[Congressional Record (Bound Edition), Volume 158 (2012), Part 13]
[House]
[Pages 18400-18403]
[From the U.S. Government Publishing Office, www.gpo.gov]




      CORRECTING AND IMPROVING THE LEAHY-SMITH AMERICA INVENTS ACT

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

       Senate amendment:
       Strike all after the enacting clause and insert the 
     following:

     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

[[Page 18401]]

     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) 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''.
       (n) Effective Date.--Except as otherwise provided in this 
     Act, the amendments made by this Act shall take effect on the 
     date of 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 Virginia (Mr. Scott) 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 the matter 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.
  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 the global standard.
  Over the past year, the Patent Office has worked diligently to 
implement the provisions of the Leahy-Smith AIA in order 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 all across the United States, including 
manufacturers, universities, technology, pharmaceutical and biotech 
companies, and innovators.
  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, so I urge 
my colleagues to support this bill.
  I reserve the balance of my time.
  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 re-establishes 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 Leahy-Smith AIA 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 all across 
the United States, including manufacturers, universities, technology, 
pharmaceutical and biotech companies and innovators.
  I have 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 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 Act.
  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.
  The modified bill passed by the Senate takes out the report on pre-
GATT patents. Even though the report is no longer mandated, it is 
within PTO's existing authority to conduct such a study, and I would 
call on them to do so.
  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. SCOTT of Virginia. Mr. Speaker, I yield myself such time as I may 
consume.
  I rise in support of the Senate amendment to H.R. 6621 because the 
measure improves the America Invents Act--the most significant reform 
to the Patent Act since 1952--that was signed into law by President 
Obama last year. Earlier this month, the House passed H.R. 6621 by a 
vote of 308-89. The Senate subsequently passed the legislation with an 
amendment by unanimous consent. Now that the America Invents Act is 
law, our focus should be on how it can be improved, which is why I 
support H.R. 6621, because it accomplishes that very goal in several 
respects.
  To begin with, H.R. 6621 clarifies and improves the provisions to 
help implement the America Invents Act. The bill clarifies provisions 
dealing with patent term adjustments, derivation proceedings, 
inventor's oath, and the terms of the Patent Public Advisory Committee.
  The Senate amendment to this bill makes one change to the House-
passed bill by removing the provision requiring the Patent Office to 
prepare a report on pre-GATT patent applications that have now been 
pending before the Patent Office for over 18 years. Although this 
provision has been removed, we must continue to study ways to improve 
the patent system and make sure that there are not delays to receiving 
patent protection.
  The bill clarifies the act's advice of counsel section as it applies 
to civil actions commenced on or after the date of this legislation's 
enactment. This is important because the original bill created a new 
section 298 of title XXXV that prevents the 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. The provision, however, 
failed to specify when the new authority would go into effect, and it 
would be unfair to apply the new rule retroactively to pending cases 
which anticipate using such evidence.
  In addition, H.R. 6621 makes a series of other technical 
clarifications to the act. In some, the bill makes necessary 
constructive technical corrections to the America Invents Act and 
avoids including any substantive revisions to the act.
  It is 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 urge my colleagues to support the bill.
  I yield back the balance of my time.
  Mr. SMITH of Texas. Mr. Speaker, I yield back the balance of my time.
  Mr. Speaker, I submit the following.


                       Section-by-Section Summary

       (a) Advice of Counsel. The AIA's section 17 created a new 
     Sec. 298 of title 35 that bars the 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. 
     Section 17, however, neglected to specify when this new 
     authority became effective. As a result, Sec. 298 is subject 
     to the default effective date at section 35 of the AIA, and 
     applies only to patents issued one year or later after 
     enactment of the AIA. This subsection makes Sec. 298 
     applicable to all civil actions commenced after the enactment 
     of this Act.
       (b) Transitional Program for CBMs. This subsection corrects 
     two scrivener's errors in section 18 of the AIA. These 
     changes have no substantive effect.

[[Page 18402]]

