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1 1 2 1 UNITED STATES OF AMERICA 2 3 PATENT AND TRADEMARK OFFICE 4 5 6 7 8 9 PUBLIC HEARING ON 10 11 ISSUES RELATED TO THE IDENTIFICATION 12 13 OF PRIOR ART DURING THE EXAMINATION 14 15 OF A PATENT APPLICATION 16 17 18 19 20 21 Patent Theater 22 2121 Crystal Drive, 2nd Floor 23 Arlington, Virginia 22202 24 25 Wednesday, July 14, 1999 26 27 28 The meeting convened, pursuant to notice, 29 30 at 9:10 a.m. 31 32 33 PANEL MEMBERS: 34 35 Q. TODD DICKINSON, Acting Assistant 36 Secretary of Commerce and Acting Commissioner 37 of Patents and Trademarks 38 39 NICHOLAS GODICI, Acting Commissioner for 40 Patents 41 42 ALBIN DROST, Acting Solicitor
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 2 2 1 2 STEPHEN KUNIN, Deputy Assistant 3 Commissioner for Patent Policy
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 3 2 1 TABLE OF CONTENTS 2 3 Scheduled Speaker Page 4 5 1. Opening Remarks, Q. Todd 6 Dickinson...... 3 7 8 2. Gerald J. Mossinghoff, Oblon, Spivak, 9 McClelland, Maier & Neustadt, PC..... 7 10 11 3. Tipton D. Jennings, FICPI, U.S...... 32 12 13 4. Mary Helen Sears, Principal, The 14 M.H. Sears Law Firm, Chartered...... 44 15 16 5. James B. Gambrell, Akin, Gump, Strauss, 17 Hauer & Feld...... 56 18 19 6. James F. Cottone, Registered Patent 20 Agent...... 75 21 22 7. Joseph Laughon, Rogers & Wells, 23 Securities Industry Association...... 99 24 25 8. Gregory J. Maier, American Bar 26 Association, Section of Intellectual 27 Property Law...... 116 28 29 9. Charles E. Van Horn, Intellectual 30 Property Owners (IPO)...... 131 31 32 10. John R. Orange, FICPI...... 146 33 34 11. J. Michael Thesz, American Intellectual 35 Property Law Association...... 162 36 37 12. Glenn E. Wise, Registered Patent 38 Agent...... 174
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 4 2 1 P R O C E E D I N G S
2 1. Q. TODD DICKINSON
3 COMMISSIONER DICKINSON: Welcome. My name is
4 Todd Dickinson. I'm the Acting Assistant Secretary of
5 Commerce and Acting Commissioner of Patents and Trademarks,
6 and on behalf of the PTO, I want to welcome you all here
7 today and thank you for coming and taking time out of what
8 I know are busy schedules to participate on this first--I'm
9 sorry--second public hearing on the identification of prior
10 art.
11 The Clinton-Gore Administration is committed to
12 increasing the quality and efficiency of the patent
13 examination process, and these hearings are part of that
14 process. Identifying relevant and current prior art is key
15 to making high quality patentability determinations on
16 patent applications at the examination stage. At the PTO
17 we are constantly expanding the resources available to
18 examiners for searching and for locating prior art, however
19 rapid progress in certain emerging technologies challenges
20 the PTO's ability to access current information that may
21 show that state of the art.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 5 2 1 In some well established arts, the PTO's U.S. and
2 foreign data bases may provide sufficient relevant
3 information to show what experts in the field are already
4 aware of. Currently, examiners have the ability to search,
5 from their own desk top workstations, approximately 900
6 data bases. That includes text searches for over two
7 million U.S. patents, over four million Japanese patent
8 abstracts, over three million European patent office
9 abstracts and over nine million foreign patent documents in
10 the data base. They also have an image search system that
11 includes all U.S. patents, all the Japanese-published
12 applications and over seven million EPO documents.
13 In addition, there are hundreds of specialized
14 data bases that contain technical and scientific
15 literature, the so-called non-patent literature or NPL.
16 They provide patent examiners with the needed abstracting
17 services to cover the journals used by technical workers
18 and scientists in many arts. They still need more data.
19 The PTO provides professional information specialists to
20 assist examiners with specialized search problems.
21 Let me give a few statistics relative to today's
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 6 2 1 hearing. About one-third of all patent applications cite
2 non-patent literature, however the citations vary by
3 technology according to how those in the art publish their
4 work. For example, applications examined in technology
5 centers 1600 and 1700, which deal with biotechnology and
6 chemical arts, in those technology centers, NPL is cited in
7 about 68 and 41 percent of applications respectively.
8 However, in technology center 2700, which deals with the
9 computer arts and computer software, NPL is cited in only
10 about 25 percent of the pending applications.
11 In 1998, about 36 percent of all issued patents
12 cited non-patent literature. In the computer and software
13 art, again that's technology center 2700, about 44 percent
14 cited NPL. In the biotech field where researchers and
15 inventors typically publish their work in journals, almost
16 80 percent of the patents issuing from technology center
17 1600 cited NPL. These statistics and this information, I
18 think highlight the challenge for us in certain emerging
19 technologies.
20 For some, we suspect that the data bases and
21 resources that the PTO relies on may not be necessarily
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 7 2 1 enough to enable patent examiners to have access to the
2 most relevant and current prior art, though obviously we're
3 continuing to improve that daily. While an inventor may be
4 aware of sources for these kinds of materials, it is
5 sometimes extremely difficult for the PTO to discover and
6 access them with their present resources. So we are asking
7 for your assistance in addressing this challenge.
8 I'm assuming and hope that most everyone who is
9 here today saw our Federal Register notice where we
10 outlined in some detail the nature of the challenge that we
11 want to discuss. Our notice and request for comments
12 listed a number of particular items that we believe are
13 pertinent to this issue. We are asking for your insights
14 on these and other aspects of the issue which you may
15 consider important.
16 I would like to remind everyone that written
17 comments will be accepted until August 2nd of 1999, and I
18 encourage all interested parties to submit their comments
19 for suggestion and thank those that have already done so.
20 Again, I want to thank you all for coming here today and
21 taking again time out of very busy schedules and want to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 8 2 1 briefly go through the list, the schedule of speakers that
2 I have and see if there are any additions to it.
3 The first speaker is someone who is certainly
4 well known to this office, one of the great friends of our
5 office, former assistant secretary of commerce and
6 commissioner of patents and trademarks in his own right,
7 Gerald J. Mossinghoff from the firm of Oblon, Spivak,
8 McClelland, Maier & Neustadt. I also have Mr. Jennings
9 from FICPI, Mary Helen Sears. Is Ms. Sears here? Yes.
10 James F. Cottone, is Mr. Cottone here? James B. Gambrell,
11 Jim Gambrell, is he here? Not yet. Joseph Laughon, Greg
12 Maier, Charles Van Horn, John Orange, Mike Thesz, Glenn
13 Wise. Some may come later as they're aware of the schedule
14 today. If there additions to that schedule that we have
15 not been made aware of, would you please--who is managing
16 that process? Elizabeth over in the corner. Thank you
17 very much.
18 2. GERALD J. MOSSINGHOFF
19 COMMISSIONER DICKINSON: Having said that, we
20 will start with Former Commissioner Mossinghoff if that's
21 all right, and we welcome you, Commissioner.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 9 2 1 MR. MOSSINGHOFF: Thank you, Mr. Chairman. I do
2 have a prepared statement which I have provided to you. We
3 at the firm of Oblon, Spivak commend the United States
4 Patent Office for conducting public hearings on the subject
5 of search and sufficiency since the quality and reliability
6 of patents issued by the patent office are directly
7 dependant upon whether or not the most pertinent prior art
8 was considered by the examiner in the course of his or her
9 examination.
10 Before addressing the specific questions proposed
11 by the PTO in its announcement of these hearings, it would
12 be useful to reflect, in my view, on the meaning of the
13 term search and the assumptions underlying in the PTO's
14 questions at that meeting of this term and the assumption
15 that this is well understood or has a single meaning.
16 While searching down by patent examiners within the patent
17 office is fairly well circumscribed by production goals,
18 appropriate production goals, in my view, imposed on
19 examiners.
20 No such limitations exist in the commercial
21 world. In the commercial world, the duration or scope of a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 10 2 1 search is limited only by the economic value of the
2 intellectual property involved. In the case of filing a
3 patent application of unknown value, the budget available
4 for searching may range from a few hundred dollars to as
5 much as $1,000 or more. At the other extreme, in major
6 litigations where rights of great value are involved, the
7 search encompasses both conventional data base searching,
8 both paper and electronic, and the litigation discovery
9 process itself in which experts and other individuals with
10 relevant knowledge are personally questioned for the
11 purpose of locating prior art or other material information
12 that would have an impact on the validity of the patents in
13 suit.
14 This process can literally absorb millions of
15 dollars and take years. When patents are invalidated in a
16 court on the basis of prior art not, quote, considered,
17 unquote, by the examiner, there is seldom any mention in
18 the court opinions of the amount of time or money invested
19 in locating the prior art that was not before the examiner.
20 Was it located after a simple search of patent files and
21 simply missed by the examiner, or was it located after
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 11 2 1 weeks of searching through obscure publications located in
2 major libraries such as the Library of Congress and
3 elsewhere? Was it located after years of searching data
4 bases and deposing parties and other witnesses in the
5 litigation? Was the prior art undocumented prior use or
6 sale by others that an application--by others than the
7 application that was by definition not available to the
8 examiner?
9 The point is that if enough money is invested, a
10 party can almost always locate some prior art that was not
11 available to the patent office and therefore not considered
12 by the examiner. Given this background, the term search in
13 the PTO questionnaire should be given a definition of some
14 limited scope such as, quote, reasonable patentability
15 search of some reasonable fixed duration. A search of this
16 duration, for example of eight hours or less, is about what
17 we understand a patent examiner can carry out and still
18 meet appropriate patent office production goals. A search
19 of this duration, no matter how skilled the searcher who
20 carries it out, cannot be depended upon to locate all
21 relevant prior art in every instance, although it should
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 12 2 1 locate the most relevant prior art easily located in
2 obvious searching locations, particularly in the U.S.
3 patent files. More importantly, a search of this limited
4 nature certainly will not prevent patents from being
5 invalidated in litigation due to the discovery of material
6 prior art that was not considered by the patent examiner.
7 Another factor that must be considered is the
8 problem posed by the patent office in the development of
9 new technology. Within the patent office are many
10 examiners who are truly experts in their respective field
11 of technology. These examiners become experts by spending
12 years examining the same technology, thereby learning in
13 detail all of the relevant prior art. Based on their
14 experience, these examiners can locate the most relevant
15 prior art even in the limited time available to them.
16 Furthermore, these examiners often accumulate private
17 collections of the most relevant prior art to facilitate
18 the examination of related patent applications as they
19 arrive for examination.
20 Unfortunately, when new technologies develop, the
21 examiners are at a disadvantage somewhat in that they are
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 13 2 1 not yet able to learn--to have had the time to learn the
2 relevant prior art or developing searching short cuts, thus
3 the advantage of experience in the art that the examiner
4 has developed--in developed technologies does not apply as
5 well to these new technologies. The patent office should
6 take these circumstances into account and devote more time
7 and effort to training examiners in new technologies and to
8 seek out data bases or other collections of information
9 within these new technologies so that the examiners can
10 overcome this disadvantage.
11 And I am very impressed by what the patent office
12 has done in the area of biotechnology. They have really
13 moved out, I think, ahead of what everyone expected to
14 provide really first class searches in an area which 10
15 years ago was a mystery to almost everyone. Therefore, all
16 questions asked in the patent office notice must be
17 interpreted with the caveat that the search mentioned in
18 the question is limited to a search of the type that a
19 typical examiner can conduct and still meet his or her
20 production goals, rather than a search of extended duration
21 within a generous or virtually unlimited budget.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 14 2 1 Taking into account these comments, let me now
2 address the questions raised in the hearing announcement.
3 Is the most pertinent prior art being considered by patent
4 examiners during examination of a patent application? In
5 my view, given the limited time patent examiners have for
6 conducting a search, our experience, the experience of our
7 law firm, is that examiners are doing a reasonably good job
8 of locating relevant prior art.
9 Secondly, do applicants submit the most pertinent
10 prior art that they're aware of in connection with the
11 filed patent application? Applicants normally submit the
12 most pertinent prior art of which they're aware when the
13 patent application is filed or during its pendency. It is
14 clear from Rule 56, which I think is a very clear rule now.
15 It's been amended several times, but I think in its current
16 form it is very specific, as well as the case law, that the
17 single most important action that an applicant can take to
18 enhance the quality of his or our patent application is to
19 disclose all known prior art that is material to
20 patentability. We always advise applicants of this, and we
21 believe they fully understand it, thus we believe that
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 15 2 1 applicants understand as clearly it's in their best
2 interest to disclose all known relevant prior art.
3 Are the current rules and procedures for
4 obtaining prior art during examination of a patent
5 application adequate and effective? We believe that Rule
6 56 is clear and normally results in appropriate disclosure
7 of prior art to the patent office.
8 Are prior art searches typically conducted before
9 filing a patent application with the Patent and Trademark
10 Office? Whether or not a search is conducted in any given
11 case in our view is determined, A, by the availability of a
12 budget for filing the application, and, B, the degree to
13 which the applicant is already aware of the current state
14 of the art. In many cases corporations are very active in
15 selective fields, thus they are well aware of the state of
16 the prior art in their field, much of which may be their
17 own material. In these situations, there is little or no
18 economic value in conducting a search, and applications may
19 be filed without a formal search. Also, if there are
20 imminent statutory bars involved, there may be insufficient
21 time to conduct the novelty search in any given case.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 16 2 1 Are information disclosure statements frequently
2 submitted? In our experience, again, information
3 disclosure statements are normally submitted disclosing
4 U.S. patent, foreign patent documents, PCT publications,
5 and non-patent literature.
6 Should applicants be required to conduct a prior
7 art search and submit corresponding search results
8 including where they search to the PTO when filing a patent
9 application? The Court of Appeals for the Federal Circuit
10 has made it very clear that there is no duty to conduct a
11 prior art search, thus we believe that an applicant should
12 not be required to conduct a prior art search. As far as
13 disclosing whether a search has been conducted, such
14 disclosure would appear not to be in the interest of
15 applicants in view of the presumed need to define exactly
16 what is meant by the term "search", how much time was
17 invested, and whether any guarantees are provided as to
18 whether all prior art in the relevant area was searched.
19 Rather, we believe the burden of carrying out a
20 conventional patentability search should remain on the
21 examiner.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 17 2 1 Should applicants be required to submit all prior
2 art relied on during the drafting of claims of a relevant
3 application? As I indicated, Rule 56, in my view, is very
4 clear about what is covered. If prior art was relied on
5 during the drafting of an applicant's claims, it is
6 difficult for me to see how that prior art was not material
7 to the patentability of those claims.
8 Should applicants be required to submit all non-
9 patent literature directed to the same field of invention
10 attributable, authored by, or co-authored by applicants?
11 The term "field of invention", in my view, is overly broad
12 and if used in a PTO regulation or directive would, in my
13 view, create undesirable confusion with the current
14 standard which has been adopted by the Federal Circuit,
15 namely material to the patentability of one or more claims.
16 If the inventor or inventors were prolific writers, as many
17 scientists and scientific people are, to identify and
18 presumably submit copies of all of their writings could be
19 counterproductive to a thorough examination.
20 It says: "Please examine the types of patent--
21 non-patent documents applicants should be required to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 18 2 1 submit." In my view, they should submit any type of non-
2 patent literature of which they're aware is material to the
3 patentability of the claims in their applications.
4 "If you believe that the most relevant prior art
5 is not being identified, please identify any suggestions to
6 obviate the problem." We believe, given the searching
7 limitations imposed by the PTO, the most relevant art is
8 identified by the patent examiner, however we strongly
9 recommend that the PTO seek out industries involved in
10 areas of rapidly advancing technology to obtain assistance
11 in identifying the most relevant data bases or other
12 locations in which examiners should look for relevant prior
13 art. We think this is probably particularly true--I think
14 you've done that in the biotechnology area. I think it's
15 particularly true now in the software area. I believe
16 you're going to be deluged with applications on software
17 and particularly business methods carried out of software,
18 and I think there must be a host of industries and
19 organizations who would be delighted to help you get to the
20 best searches possible.
21 Eleven: "Please discuss any related matters not
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 19 2 1 specifically identified in the above questions." The U.S.
2 has a patent system, as we all know, that was founded on
3 the Constitutional mandate to promote the progress of the
4 useful arts. This mission has been delegated to the PTO
5 and obviously is its reason for being. The obligation to
6 issue valid patents. This obligation has never been
7 interpreted to include a guarantee that patents will be
8 valid for all time and under all circumstances. In fact,
9 the reissue and re-examination provisions of the law
10 presuppose that imperfect patents may be issued from time
11 to time because of some material prior art that was
12 considered during the original examination, thus the PTO
13 mission to issue valid patents must take into account the
14 fact that other a limited search can reasonably be
15 conducted in each case.
16 Mark Lemley published an article not too long ago
17 in the quarterly journal of the AIPLA, and the statistics
18 are rather interesting, I think. You may actually want to
19 include that article in the record of these hearings
20 because it's, I think, the most recent thorough work on
21 statistical analysis of what happens to patents after
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 20 2 1 they're granted by the office. There, the article said
2 that roughly 55 percent of all patents were held valid, 45
3 percent held invalid, and this is going to final judgment
4 only.
5 That was the universe. Of the 45 percent that
6 were held invalid, 102 prior art entered into play only 26
7 percent of the time, and so if you have 45 percent held
8 invalid and only 26 percent of those involved documented
9 prior art, 102 prior art--and he did not break out whether
10 it was considered or not considered by the patent
11 examiner--you're down into the teens. You're down into the
12 12 or 13 percent of the patents were held invalid because
13 of prior art, and we still don't now how much of that was
14 considered by the examiner and how much was not.
15 So I think the--there seems to be articles
16 written, editorials written about the problems, but I think
17 if you analyze in the cold light of statistics, the problem
18 isn't that great. It is not a major problem waiting for
19 some dramatic solution.
20 We believe that the PTO should strive to conduct
21 the best search possible within the restricted times
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 21 2 1 allocated to examiners. To be most effective, this search
2 should utilize modern computer data base searching, and
3 you've indicated, Mr. Chairman, that that is your goal, and
4 it is your success. Further, the PTO should communicate
5 with industries or associations involving the latest
6 technology such as biotechnology or software to make sure
7 it has accessed the most relevant data bases. Imposing
8 further burdens on the applicant in this regard would not
9 be appropriate in our view.
10 The applicant already carries an extremely
11 onerous burden with the duty of disclosure rules in place
12 at present. Pressing this duty further with the
13 requirement to search and disclose specific searching
14 results would almost likely result in a myriad of legal
15 problems that would surely work against applicants and
16 against the relatively high percentage of patents held
17 valid at the present time.
18 In conclusion, we believe the PTO is doing a fine
19 job in carrying on its mission of issuing valid patents,
20 taking into account the limitations of the real world. The
21 PTO, no matter how much money it spends, how many examiners
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 22 2 1 it hires, or how hard it tries will never be 100 percent
2 successful in issuing patents that cannot be invalidated in
3 court by prior art not considered during examination. This
4 fact should be realized by the PTO and accepted by the
5 public.
6 The main problem of the PTO in dealing with newly
7 developing technologies in this area should focus on
8 communicating with industry and industry groups and
9 technical experts familiar with these technologies, one, to
10 identify the most relevant data bases and sources of
11 relevant prior art; two, to collect non-patent literature
12 or other materials particularly pertinent to new
13 technologies to facilitate examiner searches; and three, to
14 train and hire examiners in the area of new technology.
15 Such training in my view should include field trips by
16 examiners to corporations or educational institutions
17 involved in the development of new technologies. There is
18 no substitute in my view for getting out and kicking the
19 tires every once in a while.
20 We applaud the PTO for holding these important
21 hearings, and we'd be pleased to assist in all appropriate
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 23 2 1 ways in the PTO carrying out its important mission.
2 COMMISSIONER DICKINSON: Thank you, Commissioner.
3 I failed to introduce my fellow panelists. If
4 you don't mind, I'll introduce them, and we'll see if there
5 are any questions. To my right is Acting Assistant
6 Commissioner for Patents, Nick Godici. To my left, far
7 left, is the Deputy Assistant Commissioner for Patent
8 Policy, Steve Kunin, and to my immediate left is our Acting
9 Solicitor Albin Drost.
10 Are there any questions from the panelists? Mr.
11 Kunin.
12 MR. KUNIN: Thank you, Mr. Mossinghoff, for your
13 testimony. I think that it was quite useful. I do have a
14 question with respect to the part of your testimony that
15 relates to the subject matter that appears basically on
16 pages 6 and 7 of your written commission. Your testimony
17 goes to the question of disclosing all known prior art that
18 is material to patentability.
19 You state that many times corporations are very
20 active in selective fields, they're well aware of the state
21 of the prior art, and much of this may be their own
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 24 2 1 material. The question that I have is what obligation do
2 you believe is imposed upon applicants of this type in
3 conducting essentially an internal search of the kind of
4 material that you state exists in your testimony separate
5 from an independent search of external data bases? So
6 essentially what I'm asking is you indicate that many of
7 these applicants are aware of and perhaps have their own
8 material, maybe their own collection. Do you believe there
9 ought to be some kind of an obligation to do essentially an
10 internal review and to provide that kind of information?
11 MR. MOSSINGHOFF: Mr. Kunin, I think I would
12 break that into two areas. If it's a small organization,
13 as many of the patentees are, the small start-up
14 organizations, I think they have a total obligation now to
15 disclose the prior art as they see it, and many do a very
16 good job, as you know, in the introductory part of the
17 patent itself.
18 In the cases I've personally been involved in,
19 the best patents are the ones where the applicants and
20 their attorneys really levelled with the patent office
21 about what was done before. In a very large organization,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 25 2 1 hundreds of thousands of people, I don't really believe
2 there ought to be an obligation search through a
3 multinational corporation. I think that would be
4 inappropriate, but clearly those kinds of materials are
5 discoverable in litigation. It's the first questions that
6 the opposing counsel asks, and all of the information in
7 the entire corporation is available to opposing counsel
8 under discovery, and hiding any information such as that is
9 worse than illegal. It's stupid because your patent will
10 be declared unenforceable.
11 MR. KUNIN: Thank you. Can I follow up?
12 COMMISSIONER DICKINSON: Absolutely.
13 MR. KUNIN: Okay. If I any understand you
14 correctly, we would characterize actually knowledge versus
15 constructive knowledge, and therefore in your testimony
16 you're talking about knowledge, the knowledge would not go
17 to constructive knowledge. Basically, the mere fact that
18 the company might have something in its records someplace,
19 but it may not have been actively in front of the people
20 preparing or prosecuting the application that there would
21 be no obligation to seek out that information because of
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 26 2 1 some constructive knowledge requirement; is that correct?
2 MR. MOSSINGHOFF: That is correct. I think that
3 the courts, the Federal Circuit has done a good job in
4 defining what actual knowledge is. It's a broad-ranging
5 definition. It includes not just the inventor but anyone
6 involved with the prosecution of the case, the attorneys
7 involved and all the rest. Again, if it's a small company,
8 a Silicon Valley start-up company, they know everything
9 that's going on in the entire company. If it's a huge
10 multinational corporation, they obviously don't, and I
11 don't believe that there ought to be a requirement that
12 they do an intra-corporate search throughout the world to
13 find that out. I think the courts have done a good job in
14 defining what actual knowledge is.
15 COMMISSIONER DICKINSON: Other questions? Mr.
16 Drost.
17 MR. DROST: Mr. Mossinghoff, I have a question
18 about point eight about requiring inventors to submit all
19 articles attributed or authors by the article. You said
20 this would create undesirable confusion with the current
21 standard. Can you tell me how that would create confusion?
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 27 2 1 MR. MOSSINGHOFF: Well, I've seen--one of the
2 things that never ceases to surprise me, having coming out
3 of the research-based pharmaceutical industry for a number
4 of years, is whenever someone sends you their C.V., you
5 wish you would have asked them to do it by express mail and
6 not by fax because they have tied up your fax machine for a
7 good period of time. Many of these scientists take that as
8 an example. Many scientists publish a hundred or so
9 articles. You see that attached to their C.V.
