`
`(Znngrzgsinnal Rama
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`United States
`#2
`PROCEEDINGS AND DEBATES OF THE 1 12 CONGRESS, FIRST SESSION
`of A merica
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`
`Vol. 157
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`WASHINGTON, TUESDAY, MARCH 1, 2011
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`N0. 29
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`The Senate met at 10 a.m. and was
`called to order by
`the Honorable
`JEANNE SHAHEEN. a Senator from the
`State of New Hampshire.
`PRAYER
`
`The Chaplain. Dr. Barry C. Black. of-
`fered the following prayer:
`Let us pray.
`0 God of time and eternity. We come
`to You not because we are perfect but
`because we trust Your mercy and kind-
`ness. By Your grace. we are able to tri-
`umph over evil.
`living no longer for
`ourselves alone but for You. Give our
`Senators a vision of the goals that
`produce righteousness. honor.
`justice.
`understanding. and peace. Empower
`them to serve the less fortunate.
`to
`bear the burdens of freedom. and to
`labor for Your glory. Lord. help them
`to know the constancy of Your pres-
`ence. to give primacy to prayer as they
`work. Give them the gifts of Your light
`and love.
`We pray in Your merciful Name.
`Amen.
`
`.—
`
`PLEDGE OF ALLEGIANCE
`The Honorable JEANNE SHAHEEN led
`the Pledge of Allegiance. as follows:
`the
`I pledge allegiance to the Flag of
`Uni ted States of America. and to the Repub-
`lic for which it stands. one nation under God.
`indivisible. with liberty and just1re for all.
`——_—
`
`APPOINTMENT OF ACTING
`PRESIDENT PRO TEMPORE
`The
`PRESIDING OFFICER. The
`clerk will please read a communication
`to the Senate from the President pro
`tempore (Mr. INOUYE).
`The assistant legislative clerk read
`the following letter:
`
`U.S. SENATE.
`PRESIDENT PRO TEMPORE.
`Washington. DC. March I. 2011.
`
`To the Senate:
`Under the provisions Of rule 1. paragraph 3.
`of the Standing Rules of the Senate. I hereby
`
`Semn‘e
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`the Honorable JEANNE SHAHEEN, a
`appoint
`Senator from the State of New Hampshire.
`to perform the duties of the Chair.
`DANIEL K. INOUYE.
`President pro tempere.
`Mrs. SHAHEEN thereupon assumed
`the chair as Acting President pro tem-
`DOI’P.
`
`.—
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`RECOGNITION OF THE MAJORITY
`LEADER
`
`The ACTING PRESIDENT pro tem-
`pore. The majority leader
`is recog-
`nized.
`
`.—
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`SCHEDULE
`fol-
`lVIr. REID. Madam President.
`lowing any leader remarks. there will
`be a period of morning business for an
`hour. Senators will be permitted to
`speak for up to 10 minutes each during
`that period of time. The majority will
`control the first 30 minutes and the Re-
`publicans will control the final 30 min-
`utes. Following morning business. the
`Senate will resume consideration of S.
`23. the patent reform bill. The Senate
`will recess from 12:30 until 2:15 to allow
`for our weekly caucus meetings. Sen-
`ators should expect rollcall votes in re-
`lation to amendments to the patent re-
`form bill throughout the day.
`ORDER or PROCEDURE
`I ask unanimous consent that Sen-
`ator TOOMEY of Pennsylvania be per—
`mitted to speak as in morning business
`at 2:15 pm. today for up to 15 minutes
`in order to deliver his maiden speech in
`the Senate.
`The ACTING PRESIDENT pro tem-
`pore. Without objection.
`it is so or—
`dered.
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`
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`MEASURE PLACED ON THE
`CALENDAR—H.R. 1
`Mr. REID. Madam President. I under—
`stand that H.R. 1 is due for a second
`reading.
`
`The ACTING PRESIDENT pro tem-
`pore. The clerk will read the bill for
`the second time.
`The assistant legislative clerk read
`as follows:
`A bill (H.R. 1) making appropriations for
`the Department of Defense and other depart-
`ments and agencies of the Government for
`the fiscal year ending September 30. 2011. and
`for other purposes.
`to any further
`Mr. REID.
