Congressional Record, Volume 143 Issue 49 (Wednesday, April 23, 1997)

[Congressional Record Volume 143, Number 49 (Wednesday, April 23, 1997)]
[House]
[Pages H1719-H1742]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

21ST CENTURY PATENT SYSTEM IMPROVEMENT ACT

The SPEAKER pro tempore. Pursuant to House Resolution 116 and rule
XXIII, the Chair declares the House in the Committee of the Whole House
on the State of the Union for the further consideration of the bill,
H.R. 400.

{time} 1425

In the Committee of the Whole

Accordingly the House resolved itself into the Committee of the Whole
House on the State of the Union for the further consideration of the
bill (H.R. 400) to amend title 35, United States Code, with respect to
patents, and for other purposes, with Mr. Hastings of Washington
(Chairman pro tempore) in the chair.
The Clerk read the title of the bill.
The CHAIRMAN pro tempore. When the Committee of the Whole rose on
Thursday, April 17, 1997, the amendment in the nature of a substitute
offered by the gentleman from California [Mr. Rohrabacher] had been
disposed of and the bill was open for amendment at any point.
Are there further amendments to the bill?

Amendment No. 1 Offered by Mr. Campbell

Mr. CAMPBELL. Mr. Chairman, I offer an amendment.
The CHAIRMAN pro tempore. The Clerk will designate the amendment.
The text of the amendment is as follows:

Amendment No. 1 offered by Mr. Campbell: amend section
302(C)(2), p. 68 of March 20 text: Strike lines 4-6.
Insert: ``under this chapter, and such use shall not be
greater in quantity, volume, or scope than had been the
actual quantity, volume, or scope of the prior use, however,
the defense shall also extend to improvements in''
Amend section 302(C)(6), p. 69 of March 20 text:
At line 23, strike ``,'' add: ``; in which case the use of
the defense shall not be greater in quantity, volume, or
scope than had been the actual quantity, volume, or scope of
the prior use.''

Mr. CAMPBELL. Mr. Chairman, I begin today with a word of thanks to my
good friend and colleague, the gentleman from California [Mr.
Rohrabacher], on whose side I fought last week, and to my good friend
and colleague, the gentleman from North Carolina [Mr. Coble], the
chairman. This is a different subject from last week. It is an
amendment that deals with the prior domestic use. I would just like to
take a moment and explain it.
This bill does something that has never before happened in American
patent law. What it says is that where a prior user of a patented idea
has made commercial use of that idea in the United States, then--even
though the inventor files the patent on time and even eventually gets
the patent--that inventor has no opportunity to get royalties from that
prior domestic user. Now, that messes up the whole system. The idea is
to reward the inventor, the person who comes up with the idea first,
and who goes and gets it patented.
If instead you have to look around and wonder if somebody else
anywhere

[[Page H1720]]

in the country is engaged in the prior domestic use, you run the risk
that when the patent eventually is awarded to you it will have very
little value, very little value because some other company has already
got it and the right to continue producing it.
This is a problem that might be limited, and I was offering an
amendment to my good friend the chairman of the committee, which
regrettably he was not able to accept. I do wish to put on the Record,
by the way, that he accepted many other amendments of mine, for which I
am very grateful. So this has been a cooperative process, but he was
not able to accept this one.
What I suggested was, look, let us limit this prior domestic user to
the kind and volume of that prior use. If you are an innocent prior
domestic user, okay, continue. But you should not be able to double it,
to triple it, increase it tenfold after somebody else has the patent.
Particularly I am worried that if you sell your company, you should not
be put in the position where the acquirer is bidding more for the
company because it has the crown jewel of being able to do what, under
existing law, would be a violation of patent.
So I propose today on the floor exactly the amendment I offered to
the chairman, and I am going to take just a moment further and explain
it. It says, go ahead, I understand the occasional need for a prior
domestic user to continue, but it will be limited in quantity, volume,
and scope to the actual quantity, volume, and scope that you were
producing before; and, if you are acquired, that the acquirer, in
taking over the full company, also not expand that use in scope or
quantity or volume. Obviously the Patent Office has the right to issue
regulations that will be relevant for explaining and applying this
exception.
Where did I come up with this? This is a model in labor law about the
opportunities and obligations to continue bargaining when an employer
is taken over by another. The legal rules for changes in scope when
there is a change in ownership are well known in existing law. I hope
this is clear, and I offer this as an amendment that will improve the
Coble bill that we are voting on later today. It will not defeat the
other provisions of the bill. It is not inconsistent with it in my
view.
Since last week, one additional piece of testimony has come to my
attention, Mr. Chairman, and that is from Robert Rines, the president
of the Academy of Applied Science. He wrote the following in a letter
dated April 22:

I also know firsthand that staff at MIT, where I teach,
Stanford, Carnegie and Harvard, at least, are particularly
upset with the prior secret user provision, which is
certainly of no value to universities and which if passed
will be used to deprecate their patents.

The importance of this is underlined by the fact that the major
research universities have an interest in creating innovation and not
having the value of it taken away because some prior domestic user
making, let us say, 10 units can now make 100. That is it. I believe
the amendment is simple, and I would urge my colleagues to support it.
Mr. COBLE. Mr. Chairman, I rise in opposition to the amendment.
I thank the gentleman from California. As he indicated, Mr. Chairman,
we have been pretty easy dogs to hunt with. As the gentleman said, we
have compromised, we gave away a lot. I do not think we compromised the
bill in doing so, but we worked very favorably with many people who
came to us.

{time} 1430

The amendment made in order by my colleague would seriously undermine
the effectiveness of title III of H.R. 400, however, which protects
prior American users of patented technologies. The amendment would
apply limitations on expansion of activities by the prior user and by
any company to which the prior user might wish to transfer its
business.
The first part of this amendment is unclear to me as to exactly what
type of limit would be placed upon a prior user. By limiting the
quantity and volume to the, quote, actual quantity, volume or scope,
close quote, of the prior use, the question is prior to what? Prior to
the date of filing of an application covering an invention which is the
subject of the prior use? Prior to the date of issuance on such a
patent? Prior to the date the prior user is sued by the patent holder?
It is very nebulous.
Irrespective of the actual meaning of the first part of this
amendment, Mr. Chairman, it would at least significantly erode the
benefit of the prior user right to American manufacturers, leaving them
at a serious disadvantage vis-a-vis European and Japanese patent
holders. All of our major trading partners have prior use defenses in
their laws now. Thus, while foreign firms could use their U.S. patents
to effectively disrupt the U.S. manufacturing and production facilities
of American companies, the manufacturing operations of these foreign
firms would remain immune from attack on the basis of patents obtained
in their countries by their U.S. competitors. Such serious limitation
on the prior use defense would place enormous pressure on enterprises,
large and small, to seek to patent every advance which formed part of
their production technology to avoid disruptions from patents by
subsequent inventors.
The second part of the amendment, in addition to suffering the same
infirmities of clarity, would be extremely prejudicial to start-up
firms and small businesses which are frequently acquired by larger
firms. A small business concern enjoying a prior use right, which it
cannot transfer to a perspective purchaser, will be considerably less
valuable to such a purchaser, depriving the individuals who created the
small business in the first place of the just returns for their
endeavors.
For those reasons and others, Mr. Chairman, I oppose the amendment
offered by the gentleman from California [Mr. Campbell].
Mr. DELAHUNT. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, the ranking member and I and other Democratic members
of the subcommittee oppose this amendment. It forbids a technology-
based business to grow its operations if the benefits are from a prior
use defense. It would also freeze the level of activity benefiting from
a prior use defense when a business was sold. This would especially
harm small firms selling their businesses. The amendment limits the
protection for prior uses to use that is no greater in quantity, volume
or scope than the use that occurred before a somewhat unclear point in
time. The limitation applies both to any expansion in quantity, volume
or scope by another company to which the prior user may wish to
transfer its business.
The practical effect of this limitation would be to discourage any
growth or improvement in businesses that title III is intended to
protect. The limitation also would discourage any transfer of a line of
business to another firm that might be more efficient and competitive.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. DELAHUNT. Mr. Chairman, I yield the balance of my time to the
gentlewoman from California.
Ms. LOFGREN. Mr. Chairman, I just wanted a quick comment. The
chairman has received a letter. Mr. Lehman, our Commissioner of Patents
and Trademarks, has written to the chairman on this issue, and I want
to quote him. He in his letter dated April 22 indicates that, and I
quote:

H.R. 400 contains provisions referred to as prior use
rights that are intended to make the patent system fairer by
allowing those who practice an invention before it was
patented by another to continue to practice invention after
the patent issued.

According to Mr. Lehman, and again this is a quote:

Mr. Campbell's amendment is unfair in limiting their rights
to exploit the invention to the quantity or volume of use at
the time of the prior use. In some instances they may have
reasonably expected to expand operations at a later time and
others that may be tantamount to eliminating the prior use
right.

That is Mr. Lehman's comment.
Mr. CAMPBELL. Mr. Chairman, would the gentleman yield?
Mr. DELAHUNT. I yield to the gentleman from California.
Mr. CAMPBELL. Would the gentleman kindly request the gentlewoman to
share that copy with me, in that I have not seen it until this moment?
Ms. LOFGREN. Mr. Chairman, if the gentleman will yield, I am sorry.
Of course. Since it was sent to the gentleman from North Carolina [Mr.

[[Page H1721]]

Coble] I assumed, but I would be happy to, when we go back into the
House of Representatives, I will ask unanimous consent that the letter
be submitted in the Record. In the meanwhile I will make a copy for the
gentleman.
Mr. CAMPBELL. If the gentlewoman from California can just bring it
over to me, that way I can see it on my rebuttal.
The letter referred to is as follows:

U.S. Department of Commerce,

Patent and Trademark Office,

Washington, DC, April 22, 1997.
Hon. Howard Coble,
Chairman, Subcommittee on Courts and Intellectual Property,
Committee on the Judiciary, House of Representatives,
Washington, DC.
Dear Mr. Chairman: Thank you for your request to review
proposed amendments to H.R. 400, the ``21st Century Patent
System Improvement Act.'' We oppose enactment of any of these
proposed amendments and amendments that may be presented
containing the same subject matter.
One amendment offered by Mr. Hunter would amend provisions
of H.R. 400 related to patent reexamination--a proceeding
that offers a cost-effective alternative to litigation. As
changed by the Manager's Amendment, title V of H.R. 400 would
improve the existing procedures by permitting those who
question patent validity (other than the patent owner) to
participate more effectively in reexamination proceedings.
This makes reexamination a more effective alternative to
expensive and time-consuming litigation. This amendment would
eliminate this improvement and all others contained in H.R.
400. Furthermore, it would preclude the primary examiner who
authorized the issuance of the patent, the person in the
Patent and Trademark Office most familiar with the patent and
the technology involved in it, from participating in the
reexamination of the patent.
Another proposed amendment offered by Mr. Hunter would
retain the provisions as amended by the Manager's Amendment
but would change them in such a way as to render
reexamination proceedings as almost useless. Under the
provisions of this amendment, reexamination proceedings could
only be instituted within nine months of the date of issue of
the patent. In many or most cases, disputes involving the
validity of the patent will not be apparent within the first
nine months after issue. Thus, reexamination will not be a
viable substitute for litigation in many instances and patent
owners and third parties will be forced to engage in
litigation that is more costly and time consuming. While this
would be a disadvantage for all businesses, this could be
especially disadvantageous for individual inventors and small
businesses. It is ironic that this amendment is claimed to
have been offered on their behalf.
An amendment offered by Mr. Forbes would preclude pre-grant
publication of a patent application filed by small business
or individual inventors (as defined in the fee subsidy
provisions of title 35), unless requested by the applicant.
The public benefits from prompt publication of patent
applications. There appears to be no reason to exempt some
applicants from the publication requirement, especially when
any possible legitimate concerns about losing the
opportunity to use trade secrets are mitigated by the bill
under consideration. It provides that these applicants can
request delays in publication until after the second
office action.
H.R. 400 contains provisions, referred to as ``prior user
rights,'' that are intended to make their patent system
fairer by allowing those who practiced an invention before it
was patented by another to continue to practice invention
after the patent issued. Mr. Campbell's amendment us unfair
in limiting their rights to exploit the invention to the
``quantity or volume of use'' at the time of the prior use.
In some instances, they may have reasonably expected to
expand operations at a later time. In others, it may be
tantamount to eliminating the prior user right.
Each of these proposed amendments would make it more
difficult for all businesses, but especially small businesses
or individual inventor, to exploit their inventions
successfully. Therefore, we oppose their enactment.
Furthermore, during the debate on H.R. 400, some Members
cited a report released by the Congressional Research Service
that concluded that H.R. 811 would end the practice of
``submarine patents''. This conclusion in it is incorrect.
H.R. 811 would permit publication at a late point in patent
prosecution (unlike H.R. 400 that requires early publication)
and permits the term to run from the date of issue (unlike
H.R. 400 that requires the term to run from the date of
filing). This means that the public would not receive notice
of the ``submarine'' patent until the five-year date.
Although this could be earlier than they would under the law
before the enactment of the Uruguay Round Amendments Act, the
public still could have invested substantial amounts
unknowingly in the technology covered by the submarine
patent. Worse, given the term provisions, the beginning of
the patent term can still be unjustifiably delayed so that it
appears that the submariner is obtaining a longer patent term
than authorized. Thus, the public may then know about the
patent application pending in the Office, but they cannot
stop the delay tactics or the unfair extension of the patent
term.
Sincerely,

Bruce A. Lehman,

Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks.

Mr. DELAHUNT. Mr. Chairman, I yield back the balance of my time.
Mr. ROHRABACHER. Mr. Chairman, I move to strike the requisite number
of words.
Mr. Chairman, I was very pleased that the gentlewoman from California
[Ms. Lofgren] brought up Bruce Lehman, the head of our Patent Office.
He is the one who actually made an agreement that has brought us all
together today. It was his agreement with the Japanese, which I put
into the Congressional Record on numerous occasions which the other
side of this debate has yet to comment on, that has brought us
together, because Mr. Lehman signed an agreement to harmonize American
patent law with that of the Japanese. That is the reason we are here
today.
America had the strongest patent law in the world. That is the reason
we had our great innovations that mankind has enjoyed over these last
200 years coming from the United States of America.
This is an attempt, what is happening today, H.R. 400, to destroy the
fundamental legal protections that have been part of our legal system
since the adoption of our Constitution and in the name of harmonizing
our law with that of Japan.
Last week, when we had this discussion as to basically our substitute
amendment, all of this, quote, reform was being done to stop submarine
patenting, supposedly. Well, those who were listening realized that
argument did not wash. Well, what was the real reason we have the bill
here? Why is there a portion of this bill that demands that every
American inventor will have to have his invention published for
everybody in the world to see and to steal before that patent is
issued? That is part of the bill because that is the way the Japanese
system works. That is what we have agreed to in a subterranean
agreement with the Japanese.
This bill will gut America's patent system. It is horrendous. It will
make us technologically inferior one generation from now. I ask my
colleagues to defeat it.
Mr. Chairman, I yield the balance of my time to the gentleman from
California [Mr. Campbell].
Mr. CAMPBELL. Mr. Chairman, there were three points made in
opposition to my amendment. I would like to rebut each of them. First
of all, prior domestic use; it has been asked: Prior to what? The
answer is already in the bill. Remember the bill itself creates the
prior domestic use as a right. Accordingly, I am saying whatever that
prior domestic use is, it shall be limited to its scope as of the time
of the prior domestic use recognized by the bill. So it really is a
circular argument against my amendment.
Second, opponents of my amendment argue that this is a disadvantage
for America in regard to Europe because Europe has a prior domestic use
provision. This is the debate we had last week.
If a European files over here, the European's prior domestic use does
not give an excuse to violate American patent law. Everyone over here
is treated the same. Over in Europe, whether an American or a European
files, there is a prior domestic use exception. So there is a no
unfairness between the two; we have a better system. In America the
patent means more, and that should be protected.
And, last, opponents argue that small businesses are somehow
disadvantaged. I have now had the opportunity to read Mr. Lehman's
letter. He claims small inventors are disadvantaged--but what he says
is disadvantaged as opposed to what the amendment would provide instead
of the bill, not disadvantaged as compared to the status quo. There is
no prior domestic commercial use in the status quo.
Now if my colleagues wish to create a prior domestic use exception, I
am limiting it so that it is not expanded so broad as to take away the
value of the right. And that is my intention. But please, to say that
it limits the small businesses is really quite erroneous because small
businesses do not have this right presently.
Last, if you want to generalize, understand it is the large
businesses who

[[Page H1722]]

are more likely engaged in the prior domestic commercial use. It is the
small businesses who, if you want to generalize, are the inventors, the
larger businesses who are the commer- cializers.
This one provision shows as clearly as any in the bill that it is an
attempt to take from the inventor and give to the commercializer, and
we do that at great risk to the inventing process.
I thank my colleague for yielding.
Mr. ROHRABACHER. It is fascinating that in H.R. 400, which we will
vote on as an up-and-down vote at the end of this long debate and after
our amendments are through, that all of the Nobel Laureates that have
been cited on the floor have been in favor of a substitute to H.R. 400
and have opposed H.R. 400; the research departments of our major
universities and colleges are opposed to H.R. 400; every inventors'
organization in the country is opposed to H.R. 400; small businesses
throughout our country are opposed to H.R. 400.
They do not want to give huge, multinational, and foreign
corporations every secret that they have been developing with their
research and their efforts over the years, even before patents are
granted to those who have applied for patents.
This would make vulnerable small businessmen. It would make
vulnerable our inventors. It would cut into what America has had as our
edge against every one of our foreign adversaries both in terms of
national security and in terms of our prosperity.
I am asking my colleagues to join me in voting no on H.R. 400 but
supporting the amendment of the gentleman from California [Mr.
Campbell] which would, hopefully, improve it one little bit.
Mr. HYDE. Mr. Chairman, I move to strike the requisite number of
words. I just have a very brief statement I want to make.
I want to say to my friend, the gentleman from California [Mr.
Rohrabacher]: First, I disagree with him comprehensively in his
interpretation of the bill; second, a local Capitol Hill-newspaper has
quoted me according to some anonymous source, as referring to him with
a highly uncomplimentary name. I would like the public record to show
that I hold him in the highest regard, I hold him in the highest
esteem, in the highest respect, and that I disavow such terms and
dislike personalizing any disputes.
I hope the gentleman does not put any credence in that published
statement because that would be wrong. But again, I reiterate my
comprehensive disagreement with the gentleman.
Publication is protection. Yes, it is published. Yes, people can read
it. But you have provisional rights as though you had a patent issued.
What the publication does is say, yes, this is my idea, I was here
first, do not tread on me. And it is that publication of foreign
applications for patents that we would like to see, inasmuch as they
see ours when we file over there.
But notwithstanding that, that is not the real thrust of my remarks.
The thrust of my remarks is to say that the gentleman is persistent and
tenacious and a very worthy adversary; and I hope the misstatements in
the press have not colored the gentleman's view of my opinion of him,
which is of the highest.
Ms. KAPTUR. Mr. Chairman, I move to strike the requisite number of
words, and I yield to the gentleman from California [Mr. Rohrabacher].
Mr. ROHRABACHER. Mr. Chairman, I thank the gentlewoman for yielding.
First of all, I would like to say that this has been a heated debate
and it has been a bipartisan debate; and no one can really chart who is
going to fall down on what side of this debate in terms of their party
or whether they are conservative or liberal or what have you.
I think that is healthy for this body. And I certainly never believed
that my colleague, the gentleman from Illinois [Mr. Hyde] would have
personalized it the way the newspaper said it was. After all, it was a
comment not about me but about my mother I seem to think. And I am sure
that comment would not really have been something that would be
characteristic of the gentleman from Illinois [Mr. Hyde], who has
always kept debates on a very high plain, even though sometimes being
called Mr. Periscope is not always the nicest thing in the world, but I
did not take offense at that either.
Mr. HYDE. Mr. Chairman, if the gentlewoman would yield, the
gentleman's periscope is always up.
Mr. ROHRABACHER. But I have nothing but respect for the gentleman
from North Carolina [Mr. Coble] and the gentleman from Illinois [Mr.
Hyde].
As I say, if one would examine our voting records, one would find
that we vote together 90 percent of the time. Again, however, in this
particular instance, I am in strong disagreement with my two
colleagues. And I am happy that we are discussing publication, because
I believe publication is the essential ingredient of H.R. 400.

