Patent Baristas

General Debate Statement of the Honorable John Conyers, Jr. in Opposition to H.R. 1249, the America Invents Act

Our Nation’s patent system plays a critical role in the economic health of the United States and global leadership in innovative technology development.

But our patent system has long been in need of comprehensive reform.

Unfortunately, H.R. 1249 – or the misnamed America Invents Act – fails to meet this critical goal for several reasons.

Rep. John Conyers, Jr.

To begin with, the bill essentially will give large banks a special, new bailout at the expense of small inventors and the American taxpayer, and even worse, would do so on a retroactive basis.

The bill’s retroactive impact would constitute a an unconstitutional taking of property according to several highly respected constitutional law experts, including Professors Richard Epstein and Jonathan Massey.

As a result, the federal government would be forced to pay just compensation to the patent holders, which put taxpayers at risk of having to fund billions of dollars in payments.

Another concern is that the legislation undermines the false patent marking statute by retroactively changing the law applicable to pending enforcement actions.

The false marking statute prohibits manufacturers from falsely claiming that a product is or remains patent-protected beyond a 20-year term.

Public Citizen has explained that this provision “would completely remove the incentive to stop intentional false labeling of products as patented.”

Finally, the bill will give patent owners an opportunity to provide corrected or new information to the Patent and Trademark Office that was not previously presented or not accurately presented during the application process.

Currently, patents are unenforceable and invalid if they are fraudulently obtained.

So this new provision will be the equivalent to a “get out of jail free” card for firms that have not been truthful in seeking patent protection.

Not surprisingly, groups like the Generic Pharmaceutical Association recognize the problems this provision presents.

The Association states that the bill “could reward patent holders that knowingly falsify information in their original patent application with the USPTO or intentionally omit material information.”

Finally, H.R. 1249 would — for the first time in more than 220 years — convert the United States from a “first-to-invent” patent system into a European-style “first-to-file” patent system.

As a result, the bill would permit the Patent and Trademark Office to award a patent to the first person who can win a race to the patent office regardless of who is the actual inventor.

This is patently unfair to inventors.

I have supported similar clauses in past bills, but those measures included a grace period before conversion to a first-to-file patent system.  This bill contains no such grace period.

I am also very concerned that the move to first-to-file will favor multinational corporations, which are typically better staffed and funded to file applications.

And, the “first-to-file system” could force U.S. inventors to prematurely disclose their inventions, thus providing Chinese firms and other foreign entities opportunities to unlawfully exploit U.S. inventions overseas where intellectual property enforcement is lax.

It is for these and many other reasons that the bill is opposed by such a broad spectrum of groups, including the American Bar Association, the Patent Office Professional Organization, Innovation Alliance, Public Citizen, Eagle Forum, and others.

Without question, H.R. 1249 will benefit large multinationals at the expense of independent inventors and small businesses.

This bill will harm jobs, harm innovation, and harm our Nation.

Accordingly, I strongly urge my colleagues to vote no.