Outgoing US Commerce Chief Backs House Patent Reform Bill, Nearly

United States Commerce Secretary Gary Locke today gave near-complete approval of legislation to reform US patent law which is awaiting action in the House of Representatives.

Locke sent the letter, dated 31 May and available here [pdf], to House Judiciary Committee Chairman Lamar Smith (Republican, Texas), who sponsored HR 1249, the so-called America Invents Act. Similar legislation, S 23, has already passed in the Senate, and differences will need to be worked out between the two chambers before final passage.

Locke signalled approval of House provisions that would: establish a “first-inventor-to-file” clause; give the US Patent and Trademark Office (part of the Commerce Department) the ability to set its fee and keep the revenues from those fees; establish a post-grant review process; and add pre-issuance submissions of prior art.

But there was at least one House provision that Locke signalled may need some flexibility to get passed, related to protection of innovators under a “prior user defense.”

“H.R. 1249 includes provisions to expand the current prior user defense to all areas of technology,” the letter said. “As a matter of fairness, we believe that innovators who independently create and commercialize technology should not be penalized for, or deprived of, their investment. As a result, we believe that the availability of a prior user defense is, on balance, good policy. We recognize, however, that some in the university community have raised concerns about the provision, and we stand ready to work with the Committee on any proposed revisions.”

Sources say the House bill, which passed the Judiciary Committee in April, may come to House floor as soon as June.

Nominee for next US Commerce Secretary

Locke has been named to be the next US Ambassador to China. Today, industry groups hailed the nomination of John Bryson to be the next Commerce Secretary. Bryson is former chairman and CEO of California power company Edison International.