{time} 1445

How one might determine this, whoever is listening from the outside
or reading the Congressional Record or our colleagues listening from
their offices, is that this bill was actually submitted to Congress
during the last session. The bill was virtually the same bill, but it
had a different title on the bill. The title of the bill in the last
Congress was the Patent Publication Act.
The reason it was called the Patent Publication Act is because the
purpose of the bill, and the essential purpose, the essential thing
that it accomplishes that could not be accomplished with other minor
reforms, or actually things that could happen, reforms within the
Patent Office itself, the publication is the thing that by necessity
takes some congressional action.
Why is publication bad? It is common sense. Those people who are
listening, those people who are reading the Congressional Record, our
colleagues who are listening at home, if one cannot understand the
argument that was just presented to us of why publishing our secret
information, information that by American tradition was kept absolutely
confidential until the issuance of a patent, from the time our
Constitution was adopted until after this bill passes and is signed
into law, the law has been that an American has a right of
confidentiality. If he has an invention and applies for a patent, no
one will have the right to know about it until that patent is issued.
This is a major divergence of American law in a fundamental area. We
are talking about the law that has governed technological development
in our country. It has served us well. America's competitors did not
know what American inventors, innovators, and universities were doing
until the patent was issued. This bill would mandate after 18 months
that all of the information of an applicant would be made public even
before the patent is issued.
Sometimes patents take 5 and 10 years to issue. In that case,
America's worst adversaries, people who want to destroy this country
economically and bring us down, will have all of our technological
secrets to use against us. The bill takes care of that, we are told,
because it grants then, the innovator, the inventor, the right to sue
these huge foreign and multinational corporations who might infringe
upon us.
That will not work. It does not fool the inventors. It is a formula
for a catastrophe and the stealing of our technology to be used against
us.
I ask for people to vote no on H.R. 400.
Ms. KAPTUR. Mr. Chairman, I yield the balance of my time to the
gentleman from California [Mr. Campbell].
Mr. HYDE. Mr. Chairman, will the gentlewoman from Ohio yield?
Mr. CAMPBELL. Mr. Chairman, if the gentleman from Illinois [Mr. Hyde]
will get us some more time.
Mr. HYDE. Mr. Chairman, I ask unanimous consent that the gentlewoman
from Ohio have an additional minute.
The CHAIRMAN. Is there objection to the request of the gentleman from
Illinois?
There was no objection.
Mr. HYDE. Mr. Chairman, will the gentlewoman yield?
Ms. KAPTUR. I yield to the gentleman from Illinois.
Mr. HYDE. Mr. Chairman, this is just kind of a passing comment. The
gentleman from California [Mr. Rohrabacher] talked about countries that
wanted to destroy us economically. I searched the globe, and I see all

[[Page H1723]]

of these countries wanting to trade with us. They like our markets.
They do not really want to destroy us economically. They would like to
get an advantage, but destruction, I do not think that is part of their
agenda.
Mr. CAMPBELL. Mr. Chairman, will the gentlewoman yield?
Ms. KAPTUR. I yield to the gentleman from California.
Mr. CAMPBELL. Mr. Chairman, if I could please get attention to my
amendment. It has nothing to do with disclosure. My amendment has
something to do with the prior user opportunity to undermine the
patent. Here is what it is.
The bill itself says something that has never existed before in
American patent law. At it is now in patent law, if one who was making
a product prior to you, but does not obtain the patent, and you do--
they have to pay you royalties. That is valuable. It is a way to make
people go to the Patent Office and get their idea patented.
Under this bill, for the first time in American patent law, that
prior domestic user gets to continue--with no obligation to pay
royalties, and worse, the right to expand, and sell the company and
sell this right along with the company, with the result that it really
takes away a significant percentage of the value of having a patent.
So what I propose is this: I understand that there will occasionally
be a prior innocent commercial user. Let him, let her continue--that is
all right--but only with the scope and volume that that person was
doing. Do not allow it to be a back door to expand so much as to take
away the essential patent right.
I think that is a very reasonable amendment. We had discussion on
this as an amendment, and I think it improves the bill. I thank my
colleagues from Ohio.
Mr. HUNTER. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, I thank the gentleman for staying around to answer a
few questions on his amendment. I just want to ask a couple of
questions. Let me walk through this thing and make sure I get the right
and accurate picture of what his amendment does.
This has to do with prior use of a certain technology, and that means
presumably, if one has a company that has been using technology, let us
say they have kept it as a trade secret so other people do not know
what it is, and they end up obtaining a patent for that particular
technology, that the prior user, the corporation, can continue to use
the technology without having to pay. But if they expand their activity
beyond the scope that existed at the time the patent issued for the
inventor over here, then they have to pay for the delta, the difference
between their present activity and their expanded activity, using what
is now patented technology.
Is that an accurate description?
Mr. CAMPBELL. Mr. Chairman, will the gentleman yield?
Mr. HUNTER. I yield to the gentleman from California.
Mr. CAMPBELL. Mr. Chairman, it is almost accurate; there is just one
point where it was not, and that is that the expansion is of the use
beyond the prior domestic use. At one point my colleague substituted
the word ``patent'' for ``use,'' but I think he has said it absolutely
accurately otherwise.
Here it is: Under existing patent law, the prior domestic user has to
pay royalties to the person who gets the patent. This bill says that
prior domestic user who might have kept it secret can expand to his
heart's content. My amendment says, no, look, if you have a prior
domestic use, that is what you can continue doing; but if you expand it
beyond that, then you have to deal with the fellow who has the patent.
Mr. HUNTER. Mr. Chairman, I thank the gentleman for his explanation.
Mr. CAMPBELL. Mr. Chairman, if the gentleman would yield further, I
want to just take one moment to read the provision in the bill which I
would amend. Again, I say to my colleagues, this has nothing to do with
publication; it has to do with an exemption never before existing in
American patent law. It says, I am quoting from the bill, title III:
``except that the defense shall also extend to variations in the
quantity or volume of use of the claimed subject matter.''
I take that out, and I say, if you have a prior use, okay, continue
it, just do not expand it. I thank the gentleman for yielding.
The CHAIRMAN. The question is on the amendment offered by the
gentleman from California [Mr. Campbell].
The question was taken; and the Chairman announced that the noes
appeared to have it.

Recorded Vote

Mr. CAMPBELL. Mr. Chairman, I demand a recorded vote.
The CHAIRMAN. Pursuant to House Resolution 116, further proceedings
on the amendment offered by the gentleman from California [Mr.
Campbell] will be postponed.
Mr. COBLE. Mr. Chairman, I move to strike the last word to engage in
a colloquy with my friend from California [Mr. Campbell], a brief
colloquy, if the gentleman is willing.
Mr. Chairman, the gentleman and I talked about this in the back of
the room earlier, and as best I recall, the gentleman was in agreement,
but he may not be able to bind others.
I think our colleagues have heard about enough of H.R. 400. Would the
gentleman be willing, and it would be unanimous consent, to terminate
all debate on this matter at 5 o'clock today?
Mr. CAMPBELL. Mr. Chairman, will the gentleman yield?
Mr. COBLE. I yield to the gentleman from California [Mr. Campbell].
Mr. CAMPBELL. Mr. Chairman, I speak only for myself. I have consulted
with my colleague from California. I know my other colleague from
California, Mr. Hunter, will be offering an amendment, and I understand
our colleague from New York, Mr. Forbes, will be offering an amendment.
On my own behalf and having consulted with my colleague, I am more
than willing to use every effort to end by 5. This is my last
amendment.
There is one disagreement. In my family, we speak of little else than
patent law, and I am shocked that the gentleman would find that a
limitation is somehow preferred by my colleagues on the floor. But if
that is my colleague's perception, I would be agreeable.
Perhaps the gentleman would yield to my colleague from California,
Mr. Hunter.
Mr. HUNTER. Mr. Chairman, if the gentleman would yield, certainly I
have an amendment that I will be offering at the end of the other
amendments and I will try to make it short and sweet and do everything
I can to accommodate our friend.
I would anticipate we ought to be finished by 5. I would hate to be
at 4:45 or 4:50 and have one to go, but I think we can do it.
Mr. COBLE. Mr. Chairman, I thank the gentleman.
Mr. Chairman, for what it is worth, I ask unanimous consent that all
debate on the bill and any amendments thereto be concluded by 5 o'clock
today.
The CHAIRMAN. Is there objection to the request of the gentleman from
North Carolina?
There was no objection.

Amendment Offered by Mr. CAMPBELL

Mr. CAMPBELL. Mr. Chairman, I offer an amendment.
The CHAIRMAN. The Clerk will designate the amendment.
The text of the amendment is as follows:

Amendment offered by Mr. Campbell: page 48 of March 20
text, strike line 3, insert:
``111(b) of this title, as to which there have been two
substantive Patent Office actions since the filing, shall be
published, in accordance''
Line 17, insert:
``(D) `Substantive Patent Office action' means an action by
the patent office relating to the patentability of the
material of the application (not including an action to
separate a patent application into parts), unless the patent
applicant demonstrates under procedures to be established by
the patent office that the office action in question was
sought in greater part for a purpose other than to achieve a
delay in the date of publication of the application. Such
Patent Office decision shall not be appealable, or subject to
the Administrative Procedures Act.''

Mr. CAMPBELL. Mr. Chairman, this is the last amendment I will offer.
It deals with the publication issue.
For our colleagues who have not followed the debate on the floor, I
would simply observe that the first amendment I offered was not on this
subject; it dealt with prior commercial use. This does. This is the
soul of a compromise that I thought made sense.
I will point out that it deals with the obligation to disclose before
a patent is

[[Page H1724]]

actually granted. Everyone who followed the debate last week is
familiar with the argument, pro and con, but I, in good faith, tried to
work out a compromise, and we were close, but it was not eventually
successful. I believe it is the right way to go, though. Here is what I
am suggesting.
The whole argument in favor of disclosure offered by the supporters
of the bill is that there is a submarine patent problem. Some patent
applicants will keep their application secret, just below the surface
for a while, and then ask for a continuation, ask for a delay, and then
wait for somebody else to take their idea and turn it into a commercial
product; and when they do, then they rise, like a submarine, and fire
their torpedoes of litigation. I understand that argument. It has
validity, in part.
So what I suggest is, let us require disclosure for some, but by
requiring disclosure for all, we run all the risks that we talked about
last week. There are good-faith people who are not trying this
submarine strategy who want to try to get a patent, but when they are
told they are not likely to, they then want to take their idea to a
company and say, ``I have a trade secret, are you interested in a trade
secret?''
But after the bill passes, if it does today and becomes law, if the
other body passes it and the President signs it, well, then, it is
gone, because they have already disclosed their secret.
So let us solve the problem of the submarine patent but not cause
everybody to have to disclose. That is the element of my compromise.
So how do we determine who ought to disclose? Here is the part that I
offer, and I think it is a generous offer. If this is acceptable to the
majority of Members, we will have improved this bill. It says, look, I
have one pretty good signal. If one has had two actions in the Patent
Office, one is possibly involved in gaming the system. Let me emphasize
``possibly,'' because there are a lot of innocent people who have two
actions in the Patent Office. Indeed, I am informed by some of my
research universities that three or four Office actions are needed
before they are absolutely sure.
I am being as generous as I can to try to seek compromise, and I am
saying, disclose if you are in the Patent Office and you get two patent
actions. That tells me that gaming the system is afoot, maybe.

{time} 1500

This amendment says disclose only if we are convinced that you might
be a submariner. I think it is a very generous exception, but it does
not require everyone to disclose. So the innocent patent applicant who
does everything he or she can and just does not get the patent by 18
months can continue to try to get the patent without suffering the
consequence that it is disclosed to the world. The person who is
attempting to game the system really cannot game it without getting two
patent actions.
Let me take a moment and explain what a patent action is. For
example, somebody would go in and ask for a continuation; the Patent
Office is ready to make your decision and give you a patent, but I, the
patent applicant, say: Take your time, please delay it a little more.
Please consider the prior use that might have been alleged, for
example. Please consider that this patent has more than one possible
patentable idea in it, for example.
All of those requests could, of course, be done innocently, but I am
suggesting that they are sufficient for us to say the risk of the
submariner is there.
In conclusion, I put to my colleagues, if the patent applicant has
not even gotten two Patent Office actions, how can this patent
applicant be engaged in a subterfuge, an attempt to engage in or an
attempt to do a submarine number? It is really practically impossible.
That is not how it is done. So rather than force the world to disclose,
please, just go after the wrongdoers, and even so, I am sweeping
broadly.
That is what I offer. I appreciate the attention of my colleagues.
Mr. COBLE. Mr. Chairman, I rise in opposition to the amendment
offered by my friend, the gentleman from California [Mr. Campbell].
Mr. Chairman, I say to the gentleman from California, I have referred
to him on many occasions as one of the most learned, if not the most
learned, Member of this august body, and perhaps I was presumptuous
when I accused him of committing infirmities of clarity. The gentleman
might remind me that it was my inability to interpret. But it appeared
to me to be an infirmity of clarity, nothing personal meant by that.
The amendment submitted by my friend, the gentleman from California,
Mr. Chairman, can be interpreted to require the PTO, Patent and
Trademark Office, to complete two substantive office actions in every
application filed and still publish all applications in 18 months.
The PTO is simply not able to comply with such a requirement at this
time with their existing resources. This solution would force the PTO
to ask Congress for a fee increase, which comes, guess where, out of
the inventor's pockets. It could also affect the quality of patent
examinations, causing more examiners to make mistakes through hurried
examinations, and therefore exposing inventors to more court
challenges, which can cost millions of dollars. That does not propel
innovation, it seems to me.
The second interpretation of the gentleman's amendment could be to
delay the publication of all applications until the second substantive
office action determining the patentability of an invention. If this
interpretation holds true, the gentleman from California proposes to
expand the choice over publication offered only to small businesses in
H.R. 400. I repeat, we offer that to small businesses in our bill.
But the gentleman from California [Mr. Campbell] would expand that to
all applicants, including big business, without granting the inventor a
3-month grace period before publication. This will remove one of the
benefits of publishing applications in the United States, the early
availability of foreign origin applications in the United States in our
language, in the English language.
Title II of H.R. 400 requires publication of foreign origin
applications within about 6 months after filing in the United States.
That means we see their technology 1 year before any of ours is
published and protected in the United States. The amendment offered by
the gentleman from California delays the publication of foreign origin
applications for a year after the date they would otherwise be
published in the United States under H.R. 400. Let us not take away
that benefit.
Moreover, the Campbell amendment would delay the publication of
applications by U.S. businesses who are also filing abroad, where their
applications are already published 18 months after filing in the United
States. Delayed publication of these applications that are also filed
abroad deprives American inventors of easy access to the same.
Whichever way it is read, the amendment offered by the gentleman from
California, it seems to me, favors foreign applicants over U.S.
applicants and effectively guts the protections and benefits offered in
H.R. 400.
Vote no on the Campbell amendment.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. COBLE. I yield to the gentlewoman from California.
Ms. LOFGREN. Mr. Chairman, I would just like to note that the ranking
member concurs in the analysis that the chairman of the subcommittee
has just outlined.
Mr. GOODLATTE. Mr. Chairman, I move to strike the last word, and I
rise in opposition to the amendment offered by the gentleman from
California [Mr. Campbell].
Mr. Chairman, I think the debate here has been wrongly focused on the
whole idea that somehow the patent system operates to protect the work
of inventors through secrecy. That is not the case at all. We protect
the work of inventors through secrecy by using a trade secret process.
Patents operate just the opposite. We protect the rights of American
inventors through our patent system when the patent is issued today by
telling the whole world that that particular individual is the first to
patent that item. That is the protection they get, by publishing the
work, by publishing the discovery of the invention.
That is exactly what we are trying to improve in this process by
publishing after 18 months. We are, if we simply look at this debate
from the standpoint of how many of these can we continue

[[Page H1725]]

to not publish, overlooking the fact that we are, in point of fact,
having the opportunity to improve our system and improve the protection
on those inventors through publication.
The gentleman from North Carolina has rightly pointed out that if we
do not change our system, the fact that 75 percent of all the patents
filed in the United States are published after 18 months because they
are also filed in Japan, in Germany, in France, and other places around
the world, in the languages of those countries, in Japanese, in German,
in French, so inventors in those countries, the little guys, have the
opportunity to see in their own language exactly what everybody else in
this process is doing. The small inventor, the major business, anybody
in the United States, does not have that opportunity under our system
because we do not publish.
Of all the patents filed in the United States, 45 percent are filed
by foreign inventors. We do not get the opportunity to see what they
are doing in this country because it is not published in English for
our inventors to see. If we adopt this amendment, we are going to miss
out on what is a major reform in our patent law that improves the
conditions, does not harm the conditions for the small inventor.
The second thing that is harmful for the small inventor in our
current process is the amount of time it takes that small inventor to
get capital to get their product on the market. A major business does
not have that problem. They have the capital. They are ready to go with
their product, whether they have a patent issued or not. But the little
guy has the problem of not being able to get that capital.
Quite to the contrary of the criticism of this legislation by the
opponents, the experience in Europe and other places around the world
is that when you publish after 18 months, the entrepreneurial investor
will be willing to put the money behind your invention sooner because
you are being published, and not only are you being published, and this
is the critical element, everybody else in the patent process is being
published as well, so that entrepreneurial investor has the opportunity
to know that you are the first one out of the box because you are the
first one being published.
If there is anybody else out there with a competing patent idea, that
if they put their money behind you and somehow somebody else is going
to get that patent, they now have the opportunity to know that you are
the one because you are the first one out of the box with that
publication.
The experience in Europe and other places has been that the
entrepreneurs put the money behind that little inventor sooner, get
their product to market sooner as a result of having that publication.
Finally, the amendment offered by the gentleman from California does
not eliminate gaming of the system. As the gentleman from North
Carolina [Mr. Coble] correctly pointed out, it simply changes the
nature of the gaming. If somebody wants to force publication of
somebody else's patent, then they go through the process of having a
patent controversy in the Patent Office. The result is that there is a
new way of gaming our system.
That has not improved the system, that has simply changed the way
that lawyers and those who want to game the system and take advantage
of it, who do not want to bring a new idea to market, who do not want
to get the capital to put an idea on the line but rather want to take
advantage of somebody else, they will still be able to do it under the
gentleman's amendment.
Mr. Chairman, I urge opposition to the amendment and support of H.R.
400, which will truly improve the system not only for all American
business but most especially for the little guy.
Ms. KAPTUR. Mr. Chairman, I move to strike the requisite number of
words.
I listen to this discussion about why we have to do things in this
country to benefit foreign inventors, Mr. Chairman, and I think they
should be helped, but not at the expense of our own people. The truth
is that if our country has 10 times as many intellectual breakthroughs
as any other country in the world, why do we want to conform our system
to countries that are not working as well as ours?
The gentleman from Virginia said something about that our inventors
need to see all this information from other places, but they are not
clamoring for this. We have more inventors in our part of America, and
we are the State of Thomas Alva Edison. They are not asking for this to
be done. What they are asking for is their property rights be
protected, and that their inventions not be opened up to snooping in
the 18-month window that the gentleman is talking about, there, that
after that they can take a look; for whichever country in the world or
whichever inventor in the world wants to take a look at that, and
really have special privilege over that intellectual property, which
has never been granted by this country before.
If we talk about what other countries do, if you file a patent in
Germany or one in Japan, you do not file the kind of detailed patent
that you do in this country. We require so much more of our inventors.
What is interesting, I just have to put this in the Record, and I am
going to ask unanimous consent that it be placed in the Record, what is
driving this entire debate, the amendments, the base bill, is this
agreement that our government got itself locked into back in January
1994 called a mutual understanding between the Japanese Patent Office
and the United States Patent and Trademark Office.
Mr. Chairman, this is not something that is not significant. This is
very significant, because what the United States agreed to is exactly
what the proponents of H.R. 400 are trying to get us to pass here.
Essentially it says that our Government had to come back to the United
States after agreeing to this and agree to introduce legislation to
amend the U.S. patent laws to change the term of patents from 17 years
from the date of grant of a patent, which has been our current law now,
for an invention to 20 years from the date of filing, which is the
change that the proponents of H.R. 400 obviously want.
What did we get for this; for changing, turning upside down the
system that has created 10 times more inventions, better inventions,
intellectual property breakthroughs, than any other country in the
world? What we got was an agreement from the Japan Patent Office that
says the following; that they would permit foreign nationals to file
patent applications in the English language, with a translation in
Japanese to follow within 2 months.
So what we agreed to was to turn the entire system that drives job
creation in this country and has created the standard of living in this
society, and what we get is a little teeny, weeny agreement from Japan
that they are going to agree to translate the patents that are filed
into their own language.
Mr. Chairman, it seems to me there is something very uneven about
this playing field, and for those Members that were not a party to
these negotiations, if the staffs have not informed the Members of what
is going on here, let me tell them, we are talking about a wholesale
gutting of the patent laws that have protected the intellectual
property of our inventors. This has not been talked about much in the
debate. Our system is completely different than these other countries,
but what is wrong with our current system? Why is it so bad? Have these
Members' inventors actually been beating their doors down and asking
for changes? The only changes my inventors back home have been asking
for is to make the maintenance fees more easily payable for them. They
are getting too high for the small people, for the small people.
What H.R. 400 does is opens up the possibilities of litigation to the
small people, which are the people that are creating the new jobs in
this country, making life much more difficult for them, and we get
almost nothing for it. I would hope that one of the proponents of the
legislation could explain to me how this is an evenhanded deal for the
United States, that they are out here. I would hope the gentleman from
Virginia [Mr. Goodlatte] would respond.
Mr. GOODLATTE. Mr. Chairman, will the gentlewoman yield?
Ms. KAPTUR. I yield to the gentleman from Virginia.
Mr. GOODLATTE. Mr. Chairman, in responding to the gentlewoman's
comments earlier where she said we were helping foreign inventors,
quite the opposite. Foreign inventors are helped right now under the
current laws of

[[Page H1726]]

their countries that publish the 75 percent of all patents filed in the
U.S. Patent Office that are also filed in other countries.
The CHAIRMAN. The time of the gentlewoman from Ohio [Ms. Kaptur] has
expired.
(By unanimous consent, Ms. Kaptur was allowed to proceed for 1
additional minute.)

