By Kevin E. Noonan --
The
Senate on Saturday passed an amended version (S. Amendment 3344) of H.R. 6621,
Rep. Lamar Smith's bill "To correct and
improve certain provisions of the Leahy-Smith America Invents Act and title 35,
United States Code." In this
version, the (in)famous, controversial and unnecessary provisions relating to
so-called pending "pre-GATT" patent applications have been eliminated
in favor of a totally unrelated clerical correction.
To recap, the original version contained the following provision in Section 1(m):
(m) Effective Date of Uruguay
Round Agreements Act –
(1) CERTAIN PATENT
APPLICATIONS- Notwithstanding section 534(b)(1) of the
Uruguay Round Agreements Act (35 U.S.C. 154 note), section 154(a) of title 35,
United States Code, as amended by section 532 of the Uruguay Round Agreements
Act (Public Law 103-465; 108 Stat. 4809), shall apply, and section 154(c)(1) of
title 35, United States Code, shall not apply, to any application that is –
(A) filed before the date that is 6 months
after the date of the enactment of the Uruguay Round Agreements Act; and
(B) pending on a date that is 1 year or
more after the date of the enactment of this Act.
(2) EFFECTIVE DATE
– This subsection shall take effect on the date that is 1 year
after the date of the enactment of this Act and shall apply to any original
plant or utility patent application that is pending on or after that effective
date.
In order to garner the support of certain House members, particularly Rep. Dana Rohrabacher (R-CA), this provision was amended to require a PTO "Report" on these applications in an amended version of the provision:
(m) REPORT ON PRE-GATT APPLICATIONS.-- Using
existing resources, not later than four months after the date of the enactment
of this Act, the Director of the United States Patent and Trademark Office
shall submit a report to the Committees on the Judiciary of the United States
House of Representatives and the Senate that describes--
(1) the total
number of pending United States applications for patent
that--
(A) are not
subject to an order under section 181 of title 35, United States Code;
and
(B) were filed
before the effective date of the amendments made by section 532 of the Uruguay
Round Agreements Act (Public Law 103–465; 108 Stat.
4983);
(2) the filing date of each such
application;
(3) the filing date of the earliest
application for which each such application claims the benefit of or a right of
priority to its filing date;
(4) the inventor and assignee named on
each such application;
(5) the amount of time that examination of
each such application has been delayed because of a proceeding under section
135(a) of title 35, United States Code, an appeal to the Patent Trial and
Appeal Board under section 134(a) of such title, a civil action in a United
States District Court under section 145 or 146 of such title, or an appeal to
the United States Court of Appeals for the Federal Circuit under section 141 of
such title; and
(6) other information about such
applications that the Director believes is relevant to their pendency.
The bill passed the House on a vote of 308-89 on December 18th (see "Congressional Misunderstandings (Apparently) Motivate H.R. 6621").
The Senate version of the bill contains this language in Section 1(m):
(m) Clerical Amendment.--Section 123(a) of title 35, United States Code, is amended in the matter preceding paragraph (1) by inserting "of this title'' after "For purposes''.
The House was slated to pass this amended version of the bill late Sunday evening but did not; the bill may make it to the House floor on Monday.
Pre-GATT application owners are not out of the woods yet, however. During remarks made on the Senate floor, Sen. Patrick Leahy (D-VT) said the following:
We must also continue to focus on the troubling problem of several hundred "pre-GATT" patent applications that have now been pending before the Patent Office for over 18 years. The original version of this legislation in the House addressed that problem by providing a 1-year window for the pending applications to be processed.
Unfortunately, that language was removed before final passage in the House and replaced with a provision requiring the Patent Office to prepare a report. The amended bill the Senate has passed today strikes the report, but I will work closely with the PTO to identify the cause of the delays and ensure that the PTO has the tools it needs to address any abuses by those who may be trying to game the system and use the patent laws to impede, rather than encourage innovation.
It should come as no surprise to anyone who has followed Sen. Leahy's many pronouncements on his AIA and the patent system that he shares with his colleagues in the House some of the misunderstandings of the laws he is creating. It is up to members of the patent community to do what they can to correct these misperceptions if effective patent reform can be achieved.
