On June 23, 2011, the United States House of Representatives passed House Bill H.R. 1249, the House’s version of the “The America Invents Act.” We are now one step closer to the first major reform of the patent laws since the 1952 Patent Act. This bill passed by a margin of 304-117.
Although the House and Senate versions of the America Invents Act, H.R. 1249 and S. 23, respectively, are largely the same, they have several differences. For example, the House Bill includes an expansion of prior users rights to all methods (and not just business methods) and provides a three year grace period after a patent expires in which false marking cannot be asserted against the patentee. There are no similar provisions in the Senate Bill. The House Bill establishes a Patent and Trademark Fee Reserve Fund for “fees collected in excess of” the amount appropriated by Congress, while the Senate Bill did not have this limitation on the USPTO’s use of collected fees.
These differences will have to be reconciled either by a conference committee that includes both senators and representatives or by approval of the House version by the Senate. We will keep you appraised of developments in the House bill as they occur. Early indications reflect a feeling that the Senate conferees will adopt the House version with respect to fee diversion. It remains unclear as to how the conferees will address the other differences in the two bills.
For a full version of the House Bill text, please click here