[Congressional Record Volume 158, Number 163 (Tuesday, December 18, 2012)]
[House]
[Pages H6842-H6844]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]


                 PATENT OVERHAUL TECHNICAL CORRECTIONS

  Mr. SMITH of Texas. Mr. Speaker, I move to suspend the rules and pass 
the bill (H.R. 6621) to correct and improve certain provisions of the 
Leahy-Smith America Invents Act and title 35, United States Code, as 
amended.
  The Clerk read the title of the bill.
  The text of the bill is as follows:

                               H.R. 6621

       Be it enacted by the Senate and House of Representatives of 
     the United States of America in Congress assembled,

     SECTION 1. TECHNICAL CORRECTIONS.

       (a) Advice of Counsel.--Notwithstanding section 35 of the 
     Leahy-Smith America Invents Act (35 U.S.C. 1 note), section 
     298 of title 35, United States Code, shall apply to any civil 
     action commenced on or after the date of the enactment of 
     this Act.
       (b) Transitional Program for Covered Business Method 
     Patents.--Section 18 of the Leahy-Smith America Invents Act 
     (35 U.S.C. 321 note) is amended--
       (1) in subsection (a)(1)(C)((i), by striking ``of such 
     title'' the second place it appears; and
       (2) in subsection (d)(2), by striking ``subsection'' and 
     inserting ``section''.
       (c) Joinder of Parties.--Section 299(a) of title 35, United 
     States Code, is amended in the matter preceding paragraph (1) 
     by striking ``or counterclaim defendants only if'' and 
     inserting ``only if''.
       (d) Dead Zones.--
       (1) Inter partes review.--Section 311(c) of title 35, 
     United States Code, shall not apply to a petition to 
     institute an inter partes review of a patent that is not a 
     patent described in section 3(n)(1) of the Leahy-Smith 
     America Invents Act (35 U.S.C. 100 note).
       (2) Reissue.--Section 311(c)(1) of title 35, United States 
     Code, is amended by striking ``or issuance of a reissue of a 
     patent''.
       (e) Correct Inventor.--
       (1) In general.--Section 135(e) of title 35, United States 
     Code, as amended by section 3(i) of the Leahy-Smith America 
     Invents Act, is amended by striking ``correct inventors'' and 
     inserting ``correct inventor''.
       (2) Effective date.--The amendment made by paragraph (1) 
     shall be effective as if included in the amendment made by 
     section 3(i) of the Leahy-Smith America Invents Act.
       (f) Inventor's Oath or Declaration.--Section 115 of title 
     35, United States Code, as amended by section 4 of the Leahy-
     Smith America Invents Act, is amended--
       (1) by striking subsection (f) and inserting the following:
       ``(f) Time for Filing.--The applicant for patent shall 
     provide each required oath or declaration under subsection 
     (a), substitute statement under subsection (d), or recorded 
     assignment meeting the requirements of subsection (e) no 
     later than the date on which the issue fee for the patent is 
     paid.''; and
       (2) in subsection (g)(1), by striking ``who claims'' and 
     inserting ``that claims''.
       (g) Travel Expenses and Payment of Administrative Judges.--
     Notwithstanding section 35 of the Leahy-Smith America Invents 
     Act (35 U.S.C. 1 note), the amendments made by section 21 of 
     the Leahy-Smith America Invents Act (Public Law 112-29; 125 
     Stat. 335) shall be effective as of September 16, 2011.
       (h) Patent Term Adjustments.--Section 154(b) of title 35, 
     United States Code, is amended--
       (1) in paragraph (1)--
       (A) in subparagraph (A)(i)(II), by striking ``on which an 
     international application fulfilled the requirements of 
     section 371 of this title'' and inserting ``of commencement 
     of the national stage under section 371 in an international 
     application''; and
       (B) in subparagraph (B), in the matter preceding clause 
     (i), by striking ``the application in the United States'' and 
     inserting ``the application under section 111(a) in the 
     United States or, in the case of an international 
     application, the date of commencement of the national stage 
     under section 371 in the international application'';
       (2) in paragraph (3)(B)(i), by striking ``with the written 
     notice of allowance of the application under section 151'' 
     and inserting ``no later than the date of issuance of the 
     patent''; and
       (3) in paragraph (4)(A)--
       (A) by striking ``a determination made by the Director 
     under paragraph (3) shall have remedy'' and inserting ``the 
     Director's decision on the applicant's request for 
     reconsideration under paragraph (3)(B)(ii) shall have 
     exclusive remedy''; and
       (B) by striking ``the grant of the patent'' and inserting 
     ``the date of the Director's decision on the applicant's 
     request for reconsideration''.
       (i) Improper Applicant.--Section 373 of title 35, United 
     States Code, and the item relating to that section in the 
     table of sections for chapter 37 of such title, are repealed.
       (j) Financial Management Clarifications.--Section 42(c)(3) 
     of title 35, United States Code, is amended--
       (1) in subparagraph (A)--
       (A) by striking ``sections 41, 42, and 376,'' and inserting 
     ``this title,''; and
       (B) by striking ``a share of the administrative costs of 
     the Office relating to patents'' and inserting ``a 
     proportionate share of the administrative costs of the 
     Office''; and
       (2) in subparagraph (B), by striking ``a share of the 
     administrative costs of the Office relating to trademarks'' 
     and inserting ``a proportionate share of the administrative 
