August 10, 2010 - Today, President Obama signed the USPTO Supplemental Appropriations Act, 2010 (H.R. 5874). The USPTO will receive $129 million dollars that otherwise would have been diverted in FY2010, ending September 30th. The increased appropriation proposal for FY2011 is still pending in Congress.

July 29, 2010 - According to the Library of Congress' Thomas website, H.R. 5874 was received in the Senate, read twice, considered, read the third time, and passed without amendment by Unanimous Consent.

July 28, 2010 - The House of Representatives has approved President Obama's proposed increase in the 2010 USPTO appropriation (See July 12th). The proposal was introduced yesterday as H.R. 5874 and approved tonight on a motion to suspend the rules and pass the bill. A copy of the bill is here.

July 26, 2010 - House Judiciary Committee Chair Conyers and Ranking Minority Member Lamar Smith wrote today to the House Appropriations Committee, endorsing President Obama's request for a supplemental USPTO appropriation in 2010. "This is an issue that calls for widespread, bipartisan support. We should make every effort to get it done before August." A copy of the letter is here. Notably, Repr. Conyers and Smith have not expressed similar support for advancing the patent law reform bill in the House.

In a meeting today with Fish & Richardson, Repr. Paul Hodes (D-NH) expressed doubt that Congress would agree on patent law reform legislation in 2010. He cited the differences between the House and Senate bills, and the limited available time. His remarks also suggested that--during this pre-election season--House members will be more focused on their own constituents' interests and will be less willing to make compromises.

July 12, 2010 – In an article today in Roll Call, House Judiciary Committee Chair Conyers declared his general support for updating the patent system, saying, “The patent system is simply not up to the challenges of the 21st century and is handicapping the American knowledge economy.” He noted that, in the recent Bilski v. Kappos opinion, the Supreme Court had cautioned against reading its opinion as taking a position on where that balance ought to be struck “between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles.” Mr. Conyers commented, “This is appropriate because Congress, not the courts, must clarify and update patent law." The article is here.

Consistent with past suggestions by House Judiciary Committee members and ex-Chief Judge Michel, to focus on increasing the PTO’s resources, President Obama today wrote to House Speaker Nancy Pelosi, requesting a 129 million dollar increase in the current fiscal year 2010 budget for the Department of Commerce. Also requested was authority to retain up to 150 million dollars received in excess of the budgeted amount in fiscal year 2010, to remain available until expended. The proposed increase would be fully offset by a corresponding decrease to the 2010 Decennial Census program in the Census Bureau. Such an offset is a practical necessity for approval of this proposal. The letter and attachments are here.

June 29, 2010 – The mark-up of the Commerce Department appropriation by the House Appropriations Subcommittee on Commerce, Justice, Science, and Related Agencies provides $2.3 billion for the USPTO in fiscal year 2011. The statement of Subcommittee Chairman Alan B. Mollohan, introducing the mark-up, said that the “additional funds are necessary to reduce patent pendency and the application backlog, and to invest in USPTO’s IT infrastructure.”

June 18, 2010 - An article in today's PTCJ reported on a BNA interview with former Federal Circuit Chief Judge Paul Michel, who retired May 31st. Judge Michel criticized the pending patent law reform bills as "just aiming at the wrong target." He encouraged steps to adequately fund the PTO and indicated that the provisions aimed at changing judicial handling of patent cases were unnecessary. "None of the actions that the provisions would require inside a courthouse are prohibited today. All are available tools that the district court judges have right now.”

May 18, 2010 - Chairman Conyers announced withdrawal of yesterday’s fast track fee bill proposal. Later in the day, he and House Judiciary Ranking Minority Member Lamar Smith introduced a comprehensive funding bill, the Patent and Trademark Office Funding Stabilization Act of 2010, HR 5322, including anti-diversion provisions. It has been referred to the Judiciary Committee.

• A 15% surcharge on current fees, effective from 10 days after enactment until the PTO fee-setting authority would become effective on October 1, 2011;
• Patent and trademark fee-setting authority for the PTO Director, subject to (1) consultation with the relevant Public Advisory Committee, (2) a 45-day public comment period following publication, and  (3) a separate 45-day congressional comment period fee changes can be implemented; 
• Establishment of a PTO Public Enterprise Fund as a revolving fund in the U.S. Treasury, into which fees would be paid and from which PTO expenses could be paid without fiscal year limitation; and
• A sunset of fee-setting authority after 10 years, to force congressional review at that time.

