Yesterday the Senate passed S. 1358, a bill to allow the Director of the USPTO to borrow funds from trademark operations to support patent related activities. The bill was introduced by Senator Leahy that same day, and was passed without discussion or debate.

A copy of S. 1358 is attached.

Yesterday in the final day of its October 2008 term, the U.S. Supreme Court denied certiorari in Cable News Network, Inc. v CSC Holdings, Inc. (“Cablevision”), letting stand a decision of the U.S. Court of Appeals for the 2nd Circuit that respondent Cablevision’s network-based technology for copying and replaying television programming for its subscribers did not directly infringe petitioners’ copyrights. Instead of providing its customers with individual set-top digital video recorders, Cablevision developed a system to create and store programming on computer hard drives at its facilities, with copying and transmission to be accomplished by a remote control device operated by Cablevision’s individual customers, much the same as they would do by controlling a set-top DVR.

A copy of the Solicitor General’s brief is attached.

On June 18, President Obama nominated David J. Kappos to be Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office. The nomination has been sent to the Senate Judiciary Committee, which will hold a hearing on his confirmation.

Details of the ABA qualifications policy and a description of the background and experience with which Kappos meets those qualifications are included in the Senate letter, a copy of which is attached.

Senator Patrick Leahy, Chairman of the Senate Judiciary Committee, reported today that President Obama will nominate David J. Kappos to be Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office.

A copy of the Leahy press release.

The House Judiciary Committee April 30 hearing on H.R. 1260, the Patent Reform Act of 2009, was well-attended by Committee members, and competing views on key provisions of the bill were ably presented by the witnesses.
Often opening statements are made only by the Chairman and Ranking Member. Yesterday 11 Committee members showed up early and made opening statements, a sure sign of heavy interest in the matter at hand.
Several key members of the Committee made reference to the recent action of the Senate Judiciary Committee in amending and approving the Senate counterpart bill, S. 515. Chairman Conyers opened with a declaration that the House was not going to be a “rubber stamp” for the Senate version of the bill.

Yesterday the Senate Judiciary Committee, by a vote of 15-4, ordered S. 515, the Patent Reform Act of 2009, favorably reported to the Senate. The Committee adopted one amendment, a “Manager’s Amendment” incorporating several changes to the bill agreed upon by Chairman Leahy, Ranking Member Specter, and other key Committee members in the past two days.

A copy of the amendment adopted yesterday is attached.

On Tuesday, March 17, the U. S. House of Representatives by a vote of 409-7 passed H.R. 628, a bill to establish a pilot program in at least six U.S. district courts for handling cases involving patent or plant variety protection issues. Under the program, patent cases would continue to be randomly assigned, at which point the assigned judge may decline the case. In that event, the case will be assigned to one of the judges of the district who have previously requested to hear patent cases.

Copy of the Congressional Record report of the March 17 proceedings regarding H.R. 628, which includes the text of the bill as passed

Patent Reform bills were introduced yesterday in the House (H.R. 1260) and in the Senate S 515). Yesterday in this Newsletter we indicated that the advance notice that we had obtained of the introduction of the bills represented that the bills would be identical, as they were two years ago. This turns out to be largely true, but not entirely. Rather than leaving out the first-inventor-to-file provisions pending resolution of the effective date issue, both bills included first-inventor-to file provisions, but with the issue of effective date left unresolved, as it was in the last Congress. H.R. 1260 would postpone the effective date until such time as European countries and Japan adopt a grace period; S. 515 has no such delay provision.

Coy of the two bills Patent Reform Act of 2009 and Patent Reform Act of 2009 as Introduced

Bills calling for comprehensive patent law reform are about to be introduced in the House and in the Senate. Senate Judiciary Committee Chairman Patrick Leahy and House Judiciary Committee Chairman John Conyers will hold a press conference this afternoon, at which introduction of the bills will be announced. The bills will be based on patent reform bills from the previous Congress, H.R. 1908 and S. 1145. Leahy and Conyers will be joined by Senator Orrin Hatch and Congressman Lamar Smith, who also served as lead Republican sponsors of patent reform legislation in the 109th and 110th Congresses.

House Judiciary Committee Chairman John Conyers has revealed plans to abolish the Subcommittee on Courts, the Internet, and Intellectual Property in the 111th Congress, which begins on January 3. Matters relating to IP and the Internet will be handled at full committee, and matters relating to the federal courts will be assigned to a newly established subcommittee, which will also have jurisdiction of antitrust issues.

On September 30, the United States Senate approved H.R. 6531, the Vessel Hull Design Protection Amendments Act of 2008, without amendment. The bill was passed by the House of Representatives on July 22, and thus the Senate action sends the bill to the president for signing into law.

H.R. 6531 provides copyright-like protection for original designs of boat hulls, decks, or combined hulls and decks. As enacted in 1998 as chapter 13 of title 37, United States Code, the Vessel Hull Design Protection Act currently provides protection for vessel hulls, and defines a hull as including a deck. This definition led to a federal circuit court of appeals decision that a design for a hull not including a deck does not qualify for protection. H.R. 6531 provides for separate protection for hulls and decks, and continues protection for combinations. It also contains a provision exempting designs owned by the Department of Defense from coverage under the Act.