10 Generally, I have two objections to it, one the
11 same field is different than material to patentability, and
12 I think one of the things we don't need is different
13 standards, a new standard. Let's stick with the one the
14 courts have interpreted; and two, many of these scientists,
15 particularly in prior technology area, are extremely
16 prolific in writing and publishing and providing copies of
17 that could be two, three inches thick. I don't see how
18 that condition helps an examiner. All of a sudden the
19 examiner now has to spend a lot of time going through all
20 of that.
21 I think the test is if it's material to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 28 2 1 patentability. That's the one the court has explained, and
2 if there's information known to the applicant that's
3 material among his writings, obviously among his writings
4 or her writings, material to patentability, I think that
5 must be disclosed under Rule 56. To require all articles,
6 I think without that judgment could just swamp the patent
7 examiner with a lot of unnecessary paper.
8 MR. DROST: Even if it was limited to their field?
9 MR. MOSSINGHOFF: Well, I don't know what that
10 means. I don't like the phrase "same field of technology".
11 That would introduce a new--now we've got a new parameter.
12 What does that mean, and how is that different from
13 material for patentability? My goal has been for a long
14 time let's keep it simple. Let's let the patent system
15 serve simply industry, and the more phrases like that you
16 put in the regulations, the less simple the issue becomes.
17 Now if it's not material to patentability, but
18 this article was, quote, arguably in the same field of
19 invention, therefore should have been submitted, therefore
20 it was not, therefore there's a cloud on the patent. These
21 things are tried before juries. Defense counsel are
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 29 2 1 looking for all kinds of sand to throw in the air as part
2 of their job, and that's just another grain of sand that
3 you could throw in the air.
4 So if there is going to be a test, I think it
5 ought to be the test that people are really beginning to
6 understand, that is material to patentability. I think
7 most patent attorneys understand that test.
8 COMMISSIONER GODICI: Mr. Mossinghoff, thanks for
9 being here. Your comments are very helpful. One of the
10 things that suggests to us is that we start interacting
11 with industry, particularly in the software area, to help
12 us establish data bases, training, so on and so forth.
13 One of the things that we found--and you
14 complimented us for the biotech, you know, having done that
15 in the biotech area. One of the things that we've found is
16 that the biotech field normally does more publishing than
17 in the software area, and it's been tougher to get at the
18 prior art. That's part of the reason we're here today, and
19 I guess the question I've got is do you have any
20 suggestion, any vehicles, any mechanisms for doing
21 precisely what you're suggesting here in terms of
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 30 2 1 interacting with the industry, because it's been a little
2 bit difficult for us to kind of grapple with that.
3 MR. MOSSINGHOFF: I think that's so, and I do, I
4 think you've done a good job of getting your arms around
5 the biotech area and the genomic area, but again, going
6 back five to ten years, everyone was kind of throwing up
7 their hands saying what are we going to do about searching
8 the genome. It's billions of things. It's got codes.
9 Nobody quite knows how you're going to get patents on these
10 things, and I think the patent office has in very
11 innovative ways seen that.
12 I would seek out the I, Triple E and other
13 organizations and task them, maybe have them set up working
14 groups to tell you how they can search. I was at a meeting
15 of a machine on what they call the Washington Summit, and I
16 was a speaker, and I went to the reception at lunch, and I
17 was standing there talking to some colleagues and overheard
18 two people behind me, and the one said to the other, Do you
19 know how bad it is in the patent office, and the other
20 said, No, how is it. He says, Do you know who they have
21 searching software, and the other said, No, who do they
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 31 2 1 have searching software, and he said, Electrical engineers,
2 and the other guy said, Oh, my god.
3 So, I mean, you've got that problem. It's the
4 computers and electrical engineers are very well connected
5 with each other. Software writers are different people,
6 and it seems to me that it would be very appropriate for
7 the assistant secretary to decide who to task in the I,
8 Triple E or other-where and say we've got a problem, and
9 you guys are smart. Help us out of this problem. Tell us
10 how to do this. Tell us what we ought to be doing because
11 I don't think it's insolvable.
12 I think probably every new field of technology
13 presents the office with those same kinds of issues.
14 COMMISSIONER DICKINSON: I have a question. I
15 know your firm very well, and its reputation is certainly a
16 stellar one. It's come to our attention through witnesses
17 and other means though that there are actually attorneys
18 out there who counsel clients not to do searching. They
19 don't want to try to find the art that is out there. Leave
20 it to the patent office and hope that that's going to be
21 sufficient. What they don't know, won't hurt them, I guess
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 32 2 1 being their motto. Are you aware of attorneys who do that,
2 and should we be concerned about that, and if so, how
3 should we manifest that concern?
4 MR. MOSSINGHOFF: No, I am not aware of attorneys
5 that do that. I don't think that's good advice. I think
6 that, if possible, the best patent applications are written
7 with the prior art clearly in mind starting from the
8 beginning, not just as you amend your claims but right from
9 the very beginning. If you know the best prior art and
10 you're a good attorney, you'll write a very sustainable
11 patent. So I think that's the case.
12 I just think there's so many reasons why a search
13 would not be conducted, starting off with the fact that you
14 may not simply have time. Clients can walk in the door and
15 say I sold this thing, you know, 360 days ago, and I'd like
16 you to file a patent application on it at this point. So
17 there's so many reasons why a search would not be performed
18 that I think any obligation to perform a search could add
19 to the complexity.
20 I'm involved in several cases now, and obviously
21 defense attorneys are very skilled and very ethical, and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 33 2 1 they look for every possible reason to avoid infringement
2 and damages under the opponents patents. We should, I
3 think as a matter of policy, give them less reasons rather
4 than more reasons, and every time the office writes a rule,
5 that's another reason why a defendant can escape liability,
6 and I don't think that's appropriate.
7 The reasons that are there are good. Rule 56, I
8 think has been amended at least three times. It's a very
9 solid understandable rule. Let's keep it the way it is for
10 a why so the courts can interpret it and so attorneys can
11 give the best possible advice, but I think to begin to add
12 other requirements, that's got to be pleaded in the
13 defendant's answer. They didn't do a search, and they were
14 supposed to, and there are three reasons why they couldn't
15 do it, and none of those apply. All of a sudden you've got
16 $100,000 of litigation just on that single issue. We
17 should avoid those, I think.
18 COMMISSIONER DICKINSON: Let me ask you a
19 question that's related to these questions in our Register
20 notice but wasn't directly asked. You referenced--you
21 mentioned disclosure statements in your comments. I should
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 34 2 1 have indicated we have some statistics on that. Roughly 58
2 percent of applications submit an IDS, and in 2700, for
3 example, computers and software area, 18 percent of those
4 list some non-patent literature. Should we--as you know,
5 information disclosure statements are not required to be
6 submitted. That's a voluntary practice. Should we
7 consider amending the rule to require information
8 disclosure statements to be submitted?
9 MR. MOSSINGHOFF: I don't believe I'd favor that.
10 I think Rule 56 doesn't--I think you can say that if you
11 tell the patent office about prior art, you have to do it
12 through an IDS. I think that's perfectly appropriate, but
13 to require one in each case may require when where there is
14 nothing, and all of a sudden you've then got a defense that
15 can come before a jury. You send in a blank form, or you
16 send in a form that had something that was obviously not
17 relevant when it turns out there really was something that
18 was relevant that you didn't know about.
19 And so I think that an overall premise ought to
20 be to keep patents enforceable and to do that. The less
21 requirements, burdensome requirements you put on
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 35 2 1 applicants, the better is it for the system.
2 COMMISSIONER DICKINSON: Any further questions
3 from the panel?
4 [No response.]
5 COMMISSIONER DICKINSON: Thank you very much. We
6 always appreciate your comments. They were very helpful.
7 MR. MOSSINGHOFF: Thank you.
8 3. TIPTON D. JENNINGS
9 COMMISSIONER DICKINSON: The next witness on our
10 list is Tipton D. Jennings who is here representing FICPI,
11 I understand, today.
12 MR. JENNINGS: Good morning, Mr. Commissioner,
13 gentlemen. I represent the U.S. Section of FICPI. FICPI
14 Is an acronym for [french is spoken]. That's probably the
15 most French I ever said at one time. It's an international
16 federation of patent attorneys in private practice. It was
17 founded in 1906, and as I said, I am appearing for the U.S.
18 Section of FICPI. Its president--Mr. John Orange who is
19 president of the international federation will be
20 testifying later today, and he'll be appearing on behalf of
21 the international federation.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 36 2 1 I apologize for not having any written comments
2 today. I've been out of the country. I am preparing a
3 paper, and it will be filed prior to the end of the month,
4 and today I just wish to comment upon some of the matters
5 that are raised by the 11 questions in the Federal Register.
6 FICPI believes that the present rules and
7 procedures for identifying and citing prior art documents
8 are adequate. The practice of identifying and collecting
9 prior art and preparing and filing information disclosure
10 statements is already expensive and time consuming. I
11 prosecute patent applications. I know that in every case,
12 I file information disclosure statements. Sometimes I file
13 two and occasionally three. So I think--and I think most
14 people in my firm do the same thing.
15 I'm with a firm in Washington called Finnigan,
16 Henderson, and we have a lot of patent attorneys in that
17 firm who are prosecuting patent applications, and I think
18 it's--and I know it's our practice that we file information
19 disclosure statements. FICPI doesn't see the need to
20 implement additional procedures that entail further expense
21 with the burden upon both applicants and upon examiners and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 37 2 1 would create risk and costs in enforcing a patent.
2 The present rules, for example, Rule 56, they
3 force applicants to cite to the examiner the best material
4 prior art of which they are aware. Their duty is not only
5 upon applicants but upon anyone who is substantively
6 involved in the preparation and filing and prosecution of a
7 patent application. Thus, based upon the examiner's search
8 and the applicant's disclosure of art, it is our
9 observation that pertinent prior art is being considered.
10 Obviously, it can't be the most pertinent in all cases.
11 That's an impossibility, but is the solution to create
12 additional costs, burdens, and risk in the hope of
13 ensuring--I think those are the words of the--in the
14 Federal Register--in the hopes of ensuring that the most
15 pertinent prior art is uncovered in all cases, and clearly
16 it is not.
17 So is the solution elsewhere, and we submit it is
18 in the Patent and Trademark Office. We believe that the
19 main reasons the most pertinent prior art is not being
20 cited is the lack of time to search by examiners and the
21 turnover of examiners. As disclosed in the Federal
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 38 2 1 Register, the patent office is doing a wonderful job in
2 providing the capability to search and retrieve a wide
3 variety of documents. They spent a large amount of money
4 on this, but the examiner may not have the time to find the
5 key document, or if it is a new examiner who is not
6 properly skilled in the art, he may uncover this key
7 document and not realize what he has, not realize the
8 significance.
9 So examiners must have time to search and
10 evaluate prior art. I interview occasionally, and I talk
11 to examiners whenever I can, and they have told me if they
12 had more time, they could find the best prior art. I
13 understand saying that, and giving them more time that--I
14 run into is problem that there are production goals that
15 affect promotions and pay raises, so maybe this is the
16 chance of changing the practices is remote, but that I
17 think would be one major solution to the problem of not
18 uncovering key prior art.
19 The second solution is to try to get new
20 examiners up to speed so that they develop their expertise
21 more quickly. Presently there's a large turnover,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 39 2 1 particularly of newer examiners in certain arts, and they
2 leave the patent office even before they develop their
3 expertise, and their replacements have even less skill.
4 Obviously, this is a continuing problem, and I know you're
5 concerned about that. I've heard you and other
6 commissioners talk about it, but it's one that affects the
7 quality of patents being issued.
8 FICPI would like to touch briefly on the question
9 of searches that were raised by questions in the Federal
10 Register. The concept of requiring a prior art search and
11 reporting the results to the patent office is laudatory.
12 Hopefully, better prior art will be placed in the hands of
13 examiners, but we have a question as to how you define a
14 prior art search because we don't know what this term
15 encompasses.
16 Former prior art searches are probably not
17 routinely conducted by corporations. They search in former
18 collections. They rely on a vendor's knowledge and
19 information. They scan contents of various sources, and
20 all these develop prior art. If this is what the PTO
21 contemplates as a search, it is already receiving the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 40 2 1 results of these type searches through information
2 disclosure statements. This is being done now.
3 The question then is does the PTO want a formal
4 search conducted. The cost, burden, and litigation, as is
5 raised by requiring any search, rule that out in our minds.
6 Any search should remain voluntary. The PTO and applicants
7 will continue to benefit when the results of a voluntary
8 search are filed in the patent office by way of information
9 disclosure statements.
10 I'd like to touch briefly also on Questions 7, 8,
11 and 9 in the Federal Register. They are all related, and
12 they all inquire into a required submission of documents to
13 the patent office, Patent and Trademark Office. These are:
14 one, prior art relied on during claim drafting; two, non-
15 patent literature authored by applicants; and three,
16 certain other types of non-patent documents.
17 Initially, and in keeping with the case law,
18 applicants should be required to submit only prior art that
19 is material to patentability. Anything else only increases
20 the cost and burdens on both the PTO and applicants. The
21 focus should be on the quality of information and not on
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 41 2 1 the type of the information.
2 Now, if these three questions are implemented as
3 rules, examiners will be swamped with unimportant
4 information that must be reviewed. Applicants will not
5 take the risk of non-submission of any document out of
6 concern that in subsequent litigation a defendant will
7 allege unethical conduct, thus applicants will cite
8 everything that falls within those rules. Examiners will
9 spend their limited search time reviewing unimportant
10 documents, possibly resulting in an overall reduction in
11 the quality of issued patents.
12 In conclusion, I want to thank you for the
13 opportunity to be here today, and as I stated, I will be
14 submitting a paper prior to the end of July, and I welcome
15 any questions.
16 COMMISSIONER DICKINSON: Thank you, Mr. Tipton--
17 Mr. Jennings. Sorry. I apologize.
18 Mr. Kunin.
19 MR. KUNIN: Thank you, Mr. Jennings, for your
20 testimony. I have two questions, very brief, which are
21 follow on to some of the comments and recommendations that
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 42 2 1 you've made in your testimony. You indicated that a
2 possible solution would be to give examiners more time, and
3 you do recognize what the implications of that are. Two
4 implications of that might be that patents will take longer
5 to issue, and, second, perhaps the examination costs would
6 rise.
7 Would you support the--considering that we're in
8 a 20-year-term regime, do you have any problems with the
9 fact that perhaps this might result in patents taking
10 longer to issue and fees having to be raised to cover the
11 additional time spent by examiners?
12 MR. JENNINGS: When you say patents will take
13 longer to issue, do you mean because an examiner will be
14 examining fewer patent because they'll have to spend more
15 time examining a particular patent?
16 MR. KUNIN: It could occur in two ways. One would
17 be examiners spending more time, and consequently the
18 examiner might be taking longer on any particular case, and
19 also there's a multiplier effect that if you were to, for
20 example, add even one additional hour to every examiner's
21 output expectancies, that when we're dealing with hundreds
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 43 2 1 of thousands of applications processed each year and the
2 number of additional examiners needed, we reach a point
3 where we almost can't hire enough examiners to keep up.
4 So, consequently, it's possible that there will
5 be an adjustment period in terms of how long it would take
6 to restaff the office to be able to recapture the
7 efficiency. So those are two possible outcomes.
8 MR. JENNINGS: Well, you may have to do it by
9 groups then as opposed to doing it all at once. So you
10 could stage this in sequentially based on the technology
11 involved. I don't see really why in the end if you have
12 more examiners and you phase it in sequentially why this
13 would lengthen the term of--or shorten the term of the
14 patent and the following issuance, that it would cut into
15 the 20-year term. I don't follow that.
16 I mean, the obligation is on the patent office to
17 meet certain goals, and I don't know why if you have
18 sufficient examiners, and you provide them with the tools
19 and the time to conduct searches why they cannot do their
20 work in the same amount of time. It may mean that they are
21 examining less patents, but you will have to reflect--you
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 44 2 1 know, supplement the examining corps by hiring more
2 examiners.
3 I mean, the other extreme is to go to a
4 registration system. You wouldn't need examiners at all,
5 but, I mean, we don't believe in that in the United States.
6 We've got an examination system, and if you're seeking out
7 higher quality patents, it's going to require more
8 comprehensive searches and more time to search by examiners.
9 MR. KUNIN: The other question relates to your
10 concern with respect to examiners being swamped with large
11 volumes of documents submitted by applicants that may not
12 necessarily be material to patentability. We, right now,
13 are addressing the implications of the Federal Circuit's
14 decision in In re: Portolla Packaging which in essence is a
15 form of an encouragement of precisely that behavior. Do
16 you think that as a result of the Portolla Packaging
17 decisions that we ought to make any kinds of changes to
18 Rules 97 and 98 dealing with information disclosure
19 statements to prevent the kind of abuse that you've
20 mentioned?
21 MR. JENNINGS: Well, I don't think it would be
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 45 2 1 abuse. I think you would be getting what you asked for.
2 If you don't limit the rule to materiality, then you're
3 asking for anything that might have any relationship to the
4 patent, because I guarantee you during litigation, the
5 defendant will be looking at every document that isn't
6 submitted under the new rule and will challenge the patent
7 on that basis or the enforceability of it.
8 So I don't think there's an abuse involved. If
9 there's abuse out of the present rules, then it should be
10 dealt with, but if you institute new rules, then you may be
11 asking not for abuse, but you may be asking for more than
12 you contemplated.
13 COMMISSIONER DICKINSON: Other questions? Mr.
14 Drost.
15 MR. DROST: One of the things I believe we were
16 interested in when we put out the notice was that we were
17 concerned there might be a body of non-patent literature
18 out there that we simply don't have access to, particularly
19 in the area of computer software. You came and said that
20 the solution would be to give the examiners more time and
21 more training, and I'm interested in whether you're saying
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 46 2 1 that there isn't a large body of non-patent literature out
2 there that we don't have access to. In other words, we
3 have all the prior art within the office.
4 MR. JENNINGS: I don't know if it's in the
5 office, but it's certainly in--most of it is in data bases.
6 MR. DROST: So what you're saying is that we have
7 access to all the material we need to have access to?
8 MR. JENNINGS: That's my understanding, and I'm
9 sure there's always information you don't have. I mean,
10 it's not a perfect world, but I'm not aware, although I'm
11 not a--I'm not in daily contact with software houses, and I
12 don't know what they may have in their files, but as far as
13 I know, most examiners that I've talked to feel that they
14 have the tools, if they only have time to use them, and
15 they could find the best prior art if they're given the
16 opportunity.
17 Now, if it's a large body of prior art that an
18 inventor is aware of, and he knows there's material
19 information in it, then he has an obligation to come
20 forward now and cite that. So my question, I guess is a
21 mixed one. I really don't have a full answer to that and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 47 2 1 I'm not sure because of my familiarity with the software
2 field to that extent whether there is, in fact, a large
3 body of information out there.
4 COMMISSIONER DICKINSON: I just have one. You
5 cited, again, the two keys in your opinion to solution are,
6 if I can summarize them, time and turnover, more time in
7 production and turnover of examiners. I learned one thing
8 in this job, I guess, that time tends to equal money by and
9 large. I guess turnover does too in some ways because some
10 of the solutions there are compensation based, quite
11 candidly.
12 Would FICPI support an adjustment in our current
13 fee schedule to accommodate some change in our current time
14 allowances for productivity in order to address the
15 question of turnover?
16 MR. JENNINGS: Well, I really haven't polled the
17 membership on that. I would imagine that initially there
18 would be resistance to it, but quite frankly, I think the
19 patent office has the money it needs, and if we can get the
20 bill passed by the Senate and the House and signed by the
21 president, and the Patent and Trademark Office becomes a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 48 2 1 separate corporation, a government corporation, perhaps the
2 money that we now turn over to the treasury at the end of
3 each year will be kept with the patent office and we can
4 use that for these very things that I'm talking about.
5 COMMISSIONER DICKINSON: Other questions?
6 [No response.]
7 COMMISSIONER DICKINSON: Thank you, Mr. Jennings.
8 I appreciate your comments.
9 MR. JENNINGS: Thank you.
10 4. MARY HELEN SEARS
11 COMMISSIONER DICKINSON: The next witness I have
12 listed the Mary Helen Sears.
13 MS. SEARS: Good morning. Thank you for the
14 opportunity to be heard this morning on what I think is a
15 very important topic. I also apologize that I don't have a
16 written statement this morning. I had hoped to have one,
17 but other things kept me from completing it. I will have
18 one by your deadline and will submit it.
19 Turning to your question one, I certainly do
20 believe that in all active technologies, whatever they may
21 be, the most pertinent prior art is often overlooked by
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 49 2 1 patent examiners, and when I say active technologies, I'm
2 talking about those where active research and development
3 is going on, where there is a lot of writing, where there
4 is a lot of patent activity, and it's not hard for
5 examiners to overlook the most pertinent prior art.
6 I think that non-patent literature, at least in
7 my experience, is what is most overlooked, foreign patent
8 documents come next in order of what's overlooked, and U.S.
9 patents are probably last, but there are still significant
10 oversights at times; and I might say that I have experience
11 in looking at a lot of different technologies because when
12 I prosecute patent applications myself, it's in the
13 chemical or biological arts or the very simple mechanical
14 ones, but when I do validity and infringement opinions for
15 clients and when I participate in litigation, I work in all
16 different kinds of art, and I see this all over.
17 Now, it's true that patent examiners have a very
18 limited time to do what is a very big and significant job
19 in many cases, and I appreciate very much the fact that
20 have a problem of balancing these time constraints against
21 doing a really good job and coming out in the best possible
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 50 2 1 way. I believe, and I will get to it in more detail in a
2 few minutes here, that one thing that can be done to assist
3 in this balancing task is to put a greater reliance upon
4 the practitioner's duty of disclosure to the patent office,
5 and I will explain how, because I have some specific ideas,
6 in a minute.
7 But before I get to that, I also want to note
8 that in my experience, and I've been practicing before the
9 office and litigating and all the rest of it since 1960.
10 So I've had a lot of experience. In my experience, when I
11 am following prosecution of a patent application, both in
12 the United States and in other countries, particularly in
13 the European patent office and the Japanese patent office,
14 I find that in general better searches are done in both
15 Japan and the European patent office than are done here.
16 I don't really know exactly how they go about
17 searching in Japan, so I can't comment much further, but in
18 Europe I think we're all familiar with the fact that
19 examiners don't do their own searching. There is a
20 particular branch of the European patent office actually
21 off site from where it is that has the obligation to do the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 51 2 1 searching. It's done by professionals, and they present
2 the examiner with the search report which also has little
3 categories on it that indicate just how pertinent the
4 reference is, which is often very helpful both to the
5 attorney and to the examiner in going at the examination
6 job.
7 Now, whether such a thing would be feasible here,
8 I have no idea, and I'm not necessarily recommending it,
9 but what I would suggest is that the U.S. Patent Office use
10 a little of its resources to confer with both the European
11 and the Japanese patent offices about how they search and
12 look into it a little bit more and see what they can
13 suggest that might be really helpful here, and they may
14 suggest things that aren't helpful, and they can be
15 discarded, but it never hurts to ask in situations like
16 this.
17 I also want to suggest that while the U.S. patent
18 classification system has been very much lauded by people
19 who like to see more and more and more details, it does
20 have a draw back, and its draw back is that if the examiner
21 who is classifying particular claims in connection with
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 52 2 1 allowing the application happens to make a mistake or two,
2 it makes it very easy to miss U.S. patent references if
3 you're relying on the classification system to search only
4 a particular class and subclass, and today I do believe the
5 computer word searches that are carefully carried out even
6 in U.S. patents can help to alleviate that problem. They
7 may also be a good cross-check sometimes on the question on
8 whether some patents ought to be in a subclass is missing.
9 I can't help but comment that in the last couple
10 of weeks I've seen some news stories that indicated that
11 even when you're searching the internet, the best remember
12 browsers only locate 30 to 40 percent of the available
13 material on any given topic. Now, these articles did not
14 cover whether this may partly be due to the fact that the
15 browser eliminates duplications which occur on a variety of
16 web sites, but it's something to be thought about in this
17 whole situation.
