PRESENTATION BY RICHARD NYDEGGER
WORKMAN, NYDEGGER & JENSEN
MR. NYDEGGER;:  Good morning, Mr. Commissioner, members of the
panel, and fellow participants.  My name is Rick Nydegger.  I
am a patent attorney and I practice with the law firm of
Workman, Nydegger & Jensen in Salt Lake City, which
specializes in intellectual property law.  I'm also an Adjunct
Professor of Law at the University of Utah, College of Law and
I am a past-Chair of the Electronic and Computer Law Committee
of the American Intellectual Property Law Association.  I
currently serve on the Board of that Association.
The views which I express today, however, are my own views and
I appreciate this opportunity to participate in this
proceeding and to add my comments to the record of these
hearings.
First, I wish to make a few introductory comments, which I
will then follow with specific comments in response to the
subject of this hearing, namely standards and practices used
in examination of patent applications for software-related
inventions.
Much has been written and said by way of criticism about
overly broad patents having been granted by the PTO for
software-related inventions.  However, it should be remembered
that these types of problems are not unique to
software-related inventions alone, but have existed and will
exist in connection with any type of new and rapidly emerging
technology.
Indeed, in the celebrated Telegraph case that was decided by
the Supreme Court in 1854, the eighth claim in Samuel Morris'
patent on the telegraph was ultimately invalidated as being
overly broad, although granted initially by the Patent Office.
However, equally important though often overlooked is the fact
that the first seven claims in Mr. Morris' patent were upheld,
thus providing broad protection for a new technology which
spawned a whole new industry.
In a similar fashion, in 1888 Alexander Graham Bell's patent
for the telephone was also challenged as being overly broad. 
Claim five of Bell's patent was contained in a mere five lines
which simply read, "The method of and apparatus for
transmitting vocal or other sounds telegraphically as herein
described by causing electrical emulations, similar and formal
vibrations of the air accompanying the vocal or other sounds."
Yet in upholding that claim the Supreme Court said, "It may be
that electricity cannot be used at all for the transmission of
speech except in the way Bell has discovered it.  And that,
therefore, practically his patent gives him this exclusive use
for that purpose.  But that does not make his claim one for
the use of electricity distinct from the particular process
with which it is connected in his patent.  It will, if true,
show more clearly the great importance of his discovery, but
it will not invalidate his patent."
Those skilled in the art of prosecuting patent applications
for software-related inventions will readily appreciate the
similarities between the claims and the issues raised in the
telegraph and telephone cases and the issues raised by the
claims in many software-related inventions.
I cite these historical examples merely to point out that
criticism and charges of overly broad patents that are issued
by the Patent Office are not something new, particularly when
dealing with fundamentally new and rapidly changing
technologies.
Yet the fact remains that in both these cases, as in many
others, protection under the patent system was broadly
afforded to these emerging technologies on which entire
industries were ultimately founded.
That's not to say that the U.S. patent system as it presently
exists is without problems that need to be carefully examined. 
Indeed, I strongly support the increased efforts being made by
the Patent Office, including these hearings, to become more
customer oriented and to create a stronger sense of
partnership with American inventors at all levels.
However, when examining the problems that may exist under the
patent system there is a need for temperance and we should be
slow to illuminate or narrowly circumscribe protection for any
new or emerging technology simply because the newness of that
technology makes it difficult to search, difficult to disclose
or difficult to apply statutory standards of eligibility or
patentability.
With these remarks in mind, I turn to some particular comments
on examination standards and practices that will, it is hoped,
suggest possible ways to strengthen the patent system and the
way in which the patent system can serve to both reward and
foster innovation as well as to continue to strengthen our
country's economy and the ability to compete in an
increasingly competitive global marketplace.
Specifically, I wish to direct my remaining comments to four
areas.  One, improving access to relevant prior art; two,
improving the experience, training and retention of qualified
examiners; three, reducing the present emphasis on pendency
time and adopting early publication procedures; and four,
expanding third party participation in reexamination and
opposition proceedings.
On point number one, improving access to relevant prior art,
for pure software systems such as application programs,
computer operating systems, network operating systems,
database management systems to name just a few, access to
prior art other than patents or printed publications is needed
because many such pure software techniques have not been
documented or published in traditional ways.  Much is already
being done to rectify those problems.
Efforts such as the APS classified search and retrieval
system, private efforts such as those that Dr. Bernard Galler
with respect to the Software Patent Institute and others are
commendable and are helping to develop an adequate prior art
database.
The PTO has and should continue to request voluntary
submission of product descriptions, user manuals,
administrator guides and programming guides and soft copy from
software developers for addition to the PTO's library.
The current reclassification efforts with respect to
software-related inventions have been successful.  And
Director Jerry Goldberg and his team in Group 2300 of the PTO
have been doing an excellent job of reclassifying
software-related technology within the Patent Office.