{time} 1515

Ms. KAPTUR. As I mentioned to the gentleman, when you file in Europe
or you file in Japan, you file a generic patent. You do not file the
kind of detailed patent that you do in this country. We have a
different kind of patent system, and the proof is in the pudding. Look
at this country compared to the places that we are competing with.
So it seems to me that we should be about the task of saying, if we
have created a good system, how do we make the system here function
better for our people rather than getting ourselves into a position
where we are arguing to rubberstamp an agreement that is going to
harmonize the United States with countries whose systems are flat, who
commercialize the inventions made here, and we will disadvantage our
own people by getting them caught up in all types of litigation.
Why are we making it harder for the people of the United States to
protect their intellectual property?
Mr. Chairman, I submit this for inclusion in the Record.

Mutual Understanding Between the Japanese Patent Office and the United
States Patent and Trademark Office

Actions to be taken by Japan:
1. By July 1, 1995, the Japanese Patent Office (JPO) will
permit foreign nationals to file patent applications in the
English language, with a translation into Japanese to follow
within two months.
2. Prior to the grant of a patent, the JPO will permit the
correction of translation errors up to the time allowed for
the reply to the first substantive communication from the
JPO.
3. After the grant of a patent, the JPO will permit the
correction of translation errors to the extent that the
correction does not substantially extend the scope of
protection.
4. Appropriate fees may be charged by the JPO for the above
procedure.
Actions to be taken by the U.S.:
1. By June 1, 1994, the United States Patent and Trademark
Office (USPTO) will introduce legislation to amend U.S.
patent law to change the term of patents from 17 years from
the date of grant of a patent for an invention to 20 years
from the date of filing of the first complete application.
2. The legislation that the USPTO will introduce shall take
effect six months from the date of enactment and shall apply
to all applications filed in the United States thereafter.
3. Paragraph 2 requires that the term of all continuing
applications (continuations, continuations-in-part and
divisionals), filed six months after enactment of the above
legislation, be counted from the filing date of the earliest-
filed of any applications invoked under 35 U.S.C. 120.
Wataru Asou,
Commissioner, Japanese Patent Office.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents
and Trademarks, United States Patent and Trademark Office.

The CHAIRMAN. The time of the gentlewoman from Ohio [Ms. Kaptur] has
again expired.
(On request of Mr. Goodlatte, and by unanimous consent, Ms. Kaptur
was allowed to proceed for 1 additional minute.)
Mr. GOODLATTE. Mr. Chairman, if the gentlewoman will continue to
yield, 45 percent of the patents that are filed in the U.S. Patent
Office are filed by foreign inventors, and we do not have the
opportunity to see in the English language what is published by those
folks.
Second, no one has addressed the whole point that we have made that
these inventors get the capital to bring their product to market
sooner, when you publish sooner, so that entrepreneurs who invest know
sooner that this is the investment they should put their money behind
because that is the person who is going to be getting the patent.
Ms. KAPTUR. Reclaiming my time, Mr. Chairman, nobody is complaining
about the current system. People like the protection attendant with the
current system. Inventors are not breaking our doors down and coming
through the windows asking for these changes. There are a few
multinational corporations that want to do a little snooping. And they
are famous for buying out inventions of inventors in this country. You
know how the current system works. Why would you want to advocate for
them rather than the vast majority of inventors who want to have their
rights protected.
The CHAIRMAN. The time of the gentlewoman from Ohio [Ms. Kaptur] has
again expired.
(On request of Mr. Goodlatte, and by unanimous consent, Ms. Kaptur
was allowed to proceed for 1 additional minute.)
Mr. GOODLATTE. Mr. Chairman, if the gentlewoman will continue to
yield, the fact of the matter is we are advocating for the little
inventor by pointing out the advantages of the system that we have
elsewhere in the world that benefits them. We have seen how it benefits
them. It will benefit them here as well.
I have had many small inventors who have contacted me in support of
this legislation and, yes, I have had some of those multinational
corporations you talk about. They file an awful lot of patents as well
and they want their patents protected under our system as well. That is
exactly why we need to pass this legislation, to help both.
Ms. KAPTUR. Mr. Chairman, if what the gentleman says is true, then
why are all the small business groups of the United States opposed to
his proposal: the Small Business Legislative Council, the Small
Business Technology Coalition, the National Association for the Self-
Employed, the National Patent Association, National Small Business
United. If your idea is so good, then why are the small guys who cannot
afford suits on the international scene, why are they opposing the
bill?
Mr. ROHRABACHER. Mr. Chairman, I move to strike the requisite number
of words.
Mr. Chairman, the gentlewoman's points were right on target. I hope
my colleagues who are following this debate in their offices and those
people following on C-SPAN and those people reading the Congressional
Record will note that throughout the debate we have made reference to a
subterranean agreement with Japan and have indicated that what we see
here today we believe is nothing more than an attempt to implement this
agreement, subterranean, hushed-up agreement with the Japanese to
harmonize our law, make our law like theirs. And you will notice that
that has never been addressed, nothing has been addressed by the other
side of this debate to that charge. We make it over and over and over
again. And I would like the gentleman from Virginia [Mr. Goodlatte] to
come forward now if he would like to have a colloquy and deny that this
has something to do with implementing this secret agreement with Japan.
Mr. Chairman, I thank the gentleman from Virginia [Mr. Goodlatte].
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. ROHRABACHER. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I note that none of the proponents of H.R.
400 are willing to stand up and explain about this agreement with Japan
and how that is driving this debate and what is the relationship
between that and these.
Mr. ROHRABACHER. Mr. Chairman, I would challenge Members on the other
side of this debate to spend their time and their 5 minutes explaining
to the American people why what they are proposing directly parallels a
secret agreement that we have made with Japan. They will have time on
their side to answer that.
The fact is that the driving force behind this, whether or not the
members of the committee are themselves committed to this agreement,
the driving force behind this has been to fulfill this agreement. How
can you tell? Because there were two avenues to this agreement in
harmonizing our law with Japan. There were two major factors that made
American law different than the Japanese law.
No. 1 was we had a guaranteed patent term, a guaranteed patent term
which meant no matter how long it takes you to get your patent issued,
at the end of that time period, would be guaranteed 17 years of patent
protection and, No. 2, the other aspect of American patent law, since
the founding of our country, was that there was

[[Page H1727]]

a right of confidentiality. The inventor had a right, when he applied
for a patent, that that would be kept secret and, yes, secret really
meant something to those people and has meant a lot to our
technological edge throughout the years. They had a right to that until
the patent was issued.
This legislation goes in exactly the opposite direction, changes the
fundamental rules of the game to correspond with this agreement to
harmonize our law with Japan. This is absolutely, the American people
should understand that what we are doing is trading a strong system of
protection that gave us the leverage on all our competitors in the
world, gave us our own national security because we had the edge
technologically on our adversaries, we are now changing that to a weak
system. And where will that weak system take America?
I would beg to disagree with my esteemed colleague, the gentleman
from Illinois [Mr. Hyde]. I believe there are people who are out to
destroy us economically. I believe there are other countries in the
world and other forces at play in the world that would like very much
to destroy America's economic prosperity and to put all of those
billions of dollars in their pocket. I am assuming that they are
adversaries. I am assuming that our Government should be doing
everything we can to strengthen the rights of the American people to
thwart those adversaries overseas that would steal their technology.
This bill, H.R. 400, I implore my colleagues, please vote against
this monstrous threat to American security and prosperity. Please
remember that all the inventors organizations, research departments at
our major universities, all the Nobel laureates that have been cited on
this floor are begging us not to pass this bill. It will not in any way
improve a situation that could not be improved with smaller type
improvements and reforms. We do not need to destroy the fundamentals of
the system to reform and make our system better.
This is the equivalent, this bill, of cutting off our leg in order to
cure a hangnail. If your doctor says, I am sorry, we have to change the
fundamental makeup of your body in order to cure that hangnail and we
are going to cut your leg off, go to another doctor.
Please, let us not harmonize our law with Japan. God bless the
gentleman from Virginia [Mr. Goodlatte]. Yes, it has worked maybe one
way in Europe, but how this system has worked, 18 months with
publication, how has it worked in Japan? The economic shoguns, the
people, the elite of Japan have beaten down their people in submission
every time they have raised their head. The Japanese do not invent
anything because when an inventor applies for a patent in Japan, he is
beaten down and his invention is stolen. They will do that to us, too.
Mr. FRANK of Massachusetts. Mr. Chairman, I move to strike the
requisite number of words.
I note, I thought it was rather an odd orchestration when my friend
from Ohio challenged anybody to stand up and respond, and her colleague
from California then refused to allow anyone to do it. I think we
should notice that there was a certain reason why no one stood up to
respond. The gentlewoman from Ohio, she said, why does not someone
respond? And the answer was, the gentleman from California would not
let them.
Mr. Chairman, I yield to the gentleman from Virginia [Mr. Goodlatte].
Mr. GOODLATTE. Mr. Chairman, I thank the gentleman for yielding to
me.
I just want to make the point that the so-called agreement that the
gentleman refers to is not something that has been honored in any way,
shape, or form by this Congress or by the Committee on the Judiciary
that comes forward with this legislation.
We are a first to invent Nation, not a first to file Nation. That is
what they want to have. We have always had a number of very significant
differences in our patent system.
All we are doing is saying that these are things that help us in this
country, and we want to modify our system to engage small inventors and
large inventors in having the opportunity to receive the benefits of
publication. This is not a battle over trade secrets. There is a
mechanism to protect trade secrets for anyone who wants to take
advantage of it. Patents are protected by broadcasting to the whole
world that an individual has the first to invent, and we should protect
that by advancing publication where it helps.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, if the gentleman from Virginia's statement
is correct, then why does H.R. 400 embody the Japanese agreement?
Mr. FRANK of Massachusetts. Mr. Chairman, let me respond now. First
of all, I want to congratulate my friend from California. I did not
realize he had such good intelligence sources, because he has been
waving around a secret agreement.
My reaction was to wonder, if it was a secret, where he got it. And I
do not want to force him to reveal his sources, but apparently the
gentleman from California has some tentacles into the intelligence
networks of either America or Japan, because he is privy to secret
agreements. Frankly I did not think it was that much of a secret, and
the fact that the gentleman had it did not surprise me. But when he
waved it around as a secret agreement, I was little bit puzzled.
I just want to totally disagree with the conspiracy theory here. This
is a difficult subject in some regards. People who have different
economic interests may have different views. There is room for
legitimate intellectual debate here.
I and others have had some differences with the bill. H.R. 400 today
is a different bill than it was before. There are some close questions.
Some of the questions the gentleman from California [Mr. Campbell]
raised about prior use, I had hoped to work with him further. But this
is not some conspiracy.
There was not a secret agreement signed in some tunnel in Tokyo. The
gentleman from California is refuting me on a secret agreement by
waving that secret around. I have to say, it is a pretty poor secret
that falls into the hands of the gentleman from California. It is not a
secret. There is a discussion of policy. We are making these changes.
Some of us make changes in this bill without checking with anybody
else. And the unwillingness to debate the issue on the merits but to
invoke these kinds of conspiracy theories, I think ill-serves the
policymaking process.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentlewoman from
California.
Ms. LOFGREN. Mr. Chairman, I think that the secret source for
uncovering this secret agreement has been found. It is the Commerce
News Press Release for immediate release. It is 1994. The headline is,
``American Inventors Promised Swifter, Stronger Intellectual Property
Protection by Japan.``
Mr. FRANK of Massachusetts. Mr. Chairman, reclaiming my time, this is
very sneaky. Not only is the Commerce Department signing secret
agreements, but they are then publicizing their secret agreements to
throw people off the track of the fact that they had a secret
agreement. I think that is an underhandedness that we ought to put an
end to.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I did not use that term.
Mr. FRANK of Massachusetts. Mr. Chairman, I understand that. I
realize the gentlewoman did not say that. That is why I did not say she
said it. It was the gentleman from California.
The gentleman from California has been waving this around talking
about a secret agreement. My friend from California over here has just
pointed out that this secret agreement was announced. I think we are
entitled to point out that this was not such a big secret and that
notion I will stress for this reason. Sure there is reason to debate
this. I have agreed with some of the points Mr. Rohrabacher made, and I
have supported some amendments to move it more in his direction, but to
denounce it in these terms, to talk about secret agreements and to
invoke conspiracies of people to be beholden to foreign powers to
undermine American economics is just not a good idea.

[[Page H1728]]

Ms. KAPTUR. Mr. Chairman, if the gentleman will continue to yield,
does the gentleman deny that the content of that agreement is now the
driving mainline inside of H.R. 400? The rollback?
The CHAIRMAN. The time of the gentleman from Massachusetts [Mr.
Frank] has expired.
(By unanimous consent, Mr. Frank of Massachusetts was allowed to
proceed for 30 additional seconds.)
Mr. FRANK of Massachusetts. Yes, I deny it, Mr. Chairman. I will tell
the gentlewoman this, I have been working on this bill. I was
originally a cosponsor of Mr. Rohrabacher's bill. We made some changes.
I have met with people in biotech. I have met with people in
universities, big inventors and small inventors. I have proposed some
changes. I did not even read the secret agreement. That agreement may
not be a secret from a lot of people, but it was secret from me. So I
absolutely deny that in my work on this bill, guided as it has been by
conversations with Americans, that I was in fact the hidden puppet of
the emperor of Japan.
Mr. GOODLATTE. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentleman from Virginia.
The CHAIRMAN. The time of the gentleman from Massachusetts [Mr.
Frank] has again expired.
(On request of Mr. Goodlatte, and by unanimous consent, Mr. Frank of
Massachusetts was allowed to proceed for 1 additional minute.)

{time} 1530

Mr. GOODLATTE. Mr. Chairman, if the gentleman will continue to yield,
I want to make the point if this is some conspiracy that came up within
the last 2 years, it is interesting that U.S. patent commissioners have
been seeking this change. U.S. patent commissioners of both political
parties have been seeking this change for 20 years. The Nixon
administration, the Ford administration, the Reagan administration, the
Bush administration all sought these changes long before there was any
so-called secret agreement.
Mr. FRANK of Massachusetts. Mr. Chairman, reclaiming my time, what we
finally should do is to give credit to the literary hand that runs us
all. Clearly this was motivated by the purloined letter, where the way
to hide it was to leave it out in public, because, apparently, the
Commerce Department stands accused of having signed a secret agreement
to govern us all and then nefariously publishing that secret agreement
to cover their tracks.
Mr. HUNTER. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, I wanted to speak just for a minute because the
gentleman from Virginia [Mr. Goodlatte] made several points about the
European and the Japanese system and how they have a large number of
high-technology start-ups. I think that goes right to the essence of
this publication requirement in the amendment of the gentleman from
California [Mr. Campbell].
I want to read a paragraph from a gentleman who is a patent lawyer,
considered to be an authority on patents. I think it is a very
excellent summary of the problem with early publication. He says:

Moreover, if early stage inventions of start-ups, small
businesses and individual inventors are prematurely
disclosed, the innovators will quickly lose any advantage or
headstart to establish financially stronger imitators. Unless
start-up businesses can get a strong foothold in the
marketplace before infringers appear so that they can afford
to assert their patent rights, these rights become virtually
worthless.

