House Judiciary Committee Approves H.R. 1249

By Kevin E. Noonan --

The House of Representatives Committee on the Judiciary today approved H.R. 1249 (the "America Invents Act") and reported the bill to the House floor by a vote of 32-3, with Representatives John Conyers, Jr. (D-MI), Steve King (R-IA), and James Sensenbrenner, Jr. (R-WI) voting against the measure.  Along the way, 21 amendments were offered, of which thirteen were passed, five failed to gain passage, and three were withdrawn (the latter category including a public display of emotion by Rep. Debbie Wasserman Schultz (D-FL)).

The Manager's Amendment passed by the same vote as the bill overall (32-3), with one amendment passed by roll call vote (29-9 with 1 pass and 1 present).  This amendment, introduced by Rep. Bob Goodlatte (R-VA) amended the Supplementary Examination provisions to exclude "fraud on the [Patent] Office" by including subsection (C):

(C)  FRAUD. – No supplemental examination shall be commenced by the Director on, and any pending supplemental examination shall be immediately terminated regarding, an application or patent in connection with which fraud on the Office was practiced or attempted.  If the Director determines that such fraud on the Office was practiced or attempted, the Director shall also refer the matter to the Attorney General for such action as the Attorney General may deem appropriate.

This amendment appears to defeat the main purpose of the supplementary examination provisions, addressing a concern raised by the generic pharmaceutical industry (see "Reaction to Manager's Amendment to House Patent Reform Bill") and providing yet another difference from the Senate version of the bill (S. 23) that will need to be resolved.

Several amendments were passed by voice vote.  These included an amendment (introduced by Rep. Goodlatte) to the settlement section (§ 317) of the inter partes reexamination provisions of the statute, that permits "[a]t the request of a party to the proceeding, the agreement or shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to the Government agencies on written request, or to any person on a showing of good cause."  Rep. Conyers (D-MI) introduced an amendment that would correct the perceived procedural detects related to patent term extension of The Medicines Company's patent on Angiomax®:

CALCULATION OF 60-DAY PERIOD FOR APPLICATION OF PATENT TERM EXTENSION.

(a)  IN GENERAL. – Section 156(d)(1) of tile 35, United States Code, is amended by adding at the end the following flush sentence:

"For purposes of determining the date on which a product receives permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive permission on the next business dy.  For purposes of the preceding sentence, the term "business day" means any Monday, Tuesday, Wednesday, Thursday or Friday, excluding any legal holiday under section 6103 of title 5."

(b)  APPLICABILITY. - The amendment made by subsection (a) shall apply to any application for extension of a patent term under section 156 of title 35, United States Code, that is pending on, that is filed after, or as to which a decision regarding the application is subject to judicial review on, the date of enactment of this Act.

Also adopted by voice vote were a series of "Sense of the Congress" amendments that fractured the syntax of Article I, section 8, clause 8 of the Constitution and evinced a studied misunderstanding of the structure and basis of the U.S. patent system.  Rep. Sheila Jackson Lee (D-TX) added the following amendments to the "first inventor to file" provisions:

(o)  SENSE OF CONGRESS. – It is the sense of the Congress that converting the United Stated Patent Registration System from "First Inventor to Use" to a system of "First Inventor to File" will promote the progress of science by securing for limited time to inventors the exclusive rights to their discoveries and provide inventors which greater certainty regarding the scope of protection granted by the exclusive rights to their discoveries.

(o)  SENSE OF CONGRESS. – It is the sense of the Congress that converting the United Stated Patent Registration System from "First Inventor to Use" to a system of "First Inventor to File" will harmonize the United States Patent Registration System with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used for securing the exclusive rights of Inventors to their discoveries.

Rep. Maxine Waters (D-CA) introduced an amendment requiring the U.S. Patent and Trademark Office to study implementation of the bill:

Sec. 27.  STUDY ON IMPLEMENTATION

(a)  PTO STUDY. – The Director of the United States Patent and Trademark Office shall conduct a study on the manner in which this Act and the amendments made by this Act is being implemented by the Patent and Trademark Office, and on such other aspects of the patent policies and practices of the Federal Government with respect to patent rights, innovation in the United States, competitive of United States markets, access by small businesses to capital for investment, and other such issues, as the Director deems appropriate.

(b)  REPORT TO CONGRESS. – The Director shall, not later than  the date that is 4 years after the date of the enactment of this Act, submit to the Committees of the Judiciary of the House of Representatives and the Senate a report on the results of the study conducted under subsection (a), including recommendations for any changes to laws and regulations that the Director considers appropriate.

