PRESENTATION BY ALLAN RATNER
PHILADELPHIA PATENT LAW ASSOCIATION
Mr. RATNER;.  I'm Allan Ratner of Valley Forge, Pennsylvania. 
I'm representing Ratner & Prestia.  We're a firm of 13
attorneys, 7 of whom specialize and mainly work in software,
computers and sophisticated electronics.
I'm also representing the Philadelphia Patent Law Association. 
That's a 400 member association with members in New Jersey,
Pennsylvania and Delaware.  I'm familiar with the views of our
membership and I state for the record that at this time these
remarks are being considered by the Association and will be
soon acted upon by the Board.
I personally have been prosecuting and licensing
software-related inventions for more than 25 years and have
seen the continuous growth of the law and the practice and
changes in the law and the PTO practice as time goes on.  I've
seen this positive evolution continuing to better protect the
public interest and better protect the burgeoning technology,
the software technology.
My remarks -- in considering protection for software it's
important to view the industries impacted by any potential
changes in the patent law.  First, what products fall under
the umbrella of software-related inventions.  The request for
comment refers to the software industry and programming
services, prepackaged software and computer integrated design.
However, there is no single software industry.  Certainly
there is a large expanding prepackaged software industry and
the U.S. patent system should reflect policies that encourage
and protect innovation within this industry.  But equally
important are those many industries that produce machinery and
electronic systems in which imbedded microprocessors and
microcontrollers use control functions.
In 1992 a single U.S. manufacturer sold nearly 250
microcontroller chips, each of which is used to provide
control functions in a hardware system.
The list of products controlled using these imbedded chips is
virtually endless.  The following is a brief list, intended
only to show diversity.  Every one of these systems is
controlled to some extent by software executed in the imbedded
microprocessor or microcontroller.  Every one of them is a
software-related invention.
We have telephone CT scanners; MRI systems for imaging the
human body; televisions and TV converter boxes; electronic
test signal generators; automobile subsystems, including
ignition systems, anti-lock brakes, traction control, airbags;
chemical process control equipment; agricultural equipment;
microwave ovens; facsimile machines; sewing machines;
dishwashers; signal processing equipment; camcorders;
automatic bank teller machines.
We have clients in many of these fields -- small clients,
emerging companies, mid-sized companies and large companies --
all of which use patents to protect their technology.
The trend toward increased use of software in imbedded chips
is expected to continue as the cost of chips decreases.  The
decision to use chips is a design choice and is determined by
such factors as cost, design delays, comparing software
against the same functions in hardware, such as ASICS.  They
also consider whether the functions of the product will change
frequently, in which case software reduces life cycle
development costs.
Thus, it is impossible to define a single software industry. 
Admittedly, at one end of the spectrum there are application
software developers who have low capital costs and who are
able to bring their products to market rapidly.
Nonetheless, at the other end, U.S. auto manufacturers, for
example, rely on software to improve the comfort and safety of
their cars.  Few industries have higher capital costs than the
auto industry and delays in bringing new products to market
are common.
For example, testing of airbags in an actual car is neither
fast nor expensive and, of course, software controls the
operation of the airbag.  There are countless other industries
that rely on software-related inventions which do not have low
capital costs or short development cycles and any attempt to
define a software industry is bound to fail.
Furthermore, the industries that use imbedded microprocessors
and controllers are in need of the protections offered by the
patent system that are not available through other forms of IP
protection.
Defining separate standards for patenting hardware and
software is likely to result in inadequate protection for
software-related inventions that do not fit neatly into the
precise pigeon holes of hardware systems and software systems.
Although it is more common to see hardware circuitry replaced
by software implementations, this is not a one-way street.  As
computer aided design techniques improve, a growing number of
hardware designs are created by implementing functions in
software from which designs for dedicated hardware are
automatically generated.
Given the ability to implement many algorithms in either
hardware or software elements that are functionally
equivalent, there is no compelling reason for penalizing an
inventor that selects one implementation over another.  On the
contrary, the inventor who identifies that a software
implementation is better, i.e. less expensive or faster to
bring to the marketplace, has given something more valuable to
society than the inventor that discloses a functional
equivalent -- but more expensive -- hardware embodiment.
The fact that the inventor has disclosed a software embodiment
of the invention that is easier to implement increases the
value to the public and the inventor should be rewarded.
35 U.S.C. 112 requires that the inventor disclose the best
mode.  Ever increasingly, the best mode for many machines and
systems include software elements.  A software solution to a
control function may be the preferred mode.  112 requires
disclosure of that software embodiment.  Without protection
for the inventive concepts that are in software, there would
be little incentive for inventors to disclosure
software-related inventions in the United States industries.
Thus, the fundamental constitutional mandate for promoting
progress in the useful arts would not be met.  In this way the
contributions of software engineers, control engineers and
systems analysts have been rewarded and encouraged.
Coming out to Part B, they seem to reflect a response to a
number of criticisms, many of which reflect the public's
misunderstanding with respect to standards applied in the
examination of software-related inventions.
Both the PTO and the Patent Bar should emphasize that hardware
and software-related inventions have been and continue to be
subject to the same standards with respect to novelty and
unobviousness during examination.  It has never passed muster
to take a known system or a known process and without more
implement that system or process in software.  A conventional
hardware system by itself ported over into software is still
a conventional system.
There is no public policy reason to define a higher standard
of patentability for a software-related invention than for any
other invention.  Now some patents covering software-related
inventions have been questioned because the Code is written
following well-known programming skills.  This is not and
should not be the standard for patentability used by
examiners.
The relevant field of the invention is usually never computer
programming itself, even for inventions in software
application programs.  The field may be systems engineering;
operating systems; networks; database architecture; electronic
design; automatic control system design; electromechanical
system design; chemical process engineering or others.
The inventor very often is the system architect, the person
who conceives of the system and its concepts.  The programmer
acts as a technician under the inventor's direction -- a
technician.
A valid concern has been raised that examiners do not have
access to a comprehensive base of prior art.  One approach to
solving this problem is to improve the access to materials
within the PTO's library, which presently is quite extensive,
as well as improving access to on-line prior art databases
that increase the examiner's productivity.
These techniques are being implemented and more funds should
be put into them.  Perhaps the single most effective method of
providing a more comprehensive base of prior art to the
examiner is to enlist the assistance of other parties who have
a stake in the outcome if a patent is issued.  These parties
include both third parties and the applicants themselves.
With respect to third parties, the current patent law presents
obstacles for third parties who would otherwise be inclined to
submit prior art.  With adequate safeguards -- that's
important, with adequate safeguards -- early publication of
all patent applications may be one way to enable third parties
to submit prior art during the pendency of applications.  This
particular way has problems but that is being considered.
Increased third party participation in post issuance
reexamination proceedings may also encourage the submission of
prior art by third parties.  Thank you.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Ratner, for
those really thoughtful comments.
Next, I'd like to ask Dianne Callan, Deputy General Counsel of
the Lotus Development Corporation to come forward.  She will
talking with us on behalf of the Business Software Alliance.
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