/  H.R. 1249 - America Invents Act

H.R. 1249 - America Invents Act

Bill Text

  • Text of H.R. 1249 PDF XML

    America Invents Act

  • Text of H. Rept. 112-98 Part 1 PDF XML

    Report from the Committee on the Judiciary

Rule Information

 

COMMITTEE ACTION:
REPORTED BY RECORD VOTE of 7-2 on Tuesday, June 21, 2011.

FLOOR ACTION ON H. RES. 316: 
Adopted by record vote of 239-186, after agreeing to the previous question by record vote of 230-184, after agreeing to the consideration of the resolution by record vote 215-189, 1 present, on Wednesday, June 22, 2011.  

MANAGERS: Nugent/Polis

1. Structured rule for H.R. 2021.

2. Provides one hour of general debate equally divided and controlled by the chair and ranking minority member of the Committee on Energy and Commerce.

3. Waives all points of order against consideration of H.R. 2021.

4. Provides that H.R. 2021 shall be considered as read.

5. Waives all points of order against provisions in H.R. 2021.

6. Makes in order only those amendments to H.R. 2021 printed in Part A of the Rules Committee report accompanying the resolution. Provides that each such amendment may be offered only in the order printed in the report, may be offered only by a Member designated in the report, shall be considered as read, shall be debatable for the time specified in the report equally divided and controlled by the proponent and an opponent, shall not be subject to amendment, and shall not be subject to a demand for division of the question.

7. Waives all points of order against the amendments printed in Part A of the report.

8. Provides one motion to recommit H.R. 2021 with or without instructions.

9. Structured rule for H.R. 1249.

10. Provides for 20 minutes of initial debate confined to the question of constitutionality of the bill equally divided and controlled by Representative Smith (R-TX) and Representative Kaptur (D-OH) or their designees.

11. Provides one hour of general debate equally divided and controlled by the chair and ranking minority member of the Committee on the Judiciary.

12. Waives all points of order against consideration of H.R. 1249.

13. Makes in order the amendment in the nature of a substitute recommended by the Committee on the Judiciary now printed in the bill as an original bill for purpose of amendment, which shall be considered as read.

14. Waives all points of order against the committee amendment in the nature of a substitute.

15. Makes in order only those amendments to H.R. 1249 printed in Part B of the Rules Committee report accompanying the resolution. Provides that each such amendment may be offered only in the order printed in the report, may be offered only by a Member designated in the report, shall be considered as read, shall be debatable for the time specified in the report equally divided and controlled by the proponent and an opponent, shall not be subject to amendment, and shall not be subject to a demand for division of the question.

16. Waives all points of order against the amendments printed in Part B of the report.

17. Provides one motion to recommit H.R. 1249 with or without instructions.

18. Provides that upon receipt of a message from the Senate transmitting H.R. 1249 with a Senate amendment or amendments thereto, it shall be in order to consider in the House a single motion offered by the chair of the Committee on the Judiciary or his designee that the House disagree to the Senate amendment or amendments and request or agree to a conference with the Senate thereon.

19. Waives all points of order against the motion.

20. Provides one hour of debate on the motion equally divided and controlled by the chair and ranking minority member of the Committee on the Judiciary.

 

