MARY O'HARE

CHAIR, EXECUTIVE COMMITTEE

INTELLECTUAL PROPERTY SECTION, STATE BAR OF CALIFORNIA

MS. O'HARE:  I am not Michael Glenn.  He felt as though he needed
some company up here.

Assistant Secretary and Commissioner  Lehman,  my  name  is  Mary
O'Hare.   I  am the Chair and am speaking on behalf of the Execu-
tive Committee of the Intellectual Property Section of the  State
Bar of California.

The Section is voluntary, comprised of more than  37OO  attorneys
practicing  in  the various intellectual property fields of copy-
rights, trademarks,  trade  secrets  and  patents.   Our  members
represent,   for   the  context  of  this  hearing,  individuals,
non_profit organizations, small and large businesses.

We are proud that our organization was one of the first  to  have
Commissioner  Lehman  as its keynote speaker and we thank you for
holding these hearings in California.

All too often in the past, as Commissioner Lehman has noted, Cal-
ifornia,  and  sometimes  the needs of its attorneys and clients,
more than 26OO miles away from the Patent Ofh, have been felt  to
be  out  of  sight  and out of mind.  Nonetheless, California has
been the center of  the  United  States  cultural  and  technical
renaissance  of  the late 2Oth century.  California's two largest
industries, entertainment and technology,  are  also  the  United
States' two largest export engines.

We in the Section  hope  that  these  hearings  will  signal  the
Office's  willingness to have easy, open access to the Patent Of-
fice for Californians, a privilege until recently  primarily  en-
joyed by the Washington, DC, patent bar.

While I am Chair of this Section, my intellectual property exper-
tise  has  been  gained in the context of a motion picture enter-
tainment practice.  Commissioner Lehman, we know you have a sense
of  humor, we know you know that we've been through an earthquake
recently, but the tragic earthquake in  Southern  California  may
have  rattled  our  homes, our offices and our psyche, but let me
assure you that Californians are tough, we are not so rattled  as
to ignore the importance of your presence l and that's why we are
here or to presume to have a motion picture attorney address  you
on matters at the Patent Office.

Therefore, I am privileged to present Michael Glenn,  an  officer
of  our  Section,  who is a patent attorney in the Silicon Valley
who has represented both individual inventors and large  corpora-
tions before the Patent Office for the past 14 years.

His qualifications are set forth in our written statement and  he
will present the statement of the Section.

Thank you.

COMMISSIONER LEHMAN:  Thank you.

__o0o__

MICHAEL GLENN, ESQ.

MR. GLENN:  Commissioner Lehman, today's hearings have been  con-
vened  to  receive  comments from the public on patent protection
for software inventions.  Rather than  respond  to  the  specific
questions raised in the Notice of these hearings, we will address
the important, broader issues that form the context in which  the
issue of patent protection for software inventions arises.

These issues include:  (1) the expertise and ability of the  Exa-
mining Corps, especially wpregard to the difficult task of apply-
ing complex legal principles to emerging and sophisticated  tech-
nologies;  (2)  the  availability  of  task appropriate tools and
resources to the Examining Corps; (3) the need to make Patent Of-
fice  services and resources readily available to the public; and
(4) the understanding that the US Constitution, in providing  the
Congress  with  "the power to promote the progress of science and
useful arts by securing for a limited time to authors and  inven-
tors  the  exclusive  right  to  their  respective  writings  and
discoveries", did not limit the types of discoveries for which  a
grant of exclusive rights would be secured.

Preliminarily, it must be observed that patent myths  abound  and
the  Patent  Office  should  use its best efforts to dispel these
myths.  These hearings are one excellent way to raise the general
level  of public understanding of the US patent system.  However,
the primary job of the Patent Office is to examine patent  appli-
cations.   A  quality examination and precise applictn of the pa-
tent laws by the Patent Office are necessary to assure  that  the
interests  of  both  the  public  and  the  inventor are properly
served.

First, while recent efforts to improve the quality of the  Patent
Office  services,  especially  the quality of the Examining Corps
and as a result the quality of patent examination and patents is-
sued  by the Patent Office have not gone unnoticed, more needs to
be done.

Because the process of examining a patent application necessarily
demands  both  a high level of technical expertise and a thorough
understanding of the legal standards that are applied during  the
examination,  the  Patent Office must continue to attract and re-
tain Examiners who not only have the technical  knowledge  neces-
sary to understand the invention, but who also understand the le-
gal framework within which the Patent Office functions.  To  this
end,  ability and merit should be the most important standards by
which Examiners are hired, promoted and retained.

Secondly, we encourage the Patent Office to doxe with  regard  to
improving the quality of the patent examination process.

For example, in many technical areas a search of  issued  US  pa-
tents alone cannot reveal the most relevant prior art.  In rapid-
ly developing technology, such as computer software and  biotech-
nology, where the enforceability and availability of intellectual
property rights  in  the  past  have  been  uncertain,  the  most
relevant art may be found in industry journals and in proceedings
of professional societies and institutes.

The Examining Corps should be encouraged to search  all  relevant
information  sources.  Intensive training in using these informa-
tion sources should be provided the Examining Corps such that the
most  relevant  priority is applied by the Examiners to every pa-
tent application filed with the Patent Office.

Thirdly, since the Patent Office is also a tremendous  depository
of  knowledge, we encourage the Patent Office to explore the pos-
sibility of giving the public throughout the United  States  free
or  inexpensive  access to the |nt Office database through an on-
line source such as the Internet.

