House Judiciary Committee Passes Patent Reform Bill

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.

Next Steps

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.

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6 Responses to “House Judiciary Committee Passes Patent Reform Bill”

  1. Grace Period in America Invents Act « INVENTIVE STEP Says:

    [...] As I noted earlier today, however, Rep. Zoe Lofgren (D-CA) introduced an amendment that specifically undoes the fix to the grace period in the Manager’s Amendment.  Rep. Lofgren’s change passed the Judiciary Committee by voice vote. [...]

  2. General Global Week in Review 25 Apr 11 from IP Think Tank Says:

    [...] of the House of Representatives approves H.R. 1249 (Patent Docs) (Patently-O) (Patents Post-Grant) (Inventive Step) (IP Whiteboard) (IPEG) (Patents Post Grant [...]

  3. IP Down Under » General Global Week in Review 25 Apr 11 from IP Think Tank Says:

    [...] of the House of Representatives approves H.R. 1249 (Patent Docs) (Patently-O) (Patents Post-Grant) (Inventive Step) (IP Whiteboard) (IPEG) (Patents Post Grant [...]

  4. Campaign Against America Invents Act Intensifies « INVENTIVE STEP Says:

    [...] Reform bill pending in Congress passed the Senate 95-5 in March and by a similar huge majority passed the House Judiciary Committee in April, but opposition to the America Invents Act is [...]

  5. George Says:

    Any thoughts on whether the legislation will be in place prior to the end of this fiscal year?

    I have also heard that some activities, e.g. new examiner hiring, will not be dependent on a federal budget being in place. That is the PTO will have autonomy over this and some other areas. Is this information correct?

    • Matt Osenga Says:


      It seems more and more likely that Patent Reform will be a reality in the coming weeks and months. Word has it that a Manager’s Amendment is being drafted in the House that should also meet Senate approval. Given the Administration’s support, I would be surprised if the bill isn’t enacted.

      I’m not sure what you mean about your second comment. The new bill would permit the PTO to set its own fees. In the meantime, the agency is at the mercy of Congress.


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