December 3, 2013
Speaker John A. Boehner
H-232 The Capitol
Washington, DC 20515
Minority Leader Nancy Pelosi
H-204 The Capitol
Washington, DC 20515
RE: H.R. 3309, and Manager's Amendment
Dear Speaker Boehner and Minority Leader Pelosi:
The Licensing Executives Society (U.S.A. and Canada), Inc. ("LES") opposes the passage of H.R. 3309 as it now stands. While the bill has laudable goals and several worthy provisions, LES is of the view that the bill as a whole is not ready for passage, and greater input from the user community is needed. In its present form, the bill would weaken fundamental property rights, diminish the value of intellectual property and innovation, and suppress business formation and job growth. We ask that you defer bringing this bill to the floor until its various provisions can be more thoroughly explored and refined; and, if brought to the floor, we encourage House members to withhold their support of the bill.
LES is a non-profit, non-partisan professional society of about 4,000 members who are bringing the fruits of innovation to market by facilitating the orderly exchange of intellectual property rights through license agreements. LES is the leading licensing organization in North America. Its members represent every industrial sector and a wide array of technological disciplines, from telecommunications to the life sciences. LES is actively engaged in education, public policy, and the sharing of best practices to promote the effective use of intellectual property to the ultimate benefit of society. LES is a member society of Licensing Executives Society International (LESI), a global society.
LES shares the views of many distinguished members of our intellectual property community who have publicly expressed opposition to substantial provisions of the bill, including: Randall Rader, Chief Judge, US Court of Appeals for the Federal Circuit; Paul Michel, Chief Judge (ret.), US Court of Appeals for the Federal Circuit; Kimberly Moore, Judge, US Court of Appeals for the Federal Circuit; and David Kappos, Undersecretary of Commerce for Intellectual Property and Director, US Patent and Trademark Office (ret.).
In addition, many of our sister societies and industry-oriented groups have noted the laudable goals of the bill, but have written in opposition to substantial provisions of the bill. We believe those concerns are well founded, and, in the interest of good order, require more measured and deliberative evaluation. The recently enacted America Invents Act is still very much in its infancy, and its implications unresolved. Further substantive manipulation of our patent system without extensive input from the user community is particularly ill-advised at this time.
Among other things, we are of the opinion that H.R. 3309 would improperly interfere with the federal courts' role and responsibility in conducting patent litigation and the control of its docket, and would unduly limit judicial discretion. It would add to the cost of litigation through heightened pleading requirements and associated disclosure obligations that unfairly target a particular type of property right rather than attack the root problem of abusive litigation tactics. The bill in its current form would also discourage the enforcement of valid property rights by imposing formulaic fee shifting. Fee shifting in the absence of judicial discretion operates as a disproportionate threat to fledgling enterprises, which are often undercapitalized but yet offer great potential for business formation and job growth, and are a potent resource for future innovation.
LES strongly encourages the amendment of H.R. 3309 to include the principal feature of H.R. 3349. This would afford the USPTO access to all of the revenue it generates from fees, which are paid entirely by the user community. Our innovation-oriented enterprises should be afforded the high quality examination that would come from re-investing those resources in the USPTO. This simple step would improve patent quality, which, over the long term, would be the single most effective step in reducing the incidence of frivolous patent enforcement.
LES is eager to work with Congress in developing worthy legislation that balances restrictions on litigation abuse against pro-growth protection of valid and enforceable property rights. Our founding fathers recognized the importance of promoting the progress of the useful arts by affording inventors exclusive rights to their inventions by means of reliable, equitable, and affordable access to the federal courts. We request the opportunity to participate in further revisions to the bill that more effectively strike that balance.
Brian P. O'Shaughnessy
Regional Vice President, USA
Licensing Executives Society (USA and Canada), Inc.
cc: Members of the U.S. House of Representatives
Members of the U.S. Senate
Download the letter here.