Congressional Republicans Propose to Abolish America Invents Act (and a Bit More)

By Kevin E. Noonan --

It being the holiday season in America, it is perhaps appropriate that patent traditionalists get something more than coal in their stocking from Representatives Massie (R-KY), Gohmert (R-TX), Gosar (R-AZ), and McClintock (R-CA) in the form of H.R. 5874, the "Restoring America's Leadership in Innovation Act of 2021."

The bill recites Congress's findings that the Leahy-Smith America Invents Act (along with "several decisions by the Supreme Court") have harmed the progress of Science and the useful Arts by eroding the strength and value of the patent system (Sec. 2).  In addition, this Findings section asserts that "a United States patent secures a private property right to an inventor."

The Bill proposes to rectify the situation by restoring the U.S. patent system to be one that awards a patent to the "first to invent" (Sec. 3), complete with the one-year grace period and having the same definitions of the terms "in public use" and "on sale in this country" as they had before enactment of the AIA.  The justification for this change is a "sense of the Congress" that reverting to the prior standard would promote progress and enable inventors "once again to disclose inventions in order to attract investment, complete research and development on the invention, test, improve, and perfect the invention so as to improve the invention and the quality of the patent application."  The bill proposes to "restore sections 100, 102, 103, 135, and 291 of title 35, United States Code, to the way such sections read on the day before the date of the enactment of such Act."

The bill also abolishes the inter partes and post-grant review provisions of the AIA (Sec. 4) and would abolish the Patent Trial and Appeal Board (Sec. 5).  The justifications for these changes are that the Congress senses that "inter partes review and post-grant review proceedings introduced by the Leahy-Smith America Invents Act have harmed the progress of science and the useful arts by subjecting inventors to serial challenges to patents" (Sec. 4(c)(1)); they "invalidate patents at an unreasonably high rate" (Sec. 4(c)(2)); and that "patent rights should be protected from unfair adjudication at the Patent and Trademark Office and duly issued patents should be adjudicated in a judicial proceeding" (Sec. 4(c)(3)).  Inter partes reexamination would not be restored.  The PTAB would be replaced by reinstitution of the Board of Patent Appeals and Interferences (BPAI); challenges to appointment of Administrative Patent Judges are provided in that the APJ is a "de facto officer."  Interferences would be resurrected as well.

Section 6 provides that fee diversion would be eliminated and that the USPTO would be "full[y] funded."

Section 7 provides for abrogation of the Supreme Court's recent jurisprudence regarding subject matter eligibility.  To that end, the bill provides a revision of Section 101 to read:

(a) In General.—Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Exception.—A claimed invention is ineligible patent subject matter under subsection (a) if the claimed invention as a whole, as understood by a person having ordinary skill in the art, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

(c) Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this title, or the claimed invention's inventive concept.

The bill "effectively abrogates Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), Bilski v. Kappos, 561 U.S. 593 (2010), Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013), Mayo Collaborative Services v. Prometheus Laboratories, 566 U.S. 66 (2012), and its predecessors to ensure that life sciences discoveries, computer software, and similar inventions and discoveries are patentable, and that those patents are enforceable" (Sec. 7(b)(3)).

Section 8 restores Section 102 of the Patent Act to its pre-AIA contours, except that a disclosure in a patent or patent application will not be considered prior art to the extent that it was derived, directly or indirectly, from the first inventor, or the invention was publicly disclosed by the inventor during the one-year grace period, or "the information disclosed and the claimed invention were owned by the same person or subject to an obligation to assign to the same person" (Sec. 8(b)(3)).

Section 9 purports to restore a U.S. patent as a property right, proposing new Section 106 of the patent statute to read:

§ 106. Private property patent right

A patent right is a private property right secured to an inventor upon issuance of the patent that shall only be revoked by a court ruling in a judicial proceeding, unless the patent owner consents to an administrative or other procedure.

In addition, Section 261 is amended by replacing the phrase "patents shall have the attributes of personal property" with "patents shall be recognized as private property rights."  The Bill cites Oil States Energy Services v. Greene's Energy Group, 138 S. Ct. 1365 (2018), and Impression Products Inc. v. Lexmark International, Inc. (2017), as necessitating this change in statutory language.

Section 10 ends automatic publication of pending U.S. patent applications and provides for publication only upon request of the Applicant.

Section 11 provides for a presumption of validity that applies to each claim independently of any other and that dependent claims are to be presumed valid even if they depend from an invalid base claim.  The burden of proving any claim invalid is recited to be clear and convincing evidence.  Moreover, the Bill has a term tolling provision, wherein the term of a patent until expiry is tolled "from the time the validity of the patent is challenged to the time of resolution of the validity issue by the court" (Sec. 281(d)).

Section 14 provides for a permanent injunction to a prevailing patentee, amending Sec. 283 to read:

(b) Permanent Injunction.—

(1) IN GENERAL.—Upon a finding of infringement of a patent, the court shall presume that further infringement of the patent would cause the patent owner irreparable harm.  This presumption may be overcome only by a showing of clear and convincing evidence by the infringing party that the patent owner would not be irreparably harmed by further infringement of the patent.  The patent owner is not required to make or sell a product covered by the patent to show irreparable harm.

The sense of the Congress regarding this change is that it abrogates the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

Finally, in Section 13, the amendments to Sec. 112(a) and any other change in the U.S. patent statute under Section 15 of the AIA are repealed, specifically the elimination of best mode as a defense.

But like a belief in Santa Claus, passage of this bill is a pleasant (t'were pretty if t'were so) fantasy.  There is no evidence for any type of groundswell for reversing the excesses of the Leahy-Smith America Invents Act, and Senator Leahy is still serving in the Senate, is Chair of the Intellectual Property Subcommittee of the Senate Judiciary Committee, and a vocal supporter of his handiwork (see "Statement of Senator Patrick Leahy, Chair, Intellectual Property Subcommittee, on the Supreme Court's Decision in Arthrex").  Whatever analogy you prefer (snowballs in hell, camels passing through the eye of a needle), it is hard to see this decidedly non-bipartisan bill being anything other than a feel-good present from these Representatives to those members of the patent community who abhor the consequences of the AIA's enactment.

Comments

[Bavaria]

I like at least some parts of the subject matter eligibility proposal, though. At least with regard to life sciences/diagnostics, the present case law is rather - let's say - interesting - at least for a European.

[skeptical]

As noted in several other places, one question worth being answered is why is this NOT a bipartisan effort?

[Jim Demers]

If Democrats got behind it, the Republicans would be obliged to oppose it.
Seems to me that, as part of this back-to-the-good-old-days project, the US would have to bail out of some treaty obligations.

[skeptical]

Mr. Demers,

I do not see what "bail out of some treaty obligations" would be impugned.

Quite in fact, the current ALLOWANCE of the the Court's re-written patent laws can be said to violate current treaties (clearly the Supreme Court's muckery involves "technology" [no matter how defined] that the TRIPS treaty provides as a baseline to be protected.

As I read your comment (and I could be in error), you appear to think that entering into the legislation somehow causes a Treaty issue. Would love to hear more about that.

[Greg DeLassus]

“But like a belief in Santa Claus, passage of this bill is a pleasant… fantasy.”

The first iteration of the AIA was introduced in 2005 by Rep. Lamar Smith (R-TX). It took years of patient revision and coalition building for Smith eventually to get the bill passed in 2011. In other words, when one speaks of a bill being unlikely to pass, it is important to qualify over what time horizon one means. If Rep. Massie scales back his ambitions and sticks with this effort, it is not crazy to suppose that he will eventually achieve some of his aims, just as Rep. Smith did with enough patience and willingness to compromise.