley and
        Associates.  I'm an independent inventor.  My address is 1323 West
        Cook Road, Grand Blanc, Michigan, 48439.  The phone is (810)
        655-8830.  I'm going to address each of the, I believe, 14 items in
        order.  I won't read the questions, since everybody should be aware
        of them.  Regarding question one, I do not believe it's reasonable
        to require materials to be sent to one location. The practice would
        add delays in processing materials and would make it likely that
        material would not be processed in a timely manner.  Question two, I
        do not believe that a standard application format is practical.  By
        the nature of innovation, all inventions are unique.  While many of
        them might fit in a standard format, I suspect that there are always
        going to be exceptions where it won't.  I also believe that will add
        significant costs, indirect costs to inventors.  Number three, to
        minimize burdensome costs associated with publishing, the "Gazette"
        should only publish the patent description of an inventor.  Any
        additional information should be purchased by the party that wants
        the information, with that party bearing all the costs associated
        with publishing, including all administrative costs associated with
        preparing the information for publication.  Four, my answer is, yes,
        the cost of sending the notice should be borne by those companies
        who would benefit from the publication.  Five, the PTO claims that
        the average pendency is 19 and a half months.  The PTO should face
        sanctions for failure to process a patent within that time.  I think
        that the PTO should use the money that would be associated with
        publishing to improve the system so that all patents are published
        within the 18-month interval.

	COMMISSIONER LEHMAN:  Can I ask you a question?
	What kind of sanctions would you consider?

	MR. RILEY:  I don't know.  I think that would be an interesting
        thing to discuss.  I do believe that submarine patents are a direct
        result of the Patent Office not prosecuting things in a timely
        manner.  I understand that some patents, once they become delayed,
        become dogs for the examiners involved.  I think that most examiners
        are probably trying to do a good job, but if they get a file that
        has a long history in, it represents a huge amount of work.  You get
        a job like that, you tend to put it on the bottom of the pile and it
        makes the problem even worse.  Six, all costs associated with
        18-month publication should be borne -- did I address that or not?
        I guess I tried to -- should be borne by those who wish to access
        the patent information.  Any indirect costs incurred by inventors
        should also be passed on in the publication fee.  The application
        fee should be lowered to reflect a refund for those increased costs. 
        I do fee that this is going to add indirect costs in prosecuting
        patents.  Item seven, the PTO should not publish unless they receive
        notice to do so.  Patents are property, intellectual property.  To
        publish without an explicit consent, could cause publication to
        occur where it wasn't intended.  It is taking away the option of
        using trade secrets as a method of protection.  If something is lost
        in the mail -- or there could be a lot of reasons, followups,
        paperwork followups.  Eight, my answer is, no.  Nine, this will be a
        moot point if the PTO processes all patents in a timely manner,
        i.e., before 18 months.  Ten, yes.  Eleven, yes.  Twelve, no. 
        Thirteen, no comment.  Fourteen, I think like most other people, I
        don't want to see an opposition system like we've had here in item
        fourteen.  I also have some other concerns.  I don't think that the
        estimate of cost on this, your estimates are reasonable.  I have
        done a great deal of systems work related to computers in the
        industrial sector.  I think we can look at your existing computer
        system and the fact that it is dramatically beyond the original
        schedule and my understanding is, at this point, it's over a billion
        dollars.  That is what I have been told.  If that's wrong --

	COMMISSIONER LEHMAN:  No, we spent about a half a billion dollars
        since it was initiated in 1983.

	MR. RILEY:  It's still significantly beyond its schedule.  I think
        that what is going to happen if you try to implement a system like
        this, in a year, you aren't going to be successful.  Then you're
        talking about giving people access to the patent files.  I believe
        that's going to delay the patents and bog the system down even more. 
        I just don't think that the numbers are realistic.  I think you have
        past experience that indicate that that might be the case with the
        existing computer system.  It is dramatically over budget, right?

	COMMISSIONER LEHMAN:  It's not over budget, no.

	MR. RILEY:  Well, that's not the information that I had.

	COMMISSIONER LEHMAN:  Well, we have to operate on the basis of
        facts.  Probably nobody is more audited than we are by everybody,
        from the General Accounting Office, to the Inspector General to
        everybody else.

	MR. RILEY:  The last thing, all bureaucracies like to increase their
        size and that's true whether you're talking corporate or government
        or whatever.  Most certainly, we are seeing dramatic downsizing in
        corporate America, where it sort of crept up on them and they had
        layers and layers of middle management.  But almost every manager
        wants a bigger organization under them.  So, it's more budget and
        everything associated with it.  I can't help but wonder if the
        18-month disclosure, the cynic in me wonders if this is a method to
        dramatically increase the budget and the scope of what the Patent
        Office does.  So, with that comment, are there any other questions?

	COMMISSIONER LEHMAN:  No, there aren't.  Thank you very much.  I'd
        like to remind people that President Clinton actually has indicated
        that we're going to eliminate a thousand people.  President Clinton
        has indicated that he is going to reduce the size the Federal
        Government by 250,000 employees.  We already have achieved about a
        100,000 reduction already.  So, I think that I want to make it
        perfectly clear that, no one in this administration is interested in
        expanding the size of the bureaucracy.  Next, I'd like to ask Thomas
        Irving, please, to come forward.
	[No response]

	COMMISSIONER LEHMAN:  Is Mr. Irving not here?
	[No response]

	COMMISSIONER LEHMAN:  I will then ask Mr. Litzsinger to come
        forward, please, to fill this spot.

	MR. LITZSINGER:  Thank you, Mr. Commissioner.  I sincerely
        appreciate it.  We had a conflict, as you are probably aware of,
        later.  I'm Nip Litzsinger and I'm the Vice President of the
        Alliance for American Innovation.  We're located on Connecticut
        Avenue, downtown.  The phone number is (202) 293-1414.

	In Washington, the Alliance represents over 3,000 independent and
        small business inventors along with working in the best interests of
        a number of venture capitalists in a number of biotech firms.  Our
        clients are from coast to coast, border to border.  We're the
        fastest growing and only group within Washington that are actively
        representing the independent inventors as we progress.  You note a
        large audience today and none of our over 3,000 affiliates are here
        other than myself.  I know many of them have submitted testimony for
        the record.  We have received information copies of that testimony. 
        I've taken their comments in the development of the response to your
        14 questions.  Most of our affiliates believe that the discussion of
        the 18-month publication in isolation without discussing the 20-year
        term, without discussing prior user rights might be improper because
        they old fold together as far as the inventor is concerned and as
        far as the innovative community in the nation is concerned. 
        Additionally, reference to the 18-month publication may be very
        misleading, because I know I sat in on one of your presentations in
        Houston two weeks ago, to the inventors group and also to the patent
        attorneys down there.  At that time, there was a lot of support
        issued by your office for the provisional application.  In response
        to a question, the representative of your office indicated that the
        clock on 18 months started ticking at the submission of the
        provisional application. So, we're not talking about 18-month
        publication.  We're talking about six month publication in some
        cases.  Most of our folks are betting on the fact that, when their
        application is reviewed in six months, large multinational and
        foreign interests will have a product on the market that is
        significant by the time their patent is issued.  So, that, to us, is
        a real threat.  It's a real threat to the venture capitalists in
        this country and the others that are interested and anxious about
        what is happening as we go along.

	COMMISSIONER LEHMAN:  If that were true though, wouldn't the
        patentee at that time have exclusive rights vis-a-vis that other
        enterprise that would be on the market?

