Patent Reform Moves One Step Closer to Obama’s Desk
By: Chelsea A. Loughran
The House version of Patent Reform, now formally known as the “Leahy-Smith America Invents Act” was approved by the House of Representatives on June 23, 2011 by a bipartisan vote of 304-117 (with 168 Republicans and 136 Democrats voting for the Act).
As described in Wolf Greenfield’s May IP Outlook, the Senate version of the Act was passed in March, and both the House and Senate versions provide for changing the U.S. patent system from a “first-to-invent” system to a “first-to file” system. Because the two versions still differ, a House and Senate reconciliation hearing will be necessary to establish a single piece of legislation for ultimate sign-off by President Obama.
One of the most significant variations between the two versions of the Bill as it stands now relates to US Patent and Trademark Office (PTO) funding; more specifically, how to handle the fees the PTO collects. The Senate would allow the PTO to keep the fees it collects for use in funding PTO operations, but the House would require these fees be appropriated to the PTO (from a special account maintained by Congress exclusively for the PTO) in an amount dependent upon Congress’ annual determination. Opponents of the House version argue that it does not constitute a significant change from the current PTO funding scheme – which most believe has caused the PTO’s backlog of over one million patent applications.
Other notable—though not highly controversial—deviations in the House version as compared with the Senate version include:
- A sunset provision that would terminate the PTO Director’s authority to set or adjust fees after seven years (from date of enactment);
- A pro bono program to provide legal services to “financially under-resourced” independent inventors and small businesses;
- A denial of the post-grant supplemental examination procedure if an applicant committed fraud on the Patent Office; and
- A study on effective ways to provide independent genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. (This provision likely comes from controversial questions raised by the Myriad litigation currently before the Federal Circuit.)
A date for the House and Senate reconciliation hearing has not yet been set.
