The America Invents Act and Competing Industry Concerns
The America Invents Act, a major patent reform bill, was passed by a large majority vote in the Senate on March 8, 2011, in a rare display of bipartisanship. The major provision of the bill was to change the way in which patents are issued from first-to-invent basis to a first-to-file basis. The Act contains provisions intended to safeguard inventors, such as the ability to request a post-grant review during the first nine months after issue, and a provision allowing third parties to submit prior art during patent examination. It also reforms funding for the Patent and Trade Office, allowing them more flexibility in setting fees and allowing them to keep what they collect in order to fund the office’s activities.
After the bill was passed by the Senate, Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released a statement, praising the bill: In a press release dated Mar 8. 2011 he states: “Once enacted into law, it will strengthen and improve our nation’s patent system, spurring innovation and job creation (1).” BIO was much cooler on the House’s version of the bill, however, raising concerns even before it came to the floor for a vote. Last week, the House Judiciary Committee met, and finalized a number of amendments to the bill. BIO’s reaction to the amended bill was immediate, and negative. In a statement (2) on Apr 15, 2011, Jim Greenwood states: “Unfortunately, given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration, we have no choice but to oppose floor consideration of the bill until this issue is repaired.” At issue is an amendment to the supplemental examination procedure. The Senate’s version of the bill would create a new supplemental examination procedure allowing patent owners to present additional information to the PTO during the life of the patent. Patent owners who use the procedure would be insulated against later claims of inequitable conduct to the extent they were based on the information considered by the PTO during the supplemental examination. Objections to this procedure were raised by the Generic Pharmaceutical Association. Their concern was that the provision “allows patent holders that knowingly falsify information in their original patent application . . . or intentionally omit material information in such filings, a mechanism to retroactively correct their filing without any consequences (3).” Rep. Robert Goodlatte (R-Va) introduced an amendment to the House bill that specifically addressed the issue of fraud. The amendment would bar supplemental examination proceedings if fraud on the Office was practiced or attempted in the prosecution of the original application. BIO objects strongly to this, stating: “The supplemental examination provision as passed by the Senate and originally included in the House bill would allow patent holders to seek a review of their issued patents at their own risk. The Goodlatte amendment undercuts this provision by creating disincentives for patent owners to use the new procedure by having the U.S. Patent and Trademark Office (PTO) act as quasi-investigative body (2).”
Both trade groups have legitimate concerns. The bill still requires a vote on the House floor, and then it must be reconciled with the Senate version before it can be signed into law. Considering how close the two versions are on the major issues, it is likely that a compromise bill will be achieved. This will leave at least one of the trade groups unsatisfied, but that’s the nature of compromise.
1. http://bio.org/news/pressreleases/newsitem.asp?id=2011_0331_02
2. http://bio.org/news/pressreleases/newsitem.asp?id=2011_0415_01
“in a rare display of bipartisanship”
The vote was not bipartisan, but rather partisan…partial to big business interests. The Senate sold out inventors and small entities for large corporate campaign contributions.
The bill is improperly named. It should be titled the “America Kills Inventors Act”.
Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.
Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion’s share of new jobs.
Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.
http://docs.piausa.org/