18 Turning to another one of the questions, today I
19 do believe that applicants in general submit the most
20 pertinent prior art of which they are aware, but at least
21 U.S. applicants do. They've been very sensitized to the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 53 2 1 need to do this. Practitioners are very sensitized to the
2 need to do it, and I think there is an earnest effort made.
3 I can't speak entirely for situations where the
4 applications come in from abroad, and the correspondence
5 between the attorney and the applicant may or may not
6 always unearth everything that ought to be brought to the
7 attention of the patent office, but I think there are many
8 modifications to the present system which could be made to
9 improve the effectiveness of the examiner's search in
10 identifying the best prior art.
11 And, first of all, what I would very much
12 suggest, and I might comment first of all, I don't favor
13 requiring everyone to do a search. In the first place, not
14 everyone will do a good search, and it may not make any
15 difference for some people to do what they think is a
16 search. Secondly, there may be clients who really cannot
17 afford the search who will say just prepare my patent
18 application and let them tell me whether I have something
19 or not, and lawyers lots of times can't resist that sort of
20 an appeal because those people have a right to be
21 represented too, but I do favor very much requiring of the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 54 2 1 practitioner as a part of his duty of disclosure to tell
2 the patent office whether a search was made and what the
3 extent of the search was.
4 For example, if it's been searching in some class
5 and subclass of U.S. patents, that can be indicated. If
6 it's been searching an online data base, the data base can
7 be identified. If the search was cursory rather than
8 detailed, this can be stated too, and the office could
9 actually devise a form to elicit some information of that
10 kind and simply require everyone to file it whether they
11 filed an IDS with it or not.
12 Sometimes people search by names of companies
13 that they know are active in a particular field or names of
14 inventors and researchers who are very active in the field.
15 There are all kinds of ways that searches can be made, and
16 there should be some way for people to identify just what
17 they looked for. Also, I think that practitioners can be
18 asked as a part of their duty of disclosure to identify
19 sources that have not been searched but are reasonably
20 anticipated to be likely to yield up something that is
21 pertinent to a given patent application.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 55 2 1 For example, when you're dealing directly with
2 inventors, they may tell you something like my colleague
3 who came from Russia told me that for 10 years in the lab
4 he worked in over there they were investigating this topic.
5 We haven't been able to really access the art because we
6 don't speak Russian, but this is known to the office that
7 this might be a fertile place, perhaps, ways can be devised
8 to look into that particular area of subject matter.
9 COMMISSIONER DICKINSON: Ms. Sears, I don't mean
10 to interrupt you. It's very valuable testimony. You have
11 about five minutes.
12 MS. SEARS: Okay. I do believe the references
13 utilized in drafting the claims of a patent application,
14 unless they are used simply to see a strategy of claim and
15 are not at all pertinent to the subject matter of the
16 application, should be required to be identified and should
17 be submitted. I believe that pre-published non-patent
18 literature attributable to the applicant in any way should,
19 in fact, be at least identified, and in particular I note
20 that many applicants who are prolific writers in their
21 field sometimes have articles that they have submitted for
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 56 2 1 publication that aren't submitted yet that are very
2 pertinent not only to the application in terms of prior art
3 but also in terms of identifying things like best mode and
4 so on, and I think there some real thought could be given
5 in that area.
6 Also, I think there should be some way of
7 discouraging people who submit carloads of references
8 without identifying what's pertinent, and what I would
9 suggest is that some thought be given to developing a form.
10 Let's say people just put a check mark by each thing that
11 is just there for background and causes them to have to
12 identify what they have submitted that has a real meaning
13 to the claim subject matter. In those cases, I think your
14 form should require them to tell what pages or what line
15 and column or whatever is the place where the examiner
16 ought to be looking. It can save the examiner a lot of
17 time in reading stuff that isn't getting him anywhere.
18 Let me see. I note that the idea of putting all
19 of the search responsibility on the applicant is not very
20 feasible. There have been a lot of comments in the past
21 when such things came up about how this was really not
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 57 2 1 something that even the examiners felt comfortable with.
2 Also, this is the only patent office in the world that
3 actually tries to encourage the applicant to make a search.
4 Everywhere else they rely exclusively on the patent office.
5 I do think there should be more cooperation, as I have
6 said, but I don't think I would put it all there.
7 The last thing I want to mention before I
8 conclude is that I think that the second prong of effective
9 examination is for the examiners to be capable of
10 recognizing highly pertinent prior art and applying it
11 against the claims, and while it's a long time ago now, the
12 Supreme Court in Graham emphasized that the patent office
13 has the primary responsibility of rooting out unpatentable
14 subject matter. I don't think that should be overlooked or
15 forgotten in some of the other concerns that are so
16 important today.
17 I do think that some attention should be given to
18 this problem in terms of two or three things that I'll
19 suggest very quickly. One is encouraging examiners to take
20 technology courses if they don't really feel confident, in
21 particular to acknowledge to which they've been assigned.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 58 2 1 Perhaps if there are subjects where a lot of examiners
2 don't feel very confident, the office could think about
3 offering some courses on site. The other possibility is to
4 pay all or part of their tuition to take certain kinds of
5 courses that they can justify.
6 I also think some careful thought should be given
7 to the supervision of examiners in their first couple of
8 years, especially to make sure that they don't take
9 unwarranted short cuts just to meet their production goals.
10 Those goals are important, but it's also important to do
11 your job right, and the office has a bit of a
12 responsibility to be sure this does happen.
13 That really concludes what I wanted to say.
14 COMMISSIONER DICKINSON: Thank you, Ms. Sears. I
15 appreciate your testimony.
16 Are there any questions? Mr. Kunin.
17 MR. KUNIN: Thank you, Ms. Sears for your very
18 thorough and specific recommendations. We certainly
19 appreciate your taking the time to look into the questions
20 and give us some very thoughtful comments.
21 I do have a question that relates to something
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 59 2 1 that you said. We published an advance notice of proposed
2 rule making which notice indicated that we had some similar
3 concerns that you did with respect to how our information
4 disclosure practice should work or could work in a better
5 way. In particular, some of the ideas that you threw out
6 with respect to having the applicant segregate the more
7 pertinent from the less pertinent information and to
8 provide more explanation of relevancy met with a
9 substantial amount of criticism by the commentators in
10 advance notice. In particular, there was a substantial
11 concern about the way in which in litigation inequitable
12 conduct charges are made and investigations through
13 depositions and the like.
14 You indicated that you have an extraordinary
15 amount of experience in all aspects of the patent field, in
16 particular in litigation. Could you perhaps briefly
17 address whether you feel this issue of inequitable conduct
18 charges is real or kind of a--
19 MS. SEARS: I think it is a real issue, but I
20 really think that the practitioner who is most candid with
21 the patent office about where he or she sees the problem is
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 60 2 1 the least vulnerable to inequitable conduct charges, and so
2 I really do not understand the degree of concern that is
3 expressed.
4 COMMISSIONER DICKINSON: Questions?
5 [No response.]
6 COMMISSIONER DICKINSON: Thank you, Ms. Sears.
7 We appreciate it.
8 MS. SEARS: Thank you. Thank you for the
9 opportunity.
10 COMMISSIONER DICKINSON: The next witness I have
11 is James F. Cottone. If I could step out for just a
12 minute. I'll turn it over to Commissioner Godici.
13 MR. COTTONE: I have five view graphs, but I
14 don't see an overhead projector here or any kind of
15 projector. Is there something we could work out and delay
16 my presentation for a few minutes for me to do so? I don't
17 see Elizabeth here.
18 COMMISSIONER GODICI: It's going to take us--it
19 will probably take us a little bit of time. Do want to--
20 MR. COTTONE: Leap frog me.
21 COMMISSIONER GODICI: Leapfrog, and we'll try to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 61 2 1 get a projector. Do you want to start and they'll bring in
2 the view graph, or should we go to the next one? We'll
3 going to the next person.
4 MR. COTTONE: Sure. That's fine with me.
5 5. MR. GAMBRELL
6 COMMISSIONER GODICI: Mr. Gambrell, could we
7 impose upon you to go next?
8 MR. GAMBRELL: Sure.
9 COMMISSIONER GODICI: Thank you.
10 MR. GAMBRELL: Good morning. My name is James
11 Gambrell. I'm a partner in the Akin, Gump, Strauss, Hauer
12 & Feld law firm, but I speak for myself, obviously, and not
13 for some hundred patent lawyers that are in our firm. I'm
14 sure most of them have somewhat different opinions.
15 I think it goes without saying the fact that I've
16 practiced 45 years in this firm or in this area, and I've
17 thought, I've written, I've tried cases, I've taken appeals
18 and the like, and I don't mention that to indicate how
19 qualified I am but to give you an idea that I don't come
20 here and speak about recommendations lightly or without
21 some background. Indeed, I started as a first director of
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 62 2 1 the Office of Legislative Planning and some of the comments
2 I may make relate to some of the experiences I had when I
3 was in the patent office as a special assistant to the
4 commissioner.
5 I'd like to break my comments into largely two
6 parts. I would like to first comment on some of the
7 questions that were posed in the request for this hearing,
8 and then I'd like to deal with some of the solutions, at
9 least as I see them, to solve or at least ameliorate the
10 problem of poor examiner based largely of the best prior
11 art being before the office.
12 With respect to the first question that you
13 raised in your proposed areas, it seems to me that the
14 question is not--or obvious what the answer is. Examiners
15 sometimes have the best art. Sometimes they don't.
16 Indeed, when I was teaching at NYU years ago, one of my
17 graduate students did a whole book on the question of
18 whether Judge/Justice Clark's comment on whether the
19 standard of invention being in the patent office was
20 distinctly different than that one in the court, and when
21 you separate out all of the cases which had nothing to do
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 63 2 1 with the prior art but looked at where the prior art was
2 involved and whether the patent office and the courts did
3 different things, you found out there was no significant
4 difference.
5 The fact is Justice Clark thought that there was
6 a difference, but he was incorrect, and the only way you
7 find that out is to do a study and to examine the various
8 cases and find out whether the best art was in front of the
9 examiner; and if he had it, did he do well, and did he do
10 it similar to the courts, and if he didn't, was that the
11 reason why he hadn't. So the question is I don't think you
12 can guess about whether they have the best art.
13 I suggest that the patent office ought to conduct
14 a study to find out. You have a raw materials to do it.
15 You have the prior experiences of 10 years or so. Do a
16 study and find out exactly what happens for the most part
17 when District Courts handle cases involving prior art. Did
18 they have the best art? Didn't they have the best art?
19 Why didn't they have it and so forth.
20 Indeed, we did that when I was in the office. We
21 did one of interference practice because everybody knew
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 64 2 1 what was wrong with interference practice, but the fact of
2 the matter is nobody had ever studied it to find out at
3 what stage things happened and where the critical blocking
4 points were, and I don't suggest that we solved the problem
5 with that study, but we certainly knew where the pain was
6 and where you could do the most good in changing things.
7 On your second question, you want to know whether
8 the applicant submits the best art. Again, I think a
9 random sample study by the patent office will help identify
10 whether that's true or not. I can sit here and give you my
11 personal experience or Tip Jennings can or Mary Helen Sears
12 can, but our personal experiences are poor substitutes for
13 what happens in the universe, and therefore all we're doing
14 is giving you war stories about our own personal
15 experiences which may be relevant, may not, and may be
16 quite off the ball of what's happening.
17 So, again, I suggest that rather than personal
18 experience, you do a study. It's not that hard to do.
19 It's time consuming, but it will be, frankly, very
20 informative, and I suspect will surprise a lot of us about
21 a lot of different sources of deficiencies.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 65 2 1 The third question you ask are the current rules
2 adequate. Clearly, they're not. Clearly, we are moving
3 towards an examination system with the proliferation of
4 prior art that no one can keep up with, least of all
5 examiners who have over five million patents to examine in
6 the U.S. alone, not counting foreign patents, all sorts of
7 other activities, e-mails which is one of the most
8 immediate sources of great information now, as Bill Gates
9 of Microsoft can tell you. There's all sorts of things on
10 those e-mails that would be informative to examiners on the
11 state of the art where somebody is trying to get a patent.
12 Again, I think that it's clear that they don't
13 have enough time, the examiners. We all know that. We
14 also know--at least my view is that the reason why we don't
15 have as good of an examination system as we should is
16 because the consequences are not severe enough with respect
17 to the patent lawyers, the inventors, and the assignees as
18 to providing good information to the patent office. I'll
19 talk a little bit more about that in terms of solution.
20 With respect to your question four, again do a
21 study to find out whether or not there is a problem here
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 66 2 1 and what kind of problem it is. Are prior art searches
2 typically conducted before filing? I can tell you my
3 experience. I nearly always do, but can I tell you that
4 that's a general rule or a majority position? I have no
5 idea whether it is, and I don't think my experience would
6 tell me or give me an accurate response. Again, do a
7 study. You can find out. You have the files. You have
8 the results of the searches, and you can find out what they
9 do and what they don't do by looking at the litigation that
10 occurs with respect to some patent.
11 Again, it's difficult to know what is a
12 reasonable search, and indeed if you require a search, as
13 everybody knows, the arguments are going to be is it
14 adequate, it is reasonable, did you look in the right
15 spots; and as a trial attorney, I can tell you that all
16 those questions will be raised if I'm on the defense, and
17 indeed they will have to be defended by a player and a
18 patentee, but I don't know exactly what's reasonable. I
19 would think that what's reasonable, of course, from an end-
20 result standpoint is that it turns up the best prior art,
21 but that's an after-the-fact decision.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 67 2 1 On question five, again, I think that you can do
2 a study to find out what really happens with respect to
3 IDSs. They are frequently submitted. Whether they're very
4 effective or not is another question. Mary Helen Sears,
5 who just testified, I have to tell you provides very
6 substantial IDSs. I was an expert witness in a case in
7 which she had procured the patent, and she provided the
8 patent office with some 60 or 70 references in which she,
9 in some detail, discussed each one and related it to the
10 claimed invention, and of course the defendants argued, Oh,
11 my goodness, she missed here and there; but I will tell you
12 that by and large, I found that what she did was extremely
13 helpful. It was the thorough, and it undoubtedly helped
14 the examiner in his quest. I have never seen anybody that
15 has done one quite as thoroughly as Mary Helen Sears did,
16 but it took her a lot of time, and it was a very
17 responsible act, and it was done long before IDSs were a
18 conventional kind of thing to do.
19 Again, though, you could find out what is
20 involved and what people are doing and how they're doing it
21 by doing a study and analyzing it based on your own record.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 68 2 1 With respect to Questions 6, 7, 8, and 9, I think they're
2 all interrelated in a way, and it seems to me that the
3 question of whether a prior art search ought to be
4 required, what should it include, whether it should be
5 relied on for claim drafting ,or whether you should also
6 give an insight on non-patent literature, these all depend
7 on reasonableness, questions of expense, and the arguments
8 have been complete as to what should inevitably come.
9 What I think is a problem with all of these ideas
10 about the question of searches and submissions to the
11 patent office is they look at the wrong end of the gun. It
12 seems to me the question ought not to be do I have to
13 submit a prior art search or have one made, but the
14 question is what are the consequences of attending the lack
15 of good art before the patent office; and therefore let me
16 address briefly what I think is a solution to the problem,
17 and the question of searches and disclosures to the patent
18 office will take care of themselves with this kind of
19 solution.
20 First, the question is will the submission of
21 searches solve the problem. I don't think it will solve
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 69 2 1 the problem. It will help the problem, but it's not going
2 to solve it. My second question, of course, is is there a
3 better way, and I think there is, and it requires two
4 simple proposals but which are undoubtedly highly
5 controversial. First, I would eliminate the presumption of
6 validity that a patent enjoys as to all claims in the
7 patent unless the best art is available to the examiner
8 regardless of why the best art was not before the examiner.
9 It's not a question of wrong doing or anything. It's just
10 saying that if we're going to give 20-year exclusive rights
11 to a patent owner, they should be obligated to require that
12 the best art is before the office.
13 Now, obviously to have the best art before the
14 office requires an examination of the prior art and a
15 submission if you want to have a strong patent. I'm not
16 suggesting the patent is invalid if the best art isn't in
17 front of the office, but merely that the presumption is
18 eliminated, and you look at it as a de novo situation as to
19 whether or not in view of that art and the rest of the art
20 a patent with those claims should or should not have
21 issued, and anybody who has tried a lawsuit knows that the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 70 2 1 presumption with clear and convincing evidence is a big
2 hurdle to overcome with an injury and even indeed with many
3 judges.
4 So therefore it seems to me this puts the pain
5 and the burden where it ought to be, and that's on the
6 patentee, the applicant, and the owner to be sure that the
7 examiner has the best art since the consequences are severe
8 if they don't, and the presumption of validity is an easy
9 and simple way to eliminate the added value of the view
10 that the examiner has done a good job. There is no
11 question in my mind that an examiner can't possibly do a
12 good job if he doesn't know the best art. I don't care how
13 well he does his job, he's sitting there with one hand tied
14 behind his back.
15 The second proposal I would suggest, again a
16 controversial one I'm sure, is to make the issuing patent,
17 the issued patent invalid or unenforceable if material art
18 known to the applicant or his assignee is not given to the
19 PTO and the examiner. You make the patent invalid or
20 unenforceable if material misrepresentations or arguments
21 are made that the applicant or his assignee knew could not
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 71 2 1 be made if the examiner had the information that the
2 assignee or the applicant or his attorney had.
3 The comment on this is simple enough. I'm not
4 suggesting there be an intent to deceive. I'm merely
5 saying that once it is established that the best art was
6 known to the applicant or the assignee and not disclosed to
7 the patent office, or they make a material
8 misrepresentation, much as we measure that right now with
9 respect to arguments they make and the like, that we don't
10 play games. We merely say the patent is going to be
11 forfeited. We're not going to get into the question
12 whether they intended to deceive the office or anything.
13 We're merely saying that the benefit is to have to
14 demonstrate that the inventor and his attorney and other
15 people involved are not felons.
16 We're not interested in whether they're felons
17 right now. We're interested in whether the patent is going
18 to be granted for 20 years to give somebody an exclusive
19 right to hold over other enterprises' heads, and it seems
20 to me that the standard, and the patent owner has to meet
21 this standard, is the way to do it, and it will naturally
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 72 2 1 bring out searches. I have not doubt that there will be an
2 increase in searches, and I think they will be materially
3 better.
4 In conclusion, I would say that the proposals
5 certainly seem harsh, and we can and should justify them,
6 it seems to me, by remembering that a is a patent
7 privilege. It's an exclusive grant for upwards of 20
8 years. It requires the applicant and those associated with
9 it to discharge their duty of candor, and if these two
10 policies were implemented, in my view, the question of
11 should there be a search, how thorough should it be, what
12 should the applicant search, etc., will blend into a simple
13 solution. If he wants a strong patent with a strong
14 presumption, he's going to make a thorough and careful
15 search and do his level best to see that examiner has the
16 best art.
17 The adequacy of the search won't be at issue
18 either because we're not talking about whether he looked
19 everywhere but what he found, and again I think we have to
20 get back to basics, but outlining the consequences
21 attendant to failure to help the PTO and leave the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 73 2 1 avoidance strategy to the beneficiaries of the patent
2 grant, the patent owner. He's the one who gets it, and
3 he's the one who should take steps to see that it's
4 carefully done.
5 In conclusion, I would suggest that the reason I
6 suggest and recommend such draconian proposals is because I
7 think our examination system is in serious, serious
8 difficulty, and I don't think any Band Aid approach to it
9 is going to help it. We're either going to have to
10 substantially improve it by relying on the owners of these
11 patents to help us, or we're going to lose an examination
12 system and go to a de facto registration system. Now,
13 maybe that's the way to go in the long run, and maybe it's
14 inevitable, but I suggest at the very at least if we tried
15 these types of proposals, we would come out with a system
16 that puts the burden where the benefit is, and if I'm going
17 to get the benefit of the patent for 20 years, I see no
18 reason why I shouldn't assume the burdens and the patent
19 office needs help. The examiners can be the most
20 principled and experienced in the world, but if they ain't
21 got the material to work with, they're not going to make a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 74 2 1 good job.
2 And that's basically where I come out. I thank
3 you for your time and your consideration. I'll be happy to
4 respond to questions. I don't want to say that I'll answer
5 them because I'm not sure that there are any simple
6 solutions to a lot of this, but indeed I think the patent
7 system is in a time of crisis and that we need to not look
8 for Band Aids but look for some real antibiotics that may
9 cure it.
10 COMMISSIONER GODICI: Thank you, very much, Mr.
11 Gambrell.
12 Questions? Steve?
13 MR. KUNIN: Thank you, Mr. Gambrell, for your
14 testimony, and at least in my opinion maybe you would agree
15 with it that in order for your two recommendations to be
16 realized that it would more likely than not require a
17 legislative solution, that it would probably be beyond our
18 regulatory authority, and if that were the case,
19 considering the current status of H.R. 1907, would you
20 favor these types of provisions being included in that, and
21 if so, you know, do you think that it would affect the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 75 2 1 passage of that legislation, or would you favor a stand-
2 alone provision in separate legislation if that would be
3 necessary?
4 MR. GAMBRELL: I have no preference. I certainly
5 agree with you that in large part at least your proposals
6 would require legislative action, but it seems to me that
7 the patent office and hopefully the patent bar, which I
8 doubt, but I think the patent bar and the patent office
9 ought to endorse such a system. I would like to sit here
10 and tell you, Mr. Kunin, that all patent lawyers are honest
11 and they don't misrepresent, but I have been a trial lawyer
12 and an expert in 40 years or more, and I'll tell you the
13 number of times when lawyers have skirted the truth,
14 disguised the facts, and misrepresented the art is very
15 common, and I don't think that they are going to
16 automatically police themselves to do the right thing.
17 Unfortunately, courts very frequently don't come
18 down on them as they should for these kinds of omissions.
19 They said, oh, you know, it's rhetoric, and we won't bother
20 with it, but the fact is that there is a lot of sliding
21 away. I'm struck--this is pretty much the way one lawyer
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 76 2 1 once expressed to me when I was looking at his proposed
2 jury instructions in a case I was involved in, and there
3 was one jury instruction that the other side had proposed
4 that was helpful to the plaintiff, but it did not represent
5 the law. It was clearly contrary to existing law, and I
6 said, Well, you ought to tell the court that it's wrong and
7 correct it even though it to some extent may impact on your
8 case, and his comment was, Well, I'm not going to worry
9 about this now. I want to win at the District Court level.
10 I'll worry about the appeal later, and I think a lot of
11 lawyers who prosecute patents have the same thought in
12 mind, if in doubt, I will try to stretch it a little bit.
13 I get the patent, and then I'll worry about whether I can
14 rationalize or explain what it is and why it was proper
15 what I did.
16 I would like to have a higher opinion of all
17 lawyers in our profession, but I think the competition, the
18 increase in number, and the general lowering of ethical
19 responsibilities of lawyers in general and people
20 throughout society has made it necessary for us to develop
21 techniques that will encourage, indeed require, lawyers to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 77 2 1 tow a very careful ethical line, and I don't feel offended
2 by doing it.
3 Now, my experience has been, Mr. Kunin, that I
4 always make searches, virtually always, and I produce every
5 bit of the information I find because I figure if I can't
6 get it through the patent office, I certainly am going to
7 have as much or more difficulty in the courts. So it's a
8 very simple objective, practical kind of thing, leaving
9 aside the ethical consideration.
10 I think it's time that we recognize that it's
11 important that patents are effective with the public
12 interest and that we as lawyers and applicants have an
13 absolute duty of candor to be straight up with the patent
14 office and with the courts, and I'm not offended by the
15 requirement, and I think that people who get burned by it
16 are people who next time will be more careful. I do think
17 we need to get away from talking about whether somebody
18 intended to deceive because what you're asking a court or
19 the office to do is decide whether you're a felon, and I
20 don't think it's necessary to do decide whether somebody
21 intended it or not.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 78 2 1 The question is what is the consequence of it and
2 let's deal with that. If that's dealt with adequately, I
3 think we can leave the other question to other areas like
4 inequitable conduct and a whole range of things, but we
5 will protect the patent system which I care a great deal
6 about.
