LEE HOLLAAR UNIVERSITY OF UTAH MR. HOLLAAR: My name is Lee Hollaar, I'm a Professor of Computer Science at the University of Utah where I teach the Seniopftware Development Laboratory and also teach computer intellectual pro- perty law within the Department of Computer Science. I also con- duct research into information retrieval systems. I've been in- volved with computers for almost three decades and received my Ph.D. in Computer Science in 1975 from the University at Illi- nois. I'm also a registered patent agent working with the Salt Lake law firm of Van Cott Bagley Cornwall and McCarthy primarily with computer_related inventions. I hold one United States pa- tent and I have another patent pending. The views I'll be ex- pressing are my own and not necessarily those of the University of Utah or any other organization. First I'd like to thank the Commissioner's staff for the oppor- tunity to testify regarding these important matters and to com- mend them on holding these hearings. I'd also like to congratu- late the office for making their decision to accept comments electronically and to make the comments and transcripts of these hearings available on the Internet. today what I'd like to do is cover a few points from my dual perspective as a computer scien- tist and also a patent practitioner. I'll be following up this testimony with written comments. One of the things I would like to mention is that there are a number of assumptions that seem to be taken for granted about the differences of software and its patentability that may not actu- ally be true, and should be examined. One is that there's the as- sumption that computer software is a fast_moving technology and that therefore a lesser patent term __ I've heard three years suggested __ may be appropriate. Interestingly enough, about two weeks ago Butler Lamson gave an address at the University of Utah, he's one of the inventors of the Alto Computer and a number of other innovations from Xerox Park, and he indicated that from at least his point of view much of the innovation going on in computers is not the result of computer software, but the comput- er hardware now available at much faster speeds with more memories,xbling techniques that were known in the laboratories many years ago to be possible now and to be available to the masses. In fact he made the statement which many people disagreed with, but it certainly caught people's attention, that from his point of view with the exception of spreadsheets there's been no surprises in computer science since 1975. It's interest- ing to note that anything which you filed an application on in 1975 and a patent would have issued, the patent would have been expiring about this time. It's also interesting to note that the fundamental books on computer algorithms, written by Donald Knuth came out when I was a graduate student approximately two decades ago. Again, if everything in those books was patented, the pa- tents would be expired by this time. Much of computer science I see, my students and so forth, con- sists of reinventing wheels. A large amount of that is because people don't check prior art and a large amount of that is be- cause there's no good prior art collections t|eck, and I think __ and I will comment on this __ that this is one of the problems that has been caused by the two decades of the Patent Office hav- ing at best ambivalent attitudes toward the patentability of com- puter software and not using the patent system to draw the trade secrets and the other art into the printed publications of U.S. patents. I was involved with developing a computer system in 1969 which is still running. If I had patented every technique in that computer system, and it still represents the basis for a state_of_the_art system, those patents would have expired five or six years ago on it. Comment has been made that patents can restrict developers, and that's certainly the case, but that's true on every patent in every area of art. It's not particularly true for computer sci- ence in any respect. The comments have been made about bad pa- tents, patents which have prior art problems, poor examination, again these exist in every art unit. Perhaps it may be worse in the computer art arecause there was this period of time when the Patent Office was denying computer patents and therefore not building their prior art collection, not encouraging the submis- sion of patent applications which would mature to patents and go into the prior art collection on it. In my recent practice I've found the inexperience that people have talked about with the examiners to be diminishing and I've found that the examiner's doing quite a good job given the con- straints of trying to examine very complex art in a wide variety of areas. I think also that the patent office has received bad press due to both people who should know better and also the peo- ple providing the information not knowing enough about the patent system. Too often comments are based on the title or at best the abstract of the patent, and not the claims, which indicate what the true invention is. Often this is compounded by press releases from patentees trying to make their patents seem more important than it really may be. There have be number of problems caused by the past PTO position on patents. One, as I mentioned, is the poor prior art collec- tion, which has been difficult, because in many cases computer inventions aren't as self_revealing as mechanical