BY STEPHEN L. NOE CATERPILLAR, INC. MR. NOE;: Thank you. I am Stephen Noe, but I am sort of Stephen Noe as well, Intellectual Property Council for Caterpillar, that well-known earth moving and computer company in Peoria, Illinois. Today I'm representing the Intellectual Property Owners, a nonprofit association whose members include companies, universities, individuals who own and are interested in intellectual properties. My testimony has been approved by the Board of Directors for IPO for presentation as an IPO position as well. Caterpillar is a member organization of the IPO and is truly an interested party in its own right, as both a producer and major user of computer software. Today's hearing -- I have to thank Mr. Yoches for shortening my necessary presentation. But I want to amplify some of the things he said. Today's hearing presupposes the continued availability of patent projection for the computer software implemented inventions, a position strongly endorsed by the IPO and focuses on the examination of those applications. However, implicit in this series of hearings is the suggestion that software is somehow different from other technologies and must be treated in some special way. I disagree. Considering some of the remarks made at the recent hearings in San Jose and even some this morning, just agreeing on what is and what is not software-related technology may be an exercise for Humpty Dumpty from Alice in Wonderland where a word means just what I choose it to mean. Nothing more nor less. For purposes of my testimony I'll use software or software-related technology in the broad sense, to include discreet software products like word processors or speaker timing computers, highly complex custom software that controls manufacturing systems and imbedded software that controls engines, anti-lock braking systems, perhaps your microwave oven. One can readily come up with other examples, some of which may look and feel more or less what we think of as software traditionally, but all of which lie along a continuum of software-related technology. Whether an automobile engine is controlled by a camshaft or a microprocessor it makes little difference to the driver of that automobile who only cares that the engine run well and reliably. Patent policy should not be the factor that forces a manufacturer to choose which tool to use to control that engine. The IPO supports treating software-related technology like any other technology within the scope of the patent system. Continued patent protection of software-related technology is important to the United States' industrial competitiveness. The PTO should process applications for patents on software no differently than applications in any other technology, either in examination procedure or in the way the statutory tests are applied. In particular, the IPO rejects the proposal that software-related patent application should be subject to special tests or standards governing novelty, nonobviousness or disclosure. The first noticed question related to the adequacy of prior art. Patents and more significantly printed publications do provide a sufficient and representative collection of prior art to assess novelty and obviousness. Examiners access to and understanding of the printed publications is the issue, not the existence of the publications. Several avenues are available to and should be used by the PTO to improve its access to and its ability to apply software-related prior art. These include supplementing its own collections with non-patent references, reclassifying and computerizing those collections as necessary, encouraging the development of readily accessible prior art collections outside the Office, collections such as that we have heard discussed this morning being put together by the Software Patent Institute in Ann Arbor, Michigan, training its existing examiners in the technical programming skills necessary to understand and properly apply the prior art references that they do find, and hiring as fully qualified examiners computer scientists or others who are trained in software technology. A number of these activities are currently being implemented and the IPO applauds and encourages these efforts. Jerry Goldberg has been especially active in this area and I've spoken with Jerry many times about this. The hearing notice also asks if a special duty of disclosure should apply to applicants for software-related inventions. Such a burden would be neither fair nor workable. Even knowing when the duty applies would be difficult and subject to interpretation. There simply is no bright line separating software-related inventions from other inventions. Instead, there is a continuum of software-relatedness, which encompasses products of all descriptions. Developers who implement their inventions using software should not be penalized for doing so by the patent system. The notice then moves to focus on the PTO examination procedures, the area that Bob Yoches specifically addressed. Once again, there simply should be no special standards or tests applied to or duties imposed upon applicants in software-related applications. The difficulties in examining these applications result from examiners unfamiliar with the technology attempting to examine applications using incomplete prior art collections. These difficulties can and should be corrected by supplementing the art collections and improving the expertise. A mandatory duty to search for, disclose and discuss prior art in software-related applications would be a powerful incentive to characterize inventions as other than software-related in an attempt to avoid the burdens and disadvantages of that duty. Examiners will try to impose the requirement; applicants will try to avoid it; and the quality of examination and classification will suffer. One item of software-related technology the PTO should follow closely and make early use of is the national information infrastructure of the high speed data highway. I noticed in Commissioner Lehman's comments that this has begun. The Internet is being used by the PTO already. A major problem underlying the difficulty in examining software-related patent applications is information related. The PTO does not have sufficient access to the best prior art information and the public has no convenient access to the PTO search files. The proposed data highway could close this information gap, providing a common resource to searchers, both within and outside of the PTO. As Mr. Lippincott pointed out earlier this morning, this technology could even offer a cost effective way to implement early publication of pending applications, allowing interested parties to review the applications and provide relative art. This approach would take advantage of the knowledge of those most informed in the field of software technology and most concerned about the issuance of software-related patents. What difficulties the applicants face in complying with existing disclosure requirements? The best mode requirement in U.S. law used to be a non-issue. The best mode issue seldom arose in patent contests. However, recent judicial opinions have caused quite a stir in this area and patent practitioners have responded as they believe necessary to protect their clients. Some in an abundance of caution feel the need to submit program source or object code listings. The PTO cannot unilaterally resolve this matter. Resolution must await legislative or judicial clarification. However, the Office could begin accepting code listings on standard machine readable media containing printable files. The PTO should not, however, require patent applicants to confirm to any standardized disclosure format for such applications. No one format can be the best for all the wide range of software-related technology. What would simplify examination in the Office might well complicate others' understanding of the resulting patent or complicate litigation relating to that patent. The issues commented on here today are important ones for all of American industry, because software permeates every facet of technology today. Industry needs the assurance of patent protection for innovative developments, software-related or otherwise, to maintain and improve technological leadership. Software-related technology is not inherently different from any other new technology that the patent system has faced and adapted to in the past and will be called upon to deal with in the future. The problem that exists today lies not with the technology, but with the initial PTO reluctance to meet it head on. The PTO resisted until the courts insisted. Had the patent system and the technology grown side-by-side as is the usual case, there would be no hearings today. Now the PTO is a bit behind the curve, but progress is being made. This is the time to accelerate, support and encourage the adaptation to this technology, not to make a special case of it. Who can say what the next generation of innovation will bring. What will be the software issue of the future? With appropriate training, tools, and hiring practices the PTO can examine software-related applications just as capably as anything else and the patent law can remain technology neutral as it must. Thank you. COMMISSIONER LEHMAN: Thank you very much, Mr. Noe. What is IPO's position with regard to the issue of pre-publication? MR. NOE: I feel it supports the concept of pre-publication provided that it's done with sufficient safeguards to the applicant. For example, the applicant should have the opportunity to withdraw the application prior to publication if that is to come to be. COMMISSIONER LEHMAN;: Thank you very much. I'd just like to observe that there already are differences in examination procedures among different examining groups and different technologies, certainly in Group 1800 which does biotechnology and we do a lot of searches of DNA sequences. We have an examination technique and procedure really that is quite different. So we can distinguish between the technologies without necessarily changing legal standards among the technologies. Next, I'd like to call John Horn, Patent Counsel for Allen-Bradley Corporation. Are you representing Allen-Bradley or yourself, Mr. Horn? Back to the index of speakers for Arlington

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