`I object
`proceedings on H.R. 1 at this time.
`The ACTING PRESIDENT pro tem-
`pore. Objection having been heard. the
`bill will be placed on the calendar.
`——.—
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`ISSUES OF THE DAY
`Mr. REID. Madam President. we have
`before us today an extremely impor-
`tant piece of legislation. It is called
`the America Invents Act of 2011. The
`reason I emphasize 2011 is because it
`has been almost 60 years since we had
`the last meaningful reforms of the Na-
`tion‘s patent system. We have tried on
`many occasions in recent years to get
`this bill on the Senate floor. The Judi-
`ciary Committee has reported out a
`number of bills over the years. and we
`have taken no action here on the Sen—
`ate floor for a number of reasons. But
`it is now on the floor. There are a cou—
`ple of issues to which our attention
`will be directed.
`I have received calls from a. number
`of Senators who have amendments
`they want to offer that are in relation
`to this bill. only two of which I think
`are really meaningful. but I am sure
`there are others. I hope we can move
`through this. One of the first amend-
`ments filed is one that has nothing to
`do with patent reform. and we will dis-
`pose Of that.
`I think it is important to understand
`that this bill. if we do it right. will cre—
`ate millions of jobs. Some estimates
`suggest literally millions of new jobs
`could be created through this reform.
`Not every patent creates a job or gen—
`erates economic value. Some are worth
`
`0 This “bullet" symbol identifies statements or insertions which are not spoken by a Member of the Senate on the floor.
`
`Printed on recycled paper.
`
`Page 1 of 4
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`$1023
`
`VIRNETX EXHIBIT 2022
`Microsoft v. VirnetX
`Trial |PR2014-00610
`
`VIRNETX EXHIBIT 2022
`Microsoft v. VirnetX
`Trial IPR2014-00610
`
`

`

`81040
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`Benjamin Franklin used to say: He
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`will cheat without scruple who can
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`without fear. I think the congressional
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`corollary to that might be that Con—
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`gress, which can continue to engage in
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`perpetual deficit spending, will
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`tinue to do so unless or until they are
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`held accountable by the people or re—
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`quired by that Congress to put itself in
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`a straightjacket. That is the straight—
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`jacket we need. That is why I am pro—
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`posing this amendment so, at a min—
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`imum, before this patent reform legis—
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`lation, which I support wholeheartedly,
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`moves forward, we can all agree as
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`Members of this body that we need a
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`constitutional amendment to keep us
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`from doing what is slowly killing the
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`economy of
`the United States and
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`gradually mounting a severe challenge,
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`an existential threat to every Federal
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`program that currently exists.
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`I invite each of my colleagues to vote
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`for and support this amendment and to
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`support S.J. Res. 5, a constitutional
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`amendment I have proposed that would
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`put Congress in this type of strait—
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`jacket.
`Here is, in essence, what S.J. Res. 5
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`says: If adopted by Congress by the req—
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`uisite
`two—thirds margins
`in both
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`Houses and approved by the States,
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`three—fourths of them as required by
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`article V of the Constitution, it would
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`tell Congress it may not spend more
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`than it receives in a given year, it may
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`not spend more than 18 percent of GDP
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`in a year, it may not raise taxes, and it
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`may not raise the national debt ceiling
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`a
`without
`two—thirds
`supermajority
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`vote in both Houses of Congress. That
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`is the kind of permanent binding con—
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`stitutional measure I think we need in
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`order to protect the government pro—
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`grams we value so highly and upon
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`which 300 million Americans have
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`come to depend, in one way or another.
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`I urge each of my colleagues to sup—
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`port
`this amendment and to support
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`S.J. Res. 5.
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`I yield the floor and suggest the ab—
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`sence of a quorum.
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`The
`PRESIDING OFFICER. The
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`clerk will call the roll.
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`The assistant editor of the Daily Di—
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`gest proceeded to call the roll.
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`Mr. KYL.
`I ask unanimous consent
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`that the order for the quorum call be
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`rescinded.
`The PRESIDING OFFICER. Without
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`objection, it is so ordered.
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`Mr. KYL. Mr. President, I rise today
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`to speak on the Patent Reform Act of
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`2011, which I understand will be re—
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`titled as the “America Invents Act.”