At present the few public patent  depositories  scattered  across
the  US  are  underfunded, understaffed and resource_constrained.
For example, online searching is not available at  the  Sunnyvale
patent  depository  here  in  Silicon Valley and those wishing to
perform a computerized search of the now available  CD_ROM  data-
base there are limited to only 2O minutes of use.

The Patent Office search room in Washington, DC, is not  accessi-
ble  for  the  public at large, attorneys and inventors who live,
work and invent in  California.   Ready  public  access  to  such
publicly_owned information would allow inventors to make informed
decisions about whether or not they should pursue patent  protec-
tion,  would  allow those seeking to enter a new market to review
the patent literature before entering upon  a  course  of  action
that  could lead to a wasteful, potentially disastrous patent in-
fringement lawsuit, and would  allow  those  seeking  to  license
technology  to  have  accto the marketplace of ideas contained in
the Patent Office database and be better able to establish a fair
value for such technology.  As important, the public would become
more familiar with and better educated concerning the patent sys-
tem.

Fourth,  from  time  to  time  an  issue   may   arise   when   a
recently_issued  patent is publicized as part of a marketing cam-
paign by a successful patent applicant or as part of an ideologi-
cal  debate  concerning  the  applicability of patent laws to the
technology protected or the breadth of coverage afforded the  in-
vention  by the patent's claims.  As a result a discussion ensues
concerning the wisdom of extending patent protection to  new  and
emerging technologies.  We caution the Patent Office not to allow
the mere existence of a public debate  alone  to  provide  a  ra-
tionale for establishing separate rules for such technologies.

This discussion is not new.  In the days of the  Wright  brothers
there  was the fear that the future development of aviation would
be seriously impeded if Wi and Orville should be allowed a  basic
patent  on  their  invention.   As  we all know, this was not the
case.  As Wilbur Wright put it:  "When a couple of flying machine
inventors fish, metaphorically speaking, in waters where hundreds
had previously fished, and spending years of time  and  thousands
of  dollars  finally  succeed in making a catch, there are people
who think it a pity that the courts should give orders  that  the
rights  of  the  inventors  shall be respected and that those who
wish to enjoy the feast shall contribute  something  to  pay  the
fishers."

With regard to enforceability of patent rights for new and emerg-
ing  technologies,  the  Patent Office must show leadership.  The
Statutory mandate of the Patent Office is clear: novel and  unob-
vious  inventions that comprise patentable subject matter must be
granted a patent.  As a  general  principle,  patentable  subject
matter cannot be limited to known technologies, but, as stated by
the Supreme Court in the Chakrabarty case,  must  also  encompass
"anything  under sun  that  is made by man."  Otherwise, only old
technologies will be found to comprise patentable subject matter,
at which point the patent system will lose all meaning.

It is the ownership of invention that spurs innovation, not  just
the  promise  of  exclusivity  afforded by patent grant, but more
significantly, in the incentive to avoid a  patent  by  inventing
around the patented invention.

Finally, while the patentability of software inventions has  long
been  an interesting topic of discussion, first in the courts and
the Patent Office and now in the press, much  of  the  discussion
may be caused by misunderstanding and confusion.  We suggest that
some of the misunderstanding stems from the  confidential  nature
of  the examination process.  In many areas it is not possible to
perform an infringement search to clear a new product because the
most  relevant patents are still pending in the Patent Office and
not available to the public.

The Patent Office could explore opportunities for  involving  the
public  in  the  enation  process to avoid any surprise attendant
with the grant of broad_reaching patents.  For example,  the  Pa-
tent Office may want to consider the pre_grant publication of pa-
tent applications and/or pre_grant public opposition hearings.

We applaud the Patent Office decision to  re_examine  a  recently
issued  patent  on  its  own  initiative  in  light  of  new  art
discovered after issuance of the patent.  As an  organization  we
have  no  opinion regarding the outcome of the re_examination, we
only applaud this bold and welcome policy on the part of the  Pa-
tent  Office  to pursue excellence.  The ultimate outcome of such
actions will be to improve the stature and regard  with  which  a
United  States  patent  is  held.  This in turn will provide more
certainty concerning the validity of an issued patent.   Reducing
the likelihood of a successful attack on the validity of a patent
should  encourage  early  settlements  of  patent  disputes   and
strengthen  American  industry  by strengthening the incentive to
innovate rather than to litigate.

In closing, the Patent Office must continue to serve the needs of
a  broad  range  of  applicants,  from  independent  inventors to
multi_national corporations, while taking into  account  the  ef-
fects of a fast_changing global economy.

Patents not only protect inventions, they also protect employment
and  national  wealth.   The United States is a technology leader
because of the incentives it provides to those persons  who  take
the  effort  and  risk involved in bringing new inventions to the
marketplace.  Of all the nations in the world, the United  States
has  the only significant software industry, the only significant
biotech industry, and the only significant microprocessor  indus-
try,  to  name  a few.  These industries form a mighty technology
river that has human creative energy as its source.  The American
experience shows us that such creative energy requires incentive.
The role of the Patent Office is paramount because the Patent Of-
fice  is  charged  by  law  with  providing  incentives  for this
creative energy by protecting patentable inventions.

We pledge that if you involve California's inventors and  practi-
tioners  in the ongoing discussion of Patent Office procedure and
policy, your job will be easier and we can together  ensure  that
the  patent  system  and the Patent Office fulfills the Constitu-
tional proviso of promoting the progress of science and the  use-
ful arts, all to the economic benefit of the citizens of Califor-
nia and the rest of the United States.

Thank you.

COMMISSIONER LEHMAN:  Thank you very much.

Next I'd like to call Mr. Lippe of Synopsys.

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