COMMISSIONER LEHMAN:  Thank you very much, Mr.
       Newtson.  We appreciate your help, in helping us reinvent
       the Patent Office.
       Next, Robert Armitage.
       MR. ARMITAGE:  My name is Robert A. Armitage.  I
       am appearing here on behalf of the American Intellectual
       Property Law Association.  I am currently the President of
       that Association.  Our address is 2001 Jefferson Davis
       Highway, in Arlington, Virginia.
       Assistant Secretary Lehman and distinguished
       officials of the Patent and Trademark Office:  You have
       heard from several speakers this morning, and I would like
       you to think back to the very first speaker, Gary Griswold. 
       I am going to be able to shorten my comments mightily, by
       saying ditto.
       Let me begin by congratulating the administration
       on the enactment of the Uruguay Round Agreements Act.  We
       are, at AIPLA, very pleased that one component of this was
       the inclusion of a comprehensive system for provisional
       filing of patent applications.
       We have long argued that a simplified system of
       gaining access to the Patent Office at low cost and with few
       complexities would be in the best interest of U.S.
       We have a few comments on the provisional filing
       scheme, and I think I would like to begin by a comment on
       fees.  We believe that after the Patent Office gains some
       experience with using the system for provisional filing,
       that it ought to reassess whether or not the fees charged
       cover the incremental costs for providing these services.
       Obviously, when you are in an area such as fees,
       not every Patent Office service can be provided to the
       public at an incremental cost or there would not be enough
       revenue generated in the Office to cover all of the Office's
       However, we believe that there is a strong enough
       public policy interest in encouraging provisional filing
       that this is perhaps a unique area where the Office should
       consider the lowest possible fee.  Particularly independent
       inventors and small entities, for them this needs to be as
       optimal a procedure as it can be.
       Second, we fully endorse the IPO suggestion that
       some means exist for an applicant not filing a provisional
       application have a simplified way of disgorging from the
       patent term calculation that first year.  Whether it is a
       Rule 62 mechanism or a new Rule 62.5 mechanism, we would
       encourage that the filing of a single paper in the Office
       with the payment of an appropriate fee be a mechanism
       whereby prosecution could be continued, with prior to that
       filing of the paper prosecution being regarded as
       We also note that many applicants will enter the
       U.S. patent system and file continuing applications or
       perhaps continuation-in-part applications during the first
       year with the result that their initial priority filing, or
       initial U.S. filing, will go abandoned within the first 12
       months.  We would hope that the Patent Office might find a
       creative way through rulemaking to deem all such
       applications that go abandoned within one year of the
       earliest priority date be provisional applications.
       What this would do by operation of Patent Office
       rule is exempt these applications from the first year of
       patent term and, in effect, put U.S. inventors on the same
       plane as foreign inventors.  And obviously, it is provision
       that in almost every conceivable circumstance would only
       benefit a U.S. inventor.
       We believe that there are some problems and
       complexities associated with inventorship determinations in
       provisional applications.  There is no, to us, clear-cut way
       in which one can ever really define what it means to be an
       inventor of an application where there are never claims and
       there never is intended to be any examination.
       The bottom line is, we believe that the ultimate
       solution for the problem of naming inventorship in
       provisional applications is a system of assignee filing. 
       Indeed, a system of assignee filing would do no more than
       put U.S. provisional filers on the same plane as foreign
       filers, both of whom take the benefit of their early filing
       dates under Section 119, rather than under Section 120.
       If, indeed, for an interim period of time, it is
       necessary to designate inventorship in provisional
       applications, then we would suggest that the Patent and
       Trademark Office by rule allow both, what I will call the
       over-naming of inventors and the under-naming of inventors,
       with some express notion in the rule that it is a proper
       designation of inventorship for the purpose of provisional
       applications, if either too few or too many inventors are
       named.  And in particular, one would not be able to
       challenge an application if there were, for example, eight
       inventors named, but in no subsequent application was ever
       an invention claimed that named more than one or two of
       those inventors.  You will recall in the rules, there are
       provisions for adding, but not removing, inventors. 
       Implying, of course, that this practice is possible.
       We also think that it is equally desirable for the
       Office to expressly allow the underdesignating of inventors. 
       Obviously, without a common inventorship, with a later
       application there can be no benefit of the provisional
       application, but nonetheless if one or two joint inventors
       is not named, it ought nonetheless to be possible to claim
       the benefit of that application in a subsequent application
       with at least one common inventor.
       There are, of course, some other, more technical
       aspects to provisional filing that rulemaking or commentary
       associated with rulemaking might clarify.  You have heard
       some of these before.  One of them is some expressed
       provision for allowing multiple provisionals to be claimed. 
       Perhaps some commentary in the rules that a provisional
       application not need to have a one-to-one correspondence in
       terms of inventions or claims, subject matter with a
       later-filed application.  And perhaps, some clarification as
       to what the best mode updating obligations are for an
       applicant using the provisional application.
       In our view, perhaps the simplest standard would
       simply be for all Section 119 priority applications to be
       stated by the Office to be subject to the same requirements
       in terms of updating best mode.
       Several of our committees also pointed out that
       the provisions on identifying provisional applications by
       virtue of a cross reference contained in a later application
       might be clarified, particularly so that it would be clear
       to the Office and clear to someone reading a published
       application or otherwise, as to what was provisional and
       what was not.
       I will move on to just a couple of comments on the
       20-year patent term implementing legislation.  Yesterday, of
       course, during testimony on behalf of AIPLA, we indicated
       that we supported the 20-year patent term.  We also
       supported 18-month publication with the ability to have
       expansive incorporation by references of technical
       disclosures, in part to prevent in the Patent Office files
       the generation of a multiplicity of identical technical
       I continue those comments today by seconding the
       observations of prior speakers that we need as much as
       possible to compact prosecution in the Office, not only for
       the sake of multiplying technical disclosures, but also
       because of some of the restrictions applicants will be under
       in enjoying a 20-year patent term.
       Certainly, the after-final reconsideration
       practice on the payment of a fee would seem to be something
       that could be incorporated into 20-year patent term
       applications generally, not just those in the transition
       area, and also to provide applicants the option, not the
       mandate, of continuing prosecution of independent and
       distinct inventions in a parent application rather than
       requiring that divisional applications be filed.
       We have in our written comments a number of other
       observations, and I would end my oral comments at this time.