Due to the inclement weather, a number of speakers were unable
to attend or provide oral remarks.  Prepared remarks from
these individuals has been included in the transcripts in
response to their request.

PREPARED REMARKS FROM ROBERT GREENE STERNE
Thank you, Mr. Commissioner.
My name is Robert Greene Sterne and I am testifying on behalf
of myself.  I want to focus on five specific issues which I
believe need to be explored further in order to round out the
record in these hearings.  These  five areas deal with the
preparation and prosecution of computer related patent
applications.  
While my views are my own, they are based on the experience of
the ten members of my firm who prepare and prosecute patent
applications in the computer area.  The experience base that
is being drawn upon encompasses literally hundreds of original
US cases.  I mention this because you need to know the
perspective from where my views come.
First, I want to address whether program listings or
flowcharts or pseudocode or other specific types of disclosure
should be required in the patent application for the software
aspects of the invention?  It is tempting both for practioners
and the Office to have very specific disclosure requirements
concerning software. But my view is that it would be a mistake
to establish specific disclosure requirements.  Our experience
is that there is no agreement among experienced patent
attorneys or among software inventors concerning what is the
optimal disclosure strategy.  Moreover, as the technology
races forward, the disclosure strategies change based on our
experience.  The patent system is very robust since it, unlike
a sui generis system, can adapt to rapidly developing
technology in emerging areas.  I understand that to reduce
printing costs and database costs the Patent Office would like
to limit certain types of listings, and that many people
believe that more higher level forms of representation of the
invention are more effective in explaining the critical
functionality and architecture and operation of the software
invention.  I agree with these sentiments, but believe that
the system is better served by maintaining the flexibility of
allowing the applicant to decide the best way of discloses the
invention in the patent application.
To amplify on this point, let me say a few things about the
technology that will support my view.  First, I agree with the
opinion that machine code, such as object code, does not aid
in enabling one skilled in the art to make and use the
invention.  But I believe that source code combined with
adequate accompanying description is often sufficient to
satisfy the disclosure requirements under Section 112.  This
is particularly true with computer programs written in higher
level computer programming languages, such as Pascal and ADA. 
As the computer programming arts progresses, computer programs
will be just as easy to read by humans as english text.  In
fact, it is the objective of such computer programming
languages to be human readable.  Thus, it would be wrong for
the Office to adopt rules which would prohibit the submission
of source code.
Second, as an attorney in private practice, I am very
sensitive and aware of deadlines and budgets, and I applaud
the Patent Office's efforts in the area of enlightened
management, management by objective, and total quality
control.  These are all good and encourage Examiners to
utilize their time in the examination process in the most
optimal way. However, I am quite concerned that the very
complexity of these state of the art software inventions by
necessity require more time for examination that is being
allocated by the Office.  Examiners in these areas of
technologies should be careful supervised, and their
performance measured, like all other examiners.  However, the
Office must make sure that it is allowing them the time that
they need to do a quality examination job that the patent
system and the public requires.
Third, I applaud the efforts being made to hire examiners with
significant educational and work experience in software
technology.  This expertise is absolutely essential for the
Examination process, and the patent system is very well served
by the Office raising the technical competence of the
Examining corp in the software area as soon as possible. 
Similarly, applicants for the patent agents exam who have
significant computer science backgrounds should qualify to sit
for the exam.  Computer science in this day and age should be
considered to be a sufficient technical expertise to qualify
to take the patent agents exam.  But I agree with the
sentiment expressed by some that there is a broad range of
technical training in computer hardware and software from
degrees from different educational institutions. 
Consequently, both in terms of hiring examiners and qualifying
applicants for the agents exam the Office must carefully
examine the educational qualifications of the individuals
involved so that qualified people are let into the system and
people without sufficient training are excluded.  By
necessity, this will require line drawing, but like many areas
of patent law the ability to distinguish the shades of gray is
the strength of the system.  In other words, neither the
approach of excluding all computer science people nor the
policy of letting all computer science people in should be
taken.
Fourth, our experience in prosecuting applications on state of
the art software related inventions is that the Examination
process in the real emerging areas of technology is
effectively being delayed pending these hearings and the
political uncertainty over patents on this technology.  Mr.
Commissioner, you should be aware that we are encountering
situations in prosecution where applications, in our opinion,
are not being allowed because the Examining Corp is afraid of
the political ramifications associated with possible adverse
publicity to the Office if applications in these technical
areas are issued.  This delay and uncertainty hurts the patent
system and American innovation.  These political forces should
be removed from the examining process and the focus should be
on examination and not on a fear that the anti-software patent
forces will raise a great hue and cry over the issuance of a
particular patent in an emerging area of technology.  Now, I
don't want to be misunderstood on this point.  In no way am I
arguing that a patent should be issued on an invention that is
too broad based on the prior art  or is non-statutory based on
a liberal interpretation of Section 101.  But I am deadset
against any type of delay that is being caused by fear of
issuance of patent applications on patentable inventions
merely because they involve state of the art software
technology.
My fifth and final point concerns your database.  As other
speakers have stated, one of the great benefits to the public
of patent protection for software related inventions is that
such inventions, which in the past have been maintained as
trade secrets, will be disclosed to the public so that others
will not have to reinvent the wheel.  This will be of great
benefit to the software industry.  As an aside, the software
industry in this regard is 180 degrees from what happens in
another emerging area of technology, biotech, where the
tradition is to publish or perish and inventors oftentimes
lose their patent rights here or abroad though premature
publication of their inventions in the technical literature. 
The biotechnology area clearly shows the benefit of rapid
disclosure of technology in that competing researchers are
allowed to rapidly build on the work of others and not
recreate the same inventions.
Turning to the database problem involving the examination of
software related inventions, my view is that this database
problem is not different that the problems encounter by the
Office in other areas of emerging technology, such as biotech. 
It is critical that the Patent Office take all reasonable
steps to create the most robust database possible in these
emerging areas of technology, and to provide efficient and
economical access to this database to members of the public
both in Washington and in remote locations.  The electronics
superhighway being pushed by this administration could form
the backbone for this remote access.  The patent office should
squarely embrace initiatives for building the most
comprehensive database possible and for opening it up for
ready access by members of the public.  I know that this in
practice is a tall order and one that could be very expensive. 
However, the benefits of providing a comprehensive database
appear to outweigh the cost.
Thank you for this opportunity.

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