Amendments

#Version #Sponsor(s)PartySummaryStatus
5Version 2Baldwin (WI), Sensenbrenner (WI), Kind (WI)DemocratRevised Would strike Section 5, the “prior user rights” language, and conform H.R. 1249 to H.R. 1908, as passed by the U.S. House of Representatives on September 7, 2007, and S. 23, as passed by the U.S. Senate on March 8, 2011.Made In Order
20Version 2Conyers (MI), Sensenbrenner (WI), Manzullo (IL)DemocratRevised Would strike the entire bill except Secton 2 (Definitions), Section 22 (Patent and Trademark Office Funding) and Section 31 (Budgetary Effects).Submitted
21Version 1Conyers (MI), Rohrabacher (CA)DemocratWould insert language to move the United States to a first to file system only upon a Presidential finding that other major patent authorities have adopted a similar one-year grace period. Made In Order
39Version 2Conyers (MI), Markey, Edward (MA), Neal (MA), Pompeo (KS), Garrett (NJ), Lance (NJ), Gallegly (CA)DemocratLate RevisedWould reinsert the calculation of 60-day period for application of patent term extension in the Smith (R-TX) manager's amendment.Made In Order
19Version 1Cuellar (TX)DemocratWithdrawn Would require the Patent Ombudsman Program for Small Business Concerns to include “independent inventors” to receive support and services relating to patent filings. Withdrawn
22Version 2Jackson Lee (TX)DemocratRevised Would include small businesses in the definition of "Micro Entities" Submitted
23Version 1Jackson Lee (TX)DemocratWould extend the disclosure period for small business entities with assets less than $2 million from 1 year to 18 months. Submitted
24Version 2Jackson Lee (TX)DemocratRevised Would require a determination by the director of the USPTO that Sec. 18 of the bill does not create an unlawful taking. Submitted
25Version 1Jackson Lee (TX)DemocratWould establish a transitional review program for business method patents that will sunset years.Submitted
26Version 1Jackson Lee (TX)DemocratWould provide the term 'small business concern' shall include minority-owned business and woman-owned business on page 99.Submitted
27Version 1Jackson Lee (TX)DemocratWould add a sense of Congress that it is important to protect the rights of small businesses and inventors from predatory behavior that could result in the cutting off innovation and may provide an undue advantage to large financial institutions and high-tech firms.Made In Order
28Version 3Jackson Lee (TX)DemocratRevised Would add a sense of Congress that the changes set forth in the bill do not create an unconstitutional taking under the "takings clause." Submitted
29Version 2Jackson Lee (TX)DemocratRevised Would ensure that Historically Black Colleges and Universities and Hispanic serving institutions are included in the definition of “small entities”.Submitted
18Version 2Lofgren (CA)DemocratRevised Would clarify the scope of the one-year grace period for filing a patent application after disclosures of an invention by the inventor. Submitted
12Version 1Lujn (NM)DemocratWould add requirements to the satellite office location selection process to ensure that 1) the purposes, as described in the bill, of establishing satellite offices are achieved, 2) recruitment costs are minimized by considering the availability of knowledgeable personnel in the region, and 3) the economic impact to the region is considered. It would also require that the Director in the required report to Congress on the rationale in selecting the location of any satellite office include an explanation of how the selected location will achieve the purposes of satellite offices and how the required considerations were met.Made In Order
13Version 1Lujn (NM)DemocratWould establish a new section in the bill which requires the Director of the USPTO to work with local small business assistance and economic development organizations, including organizations affiliated with national laboratories and research universities, to provide patent application assistance to small businesses and independent inventors. Submitted
1Version 3Manzullo (IL)RepublicanRevised Would eliminate the ability of the Director of the U.S. Patent and Trademark Office (USPTO) to set fees, retaining that authority for Congress.Made In Order
17Version 1Michaud (ME), Dold (IL)DemocratWithdrawn Would clarify the term “technological invention,” for the purposes of Section 18, to ensure that the business method patents review does not include legitimate manufacturing and software patents.Withdrawn
2Version 1Moore, Gwen (WI)DemocratWould direct the USPTO to develop methods for studying the diversity of patent applicants, including those applicants who are minorities, women, or veterans. Any results of the study shall not be used for preferential treatment in the patent process.Made In Order
