The Status Quo Reigns in Senate's Version of H.R. 6621

by McDonnell Boehnen Hulbert & Berghoff LLP
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Washington - Capitol #2The Senate on Saturday passed an amended version (S. Amendment 3344) of H.R. 6621, Rep. Lamar Smith's bill "To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code."  In this version, the (in)famous, controversial and unnecessary provisions relating to so-called pending "pre-GATT" patent applications have been eliminated in favor of a totally unrelated clerical correction.

To recap, the original version contained the following provision in Section 1(m):

(m) Effective Date of Uruguay Round Agreements Act –
    (1) CERTAIN PATENT APPLICATIONS
- Notwithstanding section 534(b)(1) of the Uruguay Round Agreements Act (35 U.S.C. 154 note), section 154(a) of title 35, United States Code, as amended by section 532 of the Uruguay Round Agreements Act (Public Law 103-465; 108 Stat. 4809), shall apply, and section 154(c)(1) of title 35, United States Code, shall not apply, to any application that is –
        (A) filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and
        (B) pending on a date that is 1 year or more after the date of the enactment of this Act.
    (2) EFFECTIVE DATE – This subsection shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to any original plant or utility patent application that is pending on or after that effective date.

In order to garner the support of certain House members, particularly Rep. Dana Rohrabacher (R-CA), this provision was amended to require a PTO "Report" on these applications in an amended version of the provision:

(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--?
    (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.

The bill passed the House on a vote of 308-89 on December 18th (see "Congressional Misunderstandings (Apparently) Motivate H.R. 6621").

The Senate version of the bill contains this language in Section 1(m):

(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''.

The House was slated to pass this amended version of the bill late Sunday evening but did not; the bill may make it to the House floor on Monday.

Pre-GATT application owners are not out of the woods yet, however.  During remarks made on the Senate floor, Sen. Patrick Leahy (D-VT) said the following:

We must also continue to focus on the troubling problem of several hundred "pre-GATT" patent applications that have now been pending before the Patent Office for over 18 years.  The original version of this legislation in the House addressed that problem by providing a 1-year window for the pending applications to be processed.

Unfortunately, that language was removed before final passage in the House and replaced with a provision requiring the Patent Office to prepare a report.  The amended bill the Senate has passed today strikes the report, but I will work closely with the PTO to identify the cause of the delays and ensure that the PTO has the tools it needs to address any abuses by those who may be trying to game the system and use the patent laws to impede, rather than encourage innovation.

It should come as no surprise to anyone who has followed Sen. Leahy's many pronouncements on his AIA and the patent system that he shares with his colleagues in the House some of the misunderstandings of the laws he is creating.  It is up to members of the patent community to do what they can to correct these misperceptions if effective patent reform can be achieved.

Hat tip to Hal Wegner for details of these legislative machinations.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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