Patent Reform Legislation
in the 106th Congress
This page summarizes two bills:
|This page was last updated on July 25, 1999.|
The American Inventors' Protection Act
Sponsors. Rep. Howard Coble (R-NC), the Chairman of the House Judiciary Committee's Subcommittee on Courts and Intellectual Property (CIP). Cosponsors. Howard Berman (D-CA), the Ranking Minority Member, Henry Hyde (R-IL), the Judiciary Committee Chairman, John Conyers (D-MI), the Ranking Minority Member, Dana Rohrabacher (R-CA), Tom Campbell (R-CA), Bob Goodlatte (R-VA), Zoe Lofgren (D-CA), William Delahunt (D-MA), Edward Pease (R-IN), Robert Wexler (D-FL), Elton Gallegly (R-CA), Chris Cannon (R-UT), Connie Morella (R-MD), Sue Kelly (R-NY), Adam Smith (D-WA), Ellen Tauscher (D-CA), Anna Eshoo (D-CA), Steve Largent (R-OK), Roscoe Bartlett (R-MD), Bob Franks (R-NJ), Barney Frank (D-MA), Brian Bilbray (R-CA), Martin Frost (D-TX), Tom Lantos (D-CA), John Sweeney (R-NY), Brad Sherman (D-CA), Calvin Dooley (D-CA), Jim McDermott (D-WA), Rick Boucher (D-VA), Rob Portman (R-OH), Jim Davis (D-FL), Grace Napolitano (D-CA), Carrie Meek (D-FL), Thomas Petri (R-WI), Charlie Norwood (R-GA), Cass Ballenger (R-NC), Nancy Johnson (R-CT), Ed Bryant (R-TN), Steven Rothman (D-NJ), Robert Ehrlich (R-MD), James Maloney (D-CT), Norman Dicks (D-WA), Melvin Watt (D-NC), David Dreier (R-CA), Bill McCollum (R-FL), Bruce Vento (D-MN), Ken Calvert (R-CA), David Price (D-NC), John Lewis (D-GA), Bob Clement (D-TN), Harold Ford (D-TN), James Moran (D-VA), Bob Etheridge (D-NC).
Republicans: 24. Democrats: 29. The bill is cosponsored by 11 of 15 members of the CIP Subcommittee. (Bono, Jenkins, Rogan and Sensenbrenner are not on the list.) It is also cosponsored by the Chairman and Ranking Minority Member of the full Judiciary Committee, and the Chairman of the Rules Committee. It is also cosponsored by Rep. Rohrabacher and Rep. Campbell, who led the fight against the "first to invent" defense provision in the 105th Congress.
Introduction. This is a huge bill that would significantly change U.S. patent law and procedure. This bill has a long history. The House passed a similar bill, HR 400 (105th Congress), in 1997. However, the Senate version of the bill, S 507 (105th Congress), was not passed. Rep. Coble and other House members have modified the bill to meet some objections, and are working again for passage.
Rep. Coble described the purpose of the bill at the first hearing on the bill:
"To advance American technology, strengthen our nation's global competitiveness, and to reward inventors on a more timely basis, we can't live with a patent system much of whose structure predates even the emergence of biotechnology, semiconductors, software, Internet and electronic commerce applications, and other high-growth technologies. This is not a big versus small debate. It is about making sure that the U.S. patent system is not undermined by our inaction. Reforms of the U.S. patent system are needed now. Our nation can ill afford for Congress to delay any further in enacting comprehensive amendments to our Patent Act ..." (See, 3/25/99 Coble statement.)
The bill has gone through two versions so far in 1999. First, there was the "Committee Print" dated March 22, 1999, and released to the public in paper format on March 25, 1999. Then, Rep. Coble formally introduced HR 1907 IH on May 24, 1999.
Summary. The following is a cursory title by title summary.
Title I, the "Inventors' Rights Act." This is the one title of the bill that is not controversial. It seeks to provide inexperienced inventors protection against fraudulent invention promoters. It would place new contract term disclosure and reporting requirements upon invention promoters. It carries over from HR 400. It is supported by the Patent and Trademark Office (PTO), Intellectual Property Owners Association (IPO), the American Intellectual Property Law Association (AIPLA), and other groups.
Title II, the "First to Invent Defense Act." The name "first to invent" is a misnomer, because one would need not be the first to invent to avail oneself of this provision. The term "prior user" is more descriptive.
Evolution of the First to Invent Defense
|HR 1907 IH (May 24, 1999): "It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims asserting a process or method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent."|
|Committee Print (March 24, 1999): "A person shall not be liable as an infringer under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims in the patent being asserted against such person, if such person had, acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent."|
|HR 400 (105th Congress, January 9, 1997): "A person shall not be liable as an infringer under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims in the patent being asserted against such person, if such person had, acting in good faith, commercially used the subject matter before the effective filing date of such patent."|
This has been controversial. Over time the scope of the defense has been continually narrowed in efforts to reduce opposition. It began very broadly in the 105th Congress by providing that anyone is not liable as an infringer who has commercially used the subject matter of the patent prior to the filing date for such patent.
