Patent Reform in the House of Representatives


The Innovation Act (H.R. 9) has gotten the most publicity in the House of Representatives, but there are several other pending bills in the House, including the TROL Act, which has already been voted out of Committee.

What follows is a summary of the other patent reform bills pending in the House.

The TROL Act

The Targeting Rogue and Opaque Letters Act, more commonly referred to as the TROL Act, was introduced during the 113th Congress and passed the House Commerce Subcommittee with bipartisan support. The TROL Act addresses sending bad faith patent demand letters, clarifying that such activity may violate the Federal Trade Commission Act. The Act defines bad faith as either false or misleading statements or omissions, whether knowingly false, made with reckless indifference to the truth, or made with an awareness of a high probability that the statements or omissions would deceive the sender intentionally. The TROL Act also further authorizes the FTC and state attorneys general to bring actions to stop the abusive behavior, but also provides a good faith affirmative defense. The Act would further preempt any state law or regulation expressly relating to the transmission or contents of communications relating to the assertion of patent rights.

On April 29, 2015, the House Committee on Energy and Commerce voted to approve the TROL Act by a vote of 30-22. This vote means that the TROL Act will be favorably reported out of Committee and now moves on for consideration by the full House of Representatives. The TROL Act being the first bill to get voted out of Committee is at least a little surprising given the Innovation Act passed the entire House by more than a 3 to 1 margin in December 2013, and further given how Republican leaders in the House promised to move the Innovation Act quickly during the 114th Congress.

Innovation Protection Act

The Innovation Protection Act is one of the lesser-known patent reform bills, but like several of the other bills, has been percolating in Congress over the past few years. The bill, which was introduced in April 2015 by Congressman John Conyers, Jr. (D-MI), would provide a source of permanent funding for the USPTO. The fees collected by the USPTO would remain available to the USPTO until expended. This common sense idea has been floated for years, but it never seems to go anywhere. Appropriators have been unwilling to commit to allowing the USPTO to keep user fees, diverting over $1 billion in user fees from the USPTO since 1992 according to the Intellectual Property Owners Association. Conyers has characterized fee diversion as “a tax on innovation.”

The Innovation Protection Act would go further than the fee provisions contained in the America Invents Act (AIA). The AIA did create a revolving fund for use by the USPTO, but whether and how much the USPTO can spend is still governed by appropriators. The Innovation Protection Act is cosponsored by Congressman Jim Sensenbrenner (R-WI), Congressman Jerrold Nadler (D-NY), Congressman Trent Franks (R-AZ), Congresswoman Zoe Lofgren (D-CA), Congressman Doug Collins (R-GA), Congressman Ted Deutch (D-FL), Congressman Dana Rohrabacher (R-CA), and Congressman Hakeem Jeffries (D-NY).

The Grace Period Restoration Act

The America Invents Act (AIA) moved the U.S. from a first-to-invent system to a first-inventor-to-file system. The previous grace period, which was found in pre-AIA section 102(b), was replaced with a new version to provide that certain disclosures that occur less than one year before a patent application filing could be considered as prior art, thereby defeating patent rights. The prior grace period that encouraged early sharing of knowledge up to 12 months prior to filing was replaced with a system that actually discourages early disclosure.

The AIA includes language regarding the scope of the grace period during which an inventor who discloses an invention to the public may decide within a one-year period whether to make a patent application filing. The language is ambiguous and the grace period is at best available in only extraordinarily rare instances. To make matters more confusing, the regulatory reading of the AIA by the U.S. Patent and Trademark Office conflicts with the legislative history of the AIA, although it is clearly appropriate given the actual language of the statute. Unfortunately, it seems that Congress did not understand the language they voted on and were telling innovators that the provision meant something very different than the language actually said.

The Grace Period Restoration Act would add new section 102(b)(3), which would clarify that the grace period is truly a grace period. This bill would protect an inventor against disclosures by anyone after the inventor has made a public disclosure of the claimed invention in a printed publication.

For the latest on patent reform please see Posts on Patent Reform.

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