He concludes by saying this, and this goes right to the gentleman's
point, he says, ``These are two major reasons that Japan and Europe
have virtually no high-technology start-up businesses.''
Now, I think we should all be proceeding from the same page with
respect to the facts. As I understand it, and the reason I have this
graph up here is because this is a factual graph. It shows that the
United States has 175 Nobel laureates in science and technology; Japan
has only five and that may be instructive to us here. The information I
have is that there are almost no high-technology start-up companies.
That is the lifeblood of the American economy. But in Europe and
Japan there are almost no high-technology start-up companies, and it is
because these little companies need running room. They need to be able
to go out before they get a patent and start lining money up.
Early publication, according to these inventors that are here, and I
am quoting one of their letters, early publication will ``kill us.''
They will lose the one thing that they have, the secrecy; the one thing
they can offer, the confidentiality to an investor to get him or her to
invest money in their particular operation.
So unless the gentleman from Virginia [Mr. Goodlatte] has information
to the contrary, my information is that there are almost no high-
technology start-up businesses in Japan and Europe, and that is because
those countries are production heavy. They are not idea heavy, they are
production heavy. We have the innovators, we have the creators of
ideas, and our people need that protection.
Japanese businesses and European businesses, perhaps legitimately,
want to aid their industrial base. And the way they aid their
industrial base is by getting American ideas into the assembly line
quickly and cheaply, and they can do that with early publication.
Now, according to the same analyst, the reason there are not a lot of
high-technology start-ups in Japan is because once a little inventor
comes out with an idea, and it is not protected by patent when he has
to publish early, he is immediately flood patented. That means that
people patent around him by making very incremental changes in his
idea, so that if he varies the slightest to the left or right from this
little alley that has been left for him and his invention, he runs into
Mitsubishi's or Toshiba's patent or some other large company.
There is a reason why we have 175 Nobel laureates in the United
States in science and technology, many of whom, as we have discussed on
the floor, the inventor of the MRI, the inventor of the pacemaker, and
many others who oppose this bill and support the Rohrabacher
substitute, our inventors are afraid of early publication and they do
not want to see it.
So I would support the enlargement of the publication protection that
is manifested in the amendment offered by the gentleman from California
[Mr. Campbell].
Mr. ROHRABACHER. Mr. Chairman, will the gentleman yield?
Mr. HUNTER. I yield to the gentleman from California.
Mr. ROHRABACHER. Mr. Chairman, just a question of the gentleman. He
mentioned patent flooding, a practice that happens in Japan, where the
big guys surround the little guys and beat them down trying to steal
their intellectual property rights.
If we change our laws exactly like Japan's, to make it just like
Japan's, which is harmonizing our law, which is the secret agreement,
and I say secret agreement because I did not know anything about it as
a Member of Congress. I was a Member of Congress at this time. Probably
1 out of 100 Members of Congress knew anything about this agreement
with Japan.
But if we harmonize our law with Japan, will that not mean that these
same Japanese companies can come here and do in the United States to
our little guys what they are doing to their people in Japan?
Mr. HUNTER. Mr. Chairman, reclaiming my time, I would say to the
gentleman that that is absolutely right. And the other thing is there
are big companies that are infringers that, if they had the
opportunity, would flood patent around a small entrepreneur.
The CHAIRMAN. The time of the gentleman from California [Mr. Hunter]
has expired.
(By unanimous consent, Mr. Hunter was allowed to proceed for 1
additional minute.)
Mr. HUNTER. Mr. Chairman, I guess my point is this. We need to get
some running room, some momentum, the opportunity to go out and line up
investors before the patent is issued.
The point that is made by this patent analyst is very good. He said
unless startup businesses can get a strong foothold in the marketplace
before infringers appear so that they can afford to assert their
rights, that means hire lawyers, these rights will become virtually
worthless.
It is very easy to spend a lot of money on lawyers early in the
process. This early publication takes away their running room and their
ability to

[[Page H1729]]

get a foothold in the investment community and ultimately in the
marketplace. That is the problem with early publication.
So I strongly endorse Mr. Campbell's amendment that to some degree
enlarges publication avoidance rights.
Mr. ROHRABACHER. Mr. Chairman, if the gentleman will continue to
yield, one other correction to the statement made by the gentleman from
Virginia. He stated the Reagan administration sought these changes.
The CHAIRMAN. The time of the gentleman from California [Mr. Hunter]
has again expired.
(By unanimous consent, Mr. Hunter was allowed to proceed for 30
additional seconds.)
Mr. HUNTER. Mr. Chairman, I yield to the gentleman if he wants to
complete his statement.
Mr. ROHRABACHER. Mr. Chairman, my office has been in contact with
Clayton Yeutter about these changes that were mandated. I am sorry to
say to the gentleman that the Reagan administration did not support the
changes that are being sought in H.R. 400.
What the gentleman is mistaking is the heads of the Patent Office,
who were probably working for the Reagan administration and other
administrations, those former heads of the Patent Office are now living
on consulting fees and retired from the Government, and they can take
whatever stand that they need to take.
Ms. LOFGREN. Mr. Chairman, I move to strike the requisite number of
words.
As I have listened here to this very vigorous debate, I have felt
some concern, because I think there is some confusion that has been
created, not intentionally I am sure.
I generally, do not like agreements that are made by any
administration when the Congress is not in agreement with them. I was
not a Member of the House of Representatives in 1994, when this
agreement was entered into. I was happily on the Board of Supervisors
of Santa Clara County, but I can recall at the time a very vigorous
discussion in Silicon Valley that I participated in as a public figure
about whether or not innovators and inventors believed that we should
change our system to first to file, as opposed to first to invent. And
it may not be that every part of the country has that kind of vigorous
spirited debate about patent reform but as the gentleman from
California [Mr. Campbell] is aware, that is the sort of thing that is
discussed at home in Santa Clara County, and there were divided
opinions. I think that for the most part people are very satisfied with
H.R. 400 in Silicon Valley.
I wanted to point out that we are not attempting to conform American
patent law to Japan's laws or the European Union. What we are
attempting to do is to make sure our innovators have every protection,
that there is an even playing ground, that innovators are not put at a
disadvantage.
I think if one looks at the nature of patent law, and, actually, I
have had occasion to get a copy of the Japanese patent law and compare
it to United States patent and copyright laws, and almost word for word
patent applicants in Japan are required to do what patent applicants in
the United States and the European Union are required to do.
Mr. Chairman, I submit for the Record a copy of comparison between
the Japanese, the United States, and European Community patent law.

japanese law

(4) The detailed explanation of the invention under
preceeding subsection (iii) shall state the invention, as
provided for in an ordinance of the Ministry of International
Trade and Industry, in a manner sufficiently clear and
complete for the invention to be carried out by a person
having ordinary skill in the art to which the invention
pertains.

u.s. law

Sec. 112 Specification.--The specification shall contain a
written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.

european community

Article 83, Disclosure of the Invention.--The European
patent application must disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a
person skilled in the art.

I believe it is important that we talk about protecting our own
people and our own innovators. There has been a lot of discussion that
somehow the big, bad multinationals are after passage of this bill to
the detriment of America.
Well, the National Venture Capital Association members were here last
week in the Capitol at a meeting, and the venture capitalists, who fund
the startups, the little guys that are in the garages with the great
ideas, they are for H.R. 400. They vigorously oppose the amendment
defeated last week, and they are for small American innovators getting
a better chance to be successful in America.
I saw the gentleman from California's chart about Nobel prize winners
in America vis-a-vis other parts of the world, and it makes me proud
that we have so many great scientists in our country. I think we all
have that pride. We want to make sure that we continue to have the
cutting edge in innovation, that we continue to do better than everyone
else in the world.
Whether we agree on all of these amendments or not, I think as
Americans in this Chamber we all agree we want our country to be
successful. We want to keep that leading edge, because we know that the
high technology, high value-added jobs that are represented by the so-
called big, bad multinationals, companies I thought were good guys,
like Intel, as well as the little bitty guys that are about to be
funded by venture capitalists, and hopefully fulfill their dream to
become a big guy like the Intels, that it is in protecting their
interests vis-a-vis our foreign competitors that our future lies.
Mr. Chairman, at this point we have had a very long discussion on
this matter, and I do not want to unduly prolong it. I would just note
that for those that are concerned about the memorandum entered into in
1994 between Commissioner Lehman and his counterpart in Japan, it was,
unfortunately or not, depending on one's point of view, reached quite
some time ago by the United States, and it is very clear that H.R. 400
is not really what was envisioned by the agreement although as far as I
am aware we have gotten the advantage of some of their promises.
Mr. HYDE. Mr. Chairman, I move to strike the requisite number of
words.
(Mr. HYDE asked and was given permission to revise and extend his
remarks.)
Mr. HYDE. Mr. Chairman, I want to direct my remarks to my dear
friend, the gentleman from California [Mr. Hunter], who is one of the
great consumers of venison in this or any other Congress.
I am proud, too, as the gentlewoman from California [Ms. Lofgren]
stated, of the number of Nobel Prize winners in the United States, but
I just am uncomfortable with that kind of a chart, because what it
seems to be saying is that Occidentals are smarter than Asians. It is
kind of a racial bias to say that some groups, some races, some ethnic
clusters are smarter than other people. I do not know what else we can
draw from that.
I went and looked up all the Nobel Prize winners in chemistry,
physics, medicine, and physiology from 1981 to 1995, and, yes, the
United States had 57 percent of them, but 43 percent were foreigners
from all over the globe. All over the globe.
Of course, it is a Swedish prize, given up in Stockholm by a group of
Occidentals, I guess. I would not claim Asiatic bias, and I know they
know where Japan is, but I would just hesitate saying one group of
people are just smarter than another group.
I know that just because someone is paranoid does not mean people are
not after them. That could be true. But I have detected some awfully
serious Japan bashing here, and I am surprised, because what we are
aiming for in H.R. 400 is what the Patent Commissioners of President
Ford, President Reagan, President Nixon, President Bush all wanted, 18
months publication, which protects the inventor because he has
provisional rights as against the world as though he had a patent and
can enforce it.

{time} 1545

But it forces the foreign inventor who wishes to be protected in our
country to get published, too, that 45 percent of applications from
overseas to be published, too. And in addition, those submariners that
are cruising

[[Page H1730]]

under the bottom have to surface and they cannot seduce other people
into investing money and then finding they are in the middle of a
lawsuit.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. HYDE. I yield to the gentlewoman from California.
Ms. LOFGREN. I just thought as a Swedish American I should speak as
to the Nobel Prize committee and the number of Americans who are
awarded Nobel Prizes.
We know from Silicon Valley that Americans, and as the chairman has
referenced, come in all stripes and from every part of the globe
originally. One can walk into any high-tech company in the Silicon
Valley and it feels like being in the United Nations, but they are all
good Americans. Many of our Nobel Prize winners are originally of Asian
descent, and we are proud of them as well.
Mr. HYDE. I remember Wernher von Braun. He had an accent, but he was
certainly a brilliant scientist. He came over here. A fellow named
Einstein did pretty well.
Mr. HUNTER. Mr. Chairman, will the gentleman yield?
Mr. HYDE. I yield to the gentleman from California.
Mr. HUNTER. I thank my friend for yielding.
Let me just say that the gentleman has made my point. My point is not
that there is any ethnic difference between the Nobel Prize winners
here and the ones in Japan. In fact, the gentleman was chuckling at my
pronunciation of a number of these names because there are not many
Smiths and Joneses on this list. The point is that these people from
all over the globe came to America for a reason. The reason was they
got better property rights protection in terms of intellectual property
than they do in Japan.
Mr. HYDE. They have freedom in this country. Freedom.
Mr. HUNTER. The point is you have a different system. It is the
publication that kills the early innovator, the entrepreneur.
Mr. HYDE. Will the gentleman agree that once publication occurs at 18
months, the average patent is issued at 19 months? Would the gentleman
agree to that?
Mr. HUNTER. I just got a letter from the Patent and Trademark Office.
It says fully 30 percent of the patents that are going to be issued are
not yet issued at 18 months. Will the gentleman agree with that?
Mr. HYDE. What about provisional rights? Does the gentleman agree
that there is protection called provisional rights following
publication? The inventor then says, ``Look, I did this, I invented
this''?
Mr. HUNTER. Here is my answer to the gentleman. My answer is that 2
or 3 percent of royalties, if you can afford the lawyer to get them,
are no substitute for getting 20 to 30 percent of the action, which is
what an inventor gets when he lines up the money, the investors, and he
gets to produce his product himself instead of trying after the fact to
get partial payment from a company that took his invention.
Mr. GOODLATTE. Mr. Chairman, will the gentleman yield?
Mr. HYDE. I yield to the gentleman from Virginia.
The CHAIRMAN. The time of the gentleman from Illinois [Mr. Hyde] has
expired.
(On request of Mr. Goodlatte, and by unanimous consent, Mr. Hyde was
allowed to proceed for 2 additional minutes.)
Mr. GOODLATTE. I thank the chairman for yielding. Mr. Chairman, on
that very point the fact of the matter is those inventors get the
opportunity to get the capital behind their project, their invention,
sooner with publication. Because not only are they published but their
competition is published. So the inventor has the opportunity to say to
that entrepreneur, that person who is going to put the dollars behind
him, ``You can put them behind me with confidence.''
Right now many inventors are complaining to the gentleman from
California [Mr. Rohrabacher] saying they are worried about the gap
between 18 months and whenever they get their patent because they will
not be able to get the capital during that time. The reason they cannot
get the capital during that time is because they do not know, the
entrepreneur does not know that they are the ones who are going to get
it. Under this procedure, they will.
But I want to address, if I may, the gentleman's very, very asserted
message that somehow we are attempting to conform our patent laws to
the Japanese, nothing could be further from the truth, when we take one
concept that is held by many, many other countries and apply it in this
legislation to say that somehow we are now harmonizing our patent law
with the Japanese law. We most certainly are not.
The United States is a first-to-invent nation. Japan is a first to
file. The United States has immediate examination. Japan has deferred
examination. The United States process their patents in 20 months, on
average. Japan takes 8 years. We have protections for universities who
publish early. There is no such protection in Japan. And we have, as
the chairman noted, provisional rights that give additional protection
for those inventors. They do not have those rights in Japan. We are not
following the Japanese here. We are leading the way as we always have
in patent law.
Mr. PEASE. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, last week I learned a lesson at this microphone about
how quickly 5 minutes pass, particularly when one is being questioned.
But today in hopes to give an opportunity for those who still have
brief comments to share as we bring this to a conclusion, I have agreed
to yield to my colleague from California, and if there are others who
would like part of that time, please let me know.
I just wanted to follow up a statement made by the chairman of the
committee, and that deals with a portion of the bill that has not been
discussed but which I think is extremely important as we talk about the
publication at 18 months and the fact that the Patent Office tells us
that currently the pendency, average pendency time for a patent in this
country is 21 months. Obviously, more than the 18.
However, under current law, funds intended for the PTO are being
diverted to other purposes. Last year, $54 million in funding for the
PTO was diverted from the PTO to other programs under the budget, and
for fiscal year 1998 the President's proposed budget will divert $92
million of the user fees to other areas of the budget. If the PTO were
allowed to keep those fees which H.R. 400 does allow, the time to
process patents would be reduced dramatically and this whole discussion
of whether publication at 18 months is problematic or not would be made
moot.
Mr. Chairman, I yield to the gentleman from California.
Mr. CAMPBELL. Mr. Chairman, I want to thank my friend and colleague
from Indiana who is especially gracious given that we have parted
company on some issues of this bill. The reason I asked the gentleman
to yield is I thought it might be useful to talk about my amendment on
which we will have a vote.
The bill as it is now written has an exception. It is a good idea.
The bill now has an exception for somebody who is not likely to be a
submariner and who is small. In that case, you do not have to disclose.
You do not have to publish. It is a good idea.
The way they tell if you are not a submariner is if you have not yet
had two Patent Office actions. It is pretty rough justice, but it will
do. So my amendment says if that is right, if that is how you tell who
is not a submariner, then you should not have to disclose whatever size
you are. And if you want to give an exemption for small applicants,
that is the gentlewoman from Ohio's amendment that will be coming up
next.
So if your idea is to help small business, great, vote for the Kaptur
amendment, and if your idea is that if you have not even had two
actions from the Patent Office, you are not gaming the system, then you
should vote for the Campbell amendment.
I just conclude by noting that that is the very logic in the
exception provided by the bill itself.
Mr. PEASE. Mr. Chairman, reclaiming my time, I do oppose the
amendment offered by my friend from California. I do believe that the
combination of publication with the rights that attach at the time of
publication and the funding that would be provided to the PTO in order
to allow it to advance

[[Page H1731]]

the time that it takes to grant patents outright is the best
combination for protection of all American inventors, large or small.
The CHAIRMAN. The question is on the amendment offered by the
gentleman from California [Mr. Campbell].
The question was taken; and the chairman announced that the noes
appeared to have it.
Mr. CAMPBELL. Mr. Chairman, I demand a recorded vote.
The CHAIRMAN. Pursuant to House Resolution 116, further proceedings
on the amendment offered by the gentleman from California [Mr.
Campbell] will be postponed.
Are there further amendments?

amendment offered by ms. kaptur

Ms. KAPTUR. Mr. Chairman, I offer an amendment.
The Clerk read as follows:

Amendment offered by Ms. Kaptur:
Page 48, insert the following after line 21:
``(C) An application filed by a small business concern
entitled to reduced fees under section 41(h)(1) of this
title, by an individual who is an independent inventor
entitled to reduced fees under such section, or by an
institution of higher education (as defined in section 1202
of the Higher Education Act of 1965) entitled to reduced fees
under such section 41(h)(1) shall not be published until a
patent is issued thereon, except upon the request of
applicant, or in any of the following circumstances:
``(i) In the case of an application under section 111(a)
for a patent for an invention for which the applicant intends
to file or has filed an application for a patent in a foreign
country, the Commissioner may publish, at the discretion of
the Commissioner and by means determined suitable for the
purpose, no more than that data from such application under
section 111(a) which will be made or has been made public in
such foreign country. Such a publication shall be made only
after the date of the publication in such foreign country and
shall be made only if the data is not available, or cannot be
made readily available, in the English language through
commercial services.
``(ii) If the Commissioner determines that a patent
application which is filed after the date of the enactment of
this paragraph--
``(I) has been pending more than 5 years from the effective
filing date of the application,
``(II) has not been previously published by the Patent and
Trademark Office,
``(III) is not under any appellate review by the Board of
Patent Appeals and Interferences,
``(IV) is not under interference proceedings in accordance
with section 135(a),
``(V) is not under any secrecy order pursuant to section
181,
``(VI) is not being diligently pursued by the applicant in
accordance with this title, and
``(VII) is not in abandonment,

the Commissioner shall notify the applicant of such
determination.
``(iii) An applicant which received notice of a
determination described in clause (ii) may, within 30 days of
receiving such notice, petition the Commissioner to review
the determination to verify that subclauses (I) through (VII)
are all applicable to the applicant's application. If the
applicant makes such a petition, the Commissioner shall not
publish the applicant's application before the Commissioner's
review of the petition is completed. If the applicant does
not submit a petition, the Commissioner may publish the
applicant's application no earlier than 90 days after giving
such a notice.
``(iv) If after the date of the enactment of this paragraph
a continuing application has been filed more than 6 months
after the date of the initial filing of an application, the
Commissioner shall notify the applicant under such
application. The Commissioner shall establish a procedure for
an applicant which receives such a notice to demonstrate that
the purpose of the continuing application was for reasons
other than to achieve a delay in the time of publication of
the application. If the Commissioner agrees with such a
demonstration by the applicant, the Commissioner shall not
publish the applicant's application. If the Commissioner does
not agree with such a demonstration by the applicant or if
the applicant does not make an attempt at such a
demonstration within a reasonable period of time as
determined by the Commissioner, the Commissioner shall
publish the applicant's application.
Page 48, line 22, strike ``(C)'' and insert ``(D)''.
Page 49, line 16, strike ``(D)'' and insert ``(E)''.
Page 49, line 17, strike ``(C)'' and insert ``(D)''.
Page 50, line 2, strike ``(C)'' and insert ``(D)''.
Strike title V of the bill and redesignate the succeeding
title, and sections thereof, and references thereto,
accordingly.
Amend the table of contents accordingly.

Ms. KAPTUR (during the reading). Mr. Chairman, I ask unanimous
consent that the amendment be considered as read and printed in the
Record.
The CHAIRMAN. Is there objection to the request of the gentlewoman
from Ohio?
There was no objection.
Ms. KAPTUR. Mr. Chairman, it is obvious that this patent bill has
engendered substantial and necessary debate. That means that there are
some unsolved problems inherent in the basic bill.
One of the most important issues that we wish to bring up for
amendment today has to do with the treatment of small business as
opposed to big business in the base bill. Our amendment would exempt
small business as defined by the Patent Office itself, 500 or fewer
employees, based on the fee schedule that they use to distinguish
between large and small business. It would exempt small business,
universities, and individual independent inventors from having their
patents published prior to when that patent is granted. This gets at
one of the major objections of the opponents to the base bill.
Our amendment also fixes the submarine problem, which I will discuss
in a second, but basically it sets up a process that is more fair to
get at the problem of when a patent has not risen out of the depths of
the review process, and, third, it strikes the reexamination
provisions. Because what we do not want to do is to open up more
litigation for the small inventor that really does not have the deep
pockets of some of those who very much want to receive some of the
benefits in the parts of H.R. 400 that we do like.
So our amendment has three parts to it: It exempts small business,
universities, and individual independent inventors from having their
patents published prior to grant. We do this because in the base bill
the 18-month publication would reveal new ideas to the world technical
community before that inventor had the patent and, frankly, that is an
open invitation to stealing, it is an open invitation to copying, and
it places a much greater burden on that inventor, especially when they
are small, to protect their invention. Our amendment also is proposed
because we want to offer the small inventor some leg to stand on, a
fairer system.
Our amendment is also offered because we want to make sure that
foreign corporations and foreign governments do not have easier access
to American technology as proposed by small inventors, and we want to
protect from this undue litigation that seems to be burdening our
system from one end to the other, and why complicate it more under the
proposed bill?
I might just point out that in the way the H.R. 400 is currently
proposed, if you end up defending your patent, that will not happen in
a court of law. There will not be a jury. There will not be a judge.
You will be in the Patent Office, this new creature, we do not know
what it is going to look like yet, and it is going to take a lot of
money to defend yourself in this new system that is being set up and
this new entity that is being set up.
So our effort is to say, look, OK, for those people who want to play
that game, let them do it, but for the small inventors and the small
businesses and the university community that do not want to get engaged
in that system, give them a level playing field to play on as well.
I might mention that in 1995, the White House Conference on Small
Business adopted a recommendation which specifically recommended to
Congress that patent applications remain unpublished until the patent
is granted. That was the White House Conference on Small Business, a
large group of people that come in here from across the United States.
This was an important enough issue that they put it on the agenda of
the White House Conference on Small Business. They do have legitimate
concerns. We are only asking those who have already started to repair
H.R. 400 to please consider this proposal.
We incorporate in the amendment as well important language to deal
with the submarine patent issue. The amendment adopts the Rohrabacher
language in the substitute that was debated last week, and our
amendment lays out specific exceptions for when a patent can be
published early, perhaps due to continuous delays, perhaps abandonment,
perhaps pending more than 5 years, all of the concerns of the
proponents.
Mr. ROHRABACHER. Mr. Chairman, will the gentlewoman yield?
Ms. KAPTUR. I yield to the gentleman from California.

