Woodall
`Yoder
`Young (AK)
`Young (FL)
`Young (IN)
`
`H4480
`
`Turner
`Upton
`Visclosky
`Walberg
`Walden
`Walsh (IL)
`Webster
`
`Ackerman
`Andrews
`Baca
`Bachmann
`Baldwin
`Barrow
`Bass (CA)
`Becerra
`Berkley
`Berman
`Bishop (NY)
`Blumenauer
`Boswell
`Brady (PA)
`Braley (IA)
`Brown (FL)
`Butterfield
`Capps
`Capuano
`Cardoza
`Carnahan
`Carney
`Carson (IN)
`Castor (FL)
`Chu
`Cicilline
`Clarke (MI)
`Clarke (NY)
`Clay
`Cleaver
`Clyburn
`Cohen
`Connolly (VA)
`Conyers
`Cooper
`Costa
`Costello
`Courtney
`Critz
`Crowley
`Cuellar
`Cummings
`Davis (CA)
`Davis (IL)
`DeFazio
`DeGette
`DeLauro
`Deutch
`Dingell
`Doggett
`Doyle
`Edwards
`Ellison
`Engel
`Eshoo
`Farr
`Fattah
`Filner
`Frank (MA)
`
`West
`Westmoreland
`Whitfield
`Wilson (SC)
`Wittman
`Wolf
`Womack
`NOES—173
`Fudge
`Owens
`Garamendi
`Pallone
`Gonzalez
`Pascrell
`Green, Al
`Pastor (AZ)
`Green, Gene
`Payne
`Grijalva
`Pelosi
`Gutierrez
`Perlmutter
`Hanabusa
`Peters
`Hastings (FL)
`Pingree (ME)
`Heinrich
`Polis
`Higgins
`Price (NC)
`Himes
`Quigley
`Hinchey
`Rahall
`Hinojosa
`Reyes
`Hirono
`Richardson
`Hochul
`Richmond
`Holt
`Rothman (NJ)
`Honda
`Roybal-Allard
`Hoyer
`Ruppersberger
`Israel
`Rush
`Jackson (IL)
`Ryan (OH)
`Jackson Lee
`Sa´ nchez, Linda
`(TX)
`T.
`Johnson (GA)
`Sanchez, Loretta
`Johnson, E. B.
`Sarbanes
`Kaptur
`Schakowsky
`Keating
`Schiff
`Kildee
`Schrader
`Kind
`Schwartz
`Kucinich
`Scott (VA)
`Langevin
`Scott, David
`Larson (CT)
`Serrano
`Lee (CA)
`Sewell
`Levin
`Sherman
`Lewis (GA)
`Sires
`Lipinski
`Slaughter
`Loebsack
`Speier
`Lofgren, Zoe
`Stark
`Lowey
`Sutton
`Luja´ n
`Thompson (CA)
`Lynch
`Thompson (MS)
`Maloney
`Tierney
`Markey
`Tonko
`Matsui
`Towns
`McCarthy (NY)
`Tsongas
`McCollum
`Van Hollen
`McDermott
`Vela´ zquez
`McGovern
`Walz (MN)
`McNerney
`Wasserman
`Meeks
`Schultz
`Michaud
`Waters
`Miller (NC)
`Watt
`Miller, George
`Waxman
`Moore
`Welch
`Moran
`Wilson (FL)
`Murphy (CT)
`Woolsey
`Nadler
`Wu
`Neal
`Yarmuth
`Olver
`NOT VOTING—7
`Giffords
`Hurt
`Stivers
`Gingrey (GA)
`Napolitano
`Holden
`Rangel
`ANNOUNCEMENT BY THE SPEAKER PRO TEMPORE
`The SPEAKER pro tempore (during
`the vote). There are 2 minutes remain-
`ing in this vote.
`
`f
`
`AMERICA INVENTS ACT
`The SPEAKER pro tempore (Mr.
`WOODALL). Pursuant to House Resolu-
`tion 316 and rule XVIII, the Chair de-
`clares the House in the Committee of
`the Whole House on the State of the
`Union for the further consideration of
`the bill, H.R. 1249.
`
`b 1351
`IN THE COMMITTEE OF THE WHOLE
`Accordingly, the House resolved
`itself into the Committee of the Whole
`House on the State of the Union for the
`further consideration of the bill (H.R.
`1249) to amend title 35, United States
`Code, to provide for patent reform,
`with Mr. POE of Texas (Acting Chair) in
`the chair.
`The Clerk read the title of the bill.
`The Acting CHAIR. When the Com-
`mittee of the Whole rose on Wednes-
`day, June 22, 2011, a request for a re-
`corded vote on amendment No. 1 print-
`ed in part B of House Report 112–111 of-
`fered by the gentleman from Texas
`(Mr. SMITH) had been postponed.