     costs of the Office''.
       (k) Derivation Proceedings.--
       (1) In general.--Section 135(a) of title 35, United States 
     Code, as amended by section 3(i) of the Leahy-Smith America 
     Invents Act, is amended to read as follows:
       ``(a) Institution of Proceeding.--
       ``(1) In general.--An applicant for patent may file a 
     petition with respect to an invention to institute a 
     derivation proceeding in the Office. The petition shall set 
     forth with particularity the basis for finding that an 
     individual named in an earlier application as the inventor or 
     a joint inventor derived such invention from an individual 
     named in the petitioner's application as the inventor or a 
     joint inventor and, without authorization, the earlier 
     application claiming such invention was filed. Whenever the 
     Director determines that a petition filed under this 
     subsection demonstrates that the standards for instituting a 
     derivation proceeding are met, the Director may institute a 
     derivation proceeding.
       ``(2) Time for filing.--A petition under this section with 
     respect to an invention that is the same or substantially the 
     same invention as a claim contained in a patent issued on an 
     earlier application, or contained in an earlier application 
     when published or deemed published under section 122(b), may 
     not be filed unless such petition is filed during the 1-year 
     period following the date on which the patent containing such 
     claim was granted or the earlier application containing such 
     claim was published, whichever is earlier.
       ``(3) Earlier application.--For purposes of this section, 
     an application shall not be deemed to be an earlier 
     application with respect to an invention, relative to another 
     application, unless a claim to the invention was or could 
     have been made in such application having an effective filing 
     date that is earlier than the effective filing date of any 
     claim to the invention that was or could have been made in 
     such other application.
       ``(4) No appeal.--A determination by the Director whether 
     to institute a derivation proceeding under paragraph (1) 
     shall be final and not appealable.''.
       (2) Effective date.--The amendment made by paragraph (1) 
     shall be effective as if included in the amendment made by 
     section 3(i) of the Leahy-Smith America Invents Act.
       (3) Review of interference decisions.--The provisions of 
     sections 6 and 141 of title 35, United States Code, and 
     section 1295(a)(4)(A) of title 28, United States Code, as in 
     effect on September 15, 2012, shall apply to interference 
     proceedings that are declared after September 15, 2012, under 
     section 135 of title 35, United States Code, as in effect 
     before the effective date under section 3(n) of the Leahy-
     Smith America Invents Act. The Patent Trial and Appeal Board 
     may be deemed to be the Board of Patent Appeals and 
     Interferences for purposes of such interference proceedings.
       (l) Patent and Trademark Public Advisory Committees.--
       (1) In general.--Section 5(a) of title 35, United States 
     Code, is amended--
       (A) in paragraph (1), by striking ``Members of'' and all 
     that follows through ``such appointments.'' and inserting the 
     following: ``In each year, 3 members shall be appointed to 
     each Advisory Committee for 3-year terms that shall begin on 
     December 1 of that year. Any vacancy on an Advisory Committee 
     shall be filled within 90 days after it occurs. A new member 
     who is appointed to fill a vacancy shall be appointed to 
     serve for the remainder of the predecessor's term.'';
       (B) by striking paragraph (2) and inserting the following:
       ``(2) Chair.--The Secretary of Commerce, in consultation 
     with the Director, shall designate a Chair and Vice Chair of 
     each Advisory Committee from among the members appointed 
     under paragraph (1). If the Chair resigns before the 
     completion of his or her term, or is otherwise unable to 
     exercise the functions of the Chair, the Vice Chair shall 
     exercise the functions of the Chair.''; and
       (C) by striking paragraph (3).
       (2) Transition.--
       (A) In general.--The Secretary of Commerce shall, in the 
     Secretary's discretion, determine the time and manner in 
     which the amendments made by paragraph (1) shall take effect, 
     except that, in each year following the year in which this 
     Act is enacted, 3 members shall be appointed to each Advisory 
     Committee (to which such amendments apply) for 3-year terms 
     that begin on December 1 of that year, in accordance with 
     section 5(a) of title 35, United States Code, as amended by 
     paragraph (1) of this subsection.
       (B) Deemed termination of terms.--In order to implement the 
     amendments made by paragraph (1), the Secretary of Commerce 
     may determine that the term of an existing member of an 
     Advisory Committee under section 5 of title 35, United States 
     Code, shall be deemed to terminate on December 1 of a year 
     beginning after the date of the enactment of this Act, 
     regardless of whether December 1 is before or after the date 
     on which such member's term would terminate if this Act had 
     not been enacted.
       (m) Report on Pre-GATT Applications.--Using existing 
     resources, not later than four months after the date of the 
     enactment of this Act, the Director of the United States 
     Patent and Trademark Office shall submit a report to the 
     Committees on the Judiciary of the United States House of 
     Representatives and the Senate that describes--