7 COMMISSIONER GODICI: Any other questions?
8 MR. DROST: Your response to the first set of
9 questions was to recommend that we do studies to try to
10 determine these facts, not just go by individual
11 experiences. How would you conduct some of these studies,
12 other than I guess we could look at a small number of
13 District Court cases, but how would you look--how would you
14 find whether patent attorneys are conducting searches,
15 prior art searches?
16 MR. GAMBRELL: Well, I think one thing you could
17 do is you could ask them. In 1980, when the Federal
18 Circuit was created, I did a study for a commission on form
19 shopping, and one of the things that Don Dunner and I did--
20 we jointly did it--is we sent questionnaires to a large
21 number of lawyers throughout the country and asked them to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 79 2 1 tell us what they did anonymously. We didn't ask them to
2 identify who they were, but we did a statistical sample.
3 We randomly selected them, and we got heavy numbers of
4 responses, and I think we learned a great deal and a lot of
5 it was surprising too.
6 Some of them were things that I would have been
7 sure would go one way but didn't go that way, and I think
8 that's one way you could do it, I think you could look at
9 your files and make a random sample of your files. On this
10 interference study we did, we randomly selected a 15
11 percent sample of interferences over a 10-year period and
12 then went back and looked at all the files and found out
13 what happened and when they were terminated and the like,
14 and we found out all sorts of information that I think--I
15 remember Dean Lawrence who was one of the most premier
16 interference lawyers of all time was surprised at some of
17 the results, and he probably handled 10 percent of the
18 interferences in the patent office at the time.
19 I think what we think happens and what may
20 actually happen is frequently quite different, and at least
21 we would know where the critical points were and how
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 80 2 1 frequently things are done. I think IDSs are good ideas.
2 I think searches are useful, and I think it's beneficial to
3 the patentee because he will get a stronger patent, but to
4 require searches is going to create real problems on
5 reasonableness, expenses.
6 Now, you could eliminate those small inventors
7 who only file one or two applications perhaps and say we're
8 not going to talk about their requirement. We're going to
9 talk about the others, but 40 percent of the good
10 inventions a few years ago proved to be creations of very
11 small groups and not large, large companies, and so you get
12 into a real dilemma here as to whether or not you can solve
13 the problem and protect the small guy who doesn't have many
14 resources at the beginning.
15 It's a touch choice, and I don't have the answer
16 to that one.
17 COMMISSIONER GODICI: Thank you very much.
18 MR. GAMBRELL: You're welcome.
19 COMMISSIONER GODICI: Are we ready, Mr. Cottone?
20 I tell you what. This might be a good time to take about a
21 five-minute break if anybody needs one, and we'll get set
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 81 2 1 up here. So feel free.
2 [Recess.]
3 6. JAMES F. COTTONE
4 COMMISSIONER GODICI: Why don't we go ahead and
5 get started? We're attempting to get a microphone to the
6 speaker's table. We're going to get started with Mr.
7 Cottone, and I do believe we now have a microphone at the
8 front table that will help.
9 Another question came up during the break of
10 whether or not transcripts would be available, and to
11 answer to that question is yes, via e-mail. If you would
12 give an e-mail address to Mary or Elizabeth or a card, we
13 can make arrangements once we have the transcripts to give
14 them to you by e-mail.
15 COMMISSIONER DICKINSON: We've made the
16 transcripts from other hearings available on our web site.
17 COMMISSIONER GODICI: Mr. Cottone.
18 MR. COTTONE: Okay. Thank you, Nick. I would
19 like to begin my presentation this morning by introducing
20 some basic ideas about how best to search for prior art and
21 especially how to find the best prior art in the shortest
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 82 2 1 possible time, and then take those basic ideas which we've
2 fairly well quantified over the years and address the two
3 main questions which are the subject of today's hearing,
4 namely is the most pertinent prior art being considered by
5 patent examiners during examination of patent applications,
6 and the second question, are the current procedures for
7 obtaining prior art during examination of a patent
8 application adequate and effective.
9 The basic ideas I'll being discussing are a
10 little unusual and grew out of an investigation I conducted
11 about five years ago when it became clear to me that online
12 searching had finally come of age and would possibly be the
13 dominant form of patent searching by examiners and other
14 searchers. The single event that triggered off my
15 investigation was the public availability of the PTO's
16 image search cape ability on the CSIR dual screen
17 workstations. These workstations that finally allowed
18 side-by-side screens with both text and image searching was
19 so powerful that the first question that came to mind was
20 how good was this online text and image, followed shortly
21 by other related questions such as is it worth its heavy
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 83 2 1 costs.
2 Just as an I side, the automation people spend
3 hundreds of millions of dollars a year now automating our
4 processes. That's projected for the next five years, and
5 the public pays $50 an hour to use the image workstations.
6 So cost is of course a factor, and the next question was
7 does the availability to the public, now a per charge usage
8 of image and text stations, compete with or supplement or
9 threaten to replace the existing search media such as the
10 paper files that have served us all and the patent system
11 so well for many years.
12 Well, as it turned out, the answers to all these
13 questions were already at hand in the form of hundreds of
14 patentability search reports sitting in my storage files.
15 In looking at my old search reports, especially the search
16 sheet notes, it was clear to me that we would not only
17 identify when a 102 reference was found but also where it
18 was found. That's a critical piece of information, that is
19 did the 102 come from a manual search of a particular class
20 and subclass or from an online text search or from an image
21 search.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 84 2 1 By going back through our files for just about
2 seven years, a retrospective study somewhat similar to the
3 study just previously proposed and other matters, we were
4 able to find several hundred patentability searches for
5 which we developed at least one 102 reference. We then
6 narrowed our investigation down to 421 cases where there
7 was absolutely no ambiguity as to the quality to of the 102
8 reference and no ambiguity as to where the 102 reference
9 came from. The results of this investigation are tabulated
10 in figure one which is now up on the screen, and, as you
11 can see by the bar graphs, are absolutely clear in their
12 results.
13 I will now discuss figure one informally. These
14 four bar graphs show on the left axis number of 102
15 developed and on the four horizontal axes where the source
16 of the 102 was. The N, sub C, slash S-C is the number of
17 102s developed by searching class and subclass. That is
18 paper file manual search and sub APS, and you'll notice of
19 the 421 cases, we developed 358 102s by manual search.
20 Next, N, sub APS, and APS here is kind of a
21 hybrid term because for many years the public only had
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 85 2 1 access to the text search terminals. Later, we got access
2 to the image search terminals and then finally the combined
3 text and image. So that N, sub, APS means all online
4 search facilities provided by the PTO, U.S. patent data
5 base. That produced 294 102s out of 421 cases.
6 And then you see a great big gap between the two
7 leaders, that is the manual search followed very shortly by
8 the online search, and the next gap is N, sub F and P which
9 is foreign publications. That produced 84 hits, 84 102s,
10 and finally N, sub, exam is 51 102s produced, again out of
11 the 421 sample, which were essentially gifts from an
12 examiner. Generally, the examiner will say go find the
13 Brown patent or the Smith patent, or the examiner will say
14 during an interview, gee, you better hit this alpha
15 subclass or look particularly at the last five years of
16 this sub. In that case, we call that 102 a gift from an
17 examiner.
18 Now, you add up all of these hits, 358, 294, 84,
19 and 51. You notice clearly manual leads the game, followed
20 very shortly by APS and then foreign pub and exam. This
21 produced an average of--they don't add up to 421. They add
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 86 2 1 up to 730-something which implies an average of 1.9 102s
2 per search done.
3 Now, here's where things get interesting. If we
4 presume that the number of 102 references developed for
5 each of the four search types, and hereinafter I'll be
6 referring to these four search types as you see on figure
7 one. That is manual text, foreign pub, and exam, and a
8 little later I quantify that in mathematical terms. We
9 call it N equals four. So when you hear me saying N equals
10 four, it's these four search types, and you can surely do N
11 equals five or six by going to commercial data bases and
12 elsewhere.
13 If we presume that the number of 102 references
14 developed for each of the four search types tabulated in a
15 sample can be roughly equated to some standard statistical
16 measure such as a probability of detection, then some very
17 interesting observations can be made, based wholly on the
18 numbers shown on figure one, can be offered.
19 Based on the standard concept of probability of
20 detection that flows from straightforward search theory,
21 the next graph shows an equation that allows us to make
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 87 2 1 this presumption and put it into quantitative form. While
2 Elizabeth is getting that right, let me back just one
3 moment and say that in the statistical field we'll be
4 covering--and this will be short. I won't take the full 20
5 minutes. I'll get to the point shortly.
6 We start with a presumption that there exists a
7 102 someplace in the system, and as we get up in the
8 morning, we said there is a 102, and now we've got to go
9 find it someplace in these four or five buildings. So all
10 of this is predicated on the existence of a 102. Our job
11 is to find it in some optimum way, and we'll get to the
12 point where we can show that this is done in one, two,
13 three, ten, or thirty hours and quantify that.
14 Looking now at figure two, we note that the
15 equation at the top, P, sub C, which is up on the railing
16 on the ceiling, P, sub C is the cumulative probability of
17 detection of an event given that N statistically
18 independent search trials for that event can be made.
19 You'll probably recognize this from your statistics that's
20 the way you do radar detection, multiple pulse radar
21 detections or multiple trials and get a cumulative
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 88 2 1 probability detection. It's fairly well known and standard.
2 The P, sub I is the probability of detection of
3 any one statistically independent search trial, that is a
4 manual search will produce results that are totally
5 independent from the results of a text search and the text
6 search results are statistically and totally independent
7 from a manual search of the foreign art and publications.
8 Now, that is also a presumption and the degree to which
9 that mathematical precision holds is to which these numbers
10 that we're going to show here are valid, and that remains
11 to be seen. We'll need some Nobel laureate to work up the
12 correlation between number of 102 hits and statistical
13 independence which we are presuming.
14 Now let's look at the table in figure two where
15 I've taken the numbers from figure one and put them in a
16 particular sequence where the cumulative probability of
17 detection, which is the bottom row, P, sub C, accumulated
18 as N goes from one through four. The key item to note is
19 if we do four statistically independent searches of a
20 particular topic, the cumulative probability of detection
21 is 0.97, and that's on the bottom row, P sub C under the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 89 2 1 column four which is the fourth statistically independent
2 search effort. That is if we can somehow linearly scale
3 the number of 102s with a probability of detection, and
4 that's a big if, then the cumulative probability of
5 detections go from .85 if we do only the manual search in
6 column one to .88 if we use a manual search and include the
7 foreign art and publications, up to 0.9 if we also consult
8 with an examiner who may or may not give us a good steer;
9 and finally if you go to the next image search, we get the
10 0.97 probability of detection.
11 I think you'll agree that these probability of
12 detections are pretty darn good, and they tell us that if
13 we do a number of statistically independently distinct
14 types of searches, eventually we can be fairly sure that
15 the examiner has seen all the best prior art or has
16 considered all the best prior art completely independent of
17 IDSs and other things. This is just search mechanics.
18 For those of you who are interested in this type
19 of analysis, quantifying the results of large numbers of
20 prior art searches, you can find a detailed presentation of
21 this approach in the April 1997 JPOS issue on pages 233 to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 90 2 1 240. A few copies of that paper which I authored are
2 provided on the front table here, and if they run out, you
3 can look up the article in your copy of the JPOS.
4 Now, with these ideas in mind, let's extrapolate
5 to our problem for today, namely how to find the best prior
6 art in the shortest possible time. Our experience shows
7 that figure three offers search--some insights into search
8 strategies which were found to be very useful. Consider
9 first manual searching of the paper files. Manual
10 searching of the paper files as represented by the N equals
11 one line, this is a straight line that eventually develops
12 the 102 reference given, of course, that one existed at
13 about the 30-hour mark.
14 You'll notice that the probability of detection
15 from zero to one is on left axis, P, sub C, the same P, sub
16 C that was in the equation at the 30 hour mark. At about
17 the three hour point in a search, the P, sub C is just over
18 the 50 percent mark, and at about 10 hours, this increases
19 to the 70 percent mark; and recall this is for a manual
20 search, three hours, ten hours, and thirty hours, not bad
21 but also not very time efficient.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 91 2 1 This depicts what often happens when an examiner
2 engages in a not particularly well-focused manual search
3 effort, and if the search situation appears familiar to any
4 of you researchers, you'll probably recognize the pain
5 inflicted as you approach that N equals 10, N equals 30.
6 Next compare the N equals one line with the N equals four
7 curve. You'll notice that the N equals four curve
8 approaches a probability of detection of one, that it
9 initially rises fairly steep and then eventually starts to
10 taper off.
11 Recall that N equals four is from four
12 independent search efforts, that is a manual search effort,
13 an online search effort, and so on. Note that at three
14 hours, the N equals one gives about a 50/50 chance of
15 finding the 102, while the N equals four gives about a .94
16 probability of detection. That's a really significant
17 improvement. For the intermediate N equals two curve, the
18 results are somewhat between but still much better than the
19 N equals one line.
20 I'm going to depart from my prepared text just to
21 briefly mention that when I first produced this chart from
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 92 2 1 our own 421 cases in massaging the statistics and discussed
2 it with some of the all-time searches, they looked at me
3 and says, Jim, are you trying to tell me that the more I
4 search, the better the result are? I say, Yeah, that's
5 about right. The more you search, the better your results
6 are, and I was flabbergasted because I had done all this
7 hard work, and I knew I was onto something but I didn't
8 know quite what, and that was because we were thinking in
9 terms of N equals one.
10 The more you search, you start from the beginning
11 of building two and go to building four, and eventually
12 you're going to find a 102. It may take 30 hours. It may
13 take 300. You'll find it if it's there. The question was
14 how to do this smarter. So when you start doing N equals
15 two, for example, the manual search plus the foreign art
16 and pubs, the manual search plus an APS search, again N
17 equals two, look at the significantly better results you
18 get in shorter times.
19 Now, I think it's fairly well--pretty much
20 intuitive, and I'll get to the shapes of these lines a
21 little later.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 93 2 1 Elizabeth, can we go to number four please?
2 Now, let's look at figure four for an eye-opening
3 variation of figure three. Figure four has the same axes
4 and curves of figure three but with the addition of an N
5 equals one star line at a much steeper slope. There are
6 many situations that produce this steep slope. The most
7 straightforward one is the existence of a motherlode
8 subclass or a digest. Now, note that a motherlode subclass
9 of course is where some examiner has done a lot of hard
10 work and collected four or five, ten shoes, and every piece
11 of pertinent art for a particular subject is in that--
12 COMMISSIONER DICKINSON: You have about five
13 minutes, Mr. Cottone.
14 MR. COTTONE: I'll have to move faster.
15 Note what the N equals one star does for you just
16 over the one and a half hour mark. There is a 95 percent
17 probability of detection and that this is almost exactly
18 equal to an N equals four search. Just think of that. If
19 you had a motherlode subclass or a well-maintained alpha
20 subclass or digest, you can reasonably expect to find all
21 the best art in well under three hours of search.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 94 2 1 Actually, someplace between one and three hours is where a
2 typical search will probably wrap up.
3 I can see some of the people shaking their heads
4 saying, huh, motherlode subclass, you must be dreaming. My
5 answer is, well, they do exist thanks to the hard work of
6 some conscientious examiner, for example, Examiner Weistock
7 who made a motherlode subclass in the solar art. He saved
8 countless, thousands of searching hours. When they do
9 exist, they are powerful tools.
10 The second part of my answer is that the dollar
11 cost for making good motherlode sub classes and digests is
12 a minute fraction of the costs for bigger, faster, and more
13 finicky online search systems. I think the ratio could be
14 as high as 100 to 1. That is for every one dollar spent on
15 making up and maintaining a good small subclass, the
16 automation people would probably send $100, coming up with
17 an equally effective search medium. This goes also for
18 putting paper copies of the foreign art in publications in
19 the shoes. I think it's extremely cost effective.
20 Finally let's look at figure five. For a quick-
21 look summary of the main factors that go into a searcher's
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 95 2 1 decision on how to approach a particular search for the
2 purpose of finding the best prior art in the shortest time,
3 all serious searchers are already familiar with most of
4 these factors and the relative ways shown are those that
5 reflect my personal experience, but it is really clear that
6 the existence of a few good clear and unambiguous key words
7 will bias a decision in favor of doing an online search
8 first and then using the other searching tools as a back up.
9 So we want to continue to do N equals four or at
10 least N equals two or three, but let's get to the meat
11 first and use the other remaining time as back up and
12 insurance. Equally clear is the existence of a motherlode
13 subclass wherever one exists or an examiner suggests one.
14 That would be the manual search area to cover first. This
15 is as suggested in the N equals one star line on figure
16 four.
17 The more or less secondary factors also play a
18 role for each art unit and distinct technology. These
19 secondary factors are greater weights than those suggested
20 here. For example, in biotech, you certainly don't want to
21 look for a motherlode subclass or a short well-defined
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 96 2 1 field. You want to get to the key words, especially for
2 sequences and so forth. So there are some art units where
3 you almost have to do certain types of searches.
4 In view of these ideas on how to do a time
5 optimum search, some general observations and conclusions
6 are now reasonable to make. First, it is reasonable to
7 conclude that there is a silent shootout going on in the
8 PTO patent searching. This shootout is just as serious as
9 those that went on in the frontier towns of the wild west
10 and are just as potentially fatal to the U.S. patent system
11 as they are to those poor little gunslingers. Even as we
12 talk here this morning, hundreds of patent examiners are
13 voting with their fingers and their key boards on the
14 subject of what type of search to do first and how long to
15 spend on each type of search before going on to the N
16 equals four approach.
17 PTO policies appear to have weighed in on the
18 side of online searching, which is good, but they have also
19 weighed in on the side of the demise of the paper file
20 which is not good. Despite PTO policy, the silent shootout
21 goes on and yet it remains to be seen exactly what the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 97 2 1 outcome will be.
2 A second conclusion, presuming that online
3 searching will assume a significantly larger role in prior
4 art searching as time goes on, it is critically important
5 that the theoretical benefits of online searching, of which
6 there are many actually realized. At the very minimum,
7 much more training time must be provided to the examining
8 corps to make sure that online potential is obtained in a
9 professional and useful manner for patent applicants being
10 examined right now.
11 Equally critical is the necessity for the PTO
12 automation developers to slow down their rate of change so
13 as to get better control of their work product and to take
14 the uncertainty and confusion out of their systems. These
15 three factors, poor training, uncertainty, and confusion on
16 the online systems operate to greatly reduce the potential
17 of the online systems to contribute to better prior art
18 searching.
19 While most of the ideas I presented here and some
20 of the ideas will probably come from other folks who take
21 this table today are directed on how to get the best prior
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 98 2 1 art in the shortest possible time--I need a little
2 extension because I'm getting to my punch line. Bear with
3 me, please. I mean I've done all this hard work. Hang in
4 there.
5 The other side of the issue that is also worthy
6 of some serious thought, I've noticed that the types of
7 patentability searches we are now doing are vastly more
8 complex and time consuming than the patentability of
9 searches we were doing just five or ten years ago. When I
10 first started searching, most of my electronic searches
11 were for devices with only a few system or concept
12 searches. Now most of our electronic searches are for
13 large systems that have to be searched all over the office.
14 For example, try searching multiplex communications and
15 area coding in a cellular telephone system, not to mention
16 the wild internet related technologies.
17 So another reasonable conclusion on how to bring
18 about quality searching so as to maintain the historically
19 good quality of U.S. patents is that the PTO examiners must
20 be given sufficient additional time to counter this trend
21 towards more complexity in their cases they handle every
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 99 2 1 day. Improved search tools by themselves are not enough.
2 Examiners must be given additional time how to best use
3 their new tools efficiently and then apply both online and
4 paper searches to the complex cases at hand without undue
5 haste. This increased complexity factor also calls for
6 additional time per case examined by itself.
7 In wrapping up before taking any questions, I'd
8 like to say that while I've tried hard to put some real
9 numbers on most of the ideas I put forth, the nature of
10 patent searching probably doesn't allow for such
11 mathematical precision. So the graphs shown, especially
12 those on figures three and four, are not the result of
13 textbook-type calculations and instead reflect our best
14 judgment based on many years of hands-on patent searching.
15 I would look forward to sharing these ideas and
16 numbers with any PTO folks who might like to replicate some
17 of our search result evaluations and statistics. And
18 finally, I want to thank PTO officials who set up this
19 badly needed initiative and for giving me an opportunity to
20 speak, and I hope I've made a sensible contribution.
21 I'll take any questions.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 100 2 1 COMMISSIONER DICKINSON: Thank you, Mr. Cattone.
2 Assistant Commissioner Godici.
3 COMMISSIONER GODICI: Just a quick question, Mr.
4 Cottone. One of your charts showed the combination--I
5 think you called it N-4 or N equals four combination of
6 paper searching and APS and so on and so forth in about
7 three or four hours kind of reached a peak there.
8 MR. COTTONE: Yes, sir.
9 COMMISSIONER GODICI: And therefore that would
10 suggest that if we at the PTO use a multiplicity of tools
11 and spent that length of time, we'd get to that point, but
12 yet you mention in your conclusion that we need to devote
13 more time to searching, and I don't quite understand the
14 dichotomy there.
15 MR. COTTONE: Okay. There is a dichotomy.
16 You're right. The numbers we've shown here are averages.
17 The curves we show here are trends. Every individual case
18 of course has got to be treated on its own merits, and I am
19 not--the graphs don't say that search three hours and
20 you've got a .94 probability, you quit and go home. The
21 graphs say on average it's going to take three hours,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 101 2 1 average over several hundred 102s. It may take--one
2 particular case, you may have to take six, eight, or ten
3 hours, and so the first item is they must have--examiners
4 must have sufficient time to do a thorough search, despite
5 the fact that they've got all the best tools and some
6 search strategies of how to use those tools best.
7 Okay. The second item is cases are truly
8 becoming more and more complex all the time. So the kind
9 of productivity numbers that were--the kind of productivity
10 numbers that was set for five, ten, fifteen years ago which
11 are still in force really apply--make examiners engage in
12 undue haste. Some of these techniques, I presume a lot of
13 examiners are already using intuitively, and if they're
14 not, I would like to ask them to look at these graphs and
15 see if they can't find a more efficient search technique.
16 COMMISSIONER DICKINSON: Let me ask a follow-up
17 question, Mr. Cattone. There is an additional way to
18 achieve productivity, I think in searching, and that is
19 through the use of automated technology. I think that
20 productivity in the United States generally is increasing
21 as a result of the increased use of automated technologies,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 102 2 1 and we are certainly trying to make sure we exploit those
2 same opportunities here at the PTO. We've initiated and
3 will initiate this month some new search technologies,
4 automated search technologies for our examiners and have
5 recently introduced a system called West, and we'll
6 introduce the new system called East later this month.
7 Do you happen to be familiar with either of those
8 at this point?
9 MR. CATTONE: Yes, I think they're very powerful.
10 I'm not happy that we have exactly the best interface, but
11 I think they're very powerful, and they're moving in--
12 definitely moving in the right direction, but with some
13 reservations on that.
14 COMMISSIONER DICKINSON: I understand. Just also
15 to follow up slightly on Commissioner Godici's point, and
16 it's actually the same question I asked Mr. Jennings
17 earlier, and that concerns the cost implication of
18 additional search time. How would you reconcile that cost
19 implication? Would you support a fee increase?
20 MR. CATTONE: I'd have to think about that. One
21 of the things that fell out of our investigation of these
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 103 2 1 several hundred cases out of several thousand cases--we've
2 picked and scrubbed the cleanest cases we can find--one of
3 the implications that fell out of that was that if you look
4 at, for example, foreign publications, in our search we
5 found 51 102s out of 421 cases. That comes out to be
6 about, I think, 20 percent, something like that.
7 The facts of life are that those foreign--those
8 102s that came out of foreign art and publications were not
9 on the online systems. They were not even in the shoes.
10 They were not even in the paper file. This is truly a
11 statistically independent look. So all of the online
12 searching improvements in the world are going to be held
13 hostage to the different types of searches. Do you want to
14 go into the assignee? Do you want to go into is foreign
15 art and pubs, and the fact that if, for example, only--out
16 of every five cases I put on your desk, one case, the 102
17 is in the foreign art and publications; and we have not yet
18 quite implemented F Pass, which is a disaster, and I don't
19 know how well West and East handled what used to be F Pass,
20 every fifth patent issued you're going to get blind sided.