May 17, 2010 - House Judiciary Chair Conyers announced that a stand-alone bill granting fee-setting authority to the PTO would be introduced on the House floor tomorrow (May 18^th), with a fast track vote expected that evening. Most interested groups immediately announced their negative reactions, primarily because the proposal did not address the fee diversion problem and also because of their hopes for enactment of comprehensive patent law reform.

May 14, 2010 – Herb Walmsley, Executive Director of Intellectual Property Owners (IPO) announced that group’s opposition to a possible stand-alone patent fee bill that would give, the USPTO “unfettered authority” to raise user fees, without any prohibition against diversion of fees to other government programs. According to Walmsley, the legislation would be an open invitation to divert billions of dollars, knowing the USPTO would raise fees to cover the losses. IPO's Board, however, does support the PTO’s request for an immediate 15% increase of all patent fees.

May 11, 2010 – Repr. Alan Mollohan, the Chair of the House appropriations subcommittee with jurisdiction over the PTO, was defeated for reelection in a Democratic primary election today.

May 5, 2010 – PTO Director Kappos, members of the patent and trademark Public Advisory Committees and the President of the Patent Office Professionals Association (POPA) testified today at a PTO oversight hearing of the House Judiciary Committee. Comments by members of the committee evidenced bipartisan support for patent law reform generally, reducing the PTO backlog and addressing PTO fee diversion; however, as Chairman Conyers said, “we seem to be stuck” on patent law reform legislation. A link to the written statements and videocast of the hearing is here.

Several Representatives strongly suggested a stand-alone fee bill if the patent law reform efforts fail, while recognizing the difficulties in overcoming fee diversion. (Former committee chair Sensenbrenner said that the enemy on that issue is in the Appropriations Committee.) Director Kappos, however, maintained optimism that a comprehensive patent law reform bill could be enacted this year and refused to be drawn into discussion of a stand-alone fee bill. Responding to fee-related questions, Kappos urged approval of the PTO’s request for an interim 15% patent fee increase, explaining that adjustment of individual fees would require 12 to 18 months after the Office receives fee-setting authority. He identified appeal and reexamination fees as providing much less income than the cost of the proceedings and, therefore, as likely candidates for very substantial increases.

April 30, 2010 –The Senate leadership has been seeking unanimous consent to approval of the Managers’ Amendment version of S. 515. If none of the 100 Senators places a “hold” on the bill, it would be approved as amended without any floor debate in the Senate and then would move to the House of Representatives. However, as of this week, a few Senators prefer to attach their pet amendments to the bill. As a result, the leadership probably will be faced with the task of finding time for debate on the Senate floor, in competition with other important bills and confirmations of Presidential appointments.

April 20, 2010 – Commerce Secretary Locke wrote today to Senate Judiciary Committee Chair Leahy and Minority Ranking Member Sessions, supporting the Managers’ Amendment and saying, “The Administration is eager to see patent reform enacted this congressional session. To this end, we would be pleased to work with you and members of the House and Senate to arrive at a final bill for passage.” Major IP organizations have also written letters in support of the amended bill.

March 25, 2010 - Representative Issa (R- Cal.) filed H.R. 4954, which would amend 35 U.S.C. sec. 292(b) to read, "A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.’’ This proposal, which was also proposed in the March 3, 2010 Senate Managers' Amendment, would eliminate the penalty provision, applicable to all types of false marking, which currently reads: “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” A link to our false marking page is here.

Director Kappos testified today before a House Appropriations subcommittee on the 2011 PTO budget. Several representatives stated their support for adequate PTO funding; however Repr. Schiff (D-Cal) reportedly questioned the PTO’s legislative request for fee-setting authority, pointing out that could invite increased diversion of fees. (Note the April 30, 2009 comment of Repr. Sherman (D-Cal.), at a House Judiciary Committee hearing, that fee diversion was the stupidest thing done in Washington, especially in the context of other efforts to increase innovation.)