[[Page H6843]]

       (1) the total number of pending United States applications 
     for patent that--
       (A) are not subject to an order under section 181 of title 
     35, United States Code; and
       (B) were filed before the effective date of the amendments 
     made by section 532 of the Uruguay Round Agreements Act 
     (Public Law 103-465; 108 Stat. 4983);
       (2) the filing date of each such application;
       (3) the filing date of the earliest application for which 
     each such application claims the benefit of or a right of 
     priority to its filing date;
       (4) the inventor and assignee named on each such 
     application;
       (5) the amount of time that examination of each such 
     application has been delayed because of a proceeding under 
     section 135(a) of title 35, United States Code, an appeal to 
     the Patent Trial and Appeal Board under section 134(a) of 
     such title, a civil action in a United States District Court 
     under section 145 or 146 of such title, or an appeal to the 
     United States Court of Appeals for the Federal Circuit under 
     section 141 of such title; and
       (6) other information about such applications that the 
     Director believes is relevant to their pendency.
       (n) Clerical Amendment.--Section 123(a) of title 35, United 
     States Code, is amended in the matter preceding paragraph (1) 
     by inserting ``of this title'' after ``For purposes''.
       (o) Effective Date.--Except as otherwise provided in this 
     Act, the amendments made by this Act shall take effect on the 
     date of the enactment of this Act and shall apply to 
     proceedings commenced on or after such date of enactment.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
Texas (Mr. Smith) and the gentleman from Michigan (Mr. Conyers) each 
will control 20 minutes.
  The Chair recognizes the gentleman from Texas.


