|Patent Reform Bill Passes House|
On June 23, the U.S. House of Representatives approved H.R. 1249, the America Invents Act of 2011, by a vote of 304-117. The bill included a change to the provision the would ban the diversion fees to the USPTO. The change effectively allowed the status quo to remain, i.e., forcing the USPTO to go back through the appropriations process to seek access to funds. Banning fee diversion was one of the most favorable provisions in H.R. 1249 from the perspective of most stakeholders including NVCA. This change is also a huge departure from the Senate passed bill, S. 23. Because of this change, NVCA did not support H.R. 1249.
A new provision that would expand the prior user rights statute was also included in the final bill. Given the change to a first-to-file system, there were concerns that the first inventor might have had various reason not to file a patent application and may have already commercialized the invention. This new provision would apply to any technology. However, it would generally not allow the defense against patents owned by institutions of higher education. NVCA supported an expansion of prior user rights and believes it is an integral component of any new paradigm if the U.S. patent system changes to a “first to file” system.