PRESENTATION BY DAVID L. CLARK
AQUILINO & WELSH, P.C.
MR. CLARK;:  Mr. Commissioner, members of the panel, my name
is David Clark.  I was an examiner in Group 2300 for 10 years
from 1983 to 1993.  When I left the Patent Office, I was a
supervisor in the group.
I'm currently an intellectual property attorney with the law
firm of Aquilino & Welsh.  I figure I have about one year per
minute to cover here.  I've been thinking about this process
for quite a while, so I'll try to jam it all together.
When I became a supervisor -- I guess I'm living proof of
Lou's statistics -- I had 11 people in my art unit.  I did not
have any primary examiners, and seven of the people that I was
in charge of had less than a year of experience.
The technology that we worked with in the art unit was
database technology, which is very often Ph.D. level work, and
the legal issues that we did confront in the database
technology were often the first impression as far as legal
issues go.
I relay this story because it's typical of the group at this
point, as was told to you by Lou earlier.  And I believe it
directs attention to the key problem in the group, which is
retention.  I think that many of the issues being discussed by
these hearings can be addressed at least partly by solving the
problem of retention.
For many people with computer backgrounds, the Patent Office
is not considered a career path, but rather just a stepping
stone.  The high turnover places great stress on the senior
personnel.  And the costs of constantly training new people is
extremely high.
Over the years, the resources of the group have literally been
drained as a result of this.  This has created a vicious cycle
of eroded resources and high turnover, which I think are very
closely related.
I've heard a lot of talk about hiring during these hearings. 
I don't think hiring alone will solve the problems of
retention, because the group currently hires many capable
people.  But the years of training necessary for developing
the skills of -- nuances -- understand nuances of the law, the
technology, and how the law applies to the technology, cannot
be hired.
The key resource of Group 2300 is people.  People who have
developed the skills of effectively analyzing and expressing
the technical and legal issues of these very complex
technologies.  It's my contention that all resources should be
directed towards improving these skills and maintaining these
skills within the Office once they've been attained.
I think the problem of retention can be addressed by focusing
on two things, providing tools which will lead to an effective
examination and satisfaction among the examining corps, as
well as proper recognition for the people in the groups that
improve the Office and perform a good job.
And perhaps more importantly, I think Group 2300 has to
realize that they must compete with the career alternatives
available to the examining staff.  That is, the group must
consider itself a competitor for these people's services.
First I'd like to discuss tools.  The two fundamental tools of
examining are time and efficient access of information.  The
time to examine an application in Group 2300 has remained
constant over at least the last decade that I'm aware of. 
Even though the technology has accelerated at a much faster
pace than what was going on 10 years ago.  I think this has
led to an increased dissatisfaction among the examining staff
with respect to what is attainable within that time period.
I would recommend, as you alluded to earlier, a very strong
analysis of the time constraints imposed on the examining
staff, as well as the incentives created by the present
system.  And this should include a review, at least where
possible, of similar activities on the outside.
The second tool is efficient access of information.  And this
can either be in the form of physical tools used by an
individual, or the exchange of information among people.  In
either case, the ideal is to be able to immediately access --
and I would put forth without searching for it -- relevant
art.
And then the process of examination should be just merely
review of that art, rather than -- the current process of
searching, I would say, characterizes out of control.  You're
often lucky if you can find ballpark art in many instances for
cases.
And I think that if the information is already organized
before they go to access it, this will lead to a much greater
sense of satisfaction with the job.
COMMISSIONER LEHMAN;:  How would we do that?  What do we need
to do to organize it better?  Is it still the classification
system?
MR. CLARK;:  Yes.  That's actually my next couple of topics
here.
The Office should immediately implement in Group 2300 a
dynamic, ongoing classification of the information that's
coming in and being developed.  The first step is to create a
structure which supports this effort and then to provide the
time necessary to update and maintain the system.
