MR. PELTO:  Thank you and good afternoon.  My name
       is Don Pelto, and I am a patent attorney at the firm of
       Foley and Lardner, in Washington, D.C.  Our address is 3000
       K Street N.W.
       My testimony reflects my personal views, and
       should not be considered as reflective of those of Foley &
       Lardner or any of our clients or our colleagues.
       The impending changes to Title 35 of United States
       Code relating to patent terms, specifically the provisions
       of the URAA patent amendments, that recalculate the term of
       existing patents necessitates an exact and consistent
       interpretation by the PTO of those amendments to Title 35
       for all patents considered to be in force on June 8, 1995,
       the effective date of the URAA.
       Turning to the specific issues raised in the OG
       notice regarding the effect of the URAA on existing patent
       term extensions, under Section 156, the PTO states that it
       has assumed for purposes of evaluating the number of
       extended patents that may be affected by the recalculated
       term, the patent which expired under its original 17-year
       term before June 8, 1995, but received a patent term
       extension under Section 156 for a period beyond June 8th,
       should be considered a patent in force on the effective date
       of the URAA.
       I am here to say that I believe that that
       assumption is proper and correct.
       The patent term extension provided in Section 156
       extends the patentee's right to exclude others from making,
       using, or selling the subject invention.  Those rights are
       no different than those of a patentee under the usual
       17-year term.
       Moreover, patents to pharmaceuticals should not be
       treated any differently than patents to other inventions
       that are in force on June 8, 1995.
       Consistency in the protection of those patent
       rights requires that patents in force beyond June 8, 1995,
       due to patent term extensions, be treated the same way under
       the URAA as any other patent in force at that time.
       The PTO's assumption that such patents are in
       force for purposes of the URAA is correct, and I urge the
       PTO to adopt this definition.
       Referring to the questions raised by the PTO on
       the effect of the URAA on patent term extensions under 156,
       I urge that the first interpretation provided by the PTO on
       the provision of the URAA, which grants the longer of the
       17- or 20-year patent term to patents in force on June 8,
       1995, be adopted.
       Specifically, that first interpretation states
       that the extension already issued by the PTO under Section
       156 should simply be added to the longer of the 17- or
       20-year patent firm, to patents in force on June 8, 1995,
       thus requiring no action by the PTO.
       Again, consistency in protecting the rights of
       patent holders requires the even-handed application of all
       provisions of the URAA that recalculate the term of each and
       every patent that is in force on June 8, 1995.
       Finally, and although not explicitly mentioned in
       the OG notice, I want to make it clear that extension of the
       remedies available to a patent holder as provided in Section
       532 of the URAA should also apply to existing patent term
       extensions under the provisions of the URAA.
       Specifically, Section 532(c)(2) of URAA sets forth
       the remedies available to a patent holder for patent
       infringement under certain circumstances.  Under that
       section, a patent holder may not obtain an injunction or
       monetary damages for acts which became infringing by reason
       of the new 20-year provision, which were commenced or for
       which substantial investment was made, before June 8, 1995.
       Again, Section 532 provides that the patent holder
       may only collect an equitable remuneration under any such
       Again, even-handed application of the 20-year
       patent term under the URAA to all patents in force on June
       8, 1995, requires an even-handed application of the
       provisions of Section 532, also.
       In summary, the proposed regulations reflect a
       positive attitude by the PTO and thereby consistency and
       even-handedness in the application of the URAA.  I thank you
       very much for inviting me to testify on these important
       COMMISSIONER LEHMAN:  Thank you very much.  Are
       there any questions?
       [No response.]