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Mr. BRENNAN. Mr. Chairman, the final witness in this series of hearings is Mr. Milton Weissman.

Senator Hart. Mr. Weissman. You are a patient man.

Mr. BRENNAN. Mr. Weissman, you have a rather lengthy prepared statement and I think it will accommodate the hearing if we place it in the record.

Senator Hart. That is because he is an author and an editor.

Mr. BRENNAN. It would accommodate the subcommittee considerably if you would have it printed in full in the record and then focus all of your testimony on the five issues that are included in the hearing. Senator Hart. It will be printed in full.

Mr. WEISSMAN. Senator Hart, I will try to concentrate on the matters that really haven't been discussed too much.

STATEMENT OF MILTON WEISSMAN, PRIMARY EXAMINER,

U.S. PATENT OFFICE

Mr. WEISSMAN. By way of introduction, my name is Milton Weissman. I am a primary examiner in the U.S. Patent Office. I have close to 29 years of experience in patent examination and over 2 years of experience in patent classification and retrieval systems. I am also the editor-in-chief of the journal of the Patent Office Society, to which I was appointed in April of 1967. Before that I was appointed as the assistant editor in February of 1963, so I have over 10 years of experience, of editorial experience, in patent-related matters.

Now I think I want to make clear that the opinions expressed in the prepared statement are fully my own, and they don't represent and I don't want them to be judged as representing or having been adopted by any organization of which I am a member.

Senator HART. Fine.

Mr. WEISSMAN. Now, the first section of the prepared statement is entitled, “Patent Invalidity: A Crisis for the United States Patent System.”

Almost all recent dicussion, either written or oral, dealing with the subject of the invalidity of patents is based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. Now it is high time indeed that the opposite side of the coin be closely scrutinized. The conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees that the courts are applying a too strict standard of patentability.

Now, do the officials of the Patent Office really care about the validity of the patents which are issued from their agency, as long as the production goals which they set for the patent examiners concerning the disposal of patent applications are met? The official position of the Patent Office is that they do desire the issuance of patents of the highest possible validity. But, in view of their actual conduct concerning production goals, this position must be viewed as at least open to question. As long as the officials of the Patent Office demand greater production of disposals each year, even though the number of examiners remains about the same and the amount of prior art to be searched increases ominously each year, it is difficult indeed for anyone with an objective viewpoint to be convinced that they are paying anything more than lip service to the concept of the highest possible patent validity.

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Nor are the others involved in the issuance of invalid patents to be considered entirely blameless. Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long as they can obtain these patents (which may or may not be valid)? Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware? Then the examination process could be focused on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and the applicant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.

Furthermore, the attitude of the patent bar toward any proposal for altering the present patent system, even though expressly designed to aid in the goal of having patents of greater validity issued by the Patent Office, can at best be described as merely lukewarm. Is it really too much to ask that they put aside self-interest at least to some extent, to pursue a goal of having patents of the highest possible validity issued by the Patent Office ?

Now, the Patent Office has always had a tremendous problem, i.e., insufficient time in which to perform a proper examination of a patent application, without any solution therefor. I want to call attention to the following statement by Mr. Donald Brown, then vice president and patent counsel of Polaroid Corp., which appeared at pp. 266-267 of "Hearings before the Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary, United States Senate, 84th Congress, 1st Sess.,” back in 1955. This is his statement:

We believe that the present shortage of Patent Office personnel makes it impossible for the examiners adequately to search the art if the work of the Office is to be kept on a reasonably current footing. For example, it is our common practice, even in fields in which we are reasonably expert, to search the art before introducing a new product commercially. These searches, which are usually limited to U.S. patents of the last 15 or 20 years, may average 4 to 5 days of one mans time. An exhaustive literature search, such as we make if we are charged with infringement of anothers patent, may run from 10 to 20 days of one man's time or even longer. As opposed to this, it is our understanding that the Patent Office's examiners on the average, can devote not more than one-half day to the preparation of each Office action. *** We do not believe that it is possible, even for a skilled examiner familiar with the art, to make an adequate search and to consider a new specification or a fairly complete amendment within a period of 3 or 4 hours. *** We feel that today much of the technical literature is not searched by the Patent Office examiners. We know that our own searches invariably develop references which we believe are closer than those developed by the Office.