21 So the fact that a particular search type has a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 104 2 1 low productivity does not mean you shouldn't do it. You've
2 got to do it. It just means you pick your sequence right
3 so you get to the best art at the three-hour point and not
4 at the 30-hour point.
5 COMMISSIONER DICKINSON: Okay. Any other
6 questions from the panel?
7 MR. CATTONE: Does that answer your question?
8 COMMISSIONER DICKINSON: It does. Thank you very
9 much. Mr. Kunin.
10 COMMISSIONER DICKINSON: Thank you, Mr. Cattone
11 for your testimony. We found this to be quite interesting.
12 MR. KUNIN: I had a question. It appears that
13 the information that you provided is certainly--it's not
14 necessarily clear in terms of the spectrum of the
15 technologies covered. The question that I have is from
16 your experience in terms of technology sensitivity, if you
17 were to look at, for example, the growth in the internet
18 technologies, business software, business methods types of
19 cases, do you have any different views with respect to what
20 your charts might look like?
21 MR. CATTONE: Absolutely, yes. That's a good
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 105 2 1 observations, Steve. As it turns out, aggregate numbers
2 give you fairly good general rules. Each case, though, has
3 got to be handled separately, and as I--in a given day, as
4 you probably remember when you were a SPE or a primary, in
5 a given day, I probably talk to five or ten examiners and
6 probably in half a dozen art units, and each one of these
7 art units is a different patent office sometimes. I mean
8 they have different problems. They have different
9 technologies, and now the internet technologies--so to
10 answer your basic question which was which technologies are
11 represented in these graphs, I'd like to just put a caveat
12 saying I don't do any chemical work. So all of these
13 graphs represent both electrical and mechanical.
14 Now, the chemical work would be altogether
15 different. As I say, when you go into some of these
16 chemical art units, it's like walking into China for me,
17 that is I don't understand even what the breakouts mean,
18 and therefore it is clear that the search techniques are
19 going to be different to reflect the realities of each
20 different art unit, not only how the group director wants
21 to run his show but also how the technology is broken out
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 106 2 1 and how the technology is examined.
2 So I think I answered the second part of your
3 question which is, first, these aggregates are just
4 mechanical and electrical, not chemical and certainly not
5 biotech because they are several years old; and, second, on
6 an art-unit-by-art-unit basis or let's say on a technology-
7 center-by-center basis, these charts will move all kinds of
8 different ways, and what we see here is merely an aggregate
9 of the several technologies that I engage in. Did I get
10 your question, Steve?
11 MR. KUNIN: Yes.
12 COMMISSIONER DICKINSON: Thank you, sir.
13 MR. CATTONE: Thank you, gentlemen.
14 7. JOSEPH LAUGHON
15 COMMISSIONER DICKINSON: The next speaker I have
16 is Joseph Laughon. Mr. Laughon is a partner in Rogers &
17 Wells and I understand is representing the Securities
18 Industry Association today.
19 MR. LAUGHON: Good morning. As you observed, I'm
20 here to offer the comments and some brief suggestions of
21 the Securities Industry Association, which I'll refer to as
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 107 2 1 the SIA, concerning locating prior art in connection with
2 the examination of patents.
3 I thank you all on behalf of the SIA for the
4 opportunity to speak here this morning. I will tell you up
5 front that my comments will not be as extensive as some of
6 my predecessors, and as an aside, I'd like to mention that
7 I worked with my friend and acquaintance, Mr. Gambrell, in
8 patent litigations in which he served as my expert, and he
9 assured me during the break that his war story was not
10 referring to any of our experiences we've had with him.
11 I'd like to briefly explain the reasons for the
12 SIA's interest in this area which I can tell you is
13 significant. The SIA was established in 1972 through the
14 merger of two previous associations that dated back to 1912
15 and 1913, respectively. As the name implies, the SIA
16 represents the common interest of nearly 750 security firms
17 including investment banks, broker-dealers, and mutual fund
18 companies. Member firms are active in all U.S. and foreign
19 markets and in all phases of corporate and public finance.
20 The U.S. securities industry alone manages the
21 accounts of scores of millions of investors, both directly
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 108 2 1 and indirectly. Yearly revenues exceed $300 billion, and
2 it employs, the industry itself, over 600,000 people. As
3 the panel is doubtlessly aware, there is an increasing
4 number of patents being issued that claim financial
5 products and services, business methods, electronic trading
6 techniques.
7 In short, the very sort of financial engineering,
8 if you will, involved in the every day activities of the
9 SIA members. Not unexpectedly and particularly lately,
10 litigation involving such patents is on a significant
11 uptick. The impact of this litigation that is really now
12 just getting underway in earnest on the member firms of the
13 SIA and on these countless millions of individual investors
14 will be very significant as well as have a significance on
15 the U.S. economy as a whole.
16 While the SIA and its individual members have a
17 number of individual issues they are considering in this
18 whole area of patents for financial engineering products, I
19 believe that I can safely say that the SIA shares a
20 fundamental goal of the patent office, and that's uniformly
21 throughout the membership, and that is ensuring a thorough
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 109 2 1 examination of applications against the prior art so that
2 patents that do issue are valid and claim inventions that
3 are truly novel and are non-obvious.
4 The securities industry is extraordinarily
5 innovative in financial engineering. Indeed, innovation
6 and creativity are the life blood of the member firms of
7 the SIA. Without that, they're stymied. They wither and
8 die, and while patents in the financial area are not new
9 and look back to, for example, the CMA patents back in the
10 early eighties now, the pace of these patents I believe is
11 vastly accelerated, thus I believe it's not inappropriate
12 to characterize patents in this area as an emerging
13 technology which the patent office has referred to in its
14 notice requesting these hearings.
15 Complicating the issue further is the fact that
16 the terminology used in some of these financial engineering
17 products is not uniform among the industry which
18 exacerbates the problems of searching for prior art.
19 Complicating the issue further is the fact that
20 historically many firms in the securities field really kept
21 their financial engineering products proprietary and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 110 2 1 internal, and it's just not available to be searched by the
2 patent office. Even that which is published by the
3 individual members or by trade association magazines is not
4 necessarily readily available to the patent office, nor is
5 it adequately cataloged to be of much use in searching.
6 The SIA has considered this, and I'll be honest
7 with you, it's a new thing, and some of their views are not
8 complete yet, but everything is on the table, but I think
9 there are some things that there is a consensus on within
10 the SIA and its individual members that I'd like to bring
11 to your attention today. I understand from some comments
12 made at the previous hearing in June that the patent office
13 is reviving the practice of sending examiners out to
14 Silicon Valley to talk with the technical hands-on people
15 to better understand what's going on and what's being
16 developed. The SIA thinks that's a great idea, and the SIA
17 is actively working to put together a similar visitation
18 program for the examiners, if it's acceptable to the
19 office, to its members or to joint associations, if you
20 will, that have been put together for this purpose.
21 I think the educational benefits would be
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 111 2 1 tremendous for the examiners, and I think apropos to some
2 of the earlier comments, the education would increase
3 efficiencies in searches that in the long run could review
4 costs offsetting the cost of the visit.
5 Also under active consideration of the SIA is
6 providing industry experts in the field to come out and to
7 educate and talk to and receive questions from the
8 appropriate portions of the examiner corps, the art units,
9 and look at these sorts of I'll call them financial
10 engineering patents for short hand.
11 To the extent it does not already occur, the SIA
12 would respectfully suggest that the more senior examiners
13 who have had experience in this area conduct round table
14 discussions internally with the more junior examiners as
15 they come in to teach them efficiencies, to impart some
16 knowledge on financial instruments and products that are
17 patented. It's internal sharing of information where
18 experience could filter down more rapidly within the patent
19 office itself, and the SIA considers that to be a good idea.
20 For its part, the SIA, as I have alluded to, is
21 taking steps to address the availability and accessibility
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 112 2 1 of prior art in this field. Now under consideration is an
2 SIA web page which would accumulate information from its
3 myriad members. We'll have to figure out of to index it
4 and make it accessible and more useful, which the SIA will
5 be more than willing to make electronically available to
6 the patent office. We understand there is some merging to
7 be done and some training to be done, but given the girth
8 of art in this field, but for the increasing number of
9 issued patents, we think this would be a good idea.
10 This contemplated web page and data base would
11 include technical disclosures and publications in the
12 pertinent fields as well as any information that an
13 individual member or members wish to put in the data base
14 that it did not want to maintain has proprietary product.
15 It's a little different way of thinking about things from
16 last week or last year, but given what's going on in the
17 patent field, the acceleration of change in the thinking is
18 pretty significant within this industry. The program, it
19 would also consider something like technical disclosure
20 bulletins that IBM has long been doing, and that is a very
21 good source of prior art that is frequently cited by the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 113 2 1 examiners in examining applications.
2 Now I'd like to turn to a few suggestions that
3 the SIA respectfully requests the patent office itself to
4 consider. In generic terms, the SIA believes it would be a
5 good idea to create a patent office task force to consider
6 different measurements of an examiner's performance. For
7 example, there would be extra recognition and advancement
8 for pay for thorough examinations. There could possibly be
9 less emphasis to the extent it exists on volume of
10 applications handled.
11 There is the possibility, given the fact that
12 there are some senior examiners in this field that I've
13 alluded to earlier, that there could be, in appropriate
14 instances, a second review process, if you will, where the
15 primary examiner has gone as far as he or she can, and if
16 the patent itself appears to claim a very broad invention,
17 then perhaps a more senior examiner with a little better
18 knowledge of the prior art could briefly review it.
19 The studies that Mr. Gambrell referred to
20 earlier, District Court decisions versus patents issued out
21 of the patent office and the discrepancies in the prior art
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 114 2 1 uncovered, could be a good measuring stick in assessing the
2 thoroughness for example of an examiner's evaluation of
3 prior art if those studies were done.
4 Another general comment would be for the patent
5 office to be receptive to public feedback about issued
6 patents, and I don't mean formal feedback by way of re-
7 exam, etc. I have in mind more of industry feedback, and I
8 refer, for example, to the Compton's New Media patent of a
9 few years ago which when it came out of the patent office
10 everybody in that field looked at each other and said wait
11 a minute. We've been doing this for years. And the patent
12 office did the right thing in that instance, and I think in
13 the area of financial engineering, there would be a
14 tremendous opportunity for similar situations to arise when
15 broad patents issue that the industry recognizes has been
16 going on without patent protection for years. This would
17 avoid the need, obviously, for an individual or a
18 particular firm to institute a formal re-examination with
19 all the risks that entails for that firm as well as the
20 expense.
21 Another, and near the end of my general
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 115 2 1 suggestions would be the thought of publishing all
2 applications after 18 months, not just--I realize that is a
3 controversial topic, and I realize it's addressed in part
4 in H.R. 1907, but if such a procedure--and it would require
5 legislation. If such a procedure were adopted from a prior
6 art point of view, number one, it would make more art
7 available to the entire examiner corps; and number two, it
8 would give a quick notice to the industry who could start
9 this public outcry procedure, if you will, to avoid a
10 blockbuster industry blocking patent coming out and
11 shutting down an entire exchange for example. It would not
12 have a good effect on the economy.
13 The office may consider using--making more use of
14 the formal public protest procedure in 37 CFR section 129,
15 assuming it's still available after H.R. 1907 wins its way
16 through Congress. This would tie into the 18-month notion
17 to let people input information and know what's out there
18 and what's going to issue.
19 Finally, I would suggest a consideration of
20 hiring more examiners with special expertise in the
21 financial services field, and I know that's a big order,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 116 2 1 and I know that the patent office is in competition with
2 private industry, but whatever ways the office saw fit to
3 try to institute such a program, I believe it would
4 represent an enormous improvement on the timely, efficient,
5 and cost effective examination of patents in this area, but
6 more importantly I think it would serve a public interest
7 in that it would lessen the possibility of improvidently
8 granted patents coming out and wreaking havoc in the
9 financial services industry.
10 In conclusion, I wanted to emphasize the
11 extraordinary interest of the SIA in this field and to
12 point out that we are just starting out on this road. We
13 will have other ideas and other views that we would love to
14 present in the appropriate forums. I want to also
15 emphasize its willingness and its eagerness to
16 constructively cooperate with the patent office to address
17 some of these concerns, including expending its own
18 resources and time because it's in its interest to do so.
19 In sum, I believe the SIA's interest in the
20 patent offices are coextensive, and I think we both are
21 respectful of the patent system but very much want the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 117 2 1 patents that do come through the office to be valid at the
2 end of the day and to be deserving of the limited and
3 recognized monopoly that they confer. On behalf of the
4 SIA, I'd like to thank you again for permitting us to
5 testify this morning, and to the extent there are any
6 questions, I'd be happy to try to respond even if not
7 answer.
8 COMMISSIONER DICKINSON: Thank you very much, Mr.
9 Laughon. That was very interesting and very informative
10 testimony. We appreciate it.
11 Are there questions from the panel? Mr. Kunin.
12 MR. KUNIN: Thank you, Mr. Laughon, for your very
13 thorough treatment and I think very helpful suggestions. I
14 do have two questions. The first is recently the Patent
15 and Trademark Office published its final version of its
16 internet usage policy. In going back to your suggestion
17 with respect to providing access a SIA-created web base
18 searchable data base of financial management software, a
19 couple of aspects with respect to our policy I would like
20 for you to perhaps think about or at least comment on.
21 The first has to do with essentially the fact
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 118 2 1 that searching over the internet is not essentially a
2 secure medium, and that's not insolvable because we have
3 the experience with some of the commercial data base
4 providers, for example the chemical abstract service, that
5 have actually a way by which we can do a security
6 communication to their web site.
7 So that's one type of thing for consideration
8 which perhaps you could comment on, and the other has to do
9 with ensuring the privacy of our searches, namely, you
10 know, should you establish such a data base, we would
11 require basically that there would be no way for you to be,
12 you know, watching what was searched and keeping records of
13 that from a privacy perspective and, once again, in terms
14 of our Section 122 obligation. So that's the first sort of
15 an area that I would like if, perhaps, you could comment on.
16 MR. LAUGHON: I'd be happy to. I have--in my
17 private representative capacity as a patent lawyer, I have
18 worked with a number of the individual firms in the SIA and
19 have first-hand knowledge of the extraordinarily cutting
20 edge technology that they develop on almost a daily basis,
21 and I can assure you that whatever the patent office would
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 119 2 1 require in terms of privacy that you're required to
2 maintain and in making your access secure to the data base,
3 to the extent it would encourage the patent office's use of
4 that data base, it would be no problem.
5 MR. KUNIN: And the second question I have is
6 probably a more provocative question.
7 MR. LAUGHON: Which I may not have the authority
8 to answer.
9 MR. KUNIN: Under the current statutory regime of
10 Section 122, there is actually in the language of the
11 statute a provision which essentially empowers the
12 commissioner to make special determinations with respect to
13 publication. If, for example, we were to look at those
14 applications that involved the technologies which SIA is
15 very interested in, and for example those could be
16 identified by, let's say class, subclass, or whatever
17 mechanism that could be identified, apart from having to go
18 through 1907, would SIA support some kind of exercise of
19 commissioner authority under Section 122 to provide special
20 publication treatment to address this problem?
21 MR. LAUGHON: Well, let me answer first by saying
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 120 2 1 this particular issue has not been considered by the SIA,
2 and I don't dare to speak on its behalf, but I will comment
3 as follows: It is--such a procedure would be totally
4 consistent with the position I was authorized to take this
5 morning which is a universal 18-month publication. So I
6 would suspect that the SIA would conclude that it was in
7 their interest to follow such a procedure by the
8 commissioner under 122.
9 COMMISSIONER DICKINSON: Other questions? Mr.
10 Drost.
11 MR. DROST: You spoke about the PTO should be
12 more receptive to public feedback on patents, and you said
13 that there are risks in using the formal re-exam process.
14 The downside of the public feedback is oftentimes I find
15 that it's very easy for people to look through the OG and
16 say this is obvious. It's another thing to come up with a
17 piece of prior art that says this knocks the patent out.
18 So there's a benefit to the formal re-exam process where,
19 generally speaking, someone will sit down and tell us
20 exactly why a patent should be invalid. It's a very
21 positive way to go about reviewing patents that have
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 121 2 1 already issued.
2 Can you tell me what are the risks in the present
3 system--you can file it anonymously, and through law firms,
4 but what are the risks? Why isn't this being used?
5 There's a lot of criticism about what we do, but there is--
6 a lot of this doesn't translate into action.
7 MR. LAUGHON: I'm happy to respond to that, and I
8 think this may be my personal views, but I think it would
9 probably be reflective--if the SIA had considered it, it
10 would be their views too. The risk I allude to is,
11 obviously, even though it's anonymous, you are under the
12 current law commencing a proceeding that once it's
13 determined that a substantial new issue of patentability
14 has been shown, it's kind of out of the requestor's hands,
15 and the patentee is going to get the last word and the last
16 say, and once you've had a patent re-examined in which the
17 best prior art you can come with has essentially been
18 insulated, you're in a big hole if litigation commences;
19 and I recognize that the ex parte essentially nature of re-
20 exam under the current law is proposed to be changed under
21 1907.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 122 2 1 With respect to your first comment that the re-
2 exam procedure is more orderly, I completely agree. I
3 think the public feedback, the commissioner would have to
4 exercise his or her discretion if the uproar is loud
5 enough, and it would be more than just saying this is
6 obvious. I suspect that the news media, when they
7 interview the people who are complaining the most, would
8 refer to some internal documents, and I suspect that the
9 people who are complaining loudest would be more than
10 willing to submit this to the commissioner. It would only
11 be in extraordinary cases.
12 For the example that I gave too in my prepared
13 comments, I don't suggest that to be routine. I know it's
14 a burden on the office, but there are some patents that
15 issue, and I'm aware of a couple out there now that are so
16 tremendously broad in the financial services area and that
17 are directed to things that I know have been going on for
18 years that in those extraordinary situations it's
19 impossible that it would be appropriate to listen to the
20 public feedback as I alluded to earlier. Not routine,
21 extraordinary situations.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 123 2 1 COMMISSIONER DICKINSON: I have some follow up to
2 that question. One of the patents you cited, the Compton's
3 New Media patent, was placed in re-exam through the
4 commission-ordered re-exam proceeding, and that was done, I
5 think, as a function for the outcry--in part as a function
6 of the outcry that arose from the industry. Would you or
7 the industry support consideration of an expansion of the
8 commissioner's order of the re-exam procedure--we issue
9 probably three or four a year. We request about three or
10 four a year--to provide for some more opportunities
11 consistent with your testimony today?
12 MR. LAUGHON: Let me say, Commissioner, that I
13 don't have full authority to give the SIA's answer, but,
14 again as before, I'll give you what I think their answer
15 would be had they fully considered it. I think the answer
16 would be yes, and I think that an answer would be yes
17 because I truly believe this is an emerging technology and
18 that it's new fertile fields for the office, and they do
19 not have yet the best prior art.
20 It's not a fault of the office. It's a fault of
21 the historical practice of the industry itself, and when
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 124 2 1 they know this art, the industry knows this art so well and
2 can document it, has it down and can do a field trip and
3 can show you where it's been going on for ten years before
4 the application was filed, then yes, I believe that the
5 SIA, when they consider that question, would say they would
6 support an expansion of that by the commissioner.
7 COMMISSIONER DICKINSON: Thank you. Any other
8 questions from the panel?
9 [No response.]
10 COMMISSIONER DICKINSON: Thank you. Fascinating
11 testimony.
12 MR. LAUGHON: You're welcome.
13 COMMISSIONER DICKINSON: Our next witness is
14 again an individual who is no stranger to the Patent and
15 Trademark Office, one of our great friends, Greg Maier,
16 also from the Oblon, Spivak firm who is the--I understand
17 the section chair now.
18 MR. MAIER: Chair elect.
19 COMMISSIONER DICKINSON: Chair elect. Thank you.
20 Of the American Bar Association Section on Intellectual
21 Property Law.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 125 2 1 8. GREGORY J. MAIER
2 MR. MAIER: We certainly want to thank you,
3 Commissioner Dickinson and the leadership of the patent
4 office for conducting this hearing and offering us the
5 opportunity to comment. I am Greg Maier, as you've said,
6 chair elect of the ABA Section of Intellectual Property
7 Law. The views that I am going to present represent the
8 views of the Section of Intellectual Property Law. They
9 have not been considered or approved by the House of
10 Delegates or Board of Governors of the American Bar
11 Association and accordingly should not be construed as
12 representing the position of the overall American Bar
13 Association.
14 The Section of Intellectual Property Law with its
15 more than 17,000 members is the world's largest
16 organization of intellectual property practitioners and has
17 sought to provide leadership in the intellectual property
18 bar since its inception in 1894. Consistent with its
19 normal deliberative process, the section has developed a
20 response to the PTO's requests for comments on issues
21 relating to the identification of prior art during the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 126 2 1 examination of a patent application.
2 The section's response was initially drafted and
3 voted on by two of its acting--committees acting together,
4 then approved by the section council for submission to the
5 PTO consistent with ABA policy. The written statement
6 containing the details of the section's position will be
7 submitted before the deadline for such submissions. My
8 remarks today are intended as a brief summary of the
9 section's position, and any inconsistency between my
10 remarks and the written statement to be submitted by the
11 section should be resolved in favor of that statement.
12 The PTO's request for information implies that
13 members of the public do not feel the PTO is doing its job
14 properly. The section does not agree with that general
15 assumption. The general position on the workings of the
16 PTO should be based on reliable data obtained by studies of
17 court cases, re-examination records, or other information,
18 not on comments by a few outspoken practitioners or even on
19 isolated instances in which the pertinent prior art was not
20 properly cited or applied.
21 The section realizes that PTO examiners are
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 127 2 1 allowed only a limited time to search each claimed
2 invention and that limited searching time will be reflected
3 to some extent in the quality of the patents issued. The
4 section is not aware of reliable data that indicates a
5 general failure on the part of examiners of the U.S. PTO to
6 consider the most pertinent prior art during examination of
7 applications.
8 Many of the questions in the request for comment
9 focus on the acts of patent applicants, particularly
10 regarding conducting patentability searches before filing
11 patent applications and on disclosing the results of those
12 searches to the PTO. In addressing these questions, the
13 section wishes to make two points. First, patentability
14 searching before filing is in our view a purely
15 discretionary activity that varies by applicant throughout
16 the world based on such factors as cost, filing deadlines,
17 and presumed knowledge of the prior art. The section is
18 not aware of any comprehensive study that has been
19 conducted on patentability searching, but it believes that
20 there is generally no agreed upon patentability searching
21 policy among applicants. Beyond that, we cannot comment
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 128 2 1 with certainty.
2 Second, on the issue of disclosure of known prior
3 art to the PTO, the section views this issue in the context
4 of all applicable law and does not limit its consideration
5 solely to the prosecution of patent applications as we
6 assume the PTO does. In other words, we're looking at the
7 issue of patents straight through the litigation process.
8 The U.S. law on the duty of disclosure to the
9 U.S. PTO is unquestionably the harshest and most
10 unforgiving law of its kind in the world. The U.S.
11 practitioner who intentionally fails to disclose
12 information known to him to be material to the examination
13 of a pending application faces both unlimited financial
14 limit and loss of his license to practice, not to speak of
15 loss of his client and his reputation in the community, and
16 as a result, the patent practitioner has extremely strong
17 incentives to fully disclose any material information of
18 which he is aware to the U.S. PTO. The practitioner has no
19 incentive to conceal relevant information the PTO because
20 every practitioner is well aware that any such action would
21 as a minimum render the resulting patent fully
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 129 2 1 unenforceable and thus useless to his client.
2 It is the position of the section that the burden
3 placed on practitioners to fully disclose information to
4 the U.S. PTO has already been maximized. It is
5 unproductive to try to squeeze blood from a stone or any
6 more prior art from patent applicants either directly or
7 through their representatives.