`AMENDMENT NO. 1 OFFERED BY MR. SMITH OF
`TEXAS
`The Acting CHAIR. Pursuant to
`clause 6 of rule XVIII, proceedings will
`now resume on the amendment printed
`in part B of House Report 112–111 on
`which further proceedings were post-
`poned.
`The unfinished business is the de-
`mand for a recorded vote on the
`amendment offered by the gentleman
`from Texas (Mr. SMITH) on which fur-
`ther proceedings were postponed and
`on which the noes prevailed by voice
`vote.
`The Clerk will redesignate the
`amendment.
`The Clerk redesignated the amend-
`ment.
`
`CONGRESSIONAL RECORD — HOUSE
`Bilirakis
`amendment and I registered my vote as such.
`Bishop (GA)
`Unfortunately, due to a staffing error, it was
`Bishop (UT)
`still the same rollcall vote 480, and my ‘‘aye’’
`Black
`was mistakenly changed to ‘‘no.’’ To be clear,
`Blackburn
`Bonner
`I do support the rule providing for consider-
`Bono Mack
`ation of the FY2012 Department of Defense
`Boren
`Appropriations Bill.
`Boswell
`Stated against:
`Boustany
`Brady (TX)
`Ms. NAPOLITANO. Mr. Speaker, on Thurs-
`Braley (IA)
`day, June 23, 2011, I was absent during roll-
`Buchanan
`call vote No. 480 in order to attend my
`Bucshon
`Buerkle
`grandson’s graduation. Had I been present, I
`Burgess
`would have voted ‘‘no’’ on H. Res. 320—Rule
`Burton (IN)
`providing for consideration of H.R. 2219—De-
`Butterfield
`partment of Defense Appropriations Act, 2012.
`Calvert
`Camp
`Campbell
`Canseco
`Cantor
`Capito
`Capuano
`Carnahan
`Carney
`Carter
`Cassidy
`Chabot
`Chaffetz
`Chandler
`Cicilline
`Coble
`Coffman (CO)
`Cohen
`Cole
`Conaway
`Connolly (VA)
`Cooper
`Costello
`Courtney
`Cravaack
`Crawford
`Crenshaw
`Critz
`Crowley
`Cuellar
`Culberson
`Davis (KY)
`DeLauro
`Denham
`Dent
`DesJarlais
`Diaz-Balart
`Dicks
`Dold
`Donnelly (IN)
`Dreier
`Duffy
`Duncan (TN)
`Ellmers
`Emerson
`Engel
`Farenthold
`Fattah
`Fincher
`Fitzpatrick
`Fleischmann
`Fleming
`Flores
`Forbes
`Fortenberry
`Foxx
`Frelinghuysen
`Gallegly
`Gardner
`Gerlach
`Gibbs
`Gibson
`Gohmert
`Goodlatte
`Gosar
`Gowdy
`Granger
`Graves (GA)
`Graves (MO)
`Griffin (AR)
`Griffith (VA)
`Grimm
`Guinta
`
`June 23, 2011
`Paulsen
`Pearce
`Pence
`Perlmutter
`Peterson
`Petri
`Pitts
`Platts
`Poe (TX)
`Pompeo
`Price (GA)
`Price (NC)
`Quayle
`Quigley
`Rahall
`Reed
`Rehberg
`Reichert
`Renacci
`Ribble
`Richardson
`Richmond
`Rigell
`Rivera
`Roby
`Roe (TN)
`Rogers (AL)
`Rogers (KY)
`Rogers (MI)
`Rokita
`Rooney
`Ros-Lehtinen
`Roskam
`Ross (AR)
`Ross (FL)
`Rothman (NJ)
`Runyan
`Ruppersberger
`Rush
`Ryan (WI)
`Sa´ nchez, Linda
`T.