	MR. LITZSINGER:  He may or may not.  It would depend on enforcement
        and many of the patentees that we're speaking of find themselves on
        the short end of the stick because they don't have the financial
        resources to pursue the money that supports those other actions. 
        So, it isn't a given that this is a level playing field.  It is not
        a level playing field.  If in fact most patents are granted in 19
        and a half months, then why is 18-month publication required.  Why
        are we spending the money that we're spending on 18-month
        publication if the data shows that we are now issuing in 19 and a
        half months and we're going to get better?  Well, it seems to me
        that we're not going to get better.  We're going to get worse. 
        We're adapting our system to harmonize with foreign systems inferior
        to ours and less responsive to ours in issuing patents.  Needless to
        say, the following response that I have to your 14 questions does
        not in any way endorse your basic proposal, but here it goes
        quickly.  I have submitted them in writing for you.  These responses
        are a gathering of the responses of our affiliates throughout the
        country.  All official application-related materials could be
        delivered to one place.  There is no problem with that as far as our
        folks are concerned, in difference to what Mr. Riley said.  Standard
        application format is not necessary.  Information to be published
        may include the filing date, but not more than the abstract, if we
        have to live with this system.  The patent applicant should
        absolutely receive a copy of the published information upon
        publication. Accelerated examination under the present conditions
        should be permitted and there should be absolutely no charge to the
        applicant for filing and all costs should be borne by the PTO.  The
        answers to question seven are yes, no and should be definite, in
        that order.  Should priority or benefit be lost if not made within a
        reasonable time after filing?  The answer is no.  The answer to
        question nine is, that we do not care what is removed nor what is
        enclosed on the issued patent.  The answer is yes to questions ten,
        eleven and twelve.

	Our affiliates suggest that you tell us of the problems you
        anticipate in question 13.  Last but not least, protest procedures
        should be modified to permit third party submission as suggested. 
        Our question is, how?  Untimely submission by a third party should
        be handled as they are now.  I have been fortunate to travel in the
        past five years to about 15 foreign countries.  I am amazed at these
        European and Asian countries, of all of the innovation that is ours
        that is there, much of it under foreign corporate logos.  It is our
        innovation.  This is our system that has been in place for 200
        years.  In the past six months, we have taken some gigantic steps to
        put it out to sea, to be mediocre like the other systems are.  We
        are really playing with fire.  We believe that not only on behalf of
        the inventors, but of all of the innovative community in the United
        States, whether you're in corporations or whether you act as
        individuals or small business people, this could be tragic.  We are
        taking a successful system that served in not only our interests,
        but the world's interests and we are submarining it.  Thank you.

	COMMISSIONER LEHMAN:  Thank you very much, Mr. Litzsinger.  Next,
        I'd like to call Alan Fiedler, please.  Is Mr. Fiedler here?

	MR. FIEDLER:  My name is Alan Fiedler and I'm a patent attorney at
        Becton, Dickinson and Company, a medical devices and diagnostic
        systems manufacturer international company.  My comments are mine
        and a co-author of mine. They are not necessarily the views of the
        corporation, Becton Dickinson and Company.  Basically, we didn't
        present comments when the 18-month publication was first addressed. 
        I think it is important -- my comments will show that it is
        different to separate the 20-year term of patents from the 18-month
        publication.  My colleague will be speaking tomorrow at the 20-year
        term presentation.  Our concern with 20-year term patents is, it is
        very misleading.  You're not getting 20 years of enforceability
        rights.  That is going to be shortened by the amount of prosecution
        that takes place.  I think it is unfair and unjustifiable to have
        some patents issue with longer enforceability periods than other
        patents.  Today, every single patent that issues has a 17-year
        enforceability period and I think that should continue.  You should
        be able to know how long your patent is going to be enforceable.  It
        is even more unfair to take the enforceability off the front end of
        your rights.  That is the time when you're more likely to be able to
        reap rewards before the technology ages.  I think that 18-month
        publication would be a way to solve that problem that we have with
        20-year terms, but I think we need to consider what is done in the
        EPO in Japan and Australia, where provisional remedies are granted
        when the application is published.  Provisional remedies being that,
        you are entitled to go back to your publication date to obtain
        royalties or whatever may be necessary based upon what those claims
        said, as compared to what the claims said when the patent issued.  I
        think it is important for us to consider this if we really intend to
        harmonize our laws with the rest of the world, the major leaders. 
        Without provisional enforceability, I think that many inventors will
        be harmed.  The inventors that are most likely going to be harmed
        are the inexperienced, pro se inventors who are trying to prosecute
        their first application through the Patent Office.  If they
        unfortunately are assigned an inexperienced examiner who has to have
        his work reviewed by a senior, that prosecution is going to be
        delayed and delayed.  Why should they suffer?  I think the patent
        system is really meant for their benefit as well as anybody else's
        and they should be able to reap their rewards.  The other people
        that are going to suffer are technologies that are well-advanced,
        biotech technologies. Software is where prosecution takes quite a
        while.  Why should they lose the front end of their royalty stream
        because of the long prosecution?  In addition, being a corporate
        patent attorney, we try to value applications that are submitted to
        us for purchase.  The trouble we have is, if you have a patent
        application where you have an indefinite enforceability period, the
        more money you invest in an asset, the value of that asset
        continually depreciates, because your enforceability period
        continually decreases.  So, it makes it even more difficult now to
        value such assets.  So, we understand the PTO has recognized that,
        in certain situations, extensions should be permitted, say, if you
        are up on appeal, secrecy orders or an interference.  We don't see
        that that kind of solution would solve the discrepancy between the
        enforceability periods between patents.  We also are encouraged with
        H.R. 359 that was introduced on January 4th that seeks to amend the
        term to be the longer of the 20 or the 17 years.  I think that would
        solve this discrimination problem between applications. However, we
        are concerned with the publication provisions in there, because they
        do not address providing any enforceability rights that you can go
        back to when the application is published.  Many applications we
        file, in fact, all of them, contain proprietary information.  The
        only reason we're filing them is to obtain a patent.  If we are
        forced to publish applications, that technology will be turned over
        to our competitors and they will have a jump on us where we cannot
        proceed with any enforceability against them when our patent finally
        issues.  We will have to wait until the patent issues and then try
        to get them off the market.  So, basically before I get to the
        specific questions that I want to address, we encourage the Patent
        Office and Congress to consider publishing applications at 18
        months, but also granting applicants and patent owners some form of
        provisional protection and remedies after the patent issues covering
        the period starting on the publication date of the application. 
        Now, specifically to the questions, I won't address them all.  With
        respect to question three, what should be published, we encourage
        the Patent Office to see what the EPO does and analyze their
        procedures on how they handle it. I think the publication could be
        limited to something like in the office "Gazette." At a minimum, it
        should be a selected claim by the applicant, a selected drawing by
        the applicant and the abstract.  Of course, then we also propose
        that the full application, as filed, be available either on Internet
        or at the Patent Office so people can make copies. It also should be
        put into prior art database so that software examiners will have
        those publications available to improve their search on their
        software applications, as well as all the other examining fields. 
        Question seven, I think that applicants should be entitled to
        abandon their applications maybe three months prior to the
        publication date to avoid the application being published to protect
        any trade secrets they may have if issuance seems doubtful. 
        Question ten, I think full access should be available upon
        publication to the entire file wrapper.  We do not want to hinder
        the time of the application in the Patent Office.  Maybe have copies
        available like we do have patents available.  There should be some
        way to handle that, if at all.  Question twelve, regarding
        biomedical substances, I think access should be granted upon
        publication.  But of course, all of my views in favor of publication
        are conditioned some provisional enforceability.  We do not want
        access to the biomedical materials unless we have some way of going
        back to that publication date, if we do get a patent, to seek some
        kind of royalty payments.  We are not in favor of substitute sheets
        for amendments, in response for question thirteen.  We do not think
        that is needed, because we hope the entire prosecution file will be
        available.  Regarding question fourteen, I think it would be wise to
        have third parties submit prior art, with some description as to why
        it is relevant to what they see in the application.  I don't think
        it should be an entire protest or opposition situation.  That's it.