And Rep. Judy Chu (D-CA) introduced an amendment to establish a "pro bono" patent program:

Sec. 27. PRO BONO PROGRAM.

The Director shall work with an support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

Rep. Pedro Pierluisi (D-PR) introduced an amendment in the "STATE COURT JURISDICTION" provisions of Section 19 of the bill to include "any State of the United States, the District of Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, American Samoa, Guam, and the Northern Mariana Islands."

Several additional amendments to the Manager's Amendment were introduced and passed by voice vote prior to passage of the Amendment by the committee.  These included an amendment from Representatives Melvin Watt (D-NC), Goodlatte, and Howard Berman (D-CA) to extend the sunset provision of the Director's authority to set patent fees from four years to six years, and another amendment by Rep. Watt to soften the provisions of Section 2 regarding the negative impact of abusive patent litigation on the patent process to rather recite "any negative impact of patent litigation that was the subject of such study" on implementation of the first inventor to file provisions of the bill.  Rep. Goodlatte introduced amendments to include "trials" expressly in the "actions" that fall within the ambit of the Joinder of Parties in new § 298, that eliminated the provisions of § 298 that would have provided for a stay of civil actions to "non-manufacturing parties" or "additional parties," and reversed the provisions of the Manager's Amendment that permitted the Director to grant an inter partes reexamination without considering the patentee's response to the petition.  Rep. Goodlatte also introduced an amendment to revise the prior user rights amendment to exclude from such rights situations where:

(ii)  the claimed invention that is the subject of the defense was disclosed to the public in a manner that qualified for the exception from the prior art under section 102(b) and the commercialization date relied upon under paragraph (1) for establishing entitlement to the defense is less than 1 year from such disclosure to the public.

Rep. Zoe Lofgren (D-CA) introduced an amendment (that passed on voice vote) that undid all the changes to the first inventor to file provisions with regard to public use and on-sale, and eliminated the provisions commanding that the standard for determining the meaning of "public accessibility" to be used is "the criteria used by courts in addressing whether a disclosure constitutes a printed publication" (a related amendment introduced by Rep. Sensenbrenner was rejected by voice vote).

Several amendments failed, including an amendment by Rep. Conyers that would exempt patents that have "completed an ex parte or inter partes reexamination or been reissued with valid claims" from the reconsideration procedures for business method patents.  Also rejected was an amendment by Rep. Chu (D-CA) that attempted  to change inter partes reexamination to preclude institution of a reexamination "filed more than 30 days after the date on which a court of competent jurisdiction enters an order construing the claims of the patent in a civil action in which the petitioner, real party in interest, or privy of the petitioner is a party."  Rep. Chu's amendment to eliminate the first inventor to file changes and Rep. Lofgren's amendment to eliminate the supplemental examination provisions were also rejected by voice vote.

Three amendments were withdrawn.  Representatives Conyers and Chu withdrew their amendment that would have excluded pending cases from the provisions limiting assertion of the false marking statute.  Representatives Sensenbrenner and Mike Quigley (D-IL) withdrew their amendment that would have changed the revisions to the prior user rights section of the bill.  Finally, Rep. Wasserman Schultz tearfully withdrew her amendment that would have exempted from infringement a "genetic diagnostic tester's performance of a confirming generic diagnostic test activity" that would otherwise constitute infringement under §§ 271(a) or (b).  Interestingly, in the definitions section an exception to the exception includes "the practice of a process in violation of a biotechnology patent."

The bill next will be considered by the House in floor debate that has not yet been scheduled.  If the bill passes, it will either go to conference committee to be reconciled with the Senate's S. 23, or the Senate could simply bring H.R. 1249 to a vote.  In either event, the patent reform bill could be ready for the President's signature before the summer.

Comments

[Dan Feigelson]

Whatever happened to "If it ain't broke don't fix it?" They're "fixing" the parts of patent system that work - fixin' 'em good! - and totally missing the mark on the parts that don't. Reminds me of the scene in Blazing Saddles where Bart pulls a gun on himself and the schoolteacher asks, "Can't anybody help that poor man?" - can't anyone save Congress from itself? Except here it's the rest of us who will pay the price for Congress' indiscretion. I think I hear Puck from A Midsummer Night's Dream laughing in the background.

[patent litigation]

I must admit that I am partial (in theory, at least) to Rep. Chu's "pro bono" patent program. Many have complained that small and independent innovators have often been left out of important processes such as the deliberations over patent reform. While a pro-bono program likely wouldn't directly affect such things, it should nevertheless serve to provide some balance and arm inventors with the tools they need for proper patent prosecution and patent enforcement.
http://www.industryweek.com/articles/patent_enforcement_21538.aspx?SectionID=2