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!).
Further amendments attempt to address emerging criticisms of the bill. For example, a severability provision is added should any provision fall on constitutionality challenges. As a reminder first inventor to to file is deemed unconstitutional by some, and the retroactive effect of the Transitional Business Method Review has been challenged as in violations of the Takings Clause.
So, what changes are proposed for reexamination and post grant?
As has been the case throughout the recent iterations, post grant review and inter partes review are largely left unchanged aside from minor tweaking. Of course, there are some amendments proposed, like going back to a 9 month window (1 year in previous version of H.R. 1249 for post grant review) (Lamar Smith R-TX). Another proposal seeks to adopt a clear and convincing standard for proving invalidity in post grant review (Lee Terry R-NE). This would be a major change, but seems unlikely to be adopted.
However my new favorite proposal is by Dana Rohrabacher (R-CA). Mr. Rohrabacher has proposed that any U.S citizen, or small entity that is a U.S. Company (less than 100 employees) should be exempted from post grant review or “reexamination.” Patent Trolls Rejoice!