WILLIS HIGGINS, ESQ.

COOLEY GODWARD LAW FIRM, PALO ALTO, CALIFORNIA

MR. HIGGINS:  Thank you very much, Commissioner Lehman, ladies and
gentlemen.  I should state first that I'm a partner at the Cooley Godward
firm and I've headed the firm's electronics and software patent prosecution
practice, but will add the views that I express in my written statement and
here at this oral testimony are personal and do not represent the views of
the firm or any of its clients.

In general I'm going to follow the order of my prepared statement, but I'm
not going to read it into the record.  At this point I think you've heard
enough discussion on this issue that if I were to read this into the record,
that would probably put you all to sleep.

I think that a fundamental issue that merits some discussion is the
distinction between the way the copyright system works administratively and
the way the patent system works administratively, because I think that
difference has very significant policy implications.  Of course, the
copyright system, being a registration system, there is essentially no
administrative record that a court can rely on to decide the cases of
nonliteral copyright infringement, the so_called look and feel cases.  What
that means is that a Federal District Court judge or, even worse, a Federal
District Court jury is put in the position, to a certain extent, of the
patent examiner and has to take a look at the copyrighted work, other
similar earlier copyrighted or noncopyrighted works, the prior art, if you
will, and then attempt to distill what's the contribution of the copyrighted
work in question, and all of this with nothing in the record as an aid to
determining what is the proper scope of this copyrighted work and has that
been infringed in the nonliteral similarities between the copyrighted work
and the alleged infringing work.

On the other hand, in the patent system at least the courts start with a
headstart.  There is an administrative record, there is a testing of the
alleged inventive subject matter against some prior art and an attempt to
define in the patent claims what the scope of that work is.  And for that
reason, I think any attempt to eliminate patents for software is going to
cause a lot of problems by throwing these difficult questions back into the
copyright arena, and the courts have struggled for years to devise tests
that will make the determination of the scope of these copyrights easy, and
they simply haven't been able to do it, and the nature of the intense in
fact inquiries required to make those judgments I think means that they're
just not going to be able to come up with easy tests in that area, so that
the inherent nature of the patent system and the copyright system say that
it's absolutely essential for the patent system to play a significant role
in the protection of American intellectual property.

I think, and I've developed that theme further in two publications that are
attached to my prepared statement.  But the second area I'd like to talk
about, I haven't developed in those publications, it's developed to some
degree in the statement, and that concerns the implications to be derived
form the institutional practices in the Patent Office and what conclusions
should be drawn from those institutional practices with respect to how the
examination of software_related patents are handled. Of course, we all know
that the time that examiners can devote to each patent application is
limited.  The examiners, of course, are on a form of a quota system in which
their performance is measured by disposals.  Now what the means is that, if
examiners are handicapped with respect to other examiners by extra
procedures that don't apply in other art areas, it gets very difficult to
provide a good objective measurement standard for their performance.

Fundamentally what I'm talking about here is the whole issue of statutory
subject matter and the very complex set of rules that have been developed
with respect to that, and, of course, anyone who reads the guidelines, reads
the case law, sees that extremely fine distinctions are drawn in the case
law and it's very difficult to conclude is this claim on the right side of
those guidelines or on the wrong side of the guidelines.

Based on my practical experience, I find that too often in the examination
process, most of the effort is directed to testing on the 101 issues and on
claim language, and very little attention is devoted in many cases to
measuring the contribution against the prior art to determine whether that
contribution is new and unobvious.  And, of course, given the limited time
that examiners have available for each application, if they're in effect
forced to deal with these extra issues of statutory subject matter, that
means that they're going to have less time available to deal with the truly
significant issues of is it new and is it useful and has the new and useful
contribution properly been defined in the claims that are before the office.

So the suggestion that I would make is in terms of statutory subject matter
is follow the lead suggested by the Supreme Court that essentially the
patent system should cover anything under the sun developed by man, and move
on to the really significant questions of judging against the prior art. And
I think most of the comments, most of the comments that I've heard, and no
doubt most of the comments that you've heard earlier are not that the Patent
Office is calling it wrong in the statutory subject matter area, but calling
it wrong in some cases with respect to prior art that either wasn't
available or that wasn't properly evaluated.  So that I think is the sum and
substance of the second area I wanted to discuss.

The third area I want to talk a little bit about is the form and content of
patent applications, although as set forth in the notice of these hearings,
that's really going to be more primarily the subject of your next hearing,
but I think there are some policy issues here as well.

Again, in determine what kind of form, what kind of format should be used in
patent applications and deposits of source code if they're going to be used,
what's important, I think, is to make a judgment call on whether a
particular form, format or procedure adds value to the process.  Does it do
something to give us stronger patents.  So, for example, requiring
applicants to deposit source code in a very rigidly defined microfiche
format probably doesn't add a whole lot of value to the process.  Why not
allow the applicant to deposit the source code, if it's going to be
deposited, on disk in machinery to perform so that it can be more easily
accommodated in online databases and other machine searchable tools.  So
again, as an example here, look to the question of what value is being added
by the procedures, and I would say that requiring one form over another as
opposed to what's the content of what you're submitting doesn't add value
any more than the debate over the fine lines in statutory subject matter
adding value.

So in summary, what I would say is that in order to strengthen our patent
system, we should cut to the chase, get to the questions of novelty and
unobviousness over the prior art, and I think as an interim measure, what we
as patent attorneys have to do is assume a proactive stance.  We've got our
Rule 56 obligations that say that we should call the attention to the Patent
Office of prior art that we know about.  If we want to obtain good, strong,
valid patents for our clients, we've got to do more than that.  We've got to
go out and look for the prior art and get it in the record so that it's
considered and overcome.  And if we do that, coupled with increased efforts
on your part to develop your own prior art databases, then I think the end
result will be a much stronger patent system.

Thank you very much.

COMMISSIONER LEHMAN:  Thank you very much, Mr. Higgins, for taking the time
to think through all of this and give us your comments.

Finally, our last witness of the day and of the entire two days of hearings
is Mr. Joseph Grace of Tetrasoft.


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