[Congressional Record Volume 157, Number 94 (Tuesday, June 28, 2011)]
[Extensions of Remarks]
[Page E1219]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                          AMERICA INVENTS ACT

                                 ______
                                 

                               speech of

                            HON. LAMAR SMITH

                                of texas

                    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. SMITH of Texas. Madam Chair, H.R. 1249 makes a significant change 
to the system by which patents are filed and granted in the United 
States. Moving to a first-inventor-to-file system will modernize and 
harmonize our patent system with our international trading partners. In 
so doing, we recognize that we are also modifying other parts of our 
patent system as part of this change.
  One key part of the transition that has already been recognized by 
the House Judiciary Committee is the necessary inclusion of prior user 
rights under the new first-inventor-to-file system. The inclusion of 
prior user rights is essential to ensure that those who have invented 
and used a technology but choose not to disclose that technology--
generally to ensure that they not disclose their trade secrets to 
foreign competitors--are provided a defense against someone who later 
patents the technology. Even as we make this make this change, we 
recognize that uncertainty remains as to the appropriate scope of the 
prior-user-rights defense and how best to provide protections for 
America's most innovative companies.
  H.R. 1249 takes steps to explore these issues, including requiring an 
important PTO study of prior user rights and whether we should expand 
the defense created by the America Invents Act. One important area of 
focus will be how we protect those who make substantial investments in 
the development and preparation of proprietary technologies. For 
example, in the semiconductor industry, the design of a state of the 
art processor takes roughly three years from the high-level 
specification to the production of the first silicon, at a cost of 
billions of dollars. Inventions such as these, which are present 
throughout our economy, should be protected. I should also note that 
parties who commercialize a product will still be able to assert a 
defense of prior art invalidation. Upon release of the forthcoming PTO 
report, we may introduce legislation that implements its conclusions 
and refines the nature and scope of the prior-user rights defense. This 
will ensure that our most innovative companies who hold many of the 
keys to U.S. economic competitiveness are provided sufficient prior 
user right protections to put them on an even competitive field 
internationally.

                          ____________________