having small businesses that exploit their inventions and they don't want submarine patents anymore than anyone else. In fact, I think submarine patents are probably more damaging to them, to a small business, than they are to a large, multinational business.

I think, also, many of the research affiliates of the Pharmaceutical Research and Manufacturers of America are small biotechnology companies. Clearly, the kind of money that their venture capitals are putting into those companies, they are looking into world markets, albeit, they are small businesses now, but they are really looking in our area to world markets, to Europe, the Pacific Rim and Asia.

I think there is a balancing here. I think the Patent Office is doing a good job in balancing the need to have access to the Patent Office in other parts of the world and trading off some things here. It is a balancing that I think they have done a very good job at. Mr. HUGHES. Ms. Nelsen, I agree with you. I don't think there is any question that we need to provide adequate resources for PTO. It is inexcusable that we have this difficulty in getting over to PTO the user fees that we collect. And we are attempting to deal with that.

Certainly training, providing the skills-particularly in the biotech and other very complex areas-is extremely important and I agree with you there. And we do need to simplify the system. There is no question about it.

Do you think, however, that the establishment of a provisional application filing for a nominal fee will alleviate some of the concerns about efficient patent term and provide a sufficient time to improve convention?

Ms. NELSEN. I think the provisional application is actually a rather minor improvement. It could be an improvement because it could allow universities to delay the expenditure for a year. But in really cut-through, breakthrough technology, a year is simply not long enough to perfect the technology.

The other problem we worry about with provisional applications in this litigious society is whether we will simply get into the same arguments we have with respect to priority, but now it will be with respect to whether your provisional application was enabling. So cautiously, we would probably end up spending just as much money on a provisional application as we do on the on the regular specifications. So we don't see that as a big change.

On training-thank you very much. And the other thing I would plead for on behalf of the Patent Office examiners is a career path and a way of managing people that treats them as professionals, rather than piece workers, so that you cannot only train highly intelligent, educated people, but you can motivate them to a career in this field so that we will start to get experience and wisdom, not just facts in their head.

Mr. HUGHES. I quite agree. And there is a problem not just at PTO, but that is a problem in government, trying to provide basically the incentives to attract very skilled people to government service. That is a very difficult, difficult task, particularly at a time when you are trying to downsize government.

Ms. NELSEN. Intriguingly, I think it is working conditions more than salary when, with highly educated professionals

Mr. HUGHES. It is a lot of things. You can have the best of working conditions. If you can't feed your family in a high-cost environment, you haven't done a thing. You also are concerned about the need of university professors to publish and its impact on the filing of patent claims.

Shouldn't that really be taken care of through the university system, and not through the Patent Office?

Ms. NELSEN. It is taken care of by the university system. We put in-in the major universities-we put publication ahead of patent applications. We do not delay publications to file patents, since sometimes we file them in 2 days.

However, there is as technology transfer, as the Federal agencies are putting more and more emphasis on the universities, working with industry and using in the property, you will start to see this delay as a prudent thing to do, rather than in any way an unethical one. And I think that would be a real pity.

Mr. HUGHES. Mr. Addison, I think you described a patent, 42 years?

Mr. ADDISON. Yes, sir.

Mr. HUGHES. You said it had only one moving part.

Mr. ADDISON. One moving part.

Mr. HUGHES. I trust that moving part wasn't the PTO.

Mr. ADDISON. Was not the PTO.

Mr. HUGHES. Does your association find any benefits on making concessions in the U.S. patent law in order to obtain protection in foreign countries?

Mr. ADDISON. Would you repeat that question?

Mr. HUGHES. Yes. Do you think there is any benefit to making concessions in the U.S. patent law, changing patent law in our country, harmonization, you described it, in order to obtain better protection around the world?

Mr. ADDISON. No, sir, we do not.

Mr. HUGHES. I see. OK. That is all.

Mr. ADDISON. We do not.

Mr. HUGHES. That is honest. We just happen to disagree on that. Mr. Muir, I don't have any questions of you because your testimony was very straightforward and very helpful. Thank you.

I thank all the panelists. You have been very patient with us, very helpful.

Gerry, I apologize

Mr. MOSSINGHOFF. No problem.

Mr. HUGHES [continuing]. For missing your very brief statement. But believe me, I feel like a one-armed paper hanger today trying to get a lot of things done. Anyway, thank you very much. You have been helpful.

That concludes the testimony for today and the subcommittees stand adjourned.

[Whereupon, at 2:45 p.m., the subcommittees adjourned.]

APPENDIXES

APPENDIX 1.-STATEMENT OF HON. HOWARD L. BERMAN, A REPRESENTATIVE IN CONGRESS FROM THE STATE OF CALIFORNIA, AUGUST 12, 1994

REMARKS OF REP. HOWARD L. BERMAN

JOINT HEARING ON LEGISLATION RELATING TO
GATT IMPLEMENTING LEGISLATION

AUGUST 12, 1994

Mr. Chairman: As you know from my correspondence to you, I concur that the GATT/TRIPS agreement raises significant intellectual property issues within the jurisdiction of this Subcommittee.

You have assembled an impressive array of witnesses for today's hearing. During the course of their testimony, I am certain that the issues will be fully ventilated.

As to the copyright matters at stake, I want to convey to my colleagues and to the Administration in the clearest possible terms my very strong support for inclusion of retroactivity and anti-bootlegging provisions in the GATT implementing legislation.

I am absolutely convinced that doing so is sound public policy and in the best interest of a vital portion of the nation's economy the copyright community.

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In light of the rejection of U.S. efforts to extend GATT protections to audio-visual goods, to the serious detriment of our domestic industries, inclusion of retroactivity and antibootleg provisions in the GATT implementing legislation is the least we can do to improve the posture of our industries abroad.

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Advances in opening up foreign markets to the export of

American intellectual property are of little avail if we fail to take the steps available to us to protect that property from

piracy.

It is evident that the inclusion of these provisions in the GATT implementing legislation is in the interests of the recording and motion picture industries, centered in the part of the country I am proud to represent.

But I am really making a larger point: when you consider the enormous contribution of these industries to the U.S. balance of trade, it is equally evident that including provisions in the GATT legislation to increase the leverage available to the U.S. to protect those industries is in the interest of the American public as well.

That is the real test, and I have no doubt it is met.

Thank you.