Advocacy Archives

Innovation ACT (H.R. 3309

AUTM and Others in IP Community Express Concerns over H.R. 3309
H.R. 3309, “The Innovation Act” has progressed very rapidly through Congress after being introduced by Representative Bob Goodlatte (R. – Va).

The sponsors of the bill intend it to target and minimize abusive patent litigation – often referred to as the “patent troll” problem. This statement summarizes the opposition to the bill in its current form. The letter was submitted by AUTM and several associations within the higher education community including: American Council on Education (ACE), Association of American Medical Colleges (AAMC), Association of American Universities (AAU); Association of Public and Land-grant Universities (APLU); Council on Governmental Relations (COGR).

Other letters expressing opposition have been submitted by many interest groups, including the Licensing Executives Society (LES), IEEE-USA, Entrepreneurs for Growth, the Medical Device Manufacturers Association, the Patent Office Professional Association, the Innovation Alliance, the National Small Business Association and the Small Business Technology Council.

Innovation Act Update
December 4, 2013

Following consideration by the House Rules Committee on December 3, we expect a vote on December 5 on the Innovation Act (H.R. 3309). 

Because amendments either would provide insufficient improvement if they pass or would provide sufficient improvement but will not pass (the Conyers/Watt substitute), the emphasis of the university message needs to remain to convey and confirm to vote NO on the final bill. 

The higher education associations support the following amendments:

AMENDMENT:  Watt (NC) – would allow the court to reduce or deny the fees going to the prevailing party for engaging in “conduct that unduly and unreasonably protracted the final resolution of the matter in controversy.”

AMENDMENT:  Massie (KY) – would strike the entire customer stays section.  This is the section intended to protect innocent retail end-users who are “customers” of the manufacturer of the allegedly infringing product, but the amendment is written so broadly that anyone along the often long and convoluted product chain could be stayed, allowing collusion among parties in the chain to secure protection not warranted and undermining that ability to assert patent rights – once again, a case where the provision could impede bad troll-like behavior but also compromise legitimate patent enforcement. 

AMENDMENT:  Rohrabacher (CA) - Strikes 9(a) from the bill and reorder the remaining subsections of Section 9.  This amendment would reinstate Sec. 145, which is struck under 9(a).  Sec. 145 is a little- used but important provision that allows a patent applicant dissatisfied with a PTO decision to appeal that decision under certain circumstances directly to the Federal District Court. 

SUBSTITUTE: Conyers (MI)/Watt (NC) – Promotes transparency in patent ownership; protects customers who are targeted in infringement suits; directs the PTO to develop educational resources for small businesses; instructs the PTO and others to prepare reports on several issues including the use of deceptive demand letters.  Though there are some problems with the substitute, it would effectively address most key university concerns so that the higher education associations would support the bill if the substitute passed; as noted above, however, that is virtually certain not to occur. 

Battle Over Innovation Act Moves from House to Senate
December 5, 2013

On Dec. 5, 2013 the United States House of Representatives passed H.R. 3309, “The Innovation Act,” by a vote of 325-91. The bill progressed very rapidly through Congress and is now in the United States Senate.

The sponsors of the bill intend it to target and minimize abusive patent litigation – often referred to as the “patent troll” problem. This statement summarizes the opposition to the bill in its current form. The letter was submitted by AUTM and several associations within the higher education community including: American Council on Education (ACE), Association of American Medical Colleges (AAMC), Association of American Universities (AAU); Association of Public and Land-grant Universities (APLU); Council on Governmental Relations (COGR).

Other letters expressing opposition have been submitted by many interest groups, including the Licensing Executives Society (LES), IEEE-USA, Entrepreneurs for Growth, the Medical Device Manufacturers Association, the Patent Office Professional Association, the Innovation Alliance, the National Small Business Association and the Small Business Technology Council.

A conference call was held on Dec. 13 for AUTM Directors, providing a detailed overview on the Senate bill. Directors were encouraged to share information with their federal relations officers.

TRANSFER Act of 2013 

H.R. 2981, The TRANSFER Act of 2013 was introduced in the House of Representatives by Rep. Collins (NY). AUTM supports this legislation and collaborated with House staff and colleagues at other higher education associations in contributing language for the bill. 

AUTM joined other higher education associations in sending a letter of support for the bill to the House Committee on Science, Space and Technology. 

Gene Patents and Licensing Practices

Gene patents and licensing practices have recently come under scrutiny following the Secretary's Advisory Committee on Genetics, Health, and Society (SACGHS) release of its Public Consultation Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests. For more on this issue visit the Gene Patents and Licensing Practices page.