The United States Patent and Trademark Office (USPTO) released two
Federal Register Notices on October 7, 2011, seeking written comments
and announcing two public hearings for two studies the agency is
required to conduct under the America Invents Act. Congress is requiring
the USPTO to study and report on the availability of prior user rights
in foreign countries as well as options to aid small businesses and
independent inventors in securing patent protection for their
inventions. The USPTO reports for both studies are due in mid-January
2012.As part of the America Invents Act the United States Patent and
Trademark Office (USPTO) is conducting a study of prior user rights.
Read WARF's response to the USPTO here. If you have
a response that you'd like to share, send it via email to jtalley@autm.net.
Because of the recent passage of the America Invents Act, a patent reform workshop has been added to the AUTM 2012 Annual Meeting program. This session will run from 9-10:30 a.m. on Friday, March 16. The aim of the session will be to bring attendees up to date on the impact the enactment of this groundbreaking law will have on longstanding U.S. patent prosecution and licensing practices and strategies for scientist inventors, patent attorneys and technology transfer professionals alike.
The "Leahy-Smith America Invents Act" (H.R. 1249) has been passed by both houses of Congress. President Obama is expected to sign the bill into law.
It is important for AUTM members to know that some major changes to patent reexamination practices, such as the new inter partes reexamination standard, will become effective immediately. Other provisions will become effective in one year.
Be sure to check out the USPTO implementation site, which has some helpful information.
AUTM is committed to helping its members understand the effects of this law and its impact on technology transfer practices. There will be several sessions at the AUTM Annual Meeting, March 14-17, 2012, in Anaheim, CA, that will shed light on this new legislation and help members respond to the changes taking place. Patent reform will also be discussed at the upcoming Western Region Meeting, Sept. 19-20, Albuquerque, NM. In addition, we are exploring ways to provide information and education online. Look for more information from AUTM within the coming weeks about additional programming.
AUTM encourages discussion about the bill via Techno-L. Directors can also discuss the bill through the Directors Forum.
AUTM and other higher education associations released a statement about the bill's passage, which you can read here.
Senate Expected to Vote on Patent Reform
H.R.
1249, the Leahy-Smith America Invents Act, is expected to go to the
Senate floor for a vote soon. The principal obstacle to Senate
passage of HR 1249 without amendment is Senator Coburn’s objection
to House modification of the PTO revolving fund. The revolving fund was
developed by Coburn and added by amendment to the Senate’s patent
reform bill, S. 23. Virtually all patent stakeholders would have
preferred the Senate bill’s revolving fund, which would prevent
fee diversion and assure that PTO has access to all the fees that it
collects. However, there is broad support in the patent community for
the House’s version of PTO funding, which, coupled with
commitments from appropriators, is a workable alternative that can
prevent fee-diversion and assure that PTO will receive all of its fee
revenue.
Efforts are underway to resolve any concerns among Senators about provisions of H.R. 1249 to permit passage of the bill without amendment. However, if those efforts are unsuccessful, the Senate leadership is expected to schedule a cloture vote on a motion to proceed. Given the Senate’s 95-5 vote in March for S. 23, and the strong resemblance of H.R. 1249 to S. 23, prospects are good that obstacles to Senate passage of H.R. 1249 can be overcome.
However, it is important that Senators hear from universities as part of the broad coalition of groups urging the Senate to pass H.R. 1249 without amendment.
AUTM urges its members to review the following information with their government relations colleagues:
House Passes H.R. 1249
On June 23, 2011, the U.S. House of Representatives passed H.R. 1249, the America Invents Act.
Background information
Full text of H.R. 1249--The America Invents Act
Major Improvements in H.R. 1249
A Constitutional Prescription for
Jobs
Letter to Lamar Smith, Chairman, Committee on the Judiciary from Timothy Holbrook and Mark D. Janis
Letter to Lamar Smith, Chairman, Committee on the
Judiciary from David J. Kappos, Under-Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office
Letter to Lamar Smith, Chairman, Committee on the
Judiciary from Harold Rogers, Chairman, House Committee on
Appropriations and Paul Ryan, Chairman, House Committee on the
Budget
Letter to Harold Rogers, Chairman, House Committee on
Appropriations and Paul Ryan, Chairman, House Committee on the Budget
from Tom Coburn, M.D., United States Senator
Leading Patent Stakeholders: End USPTO User Fee
Diversion
AUTM and five higher education associations released a joint memo to their constituencies May 17, 2011 in support of H.R. 1249, The America Invents Act. The memo was signed by AUTM and these associations:
Association of American Universities
American Council on Education
Association of American Medical Colleges
Association of Public and Land-grant Universities
COGR Council on Governmental Relations
Patent Reform S. 23 Passes Senate Judiciary Committee
15-0
AUTM released a briefing paper on U.S. patent reform and prior user rights in March 2011. Read the paper here.
