PRESENTATION BY A. JASON MIRABITO
BOSTON PATENT LAW ASSOCIATION
MR. MIRABITO;:  Is that where you want me?
COMMISSIONER LEHMAN:  That's right.
MR. MIRABITO;:  I'm sorry I wasn't here this morning.  My trip
here took 24 hours to get from Boston here.
COMMISSIONER LEHMAN;:  Did it really?  I guess we had some
other people from Boston this morning who had a lot of
problems.
MR. MIRABITO;:  I missed a hearing before the Board of Appeals
this morning at 9:00, so I made it for this.
COMMISSIONER LEHMAN;:  We're sorry about that.  Just relax
now.  Tell us what you think.
MR. MIRABITO;:  Thank you.  Good afternoon, Commissioner,
gentlemen.  My name is Jason Mirabito and I am a partner at
the Boston patent law firm of Wolf, Green, Field & Sax.  I'm
here to testify on behalf of the Boston Patent Law
Association, which is an Association of some 400 members, of
which I am the past-President.
In the short time available to me today I wanted to
concentrate solely on the issues of Topic B.  While I was
trying to prepare my remarks earlier yesterday, figure out
what I wanted to say, I questioned, why is this area different
from other areas and why does this area seem to be so fraught
with problems that other areas of technology have not been.
An example of that is the biotechnology area.  I guess I came
to the conclusion that in the biotechnology area, where there
has been a lot of patent activity in the last ten years, the
general thrust is to publish.  If you don't publish, you
perish.  And perhaps in this area this is an area in which if
you do publish you do perish.  That is due, I think to some
extent to the trade secret licensing status and much computer
software.
I think what's -- I don't mean this literally, of course,
because certainly computer software programs aren't published,
but the underlying processes of them are not generally
published.
Our organization recognizes that sometimes shortcomings in
both the examination process and the process of uncovering
prior art is partly due to this trade secret status of many
software developments.  We do not believe, however, that the
difficulty in searching for prior art should militate and
argue in eliminating protection for computer software and that
software only be deprived of the protection which is
guaranteed to them and to other technology holders.
We should remember that some, I guess it's 20 years ago now,
in the '70s through until 19-, really early '80s, the issue of
computer software patentability was again before the Patent
Office and the Patent Office at that time took an attitude
which I would suggest is negative towards the patenting of
computer software.  It finally took a Supreme Court decision
to change that around.
As I see Topic B there are two main themes there.  The first
theme being what can be done to better examination and what
can be done to better the discovery of prior art.  And the
second is the disclosure of software inventions.
As to the first series of questions, we suggest that the
Patent Office needs to be appropriated more funds and the
Patent Office, like every other agency always likes to hear
that.  But I think those monies are needed to better index
software technology and to train examiners.
COMMISSIONER LEHMAN;:  Can I interrupt you?
MR. MIRABITO;:  Sure.
COMMISSIONER LEHMAN;:  You know, we don't receive appropriated
funds.  We're by law fully fee funded.  Does that mean you
think we should increase the fees to support this?
MR. MIRABITO;:  Definitely not.  I've always found it
interesting that this is one of the few agencies that's
required to be somewhat self-sufficient while every other
agency -- although I understand now the FDA, they're talking
about the FDA charging for the analysis they do.  But I've
always found that very curious that we're expected to, we the
public are expected to, fund an agency.  The defense agency
certainly does not have that problem.
I think if the Patent Office gets the required funds and gets
the better training for the examiners, particularly hiring
more computer software trained examiners, people with majors
in computer science, I think the Patent Office can do what the
biotech group did earlier and will rise to the occasion.
With respect to the issue of so-called hidden prior art, this
is a very real problem.  There are allegations that the
so-called prior art has been sitting in software programs and
on people's computers for years and years.  I think to the
extent it's true -- and I think there is some truth in it --
that it is very difficult to search some computer technology,
that the Patent Office should, as the Commissioner did
recently in the Compton's patent case, order reexamination.
We, as an organization, are in favor of an expanded
reexamination procedure within the Patent Office that would
include all the traditional reasons for unpatentability.  This
would require a slight change to the reexaminations, statute
and procedure, but not very much at all.