Since at that time a patent application normally received three office actions, the last one being final, it received about 12 hours of examination by the Patent Office. From those figures it should be quite evident what basically is the cause of patent invalidity. It is extremely interesting to note that at the present time patent applications receive the same inadequate type of examination.

Now, patent applications are presently filed at the rate of about 90,000 or 100,000 per year. To keep the backlog at the same level at least this number of patent applications must be disposed of annually by the Patent Office, i.e., by allowance or abandonment. Because of various factors such as leave, et cetera, assuming that an examiner works 1650 hours per annum, a typical GS-13 examiner without signatory authority is expected to obtain 110 disposals per annum. This averages out to 15 hours per disposal. And might I say this is a figure given in the introduction to the bill. I think that is the source of it.

Now the situation is far worse with respect to a typical GS-15 examiner, having full signatory authority, who is expected to obtain as high as 147 disposals with an average of 11.5 hours per disposal. Any comment that this hardly represents adequate examination of a patent application is woefully inadequate. The next section is entitled "The United States Patent Office: Its Role in Fostering Patent Invalidity.”

Now, much as been written recently concerning the causes of patent invalidity, but practically nothing relates to the role of the Patent Office in fostering patent invalidity. Only a few scattered comments can be found in the legal literature, such as the following:

"[The Patent Office] has got to be the sickest institution that our Government has ever invented. It is just as far as I can see an attritional war between the patent applicant and the patent examiner who apparently got paid on the piecework for how many patents they could put out.” Judge Miles W. Lord, September 8, 1971, United States v. Charles Pfizer & Co., Inc., et al. (Tetracycline civil damage suit), 4–71, Civ 435 (D. Minn.).

What exactly is going on in the Patent Office that would cause a judge in a Federal district court to place such a vitriolic comment in the record of a legal controversy!

It should hardly surprise anyone that the Patent Office, operating under present practices and procedures, is at least one of the prime causes for patent invalidity. There is also hardly any question that some of the practices are a result of the demands made upon the Patent Office with respect to decreasing, or at least maintaining at the same level, the backlog of unexamined applications. But the question here is simply whether or not there can be any justification for the practices and procedures employed by the Patent Office in order to meet the demands made, regardless of what they may be, when it is glaringly apparent that they must inevitably result in a flood of invalid patents. Now exactly what are the practices and procedures, and why must they foster patent invalidity ?

This section I have entitled, “A. The Quota System.” This is what I am really going to concentrate on, Senator.

Now, what is involved in any quota system is always a subordination of quality to quantity in order to meet some production goal.

This is true even on an automobile assembly line. But the quota system in the Patent Office goes far beyond this. It is not merely a question of subordinating quality to quantity in order to meet a production goal. What is involved is a total obliteration of the concept that there can even be a requirement of quality, regardless of how low it may be, in the examination of patent applications. It is hardly any wonder that examiners refuse to become concerned with the quality of the examination they perform, when the result thereof will be punishment, not reward. How can such a system do anything but foster invalid patents?

Now, the first subsection is entitled, "The Numbers Game."