On Sunday, September 28, by a vote of 381-41, the U.S. House of Representatives passed S. 3325, a bill with both substantive and structural changes in copyright and trademark law and administration. The bill passed the Senate on September 26, and yesterday’s House action sends the bill to the president for signing into law.

On July 22, the House of Representatives passed H.R. 6531, a bill to amend the Vessel Hull Design Protection Act. H.R. 6531 provides copyright-like protection for original designs of boat hulls, decks, or combined hulls and decks. The Act currently provides protection for vessel hulls, and defines a hull as including a deck. This definition led to a federal circuit court of appeals decision that a design for a hull not including a deck does not qualify for protection. H.R. 6531 provides for separate protection for hulls and decks, and for combinations of the two.

Copy of H.R. 6531 and H.R. 2033 are attached.

Yesterday the House passed S.3295, a bill to change the power of appointment of administrative patent judges of the Board of Patent Appeals and Interferences and administrative trademark judges of the Trademark Trial and Appeal Board from the Director of the USPTO to the Secretary of Commerce.

S. 3295 passed the Senate on July 22, and thus House passage sends the bill to the president for signing into law. All future appointments to the BPAI and the TTAB will be made by the Secretary, and all appointments made by the Director since 1999 are “deemed” to have been made by the Secretary. My Legislative Notice of July 24 included a copy of the bill and additional details on its contents.

The American Inventors Protection Act, enacted in 1999, gave the Director of the USPTO additional powers and degrees of independence from the Department of Commerce. One such additional power was the power to appoint administrative patent judges of the Board of Patent Appeals and Interferences and administrative trademark judges of the Trademark Trial and Appeal Board. These appointments were previously made by the Secretary of Commerce.

Also see attachments - S3295 BPAI TTAB Judges | Statement of Sen. Leahy

The House Rules Committee, which controls the flow of bills going to the House floor, will meet on Thursday, September 6, to establish the grounds rules for consideration of H.R. 1908 in the House.

The legislative week beginning July 16 arguably turned out to be the most active week in the formulation of patent law in the history of the United States. In a 32-hour period on July 18 and 19, both the House Judiciary Committee and the Senate Judiciary Committee considered and voted on numerous amendments to their respective patent law reform bills, and favorably reported the legislation. Completion of committee action in both houses of Congress before the August month-long congressional recess keeps the legislation on the timetables set by its authors, and greatly enhances the prospects for enactment of the most far-reaching changes in patent law in a single bill since the enactment of the Patent Code in 1952.

On June 6, the Senate Judiciary Committee held its first hearing on S. 1145, the "Patent Reform Act of 2007." The House Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on an identical bill, H.R. 1908, on April 26, and reported the bill to the full Judiciary Committee, without amendment, on May 16.

On April 26, the House IP Subcommittee held its first, and perhaps its last, hearing on H.R. 1809, the "Patent Reform Act of 2007." An identical bill, S. 1145, has been introduced in the Senate.

The start of the hearing in the House Judiciary Committee was delayed briefly while the Committee scrambled to set up an overflow room for the crowd that lined the corridors and far-exceeded the capacity of the Committee’s main hearing room. Many if not most of those waiting in line were representatives of interest groups that have been occupying similar, less visible lines to lobby members of Congress and their staffs in the past few months as the bills were taking shape and being written.

Patent reform legislation has again been introduced in Congress and put on a fast track that its authors hope will lead to enactment before the end of the year. A hearing is scheduled for April 26 in the House Subcommittee on Courts, the Internet, and Intellectual Property, and Subcommittee Chairman Howard Berman is targeting a Subcommittee vote on the bill before the Memorial Day recess.

On February 15, the Senate Judiciary Committee voted to favorably report S 316, the "Preserve Access to Affordable Generics Act."

On February 15, the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property held its first hearing of the 110th Congress under the new Democratic leadership. Subcommittee Chairman Howard Berman was joined by 10 other Subcommittee members and a standing room only crowd for a hearing entitled "American Innovation at Risk: The Case for Patent Reform." Congresswoman Zoe Lofgren, a former member of the Subcommittee who was very active on the Subcommittee in the past two Congresses, also participated in the hearing by special leave of the Subcommittee.

On February 12 the U.S. House of Representatives passed H.R. 34, a bill to establish a 10-year experimental program in at least 5 U.S. district courts for the trial of patent cases.

The President’s budget proposal for funding the federal government in Fiscal Year 2008 (October 1, 2007-September 30, 2008) was sent to Congress on February 5.

President Bush's recommendations for funding the federal government in Fiscal Year 2006 (10/01/05-9/31/06) were sent to Congress today. They include a recommendation of $1.7 billion to fund the U.S. Patent and Trademark Office.

On March 3, by a vote of 379-28, the House of Representatives passed H.R. 1561, the “United States Patent and Trademark Fee Modernization Act of 2003.” H.R. 1561 would increase PTO user fees by an average of about 15 percent in order to raise an additional $200 million per year that the Office believes to be needed to implement its 21st Century Strategic Plan. The Plan is designed to improve quality, reduce pendency, and speed transition to electronic processing.

In a major victory for the intellectual property community, President Bush on February 2 sent a budget recommendation to Congress that calls for no diversion of PTO user fee revenue in the fiscal year beginning October 1, 2004.