The Plot Thickens around H.R. 6621 -- Updated

by McDonnell Boehnen Hulbert & Berghoff LLP

Rep. Lamar Smith's H.R. 6621 came up for a vote today on the House floor under a suspension of the rules permitting the House to consider and vote upon the measure without debate.  In contrast with Rep. Smith's (at right) earlier version of the bill (see "Pre-GATT Patent Applications Threatened by Lamar Smith's H.R. 6621"), this version substituted the requirement for a "report" to Congress on the status of so-called "pre-GATT" applications rather than inserting into a law a provision that would effectively eliminate patent rights.

The new provision, Section 1(m), reads as follows:

(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.

This is a vast improvement over the earlier provision:

(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.

The revised bill also removes a provision that would have repealed 35 U.S.C. § 325(f) and thus subjected reissue patents to post-grant review.

The bill did not pass today, due in large measure to the objections of Rep. Dana Rohrabacher (R-CA) (at left).  Rep. Rohrabacher's objections were reportedly based on section 1(m)(4) of the bill, which would require the report to identify "the inventor and assignee named on each such application."  Although this information is routinely set forth in the PTO's PAIR database for applications filed after November 29, 2000 that are published (i.e., not subject to the non-publication provisions of the American Inventors Protection Act of 1999), Rep. Rohrabacher correctly notes that pre-GATT applications are entitled to non-disclosure of any part of their prosecution history until grant, being considered completely ex parte by the PTO.  It is unclear why Rep. Smith included this provision in the bill, unless he was persuaded that applicant delay (and thus culpability) was the source of the delay that has kept these applications pending and thus that there was a public interest justification in notifying competitors that such pre-GATT patents were pending.

This would not be surprising but it is wrong (and not the first time a misapprehension of the facts has motivated introduction of a provision in a patent reform bill; see "The (Un)Intended Consequences of the Law").  While these cases are somewhat of an embarrassment to the Office (insofar as their existence can be used to insinuate that the Office has been tardy in examining them), there is little evidence that applicants have "gamed" the system to delay grant.  The majority of these applications have been involved in protracted interferences, appeals, or had examination suspended for Office consideration of third party interferences that would influence the patentability of pending claims.  That applicants have not been responsible for the delay in prosecuting these applications is evidenced by the implementing legislation and PTO rules concerning these patents, which were drafted to prevent such shenanigans.  For example, "transitional" procedures adopted by the Office permitted an applicant to petition for withdrawal of the finality of a rejection but this opportunity could only be used twice; thereafter, the only recourse for pre-GATT applications was filing an appeal.  Filing a continuation or Request for Continued Examination in these applications strips such applications of their pre-GATT status and would result in the same loss-of-rights that the original version of the bill would cause.  The Office's carefully crafted rules were designed to minimize long pendencies for pre-GATT cases, a policy that undoubtedly is responsible for limiting the number of existing cases to 200.

The easiest path to passage would be for Rep. Smith to delete this requirement from the bill.  Whether he does so should shed some light on the motivations behind these provisions directed towards pre-GATT applications, although if the Office's performance regarding reports mandated by the Leahy-Smith America Invents Act are any guide, it may be a while before the Office can issue this latest report requested to satisfy the specific concerns of a Member of Congress (see "USPTO Report on Genetic Testing Delayed" and "USPTO to Hold Roundtable on Genetic Diagnostic Testing").

Update: Last night, the House passed an amended version of H.R 6621 by a 308-89 vote.  In the bill that was passed, § 1(m) was amended to only require a report on pre-GATT applications.


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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