                             General Leave

  Mr. SMITH of Texas. Mr. Speaker, I ask unanimous consent that all 
Members may have 5 legislative days within which to revise and extend 
their remarks and include extraneous materials on H.R. 6621, as 
amended, currently under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from Texas?
  There was no objection.
  Mr. SMITH of Texas. Mr. Speaker, I yield myself such time as I may 
consume.
  Mr. Speaker, the Leahy-Smith America Invents Act, or AIA, was signed 
into law on September 16, 2011. It was the first major patent reform 
bill in over 60 years and the most substantial reform of U.S. patent 
law since the 1836 Patent Act. The Leahy-Smith AIA reestablishes the 
United States patent system as a global standard.
  Over the past year, the Patent Office has worked diligently to 
implement the provisions of the act to ensure that the bill realizes 
its full potential to promote innovation and create jobs. The bill that 
we consider today includes several technical corrections and 
improvements that ensure that the implementation of the bill can 
proceed efficiently and effectively.
  The bill is supported by all sectors of our economy from across the 
United States, including manufacturers, universities, technology, 
pharmaceutical and biotech companies, and innovators. I've also 
received letters in support from the Coalition for 21st Century Patent 
Reform, which represents manufacturers, pharmaceutical, technology, 
defense companies, and universities; the Innovation Alliance, which 
represents high-tech companies and licensors; and the BSA, the Business 
Software Alliance, which represents a range of high technology and 
software companies.
  The Leahy-Smith AIA fundamentally changes our Nation's innovation 
infrastructure. With any such substantive and wide-ranging legislation, 
unforeseen issues may arise as implementation occurs. H.R. 6621 
corrects many of these issues.
  This package consists of several technical corrections to the AIA 
that are essential to the effective implementation of the bill. Other 
technical corrections and improvements may arise in the future, for 
example, the issue surrounding the correction of the post-grant review 
estoppel provision in the Leahy-Smith AIA. This was the result of an 
inadvertent scrivener's error, an error that was made by legislative 
counsel. That technical error has resulted in an estoppel provision 
with a higher threshold than was intended by either House of Congress.
  Additionally, we must remain watchful as we examine ways to deal with 
the abusive and frivolous litigation that American innovators face from 
patent assertion entities or patent trolls.
  As the provisions of the Leahy-Smith AIA continue to take effect, our 
Nation's innovation infrastructure becomes much stronger, unleashing 
the full potential of American innovators and job creators.
  Mr. Speaker, I urge my colleagues to support this bill, and I reserve 
the balance of my time.
  Mr. CONYERS. Mr. Speaker, I yield myself such time as I may consume.
  Members of the House, I rise in support, as well, of H.R. 6621 
because it's a measure that improves the America Invents Act--the most 
significant reform to the Patent Act law since 1952--that was signed by 
President Obama last year.
  As many of my colleagues may recall, I had concerns about the act as 
to whether it would benefit large multinationals at the expense of 
independent inventors, and thereby harm job creation in our Nation. For 
this reason, I opposed the version of the patent bill that was 
considered by the House last year; but given the fact that this bill is 
now law, our focus should be on how it can be improved. That's why I 
support it presently, because it accomplishes that very goal in several 
respects.
  To begin with, this law clarifies that the Advice of Counsel section 
applies to civil actions commenced on or after the date of this 
legislation's enactment. Why is that important? Well, because the 
America Invents Act created a new section that prevents use of evidence 
of an accused infringer's failure to obtain advice of counsel, or his 
failure to waive privilege and introduce such opinion, to prove either 
willfulness or intent to induce infringement. This provision, however, 
failed to specify when the new authority would go into effect, and it 
makes a series of other technical clarifications to the act.
  In addition, we find that this bill is necessary and has made the 
necessary commonsense technical corrections and involves including any 
substantive revisions to the act. So it's my hope that the Judiciary 
Committee will continue its oversight of the act into the next Congress 
and consider ways in which it can be further improved.
  I commend the chairman of the committee for his moving this bill 
forward, and I urge my colleagues to support this legislation.
  I reserve the balance of my time.
  Mr. SMITH of Texas. Mr. Speaker, I yield 2 minutes to the gentleman 
from California (Mr. Rohrabacher).
  Mr. ROHRABACHER. Mr. Speaker, I rise in strong opposition to H.R. 
6621.
  The bill being considered is being promoted as a technical 
corrections piece of legislation, and by and large that's exactly what 
it is. But also, there is one provision in this bill that raises 
significant concerns and needs to be addressed. I would ask my friend 
from Michigan perhaps to consider this and perhaps reconsider his 
position on the bill, because I'm sure he does not know about this.
  Our country's patent system has long been one of the strongest in the 
world.

