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

by McDonnell Boehnen Hulbert & Berghoff LLP

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 –
- 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.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.