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`When this bill was marked up in the
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`Judiciary Committee in 2007 and again
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`in 2009, I voted against it, and I sub—
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`mitted minority views
`to the com—
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`mittee report for the bill. In the 2009
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`committee report, Senators Russ Fein—
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`gold and TOM COBURN joined me in
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`identifying a set of issues that we felt
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`needed to be addressed before the bill
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`was ready for consideration by the full
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`Senate. Chief among these were con—
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`about
`bill’s
`system of
`cerns
`the
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`postissuance administrative review of
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`CONGRESSIONAL RECORD — SENATE
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`March 1, 2011
`other inventor conceived of his inven—
`patents. Senior career staff at the Pat—
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`ent Office had expressed deep mis—
`tion or before the prior art was dis—
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`givings about the office’s ability to ad—
`closed. Under the first—to—file system,
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`minister this system. In response, at
`by contrast, the same priority is deter—
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`the conclusion of the 2009 mark up,
`mined by when the application for pat—
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`ent was filed. Whichever inventor files
`Chairman LEAHY pledged to invite the
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`Patent Office to work with the com—
`first has priority, and third—party prior
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`mittee to address these concerns and to
`art is measured against the filing date,
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`try to develop a system that the office
`and is invalidating if it disclosed the
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`would be able to administer.
`invention before the date when the ap—
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`Chairman LEAHY carried through on
`plication was filed, rather than the
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`date when the invention was conceived.
`his pledge and held those meetings
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`In commentary that was published
`later that year. As a result, important
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`on Sunday, February 27, Mr. Gene
`changes were made to the bill, eventu—
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`ally resulting in a managers’ amend—
`Quinn, the writer of the IP Watchdog
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`Web site, made some worthy points
`ment that was announced in 2010 by
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`about the present bill’s proposed move
`Chairman LEAHY and then—Ranking
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`to a first—to—file system. Responding to
`Member SESSIONS. The 2010 managers’
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`critics of first to file, Mr. Quinn first
`amendment, which is also the basis of
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`noted that: in practical effect, we al—
`the present bill,
`substantially ad—
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`dressed all of the concerns that Sen—
`ready have a first inventor to file sys—
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`tem. For example, since the start of
`ators Feingold and COBURN and I raised
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`fiscal year 2005 on October 1, 2004, there
`in the 2009 Minority Report. As a re—
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`have been over 2.9 million patent appli—
`sult,
`I became a cosponsor of
`that
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`cations filed and only 502 Interferences
`amendment, and am proud to cospon—
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`decided. An Interference Proceeding
`sor and support the bill that is before
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`occurs when multiple inventors file an
`us today.
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`application claiming the same inven—
`I will take a few moments today to
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`tion, and is the hallmark of a first to
`describe the key changes that led to
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`invent system .
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`the 2010 breakthrough on this bill. But
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`try 502
`Interferences over nearly 7
`first, I would like to address an impor—
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`years, a grand total of 1 independent
`tant aspect of the bill that has recently
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`inventor managed to demonstrate they
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`become
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`were the first to invent, and a grand
`troversy. This is the bill’s change to a
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`total of 35 small entities were even in—
`first—inventor—to—file patent system.
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`volved in an Interference.
`About two—thirds of the present bill
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`has never been controversial and has
`In other words, as Mr. Quinn notes,
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`been included in all of the various
`although the first—to—invent system is
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`iterations of this bill ever since the
`supposed to help the little guy, over
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`the last seven years, only one inde—
`first patent reform act was introduced
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`pendent inventor has managed to win
`in 2005 by Mr. LAMAR SMITH, who was
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`an interference contest and secure the
`then the chairman of the House Intel—
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`benefits of the first to invent system.
`lectual Property Subcommittee. Mr.
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`And again, this is out of nearly 3 mil—
`SMITH’s 2005 bill, HR. 2795,
`included
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`lion patent applications filed over this
`the following proposals: it switched the
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`United States from a first—to—invent
`period.