`Sarbanes
`Scalise
`Schilling
`Schmidt
`Schrader
`Schwartz
`Schweikert
`Serrano
`Sessions
`Sewell
`Shimkus
`Shuler
`Shuster
`Simpson
`Sires
`Smith (NE)
`Smith (NJ)
`Smith (TX)
`Smith (WA)
`Southerland
`Stutzman
`Sullivan
`Thompson (PA)
`Thornberry
`Tiberi
`Tipton
`Upton
`Visclosky
`Walberg
`Walden
`Walsh (IL)
`Wasserman
`Schultz
`Welch
`West
`Westmoreland
`Whitfield
`Wilson (FL)
`Wilson (SC)
`Wittman
`Wolf
`Womack
`Woodall
`Wu
`Yarmuth
`Yoder
`Young (AK)
`Young (FL)
`Young (IN)
`
`Guthrie
`Hall
`Hanabusa
`Hanna
`Harper
`Harris
`Hastings (WA)
`Hayworth
`Heck
`Hensarling
`Herger
`Herrera Beutler
`Himes
`Hinchey
`Hochul
`Hoyer
`Huelskamp
`Huizenga (MI)
`Hultgren
`Inslee
`Issa
`Jackson Lee
`(TX)
`Jenkins
`Johnson (GA)
`Johnson (OH)
`Johnson, Sam
`Jordan
`Keating
`Kelly
`King (NY)
`Kingston
`Kinzinger (IL)
`Kissell
`Kline
`Labrador
`Lamborn
`Langevin
`Lankford
`Larsen (WA)
`Larson (CT)
`Latham
`LaTourette
`Latta
`Lewis (CA)
`LoBiondo
`Loebsack
`Long
`Lowey
`Lucas
`Luetkemeyer
`Lummis
`Lungren, Daniel
`E.
`Maloney
`Marchant
`Marino
`Matheson
`McCarthy (CA)
`McCarthy (NY)
`McCaul
`McCollum
`McCotter
`McGovern
`McHenry
`McIntyre
`McKeon
`McKinley
`McMorris
`Rodgers
`Meehan
`Meeks
`Mica
`Michaud
`Miller (MI)
`Miller, Gary
`Moran
`Mulvaney
`Murphy (CT)
`Murphy (PA)
`Myrick
`Neal
`Neugebauer
`Noem
`Nugent
`Nunes
`Nunnelee
`Olson
`Olver
`Owens
`Palazzo
`
`RECORDED VOTE
`The Acting CHAIR. A recorded vote
`has been demanded.
`A recorded vote was ordered.
`The vote was taken by electronic de-
`vice, and there were—ayes 283, noes 140,
`not voting 8, as follows:
`[Roll No. 481]
`AYES—283
`Austria
`Bachus
`Barletta
`Barrow
`Bartlett
`
`Ackerman
`Adams
`Aderholt
`Alexander
`Altmire
`
`Barton (TX)
`Bass (NH)
`Benishek
`Berkley
`Biggert
`
`Akin
`Amash
`Andrews
`Baca
`Bachmann
`Baldwin
`
`NOES—140
`Bass (CA)
`Becerra
`Berg
`Berman
`Bilbray
`Bishop (NY)
`
`Blumenauer
`Brady (PA)
`Brooks
`Broun (GA)
`Brown (FL)
`Capps
`
`b 1351
`Mr. BERMAN changed his vote from
`‘‘aye’’ to ‘‘no.’’
`Mr. MCINTYRE changed his vote
`from ‘‘no’’ to ‘‘aye.’’
`So the resolution was agreed to.
`The result of the vote was announced
`as above recorded.
`A motion to reconsider was laid on
`the table.
`Stated for:
`Mrs. BACHMANN. Mr. Speaker, when roll-
`call vote 480 was called, I registered my vote
`as ‘‘aye’’ and then proceeded to an Intel-
`ligence briefing. When I returned to the floor,
`it was my intention to vote ‘‘no’’ on the next
`
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`
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`

`
`H4481
`CONGRESSIONAL RECORD — HOUSE
`order containing the President’s finding that
`filing a patent behind the inventor’s
`major patenting authorities have adopted a
`back. Yet the only way for American
`grace period having substantially the same
`inventors to benefit from the grace pe-
`effect as that contained under the amend-
`riod provision contained in 1249 is to
`ments made by this section; and
`ensure that the foreign countries adopt
`(B) shall apply to all applications for pat-
`a similar grace period as well.
`ent that are filed on or after the effective
`The amendment would encourage
`date under subparagraph (A).
`other countries to adopt a similar pe-
`(2) DEFINITIONS.—In this subsection:
`riod in their patent system consistent
`(A) MAJOR PATENTING AUTHORITIES.—The
`term ‘‘major patenting authorities’’ means
`with a recommendation by the Na-
`at least the patenting authorities in Europe
`tional Academy’s National Research
`and Japan.
`Council. Current law in the United
`(B) GRACE PERIOD.—The term ‘‘grace pe-
`States allows a grace period of 1 year,
`riod’’ means the 1-year period ending on the
`during which an applicant can disclose
`effective filing date of a claimed invention,
`or commercialize an invention before
`during which disclosures of the subject mat-
`filing for a patent. Japan offers a lim-
`ter by the inventor or a joint inventor, or by
`ited grace period, and Europe provides
`others who obtained the subject matter dis-
`closed directly or indirectly from the inven-
`none.
`tor or a joint inventor, do not qualify as
`If the first-to-file provision in the
`prior art to the claimed invention.
