f
`
`RESERVATION OF LEADER TIME
`The ACTING PRESIDENT pro tem-
`pore. Under the previous order, leader-
`ship time is reserved.
`
`f
`
`MORNING BUSINESS
`The ACTING PRESIDENT pro tem-
`pore. Under the previous order, the
`Senate will be in a period of morning
`business until 5 p.m., with Senators
`permitted to speak therein for up to 10
`minutes each.
`The Senator from Arizona.
`Mr. KYL. Mr. President, I ask unani-
`mous consent to speak for as much
`time as I might consume.
`The ACTING PRESIDENT pro tem-
`pore. Without objection, it is so or-
`dered.
`
`S5319
`September 6, 2011
`CONGRESSIONAL RECORD — SENATE
`not so much to do more but for the
`States. Currently, most foreign coun-
`that avoids the need for expensive dis-
`tries recognize some prior user rights
`covery and litigation over what a pat-
`first time in a long time to do less so
`that encourage manufacturers to build
`ent’s priority date is. By adopting a
`they can finally do what it takes to get
`facilities in those countries. This bill
`simple definition of the term ‘‘prior
`this economy moving again.
`corrects this imbalance and creates a
`art,’’ the bill will make it easier to as-
`I yield the floor.
`strong incentive for businesses to cre-
`sess whether a patent is valid and
`ate manufacturing jobs in this country.
`cheaper for an inventor to enforce his
`Second, something called supple-
`patent. By recognizing a limited prior
`mental examination. A provision of
`user right, the bill creates a powerful
`this bill that will particularly benefit
`incentive for manufacturers to build
`small and startup investors is section
`factories and create jobs in this coun-
`12, which authorizes supplemental ex-
`try. By allowing post-grant review of
`amination of patents. It is one of the
`patents, especially low quality, busi-
`reasons the bill has such strong sup-
`ness method patents, the bill creates
`port in the small business community.
`an inexpensive substitute for district
`Currently, even minor and inadvertent
`court litigation and allows key issues
`errors in the patent application process
`to be addressed by experts in the field.
`can lead to expensive and very unpre-
`By eliminating the recent surge of
`dictable and very inequitable conduct
`false-marking litigation, the bill effec-
`litigation. It is often the case that
`tively repeals what amounts to a liti-
`startup companies or university re-
`gation tax on American manufac-
`searchers cannot afford to hire the
`turing.
`very best patent lawyers. Their patents
`Let me take a few moments to de-
`are prosecuted by an in-house attorney
`scribe how the provisions of this bill
`who does a good enough job but who is
`will provide concrete benefits to Amer-
`unfamiliar with all of the sharp corners
`ican inventors, both large and small,
`and pitfalls of the inequitable conduct
`and to the American manufacturing
`doctrine, such as the need to present
`economy. First, prior commercial use
`cumulative studies and prior art.
`defense.
`A new provision of the present bill
`Later, when more legally sophisticated
`that was added by the House of Rep-
`investors evaluate the patent for po-
`resentatives will provide important ad-
`tential investment or purchase, these
`vantages to U.S. manufacturers. Sec-
`minor flaws in prosecution can deter
`tion 5 of the bill creates a new defense
`the investor from purchasing or fund-
`to patent infringement of prior com-
`ing the development of the invention.
`mercial use. This new defense will en-
`An investor would not risk spending
`sure that the first inventor of a new
`hundreds of millions of dollars to de-
`process, or of a product used in a man-
`velop a product if a potential inequi-
`ufacturing process, can continue to use
`table conduct attack may wipe out the
`the invention in a commercial process
`whole investment.
`Parties on both sides of these ex-
`even if a subsequent inventor later pat-
`changes report that investors routinely
`ents the idea. For many manufacturing
`walk away from inventions because of
`processes the patent system presents a
`their inability under current law to re-
`Catch-22. If the manufacturer patents
`solve uncertainties whether a flaw in
`the process, he effectively discloses it
`prosecution was, in fact, inequitable
`to the world. But patents for processes
`conduct. These decisions not to invest
`that are used in closed factories are
`in a new invention represent important
`difficult to police. It is all but impos-
`new cures never tested and brought to
`sible to know if someone in a factory in
`market and other important inventions
`China, for example, is infringing such a
`that are never developed.
