PRESENTATION BY KEITH STEPHENS
TALIGENT, INC.
MR. STEPHENS;:  Mr. Commissioner, my name is Keith Stephens. 
I'm corporate counsel of Taligent and I will be testifying
today on behalf of Taligent, Inc.  I'm a computer scientist
and engineer by training and have earned my living as a
systems engineer, as an inventor and subsequently as a
marketing rep before I saw the light, went back to law school,
took the patent agent's exam and became an attorney. 
Currently I'm employed by Taligent to protect their
intellectual property.
Taligent is a joint venture, similar to many other small
innovative companies in the Silicon Valley.  It's increasingly
important for small ventures o be able to protect their
intellectual property.
Today I would like to talk about transforming the legal chaos
associated with software-related inventions into a system with
much better legal certainty by continuing to refine the
examination process, and issuing quality patents allowing
software investors to obtain a better return on their
investment, and encouraging investment in American software
technology.
Can I have my second slide?  I have three major points. 
First, it's important for the Patent Office to hire the best
people.  Second, to provide them with the best tools.  And
third, to tune the examination process.
The Patent Office needs to hire computer science majors and I
applaud your efforts in that area.  However, they need to get
computer science majors with industry experience.  This will
give them a historical perspective on the prior art.
In addition, they need to continue the efforts that Jerry
Goldberg and Group 2300 have made in bringing industry experts
into the Patent Office to teach classes on particular
technologies that they come into contact with.  We sent Mike
Pitel, who was a university professor at Chicago.  He came and
taught a class on object oriented programming, not just a
class to introduce them to the technology, but also to teach
the history of object oriented programming and give them a
perspective so that they would be in a better position to
examine our patents.
We also worked closely with Groups 2300, 2500 and 2600 to
bring a set of examiners out to the Silicon Valley to
introduce them firsthand to technology experts.  However, as
Tom Kronium pointed out in the Silicon Valley, this is a
two-edged sword.  As Gary Shaw quipped, this provided him with
new and innovative ways to reject our claims.
Now in addition I'd like to encourage examiner/attorney
communication.  It's so important for examiners to up front
understand exactly what the invention is that I would like to
encourage them to be more open in contacting attorneys so that
they can find out from their first source exactly what the
invention is.
Corporate America doesn't work in a vacuum.  Corporate America
-- it's always the case that we consult experts within and
without before we make any kind of a decision.  Similarly, as
an attorney, when I receive an invention disclosure I don't
just snap to a decision on that disclosure.  I'll consult the
experts within our company as well as ask general questions to
maintain confidentiality of what the state of the art is
outside.
And finally, I'll also, if I know someone in the Patent Office
that's an expert in the area, contact them and ask them what
they know about it.  Similarly, I would encourage the Patent
Office to create a human database of experts, both inside and
outside of the Patent Office, and communicate with them
through phone, Internet, querying a wider audience to
determine exactly what the prior art is.
This could be done through a contractual basis or just
generally by contacts and asking open-ended questions.  But I
would also encourage them to continue the confidential status
of patents until they issue.
Secondly, I think it's important to give the best tools to the
examiners.  It's very encouraging to see examiners starting to
get access to Internet.  Electronic mail is a tool that
everyone in the industry uses as a common practice.
I would even venture to say that had Internet been available
that the multimedia technology, state of the art, would have
made it in the Patent Office in a much more timely manner.
Secondly, commercial databases such as those in the Group
2300, Orbit, Dialogue and Lexus should be used as a regular
basis amongst examiners.  But in addition the Patent Office
should pursue getting industry databases from such companies
as AT&T and IBM, so that they can effectively search the
technical disclosure bulletins of these companies.  The result
will be quality patents and a confidence in the appropriate
claim scopes issuing in the patents.
Third, I'd like to talk about tuning the examination process. 
It's very important to standardize the examination process and
encourage examiners to take advantage of contacting attorneys
using the databases to find out what the state of the art is
in the area and inquiring of experts, both within and without
at the Patent Office to make their determination as to novelty
and obviousness.
Then in addition it would be very good to have a common format
of acceptable standards to file patent applications so that we
could electronically file patents.  This standard could be
such as WordPerfect or a word standard document that we could
transmit electronically to the PTO and eliminate a lot of the
paper shuffle associated with patent applications and speed up
the processing of these applications.
Then, too, I would encourage the improvement of practical
application of the law in the Patent Office.  Hiring people
with industry experience is naturally going to elevate the
current obviousness standard and the novelty standard once
people have a knowledge of what the prior art really teaches.
And then I would encourage the Patent Office to modify their
examination process, to remove the bias currently associated
with the reexamination process, to encourage us to utilize the
reexamination process as opposed to using a more costly
approach of going to the CAFC or other Federal District Court
type of an approach.
These changes, which are slight modifications to the current
examination process, will result in much better patents being
issued.
So in summary, I would encourage communication with attorneys
in the Patent Office, better communication with the outside
world.  I would encourage the utilization of a human database
through a setup so that the PTO could have access to better
prior art.  And then I would encourage the best possible tools
being provided to the Patent Office so that they'd be in a
better position to know what the prior art is and to also
assess what is truly new technology versus just reinventing
the wheel.
And finally, tuning the process associated with examination of
processing patent applications.  This will eliminate the
current chaos associated with software-related inventions,
improve the legal certainty associated with issued patents,
and make the PTO much prouder of their work product.
Let's remember who created the patent system and let his words
control.  Thomas Jefferson said, "Where a new invention
promises to be useful, it should be tried and afforded the
best possible protection to allow progress in the technology
and to allow the fruit of the labor to be realized by the
inventor of the technology."
This will encourage investment in software, will result in
more software-related high pay, high tech jobs and finally,
will increase American competitiveness in a global economy.
Thank you.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Stephens.  I
didn't hear in your list of proposed reforms, which actually
Mr. Robinson suggested, and that was the idea of some kind of
disclosure prior to publication of the patent, of the
information in the patent application.  Pre-publication as a
technique to make certain that we let the world know what's
going on and make sure we get the prior art.  What would be
your view about that?
MR. STEPHENS;:  My view on that is I don't think that
pre-publication is necessary to reach your common goal that I
think everyone here will agree with, is to issue the best
quality patents with claims of the scope that the inventor is
entitled to.
That can better be achieved by providing the appropriate tools
to examiners and providing them access to the experts in the
area, even possibly putting together a contractual
relationship between the Patent Office and various human
experts that are available in industry, so that the
confidentiality of the application will not be compromised.
But the information will be available to examiners to make
sure that the issuance of the patent has the appropriate
claims or the appropriate scope of claims.
COMMISSIONER LEHMAN;:  Thank you very much.  Does anyone else
have any questions?
(No audible response.)
COMMISSIONER LEHMAN;:  Next I'd like to call Mark Traphagen,
counsel to the Software Publishers Association.
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