8 Finally, it is respectfully submitted that the
9 question in the request for comment as to whether
10 applicants should be required to conduct prior art searches
11 before filing fails to take into account a basic principle
12 of the larger patent law, namely that any action or
13 assertion made by an applicant can and will be used against
14 him in a court of law. If an applicant were to assert that
15 a prior art search was conducted, and if a pertinent
16 reference or searching area were inadvertently overlooked,
17 the applicant would surely be accused of attempting to
18 mislead the PTO as to the thoroughness of his search or
19 with an intentional failure to fully disclose--to fully
20 search for and disclose information. The result would be
21 damaging to the patent system by providing yet further
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 130 2 1 grounds for holding valuable patents invalid or
2 unenforceable in court.
3 In contrast there is no liability attached to
4 searches conducted by patent examiners. This fact,
5 together with the fact that the applicant is already fully
6 burdened by his onerous duty of disclosure suggests that
7 the patent system is best served if the PTO, as the
8 government agency charged with responsibility of issuing
9 valid patents, focuses on enhancing the quality of its own
10 searches.
11 The specific steps that the section recommends to
12 the PTO in this regard are as follows: one, work more
13 closely with the JPO and EPO to make sure that foreign art
14 is both available to U.S. examiners and properly classified
15 for reliable searching; second, enhance examiner training
16 in rapidly advancing technologies so examiners can better
17 understand the significance of prior art disclosed to them;
18 third, cooperate with industries or other members of the
19 public that are concerned about the quality of PTO
20 searching to seek assistance with examiner training and in
21 providing access to data bases of non-patent literature
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 131 2 1 that would improve the quality of PTO searches.
2 In this regard, I must compliment the SIA for
3 offering suggestions that are truly heading in the right
4 direction and are certainly consistent with the
5 recommendations of the section. I think the SIA and
6 probably other industry associations who perceive
7 themselves to be negatively affected by overly broad
8 patents would be happy to assist the patent office, and
9 certainly the SIA has offered to do so. I think that is
10 truly the right way to go.
11 In closing, on behalf of the ABA Section of
12 Intellectual Property Law, I want to thank the PTO and its
13 leadership for providing us with this opportunity to
14 comment. I also want to assure the PTO that the section
15 stands ready to work with the PTO to take whatever steps it
16 can to assist in improving the patent system; and if there
17 are any questions, I'll be happy to address them.
18 COMMISSIONER DICKINSON: Thank you, Mr. Maier.
19 Mr. Kunin.
20 MR. KUNIN: Thank you, Mr. Maier, for your
21 testimony and your suggestions. I have a question for you
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 132 2 1 which is not really directly related to your three
2 suggestions. It relates to your view with respect to the
3 question of proper claim interpretation as perhaps a
4 foundation for knowing where to search and basically
5 recognizing what the claim covers and then finding the
6 prior art that relates to what the properly interpreted
7 claim language is.
8 Do you have any comments with respect to your own
9 views or the views of the section with respect to how well
10 you perceive the examiners are properly interpreting claims
11 for search and examination?
12 MR. MAIER: I would say first that we have not
13 addressed that specific issue. We have not studied the
14 manner in which examiners are interpreting claims. So I
15 feel that the ABA has not taken a position on that. I
16 personally feel that a problem in some of the emerging
17 technologies is simply that the examiners may not be aware
18 or to understand enough of some of the new technology to
19 fully understand what is comprehended or what is covered by
20 certain claim terminology.
21 I don't think it's so much a question of
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 133 2 1 interpreting the claims as interpreting the prior art
2 that's available, and then I think it could be improved by
3 educational opportunities exactly of the type that the SIA
4 recommended, that examiners be coached a bit in some of the
5 newer technologies and then will understand exactly what
6 the claim terms would cover.
7 COMMISSIONER DICKINSON: We received testimony
8 and also got additional information informally. Much of it
9 I think is fairly characterized as anecdotal, but generally
10 premised on information like the number of citations on the
11 face of the patent. The Rule 56 obligation is not being
12 complied with uniformly or maybe even broadly.
13 You have addressed Rule 56 in your testimony
14 specifically. Would you care to comment on that kind of
15 information which we have been receiving? I would note,
16 though, for the record, that we have done a study, and the
17 average patent cites about ten U.S. patents and four or
18 five foreign patents on the face of it.
19 MR. MAIER: As I understand your question, I
20 would say there's two aspects. First of all, to the best
21 of my knowledge, the members of the Section of Intellectual
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 134 2 1 Property Law comply fully with the rules of practice. I
2 believe every attorney that I know or have been associated
3 with certainly believes that he or she is fulfilling
4 completely his obligation to disclose all known information
5 as material to the PTO.
6 We see anecdotal situations in which attorneys
7 are, you know, alleged not to have disclosed information.
8 We don't think that is the general rule. We don't think
9 that is common at all. There are a full situations that
10 reach court, and that situation is proven. We don't think
11 it is the general rule.
12 In terms of--let's see. Well, the second part of
13 your question, will you repeat the second part of your
14 question?
15 COMMISSIONER DICKINSON: I think you actually
16 addressed most of my question, is whether you think that
17 the Rule 56--based on the kind of information that we have
18 received, let's called it anecdotal statistical-type
19 information, in your experience would that suggest a
20 failure to comply with Rule 56. I think you've primarily
21 answered that.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 135 2 1 MR. MAIER: The other point that I was going to
2 make is that you're sort of between a rock and a hard
3 place. On the one hand, you want full disclosure. On the
4 other hand, you don't want too much disclosure, and the
5 implication seems to be that the ideal would be for the
6 applicant to write an application and then deliver some
7 prior art and then reject the application and then respond
8 to that without being worked on by the patent office. It's
9 not possible to do that.
10 The other thing that I would like to mention is
11 that although the patent office does not draw any
12 distinction between the different applications, in the real
13 world, there's an enormous distinction among applications.
14 The rules that you have work perfectly for a private
15 inventor or a small law firm that's got one or two
16 applications. No problem. You can disclose all the
17 related applications, disclose all the prior art. One
18 attorney or maybe two know everything.
19 They don't work when you're deal with a huge
20 organization or a huge organization working through a group
21 of huge law firms that have an international technology
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 136 2 1 market and are trying to get patents to cover their
2 situation. Nobody, no one individual knows everything. A
3 company might have research activities going on in four or
4 five different countries, and while the executives and
5 department heads try to accumulate the information, nobody
6 knows absolutely everything, and in a situation like that,
7 the rules don't work very well.
8 If you then--if you, on top of the existing
9 rules, recommend further rules requiring more information,
10 you're going to find that applicants will have to disclose
11 everything. They will wind up delivering tons of
12 information to you to meet the rules. Now you're not going
13 to be happy with that. You're going to say, well, you're
14 delivering too much information. Sometimes that is the
15 only way to do it. You have to deliver all the information
16 called for by the rules, and as I say, the real problem is
17 that not all patent applications and not all applicants are
18 the same and some are radically different from others.
19 The world technology that's going to be marketed
20 and has, you know, millions of dollars of research,
21 applications filed in every country is going to have a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 137 2 1 different disclosure problem than, you know, just as a
2 private inventor that invents, you know, something locally
3 and the rules don't account for that. They don't
4 accommodate that. I don't know. I don't have a
5 recommended solution. I'm just pointing out that is one of
6 the problems, and so as the earlier witnesses mentioned,
7 sometimes when you propose changes in the rules, you wind
8 up with result that is are unanticipated, mainly because
9 the rules don't really apply equally because the situations
10 that they apply to are not the same.
11 COMMISSIONER DICKINSON: I have a final question.
12 You addressed in your testimony the incentives, I presume
13 under Rule 56 for your members to make full disclosure to
14 us because the downside of not doing that is, to
15 characterize your testimony, I think rather extraordinary
16 and very potentially damaging to the attorney's reputation
17 and livelihood, however there's often a circumstance when
18 obviously the client has to communicate information to the
19 attorney, however, and there obviously could arise a
20 situation in which the client does not communicate that
21 information to the attorney, the prior art information, the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 138 2 1 materiality of it and that there may be a disconnect.
2 The applicant has a rather substantial downside
3 to not disclosing as well but not nearly as much perhaps as
4 the attorney. Should there be a requirement that attorneys
5 inquire of their clients about prior art of which they're
6 aware, and material? Most, I assume do, but should there
7 be a requirement that they do to try to enhance that
8 obligation?
9 MR. MAIER: Well, two things, two parts of the
10 answer. One is generally speaking when you're dealing with
11 law, you can never simplify it. You can only make it more
12 complicated, and as Commissioner Mossinghoff testified
13 earlier, every rule you add is going to reduce the number
14 of valid patents, the percentage of valid patents because
15 it's going to provide an opportunity to question what was
16 done.
17 Secondly, every time you add a rule, it always
18 winds up being looked at in an ex post facto way by the
19 courts. In other words, you put the rule in effect
20 tomorrow. The day after that a patent which was issued ten
21 years ago goes to court, and the question is, well, now we
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 139 2 1 have this rule, did you follow the rule. Well, you
2 couldn't have followed the rule because it didn't exist
3 then, but yet the courts take into account patent office
4 policy as the way things should be done.
5 So the rules always create a problem, but
6 secondly, applicants, that is companies, industries all
7 over the world are looking at their patents much more
8 seriously now than they ever did as major, you know,
9 financial assets, as corporate assets. We are in the
10 knowledge economy. Today knowledge is the feed stock of
11 industry, and the only way that you can own or control now
12 is through patents.
13 So people know that, and they know that their
14 patents aren't going to be worth anything unless they're
15 forthright in disclosing information in the patent office.
16 Certainly, again speaking as a practitioner, this is the
17 first thing we do in talking to a big company. We say
18 look, you want stronger patents. The one single thing that
19 you can do to make your patents stronger and more effective
20 is to disclose everything to the patent office. That is
21 the simplest and most effective step that you could
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 140 2 1 possibly take, and I think people realize that. I don't
2 think that you have a situation--at least in the--I suppose
3 there's some, you know, companies in the backwoods of some
4 obscure country that maybe don't follow the rules, but I
5 think the world's main industrial companies that rely on
6 patents pretty well know exactly what the U.S. Patent
7 Office demands and understands the importance of disclosing
8 information.
9 I'm not sure that no matter what you say in terms
10 of new rules you can come up with anything better than is
11 already on the books and anything more effective either.
12 COMMISSIONER DICKINSON: I appreciate that.
13 Any further questions?
14 [No response.]
15 COMMISSIONER DICKINSON: Hearing none, thank you
16 very much. I appreciate the testimony.
17 9. CHARLES E. VAN HORN
18 COMMISSIONER DICKINSON: We will next hear from
19 Charles E. Van Horn. Again, I'm a bit of a broken record
20 today, but another great friend of the Patent and Trademark
21 Office and an individual with a long-standing personal
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 141 2 1 relationship here, and we're pleased to see him back here
2 today.
3 MR. VAN HORN: Thank you very much, Commissioner
4 Dickinson. I'm here today on behalf of Intellectual
5 Property Owners which is a trade association whose members
6 own patents, trademarks, copyrights, and trade secrets.
7 Our members file about 30 percent of the patent
8 applications that originate with U.S. inventors.
9 I'm going to address today the 10 questions that
10 you have thrown out and provide a general response for IPO
11 members. It's very difficult for us to assess the
12 difficulty or whether the most pertinent prior art is cited
13 in patents. Clearly, there are situations that we learn
14 about either through the citations and counterpart foreign
15 applications, validity studies, litigation, examination in
16 related applications that would demonstrate that the most
17 relevant prior art is not of record.
18 Clearly, some of the PTO statistics from quality
19 review would indicate that that's not the case. Seventy-
20 five percent of the re-examination certificates at issue
21 indicate that some claim is changed in some way in each of
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 142 2 1 those re-examinations. So there is certainly some data to
2 suggest that there are changes. The most pertinent prior
3 art is not of record. The extent to which that problem
4 exists however, really requires some type of study which
5 has been suggested before.
6 For the most part, I think applicants--moving on
7 to number two--do submit the most relevant prior art that
8 they are aware of, and although there are reported
9 decisions which would demonstrate that some people
10 intentionally do not submit the art that they're aware of,
11 that situation is generally rare. Certainly, it is more
12 frequently that they are charged with some type of
13 inequitable conduct that, in fact, they are found to have
14 behaved in an inequitable manner. It is much more likely,
15 we think, that a competitor doing a validity search would
16 find a most pertinent prior art than a patent applicant
17 would not intentionally bring information that they're
18 aware of to the attention of the PTO.
19 It's also a significant and related problem that
20 the most pertinent prior art is not identified by the
21 patent examiner, either in the search or in the information
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 143 2 1 that's brought to the attention of the office by the
2 applicant. This is a problem of training and supervision
3 and indeed the turnover of patent examiners, and they leave
4 before they gain real experience and knowledge of the
5 pertinent art.
6 Moving on to number three, the current rules and
7 procedures that are set forth in the regulations are
8 generally adequate and effective, although I must say I'm
9 not an unbiased observer of that, having had a lot to do
10 with the generation of those regulations, but I think it
11 does provide a fair balance between the need for the office
12 to obtain the most pertinent information early in
13 examination process and the ability of--indeed the burden
14 of the patent applicants to comply with their duty of
15 candor and good faith.
16 We applaud the office for taking a look at these
17 particular procedures, although the last proposal that was
18 offered I believe received some fairly negative comment
19 from the public, but we think one should continue to search
20 for better ways to bring information to the attention of
21 the office.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 144 2 1 One proposal that we would make is the office to
2 reconsider the requirement that the applicant provide, for
3 example, copies of U.S. patents. The reason that that was
4 put in there early on back in 1977 was because it was the
5 best and most effective way to get a copy of U.S. patents
6 before the patent examiner. I'm not sure that's true today
7 with the examiner having the opportunity to get any issued
8 patent, U.S. patent, before them by simply pressing a
9 button at their workstation.
10 We also applaud the office's effort to accelerate
11 its cooperation with other significant examination and
12 search offices as was announced in the May 25, 1999
13 official notice relative to cooperative search exchange
14 between these three significant offices.
15 Whether prior art searches are conducted on a
16 routine basis, I think is largely dependant on the
17 particular individual or organization. Some corporations
18 tell us that they do some type of search in each and every
19 application. The level of that search will highly depend
20 on the particular subject matter, the knowledge and
21 experience of the inventors, and indeed the needs of the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 145 2 1 business at that particular point in time. Others will say
2 they do not do a prior art search before filing an
3 application but are more focused on incremental commercial
4 developments and making sure that they are adequately
5 covered in patent applications.
6 Number five, information disclosure statements
7 are frequently submitted in patent applications. I know
8 the office has done studies in 1986 and 1993 which would
9 suggest that in those particular time frames when those
10 studies were done that information disclosure statements
11 were filed in somewhere between 40 and 60 percent of the
12 applications that were filed. I have not seen any recent
13 effort to assess exactly the frequency with which
14 information disclosure statements are filed at that
15 particular time. However, there is some data to give you
16 some background relative to where we were 20 years ago as
17 opposed to today.
18 Information is brought to the attention of
19 applicants because of our global patent strategy in foreign
20 counterpart applications as a result of validity studies or
21 the result of licensing efforts, and to the extent the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 146 2 1 application is still pending, in my experience this
2 information is brought to the office in a timely way in
3 almost all cases.
4 Moving on to number six and the real first
5 suggestion of the PTO was whether an applicant should be
6 required to conduct a prior art search. This was uniformly
7 greeted as a bad idea and unlikely to provide the kind of
8 information that the PTO is really seeking. The kinds of
9 problems that it would create include what would be an
10 appropriate search. For example, there's a provision under
11 Rule 102 where a petition is filed to make an application
12 special that some type of prior art search be conducted and
13 the results given to the PTO in order to make a case
14 special. In my personal experience, the search that was
15 done oftentimes was inadequate, and the petition was denied
16 because of inadequate search, and so there is a question
17 about what is an adequate search, who is going to monitor
18 whether it's an adequate search.
19 Certainly, a requirement to conduct a search may
20 add a significant cost probably to those who are least able
21 to afford the additional cost, and many applicants do not
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 147 2 1 have the kind of sophisticated search equipment that is
2 present and available to all patent examiners so that
3 they're really going to give you the kind of information
4 that you really want. A searching requirement would create
5 an unnecessary risk to the patent owner and the patent
6 practitioner.
7 There's a case of General Electric Music
8 Corporation where a patent was held to be procured through
9 inequitable conduct a search was not made in compliance
10 with the regulations for a petition to make it special. So
11 there is a risk involved in terms of the enforceability of
12 the patent. What the PTO's likely to get if this
13 requirement is made is a lot of information that is not
14 relevant to patentability. The quality of the search made
15 by the practitioner who is trying to comply with such a
16 rule is likely to vary very greatly.
17 The PTO may, in fact, create new opportunities
18 for former patent examiners and indeed create even greater
19 burdens on the PTO to retain qualified examiners if they're
20 going to start this cottage industry for searchers. And
21 finally, the PTO would shift to applicants the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 148 2 1 responsibility to conduct the search which would mean
2 either that the patent examiner is going to do a
3 duplicative search and perhaps that the patent applicant
4 will be paying for this particular service on two separate
5 occasions.
6 A requirement to submit all prior art-- moving on
7 to number seven--relied upon during the drafting of claims
8 of a patent application creates some additional
9 uncertainties. You know, what is a document or prior art
10 which is relied upon? Consider, for example, a corporate
11 practitioner who was sitting amongst cases that they have
12 prosecuted in the last ten years and uses some of that
13 knowledge in the creation or formulation or preparation of
14 a patent application. What prior art is really relied upon
15 for that particular effort?
16 So the difficulty of definition becomes one that
17 it could create greater costs in trying to comply with the
18 requirement and also greater risk for both for the patent
19 applicant and the patent practitioner.
20 Number eight, applicants should not be required
21 to submit all non-patent literature directed to the same
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 149 2 1 field of invention. This would obviously create an
2 significant amount of additional work probably for the
3 patent applicant or patent practitioner and the patent
4 examiner. In many cases, one would simply use some type of
5 author index, provide a copy of all the literature that
6 this person authored or co-authored and provide a copy of
7 each of those documents to the office to let them discern
8 what is relevant and what is not relevant, or the
9 practitioner would undertake or the applicant would
10 undertake to decide what is material and what is not
11 material, a both timely and risky venture at best.
12 So this type of requirement, we feel would raise
13 an additional burden on both applicants and the PTO and is
14 really not likely to create any better information during
15 the examination process.
16 On number nine, it seems that the applicant
17 should not be required to submit any particular type of
18 non-patent literature documents. Rather, the focus should
19 be as it is now on the type of information be on the
20 relevance of that information to patentability. It seems
21 to me that if you--simply submitting the type of non-patent
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 150 2 1 literature documents, you're more likely to get information
2 that is not material to patentability and again increase
3 both the burden on patent applicants and the patent
4 examiner. So the obligation to submit information should
5 focus on information that is most pertinent to the task
6 before the patent examiner.
7 In number 10, a general observation is that the
8 office can take steps to improve training and supervision
9 of its patent examiners. It has undertaken a very
10 significant challenge in trying to hire, train, and retain
11 700 patent examiners in at least the last two fiscal years.
12 That is a tremendous burden, indeed an opportunity and
13 challenge.
14 It is unlikely that the patent examination
15 process, at least the ex parte system in the U.S. can be
16 significantly improved outside of improved training and
17 supervision without significantly increasing the cost of
18 examination. The burden is on the patent applicants or the
19 patent examiners or substantial delays in the grant of the
20 patent. Improvements, we believe can be obtained by
21 improving cooperation among offices engaged in search and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 151 2 1 examination of patent applications.
2 One might consider the hiring of searching
3 specialists. I know in the area of biotechnology, the
4 office took the position of hiring some searching
5 specialists to assist patent examiners not only in the
6 search but also in actually conducting searches for the
7 assistance of the examiner. There was one effort, a
8 private sector effort in the past to collect the
9 information relevant to patentability in the software area.
10 I think it was called the Software Patent Institute. I do
11 not know what the fate of that particular organization or
12 its utility to the office was.
13 The re-examination process should be looked at in
14 terms of making it more effective by permitting
15 participation by third parties and staffing in a party's
16 re-examinations with highly qualified patent examiners.
17 Under the present re-examination system, however,
18 competitors are very reluctant to bring prior art to the
19 attention of the PTO because of the significant variability
20 in the quality of the examination, the inability to
21 participate in that process, and the inability to appeal a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 152 2 1 decision by the patent examiner.
2 That concludes my testimony. I'll be very happy
3 to respond to any questions.
4 COMMISSIONER DICKINSON: Thank you, Mr. Van Horn.
5 Mr. Kunin.
6 MR. KUNIN: Thank you, Mr. Van Horn, for your
7 testimony. I have a general question that relates to some
8 observations that have been made in the earlier part of
9 this public hearing. There have been suggestions made by
10 at least two prior speakers with respect to seeking
11 assistance from I, Triple E or SIA. What is your view with
12 respect to the PTO, for example, publishing a Federal
13 Register notice seeking the kind of assistance which these
14 individuals indicated might be helpful, and if we did so,
15 what do you believe would actually be the response to that
16 kind of a Federal Register notice in terms of providing
17 technical assistance, in terms of teaching examiners the
18 current levels of knowledge in a technology, or in creating
19 data bases, or any other kind of thing?
20 MR. VAN HORN: I don't have the benefit of IPO's
21 views on that particular question, but I would be happy to
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 153 2 1 share with you a personal view which may or may not be
2 consistent with what IPO would think, but it seems to me
3 those ideas are not new ideas. They're something that have
4 been tried in the past, and indeed, for all I know, are
5 continuing.
6 The Patent Institute, for example, had a
7 collection of information of, you know, what the office's
8 particular experience was with that, and why it is no
9 longer active and vibrant, I have no idea. Certainly, the
10 office has always encouraged people to come into the office
11 to provide seminars on new technology, and indeed has made
12 that a practice over a large number of years.
13 I think the office should reach out as they have
14 done in this particular request for public comments for any
15 ideas, good or bad, that would improve the information
16 that's available to the patent examiner. Of course it has
17 to be reliable information. It has to be information that
18 you can verify it's particular date and what existed at
19 what particular time. That's of course very important.
20 COMMISSIONER DICKINSON: Other questions?
21 COMMISSIONER GODICI: Just a clarification. You
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 154 2 1 mentioned the fact that significant improvements may not be
2 there unless we wanted to have a significant increase in
3 fees or a significant increase in the time. Am I
4 understanding that the IPO considers that we've reached
5 about the right balance with respect to fees and timeliness
6 and that we should concentrate the efforts more on the
7 areas you're talking about in terms of specific one-on-one
8 training and supervision and so on?
9 I guess the real question is have we set the
10 right balance with fees and the pendency targets that we're
11 shooting for?
12 MR. VAN HORN: Yes. I really can't answer that
13 question on behalf of IPO. I don't know that it's been
14 discussed, quite frankly. I think the office should always
15 continue to seek out ways to improve its services as it has
16 done with this particular offer for public comments and
17 hearing and continue to seek to improve those services and
18 the quality of its product.
19 I know some suggestion has been made, for
20 example, for additional time and additional cost. It has
21 always been a problem in terms of how do you capture that
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 155 2 1 additional time in terms of the quality of the work product
2 or the rapidity with which you can examine the application,
3 and is the quantum of improvements that you can get by this
4 additional cost, you know, worth--is it that kind of value?
5 And it's a very difficult thing to assess.
6 In terms of where you are right now, I don't
7 know. In some areas I'm sure it's very good. In some
8 areas, I'm sure it's very bad, but I couldn't identify
9 those areas for you.
10 COMMISSIONER DICKINSON: Let me ask this
11 question. You have a long and varied experience here
12 within the office as well as without. Either based on that
13 individual experience or the feedback of your members, how
14 would you characterize the compliance with Rule 56 that we
15 experience here? Are we being provided with the most
16 material prior art of which the applicants are aware, do
17 you believe?
18 MR. VAN HORN: Yes, I do. Obviously, there's
19 some exceptions. You can see those in the reported cases,
20 but the efforts of certainly people that I work with and
21 people that I counsel, I believe clearly that's the case,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 156 2 1 that people are trying to comply. The procedures are
2 fairly well defined in terms of how you get information
3 brought to the attention of the office, that there are many
4 occasions--I don't know what the frequency is--where cases
5 have been withdrawn from issue, from consideration of prior
6 art that just came to your attention.
7 The frequency of which that particular event is
8 happening, I think is one indicia that people are certainly
9 trying to comply with their duty of disclosure.
