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House Judiciary Committee Approves Patent Reform Legislation

The House Judiciary Committee on June 11, 2015, approved an amended version of H.R. 9, the Innovation Act, with modifications that bring the House bill closer to a bill (S. 1137) approved last week by the Senate Judiciary Committee.

The Committee was first presented with a Manager’s Amendment to H.R. 9 that changed provisions of the introduced bill and that added certain provisions. Changes to the provisions of the introduced bill include:

  • Pleading requirements for identifying asserted patent: revised to require identification of claims with respect to each "accused instrumentality" alleged to infringe.
  • Attorneys’ fees: provision on the effect of covenants not to sue is revised to reflect the language of the Senate bill.
  • Joinder to ensure fee recovery: general applicability was narrowed with a definition of “substantial interest” and a variety of exclusions.
  • Stay of discovery: replaced the provision that would stay discovery until after the Markman proceeding with language to stay discovery pending pretrial motions (1) to sever a claim or drop a party, (2) to transfer, or (3) to dismiss for improper venue.
  • Stay of Customer suit: generally adopts language used in the Senate bill.
  • Venue: amendments to 28 U.S.C. 1400(b) would impose more specific limitations on where an infringement or declaratory judgment suit could be brought.
  • Mandamus: creates a presumption of "irremediable interim harm" from an "indisputably erroneous denial" of a motion to dismiss for improper venue or motion to transfer.
  • Double patenting: a new Section 102(e) of the Patent Act would codify the judicial doctrine prohibiting double patenting.
  • Attorney malpractice: claims arising under patent law would include actions concerning attorney conduct relating to a patent case, reversing Gunn v. Minton, 133 S. Ct. 1059 (2013).
  • USPTO disciplinary proceedings: One year statute of limitations at Section 32 for the USPTO to commence a proceeding after receiving notice of misconduct would be extended to 18 months after receiving a written grievance.
  • Global worksharing: USPTO may provide patent application information to a foreign patent office working on a corresponding application.
  • Trademark appeals: Federal Circuit exclusive jurisdiction would be amended to include appeals from district court reviews of Trademark Trial and Appeal Boards.
  • Judicial Conference rules: provision mandating rules on discovery and case management now are confined to rules for a set of district courts participating in the patent pilot program.

Further amendments to the Manager’s Amendment made during markup include:

  • Stay of Discovery: provides that discovery shall also be stayed pending a pretrial motion to dismiss under Federal Rule of Civil Procedure 12(b).
  • Venue: makes clarifying changes to the Venue provision in the Manager’s Amendment.
  • The Judiciary Conference: required to conduct a study on discovery proceedings in cases involving to patent laws.
  • The USPTO’s fee-setting authority: extended by 10 years.

To read the text of the Manager's Amendment and further amendments, click here. ​​​