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`Mr. Quinn’s comments also debunk
`patent system to a first—inventor—to—
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`the notion that an interference pro—
`file system. The Smith bill enacted
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`ceeding is a viable means of securing
`chapter 32 of title 35, creating a first—
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`first—to—invent rights for
`independent
`window, post—grant opposition proce—
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`and other small
`inventors. He notes
`dure. It authorized third parties to sub—
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`that:
`mit and explain relevant prior art to
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`On top of this, the independent inventors
`the Patent Office with respect to an ap—
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`and small entities, those typically viewed as
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`plication before a patent is issued. The
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`benefiting from the current first to invent
`Smith bill
`amended the inventor’s
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`system,
`realistically could never benefit
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`oath, and expanded the rights of as—
`from such a system. To prevail as the first to
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`signees to prosecute a patent applica—
`invent and second to file, you must prevail
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`tion under section 118. And it also
`in an Interference proceeding, and according
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`to 2005 data from the AIPLA,
`the average
`eliminated subjective elements from
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`cost through an interference is over $600,000.
`the patent code, and included the first
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`So let’s not kid ourselves, the first to invent
`proposal
`for creating derivation pro—
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`system cannot be used by independent inven—
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`ceedings. All of these elements of Mr.
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`tors in any real,
`logical or intellectually
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`SMITH’s original 2005 bill are retained
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`honest way, as supported by the reality of
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`in the bill that is before us today, and
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`the numbers above.
`. [F]irst to invent is
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`are, in fact, the most important parts
`largely a “feel good” approach to patents
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`where the underdog at least has a chance, if
`of the bill. And, until recently, these
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`they happen to have $600,000 in disposable in—
`provisions had not proven controver—
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`come to invest on the crap—shoot that is an
`sial.
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`Interference proceeding.
`After the announcement of the 2010
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`managers’ amendment, however, mem—
`Obviously, the parties that are likely
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`bers of the Judiciary Committee began
`to take advantage of a system that
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`to hear more from critics of the bill’s
`costs more than half a million dollars
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`move to a first—to—file system. Under
`to utilize are not likely to be small and
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`current law’s first—to—invent system, a
`independent
`inventors.
`Indeed,
`it
`is
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`patent applicant or owner has priority
`typically major corporations that in—
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`against other patents or applications,
`voke and prevail
`in interference pro—
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`or against invalidating prior art, if he
`ceedings. The very cost of the pro—
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`conceived of his invention before the
`ceeding alone effectively ensures that
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`Page 2 of 4
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`Page 2 of 4
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`

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`March 1, 2011
`it is these larger parties that benefit
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`from this system. In many cases, small
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`inventors such as start ups and univer—
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`sities simply cannot afford to partici—
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`pate in an interference, and they sur—
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`render their rights once a well—funded
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`party starts such a proceeding.
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`Mr. Quinn’s article also responded to
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`critics who allege that the present bill
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`eliminates the grace period for patent
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`applications. The grace period is the
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`one—year period prior to filing when the
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`inventor may disclose his invention
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`without giving up his right to patent.
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`Mr. Quinn quotes the very language of
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`this bill, and draws the obvious conclu—
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`sion:
`Regardless of the disinformation that is
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`the currently proposed S.
`widespread,
`23
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`does, in fact, have a grace period. The grace
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`period would be quite different than what we
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`have now and would not extend to all third
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`party activities, but many of the horror sto—
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`ries say that if someone learns of your inven—
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`tion from you and beats you to the Patent
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`Office, they will get the patent. That is sim—
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`ply flat wrong.
`
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`Mr. Quinn is, of course, referring to
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`the bill’s proposed section 102(b). Under
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`paragraph (1)(A) of that section, disclo—
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`sures made by the inventor, or some—
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`one who got the information from the
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`inventor,
`less than 1 year before the
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`application is filed do not count as
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`prior art. And under paragraph (1)(B),
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`during the 1—year period before the ap—
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`plication is filed, if the inventor pub—
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`licly discloses his invention, no subse—
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`quently disclosed prior art, regardless
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`of whether it is derived from the inven—
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`tor, can count as prior art and invali—
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`date the patent. This effectively cre—
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`ates a “first to publish” rule that pro—
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`tects those inventors who choose to
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`disclose their invention. An inventor
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`who publishes his invention, or
`dis—
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`closes it at a trade show or academic
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`conference, or otherwise makes it pub—
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`licly available, has an absolute right to
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`priority if he files an application with—
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`in one year of his disclosure. No appli—
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`cation effectively filed after his disclo—
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`sure, and no prior art disclosed after
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`his disclosure, can defeat his applica—
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`tion for patent.