Secondly, I think another thing which may ameliorate the
problem that may exist with so-called bad patents being issued
is when the United States, if it does go to a publication
system, I think a publication system would eliminate some of
those problems because then people would be advised of
potential patent rights and then have a right to make
opposition to those rights.
I would suggestion this, however, in a day in which most
foreign countries have publication within 18 months of the
earliest filing date, in many instances, both in software and
other areas, one may not even get a first Office action by
that point.  This is an area in which the owner of the
technology will make a decision whether to stick with trade
secret protection or to opt the patent mode.
I think an 18-month period is too short sometimes.  What we
would suggest as a change to that would be that a period of
time after the first Office action has been issued, say three
to six to nine months there would be publication that would
then allow the applicant to see what the prior art looks like
and make a determination at that point whether or not to
continue on with it.
I would like now to turn briefly to some of the issues that
are related in the second theme, that of disclosure to the
Patent Office.  I've been practicing in this area since at
least the early 1980s when one could practice in this area or
unless you flip back to the 1960s.  I'm not that old.
One, question three posits whether the Patent Office should
impose special disclosure standards on software-related
inventions.  We firmly believe that such a disclosure
requirement would be inappropriate as there is no reason for
treating software-related inventions differently than other
patentable technology.  So long as the disclosures meet the
requirements of Section 112 and other requirements, we don't
believe there should be any other changes.
Question six questions whether the applicants for
software-related inventions ought to do a prior art search. 
Such prior art search, of course, is not required in other
areas.  We believe it would be inappropriate to require a
prior art search.  Obviously, myself and other of my
colleagues will from time to time do a prior art search for a
particular invention but not always.  We always have, of
course, our great duty of disclosure rules which would take
care of any prior art of which the attorney or the inventor is
aware is not disclosed.
Questions 7, 8 and 9 I kind of jumbled together and relate to
the most effective way to describe software and patent
applications.  This is something that myself and some of my
colleagues in the early 1980s started having to deal with. 
The issue became, well, do we include codes, do we not include
codes; do we use flow charts, are flow charts sufficient.
I've seen a tendency and a change over time.  In the very
beginning, the early '80s, we always included code because you
never know just disclosing flow charts may not be sufficient
and you don't want to get caught with a nonenabling patent.
Then we shifted over in the later times to flow charts are
sufficient.  I see now people flipping back again.  I guess
the point I'd like to make is that there is no best way. 
Certain inventions are best described by the code.  Certain
inventions are best described by flow charts or pseudo code,
and certain inventions, such as combinations of hardware and
software, are very unclear how they should be described.
The bottom line again is Section 112.  Is the description
sufficient to meet the requirements of the statute?  A related
issue to the requirements of requiring that a list patent
software -- I'm sorry -- computer software listings be
included as a requirement I think would be inappropriate.  It
is akin to me to requiring that applicants for mechanically
related inventions disclose to the Patent Office the detailed
blueprint drawings that make up the machine under issue there.
I think that would be improper in that case; it would be
proper in this case.  In addition, required computer software
listings and software-related inventions would prevent those
who wish to file an application and get a constructive date of
reduction to practice prior to writing the code.  I think that
would be another problem with that.
There are many other issues and comments we would like to make
had we had an unlimited amount of time which, of course,
doesn't exist.  But we expect our organization, and we are now
planning to give many more detailed submissions in the written
March details.
We thank you for the opportunity to have spoken to you and
wish you very good luck in what I think will be very
interesting endeavors.  Thank you.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Mirabito and
thanks to the Boston Patent Law Association.  As I recall you
testified or the Association testified in the last hearings
that we had here on -- I think it was the harmonization
hearings.  They also came before us.
MR. MIRABITO;:  That's correct.
COMMISSIONER LEHMAN;:  Thank you for putting in your work as
an Association and for, you know, going through all the
trouble to get here with the weather.
Next, I'd like to ask Jonathan Band if he's here to come
forward.  Mr. Band is an attorney with Morrison & Foerster.
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