3Version 1Moore, Gwen (WI)DemocratWould specify that the USPTO will take into consideration small businesses, minority-owned businesses, and women-owned businesses when conducting outreach activities.Submitted
4Version 2Peters (MI), Renacci (OH)DemocratRevised Would mandate a USPTO-led study on what USPTO, SBA, and other agencies can do to help small businesses obtain, maintain, and enforce foreign patents. This study is to be conducted using existing resources. Made In Order
10Version 1Polis (CO)DemocratWould clarify that the new legislation would apply only to new tax planning patents, not already filed patents which would disclose patent information leaving the applicants vulnerable. Made In Order
11Version 1Rohrabacher (CA)RepublicanWould eliminate the burden of post-grant reviews and reexaminations on individual inventors and small businesses with 100 or fewer employees.Made In Order
37Version 1Schock (IL), Boren (OK), Waters (CA), Sensenbrenner (WI), Franks (AZ), Kaptur (OH)RepublicanWould strike section 18 of H.R. 1249, the Transitional program for covered business method patents. Made In Order
14Version 2Sensenbrenner (WI)RepublicanRevised Would strike Section 3 of the legislation, which would convert the U.S patent system from “first-to-invent” to “first-to-file.”Made In Order
35Version 1Shuster (PA)RepublicanWithdrawn Would exempt all business method patents granted prior to the effective date of the legislation from the Business Method Patent Transitional Program.Withdrawn
36Version 1Shuster (PA)RepublicanWithdrawn Would exempt patents for competitive pricing or procurement, supply chain management, or business process outsourcing from the Business Method Patent Transitional Program. Withdrawn
15Version 2Smith, Lamar (TX)RepublicanRevised Would make technical edits and a few necessary changes to more substantive issues, such as prior user rights and an additional oversight requirement for the PTO. Made In Order
16Version 1Speier (CA)DemocratWould direct the PTO to prescribe a requirement that parties provide sufficient evidence to prove and rebut a claim of derivation.Made In Order
33Version 1Terry (NE)RepublicanWould strike first-to-file provisions while maintaining the bill's stated purpose, i.e. (1) reduce latency by making office self funding, and (2) improve quality by adding additional layers of review.Submitted
34Version 1Terry (NE)RepublicanWould require that a Small Business Study and Report on Prior User Rights be completed and reported with positive results, stating that the bill will not harm the patent system and the country, before the bill goes into effect.Submitted
38Version 2Wasserman Schultz (FL)DemocratWithdrawn Late Revised Would make certain corrections and clarifications to language found at section 27 of the Smith (R-TX) Manager's Amendment and permit independent second opinions in certain genetic diagnostic testing. Withdrawn
6Version 1Waters (CA)DemocratWould add a severability clause protecting the remainder of the bill if the Supreme Court determines that certain sections or provisions are unconstitutional.Made In Order
7Version 1Waters (CA)DemocratWithdrawn Would strike Section 18. Withdrawn
8Version 1Waters (CA)DemocratWould require the USPTO Director to develop standards and procedures that provide for the inclusion of minority and women-owned businesses in the Office’s procurement and business activities. It also would allow the USPTO to consider the extent to which potential USPTO contractors employ and include small, minority, and women-owned businesses in its workforce. It would not apply to, or place any requirements on the USPTO with respect to the examinations of applications for, or issuance of, patents or trademarks.Submitted
9Version 1Waters (CA)DemocratWould provide a preference (not a hard line criteria or quota – merely one or many activities the USPTO can consider) for potential USPTO contractors that carry out certain investment and philanthropic activities to bolster education, training, and employment in science, technology, engineering, and mathematics (STEM) disciplines. Rep. Waters’ amendment is intended to promote enhanced public and private partnerships, civic, and investment activities to strengthen our nation’s STEM pipeline and ensure that the United States continues to produce highly skilled STEM professionals that are both diverse and innovative. Submitted
30Version 1Wolf (VA)RepublicanWould strike section 22 of the bill on Patent and Trademark Office Funding, and provide a corresponding offset.Withdrawn
31Version 1Wolf (VA)RepublicanWould strike section 22 of the bill on Patent and Trademark Office Funding.Withdrawn
32Version 1Wolf (VA)RepublicanWould strike section 22 of the bill regarding Patent and Trademark Office funding; provide a corresponding offset; and authorize the retention of excess fee collections subject to appropriations.Withdrawn