ROBERT SABATH WORLD INTELLECTUAL PROPERTY AND TRADE FORUM MR. SABATH: Mr. Commissioner, distinguished Panel. My name is Robert Sabath. I speak today in both my capacity as President of the World Intellectual Property and Trade Forum and as a solo practitioner in the patent field. I'm also on the Executive Com- mittee of the California State Bar's Intellectual Property Sec- tion, but as you know, Mary O'Hara and Michael Glenn will testify at these hearings on behalf of the State Bar. Additionally I speak as Legal Issues Editor of QuickTime Forum, a multimedia developer's publication. The primary topic today is the use of the patent system for the protection of software_related inventions. The central objective of my remarks is to encourage greater flexibility within the framework of the law in promotingp patenting of software_related inventions as well as pure software inventions. Patents themselves are the best prior art against subsequent ap- plications for a patent grant. Anything that artificially limits the development of the body of prior art relied upon by the pa- tent and trademark office has the effect of slowing the progress of technology in critical fields. Software is clearly a key and strategic industry for the United States. It's no secret that software itself in the development of the industry were not caused by the patent incentives, but still, the patent system is part of the incentive structure which is necessary to the contin- ued development of many software firms. Moreover, the efforts of the United States Government to promote U.S. trade interests abroad and even to advocate changes in the intellectual property laws of other countries are severely under- mined if the U.S. intellectual property laws and regulations fail to encourage successes of key U.S. industries at home. One such key tstry is clearly software. I do ask for your indulgence, Honorable Commissioner, in address- ing a slightly broader question than the primary topic indicated above. As a sole practitioner I've come close to the plight of the solo inventor affected by the substantially increased PTO fees promulgated by prior administrations. Particularly the maintenance fees are believed to be a disincentive which may dis- suade individuals from even initiating the process of obtaining patent protection. But the cost of patenting which is born today by inventors and companies is softened by the Silicon Valley spirit of self_help which has characterized the American spirit since the days of George Washington and Thomas Jefferson. An example of this self_help is the Sunnyvale Patent Information Clearinghouse. Self_help, and necessity, have additionally spawned in Silicon Valley a substantial venture capital community which is selectively supportive of the efforts of individual in- ventors. This spirit of self_help is additioxy shown by many lo- cal firms and companies which have opened offices in Washington, D.C., and its surrounding communities of Virginia and Maryland. We do salute you, Mr. Commissioner, and distinguished Panel for coming here to California. We clearly need your help, not just with regard to improving the laws and the regulatory environment as it relates to patents, but also with regard to the infrastruc- ture in which patent and invention processes play themselves out in the United States. The U.S. Government has facilities, buildings and courthouses throughout the nation. These facilities and buildings have many purposes. Federal courthouses now hear patent lawsuits in San Jose as well as in San Francisco, and in cities throughout the country. It is clear that our country has developed elaborate mechanisms for facilitating and resolving disputes between litigants and pa- tent lawsuits. However, we have done pitifully little at the Federal level to enable the solo inventor to search for prior art and eff|vely to limit the scope of claims to his fields or her fields of rightful entitlement. Mr. Commissioner, accordingly we're very happy to have you here today in this convention center. We believe as a minimum the West Coast deserves a branch of the USPTO having at least search facilities to support the software, the semiconductor and the electronics industries that have developed the infrastructure of the American West so extensively. Perhaps the availability of public search rooms for inventors is not a matter for the Department of Commerce, but rather for the Department of Education. But whether the Commissioner of Patents and Trademarks takes the initiative or whether another Federal agency takes the lead, it is clear that many communities in our country need access to the technical collections and patents of the Federal Government. The facilities for obtaining prior art in Sunnyvale are clearly needed. But in most communities of America, such facilities are nonexistent. Moreover, solo inventors seldom in a position to invest in a state_of_the_art CD_ROM system or computer search services in view of their high cost. The Information Superhigh- way offers a bright vision of a technological future. Will there be facilities to provide public access to information carried in this superhighway? The Patent Office can provide such facilities to bring the fruits of this superhighway of information to our inventors, to the young in America who thirst for knowledge and progress, and to the public at large. The physical facilities of the Department of Commerce and the Un- ited States Patent and Trademark Office are needed in our local communities to implement the purposes of the intellectual proper- ty laws of our country. America wants to build its future by edu- cating the inventors of the future. We need public search facil- ities for the electronic arts wherever major electronics develop- ments are being made, in California, in