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House Patent Reform Bill is in Need of Reform, BIO to Oppose

Written by Jim Greenwood
President & CEO
Biotechnology Industry Organization
Posted: April 15, 2011 @ 3:55 pm

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Washington, D.C. (April 15, 2011) – Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released the following statement regarding the America Invents Act, H.R. 1249, which passed the House Committee on the Judiciary yesterday:

“BIO 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. Unfortunately, given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration, we have no choice but to oppose floor consideration of the bill until this issue is repaired.

“The 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. The 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.

“We commend Chairman Smith for all the work he has done to craft a bill, the America Invents Act, which is a clear improvement over prior House versions of patent reform legislation. BIO was very supportive of Chairman Smith’s Manager’s Amendment. We are pleased that the legislation will end, once and for all, the diversion of fees collected by the PTO, allowing the agency to use all of its fees to hire more examiners, reduce the backlog of pending applications, and make other improvements to its operations. We also commend the inclusion in the bill of many other reforms that will improve the patent system and enhance patent quality, including transition to a “first-to-file” system, the creation of an inter partes review system, and the elimination of other subjective elements of patent law.

“Nonetheless, given the importance of adopting a supplemental examination provision much like that which passed the Senate on a bipartisan, 95-5 vote, BIO notes our objection to this bill being considered on the House floor. We commit to work with Chairman Smith and others to rectify this issue, so that a patent reform bill with broad support can be brought to the floor of the House.”

About BIO

BIO represents more than 1,100 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. BIO members are involved in the research and development of innovative healthcare, agricultural, industrial and environmental biotechnology products. BIO also produces the BIO International Convention, the world’s largest gathering of the biotechnology industry, along with industry-leading investor and partnering meetings held around the world. BIO produces BIOtech Now, an online portal and monthly newsletter chronicling “innovations transforming our world.” Subscribe to BIOtech Now.

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  1. Gene,

    This problem with the language used in these bills is yet another reason why the so-called “America Invents Act” makes me shudder. I’ve got no confidence that we’ll have any piece of legislation here that is anything but a royal mess.

  2. I find this sudden new opposition quite puzzling. The “”Supplimental Examination” [Sec. 10] reexamination system does have some practical PTO administration and evidentiary issues, But it is identical to the S.23 Sec. 10 already passed by the Senate with the sole exception, by this House amendment, of EXCLUDING from its use any outright “fraud” investigations by the PTO [and affecting any existing PTO disciplinary proceedings]. Furthermore, that is a toothless restraint on Sec. 10 anyway, since Sec. 10 is an ex parte reexamination system solely for use by patent owners with no requirement to even disclose to the PTO any “fraud” facts on which a reexamination examiner could thereby refuse to proceed with a Sec. 10 reexamination.
    Did this organization just now wake up to the scope and effect of Sec. 10 only after it was already passed by the Senate?

  3. Sec. 10 is now supposedly limited by this House amendment to “only” removing any and all inequitable conduct defenses, but not “fraud.” If this organization could point to actual Fed. Cir. decisions in which a case of inequitable conduct was held to also rise to the much higher and stricter requirements of common law “fraud””, their objection to this House amendment of Sec. 10 [as opposed to opposing Sec. 10 itself] might have some substance? I will look forward to seeing such Fed. Cir.citations.

  4. Let me make this clear. I have no personal stake in the Sec.10 ”Supplimental Examination” system. But I do find it distrubing that an organization would oppose the entire patent reform bill on the basis that this one already extreme provision is not extreme enough for their personal interests. Do you really think it is appropriate for a non-atttorney examiner in a purely ex parte reexamination to be able to legally shield a patent obtained by actual fraud from any later legal challenge on that basis soley on the basis of whatever unchallengeable facts a patent owner choses to disclose to that examiner? [As would be allowed without this House Amendment.]