PRESENTATION BY JONATHAN BAND
MORRISON & FOERSTER
MR. BAND;:  I am Jonathan Band, a partner in the intellectual
property group of the Washington, D.C. office of Morrison &
Foerster.  The views I express here today are my own.
I attended the PTO hearings two weeks ago in San Jose and I
would like to share with you three observations based not on
the testimony which you heard, but in my conversations with
many of the Silicon Valley spectators.  This is, if you will,
a report from the Peanut Gallery.
First, using Ron Lorings' perceptive classification a small
but not insignificantly minority of the audience fell into the
software patents are bad category.  While the majority fell
into the bad software patents are bad category.
By further discussions with the software patents are bad
adherence revealed that they were confused and frustrated by
the case law and patentability or software-related inventions
and that they had no confidence in the ability of the PTO to
search the prior art.
This suggests that if the PTO successfully addresses the
concerns of the bad software patents are bad people, many of
the software patents are bad people will be satisfied as well.
Second, and following from the first point, I detected a
strong mandate for serious procedural reforms that would
improve the quality of software patents and eliminate
submarine patents.  The PTO has already announced that it will
introduce legislation establishing a 20-year term from filing
and reforming the reexamination process.  These proposals met
with near universal support in San Jose.
There was also strong support for pre-grant publication of
applications and reform of the continuation and division
practice.  The PTO should give these and the many other
amendments suggested close consideration.  As the PTO reviews
these proposals, it should place the interests of the
inventing community ahead of those of the Patent Bar, the
primary beneficiaries of the current obfuscation and
litigation.
Reform of the system to make it simpler and more predictable
while eliminating the game playing and the lawsuits would be
a lasting legacy of the Clinton Administration in the
technological history of our nation.
And speaking of game playing in the Patent Bar, the current
hopelessly confusing state of the case law on the
patentability of software-related inventions means that the
success of the software patent application turns more on the
cleverness of the patent lawyer than on the quality of the
invention.  This, of course, is backwards.
The PTO should establish a commission consisting of
programmers, law professors, practitioners and jurists to
establish some order in this area.
My third observation on the San Jose hearings is that there's
an underlying concern in the inventing community that in the
past decade the pendulum may have swung too far from too
little intellectual property protection to too much
protection.
As Judge Kazinski of the Ninth Circuit has observed,
overprotecting intellectual property is as harmful as
underprotecting it.  Judge Kazinski further notes that
creativity is impossible without a rich public domain.  For
this reason the intellectual properties are full of what Judge
Kazinski calls careful balances between what's set aside for
the owner and what's left in the public domain for the rest of
us.
Because patents and copyrights are monopolies created by the
intellectual property laws, regulation of those monopolies is
the responsibility primarily of the intellectual property laws
and only secondarily of the anti-trust laws.
Given the PTO Commissioner's emerging role as the
administration's intellectual property policy advisor, the PTO
must be vigilant about maintaining the balance between
protection and competition.  Thank you for your attention.
COMMISSIONER LEHMAN;:  Thank you very much for those comments. 
I really don't have any questions.  They simply strike a
responsive chord on my own thinking.  I thought that was a
good description and analysis of our San Jose hearings.
Next, I'd like to call Michael Chakansky.  I hope he's here. 
We're running a little outside of the 20 minutes.
If not, is Paul Heckel here?  I did not see him.  Well, we're
going to have a quick hearing this afternoon.
Leonard Suchyta, from Bellcore, Bell Communications Research,
General Attorney there.
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