invention. When you sit down and sue a spreadsheet or another computer, you're aware that you're using a spreadsheet, but you may not be aware of the order that cells are being recalculated or the par- ticular algorithm that is being used for justifying the text. The patent system would have eliminated this problem by forcing inventors, in trade for the patent monopoly, to reveal their trade secrets, to reveal how this would work, thereby giving a prior art collection for people who want to develop follow_on systems, and because of the distinctive claiming of patents as opposed to copyright, providing an indication of what an inventor can do to avoid the patent and yet produce an improved product on it. Computer scientists suffer from a poor tradition of publishing their algorithms,ecially those involved in industry, and also in looking at prior art. I often think that many of my students wouldn't know where the library is on campus if you ask them, and when they start out on a project the idea of going to the library is not the first thing that crosses their mind, and certainly the idea of doing a patent search to see what's in the prior art and see how to accomplish things is far from their mind. I think that while the Software Patent Institute should be congratulated for what they're doing, their idea of collecting prior art is doomed to failure because especially for old inven- tions, it is very hard to determine what is prior art or what are the novel things. In the typeset system I wrote many years ago there were probably hundreds of things which may be novel or may at least be prior art for future inventions, and it would be hard to enumerate them. Other problems caused by the past PTO position is both in the disclosure and in particular in the claims' obtuse language, unclclaims, as attempts to avoid a perceived perception of the PTO position on Section 101, claiming things which are clearly software programs as computer building blocks. I think of one pa- tent issued to Thompson where not only is the source code listed, but they tell you how to build it out of computer modules from Digital Equipment, out of flipflops for this searching technique. No one believes that that's how they intended to implement the invention. More importantly, the Section 101 babble often takes the steam out of the examiners. After fighting the 101 fight there may be very little fight left in them for the proper 102 and 103 questions. I recently reviewed the file wrappers of two patents for a client who wanted to know their scope, and was shocked by how little prosecution history there was after the 101 arguments had been resolved, even though one patent had a con- tinuation application filed and had been pending for a number of years on it, virtually no 102, 103 arguments after the initial 101. think the patent system has produced distortions in copy- right laws, courts have held it necessary to provide protection beyond literal copying so that we have decisions like Whelan or the current Lotus against Borland decision, trying to extend copyright perhaps too far from its intended purpose, and as I said we have the loss of past disclosures because the Patent Of- fice wasn't accepting patent applications, which has caused much reinventing of past techniques. The solutions? I think one is to eliminate much of the current 101 confusion, and in fact go back to the basic principles of in- ventorship, that patents are, if there is something useful being produced, should probably meet the 101 test, and the real battle of whether the patents should be issued should be tried on 102 and 103 issues. The comments have been made about laying open files during prosecution, and I strongly support that. I think it's the one hope we have for getting the prior art. Both laying it open at some fixed period of time sas eighteen months has been suggested to eliminate the so_called submarine patents, and also laying it open sometime after initial examination by the Patent Office. I would make sure that the file isn't laid open before the first office action such that the applicant has a chance to withdraw the application based on the position of the Patent Office and the prior art that's been found, and make an intelligent decision of whether to keep it as trade secret. I would recommend that there be a period after the office deter- mines that a patent is allowable that people can submit prior art for consideration by the examiner. This could be done by using technology to widely distribute the notice that this patent is about to issue and a representative claim and has some method for retrieving of the application, perhaps tied in with the project ongoing for the electronic filing of applications. This shouldn't be an advisory procedure, but a way of having the prior art brought to the attention of the examiner. I k in my case of the old system that I have, I certainly could see if there was an application and claims whether I had prior art on that and submit that to the attention of the Office much easier than I could go through a very complex system and identify every piece of prior art such that it could be searchable by the Patent Office. That concludes my remark, thank you. COMMISSIONER LEHMAN: Thank you very much, Professor, that was some really very helpful testimony. Appreciate you coming over here to California to talk with us. Thank you. Next I'd like to ask Dennis Fernandez. Is he here? For Fenwick and West? Okay. Welcome.