Judicial Committee of House of Representative Amended H.R. 1249 


and Agreed Upon


by 32 to 3


On April 14, 2011  

Summarized by Tatsuo YABE

on April 18, 2011




■ U.S. House of Rep. Introduced A Bill No. H.R. 1249  

2011330日: 発表 

改正法案H.R.1249が下院に提出された。 H.R.1249は、上院で可決した法案の内容を含む。 但し、特許査定後の異議申立制度の詳細な内容; 先使用権の内容; 当事者系再審査開始により訴訟を中断する; Knorr Bremseの判示を条文に盛り込むなどがS.23 と異なる。 


■ Judiciary Committee of HR amends and Approves Patent  Reform Bill







以下AIPLA April 14, 2011 速報より

House Judiciary Committee Amends and Approves Patent Reform Bill

The House Judiciary Committee on April 14, 2011, amended and approved patent reform legislation (H.R. 1249) by a vote of 32 to 3.  The opposing votes were cast by Reps. John Conyers (D-Mich), Steve King (R-Iowa) and James Sensenbrenner (R-Wis).  After wading through dozens of amendments, the all-day proceeding concluded with first-to-file, post-grant review, and USPTO fee provisions intact.

However, several of amendments on controversial subjects, such as business method patents, prior art and the grace period, and genetic testing, were withdrawn with the intention of tailoring the language to a more acceptable formulation.  It is possible that those issues could arise again when the bill reaches the House floor. 

The most dramatic moment in the hearing occurred when Rep. Debbie Wasserman Schultz (D-Fla.) offered her amendment to immunize certain genetic testing facilities from infringement suits.  She presented the amendment in the context of her personal experience with cancer and her inability to obtain a second opinion of the diagnosis because the patent owner operated the sole laboratory for the genetic testing.  Her proposal would immunize testing facilities who use the patented materials solely to confirm a diagnostic test with a second or further opinion.  After relating her emotional story, which visibly affected members of the committee, she withdrew her amendment upon assurances from Chairman Lamar Smith that he would help to develop a provision to address this health care issue.

An analysis of the legislation will be presented in a future report.


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