Hat tip to Hal Wegner for details of these legislative machinations.
Consulting with the PTO about the cause of the delays in the examination of pre-GATT applications is similar to asking the fox to guard the henhouse, since it's probably the PTO that's responsible for the delay in most cases. A better approach is to adopt suggestion of Hal Wegner and others to facilitate publication of those applications, with an option for applicants to redact before publication. With the file wrappers open, we'll all be able to see just who is at fault for the delays.
Posted by: Puck | December 31, 2012 at 12:59 AM
If this is a "fault-finding" expedition, Congress can simply request access to the information, determine who is at fault and make any necessary moves - there is absolutely no reason for the PUBLIC to be involved in the abrogation of the bargain of Quid Pro Quo then in force (at application file date) under the law.
What is the rush to publication REALLY about then?
Posted by: Skeptical | December 31, 2012 at 08:35 AM
Dear Skeptical:
The push to publish stems from the disclosure = innovation paradigm, and with the misconception that there is something wrong with ex parte, confidential patent prosecution. The trend has been for everything to occur in public, and that has become the status quo. The "old" way of doing things seems wrong to some; the funny thing is that most of the disclosure in these pre-GATT cases was made public when counterpart foreign applications were filed. What some people think the public (read, "competitors") are entitled to is the file wrapper, not to identify who's to blame but to get info to be used for designing around.
Thanks for the comment, and Happy New Year.
Posted by: Kevin E. Noonan | December 31, 2012 at 01:57 PM
Skeptical writes in part:
"What is the rush to publication REALLY about then?"
I have been puzzling over that for several years myself. 18-month publication is the default procedure now of course, unless non-publication is requested at the time of filing the application. For more than 200 years, the default procedure was to keep the applications confidential until they issue, so if a patent was not allowed, the inventor could try again without having lost anything to public disclosure.
There are obviously situations where early publication is desirable, like the publish or perish idea that is often used in academic situations, but that is much different than seeking patent rights in most cases. Near as I can figure, it is for the benefit of larger corporations, and to attempt to appease others in the world that have had mandatory publication in place for many years. If I don't plan to file abroad, why would I decide to let my application be published probably about 18 months before I can expect to get a valid patent issued here in the US?
It makes no sense to me at all, so I happen to think Congress got things pretty seriously wrong, for whatever reasons. Interestingly enough, when they publish your application, you are actually required to pay a fee for the *honor* of letting the rest of the world know what you are up to.
Thanks to both you and Donald Z for all of your diligent efforts Kevin-
Happy New Year!
Posted by: Stan E. Delo | December 31, 2012 at 03:00 PM
Dear Stan:
My take on this is that in ROW patenting was disfavored, as a way for big companies (capital) to monopolize innovation for their own ends. This was the case (primarily in Europe, especially Germany, and then copied in Japan and elsewhere) because there was a relatively low level of "start-up" type of activity compared to the US. Thus, "popular " governments acted to reduce or at least limit this monopolization by creating ways for inventions to fall into the public domain. Don't think just about publication - think about it in the context of absolute novelty - once published, any failure in the priority chain would serve to render an invention unpatentable. This bias can also be discerned in the requirement that annuities in increasingly higher amounts be paid during pendency and after grant - any unwillingness to pay translates into the invention being dedicated to the public.
This was not the American paradigm, which was more akin to using patents to produce individual success and societal progress. Whitney, Morse, Edison, Farnsworth - all men associated with progress as well as the opportunity for success inherent in protecting innovation through patenting. Even those cheesy late-night commercials touting "I could have had a patent!" Illustrate the generally "pro-patent" sentiment.
So what happened? The patent system became a victim of its own success, and academics, big companies and their lobbyists launched a campaign to limit patenting on the late 1990's. Patent publication was part of that, promoted in the guise of "harmonization." The level of understanding of the patent system by Congress the being no better than it us now, publication became part of the patent system under the AIPA. And Q. Todd Dickenson's decision to create public PAIR (which was not mandated by the AIPA) created the system we have now.
Thanks for the comment, for reading and the kind words. All put best for a Happy New Year!
Posted by: Kevin E. Noonan | December 31, 2012 at 05:08 PM