MARY O'HARE CHAIR, EXECUTIVE COMMITTEE INTELLECTUAL PROPERTY SECTION, STATE BAR OF CALIFORNIA MS. O'HARE: I am not Michael Glenn. He felt as though he needed some company up here. Assistant Secretary and Commissioner Lehman, my name is Mary O'Hare. I am the Chair and am speaking on behalf of the Execu- tive Committee of the Intellectual Property Section of the State Bar of California. The Section is voluntary, comprised of more than 37OO attorneys practicing in the various intellectual property fields of copy- rights, trademarks, trade secrets and patents. Our members represent, for the context of this hearing, individuals, non_profit organizations, small and large businesses. We are proud that our organization was one of the first to have Commissioner Lehman as its keynote speaker and we thank you for holding these hearings in California. All too often in the past, as Commissioner Lehman has noted, Cal- ifornia, and sometimes the needs of its attorneys and clients, more than 26OO miles away from the Patent Ofh, have been felt to be out of sight and out of mind. Nonetheless, California has been the center of the United States cultural and technical renaissance of the late 2Oth century. California's two largest industries, entertainment and technology, are also the United States' two largest export engines. We in the Section hope that these hearings will signal the Office's willingness to have easy, open access to the Patent Of- fice for Californians, a privilege until recently primarily en- joyed by the Washington, DC, patent bar. While I am Chair of this Section, my intellectual property exper- tise has been gained in the context of a motion picture enter- tainment practice. Commissioner Lehman, we know you have a sense of humor, we know you know that we've been through an earthquake recently, but the tragic earthquake in Southern California may have rattled our homes, our offices and our psyche, but let me assure you that Californians are tough, we are not so rattled as to ignore the importance of your presence l and that's why we are here or to presume to have a motion picture attorney address you on matters at the Patent Office. Therefore, I am privileged to present Michael Glenn, an officer of our Section, who is a patent attorney in the Silicon Valley who has represented both individual inventors and large corpora- tions before the Patent Office for the past 14 years. His qualifications are set forth in our written statement and he will present the statement of the Section. Thank you. COMMISSIONER LEHMAN: Thank you. __o0o__ MICHAEL GLENN, ESQ. MR. GLENN: Commissioner Lehman, today's hearings have been con- vened to receive comments from the public on patent protection for software inventions. Rather than respond to the specific questions raised in the Notice of these hearings, we will address the important, broader issues that form the context in which the issue of patent protection for software inventions arises. These issues include: (1) the expertise and ability of the Exa- mining Corps, especially wpregard to the difficult task of apply- ing complex legal principles to emerging and sophisticated tech- nologies; (2) the availability of task appropriate tools and resources to the Examining Corps; (3) the need to make Patent Of- fice services and resources readily available to the public; and (4) the understanding that the US Constitution, in providing the Congress with "the power to promote the progress of science and useful arts by securing for a limited time to authors and inven- tors the exclusive right to their respective writings and discoveries", did not limit the types of discoveries for which a grant of exclusive rights would be secured. Preliminarily, it must be observed that patent myths abound and the Patent Office should use its best efforts to dispel these myths. These hearings are one excellent way to raise the general level of public understanding of the US patent system. However, the primary job of the Patent Office is to examine patent appli- cations. A quality examination and precise applictn of the pa- tent laws by the Patent Office are necessary to assure that the interests of both the public and the inventor are properly served. First, while recent efforts to improve the quality of the Patent Office services, especially the quality of the Examining Corps and as a result the quality of patent examination and patents is- sued by the Patent Office have not gone unnoticed, more needs to be done. Because the process of examining a patent application necessarily demands both a high level of technical expertise and a thorough understanding of the legal standards that are applied during the examination, the Patent Office must continue to attract and re- tain Examiners who not only have the technical knowledge neces- sary to understand the invention, but who also understand the le- gal framework within which the Patent Office functions. To this end, ability and merit should be the most important standards by which Examiners are hired, promoted and retained. Secondly, we encourage the Patent Office to doxe with regard to improving the quality of the patent examination process. For example, in many technical areas a search of issued US pa- tents alone cannot reveal the most relevant prior art. In rapid- ly developing technology, such as computer software and biotech- nology, where the enforceability and availability of intellectual property rights in the past have been uncertain, the most relevant art may be found in industry journals and in proceedings of professional societies and institutes. The Examining Corps should be encouraged to search all relevant information sources. Intensive training in using these informa- tion sources should be provided the Examining Corps such that the most relevant priority is applied by the Examiners to every pa- tent application filed with the Patent Office. Thirdly, since the Patent Office is also a tremendous depository of knowledge, we encourage the Patent Office to explore the pos- sibility of giving the public throughout the United States free or inexpensive access to the |nt Office database through an on- line source such as the Internet. At present the few public patent depositories scattered across the US are underfunded, understaffed and resource_constrained. For example, online searching is not available at the Sunnyvale patent