COMMISSIONER LEHMAN:  If not, the next person on
       our list is Gary L. Newtson.
       MR. NEWTSON:  My name is Gary L. Newtson.  I am a
       partner with Harness, Dickey & Pierce.  My office is located
       at 888 16th Street N.W., Washington, D.C. 20006.
       My comments are my own and not made on behalf of a
       client or my law firm.
       Mr. Assistant Secretary, distinguished staff of
       the Patent Office, my comments are directed to the rules
       relating to the disclosure which will be necessary to comply
       with the requirements of the Uruguay Round Agreements Act.
       In many, if not most, technical areas in the
       mechanical and electrical arts, only one embodiment of the
       invention is disclosed in a conventional application. 
       Generally, a sketch or a drawing alone with a few additional
       comments or notes would enable one skilled in the art to
       make and use that device.
       Although the fee for filing a provisional
       application is small, I am concerned about the overall cost
       of the application to the owner, whether it is an individual
       or a small or a large entity.  In particular, I am concerned
       that the inventor small entity groups be either required on
       their own or feel obligated to hire, or intimated into
       hiring, an attorney to prepare a specification that would
       disclose more than is absolutely necessary under the first
       paragraph of 35 U.S.C. 112, to teach one skilled in the art
       how to make the invented product, device, or machine.
       In a similar manner, large corporations should not
       have to bear the expense of preparing a "more than
       necessary" specification to take advantages of the
       provisional application.
       I believe that almost all specifications and
       drawings of mechanical and electrical invention applications
       describe more than is absolutely necessary, and I emphasize
       absolutely, to enable one skilled in the art to make the
       product disclosed.
       The rules on which we are commenting today do not
       detail the substantive material which is needed to comply
       with the first paragraph of 35 U.S.C. 112.  The commentary
       does state that the disclosure may comprise "nothing more
       than a written description of the invention and drawings." 
       However, further in the notice, it states that presumably
       most provisional applications will be filed by a registered
       This will entail costs as the attorney drafts a
       specification which, in my opinion, would be considerably
       more detailed than the basic information necessary to enable
       one skilled in the art to make the device.
       The cost to the client, whether it is an
       individual inventor, or small or a large entity, is going to
       climb to the point where a provisional application costs
       nearly as much in legal fees and takes as much time in
       preparing as a conventional patent application.
       I do not believe that that was the intent of the
       Act, nor should the Act be interpreted to require such
       expense.  It is my contention that the Act amendments do not
       require a detailed specification, as set forth above.
       Section 111(b) states that the application include
       a specification as described in the first paragraph of
       Section 112 and a drawing as prescribed by Section 113.  The
       first paragraph of 112 states that the specification -- and
       these are my words -- need only contain a written
       description of the invention and the manner and process of
       making and using it, in terms to enable any person skilled
       in the art to which it pertains to make and use the same,
       and shall set forth the best mode contemplated by the
       inventor of carrying out the invention.
       Nowhere in the referred language does one find a
       requirement that the object of the invention be set forth,
       nor that it is necessary to provide any description in
       excess of what is sufficient to enable any person skilled in
       the art to make and use the invention.
       As I said, in many, if not  most, mechanical and
       electrical product industries, sketches of new products are
       often prepared as the first step in recording a new
       invention.  Sometimes, blueprints are made, or sketches or
       drawings are made, or other reproductions created, either
       manually or with computer technology.
       These sketches or blueprints often disclose all it
       is necessary for one skilled in the art to know how to make
       the sketched or drawn product.  Some of the sketches or
       prints have notes or a few comments or sentences to clarify
       the drawings, but often such notes or sentences are
       unnecessary to make the construction readily apparent to one
       skilled in the art.
       I submit that most inventors, engineers,
       scientists, businessmen, or anyone making such drawings,
       know that such drawings, if disclosed to a competitor, that
       is, one skilled in the art, that it would enable that
       competitor to easily recognize how to make and use the
       product or device.
       I can think of no situation where any prudent
       inventor or entity would be willing to show such sketches,
       drawings, or blueprints to a competitor, that is, one
       skilled in the art, without expecting or worrying that such
       a skilled person would be enabled to make and use the
       Many invention disclosure forms even include the
       witness notation, "read and understood by the witness." 
       Such a witness is enabled by the disclosure to make and use
       it, if necessary.
       I believe that such disclosures which, although
       not including a long, written description, but enough
       information in the form of notes, legends, can enable one
       skilled in the art to make the device, and sufficient to
       support claims in a later-filed formal application,
       disclosing the best mode known to the inventor at the time,
       would fully comply with the first paragraph of Section 112
       and the drawings specified under 113.
       To paraphrase Section 112, perhaps the Office
       might consider issuing a written specification format or
       guideline to enable any inventor or small or large entity to
       prepare a specification sufficient to comply with the first
       paragraph of Section 112, and be acceptable to an examiner
       as sufficient support in a later-filed formal application
       without spending several thousand dollars.
       It seems to me that the bottom line of the
       sufficiency of disclosure in a provisional application is
       simply that, one, regardless of its written length or
       drawing content, the disclosure is "sufficient" and not
       "more than necessary" to enable one skilled in the art to
       make and use the invention.
       Two, the best mode known to the inventor at the
       time of filing the provisional application is disclosed; and
       three, the disclosed embodiment provides support for any
       claims in the formal application which rely on the
       provisional disclosure for priority.
       Now is the time for the U.S. Patent and Trademark
       Office to be innovative, creative, set a reasonable standard
       for the world, and make a real effort in simplicity and
       reinvent government with the user-customer and his ability,
       time, and pocketbook being kept, along with Section 112,
       foremost in your mind.
       COMMISSIONER LEHMAN:  Any questions?
       [No response.]