PRESENTATION BY MARK TRAPHAGEN
SOFTWARE PUBLISHERS ASSOCIATION
MR. TRAPHAGEN;:  Good morning, Mr. Commissioner, members of
the panel, and those of you in the audience.  Thank you for
the opportunity to appear today to speak about patent
protection for software-related inventions.  My name is Mark
Traphagen and I am counsel for the Software Publishers
Association.
Patents for software-related inventions have been highlighted
by the media in recent months.  For example, last year the
U.S. Patent and Trademark Office granted a patent to Compton's
New Media of Carlsbad, California for a system of retrieving
information for multimedia works.
Now Compton's New Media is a member company and SPA has no
position on the merits of this patent which is now being
reexamined.  But it is worth noting that Compton's New Media
is not alone in seeking patent protection for software, as
several other companies have been reported in the trade press
to own patents for software with important applications in
multimedia.  And since 1987 more than 10,000 patents have been
issued on nearly 35,000 applications filed in classes 364 and
395.
In 1992 alone almost 2,000 patents were issued on 8,000
applications filed.  And lest one think the patent
applications for software patents are a phenomenon unique to
the United States, the Japanese Patent Office issued as many
as 12,000 such patents in 1990.
Since it was founded in 1984, SPA's been a leader in advancing
the interests of its members, primarily through copyright law. 
And copyright law has been popular, more popular than patents,
among software developers and publishers because its
protection is relatively inexpensive and free of formalities.
Copyright law alone, however, cannot protect all of the
aspects of intellectual property and software technology
because it is limited to creative expression in code, screen
displays and other graphic output.  In particular, Section
102(b) of the Copyright Act provides that "in no case does
copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation,
concept, principle or discovery regardless of the form in
which is described, explained, illustrated or embodied in such
work."
Now it's precisely these functional aspects of software
technology that are sought to be protected by patent law. 
While like copyright law, patent law does not protect ideas in
themselves, it does protect the machines, methods, processes,
and apparatus that implement these novel ideas.  This
protection is extended, however, only to innovations that
satisfy the statutory requirements of novelty and
nonobviousness.
SPA has over 1100 members and represents not only large,
well-known software publishers and developers, but hundreds of
smaller companies and organizations as well.  SPA members
include not only those organizations that have sought patent
protection already, but also those who will do so in the
future and those whose products are potentially affected by
patents held by others.
SPA called on the elected Board members of its consumer,
education and multimedia sections to join a software patent
working group and assist SPA's government affairs committee in
formulating our position on patent protection for
software-related inventions.
The success of the patent system in encouraging technological
and commercial progress in other fields suggests that it would
be prudent to try improving the patent examination process
before changing the statutory underpinnings of the law. 
Whether patent owner or patent user, many agree that the
patent examination process can be procedurally improved.
SPA applauds the efforts the U.S. PTO has made to make these
improvements, including those announced by you today, Mr.
Commissioner, and those that Jerry Goldberg, the Director of
Group 2300 and I have discussed earlier by telephone.
SPA supports these efforts to improve the patent examination
process and commits itself to the following three-step process
to help the U.S. PTO continue to solve these problems.
First of all, SPA will continue to support the efforts of the
Software Patent Institute, a nonprofit organization developing
a software technology prior art database.  You will be hearing
later on in the day from a Mr. Galler, who I've worked with
before on this issue and who is Chair of the Software Patent
Institute.
Second, SPA will call on its broad membership to contribute
nonproprietary information about software products to the
Software Patent Institute.
And third, SPA will provide educational and training
opportunities in the field of software technology to U.S. PTO
examiners.
Many difficulties or many objections to the current system of
patent protection for software-related inventions stem from
difficulties in uncovering prior art.  Typical complaints
focus on the unavailability of pertinent prior art and an
expanded prior art collection would help the U.S. PTO make
more informed judgments about whether a particular invention
meets the statutory tests of novelty and nonobviousness.
These difficulties are not unique to software technology, but
developing a comprehensive prior art database has proven more
difficult for software than other disciplines, such as
biotechnology.
In the early days of the software industry, patent protection
was not as widely used as it has been for other technologies. 
The primary focus instead was on copyright protection for
creative expression and trade secret protection for other
aspects of the technology.
As a result, much pertinent prior art may not reside in prior
patents but in publications and limited circulation documents
such as technical manuals.  The difficulty has been compounded
by related problems, in particular inconsistent terminology in
the technology.
The first step in SPA's program will be to continue to support
the effort to build a non-patent prior art database in the
field of software technology.  The SPA is an Executive
Committee member of the Software Patent Institute, which has
been recognized for its efforts to provide the best available
prior art in the software technology field for use by the PTO
and the public.
Up until now the PTO has lacked such a source to fill this
need.  The Institute is compiling a database of software
technologies from descriptions of software techniques and
processes contributed by the software industry, government,
and academia.
The Institute's work is now producing results that promise to
improve the ability of patent examiners to conduct research
into non-patent prior art.  On January 15th the Institute made
its prior art database available on-line and has demonstrated
it to the U.S. PTO and the American Intellectual Property Law
Association.
As the second step in its program SPA will call on its
membership to contribute nonproprietary information about
software prior art to the Institute.  SPA is in an excellent
position to assist this effort because it is the principal
trade association of the personal computer software industry.
SPA has over 1100 members in North America and Europe, ranging
from large well-known companies to hundreds of smaller
companies, all of which develop and market consumer, business
and education software.  Their cumulative knowledge is
unsurpassed and should reinforce the already significant
resources incorporated into the Institute's database.
The third step in SPA's program will help address concerns
about the level of skill of patent examiners handling
applications for software-related inventions.  SPA would like
to assist the U.S. PTO in educational and training programs
designed to keep software patent examiners conversant in this
rapidly developing technology.
To begin this effort, SPA will extend scholarships for U.S.
PTO patent examiners to attend the SPA Spring Symposium and
other conferences.  These conferences feature many seminars
devoted to emerging technologies.  The upcoming seminar in
particular includes seminars on risk unix systems, wireless
and interactive networks, and I think typically the role of
patents in software development.
The SPA program would compliment the academic training now
being offered by the Software Patent Institute and other
groups.  Mr. Goldberg, the Director of Group 2300, has been
very receptive to this initiative and in return has invited
SPA's software patent working group on a tour of the PTO.  I
am pleased to say that we will be glad to accept.
In closing, the most important concern about patents for
software-related inventions for SPA members whether they be
patent owners or patent users is the integrity of patent
examination.  SPA is hopeful, as others have been, that the
current problems of patent protection for software-related
inventions can be addressed by improving U.S. PTO's access to
non-patent prior art and information about ongoing
developments in software technology.
We look forward to a continuing relationship and a free flow
of information between the U.S. PTO and our members.  Once
again, Mr. Commissioner and members of the panel, thank you
for giving SPA the opportunity to testify on this important
issue.  I will be happy to answer any questions you may have.
COMMISSIONER LEHMAN;:  Thank you very much, Mr. Traphagen. 
Does anybody have any questions on the panel?
(No audible response.)
COMMISSIONER LEHMAN;:  If not, thank you very much for your
sharing with us.
Next I would like to ask Rob Lippincott, Executive Vice
President of the Interactive Multimedia Association to come
forward.
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