depository here in Silicon Valley and those wishing to perform a computerized search of the now available CD_ROM data- base there are limited to only 2O minutes of use. The Patent Office search room in Washington, DC, is not accessi- ble for the public at large, attorneys and inventors who live, work and invent in California. Ready public access to such publicly_owned information would allow inventors to make informed decisions about whether or not they should pursue patent protec- tion, would allow those seeking to enter a new market to review the patent literature before entering upon a course of action that could lead to a wasteful, potentially disastrous patent in- fringement lawsuit, and would allow those seeking to license technology to have accto the marketplace of ideas contained in the Patent Office database and be better able to establish a fair value for such technology. As important, the public would become more familiar with and better educated concerning the patent sys- tem. Fourth, from time to time an issue may arise when a recently_issued patent is publicized as part of a marketing cam- paign by a successful patent applicant or as part of an ideologi- cal debate concerning the applicability of patent laws to the technology protected or the breadth of coverage afforded the in- vention by the patent's claims. As a result a discussion ensues concerning the wisdom of extending patent protection to new and emerging technologies. We caution the Patent Office not to allow the mere existence of a public debate alone to provide a ra- tionale for establishing separate rules for such technologies. This discussion is not new. In the days of the Wright brothers there was the fear that the future development of aviation would be seriously impeded if Wi and Orville should be allowed a basic patent on their invention. As we all know, this was not the case. As Wilbur Wright put it: "When a couple of flying machine inventors fish, metaphorically speaking, in waters where hundreds had previously fished, and spending years of time and thousands of dollars finally succeed in making a catch, there are people who think it a pity that the courts should give orders that the rights of the inventors shall be respected and that those who wish to enjoy the feast shall contribute something to pay the fishers." With regard to enforceability of patent rights for new and emerg- ing technologies, the Patent Office must show leadership. The Statutory mandate of the Patent Office is clear: novel and unob- vious inventions that comprise patentable subject matter must be granted a patent. As a general principle, patentable subject matter cannot be limited to known technologies, but, as stated by the Supreme Court in the Chakrabarty case, must also encompass "anything under sun that is made by man." Otherwise, only old technologies will be found to comprise patentable subject matter, at which point the patent system will lose all meaning. It is the ownership of invention that spurs innovation, not just the promise of exclusivity afforded by patent grant, but more significantly, in the incentive to avoid a patent by inventing around the patented invention. Finally, while the patentability of software inventions has long been an interesting topic of discussion, first in the courts and the Patent Office and now in the press, much of the discussion may be caused by misunderstanding and confusion. We suggest that some of the misunderstanding stems from the confidential nature of the examination process. In many areas it is not possible to perform an infringement search to clear a new product because the most relevant patents are still pending in the Patent Office and not available to the public. The Patent Office could explore opportunities for involving the public in the enation process to avoid any surprise attendant with the grant of broad_reaching patents. For example, the Pa- tent Office may want to consider the pre_grant publication of pa- tent applications and/or pre_grant public opposition hearings. We applaud the Patent Office decision to re_examine a recently issued patent on its own initiative in light of new art discovered after issuance of the patent. As an organization we have no opinion regarding the outcome of the re_examination, we only applaud this bold and welcome policy on the part of the Pa- tent Office to pursue excellence. The ultimate outcome of such actions will be to improve the stature and regard with which a United States patent is held. This in turn will provide more certainty concerning the validity of an issued patent. Reducing the likelihood of a successful attack on the validity of a patent should encourage early settlements of patent disputes and strengthen American industry by strengthening the incentive to innovate rather than to litigate. In closing, the Patent Office must continue to serve the needs of a broad range of applicants, from independent inventors to multi_national corporations, while taking into account the ef- fects of a fast_changing global economy. Patents not only protect inventions, they also protect employment and national wealth. The United States is a technology leader because of the incentives it provides to those persons who take the effort and risk involved in bringing new inventions to the marketplace. Of all the nations in the world, the United States has the only significant software industry, the only significant biotech industry, and the only significant microprocessor indus- try, to name a few. These industries form a mighty technology river that has human creative energy as its source. The American experience shows us that such creative energy requires incentive. The role of the Patent Office is paramount because the Patent Of- fice is charged by law with providing incentives for this creative energy by protecting patentable inventions. We pledge that if you involve California's inventors and practi- tioners in the ongoing discussion of Patent Office procedure and policy, your job will be easier and we can together ensure that the patent system and the Patent Office fulfills the Constitu- tional proviso of promoting the progress of science and the use- ful arts, all to the economic benefit of the citizens of Califor- nia and the rest of the United States. Thank you. COMMISSIONER LEHMAN: Thank you very much. Next I'd like to call Mr. Lippe of Synopsys.