`bill is implemented, we must ensure
`(C) EFFECTIVE FILING DATE.— The term ‘‘ef-
`that American inventors are not dis-
`fective filing date of a claimed invention’’
`advantaged. Small American inventors
`means, with respect to a patenting authority
`and universities are disadvantaged
`in another country, a date equivalent to the
`abroad in those nations where there is
`effective filing date of a claimed invention as
`no grace period.
`defined in section 100(i) of title 35, United
`States Code, as added by subsection (a) of
`The grace period provision within H.R. 1249
`this section.
`would grant an inventor a one-year period be-
`(3) RETENTION OF INTERFERENCE PROCE-
`tween the time he first publishes his invention
`DURES WITH RESPECT TO APPLICATIONS FILED
`to the time when he is required to file a pat-
`BEFORE EFFECTIVE DATE.—In the case of any
`ent.
`application for patent that is filed before the
`During this time, this would prohibit anyone
`effective date under paragraph (1)(A), the
`else from seeing this publication, stealing the
`provisions of law amended by subsections (h)
`idea, and quickly filing a patent behind the in-
`and (i) shall apply to such application as
`ventor’s back.
`such provisions of law were in effect on the
`day before such effective date.
`Yet, the only way for American inventors to
`Page 11, lines 21-23, strike ‘‘upon the expi-
`benefit from the grace period provision con-
`ration of the 18-month period beginning on
`tained in H.R. 1249 is to ensure that foreign
`the date of the enactment of this Act,’’ and
`countries adopt a grace period, as well.
`insert ‘‘on the effective date provided in sub-
`Small American inventors and universities
`section (n)’’.
`are disadvantaged abroad in those nations
`The Acting CHAIR. Pursuant to
`where there is no grace period. As a result,
`House Resolution 316, the gentleman
`they often lose the right to patent because
`from Michigan (Mr. CONYERS) and a
`these other countries do not care about pro-
`Member opposed each will control 5
`tecting small business and university research.
`minutes.
`The United States needs to do more to pro-
`The Chair recognizes the gentleman
`tect the small inventor and universities not just
`from Michigan.
`here but abroad.
`Mr. CONYERS. I ask unanimous con-
`Unfortunately, other countries will not do it
`sent that the gentleman from Cali-
`on their own even though they want the
`fornia, DANA ROHRABACHER, be added to
`United States to convert to a ‘‘first-to-file’’ sys-
`this amendment as a cosponsor.
`tem.
`The Acting CHAIR. The Chair would
`If H.R. 1249 passes without my Amend-
`advise the gentleman that amendments
`ment, we will be giving away a critical bar-
`do not have cosponsors.
`gaining chip that we can use to encourage
`Mr. CONYERS. I yield myself 21⁄2
`other countries to follow our lead.
`minutes.
`Ladies and gentlemen, this bipar-
`My Amendment ensures that the only way
`tisan amendment adds an important
`to benefit from the grace period in H.R. 1249
`provision to H.R. 1249. It would permit
`is to have foreign countries adopt a grace pe-
`the conversion of the United States to
`riod.
`a first-to-file system only upon a Presi-
`Without this Amendment, we will be unilater-
`dential finding that other nations have
`ally transitioning the United States to a ‘‘first-
`adopted a similar one-year grace pe-
`to-file’’ system with a weak grace period with-
`riod. This one-year grace period pro-
`out any incentive for foreign countries to adopt
`tects the ability of an inventor to dis-
`a grace period.
`cuss or write about his or her ideas for
`I should also note that identical language
`a patent up to a year before he or she
`was included in H.R. 1908, the ‘‘Patent Re-
`actually files for patent protection.
`form Act of 2007,’’ which the House passed
`And without this grace period, an in-
`on September 7, 2007.
`Accordingly, I urge my colleagues to support
`ventor could lose his or her own pat-
`this Amendment.
`ent.
`This grace period provision within
`Mr. SMITH of Texas. I rise in opposi-
`H.R. 1249 would grant an inventor a
`tion to the amendment.
`one-year period between the time he
`The Acting CHAIR. The gentleman is
`first publishes his invention to the
`recognized for 5 minutes.
`time when he’s required to file a pat-
`Mr. SMITH of Texas. Madam Chair,
`ent. During this time, this would pro-
`the Conyers amendment to tie the
`hibit anyone else from seeing this pub-
`changes proposed in the America In-
`lication, stealing the idea, and quickly
`vents Act to future changes that would
`
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`
`June 23, 2011
`Cardoza
`Hinojosa
`Carson (IN)
`Hirono
`Castor (FL)
`Holt
`Chu
`Honda
`Clarke (MI)
`Hunter
`Clarke (NY)
`Israel
`Clay
`Jackson (IL)
`Cleaver
`Johnson (IL)
`Clyburn
`Johnson, E. B.