	COMMISSIONER LEHMAN:  Thank you very much.

	MR. GOFFNEY:  I have one question.


	MR. GOFFNEY:  I was wondering how you characterize the
        enforceability and the royalty flow being taken from the front end
        under a 20-year term.  How is that the case?

	MR. FIEDLER:  Well now, the term of the patent will be from the
        original filing date up until 20 years from that filing date. 
        Enforceability --

	MR. GOFFNEY:  The term of the patent?

	MR. FIEDLER:  The term of a patent.

	MR. GOFFNEY:  No, the term of the patent is from the date it issues
        up until 20 years from the filing date.

	MR. FIEDLER:  Right.

	MR. GOFFNEY:  That's different from what you said.

	MR. FIEDLER:  A basic situation that would get the point across is,
        if you have two inventors who have substantially similar levels of
        technology in their inventions.  They are simple mechanical devices. 
        They shouldn't take more time to prosecute than another.  You have
        one inventor who is inexperienced.  For some reason his application
        is delayed.  Let's say it issues 19 months after it was file.  But
        then the more experienced inventor gets a senior examiner and his
        case gets through in 18 months.  Somebody is being short changed one
        month of enforceability.  I think that's coming off the front end.

	MR. GOFFNEY:  Wouldn't that happen for a 17-month term?  That is,
        for a patent that issues at a time when the market is right for
        using that particular patented device. The date it issues, then you
        get your front end royalties and the better market.  One that is
        delayed in the process, regardless of how long the term of the
        patent is would lose that opportunity.  Isn't that the case in the
        present system?

	MR. FIEDLER:  Yes, that would be the case, but basically what is
        going on now is, you are forcing it to be off the front end because
        we do have that 20-year cutoff at the end.

	MR. GOFFNEY:  Thank you.

	COMMISSIONER LEHMAN:  I think those questions will be more relevant
        at tomorrow's hearing.

	MR. FIEDLER:  Yes, it will be addressed more tomorrow.

	MR. KIRK:  One question.  You commented about the provisional rights
        issue. Are the provisional rights that are provided, that were
        provided in the bill that was introduced in the last Congress,
        specifically S. 1854 and S. 2488, were those along the lines that
        you're talking about here in terms of providing the provisional
        rights that you have in mind?

	MR. FIEDLER:  I'm not prepared to address those. Basically what I
        present there is what we're looking for and similar to what we have
        obtained in Australia, Japan and the EPO.

	MR. KIRK:  I think that is very similar.

	MR. FIEDLER:  Yes.  There are a lot of details as to what you're
        claiming and what you end up with that would have to be analyzed. 
        So, I haven't looked specifically at those bills to see if they
        address all of that.

	COMMISSIONER LEHMAN:  Thank you.  Next, I would like to ask Robert
        Armitage to come forward, please.  Robert, the CD-ROM version will
        come.  We will all get them eventually.

	MR. ARMITAGE:  My name is Robert Armitage.  I'm here on behalf of
        the American Intellectual Law Association, although the views that I
        will express here will largely be my own as well.  We're located at
        2001 Jefferson-Davis Highway in Arlington, Virginia.  I'd like to
        begin by offering to the Patent and Trademark Office and
        particularly to you, Commissioner Lehman, a round of applause.  I
        think the initiative to move ahead in this Congress with 18-month
        publication will be a magnificent achievement for the patent system
        should Congress enact it.  The American Intellectual Property Law
        Association began its active support for 18-month publication
        coupled with 20-year patent term from filing, coupled with an option
        for accelerated examination back in May of 1990, when our board of
        directors unanimously approved a set of legislative initiatives that
        would accomplish these three objectives. We did not take this step
        of proposing modifications to the U.S. patent system lightly at all. 
        We had a select committee that met for approximately three years,
        under the chairmanship of one our past presidents, Bob Benson
        [phonetic], that consulted leading academics and economists, as well
        as a wide variety of members of the private sector to answer a
        simple question.  What is it we need to do for the 21st century to
        make our patent system as competitive, as great an incentive as it
        can possibly be to enhance the competitiveness of U.S. industry?
	We believe that the Uruguay Round Agreements Act, enacted by the
        last Congress, was an important first step because enactment of the
        20-year patent term from filing obviously ended what had become a
        potential for inventors and patent owners to take abuses of the
        patent system.  We hope now that, with this rulemaking and with the
        favorable reception in Congress that, we can put the remaining
        pieces of our proposed legislative initiatives of 1990 into effect. 
        Let me say that, in our written statement, we have taken what I view
        to be a long term perspective on how 18-month publication should
        take place.  We realize fully that there is a relatively short
        period of time between now and January 1, 1996 and it is certainly
        our intention to work with you closely to make sure that what is
        done is something that obviously can be done and can be done
        successfully within the time interval.  It is obviously a very
        dynamic environment in which we work with electronic filing and
        other technological changes in the offing.  Let me say that, one
        brief, cogent summary of all of our testimony would be that our
        bedrock principle is that published patent applications should be
        searchable and retrievable and citable with the same degree of
        facility that issued U.S. patents are searchable, retrievable and
        citable.  We see, particularly when we review how foreign patent
        offices work that, it is the published patent application that is
        the primary document that is cited by examiners.  It is the primary
        document which patent applicants reference in their patent
        applications as prior art.  To us, that document needs to be
        available in essentially the same form that issued patents are now
        available.  What this means, of course, is if the paradigm is a
        paper search system, with search files for the examiner, that there
        should be a printed document constituting essentially what is in the
        issued patent in the examiner's search files.  Similarly, where the
        paradigm is the APS system of the Patent Office, this means that the
        full text of the application is published and the image of the
        application as published ought to be in the PTO database.  In the
        propose rules, there is a suggestion that a patent application
        notice might be sufficient in the examiner's shoes.  We question
        whether this is feasible as an alternative either in the public
        interest long term or in the interest of the examining corps long
        term.  Certainly, like every other witness who will testify here
        today, we would like to see the PTO to minimize its costs, but we
        also realize that it is our burden as applicants to help you recover
        your costs from us. Therefore, what we are proposing in the way of
        cost minimization is that, the Patent and Trademark Office take
        every effort it can, by rule and otherwise, to prevent duplicate
        technical disclosures from being put in the examining shoes and
        being put in the APS system.  If this means requiring applicants to
        incorporate by reference technical disclosures from published
        applications and issued patents, we think, particularly as
        electronic search becomes the predominant form, that this would be
        an excellent tool for reducing costs.  Also, we would urge you not
        to create a new fee for publication, because it not only costs the
        office money to collect a new fee, but it costs applicants indeed
        money to pay a new fee.  We would rather suggest that the fees be
        allocated an increase as necessary to meet any incremental costs,
        particularly if we are accelerating the timing of the incurring of
        costs for publication from around the time of issue to closer to the
        time of filing.  Then we propose perhaps the issue fees and filing
        fees be readjusted.  The last important issue for us, of course, is
        the issue of public access.  We believe that it is very important
        that the patent application be available to the public, that the
        patent prosecution history be available to the public on request,
        but in a way that doesn't interfere with the examining process.  If
        this means that files can only be copied by examiners and only
        copies of the files be made available and that this procedure only
        be done evenings and weekends and on overtime, we would support it.
        Obviously, any access to an application file that incurs costs,
        ought to be borne by the person making the request.  I will not go
        through questions one through fourteen.  You will note in our
        materials that we have answered each of the questions fundamentally
        and in accordance with the principles I have just enumerated.

