Louis Foreman (left) and Dr. Gary Michelson (right), taken May 4, 2011, after Michelson was inducted into the Inventors Hall of Fame.
Prominent inventors have now joined the growing chorus of those opposed to the Innovation Act (HR 3309). Specifically, the letter and recommendations below were sent by Louis J. Foreman (Chief Executive Officer, Edison Nation), Dr. Gary K. Michelson. (Inductee, National Inventors Hall of Fame) and Gregory G. Raleigh, Ph.D. (Chief Executive Officer and Chairman, ItsOn). The letter and recommendations were sent to Congressman Bob Goodlatte (R-VA), who is the Chairman of the House Judiciary Committee, Congressman John Conyers (D-MI), who is the Ranking Member on the House Judiciary Committee, Senator Patrick Leahy (D-VT), who is Char of the Senate Judiciary Committee, and Senator Chuck Grassley (R-IA), who is Ranking Member of the Senate Judiciary Committee.
Despite the problems with the Innovation Act and the mounting calls to slow down, Senator Leahy has introduced a companion bill in the Senate, which suggests that this legislation will move extraordinarily quick. See Leahy Bill Released and Leahy. Those who are unhappy with the legislation really need to speak now.
Congressman Goodlatte (R-VA), Chair of the House Judiciary Committee
UPDATED: Monday, Nov. 18, 2013 at 1:13pm
Last week CQ Roll Call reported that House Judiciary Chairman, Congressman Bob Goodlatte (R-VA), is continuing to fast track the Innovation Act (HR 3309) despite growing concerns from both Republican and Democrat members of the House Judiciary Committee. CQ Roll Call reports that there are 8 members of the Judiciary Committee who are asking for more time to study the legislative proposal. Two of those 8 are Congressman John Conyers (D-MI), who is currently Ranking Member on the Committee and himself a former Chair of the House Judiciary Committee, and Congressman James Sensenbrenner (R-WI), also a former House Judiciary Chair.
It is hard to understand the rush to move on the Innovation Act, which was only introduced a little more than three weeks ago on October 23, 2013. Yet, despite bipartisan misgivings within the House Judiciary Committee and a growing concern among innovators and Universities, Goodlatte is planning a markup of the legislation for Wednesday, November 20, 2013.
By e-mail sent late this morning House Judiciary Committee Members were advised that if they wanted Amendments to be considered they needed to be pre-filed no later than 11:15am on Tuesday, November 19, 2013. Accompanying this e-mail were the current version of HR 3309 as well as the Manager’s Amendment.
Of course, action in Committee does not guarantee passage by the full House of Representatives, but a bill supported by a senior member of Republican leadership like Goodlatte should certainly get its day on the floor in the House if it makes it out of Committee, which I suspect it will. Even then it would have to go across the Capitol to the Senate before it would ever wind up on the President’s desk.
It is the Subcommittee on Intellectual Property, Competition, and the Internet that has primary jurisdiction over matters relating to intellectual property matters. The Subcommittee’s jurisdiction includes copyright, patent, trademark law, information technology, antitrust matters and other appropriate matters as referred by the Chairman of the House Judiciary Committee. Thus, the House Subcommittee on IP that will be one of the primary focal points for any new legislation that deals with intellectual property over the next two years.
Representative Mel Watt was born in Mecklenburg County, North Carolina on August 26, 1945. He was a Phi Beta Kappa graduate of the University of North Carolina at Chapel Hill in 1967 with a BS degree in Business Administration and in 1970 he received a JD degree from Yale University Law School. From 1970-1992, specializing in minority business and economic development law. In 1992, Representative Watt was elected to the U.S. House of Representatives. He is member of the House Judiciary Committee, House Financial Services Committee and served as the Chairman of the Congressional Black Caucus (2005-2006).
On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage.
Starting with President Obama’s State of the Union Address in January, where he made innovation and job creation key elements of his speech and specifically embraced passage of patent reform as a means of addressing both issues, patent reform was well positioned to be enacted in 2011. Moreover, Congress was desperate for legislative accomplishments in an environment where partisan differences, a weak economy, and government fiscal concerns dominated. Longstanding pro-reform coalitions and associations continued to expend considerable resources on the bill. Passage was deemed virtually assured when the Chairmen of the Judiciary Committees – Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX) – essentially agreed this summer on a common piece of legislation. But, as explained below, nothing’s ever as simple as it seems in Washington.
Shortly after 2pm Eastern Time the United States House of Representatives voted on the Managers Amendment to the America Invents Act, H.R. 1249. The Managers Amendment passed by a vote of 283 – 140. The House then proceeded to address several amendments to H.R. 1249. It seems that there will be a vote on H.R. 1249 later today, and the way the amendments are going it seems as if the House will pass patent reform.
President Obama announces of new Commerce Secretary. Secretary Gary Locke (left) and Secretary Designate John Bryson (right).
Earlier today President Obama announced the nomination of John Bryson as the next Secretary of Commerce. Bryson, the former CEO of Edison International and co-founder of the Natural Resources Defense Council, will replace current Secretary of Commerce Gary Locke who has been tapped as the next United States Ambassador to China. Meanwhile, earlier in the day Secretary Locke continued to work patent reform, sending letters to Congressman Lamar Smith (R-TX), who is Chair of the House Judiciary Committee, and to Congressman John Conyers (D-MI), Ranking Member of the House Judiciary Committee, which set forth the Administration’s position on patent reform.
