CORRECTING AND IMPROVING THE LEAHY-SMITH AMERICA INVENTS ACT

December 30, 2012
Floor Statements

Mr. SCOTT of Virginia: Mr. Speaker, I rise in support of the Senate amendment to H.R. 6621 because the measure improves the America Invents Act--the most significant reform to the Patent Act since 1952--that was signed into law by President Obama last year. Earlier this month, the House passed H.R. 6621 by a vote of 308-89. The Senate subsequently passed the legislation with an amendment by unanimous consent. Now that the America Invents Act is law, our focus should be on how it can be improved, which is why I support H.R. 6621, because it accomplishes that very goal in several respects.

To begin with, H.R. 6621 clarifies and improves the provisions to help implement the America Invents Act. The bill clarifies provisions dealing with patent term adjustments, derivation proceedings, inventor's oath, and the terms of the Patent Public Advisory Committee.

The Senate amendment to this bill makes one change to the House-passed bill by removing the provision requiring the Patent Office to prepare a report on pre-GATT patent applications that have now been pending before the Patent Office for over 18 years. Although this provision has been removed, we must continue to study ways to improve the patent system and make sure that there are not delays to receiving patent protection.

The bill clarifies the act's advice of counsel section as it applies to civil actions commenced on or after the date of this legislation's enactment. This is important because the original bill created a new section 298 of title XXXV that prevents the use of evidence of an accused infringer's failure to obtain advice of counsel, or his failure to waive privilege and introduce such opinion, to prove either willfulness or intent to induce infringement. The provision, however, failed to specify when the new authority would go into effect, and it would be unfair to apply the new rule retroactively to pending cases which anticipate using such evidence.

In addition, H.R. 6621 makes a series of other technical clarifications to the act. In some, the bill makes necessary constructive technical corrections to the America Invents Act and avoids including any substantive revisions to the act.

It is my hope that the Judiciary Committee will continue its oversight of the act into the next Congress and consider ways in which it can be further improved. I urge my colleagues to support the bill.