[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.
____________________