Austin, Texas, in Dallas, in Colorado, along with many other communities across Ama. We need biotechnology search facilities in Emeryville, Califor- nia, and in Cambridge, Massachusetts, and in other communities of the nation, and we need software search facilities in the nation's software development centers including but not limited to such areas as Seattle and Silicon Valley. The German example for one shows that search facilities and examination facilities need not necessarily be located in the same cities. The resources and the facilities of the PTO should be distributed at various locations across America to provide public access to the prior art regarding technological developments which have al- ready become known. We salute you, Mr. Commissioner, for coming to California to address the vital subject of patenting software_related inventions in this public forum. The California economy is improving, but it remains disastrously understimulat- ed. Because of the size of California's economy it can either drive or hamstring recovery on the national scale. The questions raised at thiblic hearing have a direct and vital bearing on the economic well_being of California. We thus appre- ciate your coming to guide these hearings. To focus more definitely on the subject of patenting software_related inventions, it is my belief and that of many participants in the World Intellectual Property and Trade Forum that there is no substitute for the development of an increased body of software art available to patent examiners. With a prop- erly classified and complete body of prior art the searching and the examination of new patent applications will be enhanced. The World Intellectual Property and Trade Forum salutes the corrective action of the Commissioner in connection with the reexamination of Compton's multimedia patent. This reexamination process clearly shows that even though applicable prior art was not initially available to the examiner, there are mechanisms for addressing questions of patentability even after grant of a pa- tent, but certainly it would be optimal if the applicable art heen found and addressed during actual examination. One way to ensure an effective and complete body of prior art in the field of software patents is to relax the policies of the PTO with respect to the patentability of mathematical algorithms. Considerable room for relaxation is available even within the bounds of current case law on the subject. Many new inventions beneficial to the developing field of software may currently not even be the subject of patent applications because of the chil- ling effects of the PTO's restrictive approach to the patentabil- ity of software. Insufficient software prior art limits the ability of the PTO to examine effectively future software_related patent applications, including pure software patent applications. The distinction between hardware and software approaches to the same problems has blurred technologically. This distinction should be blurred and eliminated in the bureaucratic spaces of the Patent and Trademark Office as well. Patent examiners should rely leeavily on the Section 101 as a basis for rejecting software_related inventions. With an increas- ing body of prior art established by greater flexibility in al- lowing software_related patents, examiners will be encouraged to make substantive office actions based upon technical art rather than merely implementing policy articulated by agency representa- tives. One object of the patent system is to encourage progress in the arts by publication of inventions. The effect of patent grant is to add to the body of detailed technical information comprised in issued patent documents. When a Section 101 rejection is suc- cessfully asserted by the PTO, the practical effect is to deny future software developers of the benefit of full patent disclo- sure. This hampers the development of new ideas in many techni- cal fields, including multimedia software generally and even biotechnology which is to an extent dependent on progress in the field of data systems for its instrumentation to be effective. We thank you again, Honorabommissioner, for coming here and con- ducting these hearings. COMMISSIONER LEHMAN: Thank you very much, Mr. Sabath. I just point out that we do have patent depository libraries all over the United States and I think there are several on this area, probably one at Stanford and Berkeley, and they actually have everything we have in the Patent Office there, and that is avail- able to the public. In addition, we're automating the Patent and Trademark Office, and in fact right now if you're in Arlington you can go into the __ in fact, Group 2300 is fully automated al- ready, and if you go into our patent search room in Washington, we've got a facility there where you can actually get computer retrieval of the patent documentation and we have plans to extend that to the patent depository library so that you'll be able to come out here and do the same thing. And eventually, hopefully in a few more years, we'll actually have this service available through the Internet. We're not quite there technologically yet, butry engineer and computer scientist in Silicon Valley will just be able to, in a few keystrokes, get access to our patent data- base. We think that's not only going to help people understand what the patent prior art is but hopefully it will give them ac- cess to some of the technology more easily than they otherwise would have, so we are indeed, I think, making some progress on that problem. Thank you very much. MR. SABATH: Thank you. COMMISSIONER LEHMAN: Next I'd like to call Mr. William Benman of Benman & Collins. And Mr. Benman is the last speaker for this morning. We're pretty much right on target on our time. Thank you for joining us.