Re-posted by Houston Lawyer and Law News - House Judiciary Chairman Lamar Smith, R-Texas, recently unveiled H.R. 1249, the America Invents Act, the long-awaited House companion to S.23. Despite overwhelming support for S.23, the Senate version of the U.S. Patent Reform bill that passed by a margin of 95-5 earlier this month, the House's companion bill could face significant opposition from both sides of the aisle. While the House version bears substantial similarity to its Senate companion--transitioning to a first-to-file system, establishing post-grant review procedures, and providing more fee-setting authority to the U.S. PTO--several key differences have led to early disagreements between lawmakers and industry groups.
For example, the House bill expands prior user rights, which provide a defense against claims of infringement in certain cases for products and processes in commercial use for at least a year. The current system limits the application of prior user rights to the context of business method patents, while the House version of the bill would make such rights applicable to essentially all technological inventions. Rep. Jim Sensenbrenner, R-Wis., worried that expansion of prior user rights could be tantamount to legalizing piracy, calling it a "get out of jail free card" for Chinese intellectual property pirates. Executive Vice President of the Association of American Universities John Vaughn claims such an expansion could severely damage universities' ability to protect their patents, and that companies should be free to choose to develop products via a trade secret route, but should be aware of the risks in doing so. Cisco Systems Inc. Senior Vice President and general counsel Mark Chandler provided the other side of the argument, saying a switch to first-to-file without an expansion of prior user rights would allow challengers to hold companies hostage with bogus claims on improvements to existing products.
Procter & Gamble Co. Vice President and general counsel for intellectual property Steven Miller cited the prior user rights issue among a number of provisions that could lead to stakeholders pulling their support for the legislation. Other provisions Miller said would contribute to discord included the higher threshold set in the bill for post-grant reviews, and provisions limiting venue and establishing a loser-pays regime in the transnational program handling business method patents. Among the squabbling, Chairman Smith called on lawmakers to "maintain a broader perspective if we want to enact a bipartisan, bicameral bill to modernize the patent system." Even if the House bill moves to a vote and passes, differences between the House and Senate versions will necessitate further negotiations regarding the final language in conference. Most experts, however, expect that the bill, in some form, will reach President Obama's desk sometime this year, perhaps within the next few months. [http://www.fdalawyersblog.com]
For example, the House bill expands prior user rights, which provide a defense against claims of infringement in certain cases for products and processes in commercial use for at least a year. The current system limits the application of prior user rights to the context of business method patents, while the House version of the bill would make such rights applicable to essentially all technological inventions. Rep. Jim Sensenbrenner, R-Wis., worried that expansion of prior user rights could be tantamount to legalizing piracy, calling it a "get out of jail free card" for Chinese intellectual property pirates. Executive Vice President of the Association of American Universities John Vaughn claims such an expansion could severely damage universities' ability to protect their patents, and that companies should be free to choose to develop products via a trade secret route, but should be aware of the risks in doing so. Cisco Systems Inc. Senior Vice President and general counsel Mark Chandler provided the other side of the argument, saying a switch to first-to-file without an expansion of prior user rights would allow challengers to hold companies hostage with bogus claims on improvements to existing products.
Re-posted by Houston Lawyer and Law News
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