`patent. As a result, unscrupulous for-
`The America Invents Act provides a
`eign and domestic inventors will sim-
`solution to this problem by authorizing
`ply use the invention in secret without
`supplemental examination of patents.
`paying licensing fees. Patenting such
`This new proceeding will allow inven-
`manufacturing processes effectively
`tors or patent purchasers to return to
`amounts to giving away the invention
`the Patent Office with additional ma-
`to foreign manufacturers.
`terial and have the Patent Office re-
`On the other hand, if the U.S. manu-
`evaluate the patent in light of that ma-
`facturer does not patent the process, a
`terial. If the patent is invalid in light
`subsequent party may obtain a patent
`of the new material, the Patent Office
`on it and the U.S. manufacturer will be
`will cancel the claims. But if the office
`forced to stop using a process that he
`finds that the patent is valid, the par-
`was the first to invent and which he
`ties will have a patent that they can be
`has been using for years.
`The prior commercial use defense
`legally certain will be upheld and en-
`provides relief to U.S. manufacturers
`forced. The authorization of supple-
`from this Catch-22, allowing them to
`mental examination will result in
`continue to use a manufacturing proc-
`path-breaking inventions being devel-
`ess without having to give it away to
`oped and brought to market that oth-
`competitors or running the risk that it
`erwise would have lingered on the shelf
`will be patented out from under them.
`because of legal uncertainty over the
`To establish a right to this defense,
`patent. It will ensure that small and
`however, the America Invents Act re-
`startup companies with important and
`quires the manufacturer to use the
`valid patents will not be denied invest-
`process in the United States. As a re-
`ment capital because of legal tech-
`sult, the AIA creates a powerful incen-
`nicalities.
`Let me talk about what I think is un-
`tive for manufacturers to build their
`doubtedly the most important among
`factories and plants in the United
`
`AMERICA INVENTS ACT
`Mr. KYL. Mr. President, I rise today
`to urge my colleagues to support H.R.
`1249, the Leahy-Smith America Invents
`Act. Some other responsibilities may
`take me from the Senate floor during
`this coming week when we will be de-
`bating the act and therefore I wanted
`to lay out my views at this time,
`strongly urging my colleagues to sup-
`port the bill.
`Although the present bill originates
`in the House of Representatives, it is
`actually based on and is substantially
`identical to the bill that passed the
`Senate in March by a vote of 95 to 5.
`Also, before Chairman SMITH brought
`his bill to the House floor, he nego-
`tiated final changes to the bill with the
`lead supporters of the measure in the
`Senate Judiciary Committee. The
`House and Senate have now been work-
`ing on patent reform for 6 years. The
`present bill is a good bill. It reflects a
`genuine
`compromise between
`the
`House and the Senate. It is a bill that
`will provide substantial benefits to the
`U.S. economy in the coming years, so I
`hope that, as I said, the Senate will
`adopt this legislation and be able to
`pass it on directly to the President for
`his signature.
`The overarching purpose and effect of
`the present bill is to create a patent
`system that is clearer, fairer, more
`transparent, and more objective. It is a
`system that will ultimately reduce liti-
`gation costs and reduce the need to
`hire patent lawyers. The bill will make
`it simpler and easier to obtain valid
`patents and to enforce those patents,
`and it will cure some very clear litiga-
`tion abuses that have arisen under the
`current rules, abuses that have done
`serious harm to American businesses.
`By adopting the first-to-file system,
`for example, the bill creates a rule that
`is clear and easy to comply with and
`
`f
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`

`
`S5320
`September 6, 2011
`CONGRESSIONAL RECORD — SENATE
`of rules rather than being forced to op-
`the bill’s changes to current law, and
`Under this bill, if a U.S. inventor pub-
`erate under two different systems.
