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AIA Technical Amendment Clears Congress Minus Pre-GATT Patent Application Provision

Thursday, January 3, 2013

Both houses of Congress approved legislation at the end of the year that mostly makes technical corrections to the 2011 patent reform bill, the America Invents Act.

H.R. 6621 fills in some gaps in the AIA and clarifies some items that were not particularly controversial, and goes beyond the AIA only in the area of patent term adjustments.

The approved version deleted a provision, sought by the bill's sponsor, Rep. Lamar S. Smith (R-Texas), aimed at discovering information on “pre-GATT” patent applications. The applications in question would get 17 years patent protection if granted and remain secret until issuance, since they were filed before the Patent Act provided for publication 18 months after filing. They are often derided as “submarine” patents that will read on products that have long been in the market but whose scope is unknown to the product makers.

Also not in the bill, to Smith's dismay, is any correction of what he termed a “scrivener's error” in the estoppel language related to the new post-grant review proceeding in the Patent and Trademark Office. Smith and his Senate counterpart on patent reform, Sen. Patrick J. Leahy (D-Vt.), vowed to pursue further legislation to deal with that issue in the next Congress.

Controversy in Pre-GATT Application Handling.

The possibility of a technical amendment to the patent reform legislation had been rumored virtually since the AIA was enacted Sept. 16, 2011 (184 PTD, 9/22/11). That possibility was discussed in detail during Senate and House Judiciary Committee hearings on AIA implementation in May and June (119 PTD, 6/21/12;99 PTD, 5/23/12).

Smith introduced H.R. 6621 in the House of Representatives Nov. 30 (233 PTD, 12/5/12). Though he labeled the bill an intent to “correct and improve certain provisions” of the AIA, he created a controversy with a provision related to very old patent applications.

As part of the agreements entered into under the General Agreement on Tariffs and Trade agreement, the Uruguay Round Agreements Act of 1994 changed the term of patent protection from 17 years from issue to 20 years from the date the application is filed. Patents ensuing from applications filed before June 7, 1995, get the former term; patents issuing based on applications filed on or after that date have 20 years from issue, per 35 U.S.C. 154(a).

Several pre-GATT applications are still being prosecuted at the PTO, with no decision yet on whether they will be granted. So, for example, a patent on an application filed June 1, 1995, could be granted Dec. 31, 2012, and with 17 years of protection, still be enforceable 35 years after it was filed.

Smith's original H.R. 6621 would have forced disposition of these old applications one way or another. It would have eliminated the 17-years-from-issuance option for any patent that is “pending on a date that is 1 year or more after the date of the enactment of this Act.” However, the bill made no distinction between delays caused by an applicant or by PTO examiners and administrators that would push the issuance beyond the one-year limit.

After some negative reaction from the patent community, Smith backed off a bit. The original provision was replaced with a call for a PTO report that would include information on each pre-GATT application, including prosecution history, status, and “the inventor and assignee named on each such application.”

Final Bill Eliminates Provision.

Even that provision was challenged on the House floor, though (244 PTD, 12/20/12). Rep. Dana T. Rohrabacher (R-Calif.) objected to the requirement that the PTO identify the names of the applicants. He said it was a violation of the confidentiality expected by patent applicants. He likely was referring to applications, including the pre-GATT applications, that were filed prior to passage of the American Inventors Protection Act of 1999, which required the PTO to publish applications and identifying information 18 months after filing.

Despite the objection, the version of the bill requiring the PTO report was not amended prior to its Dec. 18 approval in the House by a vote of 308-89.

Clearly, Rohrabacher was not alone in his concern, however, as evident by action on the bill in the Senate. Leahy introduced H.R. 6211 in the Senate for a vote Dec. 28, but with the report provision deleted.

Leahy acknowledged the deletion but said the pre-GATT applications still represent a “troubling problem.” He approved of Smith's original proposal to set the one-year deadline to resolve the applications and said it was unfortunate that the provision was removed. Leahy's deletion of the provision thus undoubtedly was in response to a threat to filibuster by a senator agreeing with Rohrabacher's view--a filibuster that would have made it impossible to pass H.R. 6621 before the end of the 112th Congress.

“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,” Leahy said.

The Senate approved the bill by unanimous consent under suspension of the rules. It then went back to the House.

Smith reintroduced H.R. 6621 Dec. 30. “The modified bill passed by the Senate takes out the report on pre-GATT patents,” he said. “Even though the report is no longer mandated, it is within PTO's existing authority to conduct such a study, and I would call on them to do so.”

