PRESENTATION BY JEFFREY A. BERKOWITZ
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
MR. BERKOWITZ;:  Good morning, Mr. Commissioner, and other
distinguished members to this panel.  I'm Jeffrey Berkowitz,
Associate with the intellectual property firm of Finnegan,
Henderson.  And like my colleague, Mr. Yoches, my comments
today are my own and not those of the firm.
I'd like to talk a little bit today about Question Number 10
in Topic B for today's hearing.  In Question Number 10 the PTO
asked for comments on how they should handle the submission of
computer program code listings, specifically the PTO seeks
comments on the following four items:
One, should the PTO require a submission of program code
listings;
Two, should the PTO require a submission of code listings in
machine readable format only;
Three, should program code listings be included in patent
documents or should they be made available only through a
publicly accessible database; and
Four, what hardships would patent applicants face if these
requirements were imposed?
In my opinion, the PTO should not require a submission of
program code listings.  The following discussion concerning my
opinions on the first item of Question 10 necessarily provides
my opinion on the remaining items.
Currently, applicants may file program code listings with the
PTO, and I emphasize the word "may," because these listings,
particularly when in machine readable format can take hundreds
of pages, maybe even thousands of pages.  It is clear that the
PTO must deal with substantial financial, printing and
logistical problems when an applicant chooses to submit a
program listing.
In an effort to deal with these problems, the PTO promulgated
37 C.F.R. Section 1.96 under which program listings must be
included in the application itself, either in the
specification or as part of the drawings if the listing is
under 11 pages in length.
If, however, the listing is 11 or more pages in length then
the listing may be submitted in the form of a microfiche
appendix, which will not be part of the printed patent, but
will become available to the public once the patent is issued. 
Some applicants choose to submit program code listings
regardless of the number of pages to ensure that their
applications comply with the statutory requirements of Section
112, first paragraph.
However, if a programmer of ordinary skill in the art could
write a program without undue experimentation from the
disclosure of the program list application, that is an
application for a software-related invention absent a program
listing, and if such a listing is not required to satisfy
other statutory requirements, for example, the best mode
requirement of Section 112, second paragraph, then the
applicant would not need to file a program code listing for
the invention.
Based on this reasoning, many applicants typically choose not
to file program code listings.  A requirement for program
listings would prevent applicants from filing applications
until product development is complete, which would further
delay the process of filing applications, examining
applications, and issuing patents for software-related
inventions.
In many of the software-related patent applications that I've
written and prosecuted, inventors have not yet completely
developed their software-related inventions to be patented
prior to the filing of the application.
Thus, there is no final program listing to be submitted with
the application.  This should not prevent the applicant from
filing an application on his or her invention.  In this
regard, it is important to note that in other technologies
applicants can and do file patent applications without having
completed product development.
Applicants also choose not to file program code listings
because filing the listings would make the entire program
available to the public, which in some cases may divulge
important trade secrets or other information that the
applicant may not need to specifically divulge in order to
secure patent protection.
Even if applicants choose to submit machine readable listings,
such listings may be reverse engineered.  As long as a
programmer of ordinary skill in the art can write a program
without undue experimentation from the disclosure of a
programless application and if such a listing is not required
to satisfy other statutory requirements, then the applicant
should not have to file a program code listing for the
invention and divulge important trade secrets.
Furthermore, a requirement for the submission of program code
listings, regardless of the form of the listings will only
further increase the PTO's burden in connection with both the
examination of software-related inventions as well as the
practical aspects related to storing program code listings and
making those listings available to the public.
Examiners do not have the time to study program listings,
regardless of the form in which they are submitted to the PTO,
nor does the PTO have resources to waste in storing the
program code listings and making them available to the public.
Some of the hardships associated with mandatory requirement
for submission of program listings are apparent from the above
discussion.  There are also a number of problems associated
with the current microfiche requirements that are worth
mentioning.  First is the availability and cost associated
with the microfiche appendix requirements outlined above.
When an applicant chooses to submit a program listing of 11 or
more pages, he or she must locate a company that provides the
microfiche services, a task that is not so easy, and spend
additional money to have the listing put on microfiche, a cost
that may be high depending upon the length of the program
listing.
Instead, if the PTO believes that it is necessary to require
appendices for program listings, I suggest that the PTO
consider more practical approaches, such as submission of
program listings on a CD-ROM or other mass storage device and
in a format that may be used by examiners to inspect
efficiently and effectively the program listings.
I believe these and other approaches are less expensive and
more accessible to inventors of software-related inventions
than the archaic microfiche appendices instituted in the
current rules.
Finally, I'm also concerned that requiring submission of
program code listings would lead to litigants unnecessarily
raising issues concerning a program listing should the PTO
adopt a submission requirement.  This, however, is beyond the
scope of these hearings.  Thank you for your time this morning
to present my views.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Berkowitz.
I understand that Ron Reiling is now here.  Perhaps you could
finish up the morning for us, Mr. Reiling.  Ron Reiling is
corporate counsel to the Digital Equipment Corporation.
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