Notably, but not surprisingly, Secretary Locke explained: “The Administration continues to strongly support the bipartisan efforts of Congress to enact patent reform legislation that will accelerate innovation, and create new jobs, new industries and new economic opportunities for Americans.” Secretary Locke went on to elaborate more specifically about some of the specific provisions of the America Invent’s Act, explaining the Obama Administration supports first to file provisions, supports giving the Patent and Trademark Office the ability to set fees and keep the fees collected to be used to run the agency, supports post grant review and supports allowing individuals to submit prior art references to patent examiners. Unfortunately, however, Secretary Locke explained that the Administration generally supports prior user rights given that it is, on balance, a good policy. I respectfully dissent!
Senator Bayh (left) with AUTM Executive Director Vicki Loise.
Yesterday, I attended the 30th Anniversary Celebration of the University and Small Business Patent Procedures Act, more commonly known as the Bayh-Dole Act. The program was led by the Association of University Technology Managers (AUTM) and took place at the Washington Convention Center in Washington, DC. The Act, which was enacted on December 12, 1980, created a uniform patent policy among the federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. The celebration was moderated by Dr. Ashley Stevens, the current President of AUTM and Special Assistant to the Vice President for Research at Boston University. Dr. Stevens began the celebration by pointing out that since the Bayh-Dole Act was enacted, more than 7,000 new companies that have been formed specifically to develop technologies that are invented at Universities. Whole new industries, such as the biotechnology industry, have been also been created around and started as a direct result of university research.
In this edition of News, Notes & Announcements, websites engaged in the sale of counterfeit merchandise were ordered seized as part of a joint investigation coordinated between the Department of Justice and ICE. Additionally, there will be an event celebrating the 30th Anniversary of passage of the Bayh-Dole Act in Washington, DC on Wednesday morning; the USPTO will hold a roundtable on Friday, December 3, 2010 to discuss trademark prosecution best practices; FIRST, the company founded by Dean Kamen, received a 5 year contract from NASA to provide support for hands-on robotics competitions aimed at inspiring our youth to pursue science and technology; ITT launches an innovative new graduate program that combines engineering, design and intellectual property; the mother of all patent trolls is back at it both in terms of licensing and in terms of acquiring more patents; and patented software that makes it possible to find plagiarized code is released.
Congressman Conyers seems interested in providing funding to the USPTO
Recently the United States Patent and Trademark Office released its draft Strategic Plan for FY 2010 – 2015. This may seem odd given that FY 2010 is almost over, ending on September 30, 2010. So it is probably a better title to call it the FY 2011 – 2015 Strategic Plan, but there is no doubt as you read the document that under the guidance of Director David Kappos the USPTO has already well launched the short term Strategic Plan. Now if Congress would only be wise enough to grant funding for the Patent Office to actually accomplish what needs to be done!
Truth be told, it would be enough for Congress to just (1) stop siphoning off money from the USPTO through fee diversion; (2) grant the USPTO fee setting authority; and (3) stand out of the way. So my message to Congress would be this: put the pocketbook down, slowly step back and raise your hands over your head so we can see them!
Representative Zoe Lofgren (D-CA) grills Kappos on Capitol Hill
On Wednesday, May 5, 2010, David Kappos, Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, testified in front of the United States House of Representatives Committee on the Judiciary. See Hearing Page and Kappos Prepared Remarks. Many issues were covered during the hearing, but there were a couple matters that jump out as quite important. Most significantly, it seems that once again the Senate patent reform bill may be running into some difficulty in the House of Representatives. Some in the House of Representatives seem interested in slowing down regarding the substantive changes embodied in the Senate bill, but seem willing to consider legislation less grandiose and focused solely on giving the Patent Office fee setting authority and perhaps the ability to retain its fees. This, however, lead to a heated exchange that has been misreported in some outlets, so lets set the record straight.
Recently I had the opportunity to chat with Dr. Gary Michelson, an Orthopedic Surgeon and celebrated inventor who holds over 900 patents worldwide. Dr. Michelson acquired both fame and fortune as the result of his innovations, which were infringed by Medtronic, and who later settled with Dr. Michelson for $1.35 billion. As many readers know, Dr. Michelson recently sent a letter to Congress, specifically addressed to Senator Patrick Leahy (D-VT) and Congressman John Conyers (D-MI), who chair the Senate and House Committees responsible for moving forward with patent reform efforts. Specifically, Dr. Michelson supports S. 515 and wanted to make sure that the Congress heard from an actual inventor who greatly benefited from the US patent system.
In my conversation with Dr. Michelson he explained to me that while he benefited greatly from the patent system he would have benefited even more if the system worked better. At this point Dr. Michelson “does not have a dog in the fight,” as he explained, because with the exception of a few lingering applications his patent portfolio has been fully acquired and he stands to gain no additional revenues. Nevertheless, Dr. Michelson, the quintessential successful American inventor, would like to see the US patent system improve for the benefit of all independent inventors, the American economy and to promote real job growth. He has some excellent ideas, I agree with his positions on almost every front, and it is with his approval that I put my conversation with him on the record.
Earlier this afternoon the United Inventors Association, a 501(c)(3) not-for-profit founded in 1990 and dedicated to providing inventor education and support, wrote to Congress to set the record straight on the UIA stance on patent reform efforts. UIA Executive Director Patrick Raymond sent a letter to Senator Patrick Leahy (D-VT), who is Chairman of the Senate Judiciary Committee, and an identical letter to Congressman John Conyers (D-MI), who is Chairman of the House Committee on the Judiciary. The primary purpose of the letter, as stated in the letter itself, was to make clear that the primary mission of the UIA is to provide reliable information to inventors and not to undertake lobbying efforts. The letter makes clear that the UIA is “not involved in any campaign against this proposed legislation.” The letter goes on to explain that while some “coalitions” and “alliances” are claiming to speak “on behalf of all independent inventors nationwide,” they do not speak for or on behalf of the United Inventors Association or its membership.