House Passes HR 6621, Spares Pre-GATT Patents

20 December 2012 PharmaPatents Blog

The U.S. House of Representatives passed an amended version of HR 6621 that does not includes the provisions that could have effectively eliminated the term of any pending patent applications that were filed before June 7, 1995 (“pre-GATT applications”). Instead, the bill requires the USPTO to submit a “report” on pre-GATT applications. (The bill still includes the troubling Patent Term Adjustment provisions that I wrote about in this article.)

The Report

As set forth in the amended version of HR 6621, the USPTO will have to submit a report to Congress on the following issues relating to pre-GATT applications:

  1. the total number of pending pre-GATT applications that are not subject to a secrecy order
  2. the filing date of each such application
  3. the earliest priority date claimed by each such application
  4. the inventor and assignee named on each such application
  5. the amount of time that examination of each such application has been delayed because of an interference, appeal to the Board, district court civil action under 35 USC § 145 or 146, or appeal to the Federal Circuit under 35 USC § 141
  6. any other information about such applications that the USPTO Director believes is relevant to their pendency

The bill requires that the report be submitted within 4 months of the date of enactment.

Still Objectionable?

According to an article by Dennis Crouch on PatentlyO, the vote on HR 6621 was held up by concerns raised by Dana Rohrabacher (R-Ca.) regarding the requirement to identify the inventors and assignees of pending pre-GATT applications. Still, the bill passed by a vote of 308-89, and now goes to the Senate for consideration.

Perhaps the Senate will take a closer look at the Patent Term Adjustment issues?

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services