       (c) Joinder of Parties. This subsection corrects a 
     scrivener's error in the new Sec. 299 of title 35. This 
     change has no substantive effect.
       (d) Dead Zones. This subsection fixes two provisions that 
     inadvertently make it impossible to seek either post-grant or 
     inter partes review of a patent during certain time periods. 
     Section 311(c) of title 35 bars anyone from seeking inter 
     partes review of a patent during the first nine months after 
     the patent issues, or until a post-grant review of a patent 
     is completed if such review is instituted. Section 311(c) was 
     intended to preclude challengers from using IPR during the 
     period when they can instead use PGR. The problem with the 
     provision is that, during Senate floor consideration of the 
     AIA in March 2011, another provision was added to the bill 
     via the managers' amendment that allows only first-to-file 
     patents to be challenged in PGR. This provision, at section 
     6(f)(2)(A) of the AIA, was intended to allow USPTO a longer 
     period to prepare to conduct PGR proceedings, and to exclude 
     patents that raise discovery-intensive invention-date and 
     loss-of-right-to-patent issues from PGR. However, Sec. 311(c) 
     takes effect and applies to all petitions for IPR that are 
     filed on or after September 16, 2012. Yet for several years 
     thereafter, almost all patents that are issued will still be 
     first-to-invent patents. And under Sec. 311(c) of title 35, 
     these patents cannot be challenged in IPR during the first 9 
     months after their issuance, while under section 6(f)(2) of 
     the AIA, these patents cannot be challenged in PGR. Paragraph 
     (1) eliminates this nine month ``dead zone'' by making 
     Sec. 311(c) inapplicable to patents that are first-to-invent 
     patents and are thus ineligible for PGR.
       Paragraph (2) addresses another dead zone that is unique to 
     reissue patents. Under Sec. 311(c) of title 35, IPR cannot be 
     sought during the nine months after a patent is reissued. 
     This limit was imposed in order to force challengers to bring 
     a PGR challenge (rather than IPR) against what is, in effect, 
     a new patent. However, Sec. 325(f) of title 35 then bars a 
     challenge to any claim in a reissue patent that is 
     ``identical'' to or ``narrower'' than the claims in the 
     original patent. As a result, such ``identical'' or 
     ``narrower'' claims could not be reviewed in either a PGR or 
     an IPR during the nine months after a reissue. Paragraph (2) 
     eliminates this dead zone by repealing section 311(c)(1)'s 
     limit on filing a petition for inter partes review after a 
     patent has been reissued.
       (e) Correct Inventor. This subsection amends the 
     authorization of settlement in derivation proceedings to 
     refer to ``correct inventor'' in the singular, out of 
     recognition of the fact that it is the entire inventive 
     entity that must be named in the settlement agreement. This 
     change has no substantive effect.
       (f) Required Oath. Paragraph (1) liberalizes the time 
     allowed for an applicant to file the required oath or 
     alternative statement, allowing him to file as late as 
     payment of the issue fee (rather than requiring filing prior 
     to allowance). Paragraph (2) corrects Sec. 115(g)(1) by using 
     ``that claims'' rather than ``who claims,'' since the 
     antecedent for these words is ``application'' rather than 
     ``inventor.'' Paragraph (2)'s change has no substantive 
     effect. (USPTO requests.)
       (g) Travel Expenses and Payment of Administrative Judges. 
     Section 21 of the AIA, which makes minor changes to the law 
     regarding the compensation of USPTO employees for travel and 
     the payment of APJs, was not given its own effective date. 
     This subsection makes these provisions effective upon 
     enactment of the AIA.
       (h) Patent Term Adjustments. This subsection clarifies and 
     improves certain requirements for seeking patent-term 
     adjustments. These changes allow USPTO to provide notice of 
     its PTA determination at the same time as the grant of a 
     patent, and effectively require an applicant who wishes to 
     pursue a civil action under paragraph (4)(A) of Sec. 154(b) 
     to exhaust remedies provided under paragraph 3(B)(ii). These 
     changes are minor, and only apply prospectively to PTAs that 
     are determined and to Sec. 154(b)(4)(A) actions that are 
     commenced after the enactment of this Act. (USPTO request.)
       The Committee is aware that the district court for the 
     Eastern District of Virginia, on November 1 of this year, 
     issued a decision in the case of Exelixis v. Kappos that 
     appears to have adopted a highly problematic interpretation 
     of the patent term adjustment allowed by Sec. 154(b)(1)(B). 
     For reasons that remain unclear, the court concluded that 
     continuations and other events described in the ``not 
     including'' clauses of that subparagraph should not be 
     excluded from the subparagraph's calculation of patent term 
     adjustment, but instead must be read only to toll the three-
     year clock that determines when patent term adjustment begins 
     to accrue under subparagraph (B). The district court's 
     interpretation of subparagraph (B) thus would allow patent 
     term adjustment to accrue for any continued examination 
     sought after the three-year clock has run. Such a result, of 
     course, would allow applicants to postpone their patent's 
     expiration date through dilatory prosecution, the very 
