January 29, 1996

Patents: Commissioner Points to Achievements, Challenges


The elections in November notwithstanding, Patent and Trademark Commissioner Bruce A. Lehman describes his present tenure as only his first term in office.

Settling into a chair for an interview at his headquarters last week, a panoramic view of the Potomac River and the capital behind him, he responded to a question about his plans for the agency with a discussion of 1997 and beyond.

"We're moving toward a new paradigm of a 12-month patent examining process," Lehman began. The Patent and Trademark Office has three packages of legislation pending in Congress. They complete the redesign he suggested in a working paper to the Clinton transition team before the inauguration.

So far, Lehman has accomplished much of that agenda, but not without bitter opposition from some agency customers, chief among them independent inventors.

They accuse Lehman of "dumbing down" the patent system to conform with laws in Europe and Japan, and question how he can be so sure that his redesign of patent and trademark law will guarantee the American economic boom he predicts.

All the bills are still in committee -- meaning Lehman has no idea when there might be a vote. But he discounted the possibility of defeat.

"I'm working away, talking to people on the Hill, trying to educate them," said the commissioner, who for a decade was a lawyer with the House Judiciary Subcommittee on Intellectual Property.

The most controversial bill, at least among independent inventors, is the one that would make it legal to publish patent applications 18 months after they are filed, even if no patent has been issued. Opponents say this would weaken the U.S. patent system.

Last year independent inventors vehemently but unsuccessfully opposed a law changing the life of a patent from 17 years after it was issued to 20 years from when an application is filed. They said that made the effective term shorter because it can often take several years to issue a patent.

Lehman argues that there is no real difference, because the average processing time for patents is 19 months.

Now many of the same groups oppose the 18-month publication rule because it makes work public before most inventors have patent protection.

But the Japanese and the Europeans publish after 18 months, and Lehman is an advocate of "harmonizing" U.S. patent law with that of the rest of the world. And in any case, aides of Lehman argue, once he trims examination to 12 months, early publication risks will become moot.

"It's important so people will know what new technologies are coming down the pike," Lehman said. Now patent applications are secret. So most disputes over inventions arise only after the patent has been issued, and anyone wanting to fight a patent often has to go court.

Another pending bill gives greater power to third parties -- someone other than the inventor and patent officials -- to appeal a patent's ownership or initiate a re-examination of a disputed patent.

The agency is also advocating legislation that would give copyright owners exclusive rights over the digital transmission of their work and extending the "fair use" privileges of libraries, archives and nonprofit groups for the visually handicapped to include certain numbers of copies in digital format.

It also suggests making it an infringement to thwart copy-protection systems, like encryption, that copyright owners use to protect their work.

Members of the World Intellectual Property Organization, an agency of the United Nations, will attend a February conference to write a treaty replacing the Bern Convention, the international copyright agreement first adopted in 1886 and last modified in 1971.

The third set of legislative proposals turns the Patent and Trademark Office into a corporation wholly owned by the government (as part of the Department of Commerce). It would continue to pay for itself through user fees, and that money would still be channeled through Congress. Congress would continue siphoning off the money, too, though Lehman would like to get Congress's fingers out of the agency's till.

Lehman said he wanted to eliminate a surcharge tacked onto fees but frequently withheld from the agency by Congress. Instead, he said all money collected should remain with the agency. "But that has to wait for the next Clinton administration," he said.

Nevertheless, the bill would turn the agency into something of a private business.

"We'll move completely to being a results-based agency," Lehman said. "We'll measure all our successes and activities based on whether they satisfy the needs of our customers rather than checking off a checklist the Office of Personnel Management or the General Services Administration has for us."

If the bill passes, the agency will take charge of buying its own supplies, hiring its own workers and negotiating and managing its own real estate deals (the patent office is now looking for a vast new space in Crystal City, Va.)

If those changes are enacted into law, Lehman said he would have nothing left undone. And he said he had only one regret.

"If one thing is distressing to me and I wish I could change," he said, "it would be the very negative reaction of independent inventors."

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