You made the point when you began that you were testifying, that you were present here-how did you phrase it?

Mr. DUNNE. On annual leave. I am doing this because I am an employee of the Patent Office. I am not speaking here in support of the administration policies. I am here in support of the Patent Office Society policies. For that reason, I am here on my own time, being as it is, a normal Government workday. I have taken annual leave, that is, my vacation time to appear before the committee. This way I am sure to maintain my own independence as an employee.

Senator HART. I do not have the foggiest idea as to what the ideal way would be to handle that.

Would it make any difference if you were here supporting line by line the administration's position?

Mr. DUNNE. It would not make a difference if I were here supporting line by line the administration position because it was the administration position. If I were supporting the administration position because the society believed in it, it would make a difference, yes.

For the record, we are in conflict here, and it is normal for Federal employees when they appear before Congress to only appear for information purposes only, I am not here for information purposes only. I am supplying policy recommendations, and I would like it clearly made known that I am appearing ex officio from my duties as a Federal employee.

Senator HART. It reflects a sensitivity that is admirable. I am not sure of the answer in general, and yet you wonder. The time you take and the information you give this committee combine to advance the performance of the whole Government. Maybe I am glad I am not the Commissioner. If you had come to me and said, I want to go on Government time, is it all right, I don't know what I would have told you.

Mr. DUNNE. To respond to your statement, as an observation, the Office has not suggested or has not even hinted that I take annual leave. This is my own decision.

Senator HART. Have you had an opportunity to hear or read the testimony that has preceded yours here?

Mr. DUNNE. Senator, yes, sir. I was here for the Commerce Department and the Justice Department's positions. I am also familiar with the positions taken by the organizations yesterday, particularly the ABA position. I am a member of the ABA patent section. I am aware of their position.

Senator HART. While you have responded to the five items that we asked for discussion in this hearing, I am not sure we will have another opportunity to get from somebody who is in the day-by-day routine, the ideas and suggestions that others in the firing line areas of how we could improve the performance of the Patent Office.

Do you have any suggestions not incorporated in the reform bill that would be helpful?

Mr. DUNNE. Senator, due to limitations of time of the Patent Office Society, we did this on our own time. We do not have the staff and whatnot that other organizations do to go into this fully. We have not gone into it and I could not give you an answer as the

Patent Office Society position. I would have to answer these questions purely on my own feelings, which are in no way indicative of the society.

Senator HART. Having explained that and narrowed it to your own opinion, do you have any opinions that you would like to present to the committee other than in the areas that you mentioned?

Mr. DUNNE. I feel the committee, particularly in drafting S. 1321, has really narrowed down and pinpointed some of the problems in the Patent Office procedures that are detrimental to the patent system. I think an excellent job has been done here to pinpoint the problem areas.

In answer to your question, no, I have nothing offhand that I could come up with right now; even after detailed study nothing would be as influential as the changes that are recommended here.

Senator HART. Specifically, I think particular reference was made to it in the prepared testimony. Hence, probably it would not be a position taken by the society.

What is your own opinion as to whether examiners would be enable more effectively to perform their responsibilities if the mechanized search facilities called for in the bill were available?

Mr. DUNNE. Senator, the society supports the concepts of mechanized search. I think the society is also aware, and I personally feel the same way, that mechanized search is a very valuable research tool for the examiner. Its practicality and implementation however, is limited by current technology.

We have a problem now that an examiner, when he picks up a patent application, knows the technology, has been working with it. He knows the limits where he should search, and he makes a subjective decision. It may be made differently by another examiner on the same case. He searches those areas of technology. Decisions of where to search and what to search are made by individual examiners based on their experience. That may differ.

Also, in mechanized search the input into the system has to be made by someone other than an examiner, for example, what we now call classifiers in the Patent Office. These people are charged with the responsibility of classifying the documents in the proper manner. To really see a patent document and pick out the words that would fit into the computer, to trip the mechanized system, requires knowledge of the case that you are working on, to know what is appropriate. Mechanized search is used in areas where it's practicality is limited to.

I had a mechanized search in my art. As an examiner I would use the mechanized search. However, I would not trust it and I would go back to manual search unless I found a pat reference. Other than that, I would have to go back and search it. It just is not recommeneded.

Yes, I would love to see real mechanized search, if feasible.

Senator HART. There was some testimony yesterday that the search facilities of the office as of now are inadequate.

How do you react to that?

Mr. DUNNE. I think the Patent Office has quite a large and extensive scientific library, and a very competent staff in that library, and

I feel the patent publications are obviously all available. We are missing a lot of trade journals and a lot of disclosures that are made in conferences, particularly foreign conferences. Various abstract services provide a lead on this, particularly in areas such as chem abstracts, in my area, engineering abstracts are used in the biomedical engineering fields.

Other than that, we would not have them unless we request the article by name, it if is not there. I think it is not a failure on the part of the office or the system that there is such a voluminous amount of information that is being promulgated daily by the Western technical society that to keep tabs and have it all classified for the examiner is an impossible task. We have to rely on independent judgment of the examiner to know where to look, and know where to look where he feels he might find something that might tell him where to look.

It can be improved. It will never be to the point where it could not be improved.

Senator HART. The requirement for the patentability brief-I take it you support it and it would in part insure a fuller appreciation of elements that were involved in the application.

Is that right?

Mr. DUNNE. The Society has not gone on record or cannot go on record right now on patentability briefs. We have not studied it. As an examiner I would appreciate a patentability brief because it does some of my job for me. Whether this in any way would affect the patent system, I really don't know.