In this rapidly developing technology, the classification
really needs to be a lock-step with the developments as they
are coming out, instead of the typical process of every couple
of years undergoing a reclassification.
This will reduce the frustration presently experienced among
the examining staff, which I think will -- it's my belief it
will lead to more retention.  And I think that the further
that the Office is away from these ideals, the more problems
it will have with retention.
The Office should also implement existing technologies which
encourage and facilitate the flow of information both between
examiners and between examiners and outside
information-gatherers.  Each art area should be encouraged and
supported in forming a network entity for exchanging
information on an ongoing basis.  Information services within
the PTO should serve the examiners' goals in developing these
tools.
As a way to further facilitate the flow of information among
examiners, I would recommend developing discussion groups for
technology areas.  And these should be supported by the
system, the incentives in place, and management.
I can attest to the value of these because I was involved in
two discussion groups in the database and graphics processing
area when I was in the Office.  These are extremely valuable
for developing resources, exchanging ideas with respect to the
technology being examined in particular cases, and also
discussing the legal issues that surround these cases.
I think that these discussions often lead to a much greater
consistency in the examination process.  And it can be tied to
retention because it reduces the isolation of the examiner and
it puts a team concept into the process.
COMMISSIONER LEHMAN;:  Now, that sort of thing, though,
requires -- again, given how we evaluate people.
MR. CLARK;:  Right.
COMMISSIONER LEHMAN;:  They don't get any credit for
discussion groups.  So that really goes again to the criteria
that we use for judging performance.  Right now you can get
the wrong paper out the door and you get as much credit for it
as if you get the right paper out the door.
MR. CLARK;:  That's right.  In fact, the discussion groups
which we had were all supported -- well, we were not given
time by management to do these.  It was a grassroots type
effort.
There should also be a technology liaison between each
discussion group and industry and the bar for bringing in
people and receiving information relevant to that area.
I'd like to make a final comment on tool development.  I think
that the attitude which should pervade this process should be
one of empowering the examiners to define the tools that they
need for their job.  And this should be supported by
management so that they can define what their future is like
in the Office.
I have to admit that this concept was given to me by somebody
in industry because I don't think I had the mind set for it
coming out of the patent office.
The second area is recognition, both in monetary form and in
nonmonetary form.  An example of -- I know somebody who
recently left the Office who had been in the Office
approximately three or four years.  Their take-home pay
doubled when they left the Office.  And they expect increases
in salary of $15,000 to $20,000 over the next year.
I think that the gap needs to be closed to some extent, and
maybe it's not possible to close it all the way.  But with
whatever is left, as far as a gap between the outside and the
PTO, the Office is going to have to very aggressively compete
in the other areas.
Then with nonmonetary recognition, I think the system needs to
be realigned to effectively recognize the groups of people
that work together to attain the goals of the Office.
COMMISSIONER LEHMAN;:  Is it your view that the -- Mr. Gable
mentioned that we have a pay problem, particularly at that
GS -- at that sort of early middle level -- or do you think we
have a problem at every level?  Do you think that if you spend
20 years at the Patent Office and you get to be a GS-15 and
you get a bonus, that even that isn't enough?
MR. CLARK;:  I think somebody who has made that decision, at
least at this point, has signed on to whatever salary -- I
think, as far as retention goes, early on they look at the
salary that they have, the salary they could get for very
similar type of work.
COMMISSIONER LEHMAN;:  So you really agree with him that the
real problem is more in that, say, in the two to five year,
two to ten year category?
MR. CLARK;:  Yes.  I could see the upper GS levels being
relevant in terms of long-term growth within the Office, that
somebody with career alternatives who is being lured away from
the Office could look down the line and say, well, GS-15 --
you know, that economic analysis that the GS-15 makes this,
and where will I be in the same timeframe that it would take
me to attain a GS-15 level?