On Feb. 3, 2011, the Senate Judiciary Committee voted on S. 23 the patent reform bill that has a some very small changes that do not impact the major provisions in last year’s bill S 515. The two amendments adopted can be found here and here. The vote was 15 in favor with 2 Senators voting present. The most interesting thing about the hearing is that during the discussion almost all members said that the fee diversion had to end. Diversion is a tax on innovation. It appears that Sen. Leahy and Sen. Coburn may have worked out a deal with the Appropriations Committee to end diversion.
AUTM along with the university associations have taken positions in support of the Senate version of patent reform. The university associations are asking their members to contact their senators and ask them to bring S.23 to the floor for a vote.
Strong intellectual property rights are invaluable to American innovation, global competitiveness, and economic growth. Patents are vital components in the research and development cycle that helps create small businesses and jobs. In the AUTM Survey for 2009 university research led to 596 startup companies formed, and 3,423 startups were still operating as of the end of 2009.
There are a number of provisions in this bill that were specifically requested by the university community. These include the elimination of prior user rights, venue, grace period, oath, and collaborative research. The Damages provisions in the bill will provide incentives for private sector partners to be willing to license technology from universities.
It is important to remember that this legislation has been before congress for more than six years. It is not a perfect bill but it is a compromise in which neither side gets everything it wants.
The next step is a vote of the entire Senate. The House Judiciary Committee has announced that it will have a hearing on the House Judiciary bill that passed the House four years ago. We will continue to provide updates on the patent reform effort as they happen.
The Patent Reform Act of 2009 (S. 515; H.R. 1260) were introduced in the
111th Congress on March 3, 2009. These bills are similar to
S. 1145 which was introduced in the 110th Congress and H.R.
1908 which was passed by the House in 2008.
Lisa Kuuttila, President & CEO of STC.UNM (STC), a wholly owned
subsidiary of the University of New Mexico (UNM), responsible for
technology-transfer at UNM, has a number of concerns with S. 515. STC
and has sent an open letter which argues in favor of strong patents to
New Mexico’s congressional delegation, President Obama, and
ranking members of the House and Senate judiciary committees.
The letter is
posted on the STC Web site and invites individuals, organizations and
companies to sign on in support.
Andrew Cohn, AUTM VP for Public Policy has blogged on this
topic. Read
the blog and share your comments.
Read
Lisa Kuuttila’s letter to AUTM
Go directly to
the STC open letter
Read the new letter to Patrick Leahy from AUTM and five other associations expressing strong support for the substitute amendment to S. 515, submitted March 8, 2010.
AUTM has signed onto a letter with the other higher education associations urging the Senate Judiciary committee to bring S.515 to the floor. Read the letter submitted May 7, 2009.
AUTM has joined AAU, COGR, NASULGC, ACE, and AAMC to issue a position
statement on patent reform legislation.
Read
the letter to Patrick Leahy and Arlen Specter and the position
statement.
Read the views of AUTM Leadership, and Lend Your Voice to the
Discussion
Read
the blog of Andrew Cohn, AUTM VP for Public Policy for more
insights on this issue, and share your comments.
Read AUTM President Arundeep Pradhan’s blog: Patent
Reform: On the Agenda Again
Pradhan addresses two patent reform bills introduced to Congress this
month. How will these bills affect technology transfer? How will they
impact AUTM members? Get the AUTM president’s take on the issues,
and then add your comments to the discussion.
This toolkit (see related files below) contains the text of S. 515 and H.R. 1260, AUTM letters to Congress, guidance for AUTM members related to this legislation and other related material.
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