                              {time}  1310

  One of its basic tenets has been the steadfast adherence to the 
principle of total confidentiality of a patent application until the 
patent is granted. Congress has repeatedly stood by that principle even 
though there have been many powerful forces in this country trying to 
eliminate that concept, but we've stood by this principle that these 
applicants should have confidentiality as their application works its 
way through the patent system. It prevents the big guys with money and 
power from attacking and neutralizing the little guys with genius but 
few resources.
  H.R. 6621 threatens to disrupt this longstanding practice and 
principle by requiring the United States Patent and Trademark Office to 
submit a report to Congress on certain patent application sections. 
This report, as mandated by this bill, will include information about 
the applications that have been traditionally kept confidential, 
including the name of the inventor, which has always been confidential 
to prevent these inventors from attack by very powerful interests who 
would steal their invention.
  While the technical contents of the applications would be most likely 
not included in the report, this legislation

[[Page H6844]]

requires the PTO, in their report to Congress, to report the names of 
the applicants.
  The SPEAKER pro tempore (Mr. Yoder). The time of the gentleman has 
expired.
  Mr. SMITH of Texas. I yield the gentleman an additional 1 minute.
  Mr. ROHRABACHER. There is a requirement to report the names, so this 
bill requires in this report to have the names of the applicants and 
other identifying information that could be used by powerful outside 
groups--yes, read that foreign and multinational corporations--to make 
these applicants potential targets even before their patent is granted.
  Anonymity could easily be accomplished by a simple change to one 
section of this bill. Perhaps the PTO could create a unique identifier 
for each applicant so that they could easily be tracked but without 
giving risk that the public would know about this and be able to 
identify the inventor.
  We can make this a good bill. We just need to take a couple words out 
of it or one small section out of it, because as the ranking member 
suggested, it does a lot of good, but it does a lot of harm, much more 
harm, unless we take this out of the bill.
  So I would ask my colleagues to oppose this legislation until it is 
perfected so we are not going to hurt the little inventors and hurt our 
country's ability on the technology front by trying to make a few 
technical corrections to the way the Patent Office does its job.
  Mr. CONYERS. Mr. Speaker, I am pleased to recognize the ranking 
member of our Intellectual Property Subcommittee, Mel Watt of North 
Carolina. I yield him as much time as he may consume.
  Mr. WATT. Mr. Speaker, I rise in support of H.R. 6621, as amended.
  (Mr. WATT asked and was given permission to revise and extend his 
remarks.)
  Mr. WATT. And with having been granted that unanimous consent, I 
think I can submit substantially all of my statement into the Record. 
However, I did want to acknowledge the outstanding stewardship of Under 
Secretary of Commerce for Intellectual Property and the director of the 
Patent and Trademark Office, David Kappos, and his remarkable staff for 
their tireless efforts both in getting patent reform across the finish 
line and in the timely implementation of its provisions.
  In connection with these amendments to the bill, Director Kappos has 
announced that he intends to leave the Patent and Trademark Office in 
January. He will leave behind a long line of achievements and good will 
that were instrumental throughout this process, and he will leave 
behind a Patent and Trademark Office that is much better respected and 
equipped to serve the important purpose of recognizing and protecting 
our important intellectual property than the office was before he 
arrived there. His successor, no doubt, will have some big shoes to 
fill. And we wish Director Kappos all our best in all of his future 
endeavors.
  Mr. Speaker, after concerted effort over at least three terms of 
Congress, last year we completed a major overhaul of our patent system 
designed to afford American inventors with a more efficient, effective, 
and well-resourced patent office. President Obama signed the Leahy-
Smith America Invents Act into law on September 16, 2011. Since that 
time the PTO has been diligently working to implement the provisions of 
the Act which approved significant reforms designed to simplify the 
process for acquiring patents, enhance patent quality, reduce costs, 