The "Committee Print" added another requirement: that the subject matter must be reduced to practice at least one year prior to the patent filing. This did not eliminate the controversy.
Most of the CIP Subcommittee and the PTO supported it. (See, 3/25/99 testimony of PTO Commissioner Todd Dickinson.)
Others, such as Rep. Tom Campbell (R-CA) from Silicon Valley, and Rep. Dana Rohrabacher (R-CA), opposed it on the grounds that disclosure of inventions is one of the fundamental goals of the patent laws, but this exception gives inventors an incentive not to disclose. (See, 3/25/99 Campbell testimony and Rohrabacher testimony.) The Patent Office Professionals Association (POPA) shared this view.
In contrast, trade groups, such as the IPO and the AIPLA supported it. The arguments in favor of the provision include that the high cost of maintaining patents in many nations is prohibitively expensive, while inventions are many. For many companies, especially smaller ones, the most effective way to protect inventions, particularly regarding processes, is not to seek a multitude of patents, but to keep the inventions as trade secrets. The argument proceeds that such a company cannot be enjoined by a subsequent inventor who patents the invention.
The current version, HR 1907 IH adds two more aspects. First, it clearly states that the "first to invent" defense is a "defense", thus placing the burden of proof upon the infringer. Second, it applies to a "method or process", thus apparently eliminating products from the scope of the defense. Rep. Rohrabacher had suggested this process versus products compromise at the CIP Subcommittee hearing on March 25, 1999. This compromise is now in the bill. And, Rep. Rohrabacher and Rep. Campbell are now cosponsors.
Title III, the "Patent Term Guarantee Act." This title would extend the term of patents to compensate for certain processing delays. There are two separate extension sections. One would extend the term for up to ten years for administrative delays of the PTO. The other would give a diligent applicant a day for day extension for any time period that is longer than three years that the PTO took to issue a patent.
The purposes of this Title are twofold. First, this title would in effect guarantee a minimum patent term of 17 years for diligent applicants (20 year term, less three year PTO delay). Second, this Title seeks to diminish the practice of "submarining" patents. This is a practice, regarded by many as insidious, of filing a broad patent application, then engaging in dilatory tactics to perpetually delay the PTO, and hence, "submarine" the application. Then, long after, when someone else has put in the effort to commercialize the invention, "resurface" the application. The consequences for smaller companies victimized by this practice can be catastrophic.
Such submarine patents would be discouraged because the patent expiration date would be measured from the date of filing the application (not the date of granting the patent), and extensions would not be granted if delays resulted from the dilatory tactics of the applicant.
Title IV, the "U.S. Publication of Patent Applications Published Abroad Act." This title, which is also referred to as the "Publication of Foreign Applications Act," is controversial. It would require the publication of patent applications 18 months after filing if the application is also being filed abroad in a foreign country that requires publication of applications 18 months after filing. Present law keeps patent applications secret until a patent issues.
This is a compromise provision. While some argue for mandatory publication of all patent applications after 18 months, in the interest of dissemination of information, the "committee print" would create a carve out to this18 month rule for applicants only seeking U.S. patents.
Title V, the "Patent Litigation Reduction Act." This Title would reform the reexamination process. It would give third party requesters greater opportunities to participate in patent reexamination proceedings. It would also encourage third party requesters to utilize the reexamination proceedings, rather than the slower and more expensive U.S. District Court proceedings.
Title VI, the "Patent and Trademark Office Efficiency Act." This section is controversial. It would, among other things, convert the PTO into an independent agency under the policy direction of the Secretary of Commerce. Supporters argue that it would make the unwieldy PTO bureaucracy more efficient. Of course, the Clinton administration opposes this Title.
HR 400 had a similar provision. However, it would have converted the PTO into a wholly-owned government corporation.
Status. The House Courts and Intellectual Property Subcommittee released a "committee print" at a hearing on March 25, 1999. The CIP Subcommittee approved HR 1907 in form on May 20. The bill was formally introduced on May 24. The full Judiciary Committee approved the bill on May 26.
Legislative History with Links to Related Materials.
Patent and Trademark Office Reauthorization Act, Fiscal Year 2000
Sponsor. Rep. Howard Coble (R-NC). No cosponsors.
Summary. HR 1225 is a two page bill that would authorize $116 Million collected from fees to be made available for salaries and expenses of the Patent and Trademark Office in FY 2000. However, it expressly excludes post-retirement health and life insurance costs.
Status. This bill was introduced on March 23, 1999. It was one subject of a House Courts and Intellectual Property Subcommittee hearing on March 25, 1999.
Legislative History with Links to Related Materials.
Patent Fee Integrity and Innovation Protection Act of 1999
Sponsor. Sen. Orrin Hatch (R-UT). Cosponsor. Sen. Patrick Leahy (D-VT).
Status. This bill was introduced on June 22, 1999, and approved by the Senate Judiciary Committee on July 1.
Legislative History with Links to Related Materials.
Some Industry Groups Interested in Patent Reform.
Government Workers Interested in Patent Reform.