The quota system has produced many strange results. Examiner productivity is measured in terms of the number of cases he allows, the number of cases which become abandoned (these two together are considered disposals) and, strangely enough, the number of new cases he acts on. Abandonments can hardly be controlled. The prime factor in productivity is therefore allowances, because they are the easiest. The temptation for an examiner to allow a case, when he must meet a production goal, is almost unbearable. The validity of any patent issued under such circumstances is highly suspect. But there is even a greater evil involved. If an examiner allows a new case on the first action, he then gets double credit, i.e., one credit for acting on a new case and one credit for allowing the identical case. In other words, he need work only half as hard as any other examiner and attain the same production rating. If an examiner is not meeting his quota because he is low on allowances and low on abandonments, he can then resort to the expedient of making up the deficiency, at least temporarily, by acting on a sufficient number of new cases. Normally speaking, an action on a new case is the most time consuming one, involving an understanding of the specification and claims, searching the prior art, writing an Office action, et cetera. If an examiner resorts to this expedient in order to meet his production quota, the time he spends on each new case is severely curtailed and the quality of the examination thereof must inevitably be lowered.

And this next section I have entitled, “Superficial Treatment of the Most Complex Cases."

Another equally strange result of the quota system is that the most complex cases receive the least thorough prosecution, a practice which must inevitably result in the issuance of invalid patents. How could such an obviously destructive practice arise, and, even further, how can it be permitted to continue unabated? The answer to these questions is simple: it is the result of a quota system administered in a manner which borders on absurdity.

The key here is complexity; i.e., obviously some cases require more time for examination than others. But the simplest way to administer a quota system is to make the absurd assumption that all cases are of the same level of complexity. Thus, in any examining group, all cases are assumed to be of the same order of complexity, even if more than 50 examiners are involved. Cases involving nothing more, for example, than making a mixture of metals useful as an alloy, and this I have attached as exhibit A, which is two pages, are deemed to be as complex as cases involving the production of synthetic diamonds, and this I put in the record as exhibit B. An example of other equally complex cases is the production of exotic boron containing compounds, which is exhibit C, which is 35 pages of text and claims compared to 1 or 2 for alloy patents. I might add parenthetically

they are of the same order of complexity. Now, if the officials of the Patent Office were to be questioned on this issue, they would undoubtedly answer that different arts have received different complexity factors. However, these factors appear to be purely mythical because no examiner has ever been told exactly what is the complexity factor for his particular docket. Even if such complexity factors did exist, they certainly did not arise as the result of any legitimate statistical study. It is not too well known, but they arose as the result of politics. The officials having the most influence got the best deal they could, i.e., and assignment of a complexity level as high as possible, for the examiners under them so that they (the officials) personally could benefit by having a lower case load assigned to them. In the not too far distant past all examiners (Officewide) were adjudged to have cases of exactly the same complexity, and their efficiency was measured by the number of Office actions they produced per week. There is nothing to lead me to believe that the present system really differs in essence from the former system.

The next section is titled, "Misuse of Computer Resources."

Perhaps the strangest result of the quota system is the use of extremely expensive computer time to keep production records on examiners which are complete to the nth degree. Production records show, for well over 1,000 examiners, such diverse factors as the number of new cases acted on,

the number of allowances, the number of abandonments, et cetera. They also include such other strange items as balanced disposals, hours per balanced disposal, and so on, ad infinitum. What possible justification can there be for employing valuable computer time to compile this mountain of production records, essentially nothing but a mass of trivia, and not of the slightest consequence when pursuing a goal of processing patent applications to produce patents of the highest possible validity.

In view of the urgent necessity of finding some way to employ computers to aid an examiner in the examination of patent applications, the spectacle of employing a computer for nothing more useful than the compilation of infinitely detailed production records is almost ludicrous. Admittedly, no one has yet demonstrated how to successfully employ a computer to completely search all patent applications. But progress has been made in employing computers for search purposes, particularly in the area of the chemical arts and particularly by the British Patent Office. If the U.S. Patent Office is not aware of this, then there is no excuse therefor. Further, all domestic patents in a recently revised chemical class (class 423) are completely coded at least as to process conditions employed. All that remains to be done is to place this information into an information retrieval system, e.g., a computer. Three years at least have gone by since this coding project was completed, and nothing has been done with it. And during all of this period computer time

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