By Donald Zuhn --
On Wednesday afternoon, the House Subcommittee on Intellectual Property, Competition and the Internet will hold a hearing on the House version of Senate bill S. 23, otherwise known as the "America Invents Act." The hearing on the as yet unnumbered House bill, which begins at 1:30 pm (ET), will consist of two panels of witnesses, with U.S. Patent and Trademark Director David Kappos on the first panel, and Steve Bartlett, President and Chief Executive Officer of the Financial Services Roundtable; Steven W. Miller, Vice President and General Counsel for Intellectual Property for the Procter & Gamble Co.; Mark Chandler, Senior Vice President, General Counsel and Secretary for Cisco Systems, Inc.; and John Vaughn, Executive Vice President of the Association of American Universities on the second panel.
Last week, the Intellectual Property Owners Association (IPO) reported that the House bill was likely to be introduced on Tuesday in advance of tomorrow's hearing. However, it does not appear that the House version of S. 23 was introduced during today's legislative session. The IPO also reported that while many observers expect the House bill to be similar to S. 23, the inter partes review procedure may differ. One area where the bills are not expected to differ is with respect to the first-inventor-to-file provision.
Tomorrow's hearing will be the Subcommittee's third patent-related hearing in the past month and a half. On February 11, the Subcommittee held a hearing on "Crossing the Finish Line on Patent Reform -- What Can and Should be Done," where it heard testimony from David Simon, Associate General Counsel, Intellectual Property Policy for Intel Corp.; Carl Horton, Chief Intellectual Property Counsel for General Electric, who spoke on behalf of the Coalition for 21st Century Patent Reform; and the Honorable Paul Michel former Chief Judge for the U.S. Court of Appeals for Federal Circuit. On March 10, the Subcommittee held a hearing on "Review of Recent Judicial Decisions on Patent Law," where it heard testimony from Dan L. Burk, Chancellor's Professor of Law at the University of California, Irvine; Andrew J. Pincus, Partner at Mayer Brown; and Dennis D. Crouch, Associate Professor of Law at the University of Missouri School of Law (and founder of the patent weblog Patently-O).
While the House has picked up the patent reform discussion from the Senate, the debate in the patent community over the Senate bill, which was passed on March 8 (see "Senate Passes S. 23"), continues. The latest group to voice its opposition to S. 23 is American Innovators for Patent Reform (AIPR), a trade association dedicated to promoting innovation by strengthening the U.S. patent system, which issued a press release last week stating that the Senate bill "does not address the needs of the innovation community: inventors, small businesses and universities." AIPR founder and president Dr. Alexander Poltorak said that notwithstanding the bill's new name "the America Invents Act is still anti-inventor and anti-small-business legislation."
The AIPR contends that that there are two "problematic" elements in the legislation that "will hinder American innovation and weaken the U.S. patent system": the first-inventor-to-file provision, which the AIPR believes "will result in a flood of patent applications as applicants rush to the patent office with half-baked inventions afraid of losing their priority date," which in turn "will further clog a Patent Office that already has a 700,000 patent application backlog," and post-grant review, a third patent challenge that the AIPR calls "a dream-come-true for infringers." Although the AIPR found fault with the above provisions of S. 23, it found favor with the bill's reduction in the fee small entities would pay for accelerated examination and end to fee diversion (the AIPR believed the bill could have gone even farther, however, by calling for a return of the nearly one billion dollars diverted from the USPTO since 1992).
For additional information regarding this and other related topics, please see:
• "The Disappearance of Deceptive Intent in S. 23," March 23, 2011
• "'Reform' at the U.S. Patent and Trademark Office," March 22, 2011
• "Few 'Reform' Provisions Remain in S. 23 Relating to the Judiciary," Marech 21, 2011
• "Additional Opportunities for Pre- and Post-grant Review, and Brand New Patent Trial and Appeal Board in S. 23," March 17, 2011
• "Post-grant Review Provisions of S. 23," March 16, 2011
• "Inventor's Interests, If Not Rights, Limited by S. 23," March 15, 2011
• "What Are the Provisions of the Proposed "First-Inventor-to-File" System in S. 23?" March 14, 2011
• "Obama Administration Supports S. 23," March 9, 2011
• "Reaction to Senate Passage of S. 23," March 8, 2011
• "Senate Passes S. 23," March 8, 2011