House Judiciary Chief IP Counsel Tells IPWatchdog LIVE Attendees Eligibility Companion Bill to Be Introduced Soon

IPWatchdog LIVE

From Left: John Lee, Eli Mazour and Joe Matal

On day two of IPWatchdog LIVE, J. John Lee, Chief Counsel for Intellectual Property for the U.S. House of Representatives, Committee on the Judiciary, told those who are skeptical of the chances for Senators’ Tillis and Coons’ Patent Eligibility Restoration Act (PERA) to move forward that a House version of the bill is likely to be introduced in the near future.

Lee, who is principal advisor on IP issues and helms the Subcommittee on Courts, Intellectual Property, and the Internet, was speaking on a panel titled “Politics, Policy and Legislation at the Intersection of Intellectual Property,” which also featured David Jones of the High-Tech Inventors Alliance; Joe Matal of Haynes Boone, LLP and former U.S. Patent and Trademark Office (USPTO) Acting Director and Acting Solicitor; and Eli Mazour of Harrity & Harrity.

Commenting that the chances of PERA moving ahead soon are slim considering the lack of consensus, Matal noted there is currently no House version of the bill. But Lee said the House version is coming. However, he added, “that doesn’t necessarily mean it will rocket to markup” and encouraged attendees to think about the bill as “just a step in a process” toward reform.

There is also a House version of the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act of 2023, which would significantly overhaul Patent Trial and Appeal Board (PTAB) practices. However, Lee said the bill is still in the early stages and he doesn’t expect too much action on it anytime soon.

IPWatchdog LIVE

From Left: David Jones, John Lee, Eli Mazour

All of the panelists lamented the lack of agreement on patent issues at the moment, which threatens to stall legislation like PERA and PREVAIL. “Part of the debate is affected by the national discourse in general,” said Lee, which too often focuses on the “exceptions rather than the rules,” he added. “That’s driving divisiveness in the country, and a refusal to work together – it’s really poisonous.”

Matal, who himself has reservations about some of the language in PERA, called out the position of US Inventor on the bill, dubbing it “crazy.”

Gene [Quinn] is right,” Matal said. “The bill is clearly beneficial, clearly pro-patent. People need to stop listening to US Inventor.”

Jones, whose members include companies like Microsoft, Amazon, Intel and Google, does not support PERA as written, but said there could be a way to get to consensus if stakeholders would agree to options such as offering sui generis protection for specific types of inventions or other concessions. Overall though, he said the current state of U.S. patent policy is “mixed but probably mostly positive” for his members.

Lee noted the House IP Subcommittee will also be examining issues such as artificial intelligence, oversight of the Copyright Office standard essential patents and counterfeiting in the coming days and weeks.

Stay tuned for more news from Day 2 of IPWatchdog LIVE.


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Join the Discussion

8 comments so far.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 21, 2023 01:00 pm

    My prediction: it will be a total disaster that will enable the CAFC more leeway to stew things up

    Fair enough. My prediction is that the PERA will not pass, and will therefore have no effect at all. Instead, the United States’ totally broken subject matter eligibility status quo will persist another year (or ten).

    Meanwhile, when the current PERA expires at the end of this Congress, Sens. Tillis & Coons will pick themselves up, dust themselves off, and start all over again. They will look at what were the obstacles to this version of PERA, and try to write yet another bill that will overcome those obstacles. They will keep trying this–session after session–with admirable persistence. The composition of Congress will continue to change, and the language of the bill will continue to evolve, and eventually they will find some legislative language that can pass.

  • [Avatar for Cratman]
    September 20, 2023 01:33 pm

    The fact that Mr. Matal is quoted as attacking the organization rather than its ideas should speak volumes.

  • [Avatar for B]
    September 19, 2023 04:34 pm

    @ Anon “ Sorry, but listening to those building a wooden horse is something that just has to be done with full awareness.”

    Great metaphor

  • [Avatar for B]
    September 19, 2023 04:32 pm

    My prediction: it will be a total disaster that will enable the CAFC more leeway to stew things up

  • [Avatar for Pro Say]
    Pro Say
    September 18, 2023 08:18 pm

    When you reach “consensus” with the devil, guess who wins?

    (Hint: It ain’t you.)

  • [Avatar for Josh Malone]
    Josh Malone
    September 18, 2023 06:53 pm

    If only we could go back to 2010 to warn Chuck Grassley and Orin Hatch to stop listening to Joe Matal.

  • [Avatar for Model 101]
    Model 101
    September 18, 2023 02:51 pm

    PERA is the only way forward. You gotta go with it now or we’ll be in patent ineligibility limbo for another decade.

    Judge Michel said something about this.

  • [Avatar for Anon]
    September 18, 2023 02:34 pm

    Sorry, but listening to those building a wooden horse is something that just has to be done with full awareness.