The Politics Behind America Inventing
Whether that happens will play out over the next few months. But at the very least, the House changes contrast with the consensus-building achieved in crafting S.23, which passed the Senate 95-5. It was a rare recent example of a bill concerning a long-contentious issue winning cross-partisan support.
It helped that once the bill reached the Senate floor last month, the America Invents Act’s three main Senate sponsors—senators Pat Leahy (D-VT), Charles Grassley (R-IA), and Jon Kyl (R-AZ)—introduced a “managers’ amendment” that addressed many objections to earlier versions of the bill. The amendment notably blocked diversion of money budgeted for the patent office and created three new USPTO satellite offices, addressing earlier concerns that the USPTO could not process its backlog of unexamined patents, which totaled 715,461 as of February.
Then again, creating consensus is more of a concern for the Senate since Democrats control that chamber narrowly, holding 51 of the 100 seats (47 are held by Republicans, two by independents). In the House, by contrast, Republicans hold a more solid majority over Democrats, 241–192.
Consensus will be required, however, should the House pass its version of America Invents. Unless the bill matches the Senate’s version, a conference committee of lawmakers from both chambers has to hash out differences, arriving at one bill for President Obama to sign or veto.
It’s hard to see how lawmakers might compromise on some differences in the bills, for example, the standard for inter partes review. “I don’t really see an intermediate version here. I think that they probably will have to choose one or the other as the standard,” Stephen B. Maebius, an intellectual property law partner with Foley & Lardner and chair of the law firm’s intellectual property department, told GEN.
“There are only so many ways you can set the bar as far as how to start an opposition or a re-examination proceeding,” added Maebius, who worked as a patent examiner in the Biotechnology Group of the USPTO before becoming a lawyer.
Kappos said HR 1249 can be effectively implemented and appropriately managed by the USPTO. He pointed to factors that include not only authority to limit inter partes and postgrant reviews but also a delay in effective date, the authority to impose and collect its own fees, and the allowance of multiyear budgets.
As Maebius noted, the Senate’s standard for inter partes reviews would appear to make that version of America Invents more favorable to the USPTO from an implementation viewpoint. “If you have a higher standard to trigger the process, there aren’t going to be as many inter parte reviews,” Maebius said.