`that is its transition to the first-to-file
`licly discloses his invention, no third
`Another one of the bill’s clear im-
`system. This long overdue reform will
`party’s application filed after that date
`provements over current law is its
`create a system for establishing a pat-
`can be valid because the filing date is
`streamlined definition of the term
`ent’s priority date that is official, sim-
`what will determine priority, not a
`‘‘prior art.’’ Public uses and sales of an
`ple, transparent, and fair. Priority
`purported date of conception. Nor can a
`invention will remain prior art, but
`dates not only establish priorities be-
`third party easily contrive fake prior
`only if they make the invention avail-
`tween competing patent applications
`art to defeat the patent. Under the
`able to the public. An inventor’s con-
`for the same invention but are also
`AIA, only those actions that made the
`fidential sale of his invention, his dem-
`used to measure a patent against po-
`invention publicly available will con-
`onstration of its use to a private group,
`tentially invalidating prior art.
`stitute prior art, and these are much
`or a third party’s unrestricted but pri-
`Currently, establishing a priority
`harder to fake than are claims of hav-
`vate use of the invention will no longer
`date requires expensive litigation and
`ing secretly made the invention in a
`constitute private art. Only the sale or
`discovery into what the inventor’s
`private
`laboratory, again, say,
`in
`offer for sale of the invention to the
`notebooks show and when they show it
`China. Under new section 102(b)(1)(B),
`relevant public or its use in a way that
`and whether the inventor diligently
`once the U.S. inventor discloses his in-
`makes it publicly accessible will con-
`perfected his invention after he con-
`vention, no subsequent prior art can
`stitute prior art.
`ceived of it.
`defeat the invention. The U.S. inventor
`The main benefit of the AIA public
`Also, for businesses seeking legal cer-
`does not need to prove that the third
`availability standard of prior art is
`tainty, our current system can be a
`party disclosures following his own dis-
`that it is relatively inexpensive to es-
`nightmare. A company hoping to bring
`closures are derived from him. He can
`tablish the existence of events that
`a new product to market in a par-
`thus take full advantage of the grace
`make an invention available to the
`ticular field of technology has no way
`period and disclose his invention in
`public. Under current law, depositions
`of knowing whether a competitor that
`academic papers and at trade shows
`and litigation discovery are required in
`belatedly sought the patent on its new
`without worrying that such disclosures
`order to identify all of the inventor’s
`product will succeed in securing a valid
`will lead to theft or fraudulent invali-
`private dealings with third parties and
`patent on the product. It all depends on
`dation of his patent.
`determine whether those dealings con-
`the invention date the competitor will
`Similarly, under the America Invents
`stitute a secret offer for sale or third
`be able to prove relative to the com-
`Act, once the U.S. inventor files even a
`party use that invalidates the patent
`pany that the company developing the
`provisional application, his rights will
`under the current law’s forfeiture doc-
`product can prove.
`be secured. Under this bill, no one can
`Given that both the product devel-
`trines. The need for such discovery is
`file a later application but claim an
`oper and competitor can rely on their
`eliminated once the definition of
`earlier priority date because the pri-
`own secret documents that the other
`‘‘prior art’’ is limited to those activi-
`ority date is set by the filing date. The
`side will not see until litigation over
`ties that make the intention accessible
`provisional
`application
`also
`con-
`the patent commences, neither of these
`to the public. This will greatly reduce
`stitutes section 103 prior art as of its
`two parties can gain a clear picture of
`the time and cost of patent litigation
`filing date. As a result, a third party’s
`whether a patent is valid without years
`and allow the courts and the PTO to
`patent for a trivial or obvious vari-
`of litigation and millions of dollars of
`operate much more efficiently.
`ation of the patent will be invalid and
`Both of these last two changes—the
`discovery and other litigation costs.
`will not crowd out the original inven-
`first to file and the new definition of
`Under first to file, by contrast, inven-
`tor’s patent rights.