COMMISSIONER LEHMAN;:  Of course, it's my impression that in
terms of a non-lawyer examiner, that the options for the
really large six-figure-plus incomes are somewhat limited.  I
mean, at that point we're fairly competitive.  But if you have
the law degree, as you do -- you went to law school and became
a lawyer -- then we really become very noncompetitive, almost
at every stage.  And it's extremely hard to close that gap.
But with the at least non-lawyer examiner, my sense of it is
that within the overall context of the government's pay scale
that at least theoretically we could close the gap.
MR. CLARK;:  Right.  Yes, I think the compensation for
attorneys within the Office, that's a very sensitive subject. 
But I think that that possibly could be -- it happened
indirectly with me.  I was given certain cases because of my
legal skills, which in my case I stayed in the Office longer
as a result of that.
I think that that's what I was talking about earlier, where
maybe there are alternatives to salary, even after closing the
gap.
COMMISSIONER LEHMAN;:  You found the work itself to be more
interesting and stimulating when you've got some legal
challenges that made it worth staying there.
MR. CLARK;:  Right.
COMMISSIONER LEHMAN;:  One of the concerns I have that I'm
picking up, not at these hearings of course, but in my
discussions with Patent Office employees, is that there is a
real cultural bias in certain areas in the patent corps
against lawyers.  It's kind of like when you go to law school,
you join another group.  Did you experience that at all?
MR. CLARK;:  I think that depends.  I don't think there's an
overall bias, but I know -- and I did not personally
experience that.  I think that's a tribute to my supervisors.
COMMISSIONER GOFFNEY;:  I'm curious as to when you went to law
school.  Could you give us a little background as to when you
went to law school and finished?
MR. CLARK;:  '86 to '90.
COMMISSIONER GOFFNEY;:  I mean, during your tenure.  Did you
come here and go to law school while you were an examiner, and
when did that happen?  After the first year?  Second year?
MR. CLARK;:  Well, I was in the Office.  I joined in '83, and
for the first year and a half I just focused on examining and
reading books, actually, that I had gathered over my
undergraduate years.  And then I went and attained my master's
degree for the next two years, from '84 to '86.  Then from '86
to '90 I attended law school.
During that time, I went through the partial and full sig
programs.
COMMISSIONER GOFFNEY;:  So it was about three years after you
attained your law degree that you went out to industry, or
went out to practice?
MR. CLARK;:  Right.
COMMISSIONER GOFFNEY;:  Thank you.
COMMISSIONER LEHMAN;:  What was your undergraduate degree in?
MR. CLARK;:  Computer engineering, which was a very good
degree for what the technology is in Group 2300.
I guess just to summarize it, I think it's -- in order for
this problem to be resolved, I think the group is going to
have to be competitive, and really look into maximizing its
advantages, especially in the upgrading of the examination,
tools for the examiner, to provide a better environment.
And I think this will break this current cycle of the eroded
resources and poor retention, and hopefully start a new cycle
of much better resources, higher retention, which will be to
a more experienced staff.  And I think a better treatment of
the legal and technical issues that are creating problems in
the public domain.
COMMISSIONER LEHMAN;:  Well, I really appreciate your --
again, like Mr. Gable's testimony, I think you really focused
on some very important practical issues.  We might even want
to have you back informally for some discussions about it. 
Maybe we can get a little discussion group going of people
like you who have left the Office, and if we can get to the
bottom of why they do.
MR. CLARK;:  I'd love to participate.
COMMISSIONER LEHMAN;:  Great.  Thank you very much.
MR. CLARK;:  Thank you.
COMMISSIONER LEHMAN;:  Professor Galler has arrived, I assume. 
Great.  I think we're not quite ready yet, though.  We're
running way behind because we thought we had all the time in
the world.
Our next witness is Allen M. Lo, a student associate at
Finnegan, Henderson, Farabow, Garrett & Dunner.
Back to the index of speakers for Arlington

Forward to Allen M. Lo