Report of Mike Kirk's Briefing on HR400
Wed. March 19th 1997
by George Margolin
Notes and comments on the Briefing put on by the advocates of HR400.
Congresswoman Zoe Lofgren -- made a quick introduction and hurried off, she said, to vote on House floor.
This left a young woman from IBM to introduce the speakers, the first of whom was from IBM. He was a pleasant person who gave us virtually no information about HR 400 other than that IBM wanted it. Why? It must be good or we wouldn't want it. Oh?
Mike Kirk, the former Deputy Assistant Patent Commissioner, who left the PTO shortly after Lehman came aboard, was the main speaker. He is now Executive Director of AIPLA, (American Intellectual Property Lawyers Association), a group of mainly BIG corporation IP lawyers.
Kirk spoke about an hour with questions being asked by the audience made up mostly of legislative staff people that had been invited. The author of this report, however, found many important questions were unanswered by this carefully sanitized and limited presentation and asked a number of pointed questions, which Mr. Kirk tried to avoid. He was unsuccessful in doing so.
Government Corp -- like the Post Office -- Who would profit from this? The US? NO! It already makes more money than it spends and the Congress takes 54 or 90 or 120 millions, depending on the year.
Wouldn't the fact that it is permitted "to accept gifts of money or property or services" lead it to favor the Biggest giver? Will it lower the inventor's cost of getting a patent? No! The inventor pays for ALL of the PTO operations -- including the money sloughed off by the Congress, Will making it a private corporation help the inventor. Not likely knowing the people who would be running it with no meaningful Congressional oversight and its hand-picked large-corporation, "directors" who themselves would have no oversight but themselves. Smacks of foxes guarding the chicken coop.
18 month Publication -- Mr. Kirk informed his audience of Congressional Legislative Assistants that "The Average patent pendency -- was "20.2 months" So, he said, that early publishing at 18 months was not dangerous to inventors. I then asked him -- if the patents are going to issue in only two point two months more, why go to the expense of publishing them in 18 months. I asked if is possible that the 19.2 month figure of Mr. Lehman before Congress and the 20.2 month figure he had just stated are BOTH WRONG? For instance -- are those figures measured from the ORIGINAL filing date of the patent as is the beginning date of the 18 month publication requirement? Or are they measured from the "last filing" before the patent issues? If the PTO used the original filing date instead of this Mickey Mouse date -- wouldn't that increase -- considerably the REAL pendency of even the most average of average patents? Or -- if we used the same method of stating the age of a used car, wouldn't it be only as old as the date of its last paint job?
And does this 20.2 month figure apply to the large percentage -- more than 30 percent -- of all patents that are required by the patent office to be refiled, reissued, continued or divided out into more than one patent? Isn't it true that these larger, more complex, more serious -- perhaps even more "important" patents, have an AVERAGE PENDENCY OF 47 MONTHS OR MORE?
He gave no answer, but the answer is YES -- 47 months or longer -- as published by the GAO -- (General Accounting Office).
None the less, Mr. Kirk said that these changes would be "good" for us." But how or why he wouldn't say.
He did say that some of our biggest Multi-nationals say they think it will "Level the Playing Field." Will it not Level the PREYING Field for those who already prey on patents? Who will need Industrial Espionage when the secret, unprotected premature patent applications are "ripped unripe" from the womb of the Patent Office and published for the world to see?
I asked him why would we want to go to the Japanese patent system since that is just what it was designed to do -- permit the biggest and richest companies to control the patent office.
When he responded, saying that although it was true that the Japanese system ill used the premature publishing, ours would be different. I said "Really? Congressman Dana Rohrabacher, on the Floor of the House was told by then Congresswoman Pat Schroeder, Sponsor and Author of the Predecessor bill H.R. 3460, that "We are going to have the same patent system as they have in Europe and Japan." It's in the Congressional Record, I said. Is that what is best for America? Do we want to become clone of the Japanese Patent system with its "Patent Flooding?" That's where the large Japanese corporations see the "Laid Open" patent applications and surround these unborn fetuses of patents with dozens -- even hundreds of nuisance variations. Why do they do that? In order to force inventors and other companies to "Cross License" their patents for nothing. The alternative to a smaller party is to be brought to its knees and broken by constant oppositions from multiple deep pocket corporations and their millions upon millions of Yollars (a combination of Yen and Dollars).
Prior User Rights equal Prior User Wrongs ) I asked Mr. Kirk. Wasn't that brought to this bill by Bill Budinger -- who "was SHOCKED to discover" that he was supposed to apply for a patent or his trade secrets might be independently discovered or reverse engineered by his competitors? He agreed that it was.
