COMMISSIONER LEHMAN:  Thank you.  Next, Mr.
       Sandercock, please.
 
       MR. SANDERCOCK:  Good afternoon.  My name is Colin
       Sandercock.  I am with the law firm of Foley and Lardner in
       Washington, D.C.  We are at 3000 K Street N.W., Washington.
 
       I am testifying today on behalf of two of my
       clients, who are American inventors, American producers, and
       who have benefitted from the American patent system.
 
       I would like to begin by thanking the Commissioner
       and the distinguished panel and the PTO for this opportunity
       to comment on the effect of URAA on patents in force on June
       8, 1995, which are in force solely by virtue of an existing
       patent term extension under 35 U.S.C. 156.
 
       The Uruguay Round Agreements Act simply implements
       a new patent term calculation for patents in force on June
       8, 1995.  That is certainly something that has been echoed
       by several speakers.  Contrary to the suggestions of some,
       it does not constitute an extension.
 
       It should not be characterized as an extension for
       patents in force.
 
       At issue, then, are the terms of several patents
       that are in force solely because of the 156 extension.  The
       PTO --
 
       COMMISSIONER LEHMAN:  Is that the situation of
       your clients?
 
       MR. SANDERCOCK:  Yes, sir.
 
       COMMISSIONER LEHMAN:  You have clients in that
       category?
 
       MR. SANDERCOCK:  That is correct.
 
       The PTO proposes how to address the question of
       whether these patents should be treated differently than
       other patents in force on June 8.  Should they essentially
       receive discriminatory treatment by the PTO simply because
       they are in force by virtue of their extension?
 
       I respectfully submit that there should be no
       discrimination and that they should be treated no
       differently.
 
       I think the first question is whether they are
       patents in force, and Section 156 governs the term of a
       patent.  It provides a patent with a new expiration date. 
       During the extension, the patentee can avail himself or
       herself of the rights of a patentee, including enforcement
       of the patent.
 
       I think, therefore, the patent is clearly in
       force.
 
       COMMISSIONER LEHMAN:  Mr. Sandercock, I think I
       have got this pretty much straight, but I just want to get
       it completely tied down, now.
 
       Because you really have a client who is likely to
       actually be in this situation.
 
       MR. SANDERCOCK:  Who is in this situation, sir.
 
       COMMISSIONER LEHMAN:  Who is in this situation.
 
       The only way that a generic company is going to
       get into the market in this questionable period, between
       when your patent would have expired under your Hatch-Waxman
       extension and its new rights, is when the FDA gives approval
       for it to go on the market.
 
       MR. SANDERCOCK:  Correct.
 
       COMMISSIONER LEHMAN:  So to some degree, the FDA
       -- if the FDA wanted to support your position, they would
       simply say:  Okay, we are going to delay the marketing
       approval until the longer period of time.
 
       MR. SANDERCOCK:  I would agree with that, on this
       point, yes.
 
       COMMISSIONER LEHMAN:  I mean, then they can't get
       on the market without FDA approval.
 
       So then, you are home free.  I suppose there is
       some -- you know, there is litigation against the FDA that
       the generic company could bring.
 
       Let's assume that the FDA decides to take the
       other reading that we have heard, though, and it concludes
       that, it makes its determination to permit the marketing of
       the generic version of your client's drug at the end of the
       expiration period under the old system.
 
       MR. SANDERCOCK:  Correct.
 
       COMMISSIONER LEHMAN:  Then, I assume what you are
       going to do is that you are going to probably sue for
       infringement and you are going to say:  No, under the new
       law, I have a longer term.
 
       I mean, maybe that is unfair to ask you a business
       question like that right now, but you would have that
       option.
 
       Of course, the Patent Office doesn't have any
       direct control over that.
 
       MR. SANDERCOCK:  I would agree.  The question, as
       raised by Mr. Armitage is, really, how much authority should
       the Patent Office exercise.  And I believe that -- and I
       certainly would like to address your question in the written
       comments -- so I would like to have a little time to think
       about it and not say something improper or incorrect, here.
 
       But I think the question that I came to address
       today is the question that was set forth in the notice, and
       that is, what the Patent Office plans to do as far as its
       interpretation.  And so, really, the question you asked is a
       little bit beyond that scope and I would like to address
       that in my written comments.
 
       COMMISSIONER LEHMAN:  On that point, I suppose we
       could have an interpretation which might carry some weight,
       or we could say nothing.
 
       MR. SANDERCOCK:  I would agree 100 percent.  And
       that is where -- you know, you are sitting here with a lot
       of people who are very concerned on this issue.  You will
       receive a lot of testimony.  You have spent a long time
       considering this issue.
 
       And I would urge you to do just that, and that is,
       take a position, something that could be used in subsequent
       litigation.
 
       COMMISSIONER LEHMAN:  Well, thank you for helping
       me out.  I think I am finally getting through to what the
       essential issue here is.
 
       MR. SANDERCOCK:  I think what the Patent Office
       will have to say on it is very important, and so I would
       urge not a role that is simply passive, but a role that does
       take an action.
 
       COMMISSIONER LEHMAN:  Well, I suppose to the
       extent that the FDA agreed with our position, it might
       affect their regulatory process, or it might obviously give
       you a leg up in court, too, if you went to court.
 
       MR. SANDERCOCK:  I won't deny that.
 
       But I think the only remaining question, then, is
       whether the patents should be treated differently under the
       URAA.  And as some other speakers have mentioned, I think it
       would require reading a limitation into the legislation
       which was not there.  I don't think there is any
       demonstrated congressional intent to treat these patents
       differently, and granted they are in a special area, but
       there is no congressional intent.  There is no language, to
       which one could point that would justify or suggest a
       disparate treatment, and I see no reason under the rules of
       interpretation and construction why the provisions of the
       URAA would suggest a discrimination of this small group of
       patents.
 
       And so, in concluding, I would urge the PTO to
       maintain the interpretation that it initially has taken in
       identifying these patents and that is to consider them as
       patents in force and to which the 17/20-term will apply, and
       that the Section 156 extension should be added to the longer
       of that term.  Thank you.
 
       COMMISSIONER LEHMAN:  Thank you.  Are there any
       other questions?
 
       [No response.]