	COMMISSIONER LEHMAN:  Thank you very much, Mr. Armitage.
	If there are no questions, then we will go on to Paul Wolstenholme.

	MR. WOLSTENHOLME:  My name is Paul Wolstenholme. I live at 630
        Dushane Drive in Bellefontaine, Ohio.  I'm here to speak on my own
        behalf, as an individual inventor.  I've been awarded two U.S.
        patents and one Canadian patent on a highly successful, low cost
        grain storage structure.  At this very moment, I estimate that over
        50 million bushels of grain are being stored in my patented system
        in this country.  My system reduces the cost of storage by 75
        percent, benefiting everyone from the farmer to the consumer.  The
        bad news is most of this use is unauthorized by me and, therefore,
        infringing my patents.  I'd like to speak to you today about how
        third party involvement in a patent examining process would affect
        middle class, individual inventors like myself.  On December 12,
        1995, the PTO invited testimony from the public to include comments
        on procedures for accepting third party submitted prior art,
        question fourteen.  I don't speak from the perspective of a patent
        law expert, a politician or a special interest spokesman, but from
        the perspective of an ordinary citizen who invented something of
        value almost by accident during the course of his normal activities. 
        This perspective is often overlooked but is important and should be
        considered.  Common sense is often lost in the technocratic details. 
        If we lose the critical components of our patent system, I don't
        think we'll ever get them back.  In my view, the ex parte nature of
        the examining process is critical.  I know what it is like to have
        others to oppose the issuance of your patent.  I have been forced to
        initiate seven patent infringement suits against grain companies
        like Cargill, ConAgri and Continental.  The infringers have asked
        the court to declare my patents invalid due to prior art, even
        though that prior art had been fully considered by the PTO on
        reexamination.  Their actions forced me to pay attorneys to write a
        total of four legal briefs in opposition to their motion for summary
        judgment on non-validity.  This latest 21-page brief filed on
        November 30, 1994, I was billed for 45 hours of preparation time and
        it cost me $6,750 for this one brief in opposition to the motion. 
        On February 10, 1995, the court ruled that my patent was not invalid
        due to the prior art.  If I had not been able to finance the
        rebuttal, I would have lost by default.  The only reason I was able
        to bear this defense is because I have strong patents in hand and
        I've been able to attract investors to buy a piece of them.  I am
        currently working on new systems that would result in even more
        savings to our consumers.  I feel that the cost of patent
        prosecution under the new system would be out of my reach.  If
        potential infringers can offer prior art and arguments to defeat
        your patent before it is even issued, investors would be impossible
        to find.  Foreign nations and large corporations will monitor all
        the applications as they are published at 18 months.  When they find
        one that is of value and owned by an individual of moderate means,
        they will unleash their attorneys and the results will totally
        depend on whether you have the money to pay an attorney to argue
        your case.  The unintended result would be that, people like myself
        would be well advised to stay out of the invention business.  Thus
        another unintended result would be that, American citizens are
        deprived of the efforts of a large portion of current American
        innovation.  The framers of our Constitution had it right when it
        came to encouraging invention, but it seems our leaders today just
        don't get it.  When I contemplate a patent system that makes our
        application public after 18 months, I see an inventor-unfriendly
        system.  Illustrate my point, imagine being on a surgery table for a
        heart transplant.  You look at your doctors and are comforted by
        knowing that they are highly competent and dedicated to saving your
        life.  Then you look at another team of competent doctors standing
        on the opposite side of the table, highly paid by a third party and
        equally dedicated to the opposing outcome.  [Laughter]

	MR. WOLSTENHOLME:  What inventor would put himself in this
        situation?  What investor would support him?  I respectfully
        recommend that if the 18-month rule is implemented that third party
        actions be severely restricted.

	COMMISSIONER LEHMAN:  I thank you very much.  That is really one of
        the questions that we have, what kind of protest procedures should
        there be.  I want to be clear that your opinion is there clearly
        should be virtually no protest procedures.

	MR. WOLSTENHOLME:  Not being a patent attorney, I don't know how to
        comment to that, but I think that it is something that the PTO has
        to consider.

	COMMISSIONER LEHMAN:  Yes.  Your primary concern is that you not be
        subjected to pre-grant litigation?


	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.

	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

	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.

	COMMISSIONER LEHMAN:  Thank you very much, Professor.  Next, I'd
        like to ask Professor Harold C. Wegner to come forward, please.

	MR. WEGNER:  Thank you, Mr. Assistant Secretary, Mr. Deputy
        Assistant Secretary, Mr. Assistant Commissioner of Patents, your
        solicitor and Mr. Kunin.  I consider it a privilege to address this
        hearing.  One of the highlights of this administration has been the
        sunshine aspect of this administration, with unprecedented numbers
        of opportunities for those of us in the public sector to speak.  I
        should identify myself first.  I'm Harold C. Wegner, professor of
        law, of the George Washington University National Law Center,
        Director of the Dean Dinwoody Center for Intellectual Property
        Studies and I'm counsel to Foley and Lardner.  My address for
        purposes of this hearing is, Foley and Lardner, Washington Harbor,
        Suite 500, 3000 K Street, Northwest, Washington, D. C., 200007.  All
        of my views are personal, on my own behalf.  I reserve answers to
        all of the fourteen questions in written remarks.  Two areas deserve
        special comment, question ten, dealing with the publication of the
        entire application and number fourteen, with what to do with
        protests.  Let's dispose quickly of number ten.  The entire
        application should be published.  Most of the requests for
        information will be satisfied by looking at the full application.  A
        bureaucratic nightmare will be created if we don't have these
        published.  There should be totally free access to the full contents
        of the application, free in terms of the scope of the request, but
        it should be at a fee, a user fee.  I endorse the remarks of Mr.
        Armitage who said, if has to be on weekends and at a fee for the
        user so we don't slow the examiner down, so be it.  It is
        absolutely, totally vital that we have full access.  It is ludicrous
        to think of having just a printed application with no access.
        Otherwise, we don't need the system at all.  We can go to Europe and
        get the parallel patent applications published in Europe and we are
        wasting our time.  So, 18-month publication implicitly means access
        to everything.

	Let's talk about number fourteen.  Everyone in this room who has
        testified expresses an implicit or explicit concern that there would
        be time-consuming protests that would bog us down.  Nobody wants to
        permit games.  Nobody wants to permit sandbagging of prior art. 
        Nobody wants to let third parties destroy prosecution before the
        examiner.  You have recognized this in your questions and in your
        discussions.  What we must do is strictly limit what can be filed. 
        I would go so far as to have a very strict limitation that prior art
        could be submitted, but accompanied only by the briefest statement
        identifying the prior art and what is relevant.  This would be
        followed by totally ex parte prosecution, with 0.000 percent chance
        of intervention by a third party.  By combining these features, you
        would emulate the practice of the European patent office, where
        interventions before grant are rare and unwise for a third party. 
        To put your powder exploded in an ex parte proceeding before a grant
        is to shoot off your weapon before the grant and then you have
        nothing left for an opposition. So, if we look at the experience of
        Europe, I think we will completely, almost completely avoid any
        problems of protests before grant and we must have careful rules to
        do so.  We need to modify Rule 56.  Mr. Donaldson made a very good
        comment.  Now, in the overall picture, we should be changing Rule
        56.  Excuse me, may I take a glass of water?