`Conyers
`Jones
`Costa
`Kaptur
`Cummings
`Kildee
`Davis (CA)
`Kind
`Davis (IL)
`King (IA)
`DeFazio
`Kucinich
`DeGette
`Lance
`Deutch
`Landry
`Dingell
`Lee (CA)
`Doggett
`Levin
`Doyle
`Lewis (GA)
`Duncan (SC)
`Lipinski
`Edwards
`Lofgren, Zoe
`Luja´ n
`Ellison
`Eshoo
`Lynch
`Farr
`Mack
`Filner
`Manzullo
`Flake
`Markey
`Frank (MA)
`Matsui
`Franks (AZ)
`McClintock
`Fudge
`McDermott
`Garamendi
`McNerney
`Garrett
`Miller (FL)
`Gonzalez
`Miller (NC)
`Green, Al
`Miller, George
`Green, Gene
`Moore
`Grijalva
`Nadler
`Gutierrez
`Pallone
`Hartzler
`Pascrell
`Hastings (FL)
`Pastor (AZ)
`Heinrich
`Paul
`Higgins
`Payne
`
`Pelosi
`Peters
`Pingree (ME)
`Polis
`Posey
`Reyes
`Rohrabacher
`Roybal-Allard
`Royce
`Ryan (OH)
`Sanchez, Loretta
`Schakowsky
`Schiff
`Schock
`Scott (SC)
`Scott (VA)
`Scott, David
`Sensenbrenner
`Sherman
`Slaughter
`Speier
`Stark
`Stearns
`Sutton
`Terry
`Thompson (CA)
`Thompson (MS)
`Tierney
`Tonko
`Towns
`Tsongas
`Turner
`Van Hollen
`Vela´ zquez
`Walz (MN)
`Waters
`Watt
`Waxman
`Webster
`Woolsey
`
`Giffords
`Gingrey (GA)
`Holden
`
`NOT VOTING—8
`Hurt
`Scott, Austin
`Napolitano
`Stivers
`Rangel
`
`ANNOUNCEMENT BY THE ACTING CHAIR
`The Acting CHAIR (Mrs. CAPITO)
`(during the vote). There are 2 minutes
`remaining in this vote.
`b 1410
`Mr. MACK changed his vote from
`‘‘aye’’ to ‘‘no.’’
`Messrs. BARTLETT and MULVANEY
`changed their vote from ‘‘no’’ to ‘‘aye.’’
`So the amendment was agreed to.
`The result of the vote was announced
`as above recorded.
`Stated against:
`Mr. AUSTIN SCOTT of Georgia. Madam
`Chair, on rollcall No. 481 I was unavoidably
`detained. Had I been present, I would have
`voted ‘‘nay.’’
`Mrs. NAPOLITANO. Madam Chair, on
`Thursday, June 23, 2011, I was absent during
`rollcall vote No. 481 in order to attend my
`grandson’s graduation. Had I been present, I
`would have voted ‘‘nay’’ on the Smith (TX)
`Manager’s Amendment.
`AMENDMENT NO. 2 OFFERED BY MR. CONYERS
`The Acting CHAIR. It is now in order
`to consider amendment No. 2 printed in
`part B of House Report 112–111.
`Mr. CONYERS. Madam Chairman, I
`have an amendment at the desk.
`The Acting CHAIR. The Clerk will
`designate the amendment.
`The text of the amendment is as fol-
`lows:
`Page 24, strike line 3 and all that follows
`through page 25, line 12, and insert the fol-
`lowing:
`(n) EFFECTIVE DATE.—
`(1) IN GENERAL.—The amendments made by
`this section—
`(A) shall take effect 90 days after the date
`on which the President issues an Executive
`
`

`
`H4482
`June 23, 2011
`CONGRESSIONAL RECORD — HOUSE
`be made in foreign law is unworkable.
`So the first-to-file change makes it
`that foreign countries adopt the same
`I oppose providing a trigger in U.S. law
`easier and less complicated for U.S. in-
`grace period. And that’s what this
`that leaves our patent system at the
`ventors to get patent protection
`amendment would do. It would say our
`mercy of actions to be taken at a fu-
`around the world. And it eliminates
`bill, which will make our inventors
`ture date by the Chinese, Russians,
`the legal bills that come with the in-
`vulnerable to foreign theft, will not go
`French, or any other country. It is our
`terference proceedings under the cur-
`into place until those foreign countries
`constitutional duty to write the laws
`rent system. It is a key provision of
`have put in place a similar grace pe-
`for this great land. We cannot delegate
`this bill that should not be contingent
`riod, which then would prevent them
`that responsibility to the whims of for-
`upon actions by foreign powers and
`and their citizens from coming in and
`eign powers.
