COMMISSIONER LEHMAN:  We had one witness who was
       not here when he was called.  That was Mr. Slattery, I
       believe.  If he is here, now, he can come forward.
       MR. SLATTERY:  Good morning.  My name is James
       Slattery.  I am a partner with the firm of Birch, Stewart,
       Kolasch & Birch.  Our address is at 8110 Gatehouse Road, in
       Falls Church, Virginia.
       Thank you, Commissioner, Assistant Commissioner,
       Deputy Commissioner, Deputy Assistant Commissioner, and
       Madam Solicitor.
       I have, basically, four issues to discuss.  These
       issues are really my own opinion.  Our firm has not fully
       reviewed all of them because the GATT legislation was on the
       fast track and, similarly, the rulemaking is somewhat of a
       fast track.  But I think it is good for all of us to review
       these changes that are being proposed, and I have four
       things that I want to address.
       One relates to the patent term.  Presently, all of
       us can calculate the patent term.  It is 17 years.  And any
       of the patents that are issued prior to June 8, 1995, we can
       all calculate the patent term.  It will be 20 years from the
       date of filing or 17 years from the date of grant.
       But my request is to, for all patents issued after
       June 8, 1995, to print the patent term on the front of the
       patent.  Some patents will have an extension of the patent
       term, based on either appeal process or interference, and it
       will be impossible to know the patent term unless you order
       up the file history and check to see if any extension has
       been granted.
       Now, in the most recent of the AIPLA Bulletin,
       under the section on relations with PTO affairs, it did
       indicate, of course, you are going to print on the Notice of
       Allowance, what you think the patent term extension might
       be.  And of course, the applicant will have the Notice of
       And the applicant will have the right to appeal or
       somehow try to extend that period, if she or he thinks it is
       But according to the publication by the AIPLA, the
       PTO will be printing the term of the patent on the front of
       the patents?
       Because it states here, the PTO will determine the
       appropriate length of the patent term extension before issue
       MR. GOFFNEY:  We will print the extensions on the
       MR. SLATTERY:  The extensions.
       MR. GOFFNEY:  Yes, that is the number of days.
       MR. SLATTERY:  Number days.  So then, we will be
       able to calculate from the front of the patent.
       MR. GOFFNEY:  That's right.
       MR. SLATTERY:  Okay.  The second point relates to
       provisional applications.
       The U.S. Patent Office has made a determination
       that provisional applications provide an applicant with a
       102(e) date; 102(e), I think, is very clear.  Section 102(e)
       says that it has to be an application for a patent.
       The invention was described in a patent granted on
       an application for patent filed by another in the United
       States.  Well, by definition, a provisional application
       cannot be an application for patent.  Provisional
       application will be abandoned at the end of a one-year
       period, automatically, so therefore, cannot possibly be a
       102(e) date.  That is, based on my review.
       Now, what I would suggest is that you amend 102(e)
       to clearly state that it applies not only to an application
       for patent, but also applies to a provisional application. 
       Because I think the statute is not going to permit you to
       have a 102(e) date for a provisional application, and
       eventually that is going to be litigated, and I think the
       person that does not want that to be a 102(e) date will
       My third point relates to PTC filing dates. 
       Section 102(e) makes it clear that PTC application filed
       under 35 U.S.C. 371(c) is permitted to have a 102(e) date,
       as to the date that they comply with the provisions of
       Well, the Patent Cooperation Treaty section of the
       PTO is extremely strict with regard to what they require on
       a declaration.  We had one recently where the residency of
       the applicant was not listed and, therefore, we were not
       given a 102(e) date.
       We have had other applications that have been
       pending at the PTC section for eight or nine months and
       then, finally, they issue a communication to us with a
       30-day time period to respond, saying, the declaration is
       not acceptable because it doesn't identify the foreign
       priority date or doesn't identify the PTC filing date.  Even
       though, there was a declaration attached to the application.
       The problem is that 35 U.S.C. 371(c) requires by
       statute that you have the declaration, and it also requires
       that the declaration comply with the rules.  
       Well, the rules are even more onerous than the
       statute.  So, nationally filed applications in the Patent
       Office do not require a declaration to obtain a filing date
       and to obtain a 102(e) date.
       So my recommendation would be, that if you are
       going to be reviewing these statutes and making some
       changes, that you make sure you review 371(c) and delete it,
       because I don't think the provisions for the declaration
       should be requirement for obtaining the filing date.  The
       declaration could always be filed at a later date.
       And if you want any further information about how
       onerous this problem is and how much problems we have, I
       would suggest you talk to Richard Lazarus, who is in charge
       of the PTC section.  I think it is something that he has
       wanted to change for a number of years.
       The fourth thing I want to address is the PTC
       filing date.  The Patent Office has made a ruling that if
       you file a PTC application before June 8, 1995, that that
       will not qualify for the greater of 20 years from date of
       filing or 17 years from date of grant.
       I think it is clear in 35 U.S.C. 363, that the PTC
       filing date should be the date of filing throughout the
       world.  This problem also occurred a number of years ago,
       when maintenance fees were enacted in the U.S. Patent
       Office.  All applications filed before December 12, 1980, do
       not require maintenance fees.
       At that point in time, the Patent Office made a
       determination that PTC applications filed before December
       12, 1980, do not require the payment of a maintenance fee. 
       So similarly, I think that it would be consistent with not
       only the statute, but your prior rulings, that any PTC
       application filed before June 8, 1995, any place in the
       world, should be accorded the filing date of that date of
       filing and thus be permitted to have a patent term of either
       20 years from the date of filing or 17 years from date of
       This hearing is not to address the issue of
       COMMISSIONER LEHMAN:  That's right.
       MR. SLATTERY:  Okay.  Thank you very much for your
       time and for permitting me to address the group.
       COMMISSIONER LEHMAN:  Thank you very much, Mr.
       Are there any other witnesses, who signed up, that
       we didn't have?
       [No response.]