	MR. WEGNER:  In the overall scheme, we should be getting rid of Rule
        56, getting rid of this curse on patentees and litigation where over
        90 percent of patentees are accused of fraud, sham charges, real
        charges and other charges.  The public should protect itself.  A
        combination of 18-month publication and a post-grant opposition will
        permit the public to take care of itself.  This is a far superior
        system.  We should move in that direction.  Short of that, we should
        modify Rule 56.  I share Mr. Donaldson's concern that, after
        allowance, prior art may come in.  I would say that if prior art is
        submitted after allowance, that Rule 56 should be modified.  The
        third party prior art can simply be placed in the file.  You
        discharge your duty of disclosure under Rule 56 if you choose to
        take the patent out and let the public take care of itself through a
        reexamination or opposition or whatever and enhance the procedures
        we are going to provide.  We talk about a heart transplant.  Really
        what we have now with secrecy before grant, we have heart
        transplants performed by charlatans, sometimes by good people.  I
        would rather have sunshine in the operating room. I would rather
        have public scrutiny.  We need to recognize that maybe 90 to 90 plus
        percent of patent attorneys are excellent.  The one or two percent
        who are not, we need to expose them.  Mr. Riley, I think, should
        apologize for his slanderous comments about the corps generally. 
        The submarine patents, the one where we pay a submarine patent tax,
        the major problem is due to refilings by applicants.  Yet there are
        occasionally bad actors inside the office.  The way to weed this out
        is through the bright spotlight of open prosecution.  We don't need
        sanctions.  I think that goes without saying.  The commissioners are
        able to redistribute work and retrain, whatever else where
        necessary.  Again, I think on access, to return to access, access to
        everything.  Sunshine for everything is the best policy.  I would go
        even further and say that, the day that the law passes, there should
        be access to pending applications, not publication of cases already
        on file.  One of the critical weaknesses in the office now, despite
        the excellent reforms made by the assistant secretary made in
        biotech, the most dramatic, wonderful reforms, still we have a cloak
        of secrecy governing the Board of Patent Appeals and Interferences. 
        Virtually zero board opinions are now published by the Patent
        Office. Those are the statistics for 1994.  In previous years, there
        may be ten to 20.  Thousands of cases are available.  They could all
        be put on line.  Then patent applicants, in seeking advice whether
        to appeal or not, could search by a whole text of individual
        examiners.  What is their record on this issue? Has the examiner
        made this rejection and been affirmed?  If he or she has been
        affirmed, can we work around this rejection?  Can we challenge it?
        Can scholars scrutinize, criticize, praise?  This secrecy is one of
        the strong weak points remaining that has been inherited in this
        administration which has yet to be dealt with.  So, I would take the
        opportunity of using this legislation to open access to everything. 
        Everything that has been on file for 18 months should be made open
        and we could make radical and great reforms at the board.  Finally,
        let's talk about strengthening America. This proposal is not about
        copying foreign systems.  It's not about weakening American systems. 
        It is about strengthening the United States' patent system.  It is
        about simplifying bureaucracy by getting better prior art available,
        by getting the opportunity for interfering applicants to recognize
        the existence of a potential interference and bring it to the
        attention of the office. We are simplifying interferences.  This is
        about simplification.  It is about parity. Just yesterday, it seems,
        foreign systems started to introduce the 18-month publication
        system.  So, Japanese get native language publication at 18 months. 
        Americans, if they are in big companies and can afford Durwin's
        Services and other services to get these translations from Japan to
        get information about American inventions that have been filed in
        Japan, they may be all right.  The individual inventor can't afford
        this.  This is about parity with foreign systems.  It's not about
        weakening our system.  It's about redressing something that happened
        yesterday.  Yesterday was 1964, when the Dutch introduced the
        system.  Once any system has an 18-month publication, with native
        language publications in their home language, then why should that
        one country have the benefit over the rest of the world?  It was
        only a couple of years, 1968, that Germany emulated this.  Then
        Japan followed.  Well, we're only 30 years behind the times, 31
        years now.  So, I applaud you Assistant Secretary Lehman for
        catching up.  Thank you very much.
	Any of you have any questions?
	Yes, Mr. Kunin.

	MR. KUNIN:  I just have one clarification.  You were talking about
        modifying Rule 56 and I thought I heard you say that you were
        talking about after allowance.  There was a further statement made
        earlier about further publication.  Did you mean after allowance or
        after publication?

	MR. WEGNER:  Well, I think what we're concerned with, I think if I
        am prosecuting an application, I would welcome frankly getting every
        bit of prior art information, if it is at an early stage, because
        particularly if it is sham prior art, this strengthens my case. 
        Now, I can go and say, Mr. Examiner, this third party says that this
        is dynamite prior art.  Look how weak it is.  Look how strong my
        invention is.  What would concern me is where the third party
        sandbags the prior art and waits until it is procedurally too late
        to submit it under the present rules.  So, I think that has to be
        addressed.  Now, the overall scheme should in the long range, in my
        opinion, be to abolish Rule 56 all together, abolish inequitable
        conduct all together, but only at the time when we have not only
        18-month publication, but a very strong, hardball inter-parties
        opposition system in place so the public can take care of itself. 
        The reexamination law doesn't get quite that far.  Various bar
        groups and interested circles are studying the possibility of an
        opposition system and, hopefully, that time is not that far off. 
        But on an interim basis, we must address Mr. Donaldson concern.  It
        is a very valid concern.  Also with respect to the trade secret
        issues, that is too much to address in the time today, but it is
        another issue that has to be addressed and can be addressed.

	COMMISSIONER LEHMAN:  Thank you very much.

	MR. WEGNER:  Thank you very much, Mr. Assistant Secretary.

	COMMISSIONER LEHMAN:  Next, I would like to call Louis D. Maassel.