`delay what would be positive reforms
`stealing our technology. Ms. LOFGREN
`I know that this idea has been float-
`for independent inventors and our pat-
`detailed last night in great detail how
`ed in the past, but after working on
`ent system.
`that would work.
`several pieces of patent legislation
`I call this bill basically the Unilat-
`The first-inventor-to-file provision is
`over the past several Congresses, and
`eral Disclosure Act, if not the Patent
`necessary for U.S. competitiveness and
`particularly this year on H.R. 1249, it
`Rip-Off Act, because we are disclosing
`innovation. It makes our patent sys-
`has become clear that this type of trig-
`to the world what we’ve got. And our
`tem stronger, increases patent cer-
`ger idea is simply not workable and is
`people can’t follow up on it because
`tainty, and reduces the cost of frivo-
`counterproductive.
`there’s a grace period here, but over-
`lous litigation.
`The move to a first-inventor-to-file
`seas they don’t have that same grace
`However, if you support the U.N. hav-
`system creates a more efficient and re-
`period. So what we’re saying is, to pre-
`ing military control over our troops, or
`liable patent system that benefits all
`vent foreigners from stealing American
`if you support the concept of an inter-
`inventors, including independent in-
`technology, this will not go into effect
`national court at The Hague, then you
`ventors. The bill provides a more trans-
`until the President has issued a state-
`would support this amendment’s pro-
`parent and certain grace period, a key
`ment verifying that the other coun-
`posal of a trigger that subjects U.S. do-
`feature of U.S. law, and a more definite
`tries of the world have a similar grace
`mestic law to the whims of govern-
`filing date that enables inventors to
`period so they can’t just at will rip off
`ments in Europe, China, or Russia.
`promote, fund, and market their tech-
`It really would be unprecedented to
`America’s greatest entrepreneurs and
`nology, while making them less vulner-
`hold U.S. law hostage to legal changes
`inventors.
`able to costly patent challenges that
`The Acting CHAIR. The question is
`made overseas, and would completely
`disadvantage independent inventors.
`on the amendment offered by the gen-
`go against what this great country
`Under first-inventor-to-file, an inven-
`tleman from Michigan (Mr. CONYERS).
`stands for and what our Founders
`tor submits an application to the Pat-
`The question was taken; and the Act-
`fought for: the independent rights and
`ent Office that describes their inven-
`ing Chair announced that the noes ap-
`liberties we have today.
`tion and how to make it. That, along
`peared to have it.
`For these reasons, Madam Chair, I
`Mr. CONYERS. Madam Chair, I de-
`with a $110 fee, gets them a provisional
`am strongly opposed to the amend-
`mand a recorded vote.
`application and preserves their filing
`ment.
`The Acting CHAIR. Pursuant to
`date. This allows the inventor an en-
`I yield back the balance of my time.
`clause 6 of rule XVIII, further pro-
`tire year to complete the application,
`b 1420
`ceedings on the amendment offered by
`while retaining the earlier filing date.
`Mr. CONYERS. I yield the balance of
`the gentleman from Michigan will be
`By contrast, the cost of an interference
`my time to the gentleman from Cali-
`postponed.
`proceeding before the PTO often runs
`fornia (Mr. ROHRABACHER).
`to $500,000.
`AMENDMENT NO. 3 OFFERED BY MS. BALDWIN
`The Acting CHAIR. The gentleman
`The current first-to-invent system
`The Acting CHAIR. It is now in order
`from California is recognized for 21⁄2
`harms small businesses and
`inde-
`to consider amendment No. 3 printed in
`minutes.
`pendent inventors. Former PTO Com-
`part B of House Report 112–111.
`Mr. ROHRABACHER. Let’s just note
`missioner Gerald Mossinghoff con-
`Ms. BALDWIN. Madam Chair, I have
`that Ms. LOFGREN last night presented
`ducted a study that proves smaller en-
`an amendment at the desk.
`a case to this body which I felt dem-
`The Acting CHAIR. The Clerk will
`tities are disadvantaged in PTO inter-
`onstrated the danger that we have in
`designate the amendment.
`ference proceedings that arise from dis-
`The text of the amendment is as fol-
`this law. A move to first-to-file system,
`putes over patent ownership under the
`lows:
`which is what this bill would do, with-
`current system. Independent inventors
`out a corresponding 1-year grace period
`and small companies lose more often
`Strike section 5 (‘‘Defense to Infringement
`in other countries dramatically under-
`Based on Prior Commercial Use’’), as amend-
`than they win in these disputes, plus
`ed, and redesignate succeeding sections and
`mines the patent protection of Amer-
`bigger companies are better able to ab-
`references thereto (and conform the table of
`ican inventors. Some of us believe
`sorb the cost of participating in these
`contents) accordingly.
