[Congressional Record Volume 157, Number 92 (Friday, June 24, 2011)]
[Extensions of Remarks]
[Page E1208]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                          AMERICA INVENTS ACT

                                 ______
                                 

                               speech of

                          HON. HENRY A. WAXMAN

                             of california

                    in the house of representatives

                        Wednesday, June 22, 2011

       The House in Committee of the Whole House on the State of 
     the Union had under consideration the bill (H.R. 1249) to 
     amend title 35, United States Code, to provide for patent 
     reform:

  Mr. WAXMAN. Madam Chair, it is with great frustration that I rise in 
opposition to H.R. 1249, the America Invents Act.
  Our nation's patent system is the backbone of our knowledge-based 
economy and the well-spring of our most competitive industries. Since 
the era of the Founding Fathers, the patent system has evolved on the 
principle that individuals are entitled and encouraged to claim 
ownership of their thoughts and discoveries. For this reason we 
continue to be a world leader in innovation, producing some of the 
greatest scientific advances of the modern era and serving as a robust 
market for all around in the world who want to invest in or introduce 
the next ``big idea.''
  The objective of patent reform is to improve patent quality, reduce 
uncertainty and modernize a Patent and Trademark Office (PTO) mired in 
inefficiencies and delays. Regrettably, this bill as amended fails to 
achieve these critical goals.
  On the issue of patent quality, I am deeply disappointed that Section 
12 of the bill introduces a new supplemental examination procedure 
permitting patent holders a second chance to correct or revise 
information that was inaccurate or omitted at the time the patent was 
filed. The provision also prohibits any information provided in a 
reexamination proceeding from being used as evidence that a patent 
holder committed inequitable conduct and deliberately filed a patent 
application that was misleading or deceptive.
  Effectively, this amounts to a ``get out of jail free card'' for any 
company fearful of having their patent invalidated because they 
deceived the PTO. Furthermore, nothing in the bill would stop a patent 
holder from seeking a supplemental examination with information that 
wasn't even available at the time the patent was originally filed. What 
is to stop a drug company from submitting new clinical studies 
conducted after the patent was filed to shore up questionable claims in 
an original application? And what is to stop a company from cutting 
corners on a patent application when they know they can just fix it 
later?
  If this bill is enacted into law, I am hopeful that the PTO will, at 
a minimum, adopt reasonable limitations on this procedure such as 
prohibiting reexamination of information that didn't exist at the time 
of the original filing. It is essential that the agency carefully 
police what stands to be an abusive practice.
  On the issue of certainty, I am concerned that this bill fails to 
offer greater clarity of the protection available to inventors during 
the ``grace period,'' or the one year period an inventor has to file a 
patent application after disclosing or publishing information about the 
invention. This time is critical for small inventors to conduct market 
research, pitch their ideas to investors, and raise sufficient capital 
to file a quality patent application. As our system shifts from a 
first-inventor-to-file to a first-to-file paradigm, small inventors 
face an increased risk that someone will hear their idea and race ahead 
of them to file a patent or use their own pitch materials against them 
to claim there is prior art undermining the patent application.
  Which brings me to the issue of modernization. This legislation is a 
leap of faith. It represents a dramatic transformation of the patent 
system and introduces a host of new mechanisms for pre-grant 
submissions, post-grant challenges, and revamped derivation proceedings 
at an agency already mired in backlogs. Rather than giving the PTO the 
resources it needs to implement these sweeping changes, the Republican 
leadership has refused to let the agency collect and allocate the fees 
paid by patent filers. Instead, the agency must remain at the mercy of 
the appropriations committee for annual allocations.
  It's one thing to ask inventors to take a leap of faith on the bold 
restructuring of our patent system. But now they are being asked to 
take another leap of faith that appropriators won't fall back on their 
long history of poaching patent fee revenues for other uses.
  Congress can do better and inventors deserve better. If this 
legislation passes the House, I am hopeful we will have an opportunity 
to fix these problems in negotiations with the Senate.

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