Jackie Speier: “My amendment enhances the derivations proceedings provision in the first-inventor-to-file section of the bill. As we…”

“My amendment enhances the derivations proceedings provision in the first-inventor-to-file section of the bill. As we know, the U.S. Patent Office is a vital tool that facilitates universities and businesses of all sizes to turn ideas and discoveries into successful products. Having said that, we must ensure that our patent system provides strong and predictable intellectual property protections. This act creates a new process called ``derivation,'' by which a party can defeat an earlier filed patent application by showing that the invention in the earlier application was derived from the party's invention or concept. The bill requires a party to support a petition for derivation by ``substantial evidence'' in order to initiate a proceeding. The derivation proceedings in this legislation must be a process that is fair, reliable, and permits the Patent and Trademark Office to make a decision based on a solid record of relevant evidence. This amendment helps to accomplish this by requiring the PTO to provide rules for the exchange of relevant information by both parties. The substantial evidence threshold at the petition stage of the proceedings may not be reasonable in some circumstances. For example, consider a situation where an inventor discloses an invention to a venture capitalist who declines to invest in it.…”