House Passes H.R. 1249

By Donald Zuhn --

The House of Representatives earlier today passed H.R. 1249, the America Invents Act, by a 304-117 vote.  All told, 168 Republicans and 136 Democrats voted in favor of the bill and 67 Republicans and 50 Democrats voted against the legislation (ten members did not vote; the final vote results can be viewed here).  While H.R. 1249 garnered more than 70% of the House vote, the victory for proponents of the House bill was not nearly as decisive as that for the Senate version of the bill, which was passed in March by a 95-5 margin (see "Senate Passes S. 23").  The House bill will now be reconciled with the Senate bill before being sent to the President.

Before voting on the bill, the House spent almost four hours debating and voting on a number of amendments.  The House voted 283-140 in favor of the Manager's Amendment offered by House Judiciary Chairman Lamar Smith (R-TX), and 223-198 in favor of an amendment offered by Rep. John Conyers, Jr. (D-MI) that would restore language concerning the calculation of the 60-day period for applying for patent term extension that was stricken from H.R. 1249 by the Manager's Amendment.  Amendments that would direct the USPTO to develop methods for studying the diversity of patent applicants (offered by Rep. Gwen Moore (D-WI)), add a sense of Congress that it is important to protect the rights of small businesses and inventors (offered by Rep. Sheila Jackson Lee (D-TX)), add requirements to the satellite office location selection process (offered by Rep. Ben Ray Lujan (D-NM)), mandate a USPTO-led study on what the USPTO, SBA, and other agencies can do to help small businesses obtain, maintain, and enforce foreign patents (offered by Rep. Gary Peters (D-MI)), and prescribe a requirement that parties provide sufficient evidence to prove and rebut a claim of derivation (offered by Rep. Jackie Speier (D-CA)) were agreed to by voice vote.

Among the amendments that failed to secure enough votes for passage were those that would condition the U.S. move to a first-to-file system only upon a Presidential finding that other major patent authorities had adopted a one-year grace period (offered by Rep. Conyers; rejected 316-105), strike Section 5 on prior user rights (offered by Rep. Tammy Baldwin (D-WI); rejected 342-81), strike Section 3 of the bill, which would convert the U.S. patent system from "first-to-invent" to "first-to-file" (offered by Rep. James Sensenbrenner, Jr. (R-WI); rejected 295-129), eliminate the ability of the USPTO Director to set fees, retaining that authority for Congress (offered by Rep. Donald Manzullo (R-IL); rejected 329-92), eliminate the burden of post-grant reviews and reexaminations on individual inventors and small businesses with 100 or fewer employees (offered by Rep. Dana Rohrabacher (R-CA); rejected 342-81), and strike section 18, which concerns the transitional program for covered business method patents (offered by Rep. Aaron Schock (R-IL); rejected 262-158).

Reaction to the House's passage of H.R. 1249 was (not surprisingly) swift.  In a statement posted on the House Committee on the Judiciary website, Chairman Smith (at left) called H.R 1249 "the most significant jobs creation bill passed by Congress this year."  Asserting that "the [current patent] system intended to protect and promote new inventions has become a barrier to innovation and job creation," Chairman Smith said that the legislation "represents a fair compromise and creates a better patent system for inventors and innovative industries."

Rep. Manzullo, who was unsuccessful in his bid to amend the bill to take fee-setting authority away from the USPTO Director, posted a statement on his website in which he explained that he "voted against a so-called 'patent reform' bill that will dramatically alter America's 220-year-old patent law, giving large corporations advantages over small inventors and sending more American jobs overseas."  Rep. Manzullo called the move from a first-to-invent to a first-to-file system a "fatal flaw" of the legislation that "would put America's small inventors at a huge disadvantage against their larger, foreign competitors with resources to more quickly patent their products."

