Yesterday, the House Judiciary Committee passed H.R. 1249, the America Invents Act, by a vote of 32-3. Only Reps. John Conyers (D-MI), Steve King (R-IA), and James Sensenbrenner (R-WI) voted against the bill. This result is a bit surprising given the luke-warm reception of the Committee when the bill was introduced last month.
The Committee held a lengthy hearing on the bill yesterday. Chairman Lamar Smith’s (R-TX) Manager’s Amendment was adopted by the Committee by a vote of 29-2. There were then a number of amendments that were offered by various members of the Committee.
The Manager’s Amendment contained a sunset provision for the PTO’s fee-setting authority at 4 years. This provision was changed by another amendment to 6 years.
Rep. Bob Goodlatte (R-VA), chairman of the subcommittee for intellectual property, competition and the internet, successfully introduced an amendment to the prior user rights defense provision. His amendment would exclude from prior user rights situations where:
(ii) the claimed invention that is the subject of the defense was disclosed to the public in a manner that qualified for the exception from the prior art under section 102(b) and the commercialization date relied upon under paragraph (1) for establishing entitlement to the defense is less than 1 year from such disclosure to the public.
One very strange amendment introducted by Rep. Zoe Lofgren (D-CA) undoes the fix to section 102(b) regarding disclosures to the public by the inventor during the grace period. This passed the Committee by voice vote. Why did Chairman Smith seek to fix this provision only to have it undone? Do the members of the Committee intend to eliminate the grace period or do they not understand the issue?
Rep. Judy Chu (D-CA) introduced an amendment that requires the PTO to establish pro bono programs to assist financially under-resourced independent inventors and small businesses.
Rep. Debbie Wasserman Schultz (D-FL) withdrew a proposed amendment that sought to exempt genetic diagnostic testing facilities from infringement suits. She presented an emotional story of how she was unable to obtain a second opinion on a genetic test because of a patent.
Now that the Committee has reported the bill, it heads to the House floor for further debate and amendment. The controversial provisions on first-to-file, prior user rights, and the near elimination of the grace period remain in the bill. If the House passes the bill, it must be reconciled with the Senate bill in a conference committee. The final bill would then need to be re-passed by both houses of Congress. It would then go to Pres. Obama for his signature.
It seems that barring an unexpected development or the inability of the House and Senate to work out the differences in their bills, we will have patent reform in 2011. All interested parties should tune in and contact their senators and representative now with their opinions on the bills before it’s too late.
Patent Docs has a detailed post on yesterday’s proceedings.