10 COMMISSIONER DICKINSON: Other questions?
11 [No response.]
12 COMMISSIONER DICKINSON: Thank you very much, Mr.
13 Van Horn. I appreciate it.
14 Consistent with our approach to customer service,
15 Mr. Van Horn suggested that we hire his searching
16 specialist in the computer and software areas, and I'm
17 informed by our assistant commissioner we have done so. So
18 very good. I hope you appreciate the rapid response to
19 those suggestions.
20 10. JOHN R. ORANGE
21 COMMISSIONER DICKINSON: The next witness is Mr.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 157 2 1 Orange from FICPI, and I will apologize in advance. I need
2 to absent myself at some point here to fly to the west
3 coast. So I will turn it over to Commissioner Godici when
4 I do so.
5 MR. ORANGE: Thank you, Mr. Commissioner and
6 members of the panel. My name is John Orange. I'm
7 president of FICPI, the international person to FICPI, and
8 I will not try to repeat the eloquent way in which Mr.
9 Jennings announced the origins of that acronym.
10 We are an organization of intellectual property
11 practitioners with over 4,000 members in approximately 17
12 countries in the world that include all the major IP
13 countries. We have NGO status at WIPO. We participate in
14 the advisory commission in the OPM patent office and are
15 generally involved with matters relating to intellectual
16 property around the world.
17 What I would like to do today is to address the
18 issues of identification of prior art from an international
19 perspective rather than a purely U.S. perspective. Mr.
20 Jennings from FICPI-U.S. has already addressed some of
21 these issues from that U.S. perspective.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 158 2 1 At the outset, I think it should be noted that
2 many practitioners and applicants outside of the U.S. find
3 the U.S. practice of information disclosure statements both
4 unusual and burdensome, and in the context of the patent
5 cost containment discussions in which FICPI and, indeed,
6 the U.S. PTO are actively participating, the need to comply
7 with the IDS in European circles is seen as a major cost
8 factor in getting patent protection, and I think it's fair
9 to say that any increase in those requirements as might be
10 suggested in some of the questions would be seen in those
11 circles as counterproductive.
12 Having said that, however, the objective at the
13 U.S. PTO to enhance the confidence and the validity of
14 issued patents is to be lauded, and provided it can be done
15 in a cost effective manner, it will find support of the
16 practitioners internationally. I don't think, however, we
17 should lose sight of the fact that no examination can be
18 perfect, and the acquisition of prior art can never be
19 exhaustive.
20 It's important to recognize that there is a law
21 of diminishing returns so that a doubling of effort and
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 159 2 1 costs will not necessarily produce more relevant art. The
2 challenge presented by the U.S. PTO, therefore, is how to
3 balance the requirements of cost and effectiveness in the
4 information retrieval.
5 In reviewing the questions posed by the U.S. PTO,
6 one fundamental factor that mitigates against the overall
7 objective of identifying the most pertinent prior art may
8 be considered to be the definition of prior art itself
9 under section 102. In particular, 102(a) and 102(c)
10 qualify a significant body of activity as prior art that is
11 simply beyond the knowledge of the applicant. By contrast,
12 the definition of prior art in a first-to-file country is
13 much more certain, mainly that which is made available to
14 the public before the filing date and is more ready
15 identifiable. So perhaps if one of the objects is to
16 enhance the confidence in the validity of issued patents,
17 then a fundamental change in entitlement under the U.S. law
18 would be one way to achieve that.
19 I'll now turn to the specific questions. Is the
20 most pertinent art being considered by the patent office?
21 Yes, I believe it is, at least as far as the applicants are
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 160 2 1 aware. The documents that are available to the U.S. PTO
2 through the data bases that Commissioner Dickinson referred
3 to earlier, when coupled with the existing obligations to
4 disclose what the known to the applicant, suggests a
5 reasonably comprehensive solid search has been conducted
6 for the typical application; however as noted above, much
7 of that art is simply not available and may not even be
8 part of the literature.
9 If we consider the art that should theoretically
10 be available to the applicant, then clearly non-patent
11 literature is the most difficult to identify. I don't
12 believe this is necessarily restricted to emerging
13 technologies. It's equally difficult to identify what has
14 been published by way of, for example, technical manuals or
15 service bulletins in the mechanical or electrical areas.
16 Examiners and applicants simply do not have this type of
17 material available to them.
18 Do applicants submit the most pertinent prior
19 art, and are the current rules adequate and effective?
20 Yes, I believe they do, and they are adequate and
21 effective. Not to comply with those requirements exposes
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 161 2 1 you, as the representative from the ABA mentioned, to very
2 harsh remedies, and I don't think anybody willingly does
3 that. To suggest that there may be even harsher remedies
4 when art is overlooked would lead, in my opinion, to a
5 devaluation of the value of the patent and would, in fact,
6 bring the whole patent system into disrepute where, for
7 example, the existence of a piece of prior art in a
8 particular applicant's German research establishment could
9 be used as a basis for rendering invalid or enforceable an
10 otherwise value U.S. patent.
11 Are prior art searches typically conducted? I
12 believe this varies from country to country, and it should
13 not be assumed that all practitioners in all countries of
14 the world have the search facilities available that exist
15 in the U.S. PTO. The public search room of the U.S. PTO is
16 a resource that should be jealously guarded. It's an
17 exceedingly cost effective way of conducting the search.
18 In other countries such a facility may not exist
19 or may not be available to the public. In some cases, the
20 cost of conducting a search with these limited facilities
21 may indeed be greater than the cost of filing applications.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 162 2 1 The advent of electronic data bases and searching by the
2 internet has helped greatly and has indeed enabled
3 applicants to conduct their own investigations, but to use
4 these effectively, sophisticated search tools are needed,
5 and those must be made accessible to the practitioner at a
6 nominal cost and should be included in the search room
7 whenever practical.
8 Are IDSs frequently submitted? I think they are
9 invariably submitted where art does exist. I think it is
10 well known within established practitioner circles that
11 there is a need to file prior art in the U.S., and the
12 consequences for not doing so are significant, and so it's
13 usually complied with.
14 What types of art are likely to be submitted?
15 Well, I think patent art is the most likely to be submitted
16 under IDS, and the least likely to be submitted is non-
17 patent commercial literature. Now, it's probably not any
18 intention on the part of the parties. It's just a common
19 fact that such literature is probably spread throughout an
20 organization and is not well cataloged or easily
21 retrievable.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 163 2 1 Should a search be done prior to filing? I would
2 say certainly not--or should a search be required to be
3 done before filing? I should say certainly not. I don't
4 think such a search should be compulsory. It would
5 increase the cost. It would introduce delay and would
6 probably open up a whole new area of litigation. There is
7 also a question from an international basis of where such a
8 search, if mandated, would have to be done. Are you going
9 to tell someone who has searched in the Hague in the
10 European patent data base that their search is not
11 sufficient to comply with the requirements of U.S. filing?
12 I don't think that would be too well received on an
13 international basis.
14 Should applicants be required to submit all prior
15 art relied upon? Again, I think this is much too broad.
16 It's been suggested in discussions that we've had within
17 FICPI that this would include textbooks, dictionaries, even
18 high school notes. I think the present requirements to
19 submit pertinent art are adequate to ensure that you get
20 what you need, and that is enough.
21 Should applicants be required to submit all non-
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 164 2 1 patent literature directed to the same field of invention
2 with common authors? No, again, I think that's too
3 burdensome. The present requirements for all pertinent
4 information is sufficient, and people will comply with that.
5 What type of non-patent literature document
6 should be required? Again, I think the current rules
7 requirement that require you to submit is pertinent
8 regardless of the type of literature you are submitting.
9 Now Number 10, any suggestions you have to
10 obviate the problem, is, I believe, an opportunity to set
11 out a certain wish list or some suggestions from FICPI
12 because we always like to be practical rather than
13 critical. Firstly, I think a deposit system should be made
14 available for non-patent literature. This has been alluded
15 to by SIA and also by IPO but not just for specific areas.
16 I think a properly classified, readily accessible deposit
17 system would be attractive for a number of reasons, not
18 only to establish the data base but also for defensive
19 purposes.
20 We are frequently asked by clients how they can
21 ensure that other people did not get a patent for something
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 165 2 1 that they may want to use but are not interested in
2 pursuing by way of a patent. There is no readily available
3 way of doing this, and I think a deposit system available
4 through the U.S. PTO for the documents they want to submit
5 would be great step forward. You can ensure access to the
6 search tools that are developed within the patent office
7 for patent examiners to the general public to enhance their
8 searching capability where the time constraints may be
9 different from those of the examiner.
10 This also requires proper training which can be
11 done on a cost recovery basis, and I don't think anybody
12 would have a problem in paying to attend a course that
13 allowed them to search more effectively. Provision of
14 links to academic data bases and coordination or
15 harmonization of the classification systems is something
16 that could very well enhance the amount of prior art that
17 the average patent practitioner can access.
18 A particular problem that seems to occur with the
19 submission of prior art from patent circles is the
20 staggering of examination as between various offices around
21 the world. There are two ideas that FICPI has that might
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 166 2 1 address this. First, some years ago we suggested the
2 incorporation of a supersearch or supplementary search into
3 the PCT by which the applicant could request a search in
4 another examining authority rather than preliminary
5 examination in his examining authority. This would allow,
6 for example, an applicant to have an initial search done by
7 the U.S. PTO and subsequent searches at his expense done by
8 the JPO and EPO. As we've seen from Mr. Cattone's graphs
9 this morning, cumulative searches yield better results, and
10 I think this is one way of getting the applicant to pay for
11 it which will give great benefit to applicant.
12 A further way of reducing the stagger between
13 applications and the availability of search results would
14 be to remove the reservation for the 102(e) date under the
15 PCT. At present, there's a great incentive to file as
16 early as possible in the U.S. for foreign applicants to
17 preserve their 102(e) date, and that means that this U.S.
18 application can go through before the results of the search
19 are available from the PCT or perhaps one of the other
20 significant examining authorities.
21 Other items, under 11, I was not going to suggest
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 167 2 1 this, but since Mr. Van Horn did, furnishing copies of
2 patent literature, I think has been likened to shipping
3 half of the forests of Europe across the Atlantic each
4 year, and I think if we could avoid that, it would be of
5 great benefit to the whole IDS system. I think
6 clarification of the translation needs for prior art
7 submitted in non-English languages would help to clarify
8 exactly what needs to be translated and what are the
9 obligations of the patentee or the applicant to do that.
10 Those are FICPI's comments from an international
11 perspective, and I would be very happy to answer any
12 questions you may have.
13 COMMISSIONER DICKINSON: Thank you, Mr. Orange.
14 Questions? Mr. Kunin.
15 MR. KUNIN: The concept of the supersearch was
16 brought up many times among both the PCT assembly and PCT
17 ad hoc, and of course it was not supported. Part of the
18 aspect of the problem of that is that it favors people who
19 use PCT to the disadvantage of people who don't use PCT
20 because of the PCT time frames which force earlier
21 consideration of PCT under the treaty and then subordinates
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 168 2 1 national applications.
2 Do you think that it's realistic to believe that
3 the supersearch concept, if brought up again, would find
4 support?
5 MR. VAN HORN: Well, whether or not it would find
6 support, I'm not sure, but I think the concept is still
7 viable. I understand that one of the major concerns was
8 loss in revenue to the international preliminary
9 examination authorities who would not see the examination
10 fee because searches were being done in other offices
11 instead of the preliminary examination. From an
12 applicant's point of view, if you get a search from, say,
13 the EPO that shows that the only art they have found is
14 background art, then what is the value to you of going
15 ahead with the preliminary examination, because you have
16 already got a reasonably positive indication of
17 allowability.
18 It is not better to spend the money, the
19 applicant's money in having the search done in the JPO or
20 in the U.S. PTO or in the Australian patent office or the
21 Russian patent office, wherever, to try and find the piece
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 169 2 1 of prior art that may be relevant and will emerge if your
2 patent every gets into litigation. So I think the concept
3 is viable. I have never fully understood why it did not
4 enjoy support.
5 In terms of deferral, that is your pushing local
6 applicants to the back of the lineup. By having a
7 supersearch, you may find there's less examination time
8 required in those offices so they would, in fact, be able
9 to advance the local applicants.
10 COMMISSIONER DICKINSON: Let me ask a couple of
11 quick questions because I need to leave. You indicated
12 that IDS--you believe IDSs are filed where the art exists.
13 Our statistics show that IDSs are filed in about 58 percent
14 of the cases. So I'm trying to recognize whether you
15 believe 42 percent of cases don't have any relevant prior
16 art associated with them; and I guess by extension I'll ask
17 the question I asked the previous witness, should we
18 require IDSs and/or a statement that no art has been
19 promulgated which we believe should be disclosed on an IDS?
20 MR. VAN HORN: I think the current rules,
21 interprets that you do require IDSs where art exists or
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 170 2 1 where the applicant knows about it. From my experience in
2 my office--I'm from Canada, so we have fairly direct
3 correlation to what goes on in the U.S.--the majority of--
4 well, all applicants are asked to identify art. Not all
5 applicants have researched them prior to filing. They
6 choose not to, and that's their choice, and we cannot
7 compel them to.
8 So in a significant number of cases, there is no
9 art that the applicant brings to the attorney's attention
10 for filing, but I think--I don't think you can say 42
11 percent of the people are not being asked. I think every
12 one of the people are being asked, and what you get is what
13 they've been told about.
14 COMMISSIONER DICKINSON: Let me ask the follow up
15 question that I asked Mr. Maier. Should attorneys be
16 required to inquire of their clients of art of which
17 they're aware?
18 MR. VAN HORN: Well, again, I think de facto they
19 are and they do. It may not be the letter of the rule that
20 requires them to make that inquiry, but from a purely
21 professional ethical and practice point of view, it's such
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 171 2 1 a significant pitfall if you don't make that inquiry that
2 you do it inevitably, and I suspect most automated diary
3 systems that all attorneys have will spit out the letter
4 requesting submission of prior art.
5 COMMISSIONER DICKINSON: Let me ask another
6 question that relates to your comment with regard to making
7 our internal search tools available to the public, an idea
8 that I have to tell you I generally support. One of the
9 challenges we face, though, is that when we get access to
10 search data bases. The owners of those data bases license
11 them to us, and those licenses often restrict our ability
12 to make them available to others, certainly to make them
13 available generally to the public. They presumably feel
14 that would gut the value of the license if it was available
15 publicly.
16 Do you see any way around that problem or any
17 opportunities we might be over looking?
18 MR. VAN HORN: Well, I think the U.S. PTO also
19 makes a lot of information available to the owners of
20 commercial data bases, and there is a quid pro quo there, I
21 think. Certainly, I would be not enthusiastic to see the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 172 2 1 base data that comes out of the U.S. PTO such as you have
2 on the web site now. That is useful data, but it is not as
3 useful as when it's coupled with sophisticated search
4 tools, and to have that partitioned off and say we're
5 selling that additional information to commercial
6 organizations so that the average applicant now has to
7 engage in a license with some of these commercial vendors
8 and the computer time can get very expensive, I think that
9 would be a retrograde step.
10 So maybe there is a bargaining to say if you need
11 to enhance the data that you're getting from the U.S. PTO,
12 we need at least some access to your commercial data bases.
13 COMMISSIONER DICKINSON: Thank you.
14 Any other questions? Mr. Drost. I'm going to
15 take my leave.
16 MR. DROST: Could you expand on your proposal to
17 have a deposit system for non-patent literature? How do
18 you envision that working?
19 MR. VAN HORN: Well, it may be rather grandiose,
20 but we all have to start somewhere, I guess, and I go back
21 to when I started in the profession 20-something years ago.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 173 2 1 I worked for Massey Ferguson in the U.K., and what we had
2 there was in our library, in our patent library, an
3 informal classification system that basically collected all
4 the brochures, manuals, any piece of information, articles,
5 according to what piece of equipment it may be related to.
6 And over the years this grew up to be a very valuable
7 resource, and it was a cost classification, and it was
8 fairly easy to retrieve.
9 Apply the same type of principles here that if a
10 client has a bulletin, service bulletin, whatever on their
11 new piece of software that they are implementing or the
12 patch they're putting into their software. If they could
13 deposit that service bulletin with the U.S. PTO to get a
14 data filing for it, to get it classified under the normal
15 U.S. classification system, to have it included in the
16 prior art listing, classification listings, I think that
17 would give a good resource to at least it would capture
18 those transient pieces of information that otherwise flow
19 around but everybody knows they're there, but they can
20 never find them when they need to.
21 MR. DROST: Thank you.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 174 2 1 COMMISSIONER GODICI: Thank you very much.
2 11. J. MICHAEL THESZ
3 COMMISSIONER GODICI: Our next speaker is Mike
4 Thesz, representing the AIPLA. Mike.
5 MR. THESZ: Good afternoon. My name is Michael
6 Thesz from the law firm of Morgan, Lewis, Bockius, and I am
7 here today to speak on behalf of the American Intellectual
8 Property Law Association. The AIPLA appreciates the
9 opportunity to present its views of the notice of public
10 hearing and request for comments on issues related to the
11 identification of prior art during examination of patent
12 applications.
13 The AIPLA, as you know, is a national bar
14 association of more than 10,000 members engaged in private
15 and corporate practice and government service and in the
16 academic community. The AIPLA represents a wide and
17 diverse spectrum of individuals, companies, and
18 institutions involved directly or indirectly in the
19 practice of patent, trademark, and copyright unfair
20 competition law, as well as other fields of law affecting
21 intellectual property. The AIPLA will be submitting
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 175 2 1 written comments before the due date published in the
2 notice.
3 First of all, I'd like to say that the AIPLA
4 certainly supports the interest of the Patent and Trademark
5 Office in ensuring that patent examiners consider the most
6 pertinent prior art during examination of patent
7 applications. In general, as I will discuss a little bit
8 later, we feel that the PTO is doing a good job in
9 providing a good quality examination at a reasonable cost.
10 That being said, I will comment on the questions
11 raised in the request for comments, and as I said, our
12 written comments will provide more detailed answers.
13 With regard to whether the most pertinent prior
14 art is being considered by patent examiners during
15 examination of patent applications, as others have said
16 today, I think it's very difficult to make an objective
17 assessment of the extent to which the most pertinent prior
18 art is being considered during examination, and as also was
19 said, I think to rely on subjective evidence or assessments
20 based on one particular case or even worse on rumor is not
21 reliable. One place that the PTO does have some
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 176 2 1 statistics, I would think is from their quality review
2 program, and that could be looked to to get some indication
3 at least as to whether the most pertinent prior art is
4 being considered during the initial examination.
5 Do applicants submit the most pertinent prior art
6 that they are aware of? We think that responsible
7 applicants and their representatives do submit the most
8 pertinent prior art that they are aware of in connection
9 with a patent application so as to obtain a strong patent.
10 There continues to be reported decisions of the federal
11 reports where patents are held unenforceable for failure to
12 comply with the duty of disclosure, but we think that the
13 cases where the courts find that material prior art is
14 intentionally withheld from the PTO are relatively rare.
15 Competitors are highly motivated to find prior
16 art, and so situations where a competitor gets in a
17 litigation and conducts a validity search and finds prior
18 art which was not previously considered, I don't think,
19 surprisingly, show that a far greater number of those type
20 of cases are found that where a patent owner intentionally
21 withholds prior art from the PTO.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 177 2 1 The AIPLA feels that the current rules and
2 procedures for submitting prior art during the examination
3 of a patent application are adequate and are effective. We
4 feel that they provide a fair balance between the need of
5 the PTO to obtain pertinent prior art early in the
6 examination process and to complete that process in a
7 timely fashion, and the burden is on patent applicants to
8 comply with their duty of candor and good faith.
9 Of course, the PTO should consider changes that
10 would reduce the burden on applicants. For example,
11 several people have mentioned the submission of copies of
12 references along with information disclosure statements,
13 and we certainly agree that the PTO should accelerate its
14 efforts to share searching information with the other
15 significant search and examination patent offices which I
16 know you are already doing.
17 Are prior art searches typically conducted before
18 filing a patent application with the U.S. PTO? We think
19 not. A search may be made where an applicant is entering a
20 new field and when there is some doubt about making the
21 significant investment or preparing and prosecuting a
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 178 2 1 patent application or where it is desirable to obtain some
2 background information to assist in the writing of the
3 specification and the drafting of the claims. Also, in
4 that process, if a search is made and relevant documents
5 are identified, I believe that they are identified usually
6 in the patent specification or in an IDS or both.
7 Are IDS statements frequently submitted? Our
8 members say that, yes, they are frequently submitted during
9 the course of examination of the patent applications. Many
10 applicants have a global patent strategy, and relevant
11 documents are frequently identified in counterpart
12 applications in other countries. Relevant prior art also
13 may be identified through validity studies of related
14 patents and through licensing efforts, and the type of
15 prior art submitted, patents, foreign patents publications
16 depends on what is identified as relevant rather than
17 depending on the type of document that exists.
18 I think it also depends on the technology. I
19 think some technologies the inventors tend to publish more
20 before filing, and so there are always more prior art
21 available for submission in those type of applications.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 179 2 1 Should applicants be required to conduct a prior
2 art search and submit corresponding search results
3 including where they search to the PTO in filing a patent
4 application? The AIPLA thinks that applicants should
5 definitely not be required to conduct a prior art search
6 when filing a patent application or to state whether a
7 search was conducted. The problems created by such an
8 approach would be significant, but the benefits would be
9 few if any.
10 I think some of the problematic issues have been
11 discussed by Mr. Van Horn, and I won't repeat them here,
12 however one other problem that comes up is that often
13 applications must be filed within a short period of time to
14 preserve important patent rights, and there physically may
15 not be enough time to have a search adequately done.
16 Number seven, should applicants be required to
17 submit all prior art relied upon during the drafting of the
18 claims of the patent application? The AIPLA believes that
19 a requirement to submit all prior art relied upon during
20 the drafting of the claims of a patent application is
21 unnecessary and may exacerbate the PTO's concerns regarding
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 180 2 1 getting too much prior art to consider in some
2 applications. Most practitioners will submit such art
3 today in an IDS, as I've said.
4 One possible draw back for the PTO is that a lot
5 of prior art may be considered in the drafting of the
6 claims of an application, but it may not be considered by
7 the practitioner to be particularly relevant or to be
8 material to the claimed invention. Would this be required
9 to be submitted? Would this be prior art relied upon
10 during the drafting of the claims of the patent
11 application? Applicants have no duty at this point to
12 submit such information which is not material to the
13 claimed invention, and I think a requirement by the PTO
14 that such information be submitted which is not material
15 would not be wise.
16 As a practical matter, if there was such a
17 requirement, I think most applicants would submit
18 everything from their files, and I think that would be
19 counterproductive to what the PTO would like.
20 Question eight, should applicants be required to
21 submit all non-patent literature directed to the same field
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 181 2 1 of invention attributable to, authored by, or co-authored
2 by the applicant? The AIPLA thinks that applicants should
3 not be required to submit such information. Such a
4 requirement would necessitate a significant amount of work
5 and cost on the part of applicants, and, again, the
6 information would not necessarily be material to the
7 application being filed. Again, a wise applicant would be
8 prone to submit all information, all publications whatever
9 they might be to the office for their independent
10 consideration, which I think would be counterproductive to
11 efficient examination process. So to adopt this requirement
12 would increase the cost and burden on both applicants and
13 the PTO and would not be likely to result in assisting the
14 PTO in identifying the most pertinent prior art during the
15 examination process.
16 We feel that applicants should not be required to
17 submit as a matter of course any particular type of non-
18 patent literature documents even in specific types of
19 application. The requirement to submit information known
20 to be material to patentability should be the limit of
21 applicant's duty to the PTO. Any general requirement that
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 182 2 1 focuses on the type of information as opposed to its
2 relevance to the issue of patentability is more likely to
3 increase the burden on both applicants and the PTO for
4 handling information that is not relevant or material to
5 patentability, and information which is material will
6 obviously take many forms depending not only on the
7 invention and the practices and the technology to which the
8 invention results, but also on the activities of the
9 inventors prior to the filing of the application.