In an e-mail distributed by the Biotechnology Industry Organization (BIO), the industry group "praised" the House's passage of the bill, stating that "[s]mall biotechnology companies rely heavily on their patents to attract investment to fund the lengthy and expensive research and development process necessary to bring breakthrough medical therapies and other products to patients and consumers," and that the bill "will bring our patent system into the 21st century . . . by enhancing patent quality and the efficiency, objectivity, predictability and transparency of the U.S. patent system."

In a statement posted on its website, the Innovation Alliance noted that it was "disappointed that the House of Representatives has approved legislation that will not end permanently the diversion of user fees from the U.S. Patent and Trademark Office."  The group promised to "continue to work with lawmakers and other stakeholders to ensure that any patent bill that becomes law ends fee diversion permanently."

Comments

[Dan Feigelson]

As I said at patentlyo, although someone suggested this legislation be renamed the Patent Attorneys' Full Employment Act of 2011, I wasn't worried about being employed for the next 10 years. I am, however, worried about the development of new drugs and new technologies slowing significantly. This is classic crappy legislation that benefits a few deep-pocketed donors at the expense of just about everyone else. But since the ill effects of this bill - jobs *not* created, innovations *not* commercialized - isn't something that can be readily perceived by voters, let alone quantified, not one of the dunderheads behind this (a link to a list of which you posted above) will be held accountable.

[EG]

Don,

As I've said previously, H.R. 1249 (the so-called oxymoronic America Invents Act) is an utter sham. And I applaud Senator Tom Coburn for expressing his outrage at the complete and meaningless "watering down" of Section 22's effort to end fee diversion. Addicts like Congressman Rogers and others can't kick the habit of fee diversion. I frankly wish Coburn was my Senator instead of the two I currently have in Ohio, especially Sherrod Brown who is definitely anti-patent.

I truly hope that we won't rue this day, but I'm not optimistic at this point. My disgust over H.R. 1249, as well as S.23, is complete and thorough. This legislation is ill-considered, misguided, poorly drafted and adverse to the interests of small innovative American businesses that rely on patent rights to compete with the large multi-national corporations. And how the USPTO is going to effectively handle post-grant oppositions while fee diversion continues is unanswered.

I'm sure those of us who represent small innovative American businesses before the USPTO will figure out a way to cope with this oxymoronic legislation. But it won't be easy or likely inexpensive. And get ready for the "filing splurge" which is likely to occur before the effective date of those first to file provisions.

[MLS]

Try as I may, I have been unable to find any copies of the House and Senate bills that were actually passed and will now go to a conference committee.

Any ideas where copies may be available?

[Donald Zuhn]

MLS:

The bill passed by the Senate can be found here: http://www.gpo.gov/fdsys/pkg/BILLS-112s23es/pdf/BILLS-112s23es.pdf. The bill passed by the House will eventually be available at Thomas.gov; the clerk was authorized on Thursday to correct section numbers, punctuation, and cross references, and to make other necessary technical and conforming corrections to H.R. 1249 immediately following passage of the bill.

Don

[Belit]

This will be just another nail in the coffin of the soon to be late great USA! We are going down fast. I do not want to be around when this "Titanic" sinks.

[patent litigation]

I can't be the only voter who finds it completely ridiculous that the House has stripped the least controversial provision from this bill (ending fee diversion) and passed the most contentious provisions. Without an end to fee diversion, "patent reform" is a waste, or worse.
http://www.aminn.org/patent-reform-act-2011-s23

[Aaron J. Hank]

My invention is a new type of TEG,Thermo Electric Generator. It inexpensively, cleanly and efficiently converts heat from almost any source into AC electricity.An electric car using it would have probably gotten at least 150 mpg.Big electric trucks using it would have probably gotten 20 to 60 mpg.To recharge the device, just put "gas" in the tank.My invention would have created thousands of good manufacturing jobs,in addition to possibly enabling nuclear fusion reactors to get over the "hump".But because of that stupid "America invents Act" my idea is now dead...I can't do anything with it.