[[Page H1732]]

Mr. ROHRABACHER. Mr. Chairman, on this particular point, the
antisubmarine patent language in our bill was the strongest language
that we could possibly put into the bill. For 2 years I pleaded with
the other side of this issue, to everyone on the other side, please
give me the strongest language you can possibly give me, I will include
it in the bill just so long as it does not eliminate and end the
guaranteed patent term.
The CHAIRMAN. The time of the gentlewoman from Ohio [Ms. Kaptur] has
expired.
(On request of Mr. Rohrabacher, and by unanimous consent, Ms. Kaptur
was allowed to proceed for 1 additional minute.)
Mr. ROHRABACHER. We pleaded and pleaded. Give us anything that will
satisfy you that we have put the submarine patent issue to bed. We
begged them, please give us that language. But, no, they would not.
They would not touch it with a 10-foot pole because their purpose was
not ending the submarine patent issue.

{time} 1600

We instead, I went to the gentleman from California [Tom Campbell],
distinguished professor, man respected throughout this body for his
legal knowledge, and he finally came up with the strongest patent,
antisubmarine patent language that he could come up with. That is what
was in the bill. We did that because we did not want people to destroy
the fundamental patent system or protections that was a guaranteed 17-
year patent system or patent in the name of getting at submarine
patents. That is like cutting a leg off to get to a hangnail or
destroying freedom of speech for everybody because there is some
pornographer out there printing a pornographic magazine.
No, we have taken care of the submarine patent issue. We have
included that language.
The CHAIRMAN. The time of the gentlewoman from Ohio [Ms. Kaptur] has
expired.
(By unanimous consent, Ms. Kaptur was allowed to proceed for 1
additional minute.)
Ms. KAPTUR. Mr. Chairman, I really appreciate this opportunity
because I know that the folks that have worked on H.R. 400 have tried
very hard, and frankly it is a work in progress, and as we work harder,
it gets better all the time.
I just wanted to summarize and say on this amendment we really have
made a legitimate effort to protect the interests of the small
inventor, the small business, the university inventors, the university
community that is not satisfied with the base bill. We would ask for
colleagues' consideration, and I would just end by saying that on the
reexamination provisions of the base bill, recognize that this is going
to cause a heavier burden on inventors to defend their patents because
it gives the right to anyone in the world to submit a request to
invalidate a U.S. patent at any time in its 17-year life. On this one,
the big money will win as these patent fights go. Please support the
Kaptur amendment. Please defend small business, the small inventor and
the university community where so many of our new ideas come from.
Mr. CONYERS. Mr. Chairman, I rise in opposition to the amendment
offered by the gentlewoman from Ohio [Ms. Kaptur].
Mr. Chairman, first of all, I would like to establish my credentials
of defending small businessmen and working people as much as anybody
that is on this floor at this moment. That being said, I want to point
out that this is not in the interests of small business. So we have a
little bit of a definitional problem as we approach the Kaptur
amendment. That is that we both support working people and small
businessmen except one thinks that this amendment will help small
businessmen, and myself thinks that it will not help small businessmen,
and I am going to try to explain for all those in this body that want
to help small businessmen why the Kaptur amendment is not good, it is
bad. It is bad for this first reason:
One, what she has cleverly put into this, or somebody, from lines 6
to 11 is to bring back the current law that we are changing. The bill
currently on the floor helps small businessmen. This changes it back
namely by saying that of the Higher Education Act entitled to reduce
fees from such section shall not be published until a patent is issued
thereon except upon the request of the applicant. This just went back
into the bill that we voted on last week and lifted up this current law
language.
This allows submarining. Sub- marining, now known to everybody, is
bad. We do not want bad stuff in the base bill. This would allow
submarining and those who would indulge in that, and they are not all
big businessmen. The businessman on the cover, the picture of the
businessman who was the No. 1 submariner in the country on the Wall
Street Journal, was not representing a multinational corporation. He
was a small businessman.
Point No. 2: Why do we have an amendment exempting institutions who
do not wish to be exempted? Why? In whose great wisdom, not on the
committee, have we decided that universities need to be exempted? Who
is asking? The answer: Nobody. But it is thought to be a pretty good
deal.
It is not a good deal, but not only is it not a good deal, it is not
desired.
So for those reasons, the three that I mentioned, I respectfully urge
a very strong and overwhelming rejection of the amendment of my good
friend from Ohio's amendment.
Mr. COBLE. Mr. Chairman, I move to strike the last word.
Mr. Chairman, the gentleman from the Roanoke Valley said it earlier
about publication. Some people have made publication the devil. Our
Constitution provides the grant of a monopoly for a limited time in
exchange for sharing one's secret with the public. That simplifies a
definition of the patent law. Today that constitutional exchange is
being circumvented by whom? By patent submariners.
Now here we go again. The gentlewoman from Ohio [Ms. Kaptur] has
reincarnated Mr. Rohrabacher's failed attempt to allow abuses of the
patent system. This was defeated last Thursday by the House, and I
again thank each of my colleagues who stood tall with us, and it ought
to be defeated again. This reminds me of the Cary Grant movie, ``The
Pink Submarine.'' This is the same submarine, my friends, with a new
coat of paint. This amendment should really be called an invitation.
My colleagues all remember Mr. Lemelson, our patent submariner, our
multimillionaire patent submariner. It reads something like this.
``Dear Mr. Lemelson,'' or any other prospective patent submariner,
``You are invited to purposefully delay your application at the Patent
and Trademark Office for your own benefit to the detriment of the
American consumer.'' Just as the gentleman from Michigan said, this is
no friend to small business. ``Don't worry about the phony escape
clause regarding dilatory tactics. No one can prove it. Time? Oh, as
long as you want, perhaps 25, 30, 40 years. Place? Unknown. After all,
your application is a secret so that no one will have the benefit of
avoiding duplicating your efforts because you can successfully hide
from them. You are submarining. You are laying low in the bushes. You
are laying low and playing possum,'' as I said last week. ``Date. The
date is up to you. You show up when you want to show up. P.S., please
pass this invitation on to a friend.''
This license to allow professional litigators to clog our courts and
stifle American innovators with expensive lawsuits that can end in
bankruptcy for those who actually hire American workers and invest in
the economy cuts into the heart of the constitutional charge to
Congress to offer a limited monopoly to an inventor in exchange for
sharing secrets. That is right. Publication is a necessary ingredient
of the process.
The gentleman from California [Mr. Rohrabacher] the gentlewoman from
Ohio [Ms. Kaptur], they do not seem to believe that submarining is a
problem. That is why this amendment contains a loophole big enough to
drive a submarine through. But let me quote from the Wall Street
Journal from April 9. Many of my colleagues read it. It describes a new
class of patent lawyers out to make a business in the submarine
industry. ``The clear winners,'' writes the Journal, ``so far are the
lawyers. Mr. Lemelson also employees a small army of them. One of Mr.
Lemelson's lawyers pretty much

[[Page H1733]]

thanks himself for that, noting an old joke. `One lawyer in town, you
are broke.' He boasts, `Two lawyers in town, you are rich.' '' The
article goes on to say that a new breed of intellectual property
lawyers has emerged, too.
Many seem to be inspired by Mr. Lemelson's attorney, who pioneered
the use of contingency fees in patent cases and whose work for Mr.
Lemelson alone has brought him more than $150 million in fees. You
think consumers win with this sort of scenario?
The lawyer's success: He lives in a 15,000 square foot house near
Aspen, CO, has made the field of submarining a very hot area. Here the
cover of the American Lawyer Magazine, a picture of Mr. Lemelson's
lawyer basking in the riches, 150 million bucks that belongs to
American consumers.
You bet I am worked up about this. This is indeed a grave problem,
and it is growing. This amendment, and I will call it Rohrabacher 2, or
Kaptur 1, or the sequel to Rohrabacher, again works to protect this
practice which stifles American investment and innovation.
The CHAIRMAN. The time of the gentleman from North Carolina [Mr.
Coble] has expired.
(By unanimous consent, Mr. Coble was allowed to proceed for 2
additional minutes.)
Mr. COBLE. I feel obliged to get this into the record before 5
o'clock, Mr. Chairman. I have worked on this now for almost 5 months.
When I retire for my evening rest, I am thinking of patents. At early
morning hours, when I dream, I dream of patents. When the cock crows
the next morning, I awaken, guess to what? The thoughts of patents.
And for the first time since last week, I learned of a secret
Japanese agreement. Oh, yes, there is a secret agreement out. The
Japanese are going to bash us. Folks, our better argument, the
gentlewoman from California said it last week, the gentleman from
Illinois, the chairman of the committee, said it last week, I think the
gentleman from Massachusetts [Mr. Frank], perhaps the gentleman from
Michigan [Mr. Conyers] did as well, a better argument could be made
that your rank and file Japanese inventor, they want to keep it just
the way it is because, under the present scenario, they have the luxury
of reviewing publication well in advance over there and then they can
play possum and lay low because the time runs for a delayed publication
over here.
It would be my thinking they are not happy at all with H.R. 400. But
I want my colleagues to dispel this thought about a secret Japanese
agreement because there is simply no truth to it.
I thank everyone who has taken part in this, Mr. Chairman, and I
thank you. And if I become too emotional, I apologize. But I think I
would be remiss if I did not feel strongly about it, because we have
plowed the field time and again and it is time to bring in the harvest
and head for the barn.
Ms. LOFGREN. Mr. Chairman, I move to strike the requisite number of
words.
I have struggled trying to find some way that I can support the
amendment of my colleague, the gentlewoman from Ohio [Ms. Kaptur]. My
colleague asked me to review it, and I regret that I cannot support it.
I think many of us are striving to reach comity and to work in a
bipartisan manner, but for this amendment it just cannot happen for me
and I think that is true for many of us who have worked so long on this
bill; and the main reason why is that, as others have indicated, it
continues to permit submarine patents.
The manager's amendment went a long way toward addressing the issue,
whether anyone believes it is correct or not, addressing even the
perception or the anxiety about small inventors, who wanted to not have
a published application, who are uneasy about the change and updating
of our law for the information age.
And I think that that measure is sound and passed by voice vote last
week. However, to provide that an application could never be published
or might be published for many, many years later, as could be done with
the amendment of the gentlewoman from Ohio [Ms. Kaptur] and is
currently done under our present system, is not acceptable.
I would point out one thing: I know this was not intended, I am sure,
by the amendment, but you could, under the amendment, have a foreign
inventor come to the United States, file an application for a patent in
the United States only, and end up submarining American inventors. And
I do not think that is a result that is good for our country.
I want to mention a particular case, because so much has been said
about countries in Asia. But the most notorious submarine patentor that
I have been able to find is a Swedish individual, an alleged inventor,
Olaf Soderblom, who filed for a United States patent in 1968 and it was
not issued until 1981, 13 years later.

{time} 1615

The very early years of the patent pending application were spent by
Mr. Soderblom fighting various battles with other independent U.S.
patent applicants over who was the first inventor. However, a lot of
the 13 years were used by Mr. Soderblom's attorney to manipulate claims
to postpone any action on them.
Mr. Soderblom never participated in or contributed to the public IEEE
standards regarding his token ring technologies that he alleged as his
idea. As he waited with his application just below the surface, the
rest of the world moved forward and the token ring technologies that
were really never contemplated by Mr. Soderblom at the time of his
filing were invented; and fortunately for him or unfortunately for
America, Mr. Soderblom did get some very excellent American patent
attorneys.
Press accounts indicate that he was paid over $100 million for his
patent, something he never really designed, never used, never
participated in. And this money came directly from United States
companies and was deposited into his bank in the Netherlands,
contributing to our adverse balance of trade.
Mr. Soderblom has never resided in the United States. He has rarely
visited the United States. He just came and took our money.
Unfortunately, the amendment before us would allow that to occur again.
I also need to discuss the issue of swooping, because it has been
discussed several times by several speakers.
Mr. Chairman, one would think by listening to the debate here that
the small people, and I do not mean small in stature, but people who
are not rich, people who are just starting out, are at risk under H.R.
400. The world, as my mother and father used to tell me, is not always
fair. The truth is that one's ability to protect one's patent from
swoopers at the time of patent issuance or at the time of publication,
when rights attach under H.R. 400, is only as good as one's ability to
step forward, get one's lawyers, stand up for oneself, and protect
oneself.
Now, fortunately, we have contingent fee operations in America, and
there are plenty of attorneys who are willing to protect a good
American inventor against an infringing Japanese multinational or
Swedish multinational or whatever. But the truth is if one is not
willing to fight for one's patent, one does not have any rights that
will not be trampled on. That is true under the current system of
publication at patent issuance. It is equally true under the proposed
protection from the time of publication, 18 months out. I think it is
important to say that because nothing changes in this regard as the
result of H.R. 400.
The CHAIRMAN. The time of the gentlewoman from California [Ms.
Lofgren] has expired.
(On request of Ms. Kaptur, and by unanimous consent, Ms. Lofgren was
allowed to proceed for 2 additional minutes.)
Ms. KAPTUR. Mr. Chairman, will the gentlewoman yield?
Ms. LOFGREN. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I wanted to thank the gentlewoman for her
comments. Our intention is to close any loopholes that may exist on
submarine patenting, even though that issue is a rather curious one to
be raised by the committee, because in the last 20 years between 1971
and 1993, out of 2.3 million patent applications, only 627 have been
classified as submarine patents; and at least a third of those were
U.S. Government military secrets. So I find it interesting that the
gentlewoman spent a great deal of her time talking about submarine
patents.

[[Page H1734]]

Our intention is to close any loopholes that might be there, and that
is why the language is in our amendment.
Let me also say that our concern is profoundly small inventors, small
business, and university-based inventors. If the proposal in the base
bill that early publication is so good for the small inventor and small
business, why have those inventors and businesses not published before
the grant of the patent up to now? By current law they have that right.
So our intention is to protect the small inventor. Please help us do
that.
Ms. LOFGREN. Mr. Chairman, reclaiming my time, under current law, if
one publishes one's patent application in America before the patent is
issued, one does not have any protection. Under H.R. 400, provisional
rights attach at the time of publication. So one is protected from the
time of publication. Under current American law, it would be foolish
indeed to put oneself out otherwise.
Secondarily, I understand, and I believe, that the gentlewoman does
not want to do damage to her country any more than I do. That is not
what is at issue, as we both recognize. It is a difference of opinion
over how to proceed, how best to protect our country's inventors.
It is my judgment that the hundreds of millions of dollars spent by
U.S. companies, and in some cases individuals, to submariners is indeed
important. The cited number of 200 does not matter as much as the
hundreds of millions of dollars.
Mr. HYDE. Mr. Chairman, I move to strike the requisite number of
words, and I yield to the gentleman from Michigan [Mr. Conyers].
Mr. CONYERS. Mr. Chairman, I thank the gentleman from Illinois [Mr.
Hyde] for yielding.
If Members feel that they may have heard this debate before
somewhere, they are absolutely correct. This is precisely what we spent
several hours doing on the Rohrabacher amendment last week. We did it
upsidedown, backward, there were short speeches, long speeches,
ferocious speeches, timid speeches, but it was the Rohrabacher
amendment. We are now back into it again. We are now rehashing the
Rohrabacher amendment.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. CONYERS. I will not yield, Mr. Chairman.
Ms. KAPTUR. Mr. Chairman, this is the Kaptur amendment, it is not the
Rohrabacher amendment.
Mr. HYDE. Mr. Chairman, I have the time.
The CHAIRMAN. The gentleman from Illinois [Mr. Hyde] has the time.
Mr. CONYERS. Mr. Chairman, I will not lecture my distinguished
colleague from Ohio on the rules of the floor. Please do not interrupt
me when the chairman of the committee has yielded time.
Ms. KAPTUR. Mr. Chairman, I would ask the chairman to please yield to
me.
The CHAIRMAN. The gentleman from Illinois has the time, and he has
yielded to the gentleman from Michigan. The gentleman from Michigan is
recognized.
Mr. CONYERS. Mr. Chairman, that is the second time the gentlewoman
has done that.
Now, this is a rehash. I emphasize, this is the same old stuff. Go
back and read the Record.

Point of Order

Ms. KAPTUR. Point of order, Mr. Speaker.
The CHAIRMAN. The gentlewoman will state her point of order.
Ms. KAPTUR. Mr. Chairman, the gentleman in the well is referencing
this amendment under the name of another Member. This is an amendment
offered by the gentlewoman from Ohio [Ms. Kaptur].
The CHAIRMAN. The gentlewoman may clarify that point in debate but
has not stated a point of order.
The gentleman from Michigan [Mr. Conyers] may proceed.
Mr. CONYERS. Mr. Chairman, let me say that the subject of this
discussion has been dealt with already under whoever's name we care to
put it. It is not new information. It is the Record of last week that
is spread with this.
As my subcommittee chairman has said, the gentleman from North
Carolina [Mr. Coble], this brings back playing possum; right? This
brings back submarining; right?
Oh, well, if it does, how does that happen? Because in the
gentlewoman's amendment, the Kaptur amendment, at lines 8, 9, and 10:
shall not be published until a patent is issued thereon, except upon
the request of the applicant.
This now allows small business and universities to indulge in
submarining, if they choose; it exempts publication, and that takes us
back to where we came in. That is what the new base bill of the
committee, after several years' doing, is all about.
Mr. Chairman, I would say to my colleagues, please, we do not need to
be going back into this. We need to stop submarining, and this is in
the interest of small businessmen.
Final point, and I will yield my time back to the Chairman. If the
universities needed this, they would have asked us. We have had
innumerable hearings, and not one university witness has ever said we
need the Kaptur amendment or any language like it. For those reasons I
humbly approach the membership to ask them to reject the amendment. I
thank the gentleman for yielding to me.
Mr. HYDE. Mr. Chairman, I thank the gentleman. I would just like to
point out to the gentlewoman from Ohio [Ms. Kaptur], a fine Member of
this House, that there is form and there is substance. The form is
certainly the Kaptur amendment. The substance, however, in my
interpretation, as I read it, is Rohrabacher.
Why do I say that? Because under the gentlewoman's amendment,
publication of the pending application could occur only if the
application has been pending for more than 5 years. Boy, does that
protect the submariner. Five years. That is a lifetime in the computer
industry, in the biotechnical industry, in the pharmaceutical industry.
Five years one can lurk underground, under the surface of the water.
And there are other conditions which echo the Rohrabacher amendment,
which we debated last week.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. HYDE. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I thank the gentleman for yielding, merely
to point out that the reviewers of this, the Congressional Research
Service, all of the other groups, fundamentally said that the base bill
and our bill, that amendment, were equally good on the submarining
issue. The substance of our amendment, which is the small business
provision, my colleague will not talk about doing this debate. My
colleague is trying to obfuscate the most important part of this
amendment. Very clever, Mr. Speaker.
Mr. HUNTER. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, I rise to support the Kaptur amendment. A couple of
points have been made that I think need to be answered in this debate
on this particular amendment. First, publication, the driving theme of
the proponents of the bill is that small inventors need them and need
their language and need H.R. 400. Whether they like it or not, this is
going to help them.
Once again the gentleman from Virginia [Mr. Goodlatte] pointed out
that he thinks publication is going to help small innovators, because
once they advertise this creation to the world, money will swoop in,
money will come from the four corners of the globe and they will be
able to finance their invention with that money.
Now, the point is, if somebody wants to publish their invention, they
can do it. They can do it under present law. There is a provision under
present law so inventors can go out and publicize if they want to.
Mr. GOODLATTE. Mr. Chairman, will the gentleman yield?
Mr. HUNTER. I yield to the gentleman from Virginia.
Mr. GOODLATTE. Mr. Chairman, the point about publication is it is not
just the choice of the individual inventor but, rather, the publication
of everyone's patent applications. If no one else has published, then
the entrepreneur has the assurance that that one being published is the
one they can put their money behind. If they do not know, if everybody
else has a choice of publishing or not, we are back to the same old
submarining, gaming of the system.
Mr. HUNTER. Mr. Chairman, reclaiming my time, let me just say that
the gentleman's argument is naive. If one goes into a high-technology
company today and wants to view some of

[[Page H1735]]

their technology for possible financing, one has to sign a stack of
nondisclosure agreements.
Mr. GOODLATTE. Mr. Chairman, if the gentleman will continue to yield,
just briefly, to say that that is because they do not have the
protection of the U.S. patent system. Publication gives them the
provisional right to protection that they do not have when they sign
that stack of papers.