	MR. MAASSEL:  My name is Louis Maassel.  I'm at 12716 Buckingham
        Drive, Bowie, Maryland.  The telephone is (301) 464-4006.  I am
        currently a consultant for the World Intellectual Property
        Organization, Geneva, Switzerland, a specialized agency of the
        United Nations.  I am here on my own behalf and my comments are my
        own.  Most of my comments, I wish to direct it to something that was
        really not discussed in the notice nor by any other people here this
        morning.  This relates to the Patent Cooperation Treaty and
        international applications.  I would like to submit the following
        observations so that they can be considered in developing the
        procedure and regulations for the publication of the U.S. patent
        applications soon after 18 months from the priority date or original
        filing date is no priority is being claimed.  My comments relate
        mainly to international applications filed under the Patent
        Cooperation Treaty, international applications designating the
        United States of America and international applications entering the
        United States' Patent and Trademark Office as a designated office 20
        or 30 months after the priority date.  As you know, the Patent
        Cooperation Treaty has been in effect for the filing of
        international applications since June 1, 1978, over 16 years.  The
        PCT provides for the publication of all international applications
        promptly after the expiration of 18 months from the priority date of
        that application, subject to the reservation of PCT Article 64(3). 
        This reservation was taken by the United States of America and
        provides that a PCT contracting state may declare that, as far as it
        is concerned, international publication of international
        applications is not required.  The result is that, only those
        pending international applications which designate only the United
        States of America are not published by the International Bureau of
        the World Intellectual Property Organization promptly after the
        expiration of 18 months from the priority date of that application. 
        I should note that the PCT defines the priority date for the purpose
        of computing time limits to mean the earliest claimed priority date
        or if no priority of an earlier application is claimed under the
        Paris Convention, the filing of the international application.  The
        matter of the United States of America withdrawing its reservation
        under Article 64(3) should also be considered now, since the reason
        for the reservation, no 18-month publication in the U.S., will no
        longer exist.  Any such withdrawal becomes effective three months
        after the day on which the Director General has received the
        notification. Therefore, any such withdrawal should be forwarded
        three months prior to the effective date of the 18-month publication
        procedure in the U.S. PTO.  Note that, PCT Rule 48.5 currently
        provides that if an international application is not published due
        to Article 64(3), the U.S. PTO is required to notify the
        international bureau promptly after effecting national publication
        that is granted by the U.S. patent.  When a national application or
        a patent -- the United States the international application will
        nevertheless be published by the international bureau [sic].  So,
        when the U.S. patent issues, WIPO is to be notified and WIPO will
        then publish.  Almost all international applications designating the
        United States of America as one of the countries in which the patent
        protection is desired or published after promptly after the
        expiration of 18 months of the priority date [sic].  Between 1978
        through 1994, 207,696 international applications were filed
        worldwide.  In 1994, 34,104 international applications were filed
        worldwide.  Of these, 20,032 designated the United States of America
        or 58.74 percent of all filings.  I point this out to indicate that
        publications promptly after the expiration of 18 months from the
        priority date of the applications has occurred for many years for
        United States' patent applications and have, therefore, been
        publicly available for copying of claims for interference and the
        citation of prior art by third parties.  If the international
        application is filed in Chinese, English, French, German, Japanese,
        Russian or Spanish, the international application itself is
        published in that language in which it was filed.  International
        applications filed in other languages are published in English.  All
        published international applications contain the title, abstract,
        search report in English.  Then I include a table which indicates
        the language of publication.  Basically, 68 percent are filed and
        published in English, 14 percent German, six percent Japanese, five
        percent French, one percent Russian, .4 percent Spanish, .3 percent
        Chinese.  Other languages such as Dutch and Swedish are published in
        English and amount to four percent. Therefore, a total of 72.5
        percent of the international applications are currently published in
        their entirety in English.  This is relevant when the U.S. PTO
        considers whether to re-publish any, all or only non-English
        international applications when they enter the international phase
        at 20 or 30 months after the priority date.  It should be noted that
        the English version of the "PCT Gazette" publishes all of the
        bibliographical information from the request form, figures if the
        application contains drawings and the title of the abstract in the
        English language.  This provides the basic identifying information
        for all published international applications to the public in
        English.  Consideration should be given as to whether the U.S. PTO
        official "Gazette" should include basic information such as the
        title of the invention, the name of the applicant, claim or
        abstract, et cetera, at the time of an international application
        designating the United States of America is published by the
        international bureau.  Such a practice is currently provided by the
        European Patent Convention in Article 158, which provides that:
        "Publication under Article 21 of the Patent Treaty of an
        international application for which the European office is
        designated as a designated office shall, subject to paragraph three,
        take the place of the publication of a European patent application. 
        It shall be mentioned in the 'European Patent Bulletin.'" That is to
        say, the European office does not re-publish them.  However, it's
        "Gazette" includes a notice identifying the application and the fact
        that it has been published by the international bureau.  As to the
        questions raised, really no comment on question one.  On question
        two, on the standard application format.  It should be noted that
        the PCT provides in Article 27(1) that, no national law shall
        require compliance with requirements relating to the form or content
        of the international application different from or in addition to
        those that are provided for in this treaty and the regulations.  The
        provisions for the physical requirements of the international
        application is set forth in PCT Rule 11.  The current U.S. PTO rules
        of practice take these provisions into account.  To require
        international applications entering the U.S. PTO as the designated
        office to meet different or additional formal requirements would be
        contrary to the Patent Cooperation Treaty.  Also note that PCT Rule
        49.5 provides that no designated office shall require that the
        translation of the international application comply with physical
        requirements other than those prescribed by the international
        application that is filed.  Although the PCT provisions do not
        control what a patent office require in non-international
        applications, it seems to be preferable to have only one set of
        formal requirements for patent applicants to follow and that these
        requirements be that that are internationally used so that U.S.
        applicants need not reformat their applications for foreign filing
        and that foreign applicants need not reformat their applications for
        filing in the U.S. PTO.

	It should also be noted that the PCT regulations may be changed by
        action of the PCT Assembly, however any substantial change would
        probably not be acceptable to the 76 other member countries of the
        PCT who have all changed their requirements to be those of the PCT. 
        Rule 11.5 requires that the size of all sheets of an international
        application be A4, that is 29.7 by 21 centimeters.  U.S. PTO rules
        of practice are more flexible and provide that the range of sizes
        for international application sheets and drawings [sic].  The
        sanctions under the PCT are that, if the receiving office believes
        that the international application does not comply with the
        prescribed formal requirements, it invites the applicant to correct
        the defects within a prescribed period which may be extended,
        failing which the application is considered withdrawn.  That is
        abandoned in U.S. PTO terminology.  The PCT also requires that the
        description claims drawing as an abstract, each commence on a new
        sheet.  No surcharge is made for any correction of any lack of
        compliance when a time limit for correction is set.



	COMMISSIONER LEHMAN:  We have to keep things to ten minutes, because
        it wouldn't be fair to the other individuals who are here.  We have
        your complete set of comments.  So, we will study those.

	MR. MAASSEL:  May I ask how much time I have consumed?

	COMMISSIONER LEHMAN:  You've consumed all your time.

	MR. MAASSEL:  The major reason I asked is because I presented this
        as oral mainly to inform other people of some of these concerns that
        they may wish to comment on.

	COMMISSIONER LEHMAN:  Well, this will be available to other people
        as well.  As we indicated at the beginning, the transcript will be
        available and people will have access to it.

	MR. KIRK:  And we have copies of all the submissions.

	COMMISSIONER LEHMAN:  We have copies of all the submissions too that
        you can get here.

	AUDIENCE MEMBER:  Are you going to break for lunch?

	COMMISSIONER LEHMAN:  No, we are going to continue straight on
        through.  It may be if we don't finish before 12:30, then I will
        have to leave the rest of the hearing for my colleagues.  We will
        try to move right along.  Next, I'd like to call Francis Vitagliano.

	MR. VITAGLIANO:  My name is Francis Vitagliano, from Boston,
        Massachusetts.  The address is 117 Revere Street.  I am a private
        inventor.  The views I present today are only my own and I thank you
        for the opportunity of coming here today.  I have received one
        patent with a co-inventor and we are working with others.  We have
        looked at the issue of the 18 months.  I have looked at the fourteen
        questions and I notice that you did ask us to try to stick to that. 
        I will address question number three: What information concerning
        application should be published in the "Gazette?" As a private,
        independent inventor, the only information I would be happy about
        having you publish is the fact that an application came in from
        somebody, somewhere on that day.  As an inventor, we tend to answer
        questions that others have not asked.  My experience has indicated
        that the 18-month publication rules and the information that would
        be published about it might very well not add to the fuel that
        President Lincoln had talked about, but rather throw cold water from
        a private inventor's point of view.  We are concerned, my colleague
        and I, that our application, once it goes in, if it were to be
        published in 18 months, our names would be published.  We have not
        checked out the coordination of publishing the entire application
        with the Privacy Act. Some 20 years ago, I worked at the National
        Security Agency and I've been quite sensitive to those issues.  I've
        heard distinguished colleagues in the area talk about the research
        that they can do in CD-ROMs and what have you.  As private
        inventors, our research and development budget is quite constrained. 
        Here, in 1995, we've had to cut it back a little bit, because of the
        increase of the postal rates from 29 to 32 cents in '95. Our
        governmental relations budget was taken up entirely by my plane
        ticket today.  Our patent research is done, however, at the Boston
        Public Library and we appreciate the fact that the system is set up
        to let us get into the system for free.  I have spent about 12 or 15
        years, along with Professor Modigliano [phonetic] who is my
        co-inventor, doing research on that.  We have retained, we believe,
        competent, capable patent attorneys, but we try to do as much of the
        work as we can.  We obsessed over the issue of when we filed that
        patent of whether or not we should also file overseas.  The market
        was rather large for our patent and we knew it had some value.  We
        obsessed over the fact that it was going to be published when
        applied for and that was a real issue for us.  So, we delayed up
        until the last day and we made some changes.  We would have made
        changes in our application in the United States if the rules had
        been changed and said that the application would be published.

