ROBERT SABATH

WORLD INTELLECTUAL PROPERTY AND TRADE FORUM

MR. SABATH:  Mr. Commissioner, distinguished Panel.  My  name  is
Robert Sabath.  I speak today in both my capacity as President of
the World Intellectual Property and Trade Forum  and  as  a  solo
practitioner in the patent field.  I'm also on the Executive Com-
mittee of the California State Bar's Intellectual  Property  Sec-
tion, but as you know, Mary O'Hara and Michael Glenn will testify
at these hearings on behalf of  the  State  Bar.  Additionally  I
speak  as  Legal  Issues  Editor of QuickTime Forum, a multimedia
developer's publication.

The primary topic today is the use of the patent system  for  the
protection  of software_related inventions. The central objective
of my remarks is to  encourage  greater  flexibility  within  the
framework  of the law in promotingp patenting of software_related
inventions as well as pure software inventions.

Patents themselves are the best prior art against subsequent  ap-
plications  for a patent grant. Anything that artificially limits
the development of the body of prior art relied upon by  the  pa-
tent  and trademark office has the effect of slowing the progress
of technology in critical fields.  Software is clearly a key  and
strategic  industry  for  the  United States. It's no secret that
software itself in the  development  of  the  industry  were  not
caused  by the patent incentives, but still, the patent system is
part of the incentive structure which is necessary to the contin-
ued development of many software firms.

Moreover, the efforts of the United States Government to  promote
U.S.  trade  interests abroad and even to advocate changes in the
intellectual property laws of other countries are severely under-
mined if the U.S. intellectual property laws and regulations fail
to encourage successes of key U.S. industries at home.  One  such
key tstry is clearly software.

I do ask for your indulgence, Honorable Commissioner, in address-
ing  a slightly broader question than the primary topic indicated
above. As a sole practitioner I've come close to  the  plight  of
the  solo  inventor  affected  by the substantially increased PTO
fees  promulgated  by  prior  administrations.  Particularly  the
maintenance fees are believed to be a disincentive which may dis-
suade individuals from even initiating the process  of  obtaining
patent protection.

But the cost of patenting which is born today  by  inventors  and
companies  is  softened by the Silicon Valley spirit of self_help
which has characterized the American spirit  since  the  days  of
George Washington and Thomas Jefferson.

An example of this self_help is the Sunnyvale Patent  Information
Clearinghouse.   Self_help,   and  necessity,  have  additionally
spawned in Silicon Valley a substantial venture capital community
which  is selectively supportive of the efforts of individual in-
ventors.  This spirit of self_help is additioxy shown by many lo-
cal  firms and companies which have opened offices in Washington,
D.C., and its surrounding communities of Virginia and Maryland.

We do salute you, Mr. Commissioner, and distinguished  Panel  for
coming  here  to  California. We clearly need your help, not just
with regard to improving the laws and the regulatory  environment
as it relates to patents, but also with regard to the infrastruc-
ture in which patent and invention processes play themselves  out
in the United States.

The U.S. Government has  facilities,  buildings  and  courthouses
throughout  the  nation. These facilities and buildings have many
purposes.  Federal courthouses now hear patent  lawsuits  in  San
Jose  as  well  as in San Francisco, and in cities throughout the
country.

It is clear that our country has developed  elaborate  mechanisms
for facilitating and resolving disputes between litigants and pa-
tent lawsuits. However, we have  done  pitifully  little  at  the
Federal level to enable the solo inventor to search for prior art
and eff|vely to limit the scope of claims to his  fields  or  her
fields  of  rightful  entitlement.  Mr. Commissioner, accordingly
we're very happy to  have  you  here  today  in  this  convention
center.

We believe as a minimum the West Coast deserves a branch  of  the
USPTO  having at least search facilities to support the software,
the  semiconductor  and  the  electronics  industries  that  have
developed the infrastructure of the American West so extensively.
Perhaps the availability of public search rooms for inventors  is
not  a  matter for the Department of Commerce, but rather for the
Department of Education.  But whether the Commissioner of Patents
and  Trademarks  takes  the initiative or whether another Federal
agency takes the lead, it is clear that many communities  in  our
country  need  access to the technical collections and patents of
the Federal Government.

The facilities for obtaining prior art in Sunnyvale  are  clearly
needed.  But  in most communities of America, such facilities are
nonexistent.  Moreover, solo inventors seldom in  a  position  to
invest  in  a  state_of_the_art  CD_ROM system or computer search
services in view of their high cost.  The Information  Superhigh-
way offers a bright vision of a technological future.  Will there
be facilities to provide public access to information carried  in
this superhighway?

The Patent Office can provide such facilities to bring the fruits
of  this  superhighway  of  information  to our inventors, to the
young in America who thirst for knowledge and  progress,  and  to
the public at large.

The physical facilities of the Department of Commerce and the Un-
ited  States  Patent and Trademark Office are needed in our local
communities to implement the purposes of the intellectual proper-
ty laws of our country. America wants to build its future by edu-
cating the inventors of the future.  We need public search facil-
ities for the electronic arts wherever major electronics develop-
ments are being made, in California, in Austin, Texas, in Dallas,
in Colorado, along with many other communities across Ama.