`‘‘prior art’’—will also protect Amer-
`tors will file informal and inexpensive
`Finally, validating prior art will de-
`ican inventors against theft of their in-
`provisional applications. These appli-
`pend on publicly accessible informa-
`vention both at home and abroad.
`cations need only disclose what the in-
`tion, not private activities that take
`Under current law, if an American in-
`vention is and how to make it, infor-
`place, for example, in a foreign land. As
`ventor sells or otherwise discloses his
`mation the inventor already needs to
`a result, it will be impossible for a
`invention, there is a risk that an un-
`have in his possession anyway in order
`third party who derived the invention
`scrupulous third party will steal the
`to establish a priority date under the
`from a U.S. inventor’s public disclosure
`idea and file a U.S. patent for it. If the
`current system. Under first to file,
`or patent application to steal the in-
`thief claims he himself made the inven-
`once the inventor files this information
`vention or sabotage the U.S. inventor’s
`tion before the U.S. inventor, then the
`with the Patent Office, he has a pri-
`patent. The only way to obtain priority
`U.S. inventor will need to prove the in-
`ority date that is both secure and pub-
`or invalidate the invention would be to
`vention was stolen from him. Current
`lic. The application is a government
`file or publicly disclose the invention
`law even allows activities that occur in
`document. There is no need to litigate
`before the U.S. inventor has done so—
`a foreign country to establish a pri-
`over its priority date. We know that.
`something that will obviously be im-
`Other industry participants will be
`ority date for a U.S. patent. Thus, if a
`possible for the deriver to do.
`able to easily determine the patent’s
`U.S. inventor who has been a victim of
`Finally, I would like to talk about
`priority date, allowing them to meas-
`theft is unable to prove that activities
`false marking for a moment. I would
`ure the patent against prior art and de-
`alleged to have occurred in China or
`like to describe the bill’s important re-
`termine if it is valid. There will be no
`India, say, never actually took place,
`forms to the false marking statute.
`opportunity to fraudulently backdate
`he not only loses his patent but the
`The America Invents Act reins in
`the priority date. That date will de-
`foreign thief can obtain a U.S. patent
`abuses that are reflected in a recent
`pend on a government document, not
`and block the U.S. inventor from prac-
`surge in false marking litigation. It al-
`privately held files.
`ticing his own invention.
`lows such suits to be brought only by
`Most U.S. businesses already effec-
`Finally, under current law, even if
`those parties who have actually suf-
`tively operate under the first-to-file
`the U.S. inventor files a patent applica-
`fered a competitive injury as a result
`system. They file applications prompt-
`tion right away, his rights still are not
`of false marking.
`ly because it is difficult and risky to
`secure. Under current law, an early fil-
`Currently, such suits are often
`rely on proof of invention dates to de-
`ing date can be defeated by another ap-
`brought by parties asserting no actual
`feat a competing application that was
`plicant’s claim that he conceived of the
`competitive injury from the marking—
`filed earlier. Also, because the rest of
`invention earlier. Thus a foreign thief
`or who do not even patent or manufac-
`the world uses first to file, U.S. inves-
`can claim he came up with the idea in
`ture anything in a relevant industry.
`tors need to secure first-to-file priority
`his overseas laboratory, and the U.S.
`Many cases have been brought by pat-
`if they want their patents to be valid
`inventor would bear the burden of
`ent lawyers themselves claiming the
`anywhere outside of this country.
`proving that a fraud had been per-
`right to enforce a fine of $500 for every
`For many U.S. businesses the Amer-
`petrated in a foreign country.
`marked product. One manufacturer of
`ica Invents Act does not change the
`Under the America Invents Act, by
`plastic cups who stamped his patent
`system under which they operate.
`contrast it will be much harder for
`number on his cups was recently sued
`Rather, it simply allows American
`thieves, both foreign and domestic, to
`by a lawyer for $500 for each disposable
`businesses to comply with just one set
`steal a U.S.
`inventor’s
`invention.