{time} 1630

Mr. HUNTER. Mr. Chairman, let us walk through what the gentleman just
said. He said these people are protected once they publish. They are
not protected, and I will tell the gentleman why. To be able to sue for
royalties, and that is not 20 or 30 percent of the action, but if
somebody else publicizes what they have, they have to show that their
invention, that the invention that came out and was utilized by
somebody else, was substantially identical to their initial
application.
The facts are that when inventors go out and make an initial
application, that initial application is often much broader than what
is finally patented. So if they make it too broad, if they make the
application much broader than the final patent that is awarded and they
get that final patent, they cannot come in and sue.
The second thing is that they have to come in and show that they
actually had notice of what that person was doing, of that publication.
When you send out patent ideas, these ideas that are being published,
on the Internet, how are you going to prove that the guy had actual
knowledge of what you had?
Last, the whole point that has been made by all these small inventors
is this: To sue and get a part of the action, even if it is a 2- or 3-
percent royalty, you have to have horsepower. That means you have to
have money. If you have not had some running room, if you have not had
the chance while your patent was secret to go out there and line that
money up, you are never going to be able to do it. That is a fact of
life. That is why these inventors hold this stuff tight to their
chests. That is why they have not come on H.R. 400.
My good friend, the gentleman from Illinois [Mr. Hyde], my fellow
consumer of venison, posed this debate as something, as a Japan-bashing
thing, where we are lining up the sons of the Mayflower versus the
people of Japanese ancestry.
I would just say to my friend, I am looking at this list of our Nobel
laureates, like Franco Modigliano and many others. This is a country
where people of every ethnic origin have come to America, used the
protection of the patent system to come up with an idea. My friend, the
gentleman from Illinois, almost deterred me from using my poster again.
I wonder why it is OK for the gentleman from Virginia to talk about
Japan and Europe and why we should look at some of their ideas, but if
somebody disagrees with him it is Japan bashing. I still think this
poster is instructive.
Japan is production heavy. They specialize in production. They need
to get creative ideas into the assembly line. That is why they made the
agreement with our patent examiner to get our patents published 20
years after application, rather than 17 years after the patent was
actually issued. But once again, the small inventors, the Nobel
laureates, the guys who invented the MRI, the guys who invented the
pacemaker, those guys are not submariners.
The CHAIRMAN. The time of the gentleman from California [Mr. Hunter]
has expired.
(By unanimous consent, Mr. Hunter was allowed to proceed for 30
additional seconds.)
Mr. HUNTER. Mr. Chairman, I think the question everybody has to ask
the committee is this: You have 2.3 million patents granted since 1973.
According to the statistics that both sides have cited, there have been
670 submariners in that period of time, and about 30 percent of those
were military secrets. That takes us down to less than 400 submariners.
We have crafted a piece of legislation that will rip away privacy for
millions of inventors so we can make one guy on the face of a magazine,
we can take care of that problem.
The CHAIRMAN. The time of the gentleman from California [Mr. Hunter]
has again expired.
(By unanimous consent, Mr. Hunter was allowed to proceed for 30
additional seconds.)
Mr. HUNTER. Mr. Chairman, let me just close by saying that the same
language that was in the Rohrabacher bill is in the Kaptur bill. CRS
has said that both sides, both types of language, would likely end the
practice of submarine patents.
Mr. ROHRABACHER. Mr. Chairman, I move to strike the requisite number
of words.
Mr. Chairman, the reason I demonstrably stated and repeatedly stated
at the end of the debate on the last amendment, that I had begged the
other side for language to end the submarine patent problem, if Members
remember, I said over and over again, I for 2 years pleaded with the
other side of this issue, give me language that will end the submarine
patent problem and I will put it into my bill, just so long as we do
not use this problem as an excuse to destroy the fundamental protection
of our patent system which has been the guaranteed patent term.
I got nothing in return. I got no answer. To everyone I met I said,
please give me the language.
The gentleman from Virginia [Mr. Boucher] negotiated, hopefully in
good faith, for over a year trying to find language that was
acceptable. There was nothing acceptable to the other side except
elimination of the guaranteed patent term.
Finally the gentleman from California, Tom Campbell came forward and
said, let us work together and find some really tough language on the
submarine patent problem and we will put it into your bill, and no one
will be able to complain.
In fact, the Congressional Research Service looked at it and said,
yes, the language you put in there is likely to end the submarine
patent practice forever, just like H.R. 400 will. The difference
between our approaches is, of course, we are not amputating the
patient's leg in order to get to the hangnail. We are not destroying
freedom of speech in the name of stopping a few pornographers.
If someone was up here today arguing that we have to end the first
amendment to the Constitution, we have to change the Bill of Rights,
because there are going to be some people that take advantage of
freedom of speech, and our bill is going to have the government check
all the newspapers and everything that is published beforehand to take
care of these submarine free speechers, the fact is, you would say, you
are crazy. You are not going to touch the Constitution in order to get
the bad guys. We can find out ways of regulating them and controlling
the problem.
No; instead, the other side has demanded we obliterate the
protections that we have had in place since the adoption of the U.S.
Constitution in order to get at the submarine patent problem. I contend
that this is a fig leaf that is being used to cover the implementation
of an agreement that we made with Japan 4 years ago to harmonize our
law with the Japanese law. That is why there was no compromise
language. That is why there was nothing they could come back to me and
say that, no, we do not have to have publication to solve the submarine
patent problem, we can do something else here. I was open to all those
other alternatives.
No, because the purpose of the act is to put publication in our law,
and the purpose of putting publication in our law is to implement a
secret agreement, it was secret to me, and I was a Member of Congress,
with the Japanese to harmonize our system.
Why do we want to harmonize our law with Japanese law? In Japan,
which we were talking about here before, they have flooded, and that
means if the little guy invents something the big guys just make little
changes in what his patent is all about, because now they know all the
details because it has been published, and they surround the little guy
and they beat the little guy into submission and take away his rights.
That is why nobody ever invents anything in Japan.
We are inviting these very same economic gangsters, economic shoguns,
economic godfathers, you name them, whatever they are, the economic
elite

[[Page H1736]]

of Japan and China and all the rest of the countries who brutalize
their own people because their people do not have legal protections, we
are inviting those same elitists to come over here and brutalize our
people because we are stripping away their protection in the name of
submarine patents.
Let me note that all the examples we have heard about submarine
patents today have been examples from the 1960's and 1970's. The Patent
Office in the early 1970's put in place, or late 1970's, excuse me, a
system called the PALMS system. It has already taken care of the
submarine patent problem. None of the examples they have given have
taken place since the PALMS system was put into place.
Furthermore, our legislation, which we have been trying to offer,
rather than destroying the rights of the American people, will,
according to the Congressional Research Service, end the practice of
submarine patenting.
Please, Mr. Chairman, I urge my colleagues, the little guy, the
Roscoe Bartletts of this country, the small businessmen, our
universities and research departments are begging us, please, do not
publish the secret information that they have been developing before
they get their patent. They know it is going to be stolen. They know
they will not have the wherewithal to sue Mitsubishi Corp. or the
People's Liberation Army in China that would steal their technologies.
Please oppose H.R. 400 and support the Kaptur amendment.
Mr. GOODLATTE. Mr. Chairman, I move to strike the requisite number of
words, and I yield to the gentleman from Illinois [Mr. Hyde], the
chairman of the committee.
(Mr. HYDE asked and was given permission to revise and extend his
remarks.)
Mr. HYDE. Mr. Chairman, I think this could be boiled down very
simply. We have a mind-set that thinks publication is an open door to
thievery and to stealing our secrets.
There is another philosophy, it is in our Constitution. It says that
if you want to get a patent, that gives you exclusive rights to your
invention for a period of years, and then the tradeoff for that
exclusivity is disclosure to the world, so the world may benefit from
this wonderful insight that you have now patented. That is the
tradeoff.
Publication is the disclosure so the world may benefit, but
meanwhile, you have a period of years for which you may exploit fully
your rights to the patent. That is the tradeoff. Publication is
protection, because once your idea is published it is notice to the
world you were there first; you have been there, you have done that,
and it is yours. If anybody wishes to infringe on your rights, which
are called provisional rights, not a patent yet but equivalent to a
patent, they are subject to damages. So you are protected.
Meanwhile, Mr. Chairman, the foreign inventor, and 45 percent of the
applications in our country, where we produce all these Nobel
laureates, most of whom have an accent, not all, most, we then publish
in our country, as they publish over there, so we all have that so-
called level playing field.
But the most important thing I want to say, Mr. Chairman, is that we
have seen that CRS report waved around as often as we have heard about
hangnails or toenails. I think this argument needs a pedicure, I would
say to my friend.
By the way, speaking of the amendment offered by the gentlewoman from
Ohio [Ms. Kaptur], there is an old Italian saying, you may dress the
shepherd in silk, he will still smell of the goat.
Mr. Chairman, the CRS report which the gentleman so proudly has waved
I would point out has been critiqued by the American Intellectual
Property Law Association, which represents nearly 10,000 international
intellectual property lawyers, and they say, for reasons about which we
can only speculate, H.R. 811, the bill of the gentleman from California
[Mr. Rohrabacher], as reprised by the gentlewoman from Ohio,
considerably strengthens the abuse potential of a submariner wishing to
keep a patent application secret.
Under one section of H.R. 811, publication of a pending application
could only occur if the application has been pending for more than 5
years. We can grow an awful lot of submarines under the water in 5
years.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. GOODLATTE. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I thank the gentleman for yielding to me. I
am glad it is not goat skin, based on what has gone on here recently.
Mr. Chairman, I just wanted to say that the gentleman's explanation
of how the patent system works today was just excellent.
Mr. HYDE. I thank the gentlewoman.
Ms. KAPTUR. What I wanted to ask, though, is if the proposal in H.R.
400 that the gentleman is promoting is going to be useful, currently if
publication is going to be such a good idea, early publication for
small inventors and small business, why have they not published under
the current law, which they can do if they wish, but they do not do it?
Mr. HYDE. I would suggest to my friend that if she does not want it
ever published, she wants to keep it a secret in perpetuity, do not ask
for a patent. Keep it as a trade secret and get protected under the
trade secrecy laws.
But if she wants a patent it has to be published. She is protected
while it is published, and then the patent protects her, and then the
world may benefit from her wonderful invention.
Ms. KAPTUR. Mr. Chairman, if the gentleman will continue to yield,
you are protected until such time as that patent is issued, and
certainly with the courts and system we have in place, after that
patent is granted. What the committee is seeking to do, and why we in
this amendment try to protect small business and small inventors, is
lessen the time that they have that protection.
Mr. HYDE. The gentlewoman protects the submariner. She really
protects and enhances the submariner.
Ms. KAPTUR. If the gentleman reads correctly what our amendment does,
that is only one of five different ways in which we try to get at the
submarine problem. I think the gentleman is incorrect.

{time} 1645

Mr. HYDE. Mr. Chairman, that 5 years leaps out from the gentlewoman's
amendment.
Mr. FRANK of Massachusetts. Mr. Chairman, I move to strike the
requisite number of words.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentlewoman from
California.
Ms. LOFGREN. Mr. Chairman, I heard a statement just a few minutes
ago, and I think it needs to be addressed, that there is nothing
currently going on by way of the submarine patent issue, that that
problem was already solved, and the like.
I had to mention, I did mention last week a letter received by
Charles Trimble, President and CEO of Trimble Navigation, one of the
premier firms in Silicon Valley. I just wanted to quote a couple of the
things he said in his letter.
He said, From our view inside the Global Positioning System Industry,
we see no harm to our industry from H.R. 400 and I support this
legislation. As an inventor, I obtained basic patents, not to make
money but to ensure that no one else would stop me from using my own
patent or innovation in commercializing the GPS technology.
Another reason for obtaining patents is to facilitate the licensing
of technology to a larger company. The real issue is not only inventing
a technology but reducing it to practice, generating a commercial
market and creating a legitimate business activity. This activity is a
critical backbone of our economy.
He goes on to say that keeping patents unpublished or submarining
until there is an emerging commercial industry that can be held hostage
to costly and unnecessary lawsuits is a serious competitive threat to
U.S. industries. And then, in fact, and this was dated March 11, 1997,
Our industry is currently, he says, diverting significant amounts of
money to combat a submarine patent that will most likely be proven not
to read on our technology. This is a very sensitive issue.
He is saying that this is not a large company versus a small company
issue. This is an issue about who can get hot-shot patent lawyers to
continue to press for money that they do not deserve, did not earn and
are extorting.
Mr. FRANK of Massachusetts. Mr. Chairman, let me say, I am about to

[[Page H1737]]

yield to the senior ranking member, but I did want to alert Members
that the vote is at 5 and the test on this for all Members will be
given tomorrow morning.
Mr. CONYERS. Mr. Chairman, will the gentleman yield?
Mr. FRANK of Massachusetts. I yield to the gentleman from Michigan.
Mr. CONYERS. Mr. Chairman, to the gentleman from California [Mr.
Rohrabacher], our distinguished colleague, it has just been discovered
that there is no secret conspiracy.
Mr. CAMPBELL. Mr. Chairman, I move to strike the requisite number of
words.
Mr. Chairman, I rise in order to allow the author of this amendment
the chance to close. I wish to take 30 seconds before yielding the
remaining amount of my time to observe that our distinguished chairman
of the full committee did omit the other provision of Ms. Kaptur's
amendment. It was not simply the 5-year provision. There is also the
provision that I drafted which requires publication for anyone who
seeks to continue the patent application process, which is exactly the
submariner.
Ms. KAPTUR. Mr. Chairman, will the gentleman yield?
Mr. CAMPBELL. I yield to the gentlewoman from Ohio.
Ms. KAPTUR. Mr. Chairman, I thank the gentleman. I wish to ask the
Members to please read the substance of our amendment. The sidetracks
that this debate has gone down this afternoon have amazed even me.
I wanted to state for the Record that there are many university
scholars, inventors, lists long that have written us in support of our
legislation against the base bill and, of course, many of them are in a
precarious position because those universities receive funds from some
of the very same interests that are promoting H.R. 400 and in many ways
not being sensitive to the smaller inventors, the smaller businesses,
those individual inventors that we wish to protect and give fair
standing to as this measure moves forward.
Our amendment essentially would attempt to protect those inventors'
patents prior to issuance. We do not want any invitation to copy, which
H.R. 400 certainly promotes, because it says that within 18 months,
that patent would be published even before it is granted.
Right now an individual is protected until the time that the patent
is issued, until it is granted. So it is a substantial collapsing of
the protection time for an individual inventor.
I find it so interesting to listen to the proponents say, well, in
our system you can litigate. That is easy for a big corporation. IBM,
Xerox, Ford Motor, why they are some of the best friends of this
country in the jobs that they provide, and so forth. But the point is
they are not the only inventors around. There are a lot of small
workshops. There are a lot of professors that are out there filing.
There are a lot of independent inventors who do not have the kind of
financial wherewithal to function in the system that is being created
here.
It is no different than the battle between the megabanks and the
credit unions. It is no different than the battles that we have between
the Committee on Commerce and the Committee on Small Business. It is
the very same issue for small inventors, for independent inventors, and
those who are not independent, who have other sources of finance to
back up whatever it is they are trying to protect and advance through
that Patent Office.
So our amendment essentially exempts small business under the
definition of the Patent Office. It says, hey, look, give them equal
footing. Do not make them play under this system, which is very
difficult for the small inventor to cough up the cash for. It does not
subject them to the kind of litigation that is likely to be involved
here where it is more likely that their ideas and their patent will be
infringed upon through the processes that are being promoted in the
base bill.
Our measure also would try to acknowledge that the base bill does not
distinguish between large and small inventors. So it really is an
equity question for us.
We would ask Members to support the Kaptur amendment to create a
level playing field, support the small business person. Support the
small inventor. Support your colleges and universities. Support the
little guy. Do the right thing. Make this bill better.
I know the chairman of the full committee wants to do that. I know
the ranking member wants to do that. The Kaptur amendment accomplishes
that.
The CHAIRMAN. The question is on the amendment offered by the
gentlewoman from Ohio [Ms. Kaptur].
The question was taken; and the Chairman announced that the noes
appeared to have it.
Ms. KAPTUR. Mr. Chairman, I demand a recorded vote.
The CHAIRMAN. Pursuant to House Resolution 116, further proceedings
on the amendment offered by the gentlewoman from Ohio [Ms. Kaptur] will
be postponed.
Are there further amendments?

amendment offered by mr. hunter

Mr. HUNTER. Mr. Chairman, I offer an amendment.
The Clerk read as follows:

Amendment offered by Mr. Hunter:
Page 4, strike line 1 and all that follows through page 26,
line 9 and insert the following:

TITLE I--PATENT AND TRADEMARK SYSTEM REVISIONS

SEC. 101. SECURE PATENT EXAMINATION.

Section 3 of title 35, United States Code, is amended by
adding at the end the following:
``(f) All examination and search duties for the grant of
United States letters patent are sovereign functions which
shall be performed within the United States by United States
citizens who are employees of the United States
Government.''.

SEC. 102. PATENT AND TRADEMARK EXAMINER TRAINING.

(a) In General.--Chapter 1 of title 35, United States Code,
is amended by adding at the end the following new section:

``Sec. 15. Patent and trademark examiner training

In General.--All patent examiners and trademark examiners
shall spend at least 5 percent of their duty time per annum
in training to maintain and develop the legal and
technological skills useful for patent or trademark
examination, as the case may be.
``(b) Trainers of Examiners.--The Patent and Trademark
Office shall develop an incentive program to retain as
employees patent examiners and trademark examiners of the
primary examiner grade or higher who are eligible for
retirement, for the sole purpose of training patent examiners
and trademark examiners who have not achieved the grade of
primary examiner.''.
(b) Clerical Amendment.--The table of contents for chapter
1 of title 35, United States Code, is amended by adding at
the end the following:

``15. Patent and trademark examiner training.''.

SEC. 103. LIMITATIONS ON PERSONNEL.

Section 3(a) of title 35, United States Code, is amended by
adding at the end the following: ``The Office shall not be
subject to any administratively or statutorily imposed
limitation on positions or personnel, and no positions or
personnel of the Office shall be taken into account for
purposes of applying any such limitation.''.
Page 26, line 10, strike ``121'' and insert ``104''.
Page 28, line 15, strike ``122'' and insert ``105''.
Page 30, strike line 3 and all that follows through page
46, line 23, and insert the following:

SEC. 106. EFFECTIVE DATE.

This title, and the amendments made by this title, shall
take effect 30 days after the date of the enactment of this
Act.
Amend the table of contents accordingly.

