The Innovation Alliance is disappointed that the America Invents Act as introduced today in the House of Representatives does not include some important safeguards against the potential for abuse of the post-grant review procedures at the U.S. Patent and Trademark Office (USPTO). In particular, the bill includes a weak threshold for ‘second window’ inter partes review proceedings, one that will allow virtually all challenges to proceed to a trial-like hearing before an administrative patent judge. We believe a higher threshold is needed to enable the USPTO to manage the increased workload of the new administrative review system fairly and efficiently by screening out meritless or unsubstantiated petitions.
On March 3, 2011, the amendment to remove the first to file provisions from the Senate patent reform bill — S. 23 — went down to a lopsided defeat by a vote of 87 – 13. This was known as the Feinstein Amendment because it was Senator Diane Feinstein (D-CA) that was the primary opponent of first to file in the Senate. A day earlier, on March 2, 2011, Senator Feinstein made the best argument anyone could make regarding why first to invent should be kept and first to file should be jettisoned from the bill. The Patent Docs have her remarks for your review.
In one particular part of Senator Feinstein’s remarks on the floor of the Senate on March 2, 2011, she said:
Many first to file countries allow more extensive use of prior art to defeat a patent application, and provide for greater prior user rights than this bill would provide.
And right she was, at least until the House of Representatives got into the act. The House patent reform bill, which was leaked to virtually everyone who wanted a copy, began circulating late in the afternoon on Thursday, March 24, 2011. The Senate and House bills are largely identical with the exception of prior user rights. The House bill would make us much like those many other first to file countries Senator Feinstein talked about on the floor of the Senate. Is she clairvoyant or did she know a game was afoot?
On Wednesday, March 30, 2011, the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet will hold a hearing on H.R. ____, the “America Invents Act,” which will take place at 1:30 p.m. in the Rayburn House Office Building. Much to the disappointment of many who have been challenging patent reform, we are now closer than we have been at any time over the last 5 or 6 years to amending U.S. patent laws. The House patent reform bill is exceptionally close to the Senate bill S. 23, with only one major difference that is sure to spur great debate, but the remaining thorny issue — the change from “first to invent” to “first to file” remains intact in the House version of patent reform.
The one major difference between the Senate and House bills is that the House would like to embrace an across the board prior user right defense, which is not in the Senate bill. That is something to keep an eye out for and which I will write about in the near future. But those advocating that the U.S. continue to keep first to invent went down to an overwhelming defeat in the Senate — 87 to 13 on the Feinstein Amendment. They are, nevertheless, expected to come back and fight hard to undue the first to file provisions
Speaker Boehner (L) swears in Congressman Smith (R), House Judiciary Chair, a key player in patent reform.
Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating. The House patent reform bill is largely identical to the Senate version – S. 23. There are some differences, one rather major difference, but the Senate first to file provisions remain intact. The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23. The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges. It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.
Aside from the minor differences in language that are largely differences without a distinction, the one big thing that the House bill would do is extend the prior user rights defense under 35 U.S.C. 273 to patent infringement to all patents and not just business method patents. Look for a big fight on that one. The other differences of consequence seem to be that the House of Representatives really likes the thought of adding language authorizing automatic stays of pending litigation, which the Senate does not include. Additionally, the House bill does not adopt the Senate’s language altering the residency requirement for Federal Circuit Judges.
Most who are even casually familiar with patent law and patent practice understand that it is far better to file a patent application sooner rather than later. There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar of 35 U.S.C. 102(b) from preventing a patent from issuing. Perhaps the most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US patent application being filed. In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security. What so many inventors don’t realize is that third-party activity can start the 102(b) clock ticking. So many inventors think what they have invented is so unique that no one else could ever have come up with it, thus there is nothing to worry. This logic ignores the reality that creative people do frequently engage in the same inventive activities.
At 11:30 am on Monday, March 7, 2011, Secretary of Commerce Gary Locke spoke at the Asia-Pacific Patent Cooperation Forum hosted by the United States Patent and Trademark Office. Immediately after his remarks I was granted an exclusive interview with Secretary Locke. The interview was originally scheduled for 10 minutes, but as you can see from the transcript below the interview went long. In fact, Secretary Locke was gracious enough to talk about a range of issues for more than 25 minutes.
