Senate Judiciary Committee Chairman Lamar Smith of Texas faces opposition from two former Committee chairmen.
Nearly forty proposed amendments to HR-1249, the American Invents Act, were submitted late Monday to the House Rules Committee. That body decides which amendments can be considered on the House floor. In response to the volume of amendments, the Rules Committee postponed a Tuesday hearing to consider HR-1249.
A Rules Committee spokeswoman told Managing IP it was unclear when the hearing would be held. No floor vote can occur until the bill is reported out of that committee.
The bill would include changes such as shifting the US to a first-to-file system to harmonise it with other nations and ensuring the USPTO could retain patent fees to fund ongoing operations.
Judiciary Committee Ranking Democrat John Conyers of Michigan and Republican Committee member John Sensenbrenner of Wisconsin proposed a number of amendments opposed by large segments of the patent community. In one jointly submitted amendment, they would strike every part of the bill except for an end to patent fee diversion.
Both Conyers and Sensenbrenner voted against HR-1249 at the Committee markup.
Sensenbrenner also proposed an amendment to strike first-to-file, which failed in the Judiciary Committee. Conyers and Republican Dana Rohrabacher of California have an amendment attempting to make it more difficult to shift to a first-to-file system.
Sensenbrenner and Democrat Tammy Baldwin of Wisconsin want to strike the prior-user rights language included in the House bill that was backed by most university groups, but opposed by the University of Wisconsin.
Smith is pointing to broad-based support for the bill, including the US Chamber of Commerce; the General Counsels for Apple, Cisco, Eli Lilly, Google, Intel, Micron Technology, Oracle, SAP, Research in Motion, and Symantec; and the Coalition for 21st Century Patent Reform.
Many of those companies and coalitions, including the Innovation Alliance, strongly support the language to end fee diversion.
But Republican Frank Wolf of Virginia, chairman of the House Appropriations Subcommittee overseeing USPTO funding, has proposed amendments that would strike that section.
One of his amendments would provide the Office a corresponding appropriations offset. Fees are presently diverted to the US Treasury and the USPTO is funded by an annual appropriation.
The patent bill is being considered at a time when Congress is debating raising its national debt ceiling.
Separately, Republican Donald Manzullo of Illinois has an amendment that would remove language giving the USPTO director the authority to set patent application fees.
While Sensenbrenner and Conyers support ending fee diversion, they oppose much of the rest of the bill, as do other industry players.
BIO and the Generic Pharmaceutical Association object to allowing patent owners to retroactively submit corrected information to the USPTO. In a letter to colleagues, Sensenbrenner, Conyers and Manzullo were joined by Democrat Marcy Kaptur of Ohio in saying that could allow patent applicants to intentionally submit false information or omit relevant material.
Intellectual Ventures opposes Section 18 of the bill, which creates a transitional program for business method patents. Sensenbrenner and the three other Dear Colleague authors said the provision "establishes an unprecedented review procedure which would provide a 'third bite at the apple' to attack a targeted group of financially-related business method patents that previously have been upheld through multiple examination, re-examination, and trial proceedings".
Others supporting Sensenbrenner and the other Dear Colleague authors include the American Conservative Union, the Christian Coalition, and more than 10 universities.
House Majority Leader Eric Cantor, who supports HR-1249, has for now left the bill on the House agenda, but a time and date for the vote can't be set until it clears the Rules Committee.
