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?
 
        COMMISSIONER LEHMAN:  Certainly.
        [Pause]
 
        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.