We need biotechnology search facilities in  Emeryville,  Califor-
nia, and in Cambridge, Massachusetts, and in other communities of
the nation,  and  we  need  software  search  facilities  in  the
nation's  software  development centers including but not limited
to such areas as Seattle and Silicon Valley. The  German  example
for  one  shows that search facilities and examination facilities
need not necessarily be located in the same cities.

The resources and the facilities of the PTO should be distributed
at  various  locations across America to provide public access to
the prior art regarding technological developments which have al-
ready  become  known. We salute you, Mr. Commissioner, for coming
to  California  to  address  the  vital  subject   of   patenting
software_related inventions in this public forum.  The California
economy is improving, but it remains disastrously  understimulat-
ed.   Because  of  the size of California's economy it can either
drive or hamstring recovery on the national scale.

The questions raised at thiblic hearing have a  direct  and  vital
bearing  on the economic well_being of California. We thus appre-
ciate your coming to guide these hearings.

To  focus  more  definitely   on   the   subject   of   patenting
software_related  inventions,  it  is  my belief and that of many
participants in the World Intellectual Property and  Trade  Forum
that  there  is no substitute for the development of an increased
body of software art available to patent examiners. With a  prop-
erly  classified and complete body of prior art the searching and
the examination of new patent applications will be enhanced.

The World Intellectual  Property  and  Trade  Forum  salutes  the
corrective  action  of  the  Commissioner  in connection with the
reexamination of Compton's multimedia patent. This  reexamination
process  clearly  shows that even though applicable prior art was
not initially available to the examiner, there are mechanisms for
addressing  questions  of patentability even after grant of a pa-
tent, but certainly it would be optimal  if  the  applicable  art
heen found and addressed during actual examination.

One way to ensure an effective and complete body of prior art  in
the field of software patents is to relax the policies of the PTO
with respect to the  patentability  of  mathematical  algorithms.
Considerable  room  for  relaxation  is available even within the
bounds of current case law on the subject.  Many  new  inventions
beneficial  to the developing field of software may currently not
even be the subject of patent applications because of  the  chil-
ling effects of the PTO's restrictive approach to the patentabil-
ity of software.

Insufficient software prior art limits the ability of the PTO  to
examine  effectively future software_related patent applications,
including pure  software  patent  applications.  The  distinction
between hardware and software approaches to the same problems has
blurred technologically.  This distinction should be blurred  and
eliminated in the bureaucratic spaces of the Patent and Trademark
Office as well.

Patent examiners should rely leeavily on the  Section  101  as  a
basis for rejecting software_related inventions. With an increas-
ing body of prior art established by greater flexibility  in  al-
lowing  software_related patents, examiners will be encouraged to
make substantive office actions based upon technical  art  rather
than merely implementing policy articulated by agency representa-
tives.

One object of the patent system is to encourage progress  in  the
arts  by publication of inventions. The effect of patent grant is
to add to the body of detailed technical information comprised in
issued  patent  documents.   When a Section 101 rejection is suc-
cessfully asserted by the PTO, the practical effect  is  to  deny
future  software developers of the benefit of full patent disclo-
sure.  This hampers the development of new ideas in many  techni-
cal  fields,  including  multimedia  software  generally and even
biotechnology which is to an extent dependent on progress in  the
field of data systems for its instrumentation to be effective.

We thank you again, Honorabommissioner, for coming here and  con-
ducting these hearings.

COMMISSIONER LEHMAN:  Thank you very much,  Mr.  Sabath.  I  just
point  out  that  we do have patent depository libraries all over
the United States and I think there are  several  on  this  area,
probably  one  at  Stanford  and Berkeley, and they actually have
everything we have in the Patent Office there, and that is avail-
able  to the public. In addition, we're automating the Patent and
Trademark Office, and in fact right now if  you're  in  Arlington
you can go into the __ in fact, Group 2300 is fully automated al-
ready, and if you go into our patent search room  in  Washington,
we've  got  a  facility there where you can actually get computer
retrieval of the patent documentation and we have plans to extend
that  to  the patent depository library so that you'll be able to
come out here and do the same thing.  And  eventually,  hopefully
in  a  few more years, we'll actually have this service available
through the Internet.  We're not quite there technologically yet,
butry engineer and computer scientist in Silicon Valley will just
be able to, in a few keystrokes, get access to our  patent  data-
base.   We  think that's not only going to help people understand
what the patent prior art is but hopefully it will give them  ac-
cess  to  some  of the technology more easily than they otherwise
would have, so we are indeed, I think, making  some  progress  on
that problem.

Thank you very much.

MR. SABATH:  Thank you.

COMMISSIONER LEHMAN:  Next I'd like to call Mr. William Benman of
Benman  &  Collins.  And  Mr. Benman is the last speaker for this
morning.  We're pretty much right on target on  our  time.  Thank
you for joining us.

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