10 Chapter 2000 of the Manual of Patent Examining
11 Procedure contains already discussions of--examples of
12 material information, and it also contains a checklist as
13 an aid for compliance with the duty of disclosure. The
14 obligation to submit information is more properly focused
15 now on the information most pertinent to the task before
16 the patent examiner.
17 In summary, I would say that once again that the
18 PTO is doing a good job in providing a good quality
19 examination for a reasonable cost. We feel that the ex
20 parte examination system in the United States cannot be
21 significantly improved without significantly increasing the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 183 2 1 cost of examination, the burdens on applicants and patent
2 examiners and/or delays in the grant of a patent.
3 There have been examples stated today which we
4 agree with as possible areas of improvement. One, again,
5 would be cooperation among the various patent offices and
6 exchange of information on searches. Also, as previously
7 mentioned, legislation is being considered which might make
8 re-examination more effective and more attractive to
9 participation by third parties.
10 The AIPLA appreciates the opportunity to provide
11 comments on the specific topics under consideration by the
12 PTO. We look forward to working with the PTO to achieve
13 its goals in ways that will not necessarily--I'm sorry--in
14 ways that will not unnecessarily burden applicants or their
15 representatives. In fact, we are anxious to work with the
16 PTO to develop workable solutions to the problems it has
17 identified. Thank you.
18 COMMISSIONER GODICI: Thank you, Mr. Thesz.
19 Steve?
20 MR. KUNIN: Thank you, Mr. Thesz, for your
21 testimony. I'd like to explore with you perhaps an item
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 184 2 1 that you have addressed and other previous speakers have
2 addressed, and that is the question of the extent of
3 collaboration among offices. I think, as you're aware,
4 nearly 50 percent, somewhere between 45 and perhaps 48
5 percent of applicants for U.S. patents are foreign origin,
6 and of the remaining 50-plus percent of U.S. applicants who
7 are obtaining protection in the United States also seek
8 protection in other countries.
9 And Mr. Orange mentioned the question or the
10 problem of misalignment of timing of action by the office.
11 What if any views might you have with respect to trying to
12 get--and perhaps this would require an applicant's
13 cooperation because there are special procedures, at least
14 in the JPO and the EPO upon request by the applicant that
15 you can adjust the order and timing of examination to
16 perhaps align with what is done in the United States.
17 So, you know, what if any are your views with
18 respect to things that can or should be done with respect
19 to forcing alignment or trying to get the applications that
20 essentially are the counterpart applications that are
21 handled in multiple offices handled in a way to perhaps
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 185 2 1 reduce the duplication of effort and perhaps produce a
2 better composite result?
3 MR. THESZ: The AIPLA did not consider specific
4 examples of how to suggest that the time periods among the
5 various offices be coordinated, but I think one relatively
6 simple example of things that the office might undertake
7 would be in PCT cases where the search is done in a foreign
8 office to make sure that the search results and copies of
9 search results are in the application when the U.S.
10 examiner picks up the case.
11 I think there are some practical, relatively
12 minor steps like that that would be helpful, but we would--
13 the AIPLA would be glad to consider and enter into further
14 discussions with you about ways that we could foster better
15 cooperation.
16 MR. DROST: Mr. Thesz, question eight, I
17 understand AIPLA objects to the proposal to require the
18 submission of non-patent literature to the same field of
19 invention. It is because of the--that there's no
20 definition now for same field of invention? Obviously, if
21 we published a rule, we would have a definition, and we
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 186 2 1 would tighten that up a bit, or is it just that anything
2 that goes beyond 56, Rule 56, the AIPLA is opposed to?
3 MR. THESZ: Well, you could attempt to define it,
4 to define what the same field of invention is, but I think
5 practically the result would be that even a good faith
6 attempt to--on an applicant's part to determine whether
7 they've complied with it or whether they meet that
8 definition of the same field of invention would make the
9 patent vulnerable to an attack on the basis of inequitable
10 conduct.
11 We already have a rule in place that went through
12 an extraordinary long rule making process to balance the
13 concerns, and Rule 57 and I think Rule 97 and 98, I think
14 strike the proper balance, and I think it's dangerous to do
15 something that's going to affect that balance unless you're
16 going to be assured of a very good result.
17 COMMISSIONER GODICI: Thank you very much, Mr.
18 Thesz. I appreciate it very much.
19 Before we go on to our final speaker, I'd like to
20 find out are there any other people here today that would
21 like to testify or have signed up other than Mr. Wise?
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 187 2 1 [No response.]
2 COMMISSIONER GODICI: Okay. So Mr. Wise will be
3 our final speaker.
4 12. GLENN E. WISE
5 COMMISSIONER GODICI: Mr. Wise. As with many of
6 our other speakers, Mr. Wise is a friend of the PTO and has
7 been involved in many committees and interactions with the
8 PTO to help us improve our processes, and we appreciate
9 very much that you're here.
10 MR. WISE: Thank you, Commissioner Godici, and
11 thank you for the opportunity to present some remarks.
12 I've had laryngitis the last few days, so I might have to
13 pop a cough drop during this episode.
14 My background is that of a patent agent. I've
15 been in practice, primarily in search practice for a little
16 over 43 years. I was also an examiner and a classifier
17 within the office, and I am also an inventor and have been
18 granted 16 U.S. patents in times past, not for a while, but
19 I intend to file some more when I retire which won't be too
20 long probably.
21 My remarks are not going to be directed to the
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 188 2 1 questions posed by the notice of hearings directly, but a
2 lot of them will apply to various of the questions as
3 you'll see as we move along, and such remarks will touch a
4 considerable number of different areas and will present
5 different ideas and suggestions, as other speakers have,
6 all related to increasing the reliability and quality of
7 the prior art developed both by the examining corps and by
8 the public.
9 I'm going intersperse several asides in these
10 remarks. One thing I might say at this point is that
11 within my experience, and particularly within the last 20
12 years since the duty of candor has really risen its head,
13 the burden of examination has shifted somewhat to the
14 public side. Twenty years ago there was hardly any prior
15 art cited in cases. Maybe 25. I forget. I didn't
16 actually pull a lot of earlier patents to make a
17 statistical analysis on this, but let's say 20 years ago
18 you might have two or three patents or publications
19 mentioned in column one of a specification but not
20 certainly page after page of ideas and disclosure material
21 which we find often now and in which, in my opinion
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 189 2 1 sometimes, as I'm sure in yours, tends to obscure the
2 invention a little bit.
3 So the public in effect in a lot of cases has
4 taken over part of the examining process. If they hadn't
5 done this and weren't submitting the prior art they are, I
6 feel that your examiners would be nowhere near the state of
7 quality that they have now, although from my point of view,
8 particularly because I do a great many validity searches,
9 the process still has quite a ways to go both internally
10 and externally.
11 For the time allotted for examination, I think
12 the examiners do a heck of a job. It's not unusual when I
13 get a validity search to, quote, knock out at least one to
14 five claims, sometimes all of them, but I may spend five to
15 ten to twenty times as much time as the average examiner is
16 able to spend and keep up his production, and I don't think
17 we probably want to pay the examiners, particularly the
18 senior ones, 20 times the 100,000 they might be making at
19 this time.
20 At this juncture, in my opinion, we have the
21 greatest resources potentially available for search that
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 190 2 1 we've ever had since I've been in business certainly, and I
2 say potentially because there are some concerns and
3 situations that I'm going to discuss. There are six major
4 concern areas.
5 The first of them, and I was--wanted to
6 congratulate Commissioner Dickinson before he left on
7 recognizing the problem, was the lack of classified foreign
8 filings. For nearly four years now, as you gentlemen know,
9 there have not been very many, in fact let's say almost no
10 classified foreign patents placed in the paper files. Now
11 recently you've come up with systems that are somewhat
12 attacking the problem, such as the West Search System which
13 the corps has and the outside doesn't yet have and
14 hopefully will get soon; but for those who are used to the
15 paper classified, the lack of those four years,
16 particularly as technical fields are moving so rapidly now
17 days, we wonder how many references we're missing.
18 There's just no way of knowing. Hopefully quite
19 a few of them are being filed in IDS format. We, as was
20 discussed in the public search area, hope that the
21 electronic capture will be sufficient to replace the paper,
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 191 2 1 although I'm not from Missouri, but I'm from a show-me-type
2 generation, and I have my fingers crossed that this
3 proposal to classify foreign patents will turn out to be a
4 very useful addition to what we now have available.
5 The second concern that I'd like to touch on is
6 the decrease in reclassification capability by the decrease
7 in staffing of the classification or division or whatever
8 it's called at this moment. I have difficulty keeping up
9 with sectors and groups and all this sort of thing. If I
10 am correct, about half of the--you have about half of the
11 re-class staff that we had four years ago or, say, three
12 years ago, and a lot of them, if I get the right input from
13 people I talk to, and I'm around various groups and sectors
14 every day, quite a few of them are doing what I'm going to
15 call clerical work because they're parcelling out incoming
16 applications rather than doing any substantive re-class.
17 And although the figures in the annual report might show
18 not too big a drop in re-class, I don't--I and other
19 searchers, I don't think count a re-class to be where you
20 put a decimal after what was a full numeral and things like
21 that. You know, that's playing with the numbers.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 192 2 1 So I believe that emphasis should be given to
2 rebuilding the classification effort because you have more
3 and more patents issuing, and a lot of categories are
4 getting too big to handle either in the CSIR image
5 workstation by subclass or in the paper. As an analogy, I
6 might suggest that one consider Bartlett's Familiar
7 Quotations, which I think most of us have a familiarity
8 with. Let's suggest that they stopped putting an index of
9 authors and/or first lines in there, and you tried to use
10 that book after several years, and let's say that this was
11 done back in 1930. You would miss all of Yogi Berra's good
12 stuff, you know, without having to go page by page. Well,
13 that's the way we see the likes of classification here,
14 that it could turn into something like that.
15 The third situation or problem that concerns me
16 is the down time on the PTO's various automated search
17 systems, and it's hard to predict when or how or what. We
18 have a system in the search room known as the Casis CD-Rom
19 system which had been operating, albeit somewhat behind
20 issue dates, quite well for several years, and in the last
21 quarter, that system must have been down 50 to 100 times
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 193 2 1 within a month or two, and the report from the director of
2 information dissemination's office was that they were
3 unable to pinpoint the problem.
4 They now have apparently pinpointed it because
5 for the last three or four weeks it's been up steadily, but
6 this is a system that has been up for years and then
7 suddenly boom, and this can happen not only from updates,
8 which apparently this has something to do with in this
9 case, but acts of God for example. New York as you recall
10 was recently out, downtown Manhattan for about 200,000
11 people.
12 The point I'm trying to make is that down time
13 really impacts your work planning, and I don't know. The
14 corps seems to take priority. If there's down time on the
15 system, it's more often the public than if--yeah, the
16 public system than it is the corps as far as I've been able
17 to determine, but examiners have also mentioned that
18 there's down time.
19 I'm going to mention some studies at the end of
20 my remarks that I would propose, and one of them includes
21 better log keeping of down time. Fortunately when we do
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 194 2 1 have down time now, we still have the paper classified
2 files to fall back on, but the rumors of their demise keep
3 popping up, and hopefully no one will do anything drastic,
4 and in fact Commissioner Godici says they won't until they
5 have a reliable automated system. They won't do any
6 getting rid of the paper classified files in mass.
7 The fourth situation or concern relates to lack
8 of prioritibility in fast moving high-tech areas, and
9 although I do not generally operate in these areas, I do
10 have an idea that might alleviate the situation somewhat
11 and blends in with the concept proposed by the last
12 gentleman, whose name I didn't catch because I couldn't
13 quite hear everything, concerning a deposit system.
14 The patent office, if I understand correctly, is
15 about to begin imaging up to 10 percent of the files that
16 they issue beginning next January. I think the percentage
17 may be a little--quite a little optimistic based on the
18 fact that if we multiply out the number of pages in the
19 average file times 10 percent of the issue, we're probably
20 looking at 80 to 100,000 pages that they're considering
21 imaging and digitizing on a given issue week.
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 195 2 1 That would be all right if they were self-
2 feeding, but you've seen file histories where the papers
3 are torn in half. The ribbons would catch in the
4 machinery, etc., etc. So it would be all a hand-feeding
5 process, and I think they're way to optimistic.
6 But let's say that the program does start, even
7 one percent of the issue. It would give an opportunity, it
8 seems to me, to capture at that time not only the
9 prosecution of the file but also any publications in areas
10 that you want to capture, let's say in the Class 700 area,
11 so that you begin building an in-house data base which is
12 lying dormant now in your warehouse for already patented
13 cases.
14 There are probably thousands and thousands of
15 prior art references in high-tech areas that are lying
16 there, and they are not usually capturable in a full text
17 search unless you're lucky because you don't know what the
18 title of Joe Duke's highfalutin paper might have been, and
19 you may guess, luckily, but if you have the full text of
20 that rather than just the citation from the publication
21 section of the patent copy, you're more likely to get some
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 196 2 1 meat. So I would recommend that that be considered as a
2 adjunct to their capture.
3 If I understand correctly, the purpose of the
4 capture is to digitize and make it immediately available on
5 our express machines in the search room as well as for
6 document preparation and the certification in other areas
7 and perhaps for electronic transmission overseas in the
8 case of priority documents or whatever, not that you would
9 send a patent file over there, but it would be a learning
10 technique, if I understand correctly.
11 If such capture should prove useful, and of
12 course as I mentioned before you could keyword search those
13 documents, and it might be possible to make some
14 arrangement with other organizations such as this Software
15 Patent Institute that I don't know much about, but there
16 would probably be considerable redundancy in what was
17 captured--what you propose to capture versus what is
18 already available. So before capturing and putting it on
19 your data base, there would be a check to see is this
20 redundant or is it a new item sort of thing.
21 The fifth concern that I have relates to examiner
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 197 2 1 training which has been mentioned considerably here and
2 also it applies to the public systems. Examiners keep
3 getting new, almost every other month it seems a new data
4 base that they--that sounds wonderful, but until they know
5 how to use it and they're able to work it into their
6 agenda, it might as well be hieroglyphics. The same thing
7 with the public, although not as frequently as examiners
8 have been getting them.
9 The last public system, for example, the CSIR
10 image station, is barely 20 months, and yet the new
11 monitors and controllers are already in place for the next
12 wave. So that's pretty fast generational turnover of
13 hardware and software and learning processes for--
14 particularly for the public where they probably will have
15 to, down the line, pay for the training or more of the
16 training than they do now.
17 The sixth concern relates to time. There's no
18 way we can expand time yet, although I don't know that it
19 won't happen someday. The patent office seems to allot a
20 rather niggardly amount of time to the examiners for
21 examination, and, again I said--as I said earlier, I'm
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 198 2 1 surprised that they come up with as good an outcome as they
2 do in many cases.
3 So just to summarize the major points that I've
4 been making, the first four related to how resources can be
5 maintained or should be enhanced. The fifth and sixth
6 relate to time and training which are patent office policy
7 matters. Well, they're all PTO policy matters, but the
8 public can contribute in some regards relative to some of
9 these things.
10 There's one idea that I've come up with. About a
11 year ago, we had hearings on revamping the file history,
12 and there was a very minor amount of revamping done. I
13 submitted a search sheet, for example, that was much were
14 complex than this one which is out of a current file which
15 only shows the examiner search. I think most people have
16 seen these. It shows the classes and subclasses searched,
17 the date searched, and this particular one conferred with
18 another examiner relative to a class that he did not--well,
19 he did eventually search it, yeah, and then it shows the
20 interference search.
21 The form that I submitted had a breakdown for
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 199 2 1 classes and sub classes like this does, and it was dated,
2 and the examiner's initials like this one but also did he
3 search it manually, did he search it on data base, what was
4 the full tech search strategies, and how much--how did he
5 search it, did he search U.S. and foreign, and places to
6 quickly check off all those things. Now, that would take a
7 little time to fill out that sheet, but it might be well
8 worth it if coupled with the next idea that I'm about to
9 propose.
10 And that is on a pilot basis that in the
11 transmittal letter there would be a block where the
12 applicant can say I want a copy of the search sheet with my
13 office actions. That would give them an opportunity if for
14 whatever reason they knew of art areas that the examiner
15 hasn't yet considered and he might have already allowed
16 claims for example, he or she. To come back in our remarks
17 and say I would like to say class so and so, subclass such
18 and such become part of the record as having been searched
19 or the alternative is that the public could submit with
20 their remarks the fact that they did search class so and
21 so, subclass--and the subclass, and here is what we found,
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2 an IDS late, late IDS submission.
3 I admit that these ideas are just germs at the
4 moment or seeds. I'd been happy to work as I have in times
5 past with you and others to try to flush them out if you
6 feel that they're at all worthwhile. I think some studies
7 are probably in order at this juncture that haven't been
8 done for a while.
9 I'm not exactly confident that PTO management
10 knows exactly how their examiners are searching now, and I
11 certainly don't know think they know how the public is
12 searching. So in times past, we've had what were called
13 beeper studies. For those that aren't familiar with that,
14 a person is assigned a device that they put on their belt,
15 and at random times that buzzer went off, the vibrator, and
16 he puts down what he's doing, and after a period of time
17 you can get a running account from a checklist of was he
18 searching foreign art, was he on the automated system, is
19 he at lunch break, or whatever, and it gives the management
20 a pretty handle on what's going on.
21 The last one, if I recall correctly, was about
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2 that was when Group 220 was coming up on--well, actually
3 was getting on to the automated system, the first group
4 that went online.
5 Another study that I would suggest is statistics
6 on subclass growth. We have some statistics, we being me
7 personally and Mr. Goyer on where--how many subclasses, for
8 example, for over 1,000 patents, for example, like four
9 years ago. It would be interesting to see with the drop in
10 re-class where those classes--how many more now have joined
11 the 1,000 patent club. This is U.S. patents I'm talking
12 about.
13 Also, a similar study I think should be done on
14 what impact the failure to file foreign classified paper
15 patents has had on foreign citations, which because of your
16 data base that's set up now, you can pick that off with--to
17 see whether foreign sites have been dropping drastically
18 and also use it as a tool which you come up with your
19 electronic classification scheme.
20 And I would certainly like to see better
21 statistics kept on system down time so we have some
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 202 2 1 reliable criteria, some objective criteria should the time
2 come when we're going to say we don't need the paper
3 anymore and here's why and the systems are up all the time
4 or whatever. I base this on a--I made a Freedom of
5 Information Act request covering the period of October 1,
6 '97 through April '98. Now, admittedly, that's a year and
7 three months old now, but I only asked for the logbooks for
8 the image workstation area, and they were not very
9 revealing as to being kept accurately. In other words,
10 there was a lot of anecdotal stuff, system down, but there
11 wasn't from one o'clock to four o'clock or sixteen users
12 bumped or things that could be captured fairly easily.
13 In my opinion, based on experience, there are
14 four things required for good examination and good
15 searching whether it's in resources, which as I say, we've
16 probably got the best we have ever had right now, albeit
17 the problems that I mentioned; time; training, and
18 something I'll call tenacity or gut feeling, and most good
19 examiners I've ever run into have this gut feeling. I know
20 it's out there somewhere, and I'm going the find it, and
21 that comes from the point of view that was instilled at
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 203 2 1 least years ago where we wouldn't want to give the
2 applicant what he's entitled to and keep for the public
3 what he's not entitled to, he or she.
4 And so I may be a negativist because my journey
5 in life was to shoot down anything I could if the art
6 existed, not just for fun but as a balance between the
7 public and the private rights and still by Article One,
8 Section 8, and I would suggest that sometimes we can spot
9 claims that are just ridiculous on their face.
10 And another idea I would have is you gentleman
11 have been familiar with the PO conference over the years
12 which has come and gone. I would suggest what I'll call
13 just for a lack of a better term a broad claim conference.
14 If somebody comes into the SPE, and he's got a claim that
15 says, Boy, I thought I'd find this, and the SPE says, Yes,
16 I think you probably should have, maybe there's somebody
17 else that he should go to and have a little conference, a
18 senior examiner in an analogous area or something like that
19 and sit down and say what do you think; and I know in years
20 gone by we've had some examiners who would even go out to
21 Board of Appeals members and try to find that piece of art
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 204 2 1 that we knew had to be out there, and sometimes they would
2 find it.
3 It brings a smile to my face because I think you
4 know one of the gentleman who I'm referring to. He's now
5 deceased. We'd often see--and I can't thing of his name at
6 the moment. Darn it.
7 COMMISSIONER GODICI: Joe Williamowski.
8 MR. WISE: Joe Williamowski, right, Lord bless
9 his soul. You'd see him over in the public arena in the
10 search room or the examiner's division knowing that he was
11 sitting on a case and he just didn't feel right about it,
12 and there are people like that throughout the office, and
13 the public gets to know who their examiners are, and they
14 should be--it would be worthwhile to consider a conference
15 of this type on these outlandish broad claims sometimes.
16 I think I'm about running dry. I'll conclude the
17 remarks just by saying, anectdotally, I find the morale in
18 the corps to be remarkably high considering what I consider
19 to be a productivity push that has only increased over the
20 last few years. Now, there are gripes, but like they say
21 in the Army at lot of times, they're not happy unless
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 205 2 1 they're griping.
2 So I would say that overall the system is
3 working. It can work better, as systems always can, but we
4 do the best we can, and thank you for allowing me to
5 present these remarks.
6 COMMISSIONER GODICI: Well, thank you.
7 MR. WISE: Any questions?
8 COMMISSIONER GODICI: Thank you very much, Mr.
9 Wise. I appreciate it very much.
10 MR. WISE: Any questions?
11 COMMISSIONER GODICI: Steve.
12 MR. KUNIN: Thank you, Mr. Wise, for your
13 testimony. You've, in your testimony, many times referred
14 to searching foreign patents, and you've also mentioned
15 that you've made it somewhat of a career of doing
16 professional patent searching. Through the PTO's home
17 page, we provide hypertext links to other patent offices'
18 web sites, and many of those, like the Canadian office, the
19 EPO which has this new S Pass Net, and JPO that provides
20 search of Japanese documents, more and more offices are
21 putting their collection of patents on a searchable data
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2 From your own experience, if you've had an
3 opportunity to explore the offerings of the other offices,
4 what is your reaction with respect to the benefits of
5 searching the other offices' patents through the internet?
6 MR. WISE: The clientele that I have each have a
7 designated one or more persons that do their data base
8 searching mostly in house. Now, I use the internet, your
9 internet data base a considerable amount of time. I'm
10 probably, noting the gray hair, what we call--or my
11 daughter calls it, a dinosaur in so far as data base
12 searching, although I do use it extensively when I feel
13 it's necessary.
14 But I'm much more comfortable with the paper, as
15 you can imagine, and key word searching, I found has its
16 positives when the terms are unusual or not too numerous,
17 but being in mechanical and electromechanical art, which is
18 where I come from, I don't find the full text data base
19 searching as useful as people in, for example, the chemical
20 area where the terms are better defined. Back to your
21 question, though, I oftentimes get sent to me with leads
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2 and other national offices, at least, and so they're
3 pointed out to me as that's how they've got them.
4 So I've chosen to stick with my forte which is my
5 best of searching is with the paper classified, and I will
6 push as hard as I can to keep them as long as I can because
7 so many people have agreed with me that full text
8 searching, for example, even if you keep going back to
9 1960, etc., with the capability, it doesn't somehow come
10 out the same as having that piece of paper in your hand and
11 being able to do with it without all the key boarding. And
12 also in the image station where you can bring up the
13 subclass, you have to do a lot of key boarding to get to
14 page 1 of the drawings to page 31 of the spec, etc., etc.
15 So I'm pretty well still stuck on the paper
16 search.
17 COMMISSIONER GODICI: Any other questions?
18 [No response.]
19 COMMISSIONER GODICI: Mr. Wise, I want to thank
20 you very much, and I want to thank all of the participants
21 who are still here. It's been very helpful to us, and I
3 4 5 6 7 MILLER REPORTING CO., INC. 8 507 C STREET, N.E. 9 WASHINGTON, D.C. 20002 10 (202) 546-6666 1 208 2 1 remind those and anyone that we're accepting written
2 comments, and we'd like them in by August 2nd so that we
3 can then start compiling and acting on the comments that we
4 receive.
5 But we want to thank everyone for being here, and
6 this concludes the hearing.
7 [Whereupon, at 1:45 p.m., the hearing was
8 adjourned.]
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