	COMMISSIONER LEHMAN:  You did file overseas?

	MR. VITAGLIANO:  We did finally file overseas, but because we had
        already had a little bit of interaction with the Patent Office here
        in the United States, we changed the claims.  What happened is, as a
        result of the interaction with the Patent Office in the United
        States -- by the way, it's just been extremely responsive and very
        positive.  We changed our claims.  We took one out and we're now
        working on that separately.  It would have been detrimental to our
        process and our licensing process, in finding a large company, if
        that had already been published.  That is a very, very important
        issue to us.

	COMMISSIONER LEHMAN:  If subsequent to the 18 months you still
        change your claims, you can hold off on that decision.  That's not
        in your 18-month publication.  I mean, I don't understand the
        difference between -- you published abroad at 18 months.


	COMMISSIONER LEHMAN:  If you were published in the United States at
        18 months, you are apparently subsequently making these changes in
        claims.  What is the difference between if we had an 18-month
        publication and all the other countries you have operated in?

	The issue is, if we could get a response, a guaranteed response for
        the Patent Office within 18 months so that we could determine which
        claims we are going to take out or expand, then I think we could
        feel comfortable in having that published.  We were able to make
        those changes as the result of a very qualified examiner.  He asked
        the right questions and challenged us in the right places, so that
        we changed our claims, took a major one out, having to now rework
        that.  When we filed abroad, that filing did not include that claim. 
        We would have been hurt if that claim had been published.  So, we
        have taken that out.  One of the things that -- I want to do it in
        summary, because I was very happy you gave us only ten minutes to do
        14 questions, but I really like that from a governmental agency.  If
        at all, if there is anything I think from a private inventor's point
        of view that we can do to help the Patent Office move along your
        reaction time so you can begin to either grant or absolutely deny
        patents within 18 months, that would be very helpful.  The second
        best answer is a quick no.  So, in summary, I'd just like to say
        that the 18-month publication rule, no matter what is published,
        could very well increase the number of inactive private inventors in
        the United States.

	COMMISSIONER LEHMAN:  Thank you very much.

	MR. VITAGLIANO:  Thank you.

	COMMISSIONER LEHMAN:  I think that point about helping us to
        streamline the process is a really important one.  Commissioner
        Goffney is heading up an effort to reinvent the patent operation to
        try to apply modern business process, engineering techniques to an
        analysis of the office.  At some point, he will want to have
        hearings and get some ideas from people.  Thank you very much.

	MR. VITAGLIANO:  Thank you.

	COMMISSIONER LEHMAN:  Next is Glenn Wise.

	MR. WISE:  Commissioner Lehman, ladies and gentlemen, I am here
        representing myself and two ad hoc groups that have formed in the
        search room.  They were formed by what I will call the nuts and
        bolts guys that have to do the outside searching, somebody
        equivalent to the examining corps on the inside.  We are the liaison
        between the PTO and corporations, firms and individual inventors who
        don't want to come down here or can't come down here.  My address is
        6450 Georgetown Pike, McLean, Virginia, 22101.  I am representing
        not only myself, but these two ad hoc groups.  I'm not going to read
        the entire ad hoc group name, because it is rather long.  The first
        group is for having both the application as filed in the classified
        files as well as the OG notice section.  That is a second ad hoc
        group which is against imposition of access fees to obtain the file
        history or electronic equivalent thereof should you be peeped by an
        OG notice.  I might start out by using a very trite expression that,
        those who ignore history are bound to repeat it.  We may be about to
        do that.  I'll mention three different occasions where the Patent
        Office has started something and then backed off.  In 619OG258, back
        on 1/25/49, the Patent Office, then the Patent Office published a
        notice whereby you could publish abstracts of applications.  That
        went on for a while.  I'm not able to tell you exactly when it
        stopped, but I know now that maybe one in 250,000 documents in the
        office is an abstract only.  This will all be submitted with my
        written testimony on Friday.  So, they decided to go to what I'll
        call option two in the "Federal Register" notice, whereas we are
        requesting options two and three and then they backed off from
        option two later.  Later on, they decided to do the space
        requirements, which I'll address a little later.  We will take the
        jumbo patents and instead of giving you the jumbos, we will give you
        one sheet, which you can see throughout the Patent Office now.  But
        after several years of complaining, we told them that that just
        wasn't sufficient notice for search purposes.  So now, we have them
        up to a magnificent normally five sheets and depending on the
        particular application involved, sometimes more.  What they promise
        now to give us is the front sheet, the first two pages of
        specifications and all the claims.  The one I have in my hand has a
        total of seven pages, which it took to do that.  So, in both cases
        where the Patent Office was considering option two only, they have
        backed away from that.  The third situation I'll mention where they
        backed down -- that was in the early, primitive days of
        microcapture.  They had the machine tool arts on microfiche. Within
        about two years of its institution, everybody knew that it was bad
        news.  Both in and out and the outside was as strong about trying to
        get rid of it as the inside, but it took about 15 years to get that
        microfiche back on paper and full copies of the patents, during
        which time we suffered through unreadable 'fiche and the like, I'm
        just suggesting that, we are at a point now where it is decision
        making time again if this legislation goes through.  Let's not
        repeat the same mistakes.  We have different search requirements
        than the corps on the outside. We have to do what are called
        infringement searches, which the examiners do not do.  We have to
        study claims.  I am submitting examples of three patents into the
        record which on their face would appear to relate only to apparatus.
        Here is one of them.  The first seven claims are to apparatus and
        the title is apparatus.  The claim made is a method.  If you give me
        one sheet with just what is on that one sheet, I'd never know there
        was a method claim in that.  The documentation classification system
        is based on claim disclosure.  The subclasses are formed by reading
        the claims in the active area at least and they are put in the
        subclasses based on claim disclosure.  Without that, we'd almost
        have to check every patent in some subclasses by taking the
        abstract, if it went that way and going to the file room or wherever
        to get the full disclosure, at least, as filed.  So, we're not
        asking beyond the as-filed in the classified files, but we do need
        that to be able to do our business.  Now, whenever I mention this
        around the corps and I see a lot of people every day, not only in
        the corps, but you gentlemen sometimes and others in the hierarchy,
        I get the answer, well, where are we going to put it.  I've worked a
        long time with the PTO on various problems and I have suggestions
        and we will submit that, as to where you can put it without
        involving any more floor space than you now have.  Another thing is
        that I think some people have overlooked.  If you publish an
        application and then it goes abandoned, it's still going to be prior
        art forever.  So, what we're talking about here, if my recollection
        is correct, you issue now about 65 percent and abandoned about 35. 
        Is that correct, Mr. Kunin?  I think under the publication system
        the abandonment will be less at 18 months, because some people won't
        even have an action.  They won't even know.  So, I would just guess
        off the top of my head that maybe 25 percent will go abandoned and I
        think that's probably high. But at any rate, 75 percent of what is
        filed, let's say, is going to have to go into the files somehow,
        either option two or option three, preferably option three.  Based
        on that, it just seems to me that since the patent is going to go in
        one of the issues anyway, you might as well go the other half mile
        and put the whole thing in.  Now, if anybody has seen recent
        reexamines, they are kind of like the re-issue in that, whereas, new
        matter is added where they Italicize it and if it is taken out, they
        put the brackets around it as most of you are probably familiar
        with.  I believe myself that the ideal way to do this would be to
        put the as-filed application in and then put the changes in,
        perhaps, on a different color of paper, like the reexams I've read
        now are pink.  Just attach, in this case, just three sheets to what
        is probably a rather large reexam.  I don't know how big it is,
        because I didn't get the whole patent.  It would seem to me that
        that would make sense to do it that way.  I might close just by
        saying, if we go back to the founding fathers, one of them had some
        expressions that were pretty good.  Mr. Franklin was that gentleman. 
        He said that a job worth doing is worth doing well.  I hate to
        almost say it, it's so trite, but I think that's where we are at the
        moment.  I thank you for your time and I will be submitting
        testimony.  I have one more thing to say, excuse me.  These ad hoc
        groups will be submitting signature sheets stating their position as
        to as-filed and access fees we have been circulating two or three
        weeks.  So, there are scores of signatures.  Most of the people on
        what we need in the search files are professional searchers.  A lot
        of people on no access fees are photocopy personnel or service
        personnel who don't have all the money in the world.  Often times,
        an access fee might even kill their ability to get a file that
        somebody requests them to copy. I know many occasions where
        especially the younger people are waiting for the check from the
        last job to come in before they can do the next job.  I'm not
        kidding.  Thank you very much.