Mr. HUNTER (during the reading). Mr. Chairman, I ask unanimous
consent that the amendment be considered as read and printed in the
Record.
The CHAIRMAN. Is there objection to the request of the gentleman from
California?
There was no objection.
Mr. HUNTER. Mr. Chairman, this has been a good debate, a robust
debate on the patent system and whether or not we need to radically
change the system. I am offering this amendment to move over to the
personnel side of the issue and talk about it a little bit.
I want you to consider that the proposal, the idea that property
rights are extremely precious in the United States and that if you ask
the average citizen what his most important right is, he would probably
say it is my right to own my house, my farm, my property, and to have a
system that ensures that ownership.
Now, we often have disputes over property rights in the United
States. We have quiet title actions and other types of actions, when
you go to court because somebody else or the government disputes your
claimed absolute ownership of your property. And what Americans want
when their property rights are in dispute is an excellent judiciary
with absolute integrity. They

[[Page H1738]]

do not want to have a judiciary that is contracted out. We went over
and had a rent-a-judge program. They do not want to have a judiciary
where you may go to a foreign country and contract or exchange judges
with them, especially if it is an issue where their ownership of your
property may be a part of the particular issue. We want to have judges
that are absolutely insulated from politics.
Now, I think we need exactly the same thing when we are talking about
intellectual property. We have had a Patent Office, I understand, I
have done a little investigation, we have not had a scandal regarding
undue influence in the Patent Office for 160 years. What does that say
about our patent examiners, those Federal employees who work in the
Patent Office and basically make decisions that are life or death for
American citizens, for inventors, for small businesses, for big
businesses?
Those people in practical terms award property rights or refuse to
award property rights. They are quasi-judges. They are a lot like the
judges who make determinations on real property rights, who make the
decision as to whether or not you own your house or you own that strip
of land that your neighbor may contest.
Well, I have offered an amendment that does several things. It says
essentially that patent applications, it ensures that patent
applications will be reviewed by politically insulated, competent, and
plentiful patent examiners. Let us go through that.
First, I think the important idea is to have political insulation to
make sure that you have an absolutely pristine patent examiner corps
and you do that by making sure that they are U.S. citizens and that
they are Federal employees. You do not want to contract out judges.
These folks are quasi-judges.
Second, it ensures that you are going to have good patent examiners.
It says that over 5 percent of their duty time must be spent in
training. We have a lot of very high technology creativity now that is
being pushed through the Patent Office by American innovators. We need
to have folks that are up to speed and can apply technical expertise
that will allow them to make an efficient review of that patent
application. So my bill or my amendment offers a requirement for 5
percent of your duty time being spent in training.
Last, it ensures that you are going to have swift patent issuance,
that has been an issue today, and office flexibility by lifting a
mandated full-time employee cap from the Patent and Trademark Office.
The CHAIRMAN pro tempore (Mr. Barrett of Nebraska). The time of the
gentleman from California [Mr. Hunter] has expired.
Mr. HUNTER. Mr. Chairman, I ask unanimous consent to proceed for 1
additional minute.
The CHAIRMAN pro tempore. Is there objection to the request of the
gentleman from California?
Mr. CONYERS. Mr. Chairman, I object.
The CHAIRMAN pro tempore. Objection is heard.
Mr. CONYERS. Mr. Chairman, I move to strike the last word.
Mr. Chairman, I just want to explain to the gentleman from
California, [Mr. Hunter] that he has had 5 minutes. I get 3. I am not
giving him any more time. I am not yielding.
Mr. Chairman, I object to this amendment. This amendment contains a
number of restrictions on how the tradeoffs can operate, including the
types of search files the office should use, the amount of training
examiners should receive, where and by whom the patent application
should be examined. It imposes restraints on executive branch
negotiations with other nations on patent law.
Is this serious? We are going to, in an amendment that all debate
concludes on in 8 minutes, we are now going to limit the executive
branch of Government's ability to negotiate with other nations on
patent law.
This would eliminate the operational flexibilities and management
stability of the Government corporation which would be created in H.R.
400. I guess that means it guts the bill.
So here we go. We have had about 4 amendments. I am not impatient
with this mode of debate and the secret agreements that nobody knows
about, the conspiracy that is motivating the movers of H.R. 400. But it
is a little trying.
Ms. LOFGREN. Mr. Chairman, will the gentleman yield?
Mr. CONYERS. I yield to the gentlewoman from California.
Ms. LOFGREN. Mr. Chairman, in my reading of the amendment, I believe
it is very clear from the plain words of the amendment that the Patent
and Trademark Office current search files would need to be maintained.
I think what this means, in a practical manner, is that the current 33
million documents search files that are on paper would need to be
maintained forever.
I think, although I presume not intended, that would be a very
serious problem for our country when we think about what we can
accomplish with computerization, especially dealing with massive
amounts of data. So I think that that unintended consequence, if for no
other reason, should lead us all to oppose this amendment. I do not
know whether the chairman of the subcommittee wished to be recognized
for the remainder of my time.
Mr. CAMPBELL. Mr. Chairman, will the gentleman yield?
Mr. CONYERS. I yield to the gentleman from California.

{time} 1700

Mr. CAMPBELL. Mr. Chairman, I appreciate the gentleman yielding, and
it is for this purpose. If I could have the attention of the gentleman
from Michigan.
Mr. Chairman, I am asking for unanimous consent that 2\1/2\
additional minutes be given to the gentleman from Michigan [Mr.
Conyers] and 2\1/2\ additional minutes be given to the gentleman from
California [Mr. Hunter].
The CHAIRMAN pro tempore (Mr. Barrett of Nebraska). Is there
objection to the request of the gentleman from California?
Mr. CONYERS. Mr. Chairman, I object.
The CHAIRMAN pro tempore. Objection is heard. All time has expired.
The question is on the amendment offered by the gentleman from
California [Mr. Hunter].
The question was taken; and the Chairman announced that the noes
appeared to have it.
Mr. HUNTER. Mr. Chairman, I demand a recorded vote.
The CHAIRMAN pro tempore. Pursuant to House Resolution 116, further
proceedings on the amendment offered by the gentleman from California
[Mr. Hunter] will be postponed.
Mr. BARCIA. Mr. Chairman, we have listened to members of this house
eloquently debate both sides of this issue today and it is apparent
that almost all agree that there are problems with our current patent
system. However, we do not agree on how we can correct the problems.
There are several points on which we all agree and I believe that we
can and should work on perfecting those provisions to improve, not
massively alter, our patent system. We agree that we need to prevent
submarine patents.
We agree on provisional royalty rights for those who are published.
Those changes can be made without hurting independent inventors who
have been the backbone of this country for 200 years.
We do not need to make massive changes to a system that we can fix.
Let's address those provisions on which we agree and pass a bill that
ends abuse of the system. Let us also continue to provide the
independent inventor the opportunity and financial ability to pursue
innovative ideas and inventions.
Some of my colleagues have suggested, quite correctly, that even
under the current system lawsuits and piracy are possible, even
prominent. However, this is not an excuse for opening our inventors to
more of the same. Compounding injustice will not make our Nation
better.
Innovation is the cornerstone and strength of our country and we are
all committed to protecting the intellectual property rights of
inventors and researchers. We all want to prevent abuses by those who
would purposely delay applications or use other tactics to artificially
extend patent protection.
However, I am opposed to H.R. 400 and any other legislation that
would allow infringement on intellectual property rights guaranteed by
our Constitution.
Mrs. MINK of Hawaii. Mr. Speaker, I rise today to stand up for our
Nations small businesses and individual investors. With all the data on
the obstacles small businesses face in our increasingly globally-
oriented marketplace, I am quite dismayed about the changes advocated
by this bill. While supporters claim this

[[Page H1739]]

bill helps businesses and inventors, closer examination proves
otherwise. Rather than assisting all businesses and inventors, this
bill allows large corporations and foreign entities to gain an
advantage over America's small businesses and individual inventors.
Proponents of this legislation claim that this bill benefits
investors and the American society as a whole. They contend that by
publishing patents in a shorter amount of time, businesses and the
government will be able to save money from eliminating duplicative
research. In addition, supporters claim by disclosing the patent
information in 18 months inventors are compensated for royalties
earlier in the patent process. Existing law provides that a patent
applicant must remain confidential until the patent is granted. Do we
really want to disclose information to our competitors just to
harmonize our patent laws with international standards?
Instead of maintaining a system that has been independent and
encourages American ingenuity for over 200 years, H.R. 400 restructures
the U.S. Patent & Trademark Office [PTO] by creating a Management
Advisory Board that reviews the policies, goals, performance, budget
and user fees of the PTO. This bill will subject the PTO to the
appropriations process, as well as, Congressional oversight. Mr.
Speaker we have already seen how special interests in the political
process can influence the system. This bill not only adds additional
redtape, but more significantly, it allows politics to influence the
issuance of a patent. The existing structure already provides
applicants the objectivity and assurance that they will be given a fair
opportunity to obtain patents and safeguards intellectual property
rights.
During this debate we will be hearing a lot about ``submarine
patents.'' Proponents of H.R. 400 allege that numerous patent
applicants purposely delay their patent to keep their inventions
secret. If submarine patents are as secretive as critics claim, then
how are we to know the real number of submarine patents that exists?
Are submarine patents really a problem or is it just a smokescreen to
dismantle a system that protects the rights of the little guy?
Another change H.R. 400 seeks is to allow third parties to
participate in the reexamination process. Under existing law, validity
of issued patents are challenged and reexamined only by the U.S. Patent
& Trademark Office. This bill will allow larger corporations and
wealthier entities to challenge the validity of a patent. As these
challenges or suits drag on for longer periods, the smaller and less
affluent businesses or individuals are the ones most negatively
affected. Once their finances are depleted, the ``deep pockets'' are
likely to acquire rights to these patents.
H.R. 400 will hurt our small businesses and inventors. It should not
pass.

Sequential Votes Postponed In Committee Of The Whole

The CHAIRMAN pro tempore. Pursuant to House Resolution 116,
proceedings will now resume on those amendments on which further
proceedings were postponed in the following order:
Amendment No. 1, offered by the gentleman from California [Mr.
Campbell];
Amendment No. 2, offered by the gentleman from California [Mr.
Campbell];
Amendment offered by the gentlewoman from Ohio [Ms. Kaptur];
And the amendment offered by the gentleman from California [Mr.
Hunter].
The Chair will reduce to 5 minutes the time for any electronic vote
after the first vote in this series.

Parliamentary Inquiries

Mr. CAMPBELL. Mr. Chairman, is it my understanding that we will go to
a recorded vote or must I make a point of order about the absence of a
quorum?
The CHAIRMAN pro tempore. The Chair will clarify.
Ms. LOFGREN. Mr. Chairman, parliamentary inquiry. Is it my
understanding that the first recorded vote is on the Campbell 1
amendment, to be followed by 5 minute votes on Campbell 2, the Kaptur
amendment and the like? I could not hear.
The CHAIRMAN pro tempore. The gentlewoman is correct.

Amendment No. 1 Offered by Mr. CAMPBELL

The CHAIRMAN pro tempore. The pending business is the demand for a
recorded vote on amendment No. 1, offered by the gentleman from
California [Mr. CampbelL] on which further proceedings were postponed
and on which the noes prevailed by voice vote.
The Clerk will redesignate the amendment.
The Clerk redesignated the amendment.

Recorded Vote

The CHAIRMAN pro tempore. A recorded vote has been demanded.
A recorded vote was ordered.
The vote was taken by electronic device, and there were--ayes 185,
noes 224, not voting 24, as follows:

[Roll No. 86]

AYES--185

Abercrombie
Bachus
Baker
Baldacci
Barcia
Barr
Barrett (WI)
Bartlett
Bass
Bereuter
Bilbray
Bilirakis
Blumenauer
Bonilla
Bonior
Bono
Brown (FL)
Brown (OH)
Calvert
Camp
Campbell
Chenoweth
Christensen
Clayton
Clement
Coburn
Combest
Condit
Cook
Cooksey
Costello
Cox
Coyne
Crapo
Cunningham
Danner
Davis (VA)
DeFazio
Dellums
Dixon
Doolittle
Doyle
Duncan
Ehlers
Emerson
Engel
Ensign
Everett
Filner
Foley
Forbes
Fowler
Frank (MA)
Gallegly
Gephardt
Gibbons
Gillmor
Goode
Gordon
Goss
Graham
Green
Gutierrez
Hansen
Hastings (WA)
Hayworth
Hefley
Herger
Hill
Hilleary
Hobson
Hoyer
Hulshof
Hunter
Istook
Jackson-Lee (TX)
Johnson, E. B.
Jones
Kanjorski
Kaptur
Kennedy (MA)
Kildee
Kim
King (NY)
Kleczka
Klink
Klug
Kucinich
LaHood
Largent
LaTourette
Leach
Lewis (KY)
Lipinski
Livingston
LoBiondo
Lucas
Maloney (CT)
Manzullo
Martinez
Mascara
McCarthy (NY)
McCollum
McDade
McGovern
McHugh
McInnis
McIntosh
McIntyre
McKeon
McKinney
McNulty
Menendez
Metcalf
Mica
Miller (FL)
Mink
Molinari
Moran (KS)
Murtha
Myrick
Neumann
Ney
Norwood
Oberstar
Obey
Olver
Ortiz
Owens
Pallone
Pappas
Parker
Pascrell
Paul
Petri
Pickering
Pombo
Pomeroy
Porter
Poshard
Radanovich
Rangel
Regula
Riley
Rivers
Rohrabacher
Ros-Lehtinen
Roybal-Allard
Royce
Ryun
Salmon
Sanchez
Sanders
Saxton
Scarborough
Schaefer, Dan
Schaffer, Bob
Shadegg
Smith (MI)
Smith (NJ)
Smith, Linda
Snowbarger
Solomon
Stark
Stearns
Strickland
Stump
Stupak
Talent
Tauscher
Thornberry
Thune
Thurman
Tiahrt
Traficant
Upton
Walsh
Wamp
Waters
Watkins
Watt (NC)
Watts (OK)
Weldon (FL)
Weygand
Wolf

NOES--224

Ackerman
Aderholt
Allen
Archer
Armey
Baesler
Barrett (NE)
Barton
Bateman
Becerra
Bentsen
Berman
Berry
Bishop
Blagojevich
Bliley
Blunt
Boehlert
Boehner
Borski
Boswell
Boucher
Boyd
Brady
Brown (CA)
Bunning
Burr
Burton
Buyer
Callahan
Canady
Cannon
Capps
Cardin
Carson
Castle
Chabot
Chambliss
Clay
Clyburn
Coble
Conyers
Cramer
Crane
Davis (FL)
Davis (IL)
Deal
DeGette
Delahunt
DeLauro
DeLay
Dickey
Dicks
Dingell
Doggett
Dooley
Dreier
Dunn
Edwards
Ehrlich
English
Eshoo
Etheridge
Evans
Ewing
Farr
Fattah
Fawell
Fazio
Flake
Foglietta
Ford
Fox
Franks (NJ)
Frelinghuysen
Frost
Ganske
Gejdenson
Gekas
Gilchrest
Gilman
Gonzalez
Goodlatte
Goodling
Granger
Greenwood
Gutknecht
Hall (OH)
Hall (TX)
Hamilton
Harman
Hastert
Hastings (FL)
Hefner
Hilliard
Hinchey
Hinojosa
Holden
Hooley
Horn
Hostettler
Houghton
Hutchinson
Hyde
Jackson (IL)
Jefferson
Jenkins
John
Johnson (CT)
Johnson (WI)
Johnson, Sam
Kasich
Kelly
Kennedy (RI)
Kennelly
Kind (WI)
Knollenberg
Kolbe
LaFalce
Lampson
Lantos
Latham
Lazio
Levin
Lewis (CA)
Lewis (GA)
Linder
Lofgren
Lowey
Luther
Maloney (NY)
Manton
Markey
Matsui
McCarthy (MO)
McCrery
McDermott
McHale
Meehan
Meek
Millender-McDonald
Miller (CA)
Minge
Moakley
Mollohan
Moran (VA)
Morella
Nadler
Neal
Nethercutt
Northup
Nussle
Oxley
Packard
Pastor
Paxon
Payne
Pease
Pelosi
Peterson (MN)
Peterson (PA)
Pickett
Pitts
Portman
Price (NC)
Pryce (OH)
Quinn
Ramstad
Reyes
Riggs
Rodriguez
Roemer
Rogan
Rogers
Rothman
Roukema
Sabo
Sandlin
Sawyer
Schumer
Scott
Sensenbrenner
Serrano
Sessions
Shaw
Shays
Sherman
Shimkus
Shuster
Sisisky
Skaggs
Skeen
Skelton
Slaughter
Smith (TX)
Smith, Adam
Snyder
Souder
Spence
Spratt
Stabenow
Stenholm
Stokes
Sununu
Tanner
Tauzin
Thomas
Thompson
Tierney
Torres
Turner
Vento
Visclosky
Waxman
Weldon (PA)
Weller
Wexler
White

[[Page H1740]]

Whitfield
Wicker
Woolsey
Wynn
Young (AK)
Young (FL)

NOT VOTING--24

Andrews
Ballenger
Bryant
Collins
Cubin
Cummings
Deutsch
Diaz-Balart
Furse
Hoekstra
Inglis
Kilpatrick
Kingston
Rahall
Rush
Sanford
Schiff
Smith (OR)
Taylor (MS)
Taylor (NC)
Towns
Velazquez
Wise
Yates

{time} 1725

The Clerk announced the following pairs:
On this vote:

Mrs. Cubin for, with Mr. Kingston against.
Mr. Sanford for, with Mr. Smith of Oregon against.
Mr. Deutsch for, with Mr. Towns against.

Messrs. DeLAY, HASTERT, WELLER, and GONZALEZ changed their vote from
``aye'' to ``no.''
Messrs. POMBO, CAMP, RYUN, WATTS of Oklahoma, KIM, McGOVERN, Mrs.
CLAYTON, and Ms. ROYBAL-ALLARD changed their vote from ``no'' to
``aye.''
So the amendment was rejected.
The result of the vote was announced as above recorded.

Announcement by the Chairman Pro Tempore

The CHAIRMAN pro tempore (Mr. Barrett of Nebraska). Pursuant to the
rule, the Chair announces that he will reduce to a minimum of 5 minutes
the period of time within which a vote by electronic device will be
taken on each additional amendment on which the Chair has postponed
further proceedings.