     submarine-patenting tactic that Congress sought to preclude 
     in 1994 when it adopted a 20-year patent term that runs from 
     an application's effective filing date.
       Despite the absurd and undesirable results that would 
     appear to flow from the district court's interpretation, the 
     Committee declines to address this matter at this time. This 
     case was brought to the Committee's attention only very 
     recently, precluding the thorough consideration and 
     consultation that is appropriate before legislation is 
     enacted. Moreover, Congress is not in the business of 
     immediately amending the United States Code in response to 
     every nonfinal legal error made by a trial court. The 
     Committee, of course, reserves the right to address this 
     matter in the future. In the meantime, the fact that the 
     present bill does not amend Sec. 154(b) to address the 
     Exelixis decision should not be construed as congressional 
     acquiescence in or agreement with the reasoning of that 
     decision.
       (i) Improper Applicant. This subsection repeals an 
     unnecessary limitation on who may file an international 
     application designating the United States. (USPTO request.)
       (j) Financial Management Clarifications. This subsection 
     makes several technical changes to Sec. 42 of title 35, 
     concerning USPTO funding. These changes: (1) ensure that the 
     rule requiring that patent fees be spent for patent purposes 
     also applies to RCE fees; and (2) ensure that all USPTO 
     administrative costs will be covered by either patent fees or 
     trademark fees. (USPTO request.)
       (k) Derivation Proceedings. Currently, the third sentence 
     of Sec. 135(a) will allow a derivation proceeding to be 
     sought only within the year after the victim's claim that has 
     been the target of derivation has published. It is possible, 
     however, that a deriver could file first, but delay claiming 
     the derived material until more than a year has elapsed after 
     the victim's claims have published, in other words, until 
     after the current deadline has lapsed. The changes made by 
     this subsection preclude such a scenario by requiring the 
     proceeding to be sought during the year after the publication 
     of the deriver's claim to the invention. These changes also 
     add a definition of ``earlier application'' to Sec. 135(a), 
     correct inconsistencies in the AIA's version of Sec. 135(a), 
     and authorize the PTAB to conduct, and the courts to hear 
     appeals of, interferences commenced after the effective date 
     of the AIA's amendments to Sec. 135(a). (USPTO request.)
       (I) Terms of Public Advisory Committee Members. This 
     subsection makes the terms of PPAC and TPAC members run for 3 
     years from a fixed date (rather than from the date that they 
     are appointed), and requires Chairmen and Vice Chairmen to be 
     designated from among existing members. (Current law 
     designates only a Chairman and gives him a 3-year term.) 
     These changes will produce better coordination of members' 
     terms, will allow experienced Chairmen to be appointed 
     without requiring such individuals to serve two 3-year terms, 
     and will provide for automatic replacement of a Chairman who 
     does not complete his term of service. (AIPLA request.)
       (m) Report on pre-GATT Applications. The URAA amendments 
     took effect on June 8, 1995 but were made inapplicable to 
     applications filed before that effective date. Unfortunately, 
     a small number of applicants may have engaged in clearly 
     dilatory behavior and continue to maintain pending 
     applications with effective-filing dates that precede the 
     URAA effective date.
       It is highly unlikely that the 103d Congress ever conceived 
     that its amendments to Sec. 154(a) would remain inapplicable 
     to applications still pending in this Congress. The issuance 
     of any such patent at this late date would be grossly 
     prejudicial to the public. Many of these applications claim 
     invention dates in the 1980s, and some even claim priority 
     dates in the 1970s. To remove such technology from the public 
     domain in 2012 would work a clear injustice on the public, 
     and would bear no relation to the patent system's purpose of 
     promoting the progress of science and the useful arts.
       An earlier version of this Act included a provision that 
     would have required these applicants to complete prosecution 
     of these applications promptly after the enactment of the 
     Act. To avoid controversy that might delay the enactment of 
     this Act, the present Act substitutes the earlier proposal 
     with a requirement that USPTO issue a report that will 
     provide Congress and the public with relevant information 
     about these applications. The Committee expects that the 
     report will contribute to an understanding of whether these 
     applications present special circumstances that require 
     further legislative, executive, or judicial action in order 
     to ensure transparency and protect the public's interests.
       (n) Micro Entity Definition. This subsection corrects a 
     scrivener's error in the AIA's definition of the ``micro 
     entities'' that are entitled to a fee reduction. This change 
     has no substantive effect.
       (o) Default Effective Date. This subsection provides that 
     the amendments made by this Act apply to proceedings 
     commenced on or after the enactment of the Act, except where 
     the provisions of the Act include their own effective date or 
     modify an existing law's effective date.