I then informed Mr. Kirk that because of this and the fact that Mr. Budinger actually had a few of other patents, his intentional "ignorance of the law" seems less than excusable or truthful. Despite his patent knowledge he used his "ignorance ploy" to try destroy the American Patent System which was created in 1790 Specifically to discourage the American Inventors of the time, from relying on Trade Secrets as their only means of protecting themselves from copiers. Trade secrets, while a possible choice -- as in Coca Cola -- do not teach and do NOT raise the level of American Technology, as our enormously successful Patent System has done so brilliantly these past 207 years.
Worst yet -- this "PU" (Prior User) ploy seems to be the way Mr. Kirk's backers -- foreign and Multi-national, are attempting to bring the Japanese and German, First-to-File - race-to-the-patent-office -- system, to our shores. These "Prior User Rights" require the FREE LICENSING of any patent issued on the same process or invention that the PU used, or prepared to use or seriously thought about using or spent money investigating the use of -- a year and a day BEFORE THE PATENTED INVENTOR FILED THE PATENT!!!
Filed the Patent? said I to Mr. Kirk. What if the patent filer had INVENTED it long BEFORE the "PU" started using it? Or perhaps the PU learned of the inventor's pre-application work and "borrowed" the technology?"
Whatever happened to our two hundred year old First-to-Invent system. Isn't this a means of sneaking First-to-File into our patent laws? He did NOT deny that this could be a means of moving us to First-to-File (which he favored), but said they had to start somewhere so their PU could get a free license -- and a year before filing sounded to them like a good place to start. The camel's nose under the tent, said I.
And though a small PU was granted "only" a free non-exclusive license -- IF he just happened to be bought by a HUGE company -- Mitsubishi or the like -- wouldn't that HUGE company own this FREE license on the inventor's patent? Yes! So much for the worth of the patent, said I.
Submarine Patents -- Then he brought up the subject of "Submarine patents" -- a ploy, he said, that could be used by unscrupulous inventors or companies to extent their secret pendency for years and suddenly pop out of the water to force companies to pay them royalties on inventions these companies had never heard of and "believed" were in the public domain.
Note: In the handouts they passed out, was one titled "Submarine Patents" and it named two inventor's, one of them Lemelson with five so-called submarine patents and another inventor who "no one had ever heard about for 20 years, until his patent issued." I asked Mr. Kirk if he had any more names than the two on the handout. He said, "there were many." How many I asked? Could he name more names. He changed the subject.
I then said -- Isn't it true that Commissioner Lehman told a Congressional hearing that there were 627 patents he had found, which over a period of 22 years had taken longer than 20 years to issue. He told this hearing that these were "submarine patents." But, when we examined these patents we found why they had taken so long. About two thirds were kept from issuing because they were military secrets or for other national defense reasons. I told Mr. Kirk that only about two hundred and a few were slow for unknown reasons. But -- there seemed to be no way to know which ones, if any, were intentional "submarine patents." Did he know which ones that were?
But, I told him, if, for the sake of argument, we were to accept the 'submarine" theory -- during that same 22 year period there were TWO MILLION TWO HUNDRED THOUSAND PATENTS ISSUED. Meaning that ALTOGETHER those unexplained patents constituted only THIRTEEN THOUSANDTHS OF ONE PERCENT!!! -- or about 12 per YEAR of "possible" dilatory patents. For that minescule amount -- you are willing to drastically change and risk our entire 207 year old patent system?
To that, Mr. Kirk replied, "If only one child dies we should do all we can to stop that from ever happening again."
I answered, "I'm sorry to have to tell you this, Mr. Kirk, but what I think you're really telling us is that, since you know that at least one child born in the United States will grow up to be a killer -- YOU ARE WILLING TO KILL ALL THE CHILDREN IN AMERICA TO KEEP THAT ONE MURDERER FROM GROWING UP!
Remember, said I, that our patents and inventions are our children that grow up to be the technologies and industries that have made us the greatest technological nation in the world. What you are attempting to do will eliminate our technological leadership completely.
Dead silence -- and he ended the conference.
In conclusion -- Please remember, when thinking about the above and about Mr. Kirk's push for H.R. 400 -- the Japanese Patent System is notorious for being the most biased, unfair and least enforceable patent system in the world. Among other reasons, because it does not have our doctrine of equivalents. And the legal system which is its foundation, does not have "discovery," the one real way to level the playing field.
In addition, it allows opposition -- long BEFORE the patent issues. And these oppositions can keep the patent from ever issuing or extend its pendency for DECADES. For example, the Texas Instrument, Kilby patent took 29 years to issue in Japan.
Do we really want to or need to emasculate our patent system and all of our inventors? Do we really want to make it impossible for us to ever develop another Thomas Edison? H.R. 400 will guarantee no new Edisons -- just maybe some foreign built Edsels.
Margolin Development and Rent An Inventor