Amendment No. 2 Offered by Mr. Campbell

The CHAIRMAN pro tempore. The pending business is the demand for a
recorded vote on the amendment offered by the gentleman from California
[Mr. Campbell] on which further proceedings were postponed and on which
the noes prevailed by voice vote.
The Clerk will redesignate the amendment.
The Clerk redesignated the amendment.

recorded vote

The CHAIRMAN pro tempore. A recorded vote has been demanded.
A recorded vote was ordered.
The CHAIRMAN pro tempore. This will be a 5-minute vote.
The vote was taken by electronic device, and there were--ayes 167,
noes 242, not voting 24, as follows:

[Roll No. 87]

AYES--167

Abercrombie
Archer
Bachus
Baker
Baldacci
Barcia
Barr
Barrett (WI)
Bartlett
Bass
Bereuter
Bilirakis
Bonilla
Bonior
Bono
Brown (OH)
Calvert
Campbell
Cardin
Chenoweth
Christensen
Clayton
Clement
Coburn
Combest
Condit
Cook
Cooksey
Costello
Cox
Crapo
Cunningham
Danner
Deal
DeFazio
DeLay
Dellums
Dixon
Doolittle
Doyle
Duncan
Emerson
English
Ensign
Everett
Ewing
Filner
Foley
Forbes
Gallegly
Gephardt
Gibbons
Goode
Goss
Graham
Green
Gutierrez
Hall (TX)
Hansen
Hastert
Hastings (WA)
Hayworth
Hefley
Herger
Hill
Hilleary
Hobson
Holden
Hoyer
Hulshof
Hunter
Hutchinson
Istook
Jones
Kanjorski
Kaptur
Kildee
King (NY)
Kleczka
Klink
Kucinich
LaHood
Largent
LaTourette
Lazio
Leach
Lewis (CA)
Lewis (KY)
Lipinski
Livingston
LoBiondo
Lucas
Manzullo
Martinez
Mascara
McCarthy (NY)
McCrery
McDade
McHugh
McInnis
McIntyre
McKeon
McKinney
McNulty
Metcalf
Mica
Miller (FL)
Mink
Molinari
Moran (KS)
Myrick
Neumann
Ney
Norwood
Oberstar
Obey
Olver
Ortiz
Pallone
Pappas
Parker
Pascrell
Paul
Petri
Pickering
Pombo
Poshard
Regula
Riggs
Riley
Rivers
Rohrabacher
Ros-Lehtinen
Royce
Ryun
Salmon
Sanders
Saxton
Scarborough
Schaefer, Dan
Schaffer, Bob
Sensenbrenner
Sessions
Smith (MI)
Smith (NJ)
Smith, Linda
Snowbarger
Solomon
Stark
Strickland
Stump
Stupak
Sununu
Talent
Thornberry
Thune
Thurman
Tiahrt
Traficant
Walsh
Wamp
Waters
Watt (NC)
Watts (OK)
Weldon (FL)
Weller
Whitfield

NOES--242

Ackerman
Aderholt
Allen
Armey
Baesler
Barrett (NE)
Barton
Bateman
Becerra
Bentsen
Berman
Berry
Bilbray
Bishop
Blagojevich
Bliley
Blumenauer
Blunt
Boehlert
Boehner
Borski
Boswell
Boucher
Boyd
Brady
Brown (CA)
Brown (FL)
Bunning
Burr
Burton
Buyer
Callahan
Camp
Canady
Cannon
Capps
Carson
Castle
Chabot
Chambliss
Clay
Clyburn
Coble
Conyers
Coyne
Cramer
Crane
Cummings
Davis (FL)
Davis (IL)
Davis (VA)
DeGette
Delahunt
DeLauro
Dickey
Dicks
Dingell
Doggett
Dooley
Dreier
Dunn
Edwards
Ehlers
Ehrlich
Engel
Eshoo
Etheridge
Evans
Farr
Fattah
Fawell
Fazio
Flake
Foglietta
Ford
Fowler
Fox
Frank (MA)
Franks (NJ)
Frelinghuysen
Frost
Ganske
Gejdenson
Gilchrest
Gillmor
Gilman
Gonzalez
Goodlatte
Goodling
Gordon
Granger
Greenwood
Gutknecht
Hall (OH)
Hamilton
Harman
Hastings (FL)
Hefner
Hilliard
Hinchey
Hinojosa
Hooley
Horn
Hostettler
Houghton
Hyde
Jackson (IL)
Jackson-Lee (TX)
Jefferson
Jenkins
John
Johnson (CT)
Johnson (WI)
Johnson, E. B.
Johnson, Sam
Kasich
Kelly
Kennedy (MA)
Kennedy (RI)
Kennelly
Kim
Kind (WI)
Klug
Knollenberg
Kolbe
LaFalce
Lampson
Lantos
Latham
Levin
Lewis (GA)
Linder
Lofgren
Lowey
Luther
Maloney (CT)
Maloney (NY)
Manton
Markey
Matsui
McCarthy (MO)
McCollum
McDermott
McGovern
McHale
McIntosh
Meehan
Meek
Menendez
Millender-McDonald
Miller (CA)
Minge
Moakley
Mollohan
Moran (VA)
Morella
Murtha
Nadler
Neal
Nethercutt
Northup
Nussle
Owens
Oxley
Packard
Pastor
Paxon
Payne
Pease
Pelosi
Peterson (MN)
Peterson (PA)
Pickett
Pitts
Pomeroy
Porter
Portman
Price (NC)
Pryce (OH)
Quinn
Radanovich
Ramstad
Rangel
Reyes
Rodriguez
Roemer
Rogan
Rogers
Rothman
Roukema
Roybal-Allard
Sabo
Sanchez
Sandlin
Sawyer
Schumer
Scott
Serrano
Shadegg
Shaw
Shays
Sherman
Shimkus
Shuster
Sisisky
Skaggs
Skeen
Skelton
Slaughter
Smith (TX)
Smith, Adam
Snyder
Souder
Spence
Spratt
Stabenow
Stearns
Stenholm
Stokes
Tanner
Tauscher
Tauzin
Thomas
Thompson
Tierney
Torres
Turner
Upton
Vento
Visclosky
Watkins
Waxman
Weldon (PA)
Wexler
Weygand
White
Wicker
Wolf
Woolsey
Wynn
Young (AK)
Young (FL)

NOT VOTING--24

Andrews
Ballenger
Bryant
Collins
Cubin
Deutsch
Diaz-Balart
Furse
Gekas
Hoekstra
Inglis
Kilpatrick
Kingston
Rahall
Rush
Sanford
Schiff
Smith (OR)
Taylor (MS)
Taylor (NC)
Towns
Velazquez
Wise
Yates

{time} 1736

The Clerk announced the following pair:
On this vote:

Mr. Sanford for, with Mr. Smith of Oregon against.

Ms. PELOSI changed her vote from ``aye'' to ``no.''
Mr. McCRERY changed his vote from ``no'' to ``aye.''
So the amendment was rejected.
The result of the vote was announced as above recorded.

Amendment Offered By Ms. Kaptur

The CHAIRMAN. The pending business is the demand for a recorded vote
on the amendment offered by the gentlewoman from Ohio [Ms. Kaptur] on
which further proceedings were postponed and on which the noes
prevailed by voice vote.
The Clerk will designate the amendment.
The Clerk designated the amendment.

recorded vote

The CHAIRMAN. A recorded vote has been demanded.
A recorded vote was ordered.
The CHAIRMAN. This will be a 5-minute vote.
The vote was taken by electronic device, and there were--ayes 220,
noes 193, not voting 20, as follows:

[Roll No. 88]

AYES--220

Abercrombie
Aderholt
Archer
Bachus
Baker
Baldacci
Barcia
Barr
Barrett (WI)
Bartlett
Bereuter
Bilbray
Bilirakis
Bishop
Bonilla
Bonior
Bono
Boyd
Brady
Brown (FL)
Brown (OH)
Calvert
Campbell
Cardin
Chenoweth
Christensen
Clay
Clayton
Clyburn
Coburn
Collins
Combest
Condit
Cook
Costello
Cox
Cramer
Crapo
Danner
Deal
DeFazio
DeLauro
DeLay
Dellums
Dickey

[[Page H1741]]

Dixon
Doolittle
Doyle
Duncan
Emerson
English
Ensign
Everett
Ewing
Fattah
Filner
Foley
Forbes
Fowler
Fox
Franks (NJ)
Gallegly
Gejdenson
Gephardt
Gillmor
Goode
Gordon
Goss
Graham
Green
Gutierrez
Hall (OH)
Hall (TX)
Hansen
Harman
Hastert
Hastings (WA)
Hayworth
Hefley
Herger
Hill
Hilleary
Hilliard
Holden
Hostettler
Hoyer
Hulshof
Hunter
Hutchinson
Istook
Jackson-Lee (TX)
Jefferson
Jones
Kanjorski
Kaptur
Kildee
Kim
King (NY)
Kleczka
Klink
Kucinich
LaHood
Largent
LaTourette
Lazio
Leach
Levin
Lewis (KY)
Lipinski
Livingston
LoBiondo
Lucas
Manzullo
Martinez
Mascara
McCarthy (NY)
McCrery
McDade
McGovern
McHale
McHugh
McInnis
McIntosh
McIntyre
McKeon
McKinney
McNulty
Meek
Menendez
Metcalf
Mica
Millender-McDonald
Miller (CA)
Miller (FL)
Mink
Molinari
Moran (KS)
Moran (VA)
Murtha
Myrick
Nethercutt
Neumann
Ney
Norwood
Oberstar
Obey
Olver
Ortiz
Owens
Pallone
Pappas
Parker
Pascrell
Paul
Payne
Pelosi
Peterson (PA)
Petri
Pickering
Pombo
Pomeroy
Porter
Poshard
Radanovich
Rahall
Rangel
Regula
Riggs
Riley
Rivers
Rodriguez
Rohrabacher
Ros-Lehtinen
Royce
Ryun
Salmon
Sanders
Saxton
Scarborough
Schaefer, Dan
Schaffer, Bob
Sensenbrenner
Shadegg
Smith (MI)
Smith (NJ)
Smith, Linda
Snowbarger
Solomon
Spence
Spratt
Stabenow
Stark
Stearns
Stenholm
Strickland
Stump
Stupak
Sununu
Talent
Tauzin
Thompson
Thornberry
Thune
Tiahrt
Torres
Traficant
Upton
Walsh
Wamp
Waters
Watt (NC)
Watts (OK)
Weldon (PA)
Weller
Weygand
Whitfield
Wicker
Woolsey
Wynn
Young (AK)

NOES--193

Ackerman
Allen
Armey
Baesler
Barrett (NE)
Barton
Bass
Bateman
Becerra
Bentsen
Berman
Berry
Blagojevich
Bliley
Blumenauer
Blunt
Boehlert
Boehner
Borski
Boswell
Boucher
Brown (CA)
Bryant
Bunning
Burr
Burton
Buyer
Callahan
Camp
Canady
Cannon
Capps
Carson
Castle
Chabot
Chambliss
Clement
Coble
Conyers
Cooksey
Coyne
Crane
Cummings
Cunningham
Davis (FL)
Davis (IL)
Davis (VA)
DeGette
Delahunt
Dicks
Dingell
Doggett
Dooley
Dreier
Dunn
Edwards
Ehlers
Ehrlich
Engel
Eshoo
Etheridge
Evans
Farr
Fawell
Fazio
Flake
Foglietta
Ford
Frank (MA)
Frelinghuysen
Frost
Ganske
Gekas
Gibbons
Gilchrest
Gilman
Gonzalez
Goodlatte
Goodling
Granger
Greenwood
Gutknecht
Hamilton
Hastings (FL)
Hefner
Hinchey
Hinojosa
Hobson
Hooley
Horn
Houghton
Hyde
Jackson (IL)
Jenkins
John
Johnson (CT)
Johnson (WI)
Johnson, E. B.
Johnson, Sam
Kasich
Kelly
Kennedy (MA)
Kennedy (RI)
Kennelly
Kind (WI)
Klug
Knollenberg
Kolbe
LaFalce
Lampson
Lantos
Latham
Lewis (CA)
Lewis (GA)
Linder
Lofgren
Lowey
Luther
Maloney (CT)
Maloney (NY)
Manton
Markey
Matsui
McCarthy (MO)
McCollum
McDermott
Meehan
Minge
Moakley
Mollohan
Morella
Nadler
Neal
Northup
Nussle
Oxley
Packard
Pastor
Paxon
Pease
Peterson (MN)
Pickett
Pitts
Portman
Price (NC)
Pryce (OH)
Quinn
Ramstad
Reyes
Roemer
Rogan
Rogers
Rothman
Roukema
Roybal-Allard
Sabo
Sanchez
Sandlin
Sawyer
Schumer
Scott
Serrano
Sessions
Shaw
Shays
Sherman
Shimkus
Shuster
Sisisky
Skaggs
Skeen
Skelton
Slaughter
Smith (TX)
Smith, Adam
Snyder
Souder
Stokes
Tanner
Tauscher
Thomas
Thurman
Tierney
Turner
Vento
Visclosky
Watkins
Waxman
Weldon (FL)
Wexler
White
Wolf
Young (FL)

NOT VOTING--20

Andrews
Ballenger
Cubin
Deutsch
Diaz-Balart
Furse
Hoekstra
Inglis
Kilpatrick
Kingston
Rush
Sanford
Schiff
Smith (OR)
Taylor (MS)
Taylor (NC)
Towns
Velazquez
Wise
Yates

{time} 1748

The Clerk announced the following pairs:
On this vote:

Ms. Velazquez for, with Mr. Deutsch against.
Mrs. Cubin for, with Mr. Kingston against.
Mr. Sanford for, with Mr. Smith of Oregon against.

Mr. HOBSON, Mr. LaFALCE, and Ms. SLAUGHTER changed their vote from
``aye'' to ``no.''
Messrs. RAHALL, BRADY, McGOVERN, and FOX of Pennsylvania changed
their vote from ``no'' to ``aye.''
So the amendment was agreed to.
The result of the vote was announced as above recorded.

personal explanation

Mr. WELDON of Florida. Mr. Chairman, during the vote on the Kaptur
amendment my vote should have been recorded as a ``yea'' vote for the
amendment. My vote was inadvertently recorded as a ``no'' vote and I
would like for the Record to show that I was in favor of the Kaptur
amendment. This amendment will provide small businesses and inventors
with the protections that they need and deserve.

Amendment Offered by Mr. HUNTER

The CHAIRMAN pro tempore (Mr. Barrett of Nebraska). The pending
business is the demand for a recorded vote on the amendment offered by
the gentleman from California [Mr. Hunter] on which further proceedings
were postponed and on which the noes prevailed by voice vote.
The Clerk will designate the amendment.
The Clerk designated the amendment.

Recorded Vote

The CHAIRMAN pro tempore. A recorded vote has been demanded.
A recorded vote was ordered.
The CHAIRMAN pro tempore. This is a 5-minute vote.
The vote was taken by electronic device, and there were--ayes 133,
noes 280, not voting 20, as follows:

[Roll No. 89]

AYES--133

Abercrombie
Bachus
Baker
Baldacci
Barcia
Barr
Bartlett
Bilbray
Bilirakis
Bonior
Bono
Brown (OH)
Burton
Calvert
Campbell
Chenoweth
Clement
Coburn
Combest
Condit
Crapo
Danner
DeFazio
Doolittle
Doyle
Emerson
English
Ensign
Everett
Ewing
Filner
Foley
Forbes
Gallegly
Gephardt
Gibbons
Goode
Goodling
Goss
Graham
Gutierrez
Hall (TX)
Hansen
Hayworth
Hefley
Herger
Hill
Holden
Hostettler
Hoyer
Hulshof
Hunter
Istook
Jackson-Lee (TX)
Jones
Kanjorski
Kaptur
Kildee
King (NY)
Kleczka
Klink
Kucinich
Largent
LaTourette
Lewis (KY)
Lipinski
LoBiondo
Lucas
Manzullo
Martinez
Mascara
McCarthy (NY)
McHale
McHugh
McInnis
McKeon
McKinney
McNulty
Metcalf
Mica
Miller (CA)
Mink
Moran (KS)
Moran (VA)
Myrick
Neumann
Ney
Norwood
Oberstar
Obey
Olver
Ortiz
Pallone
Pappas
Pascrell
Petri
Pombo
Pomeroy
Radanovich
Rahall
Regula
Riley
Rivers
Rohrabacher
Ros-Lehtinen
Royce
Ryun
Salmon
Sanders
Saxton
Scarborough
Schaefer, Dan
Schaffer, Bob
Sessions
Skelton
Smith (NJ)
Smith, Linda
Snowbarger
Solomon
Spence
Stark
Stump
Talent
Tiahrt
Traficant
Walsh
Wamp
Waters
Watts (OK)
Weldon (FL)
Weller
Whitfield
Young (AK)

NOES--280

Ackerman
Aderholt
Allen
Archer
Armey
Baesler
Barrett (NE)
Barrett (WI)
Barton
Bass
Bateman
Becerra
Bentsen
Bereuter
Berman
Berry
Bishop
Blagojevich
Bliley
Blumenauer
Blunt
Boehlert
Boehner
Bonilla
Borski
Boswell
Boucher
Boyd
Brady
Brown (CA)
Brown (FL)
Bryant
Bunning
Burr
Buyer
Callahan
Camp
Canady
Cannon
Capps
Cardin
Carson
Castle
Chabot
Chambliss
Christensen
Clay
Clayton
Clyburn
Coble
Collins
Conyers
Cook
Cooksey
Costello
Cox
Coyne
Cramer
Crane
Cummings
Cunningham
Davis (FL)
Davis (IL)
Davis (VA)
Deal
DeGette
Delahunt
DeLauro
DeLay
Dellums
Dickey
Dicks
Dingell
Dixon
Doggett
Dooley
Dreier
Duncan
Dunn
Edwards
Ehlers
Ehrlich
Engel
Eshoo
Etheridge
Evans
Farr
Fattah
Fawell
Fazio
Flake
Foglietta
Ford
Fowler
Fox
Frank (MA)
Franks (NJ)
Frelinghuysen
Frost
Ganske
Gejdenson
Gekas
Gilchrest
Gillmor
Gilman
Gonzalez
Goodlatte
Gordon
Granger
Green
Greenwood
Gutknecht
Hall (OH)
Hamilton
Harman
Hastert
Hastings (FL)
Hastings (WA)
Hefner
Hilleary
Hilliard
Hinchey
Hinojosa
Hobson
Hooley
Horn
Houghton
Hutchinson
Hyde
Jackson (IL)
Jefferson
Jenkins
John
Johnson (CT)
Johnson (WI)
Johnson, E.B.
Johnson, Sam
Kasich
Kelly
Kennedy (MA)
Kennedy (RI)
Kennelly
Kim
Kind (WI)
Klug
Knollenberg
Kolbe

[[Page H1742]]

LaFalce
LaHood
Lampson
Lantos
Latham
Lazio
Leach
Levin
Lewis (CA)
Lewis (GA)
Linder
Livingston
Lofgren
Lowey
Luther
Maloney (CT)
Maloney (NY)
Manton
Markey
Matsui
McCarthy (MO)
McCollum
McCrery
McDade
McDermott
McGovern
McIntosh
McIntyre
Meehan
Meek
Menendez
Millender-McDonald
Miller (FL)
Minge
Moakley
Molinari
Mollohan
Morella
Murtha
Nadler
Neal
Nethercutt
Northup
Nussle
Owens
Oxley
Packard
Parker
Pastor
Paul
Paxon
Payne
Pease
Pelosi
Peterson (MN)
Peterson (PA)
Pickering
Pickett
Pitts
Porter
Portman
Poshard
Price (NC)
Pryce (OH)
Quinn
Ramstad
Rangel
Reyes
Riggs
Rodriguez
Roemer
Rogan
Rogers
Rothman
Roukema
Roybal-Allard
Sabo
Sanchez
Sandlin
Sawyer
Schumer
Scott
Sensenbrenner
Serrano
Shadegg
Shaw
Shays
Sherman
Shimkus
Shuster
Sisisky
Skaggs
Skeen
Slaughter
Smith (MI)
Smith (TX)
Smith, Adam
Snyder
Souder
Spratt
Stabenow
Stearns
Stenholm
Stokes
Strickland
Stupak
Sununu
Tanner
Tauscher
Tauzin
Thomas
Thompson
Thornberry
Thune
Thurman
Tierney
Torres
Turner
Upton
Vento
Visclosky
Watkins
Watt (NC)
Waxman
Weldon (PA)
Wexler
Weygand
White
Wicker
Wolf
Woolsey
Wynn
Young (FL)

NOT VOTING--20

Andrews
Ballenger
Cubin
Deutsch
Diaz-Balart
Furse
Hoekstra
Inglis
Kilpatrick
Kingston
Rush
Sanford
Schiff
Smith (OR)
Taylor (MS)
Taylor (NC)
Towns
Velazquez
Wise
Yates

{time} 1757

The Clerk announced the following pair: On this vote:

Mrs. Cubin for, with Mr. Kingston against.

So the amendment was rejected.
The result of the vote was announced as above recorded.
The CHAIRMAN pro tempore. Are there other amendments?
If not, the question is on the committee amendment in the nature of a
substitute as modified, as amended.
The committee amendment in the nature of a substitute as modified, as
amended, was agreed to.
The CHAIRMAN pro tempore. Under the rule, the Committee rises.

{time} 1800

Accordingly, the Committee rose; and the Speaker pro tempore (Mr.
Kolbe), having assumed the chair, Mr. LaHood, Chairman of the Committee
of the Whole House on the State of the Union, reported that that
Committee, having had under consideration the bill, (H.R. 400) to amend
title 35, United States Code, with respect to patents, and for other
purposes, pursuant to House Resolution 116, he reported the bill back
to the House with an amendment adopted by the Committee of the Whole.
The SPEAKER pro tempore. Under the rule, the previous question is
ordered.
Is a separate vote demanded on any amendment to the committee
amendment in the nature of a substitute adopted by the Committee of the
Whole? If not, the question is on the amendment.
The amendment was agreed to.
The bill was ordered to be engrossed and read a third time, was read
the third time, and passed, and a motion to reconsider was laid on the
table.

____________________