The bill was approved under suspension of the rules by voice vote in the House Jan. 1.

Mostly Minor Changes.

Some changes made by H.R. 6621 are minor, such as merely correcting typographical errors. Two others clarify that Congress meant certain AIA provisions--Section 298 on Advice of Counsel, which disallows as evidence of willfulness a failure to seek advice of counsel, and “Travel Expenses and Payment of Administrative Judges”--to become effective Sept. 16, 2011, rather than on the “default” effective date one year later.

Another example of a change was to fill in gaps left in the AIA. The institution of “derivation proceedings,” as described in a new 35 U.S.C. §135(a), was minimally described in the AIA. Section 1(k) of H.R. 6621 provides the details on how those proceedings are to be conducted. Also, as to settlements agreed to under Section 135(e), the AIA allowed a settlement to correct “inventors” in the plural, and the amendment makes that singular. The settling parties would thus have to choose only one inventor and the PTO would not allow a joint inventorship resolution.

One change not related to an AIA provision but also not related to substantive patent prosecution or litigation is a modification to the terms of members of the Patent Public Advisory Committee.

Dead Zones Eliminated.

Perhaps the most significant modification to the AIA's provisions is related to “dead zones” that resulted from limitations on filing two new procedures aimed at encouraging challenges to issued patents--post-grant review (PGR) and inter partes review (IPR).

A PGR petition can be filed challenging only those patents issued on applications filed on or after March 16, 2013. An IPR challenge must wait at least nine months to allow a PGR challenge to go first.

The first dead zone is relevant to patents on applications filed before March 16, for which there would thus be no PGR challenge possible and a wait before a nine-month delayed IPR challenge could be filed. The technical amendment legislation eliminates that dead zone by allowing IPR petitions to be filed immediately after a patent issues if its corresponding application only claims subject matter filed before March 16.

A second dead zone addressed by H.R. 6621 relates to reissue patents. Smith's original proposal was to delete Section 325(f), which bars a PGR challenge to reissue patents with identical or narrower claims, thus again leaving another nine-month wait for potential IPR challengers. H.R. 6621 as passed eliminates the IPR waiting period with respect to reissue patents, leaving the PGR bar intact.

Decrease in Some PTA.

H.R. 6621 modifies Section 154(b), Patent Term Adjustments, as well. The changes are only peripherally related to AIA provisions on foreign applications and venue for challenging PTO decisions.

The “A” and “B” delay adjustments for the PTO's failure to meet certain deadlines, as they apply to applications first filed overseas, would use “commencement of the national stage” as the start date. This eliminates the option to start counting as of the filing date of an international PCT application, which precedes the national stage beginning.

H.R. 6621 further makes clear that an appeal of a PTA calculation must be made exclusively to the U.S. District Court for the Eastern District of Virginia, but the appeal, which now must wait until after the patent issues, could be made after “the date of the Director's decision on the applicant's request for reconsideration.”

Estoppel 'Scrivener's Error' Correction Ahead?

Both Smith and Leahy expressed disappointment that H.R. 6621 did not include one more change to the AIA.

The AIA's new Section 325(d) of the Patent Act, 35 U.S.C. §325(d) estops a PGR challenger from further litigation “with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” Testimony in the House Judiciary Committee's May hearing contended that patent reform combatants had agreed that the estoppel should have been limited to grounds raised (99 PTD, 5/23/12).

The AIA text thus contained “an inadvertent 'scrivener's error,' an error that was made by legislative counsel,” Smith said in Dec. 30 House floor comments. “That technical error has resulted in an estoppel provision with a higher threshold than was intended by either house of Congress.”

Leahy used the same language in his Senate floor remarks. “I hope we will soon address this issue so that the law accurately reflects Congress's intent,” he said.

However, the legislators will undoubtedly face opposition. In the Senate Judiciary Committee hearing in June (119 PTD, 6/21/12), Sens. Charles E. Grassley (R-Iowa) and Thomas A. Coburn (R-Okla.) criticized the attempt to characterize the change as “technical.” Grassley said that it appeared that the change was being pushed by one side of the patent reform debate that failed to get everything it wanted in the compromise that led to the AIA's passage.

By Tony Dutra  


H.R. 6621 at http://pub.bna.com/ptcj/HR6621Senatevote12Dec28.pdf

Senate floor remarks at http://pub.bna.com/ptcj/HR6621Senatefloor12Dec28.pdf

House Dec. 30 floor remarks at http://pub.bna.com/ptcj/HR6621Housefloor12Dec30.pdf

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