improve fairness and make it easier for American inventors to market 
their products in the global marketplace.
  As with almost every piece of major legislation, the need for 
technical corrections and improvements became obvious after passage. 
H.R. 6621 goes a long way towards addressing the concerns which have 
been identified by staff, the patent office and various stakeholders in 
the time since the law's enactment.
  Among the provisions addressed by H.R. 6621, important adjustments 
have been made to ensure that inadvertent ``dead zones,'' in which post 
grant review proceedings could not be initiated as intended, are 
eliminated. H.R. 6621 will also tighten language to prevent dilatory 
tactics and gamesmanship in the newly created derivation proceedings. A 
third fundamental correction involves PTO funding and will guarantee 
that all PTO administrative costs will be covered either by patent fees 
or trademark fees.
  While there are other provisions of the America Invents Act that will 
likely require legislative corrections or adjustments, this bill, like 
the underlying Act, enjoys bipartisan support and should be passed.
  Mr. Speaker, I would also like to acknowledge the outstanding 
stewardship of Under Secretary of Commerce for Intellectual Property 
and Director of the PTO, David Kappos, and his remarkable staff for 
their tireless efforts both in getting patent reform across the finish 
line and in the timely implementation of its provisions. Director 
Kappos has announced that he intends to leave the PTO in January. He 
will leave behind a long line of achievements and good will that were 
instrumental throughout this process and he will leave behind a Patent 
and Trademark office that is much better respected and equipped to 
serve the important purpose of recognizing and protecting our important 
intellectual property than it was when he arrived. His successor, no 
doubt, will have some big shoes to fill. We wish Director Kappos the 
best in all his future endeavors.
  With that, Mr. Speaker, I urge support for H.R. 6621.
  Mr. SMITH of Texas. Mr. Speaker, I yield myself such time as I may 
consume.
  Mr. Speaker, The report on pre-GATT applications refers to 
applications that were filed prior to the Uruguay Round amendments 
taking effect in June 1995. The 103rd Congress intended for a brief 
transition period as the United States patent system was updated. 
Unfortunately, a small number of applicants have engaged in clearly 
dilatory behavior and continue to maintain pending applications with 
effective filing dates that predate 1995. In fact, some of these 
applications have been pending for 20, 30, and even 40 years.
  The 103rd Congress never intended for such applications to stay 
pending for half a century. To remove such technology from the public 
domain in 2012, would bear no relation to the patent system's 
Constitutional purpose to promote the progress of science and the 
useful arts.
  Now it is important for the 113th Congress and the Public to learn 
fully about these applications from the USPTO. The Committee expects 
that the report will contribute to an understanding of whether these 
applications present special circumstances that require further action 
to protect the public's interests.
  Those who may have concerns about this report must understand that 
there is no way to ``target'' these submarine applications--the targets 
are, in fact, the people who will be sued once these submarine patents 
surface. The real targets are American job creators like small 
businesses, innovators and university researchers. And the public has a 
right to know in advance if certain widely used and long known 
technology is about to be withdrawn from the public domain.
  The patent system was never intended to be a playground for trial 
lawyers and frivolous lawsuits. Sound patents should issue in a timely 
manner and should be used to create wealth and jobs.
  I urge my colleagues to support this bill, and I reserve the balance 
of my time.
  Mr. CONYERS. Mr. Speaker, I am pleased to yield back any time 
remaining on our side.
  Mr. SMITH of Texas. Mr. Speaker, I yield back the balance of my time, 
as well.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from Texas (Mr. Smith) that the House suspend the rules and 
pass the bill, H.R. 6621, as amended.
  The question was taken.
  The SPEAKER pro tempore. In the opinion of the Chair, two-thirds 
being in the affirmative, the ayes have it.
  Mr. ROHRABACHER. Mr. Speaker, on that I demand the yeas and nays.
  The yeas and nays were ordered.
  The SPEAKER pro tempore. Pursuant to clause 8 of rule XX, further 
proceedings on this question will be postponed.

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