`that’s the purpose of this bill because
`protracted proceedings.
`Page 68, line 9, strike ‘‘section 18’’ and in-
`they want to harmonize American law
`In addition, many inventors also
`sert ‘‘section 17’’.
`with the weak systems overseas.
`want protection for their patents out-
`Page 115, line 10, strike ‘‘6(f)(2)(A)’’ and in-
`Well, without this amendment that
`side the United States. If you plan on
`sert ‘‘5(f)(2)(A)’’.
`we are talking about right now, with-
`selling your product overseas, you need
`The Acting CHAIR. Pursuant to
`out the Conyers-Rohrabacher amend-
`to secure an early filing date. If you
`House Resolution 316, the gentlewoman
`ment, if an inventor discloses his dis-
`don’t have a clear filing date, you can
`from Wisconsin (Ms. BALDWIN) and a
`coveries, perhaps to potential inves-
`be shut off from the overseas market.
`Member opposed each will control 5
`tors, his right to patent protection is
`A change to first-inventor-to-file will
`minutes.
`essentially gone. It’s not gone from
`help our businesses grow and ensure
`The Chair recognizes the gentle-
`just Americans. Yes, he would be pro-
`that American goods and services will
`woman from Wisconsin.
`tected under American law; but from
`be available in markets across the
`Ms. BALDWIN. I yield myself 31⁄2
`all those people in foreign countries
`globe.
`minutes.
`In the last 7 years, only one inde-
`without a similar grace period to what
`Madam Chair, I rise to urge adoption
`pendent inventor out of 3 million pat-
`we have here in our system, these peo-
`of the Baldwin-Sensenbrenner amend-
`ent applications filed has prevailed
`ple are not restricted. Thus, they
`ment that strikes section 5 in the
`over the inventor who filed first. One
`could, once an American inventor dis-
`America Invents Act. Section 5 ex-
`out of 3 million. So there is no need for
`closes it, at any time they can go and
`pands the prior-user rights defense
`this amendment. Independent inven-
`file a patent and steal our inventors’
`from its present narrow scope to broad-
`tors lose to other applicants with deep-
`discoveries.
`ly apply to all patents with minimal
`er pockets that are better equipped to
`The only way for American inventors
`exceptions.
`exploit the current complex legal envi-
`to benefit from a grace period here,
`As we work to rebuild our economy,
`ronment.
`which this bill is all about, is to ensure
`Congress should be doing all that it can
`
`VerDate Mar 15 2010 02:08 Jun 24, 2011 Jkt 099060 PO 00000 Frm 00020 Fmt 7634 Sfmt 0634 E:\CR\FM\K23JN7.041 H23JNPT1
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`rfrederick on DSKD9S0YB1PROD with HOUSE
`
`

`
`H4483
`June 23, 2011
`CONGRESSIONAL RECORD — HOUSE
`ple or companies who could later claim
`to foster small business innovation and
`facturing jobs and could benefit from
`‘‘prior use’’?
`investment. I believe that section 5
`this provision. Without this provision,
`The Acting CHAIR. The time of the
`will do just the opposite. Expanding
`businesses say they may be unable to
`gentlewoman has expired.
`prior-user rights will be disastrous for
`expand their factories and hire Amer-
`Ms. BALDWIN. I yield myself 15 addi-
`small American innovators, as well as
`ican workers if they are prevented
`tional seconds.
`university researchers, and ultimately
`from continuing to operate their facili-
`If we let section 5 stand, it is unclear
`slow job creation.
`ties the way they have for years.
`to me whether a similar company
`Despite current challenges, the U.S.
`b 1430
`would ever secure the funding that
`patent system remains the envy of the
`For many manufacturers, the patent
`they need to grow.
`world. Since the founding of our Na-
`system presents a catch-22. If they pat-
`I urge my colleagues to adopt the
`tion, inventions have been awarded ex-
`ent a process, they disclose it to the
`Baldwin-Sensenbrenner amendment.
`clusive rights in exchange for public
`world and foreign manufacturers will
`I reserve the balance of my time.
`disclosure. This system also creates in-
`learn of it and, in many cases, use it in
`Mr. SMITH of Texas. I rise in opposi-
`centives for investing in new ideas, fos-
`secret without paying licensing fees.
`tion to the amendment.
`tering new ways of thinking, and en-
`The patents issued on manufacturing
`The Acting CHAIR. The gentleman is
`couraging further advancement and
`processes are very difficult to police,
`recognized for 5 minutes.
`disclosures. It promotes progress.