	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.

	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.

	COMMISSIONER LEHMAN:  Frampton Ellis, please.

	MR. ELLIS:  Most of my comments concern tomorrow's subject matter and I'll make them then.

	COMMISSIONER LEHMAN:  Right, thank you very much.
	Rene Tegtmeyer is our final witness.

	MR. TEGTMEYER:  My name is Rene Tegtmeyer.  I am associated with the
        Law Firm of Fisch [phonetic] and Richardson.  My address is 601
        Thirteenth Street, Northwest, Washington, D. C., 20005.  I am here
        today to present the views of the Section of Intellectual Property
        Law of the American Bar Association in response to the request by
        the Patent and Trademark Office for comments on 18-month
        publication.  The section's views are set forth in the form of a
        number of resolutions that were recently approved by the section and
        in a report that accompanied those resolutions, which was also
        presented to counsel for the section, which approved the
        resolutions.  The views, I should say, are the comments that I am
        submitting here today.  They have not been approved by the Board of
        Governors or the House of Delegates of the American Bar Association. 
        They do represent, however, the views of the Section on Intellectual
        Property Law of the American Bar Association.  The comments that I
        have given to you in the form of resolutions have accompanying them
        a report, which I mentioned before.  In that report, each of the
        fourteen questions that are posed by the Patent and Trademark Office
        have been individually addressed.  So, you will see in writing there
        the response and a formal set of comments will be submitted by Tom
        Smith, the Chair of the Intellectual Property Law Section by mail
        which will reach you before the February 17th deadline.  I'm going
        to give some abbreviated comments of what is contained in the paper
        presented to you and in what will be presented to you by Tom Smith. 
        I'm going to do so by addressing three broad issues or broad areas
        of questions.  One is publication.  A second is a protest question
        and the third is what I'm calling under the heading of service. 
        With respect to publication, there are several things that ought to
        be taken into account in deciding what to publish and what should be
        made accessible to the public. I think several speakers have already
        mentioned the fact that the document that is being published at 18
        months will be prior art.  In fact, it will be prior art under
        Section 102(e) as of the filing date of the application in this
        country.  Accordingly, information needs to be published which will
        support the use of that document as prior art.  Secondly, the
        document being published broadly is new technology, new information,
        probably in most cases being published for the first time with
        18-month publication and parallel possibly with publication in other
        countries. So as such, both as prior art and as a publication of
        technology, the publication should be such that it is disclosive to
        the public, to the users of those documents. That means in effect
        what some of the earlier speakers have said, a printed publication,
        one that is feedable into databases, accessible to the public and
        the like.  It is also a grant of provisional rights in the situation
        where the claims that ultimately issue are substantially the same as
        those which are published.  So, what gets published needs to be
        suitable for that purpose as well.  In other words, the publication
        should include a readily accessible disclosure in printed form of
        the claims which create the provisional rights or may create
        provisional rights.  So, that is another very important aspect of
        the publication.  In regard to the question of the availability or
        accessibility to biological deposits, again, consideration has to be
        given to the fact that only provisional rights will accrue with
        publication, which means an injunctive relief against other parties
        who are practicing the claimed invention in the publication will not
        be able to be stopped. Therefore, the section's views are, that
        access to the biological deposit should be restricted much in the
        manner that they are in the European patent office.  That is that,
        parties that want to have access to the deposit should make a
        certification that it is for experimentation only and, if requested,
        be limited to access to third party experts.  The second issue which
        I will address is protests. I think most of the earlier speakers
        have already addressed it, but protest should be limited in time and
        in such a way not to interfere with the process of the examination. 
        That is very important because of the 20-year term that may be
        running.  In some cases it may be important at that stage to the
        applicant so the protest should be kept to a minimum for that reason
        and also because they offer an opportunity to harass or interfere
        with the ultimate issuance of the patent and with the enjoyment of
        that patent in as much of its term as possible by the applicant.  I
        think a question was raised as to whether there should be any stays. 
        I think the answer is obviously, no, there shouldn't be any stays
        for consideration of protests.  Under the heading of service, I'll
        just briefly address a few key points.  This just means the views of
        the section are to allow applicants as much flexibility and make
        procedures as simple as possible.  That means that it should be
        possible to abandon the application as late as possible before
        publication.  The first office action should be received as early as
        possible, preferably within 14 months of the U.S. filing date or 14
        months, I should say, of the U.S. filing of a complete application
        or a provisional application, which may be difficult in the case of
        provisionals.  That will give the patent owner an opportunity to
        amend claims, which will go in the published application and an
        opportunity to abandon if that is the preference.  The ability to
        submit late priority claims should be possible, but with limitations
        obviously.  I think in terms of fees, they should be spread over the
        various existing fees if possible and should be reasonable if a
        separate fee is set at the time of publication.  I think that is a
        summary of the views of the section.  I'd be happy to answer any

	COMMISSIONER LEHMAN:  Thank you very much, Mr. Tegtmeyer.  If there
        are no questions, that brings us to the end of our scheduled
        witnesses.  Is there anyone else here who would like to present
	[No response]

	COMMISSIONER LEHMAN:  If not, let me mention that the written
        comments can be received until February 17, 1995.  A transcript of
        this hearing, as soon as it is available, as well as the written
        comments that we have received, will be available for review on or
        about March 3rd, in Room 520 of Crystal Park One, which is at 2011
        Crystal Drive.  These comments will also be available on the
        Internet through the anonymous file transfer protocol, that is FTP,
        address FTP.USPTO.GOV.  All written comments and the oral comments
        made here today will be taken into consideration before proposed
        rules are published.  Any written comments received after February
        17, 1995, however, can't be assured of consideration.  I want to
        thank everybody for coming.  It has been very useful to me to hear
        these comments.  It is a good example of the value of doing things
        in the sunshine, hearing what everybody else has to say.  So, this
        concludes today's hearing and I want to thank everybody for coming
        out on a snowy day like this.  [Whereupon, at 12:38 p.m., the
        hearing was concluded.]

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