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`

`
`S5321
`September 6, 2011
`CONGRESSIONAL RECORD — SENATE
`cup that was sold, for a gargantuan
`2,000. To date, there have been more
`to this tragedy that occurred just a few
`than 700 homes confirmed as severely
`total of $9 trillion.
`minutes ago, but according to early re-
`damaged or destroyed.
`In reality, the bulk of these suits set-
`ports three people are now dead and six
`I had the opportunity to go to some
`tle for their nuisance value, the costs
`others have been wounded by a single
`trailer parks in Berlin, in central
`of continuing to litigate. They rep-
`gunman.
`Vermont, and I was down in the south-
`resent a tax that patent lawyers are
`So I extend my deepest sympathies
`ern part of the State in Brattleboro
`imposing on domestic manufacturing—
`to all of those who have been affected.
`and it is an incredibly sad sight to see.
`a shift in wealth to lawyers that comes
`The victims and their families are in
`Mobile homes, where senior citizens
`at the expense of manufacturing jobs.
`my thoughts and will be every day, and
`were living, have been destroyed. They
`Well, this bill prevents such abuses by
`certainly they have been during the
`are now forced to relocate. It was a
`repealing the statute’s qui tam action
`last several minutes. I am disturbed to
`very tragic circumstance.
`while still allowing parties who have
`hear that two of the victims were serv-
`Further, the storm has knocked out
`separate actual
`injury
`from
`false
`ing this Nation proudly as part of the
`135 segments of the State highway sys-
`marking to sue and allowing the
`Nevada National Guard.
`tem, as well as 35 State bridges, com-
`I commend the brave first responders
`United States to enforce a $500-per-
`pletely isolating 13 communities for
`who rushed to the scene for their pro-
`product fine where appropriate. Qui
`several days. An unknown number of
`fessionalism.
`tam statues are a relic of the 19th cen-
`farms and businesses have been de-
`Carson City is a wonderful place. I
`tury and generally produce far more
`stroyed.
`have spent time there through three
`litigation than is in the public interest.
`I was down in Wilmington, a beau-
`legislative sessions. There are the
`Almost all of these statutes have been
`tiful town in the southern part of the
`beautiful Sierra, NV, mountains. It is a
`repealed.
`State on Route 9. Virtually their entire
`peaceful, quiet place; and to have
`The America Invents Act continues
`downtown business community has
`something such as this happen is very
`this trend. By repealing the false
`been severely damaged, and that is
`difficult to accept.
`marking qui tam statute, the AIA will
`clearly undermining the fabric not
`I note the absence of a quorum.
`allow American companies to spend
`only of the economy of that town but
`The PRESIDING OFFICER. The
`money hiring new workers rather than
`of towns throughout the State.
`clerk will call the roll.
`fighting off frivolous false marking
`Our Amtrak and freight rail services
`The bill clerk proceeded to call the
`suits.
`were completely suspended as tracks
`roll.
`In conclusion, the America Invents
`literally washed into rivers. So we had
`Mr. SANDERS. Madam President, I
`Act will provide important benefits to
`tracks underwater. The State’s largest
`ask unanimous consent that the order
`U.S. inventors of all sizes, to startup
`office complex is located in Waterbury,
`for the quorum call be rescinded.
`companies, to domestic manufacturing,
`VT, a few miles from our capital,
`(Mrs.
`The PRESIDING OFFICER
`and to the U.S. economy generally. I
`Montpelier, and I visited that facility.
`SHAHEEN). Without objection, it is so
`look forward to its passage by the Sen-
`It had been completely flooded. There
`ordered.
`ate and its enactment into law.
`are 1,700 people who work there. For a
`As the majority leader stated in his
`small State, that is a lot of people—
`remarks in leader time, I hope those
`1,700 people—who work in our major of-
`who may have amendments will imme-
`fice complex in Waterbury. That has
`diately file those amendments so the
`now been shut down for an indefinite
`Senate can take them up in good order,
`period of time. That impacts, obvi-
`have plenty of time to debate them,
`ously, the State’s ability to provide
`and dispose of them in the appropriate
`services to the people of Vermont.