`and oftentimes patenting the idea sim-
`Mr. SMITH of Texas. Madam Chair,
`If proponents of expanding prior-user
`ply means giving the invention away to
`this amendment strikes the prior-user
`rights have their way with this legisla-
`foreign competitors. On the other
`rights provision from the bill. I strong-
`tion, they will give new rights to those
`hand, if the U.S. manufacturer doesn’t
`ly oppose this amendment.
`who have previously developed and
`patent the process, then under the cur-
`The bill expands prior-user rights—a
`used the same process or product even
`rent system a later party can get a pat-
`strong, pro-job, pro-manufacturing pro-
`if they never publicly divulged their in-
`ent and force the manufacturer to stop
`vision. This provision will help bring
`novation and never even applied for a
`using a process that they independ-
`manufacturing jobs back to this coun-
`patent. It will transform our patent
`ently invented and used.
`try. It allows factories to continue
`system from one that values trans-
`In recent years, it has become easier
`using manufacturing processes without
`parency to one that rewards secrecy.
`for a factory owner to idle or shut
`fear of costly litigation. It is abso-
`To understand why expanding prior-
`down parts of his plant and move oper-
`lutely a key component of this bill.
`user rights runs counter to the public
`ations and jobs overseas rather than
`This provision has the strong support
`interest, it is important to reiterate
`risk their livelihood through an inter-
`of American manufacturers and the
`how critical exclusive rights are for in-
`ference proceeding before the PTO. The
`support of all the major university as-
`ventions to gain marketplace value and
`America Invents Act does away with
`sociations and technology-transfer as-
`acquire capital. For start-ups and
`these proceedings and includes the pro-
`sociations. These include the Associa-
`small businesses, raising necessary
`manufacturing and constitutional pro-
`tion of American Universities, Amer-
`capital is vital and challenging. The
`vision of prior-user rights.
`ican Council on Education, Association
`expansion of prior-user rights would
`This provision creates a powerful in-
`of American Medical Colleges, Associa-
`only make that task all the more dif-
`centive for manufacturers to build new
`tion of Public and Land Grant Univer-
`ficult.
`plants and new facilities in the United
`sities, Association of University Tech-
`Under the system proposed in the
`States. Right now, all foreign countries
`nology Managers, and the Council on
`American Invents Act, investors would
`recognize prior-user rights, and that
`Government Relations representing the
`have no way of determining whether
`has played a large role in attracting
`vast majority of American Univer-
`anyone had previously developed and
`American manufacturing jobs and fa-
`sities. Prior-user rights ensure that the
`used the process or product that they
`cilities to these countries. H.R. 1249 fi-
`first inventor of a new process or prod-
`were seeking to patent. In such a sce-
`nally corrects this
`imbalance and
`uct using manufacturing can continue
`nario, a patent might be valuable or
`strongly encourages businesses to cre-
`to do so.
`relatively worthless; and the inventor
`ate manufacturing jobs in this country.
`This provision has been carefully
`and potential investors would have no
`The prior-user rights provision pro-
`crafted between stakeholders and the
`means of determining which was true.
`motes job creation in America. Prior-
`university community. The language
`Madam Chairwoman, I would like to
`user rights will help manufacturers,
`provides an effective exclusion for
`boast for a moment if I could about
`small business and other innovative in-
`most university patents, so this provi-
`Stratatech, a fiercely innovative small
`dustries strengthen our economy. It
`sion focuses on helping those in the
`business in Madison run by a top re-
`will help our businesses grow and allow
`private sector.
`searcher at the University of Wisconsin
`innovation to flourish.
`The prior-use defense is not overly
`who, through her research there, devel-
`I strongly support prior-user rights,
`expansive and will protect American
`oped a human living skin substitute.
`and so I oppose this amendment.
`manufacturers from having to patent
`This living skin is a groundbreaking
`I yield back the balance of my time.
`the hundreds or thousands of processes
`treatment method that we hope will ul-
`Ms. BALDWIN. I yield the balance of
`they already use in their plants.
`timately save the lives of American
`my time to the gentleman from Wis-
`After getting initial input from the
`troops who have suffered burns while
`consin (Mr. SENSENBRENNER).
`university
`community,
`they
`rec-
`serving in Iraq and Afghanistan.
`The Acting CHAIR. The gentleman
`ommended that we make the addi-
`The company was recently awarded
`from Wisconsin is recognized for 11⁄4
`tional changes reflected in this bill to
`nearly $4 million to continue clinical
`minutes.
`ensure that prior-user rights will work
`trials for their tissue product. And
`Mr.
`SENSENBRENNER. Madam
`effectively for all private sector stake-
`what can save lives in a desert combat
`Chair, this expansion of prior-user
`holde