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`These rules are highly protective of
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`inventors, especially those who share
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`inventions with the interested
`their
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`public but still file a patent applica—
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`tion within a year. These rules are also
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`clear, objective, and transparent. They
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`create unambiguous guidelines for in—
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`ventors. An inventor who wishes to
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`keep his invention secret must file an
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`application promptly, before another
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`person discloses the invention to the
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`public. And an inventor can also share
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`his invention with others. If his activi—
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`ties make the invention publicly avail—
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`able, he must file an application within
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`a year, but his disclosures also pre—
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`vents any subsequently disclosed prior
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`art from taking away his right to pat—
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`ent. The bill’s proposed section 102 also
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`creates clear guidelines for those who
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`practice in a technology. To figure out
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`if a patent is valid against prior art, all
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`that a manufacturer needs to do is look
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`at the patent’s filing date and figure
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`
`CONGRESSIONAL RECORD — SENATE
`
`
`out whether the inventor publicly dis—
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`closed the invention. If prior art dis—
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`closed the invention to the public be—
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`fore the filing date, or if the inventor
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`disclosed the invention within a year of
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`filing but the prior art predates that
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`disclosure,
`then the invention is in—
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`valid. And if not,
`the patent is valid
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`against a prior—art challenge.
`
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`Some critics of the first—to—file sys—
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`tem also argue that it will be expensive
`
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`inventors because they will be
`for
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`forced to rush to file a completed appli—
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`cation, rather than being able to rely
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`on their invention date and take their
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`time to complete an application. These
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`critics generally ignore the possibility
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`filing a provisional
`application,
`of
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`which requires only a written descrip—
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`tion of the invention and how to make
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`it. Once a provisional application is
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`filed, the inventor has a year to file a
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`completed application. Currently,
`fil—
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`ing a provisional application costs $220
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`for a large entity, and $110 for a small
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`entity.
`One of Mr. Quinn’s earlier columns,
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`on November 7, 2009, effectively rebuts
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`the notion that relying on invention
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`dates offers inventors any substantial
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`advantage over simply filing a provi—
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`sional application. As he notes:
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`If you rely on first to invent and are oper—
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`ating at all responsibly you are keeping an
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`invention notebook that will meet
`evi—
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`dentiary burdens if and when it is neces—
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`sary to demonstrate conception prior to the
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`conception of
`the party who was first
`to
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`file.
`.
`.
`.
`
`invention notebook or
`invention
`[Y]our
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`record will detail, describe, identify and date
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`conception so that others skilled in the art
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`will be able to look at the notebook/record
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`and understand what you did, what you
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`knew, and come to the believe that you did
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`in fact appreciate what you had. If you have
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`this, you have provable conception. If you
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`have provable and identifiable conception,
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`you also have a disclosure that informs and
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`
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`supports the invention.
`[And]
`[i]f the
`.
`.
`.
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`notebook provably demonstrates conception,
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`
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`then it can be filed as a provisional patent
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`application at least for the purpose of stak—
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`ing a claim to the conception that is detailed
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`with enough specificity to later support an
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`argument in a first to invent regime.
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`In other words, the showing that an
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`inventor must make in a provisional
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`application is effectively the same
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`showing that he would have to make to
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`prove his invention date under
`the
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`first—to—invent system. A small inven—
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`tor operating under
`first—to—invent
`
`
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`rules already must keep independently—
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`validated notebooks that show when he
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`conceived of his invention. Under first—
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`to—file rules, the only additional steps
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`that the same inventor must take are
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`writing down the same things that his
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`notebooks are supposed to prove filing
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`that writing with the Patent Office,
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`and paying a $110 fee.