During my interview with Secretary Locke we spoke about patent reform efforts in the United States Senate, what patent reform might look like from the House of Representatives, his management style and how to motivate individuals to achieve transformative change. What you will not read, however, is about his much anticipated appointment as the new U.S. Ambassador to China. ABC News first broke the story that President Obama would nominate Secretary Locke to become Ambassador to China after the close of business. This interview wrapped up at approximately 12:30 pm, some 6 hours before Locke’s impending nomination as the Ambassador to China became public knowledge.
By a vote of 95 to 5, the Senate last night passed comprehensive patent reform legislation. S.23, “The America Invents Act”. But the path forward for passage of the measure in the House of Representatives remains unclear.
The bill – which was introduced by the Senate Judiciary Committee’s Chairman, Sen. Patrick Leahy (D-VT), Sen. Orrin Hatch (R-Utah), and the Committee’s Ranking Republican, Sen. Charles E. Grassley (R-IA) – moved quickly through the Judiciary Committee, with a Committee vote of 15-0. Catching some critics off-guard, S.23’s advocates were able to take advantage of the light Senate floor schedule that often exists early in a new Congress and to capture the attention of Majority Leader Harry Reid (D-NV). Specifically, S.23’s bipartisan posture, fueled by an Administration eager to advance innovation and job creation policy initiatives, made the bill an attractive floor measure for Senate Leadership, who was otherwise consumed by a heated, partisan battle over federal government funding.
Yesterday from the floor of the Senate, while debating whether the Senate should pass patent reform bill S. 23, Senator Amy Klobuchar (D-MN) cited a letter from Louis Foreman in support of patent reform, which was entered into the record without objection. The name Louis Foreman is well known to those in the inventor community. Foreman is the publisher of Inventors Digest, the Executive Producer of Everyday Edisons, an inventor himself and a serial entrepreneur.
Foreman, who supports patent reform efforts generally and S. 23 specifically, started his first business as a sophomore in college twenty years ago. He has successfully started 8 business in that twenty year period and has been an integral part of twenty additional ventures. Foreman has ten U.S. patents and his firm, enventys, has helped develop and file for another 400 patents. This experience easily has shown Foreman, in his own words, that “the USPTO is hampered by a system that is in dire need of reform.”
Beginning at about 12:30pm Eastern Time today the United States Senate closed debate on the amendment offered by Senator Diane Feinstein (D-CA) relating to the removal of first-to-file provisions from the patent reform bill S. 23.
The Senate Roll was called and a vote taken on whether to table the Feinstein Amendment. The votes were 87 in favor and 13 against, thereby killing the Feinstein Amendment and keeping the first-to-file provisions within S. 23.
Late yesterday afternoon it came to my attention that an article I recently wrote was referenced by Senator Jon Kyl (R-AZ) on the floor of the United States Senate. The article is titled Senate to Vote on Patent Reform, First to File Fight Looms and addresses the potential change from a first to invent system (which we have currently) to a first to file system (as proposed by S. 23). Needless to say, I was flattered by the attention given to this article by Senator Kyl.
As flattering as it was to be inserted into the patent reform debate in some peripheral way, the real news from yesterday was the Manager’s Amendment was passed by a vote of 97-2. The Manager’s Amendment, cosponsored by Senator Patrick Leahy, Senator Charles Grassley (R-IA) and Senator Kyl, included language that would allow the United States Patent and Trademark Office to keep the fees it collects. The Manager’s Amendment reportedly also included insertions favored by Congressman Lamar Smith (R-TX), who is chair of the House Judiciary Committee. See Momentum build for patent bill. Thus, it seems quite likely that patent reform will soon become a reality.
Earlier today I wrote about the FOX News piece on patent reform last night on the 6pm news show Special Report. What was shown during Special Report seems to have been a condensed version of a longer (4:27) piece from earlier in the day. While I’m sure everyone will find something to disagree with and argue about, it does strike me as pretty fair treatment of the issues and arguments of the parties for and against patent reform.
Last night patent reform was big enough news to make the FOX News 6pm news hour, but frankly there wasn’t much “news” to report from activities in the Senate yesterday. Senator Leahy initiated discussion on S. 23, the Senate version of patent reform, and a brief discussion ensued. More is expected today on patent reform in the Senate.