America Invents Act Passes Senate With Broad Support
By an overwhelming vote of 95-5 in favor of reforming U.S. patent laws, the Senate on March 8, 2011, passed S.23, the America Invents Act, originally dubbed the "Patent Reform Act of 2011" when it was introduced January 25, 2011. The bill, as amended, is now headed to the House where it is likely to be further amended when it reaches the House Judiciary committee (or replaced with a companion bill introduced in the House).
To pass the legislation, the Senate considered 44 amendments and took six floor votes over a week's period of time, including a vote on a motion to invoke cloture to prevent filibuster.
Both Maryland Senators--Cardin and Mikulski--voted in favor of the bill (the 5 Nay votes came from Boxer (D-CA), Crapo (R-ID), Risch (R-ID), Ensign (R-NV), and Cantwell (D-WA)).
The full text of the amended bill sent to the House is available by clicking on the image below. A list of the major provisions is also shown.
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Sec. 1. Short title; table of contents.
Sec. 2. First inventor to file.
An amendment (S. Amend. 133) to strike the first-to-file provision in S.23 and retain the present first-to-invent system was tabled during debate, by a vote of 87-13. Sponsored by Sen. Feinstein (D-CA) and co-sponsored by six (including four of the five Senators who did not vote for passage of S.23), the first-to-invent system would continue the long-standing rule that the first person to invent gets the patent, not the first person who files a patent application for the invention. Noting broad support for maintaining the status quo, Sen. Feinstein stated in her floor remarks:
"[W]e have been the world's leader in innovation, and the first-to-file countries have been playing catchup with our technological advances. So with all due respect, I wouldn't trade America's record of innovation for that of virtually any other country or certainly any first-to-file country. The genius of America is inventions in small garages and labs, in great ideas that come from inspiration and perspiration in such settings and then take off. So many of America's leading companies--Hewlett Packard, Apple, Google, even AT&T arising from Alexander Graham Bell's lab, for example--started in such settings and grew spectacularly, creating jobs for millions of Americans and lifting our economy and standard of living."
Sec. 3. Inventor’s oath or declaration.
Sec. 4. Virtual marking and advice of counsel.
Most of the "Damages" provisions in the version of the bill that was reported out of the Senate Judiciary committe was struck.
Sec. 5. Post-grant review proceedings.
Added "(b) Preliminary Injunctions- If a civil action alleging infringement of a patent is filed within 3 months of the grant of the patent, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed or that such a proceeding has been instituted."
Sec. 6. Patent Trial and Appeal Board.
Sec. 7. Preissuance submissions by third parties.
Sec. 8. Venue.
Sec. 9. Fee setting authority.
Sec. 10. Supplemental examination.
Sec. 11. Residency of Federal Circuit judges.
Sec. 12. Micro entity defined.
Sec. 13. Funding agreements.
Sec. 14. Tax strategies deemed within the prior art.
Sec. 15. Best mode requirement.
Sec. 16. Technical amendments.
Sec. 17. Clarification of jurisdiction.
Sec. 18. Transitional program for covered business-method patents.
Sec. 19. Travel expenses and payment of administrative judges.
Sec. 20. Patent and Trademark Office funding.
Sec. 21. Satellite offices.
Sec. 22. Patent Ombudsman Program for small business concerns.
Sec. 23. Priority examination for technologies important to American competitiveness.
Sec. 24. Designation of Detroit satellite office.
Sec. 25. Effective date.
Sec. 26. Budgetary effects.
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