Patent Reform Update: Senate Eyes September Enactment For Patent Reform

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the status of the pending patent reform legislation.

Debt Ceiling Raised, Job Bills On Deck

With debt ceiling armageddon now averted in the 11th hour (depending upon your perspective), Congress has turned its attention to election season addressing the economy. As previously discussed, the patent reform legislation has long been touted as a “no cost economic stimulus” that will create jobs.

While there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate has indicated a willingness to accept the House bill.

Today, Senate Majority Leader Harry Reid (D-Nev.) has identified patent reform as the first jobs bill to be taken up in the Fall term. To ensure quick enactment Senator Reid has indicated he will file cloture today (to remove the “hold”) so that the Senate can take up the bill immediately when the Senate convenes in September. (more…)


Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the status of patent reform.

Further Fee Diversion Wrangling Unlikely

As the saying goes, “almost” only counts in horseshoes and hand grenades. Recent events suggest that patent reform can now be added to the list.

Last week, H.R. 1249 was passed by the House. A copy of the bill, with all amendments, is found (here). A helpful mark-up illustrating the differences between the Senate Bill (S.23) and H.R. 1249 is found (here). (Thanks to Brad Pedersen of Patterson Thuente Christensen & Pedersen for the mark-up). (more…)

Patent Reform: House Passes America Invents Act 304-117

The following post comes courtesy of Gene Quinn, of IPWatchdog and Practice Center Contributor.

At approximately 5:50pm [Thursday] the United States House of Representatives passed H.R. 1249, which is known as the America Invents Act, by a vote of 304-117.  This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet.  There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.  The bill passed by the Senate put an end to the practice of fee diversion, which occurs when the Congress appropriates the USPTO less than they collect in fees.  The excess in the fees collected from users of the USPTO then go to the federal government as general revenues and are used for purposes other than the operation of the United States Patent and Trademark Office.

Indeed, now the fight will go back to the Senate where Senators will be asked to swallow the changes adopted by the House of Representatives, which seems unlikely.  Senator Patrick Leahy (D-VT) and Congressman Lamar Smith (R-TX), who are the respective champions of the bills in the two chambers will likely want to find compromise language that can pass both the House and the Senate.  I have been told that a formal Conference on the bill is unlikely, which would mean that the Senate would need to hammer out language acceptable to the Senate while also being acceptable to the House.

Click here to read the full IPWatchdog publication.

Patent Reform Update: Reactions To House Vote on Patent Reform

The House voted to move ahead with debate on patent reform, but a spokeswoman for Majority Leader Eric Cantor,R-Va., said a final vote is now expected on Friday. The latest delay is a result of a House Rules Committee decision that an end to fee diversion should not be included in patent reform.  This latest change has caused many industry groups who supported the bill to now change their position.  What does this mean for the future of patent reform?  Here is what the patent community is saying about these latest turn of events….

Lack of Commitment on PTO Funding is Killing Patent Reform (IP Watchdog)

House votes to proceed with patent, drilling bill after point of order (The Hill)

Special Interest Patent Bill Benefits Foreign Multinational Corporations Over U.S. Inventors (Patent Barisatas)

Spending Concerns Delay Patent-Reform Vote (National Journal)

BIO Expresses Disappointment With House Vote On Patent Reform ( Medical News Today)

Committee Approves Patent Reform Proposal (Committee on the Judiciary)

Long Overdue’ US Patent Reform Deal Reached; House Could Vote This Week (Intellectual Property Watch)

Patent Reform’ Will Hurt Innovation (Connexion)

Patent Reform Update II (Patentdocs)

Patent Bill Unites Past Enemies (Roll Call)



Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article updating us on the status of H.R. 1249 aka “The America Invents Act” aka “Leahy-Smith America Invents Act”.

Significant Amendments Targeted for H.R. 1249

Hold up, wait a minute.

The America Invents Act has been seemingly remixed and re-released as the “Leahy-Smith America Invents Act.” All Republicans, throw your hands up, all Democrats, throw your hands up…

With the House now moving to floor debate of H.R. 1249, amendment proposals have come flying from all directions. Not surprisingly, some of the proposals aim to strike PTO fee setting authority, the end of fee diversion, as well as the first to file provision. Should these amendments be adopted, the bill would be killed. Another amendment, introduced by John Conyers (D-MI) seeks to strike everything but PTO funding (including the Detroit Office!). (more…)