By Donald Zuhn --
Last week, the House Judiciary Committee, following in the footsteps of its Senate counterpart, reported a patent reform bill -- in this case H.R. 1249 -- out of committee and to the floor of the House for a possible vote (see "House Judiciary Committee Approves H.R. 1249"). The Committee's approval of the legislation followed the addition of thirteen amendments during a Thursday mark-up of the bill, the introduction earlier in the week of a Manager's Amendment for H.R. 1249, and the introduction of the House bill at the end of March. Along the way, patent organizations and industry groups have lined up in support or opposition of the Committee's every move. And so it was with the House Judiciary Committee's approval of H.R 1249.
In a statement released by the Biotechnology Industry Organization (BIO), the group noted that while it "has consistently praised House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote," it would "have no choice but to oppose floor consideration of the bill . . . given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration" (see "House Judiciary Committee Approves H.R. 1249"). BIO explained that "[t]he supplemental examination provision as passed by the Senate and originally included in the House bill would allow patent holders to seek a review of their issued patents at their own risk," but that "[t]he Goodlatte amendment undercuts this provision by creating disincentives for patent owners to use the new procedure by having the U.S. Patent and Trademark Office (PTO) act as quasi-investigative body." Although BIO commended the Committee for approving a bill that "is a clear improvement over prior House versions of patent reform legislation," the organization noted its "objection to this bill being considered on the House floor" until such time as the supplemental examination issue is rectified.
The American Intellectual Property Law Association (AIPLA) issued a press release in which the group applauded the Committee's approval of H.R. 1249, adding that it "commends House Judiciary Committee Chairman Lamar Smith (R-Tex) for shepherding patent reform legislation another step closer to enactment." The AIPLA noted that "members of the Committee gave serious consideration to a variety of amendments to the bill and concluded with an overwhelming, bi-partisan vote of 32-3 in support of the long-overdue improvements to the patent law." While conceding that "more work is yet to be done," the AIPLA stated that "the Committee's effort represents encouraging progress."
In a statement issued by the Innovation Alliance, the group (which represents innovators, patent owners, and stakeholders from a diverse range of industries) applauded the changes made during the House Judiciary Committee's mark-up of H.R. 1249, but "urge[d] further changes." While the group expressed its appreciation for "the work of the Judiciary Committee in adopting several important amendments, including the Manager's Amendment, that [it] believe[s] improve the America Invents Act significantly while also defeating several very problematic amendments," the Innovation Alliance contended that "there are still important changes that should be made to ensure that [the legislation] fosters economic growth and job creation without favoring any business model or industry over another." The group in particular pointed to provisions relating to business method patents, extended deadlines for inter partes reexamination, joinder, and prior user rights as being "harmful" and recommended that such provisions "should be removed" from the bill. As the group has repeated a number of times in the past few weeks, it "continue[s] to believe the best course for policymakers is to focus on providing the U.S. Patent and Trademark Office with the funding and resources it needs to reduce its backlog." However, the Innovation Alliance noted that it was "pleased with the progress" the House Judiciary Committee made on the bill last week and pledged to work with the Committee and members of the House "to arrive at a version of the America Invents Act that can secure our support."
For additional information regarding this and other related topics, please see:
• "House Judiciary Committee Approves H.R. 1249," April 14, 2011
• "Reaction to Manager's Amendment to House Patent Reform Bill," April 13, 2011
• "House Judiciary Chairman Releases Manager's Amendment to H.R. 1249," April 12, 2011
• "Reaction to House Patent Reform Bill," March 31, 2011
• "House Introduces Its Version of 'America Invents Act,'" March 30, 2011
• "Patent Reform Discussion Moves to House," March 29, 2011
• "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