`way. It would be my hope the Senate
`At least 65 public schools were im-
`will end up passing the bill adopted by
`pacted and could not open on time.
`the House of Representatives so our ac-
`School is just beginning, with 65 public
`tion can result in sending the bill di-
`schools not able to open on time. This
`rectly to the President for his signa-
`is just a short list of some of the devas-
`ture. That is an accomplishment that
`tation that is going on in the State.
`could be achieved with cooperation be-
`I also want to call to the attention of
`tween the House and the Senate, be-
`the Senate another extraordinary trag-
`tween Democrats and Republicans, be-
`edy in our State, and that is the death
`tween the legislative and executive
`of a gentleman named Michael
`branches, and I think it would cer-
`Garafano. Mr. Garafano was an em-
`tainly begin to mark the time when
`ployee of the city of Rutland, and Rut-
`the American people could see their
`land was very hard hit by this disaster.
`legislative representatives begin to
`He and his son went up to a local dam
`work together on their behalf.
`to inspect the condition of the dam.
`Mr. President, I note the absence of a
`They were hit by a flash flood and both
`quorum.
`of them lost their lives. So here we
`The ACTING PRESIDENT pro tem-
`have an extraordinary public servant,
`pore. The clerk will call the roll.
`trying to protect the well-being of the
`The legislative clerk proceeded to
`people of Rutland, and he gave his life
`call the roll.
`in that effort. Mr. Garafano’s effort
`Mr. REID. Mr. President, I ask unan-
`will never be forgotten.
`As we go forward—not just for
`imous consent that the order for the
`Vermont but for New Jersey, for North
`quorum call be rescinded.
`Carolina, and we know upstate New
`(Mr.
`The PRESIDING OFFICER
`York was also hard hit—I have every
`FRANKEN). Without objection, it is so
`confidence the Senate and the House
`ordered.
`will do for Hurricane Irene as we have
`done for other natural disasters that
`have impacted different parts of our
`country, and I look forward to working
`with my colleagues to make sure, as
`Americans, we rebuild the commu-
`nities in Vermont and in other sections
`of the country that were devastated by
`this terrible flood.
`
`HURRICANE IRENE
`Mr. SANDERS. Madam President, as
`I suspect you know, Vermont has been
`hit very hard by Hurricane Irene. The
`storm caused widespread flooding, re-
`sulting in a number of deaths, the loss
`of many homes and businesses, and
`hundreds of millions of dollars in dam-
`age to property and infrastructure.
`I have visited many of the most hard-
`hit towns in the past week, including
`Ludlow, Wilmington, Brattleboro, Ber-
`lin, Moretown, and Waterbury. I was
`shocked and moved by the extent of
`the damage I saw. Many towns still
`have very limited access because the
`roads and bridges that link them to the
`world have been destroyed. This dis-
`aster will go down in history as one of
`the very worst natural disasters in the
`history of the State of Vermont.
`Let me take this opportunity to per-
`sonally thank the emergency rescue
`teams and all those aiding the victims
`of the floods for their outstanding
`work. Local crews, along with the
`Vermont National Guard, and Guard
`units from other States, such as New
`Hampshire, Maine, and Illinois, have
`airline-lifted food, water, blankets, and
`medicine to the worst hit towns. Po-
`lice, fire, and local officials have also
`done an extraordinary job.
`We still don’t know the cost of this
`disaster—it probably will not be tab-
`ulated for a while—but let me share a
`few figures in terms of what we have
`experienced. Just days after the dec-
`laration of a major disaster by the
`President, more than 2,000 Vermonters
`had already registered with FEMA—
`
`f
`
`f
`
`CARSON CITY SHOOTING
`Mr. REID. Mr. President, I was sad-
`dened to hear just a few minutes ago of
`a senseless act of violence committed
`in our capital, Carson City, NV. It hap-
`pened at a restaurant. There are few
`details of what happened and what led
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