In addition to the extent that such a source has not already
been considered, a classification system which takes into
account classifications proposed by the IEEE and the ACM might
be considered.  These classification systems represent
industry efforts to classify software-related technology.
Continued effort in all of these areas is needed.  Another way
to provide patent examiners with access to the most complete
up-to-date prior art is to solicit the assistance of those
most interested in seeing to it that patents with overbroad
claims do not issue, by providing for publication prior to
grant and by providing an opportunity for interested parties
to submit relevant prior art before issuance.  This is
discussed further in point three below.
On point number two, improving the experience, training and
retention of qualified examiners, patent examiners who are not
well qualified or trained or who lack adequate resources will
not be able to adequately assess an invention's patentability.
Thus, patent examiners need to have proper background in the
software-related arts and every effort needs to be made to
retain well-qualified and experienced examiners.  One way to
ensure that patent examiners have proper training in the field
of software-related technology is to recognize computer
science as a science for the purpose of serving as a patent
examiner.  I was pleased to hear that things are moving in
that direction currently.
Another important step toward improving the examining corps'
performance level in the field of software-related technology
is to improve the retention rate of examiners.  On-the-job
training builds examiner confidence and examiners should be
encouraged to stay on the job.
I believe the PTO should consider conducting a comprehensive
study to find ways of increasing the retention rate of
well-qualified, trained and experienced examiners and to
provide adequate resources in terms of physical support
facilities and personnel to permit efficient and thorough
examination to be carried out.
On point number three, reducing the present emphasis on
pendency time and adopting early publication procedures, the
PTO should decrease the present emphasis on pendency time
concurrent with adopting early publication procedures.  The
current emphasis by the PTO on pendency time is, I believe,
misplaced since a patent is an important means for disclosing
details concerning new technology.
The important question is not pendency time, but rather time
to publication.  This concept is recognized in the patent laws
of most major industrial countries which provide for
publication of an application 18 months after the priority
date.
Delays in publication can mean that the technology disclosed
in a patent is not available to the public in a timely
fashion, which may delay further development of the technology
and may also lead to problems with so-called submarine
patents.
The present emphasis on reducing pendency time by the PTO has
a number of undesirable consequences on the examination
process.  For example, if a patent issues within the
approximately 18 month pendency time as now suggested by the
PTO, prior art from foreign patent tribunals is most likely
not available for consideration by the U.S. examiner.
Having this prior art is particularly important in the
software-related arts and would further help to protect
against issuance of overly broad patents.  It would make for
a more complete examination and higher degree of confidence in
the validity of an issued patent for such inventions.
It is thus suggested that consideration be given by the PTO to
publishing applications 18 months from the priority date. 
This publication should be contingent upon providing a search
report prior to publication to permit the applicant to amend
or withdraw the application prior to publication.
Following publication the applicant should be entitled to
recover damages for use of the invention after publication but
prior to issuance in the event of infringement.  Examination
could then take place in a more contemplated environment.
It should be noted that early publication can also operate as
an early notification to others working in the field of the
potential issuance of the patent, allowing them to factor that
into their business decisions and thus minimizing the problems
with submarine patents as noted above.
On point number four, expanding third party participation in
reexamination proceedings, the PTO should consider changing
the current procedures governing reexamination.  The problem
of patents that are issued with overbroad claims could be
reduced by changing the current procedures governing
reexamination.
Third parties are reluctant to institute reexamination because
of the essentially ex parte nature of such proceedings.  The
PTO should expand the ability of third party petitioners to
participate in reexamination after the petition for
reexamination is granted.  If such a reform were made, the use
of reexamination would increase and the reliance on the courts
would decrease.
In conclusion, Mr. Commissioner, I believe that the
above-proposed changes would serve to greatly strengthen the
U.S. patent system in ways that would appropriately further
the progress in science and useful arts as contemplated under
the Constitution and in ways that would continue to help U.S.
industry to effectively compete by protecting the investment
of U.S. companies in important new technologies of the type
typified by the software and electronics industries.  Thank
you.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Nydegger, for
those thoughts and for coming all the way from Utah to be with
us.
I'd like to mention a couple of housekeeping items at this
point.  I'd like to remind the speakers that if they have
prepared remarks it would really be helpful to us.  If you
haven't already given them to us, if you would give them
either to Jeff Kushan right here or Mike Fleming who is
circulating around here someplace, who I introduced before.
Also, for any members of the press or media who are here
interested in this, I'd like to note that Ruth Ford is our
Director of Media Relations.  I don't think she's here in the
room right now, but will be very happy to help you with
anything you need.  And you can reach her at the
Commissioner's office at 703-305-8600.
Next, I'd like to ask Allan Ratner, the President of the
Philadelphia Patent Law Association from Ratner & Prestia to
come forward.
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