Senator HART. As you say, if it would ease your job

Mr. DUNNE. I did not say it would ease it. It would do some of my job for me, possibly it could be more beneficial to the system if the examiners were doing their own jobs out of their own resources and creativity.

Senator HART. You say that the average examiner must dispose of an application in less than 15 hours in order to obtain the office-wide production goals.

Mr. DUNNE. Yes, sir.

Senator HART. Is it possible to determine how much time is necessary for a valid search?

Does it depend on the kind of examiner?

Mr. DUNNE. It depends, not to get too technical, but getting into some of the language we use in the office, we have what we call combination and subcombination claims. A combination claim would include a variety of elements. For example, in the biomedical field, I have anaesthesia machines and respirators. I get a claim on anaesthesia machines. That would dictate my search. If the claim were to improve the pressure release valve on the machine, I would search. valves. If the claim was an anaesthesia machine with this valve on it, then I would have to search anaesthesia machines and valves. So it is dictated by the scope of the claim.

The classifying system within the Patent Office also dictates search areas. For example, if an application is classified in a specific subclass within a specific class, the class definition will also direct that examiner to searching other classes, which have become known

by the great multitude of experience that likely pertinent art may exist there. So some searches are dictatorial in the sense that when you start a search, you know one subclass. That subclass definition tells you there are others where you must go to do an effective search, and they may say others.

So these two influences would indicate where an examiner may search. You have the mandatory search fields dictated by the classification definitions and that dictated by the claims.

Senator HART. The sentence that I read and I will reread-the average examiner must dispose of an application in less than 15 hours in order to obtain the office-wide production goals.

Mr. DUNNE. As far as search is related, this is the most time consuming aspect.

Senator HART. Tell me we have asked whether there is a quota system. There is a general reluctance to admit to quotas in anything these days. Clearly nobody in the department is acknowledging that there is a quota system that works in the patent office, but you have got yourself an average here to maintain the office-wide production goals.

Call it what you will, does that not mean that an examiner is under an obligation to move so many files in such a period of time? Mr. DUNNE. The goals are set for each examiner. They would average less than 15 hours. The goals are not mandatory in the sense that if you do not maintain your goal, that you will be severely reprimanded. The goals are the criteria that are used to evaluate performance, promotional considerations as distinguished between a raise. An examiner may get a raise and not obtain his goal. His yearly increase is based on experience, but a promotion requires an attainment of the goals, or if you have not met the goals, a greater standard of quality which would justify. The office has a quantityquality balance here.

Senator HART. A fellow would be much more comfortable if he had met the quantitative standards than have to argue that he had met the qualitative standards. It is always easier to prove figures.

So isn't there some built-in pressure there to move to make sure you are right with the figures?

Mr. DUNNE. Yes, sir, there is. This pressure extends not only to the way you would examine application, but what type of work you will do at a specific time. We have our minimal accounting period-it is a 2 week accounting period, measuring an examiner's production. You go through your first week, and you obtain a certain amount of actions. And then the office demands that you do other type of actions. There is a lot more than numbers. You have to balance the type of work. There is a lot to influence how you may go about it and what cases you pick up.

If you could repeat the question.

Senator HART. Simply, if promotion, not just annual rate, literal promotion depends on meeting either a quantity or a quality standard, the question is, doesn't that mean that there is pressure?

Is not human nature such that the examiner is going to make darn sure he meets the numbers because it is easier to prove.

Mr. DUNNE. Most definitely, most examiners are aware of the goals and chart their yearly work to approach these goals. Most definitely yes,, sir.

Senator HART. Whether the question of promotion hinges on having met the quantity goal or satisfying your superior that you had met the quality goal, whichever is the stronger motivation on the part of the examiner, is there a bias built into the system in favor of allowing a patent rather than disallowing a patent?

Mr. DUNNE. Senator, I would say there is not a bias built in allowing a patent because one of the statistical numbers that are used to evaluate performance is the percentage of allowance. I know the Patent Office will never say they have denied promotion or recommended promotion based on that number. The examiners put a premium on that number. They know that the man before them on that docket was getting 70 percent of the cases allowed, 30 percent abandoned. That might not be his figure. He knows that if his numbers are 80 percent allowance, then he is doing something different than the other examiner before him did. He adjusts it accordingly. He uses that as his own personal check. That would be the only pressure or imput from the statistical numbering system on allow

ances.

The goals may affect the amount of time spent on a case. They would not affect how he would dispose. The system does not force the examiner to issue or abandon. It does not put any pressure on him in this regard. It may affect the time that he spends reaching an issuance or having the case abandoned, not the result.

Senator HART. Quality in the product reflects in part the amount of time he puts into it.

Mr. DUNNE. Yes, sir, Senator.

In anything you do, the more time spent, the better quality. The examining corps puts a very high premium on the allowability of claims over the art where they should be searching.

Because of the pressures of time, the first things that may go may be checking of spelling, syntax, grammar. If you talk to the older examiners, they are nitpickers on spelling and punctuation, while that does not happen anymore because of the pressures of time. The examiners do an adequate search, I would feel. The pressures of producing cases at a certain hourly rate are not that strong that they affect the areas of search. They may affect other areas of insignificant consequence.

Senator HART. Insignificant?

Mr. DUNNE. Less significant than the actual search against the actual time.

Senator HART. Whether or not that may be of lesser, consequence, do they bear on the likelihood of making a proper decision in respect to the question of patentability?

Mr. DUNNE. I would say generally no. They might be more in the line of having a document that meets the high standards required As far as the claims themselves, on allowability, no.

Mr. Tegtmeyer talked about this point, and I have to agree with him wholeheartedly, that searching as I mentioned before, is directed, mandatory in certain areas, and some at the discretion of

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