March 4, 2010 (Expanded) – A press release from Senate Judiciary Committee Chair Leahy confirmed agreement on a draft Managers' Amendment, which is to be substituted for the version of S.515 approved by the Committee last year. The draft is the result of work by Democratic Senators Leahy, Kaufman and Schumer, and Republican Senators Hatch, Kyl and Sessions. The press release, including background sections summarizing changes from the previous version of the bill and present law, is here. The draft Amendment is here. Our update on the Managers' Amendment, including a table comparing it with the two previous versions, is here. Our corresponding presentation on the Amendment is here.

Although interest groups will continue to lobby for their views, the bipartisan support for this draft suggests it may move ahead soon to a vote by the full Senate without significant, further changes.

February 25, 2010 - Senate Judiciary Committee Chair Leahy reported that a tentative agreement had been reached on a patent law reform bill that preserves the core of the compromise bill reported by the committee last year. He particularly thanked Republican Senators Hatch, Kyl and Sessions, and USPTO Director Kappos for their contributions. "I expect that we will be able to release details as they are finalized in the coming days after consultation with the House."

February 5, 2010 - In an address to a NYIPLA meeting, USPTO Director Kappos endorsed S. 515, especially noting its grant to the Office of controlled fee-setting authority. He said that the Senate Judiciary Committee staff is preparing a managers' markup (amendment) of that bill, which he expects to be revealed soon. He mentioned the Office's involvement in supporting the Committee staff, which appears to be a positive step. The positions of interest groups continue to differ, with some groups willing to compromise and others unwilling. Patent law reform legislation is unlikely to advance to the Senate floor unless the Senate leaders can predict support by 60 or more Senators. Unless that level of agreement is reached soon, the prospect for such legislation in 2010 is likely to dim, because this is an election year and other issues before Congress will demand more attention.

January 21, 2010 - The PatentlyO blog reported a recent Email from USPTO Director Kappos to Office employees. (A copy of the Email is here.). Kappos said there is "simply no way to get the backlog under control in a reasonable period of time without significant hiring given current attrition rates" and described the Office's infrastructure needs as "so dire that President Obama referenced the USPTO's antiquated IT systems in his remarks last week on modernizing government."

Kappos told the USPTO staff that it is imperative to "work with Congress to develop long-term financial solutions," especially noting the provisions in pending patent reform legislation for giving the USPTO with fee-setting authority, and that immediate and urgent funding needs require short-term assistance.

January 4, 2010 - Increasingly, at the end of 2009 and beginning of 2010, some interested persons have suggested that much of the "reform" in the pending patent law reform legislation is misdirected to litigation; because the biggest need for reform is in the USPTO, especially the need to adequately fund the steps necessary to improve its operations.

Responding to USPTO budget provisions in the Congressional Conference Committee's December 8th Report (see below), USPTO Director Kappos wrote on this date to the chairs and minority leaders of the [House and] Senate Appropriations Committees, politely pointing out that the Office is in dire financial straits and that, although income projections have increased, the Office will not be able to meet its urgent needs if Congress does not act. In particular, the letter suggested three short-term and long-term funding solutions that require Congressional action: "(1) ensuring appropriation amounts provide for full access to fees collected; (2) instituting a temporary surcharge to support operations; and (3) providing authority to adjust our fee structure." Except for the temporary surcharge and possibly reinstituting the authority to spend up to 100 million dollars above budget, if justified by income; the proposed solutions ma be difficult to achieve because of a desire to appear to control government spending (especially in an election year) and the Appropriation Committees' desire to maintain strict control over the use of government income. [One of those letters] is here.

Click here to view pre-2010 developments.

Previous Speaking Engagements

On December 3, 2007, Katherine Lutton and Kelly Hunsaker presented "Latest News on the Patent Reform Front" to Litigating Patent Disputes: The Advanced Legal Forum. For more information, please click here.

June 15, 2007. "Patent Reform Act of 2007", presented by Katherine Kelly Lutton and Kelly Hunsaker. For more informtion, please click here.

Presentation on patent reform legislation by Fish & Richardson's head of litigation Katherine Kelly Lutton. For more information, please click here.

To view speaking engagements prior to 2007, please click here.

Fish in the News

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