                 Other Issues for Future Consideration

       Post-Grant Review Could-Have-Raised Estoppel. The version 
     of post-grant review that

[[Page 18403]]

     was enacted by the Leahy-Smith America Invents Act bars a 
     petitioner who completes such a review from challenging any 
     of the claims of the patent that were reviewed in the 
     proceeding on any ground that the petitioner ``could have 
     raised'' in the post-grant review. Although this broad 
     estoppel first appeared in the bill that was reported by the 
     House Judiciary Committee in June 2011, no amendment adopted 
     by the committee authorized such a change. The change appears 
     to have been made by staff charged with making technical 
     corrections to the bill, who apparently assumed that the 
     omission of could-have-raised estoppel in Sec. 325(e)(2) was 
     an oversight.
       The application of a civil-litigation could-have-raised 
     estoppel to PGR would cripple that proceeding if it is not 
     corrected. All validity issues can be raised in PGR, and must 
     be raised during the first nine months of the patent's life 
     and without the benefit of discovery. Thus if could-have-
     raised estoppel were applied to PGR, a PGR challenger would 
     effectively have to waive the possibility of raising any 
     validity defense against the patent if he is later sued for 
     infringement--and all without an opportunity to adequately 
     investigate enablement and other discovery-intensive issues. 
     In order to ensure that the post-grant review system that 
     USPTO has recently implemented does not simply become a white 
     elephant, it is important that this scrivener's error be 
     corrected in the future. And, lest anyone suggest that the 
     correction of this error is properly regarded as 
     controversial, allow me to note that this correction would 
     simply conform the PGR estoppel provisions to those of the 
     bill that passed the Senate on March 8, 2011, by a vote of 
     95-5.

  Mr. COBLE. Mr. Speaker, the Leahy-Smith America Invents Act, or 
``AIA,'' which was signed into law on September 16, 2011, is the most 
substantial reform of U.S. patent law since the 1836 Patent Act. The 
AIA re-establishes the United States patent system as the global 
standard. The bill that we discuss today, H.R. 6621, makes necessary 
technical corrections to the AIA to ensure that the bill realizes its 
full potential to promote innovation and create jobs.
  The AIA represented the culmination of nearly a decade of work by 
Members, key staff, and officials from both the Bush and Obama 
Administrations. The bill helps to bring our patent system into the 
21st century and sets our nation's innovation infrastructure on the 
right path for decades to come.
  At the center of our successful efforts to enact the AIA and this 
technical corrections measure over the last decade has been Blaine 
Merritt, the Chief Counsel of the Committee on the Judiciary's 
Subcommittee on Intellectual Property, Competition and the Internet.
  Blaine has been a constant and tireless public servant, who has 
served the American people with quiet distinction and professionalism 
for nearly three decades. On the occasion of his retirement from the 
U.S. House of Representatives, I want to note a few of his many 
contributions to our work and to the betterment of the American people. 
A native of Greensboro, North Carolina, Blaine's congressional career 
began in 1985 in our office where he began his public service as a 
Legislative Assistant. In 1988, he was promoted to Legislative 
Director, a position he served in until he was called to serve on the 
professional staff of the Committee on the Judiciary in 1997.
  Once on the Committee, Blaine was appointed Chief Counsel to the 
subcommittee with oversight over our intellectual property laws and 
courts related issues in 2000. In that capacity, Blaine served three 
successive Republican Chairmen-Representatives Henry Hyde,  Jim 
Sensenbrenner and  Lamar Smith.
  During his service on the Judiciary Committee, Blaine established 
himself and became recognized as one of our nation's foremost 
authorities on the law of patents, copyrights and trademarks as well as 
an expert on all matters that relate to the Federal judiciary and 
congressional procedure.
  Blaine's contributions to landmark legislation are innumerable. 
Counted among the bills he helped to steer to enactment are the 
American Inventor's Protection Act (AIPA), the Digital Millennium 
Copyright Act (DMCA) and the aforementioned Leahy-Smith AIA of 2011.
  Mr. Speaker, I've been blessed to represent the good citizens of the 
Sixth District of North Carolina, from where Blaine hails, since 1985. 
Throughout my tenure, I and countless other Members of the ``People's 
House'' have benefitted from his sound counsel, seasoned judgment and 
quiet leadership.
  As Blaine embarks upon the next phase of his career, I hope he takes 
a little time to relax and watch his beloved ``Blue Devils'' basketball 
team that is undefeated and ranked number one in the Nation. I thank my 
friend for his invaluable service and wish him ``Fair Winds and 
Following Seas'' always.
  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 
concur in the Senate amendment to the bill, H.R. 6621.
  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. SCOTT of Virginia. Mr. Speaker, I object to the vote on the 
ground that a quorum is not present and make the point of order that a 
quorum is not present.
  The SPEAKER pro tempore. Pursuant to clause 8 of rule XX, further 
proceedings on this question will be postponed.
  The point of no quorum is considered withdrawn.

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