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`Once the possibility of filing a provi—
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`sional application is considered, along
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`with this bill’s enhanced grace period,
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`it should be clear that the first—to—file
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`system will not be at all onerous for
`
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`
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`inventors. And once one con—
`small
`
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`siders the bill’s clean, clear rules for
`
`
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`
`
`prior art and priority dates, its elimi—
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`
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`
`
`
`81041
`
`nation of subjective elements in patent
`
`
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`
`
`law, its new proceeding to correct pat—
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`
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`
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`ents, and its elimination of current
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`patent—forfeiture pitfalls that trap le—
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`gally unwary inventors, it is clear that
`
`
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`
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`this bill will benefit
`inventors both
`
`
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`
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`large and small.
`
`
`Allow me to also take a moment to
`
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`briefly describe the concerns that Sen—
`
`
`
`
`
`ators Feingold and COBURN and I raised
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`
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`in our 2009 Minority Report, and how
`
`
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`
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`the present bill addresses those con—
`
`
`
`
`
`cerns.
`Senators Feingold and COBURN and I
`
`
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`
`
`proposed that the bill impose a higher
`
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`threshold showing for
`instituting an
`
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`
`
`inter partes, or post—grant review. This
`
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`
`
`had long been a top priority for the
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`Patent Office, both under the previous
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`
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`administration and under the current
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`one. The Patent Office made clear that
`
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`a higher threshold is necessary to weed
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`out marginal challenges and preserve
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`the office’s own resources, and that a
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`higher threshold would also force par—
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`ties to front—load their cases, allowing
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`these proceedings to be resolved more
`
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`quickly. The present bill imposes high—
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`er thresholds, requiring a reasonable
`
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`likelihood of invalidity for inter partes
`
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`review, and more—likely—than—not inva—
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`
`
`lidity for post—grant review.
`
`
`
`Senators Feingold and COBURN and I
`
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`also recommended that the Patent Of—
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`
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`
`
`fice be allowed to operate inter partes
`
`
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`
`
`reexamination as an adjudicative pro—
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`ceeding, where the burden of proof is
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`on the challenger and the office simply
`
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`
`
`decides whether the challenger has met
`
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`his burden. The present bill makes this
`
`
`
`
`
`
`change,
`repealing requirements that
`
`
`
`run
`be
`on
`inter
`partes
`an
`
`
`
`
`
`examinational model and allowing the
`
`
`
`
`PTO to adopt an adjudicative model.
`
`
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`
`
`The 2009 Minority Report also rec—
`
`
`
`
`
`ommended that the bill restrict serial
`
`
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`
`
`administrative challenges to patents
`
`
`
`and require coordination of these pro—
`
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`
`
`ceedings with litigation. We also called
`
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`for limiting use of ex parte reexamina—
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`
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`tion to patent owners, noting that al—
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`
`
`lowing three different avenues for ad—
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`
`
`ministrative attack on patents invites
`
`
`
`
`serial challenges. The present bill does
`
`
`
`
`
`coordinate inter partes and post—grant
`
`
`
`
`review with litigation, barring use of
`
`
`
`
`
`these proceedings
`the challenger
`if
`
`
`
`
`seeks a declaratory judgment
`that a
`
`
`
`
`
`patent is invalid, and setting a time
`
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`
`
`limit for seeking inter partes review if
`
`
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`
`the petitioner or related parties is sued
`
`
`
`
`
`
`infringement of
`the patent. The
`for
`
`
`
`
`
`present bill does not, however, bar the
`
`
`
`
`
`
`use of ex parte reexamination by third
`
`
`
`
`
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`parties. The Patent Office and others
`
`
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`
`
`persuaded me that these proceedings
`
`
`
`
`operate reasonably well in most cases
`
`
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`
`
`and are not an undue burden on patent
`
`
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`
`
`
`owners. The present bill does, however,
`
`
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`
`
`impose limits on serial challenges that
`
`
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`will also restrict the use of ex parte re—
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`
`
`
`
`examination. The bill’s enhanced ad—
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`
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`ministrative estoppel will effectively
`
`
`
`bar a third party or related parties
`
`
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`
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`from invoking ex parte reexamination
`
`
`
`
`against a patent if that third party has
`
`
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`
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`already employed post—grant or inter
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`
`
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`review against
`that patent.
`partes
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`Page30f4
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`Page 3 of 4
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`

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`81042
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`Also, the bill allows the Patent Office
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`to reject any request for a proceeding,
`
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`including a request for ex parte reex—
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`
`amination, if the same or substantially
`
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`
`
`the same prior art or arguments pre—
`
`
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`
`
`
`viously were presented to the Office
`
`
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`
`
`with respect to that patent.
`
`
`
`
`Senators Feingold and COBURN and I
`
`
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`
`
`also recommended that the PTO be al—
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`
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`
`
`
`lowed to delay implementation of post—
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`
`grant review if the office lacks the re—
`
`
`
`
`
`
`
`sources to implement
`that new pro—
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`
`
`
`
`ceeding. The present bill
`includes a
`
`
`
`
`
`number of safeguards
`that are the
`
`
`
`
`
`product of discussions with the PTO.
`
`
`
`
`
`Among other things,
`the present bill
`
`
`
`
`
`authorizes a ramp—up period, allowing
`
`
`
`
`the office to limit the number of pro—
`
`
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`
`
`
`ceedings that can be implemented dur—
`
`
`
`
`
`ing the first 4 years after the new pro—
`
`
`
`
`
`
`
`ceeding becomes effective.
`
`
`The 2009 Minority Report also rec—
`
`
`
`
`
`ommended that treble damages be pre—
`
`
`
`
`
`to
`served as a meaningful deterrent
`
`
`
`
`
`willful or calculated infringement of a
`
`
`
`
`
`patent. The present bill does so, elimi—
`
`
`
`
`
`
`nating the restrictive three—buckets
`
`
`
`approach and broad safe harbors that
`
`
`
`
`
`appeared in the bill in 2009. The report
`
`
`
`
`
`
`
`also recommended that the bill remove
`
`
`
`
`
`subjective elements from patent
`law,
`
`
`
`
`such as the various deceptive—intent
`
`
`
`
`elements throughout the code and the
`
`
`
`
`
`patent—forfeiture
`doctrines.
`The
`
`
`present bill effectively makes both
`
`
`
`
`changes. In fact, the 2007 bill had al—
`
`
`
`
`
`
`
`ready been modified in mark up to
`
`
`
`
`
`
`eliminate the patent
`forfeiture doc—
`
`
`
`
`trines, a point elucidated in that year’s
`
`
`
`
`
`
`committee report and confirmed by a
`
`
`
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`review of the relevant caselaw.
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`This last point should also help ad—
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`dress a question that Mr. Quinn raised
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`in his column on Sunday regarding pro—
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`posed section 102(b)’s use of the word
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`“disclosure,” and whether
`it covers
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`public use or sale activities of the in—
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`ventor. I would have thought that the
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`meaning of the word would be clear: a
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`disclosure is something that makes the
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`invention available to the public—the
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`same test applied by section 102(a) to
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`define the scope of relevant prior art.
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`And “available to the public” means
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`the same thing that “publicly acces—
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`sible” does in the context of a publica—
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`tion. Subject matter makes an inven—
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`tion publicly accessible or available if
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`CONGRESSIONAL RECORD — SENATE
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`March 1, 2011
`ent reform on Monday, February 28, 2011, the
`an interested person who is skilled in
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`irst day back. Some are even anticipating
`the field could,
`through reasonable
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`zhat the Senate will vote on patent reform
`diligence, find the subject matter and
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`ill S. 23 late in the day on Monday, Feb—
`understand the invention from it. Obvi—
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`ruary 28, 2011. See “Crunch Time: Call Your
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`ously, Congress would not create a
`Senators on Patent Reform.” That would
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`grace period that is narrower in scope
`seem exceptionally quick, particularly given
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`zhe rancorous issues and Amendments still
`than the relevant prior art. Thus for
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`30 be presented, but nothing will surprise
`example, under this bill, any activity
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`me.
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`by the inventor that would constitute
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`prior art under section 102(a)(1) would
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`also invoke the grace period under sec—
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`tion 102(b)(1). As a result, the inventor
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`would be protected against his own ac—
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`tivities so long as he files within a
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`year, and under the bill’s “first to pub—
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`lish” provisions, he would also be pro—
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`tected by any other person’s disclosure
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`of the invention, regardless of whether
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`he could prove that the other person
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`derived the invention from him.
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`The present bill is the product of al—
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`most a decade of hard work, including
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`three Judic