Summary of Amendments Submitted to the Rules Committee for H.R. 3309 – Innovation Act

Summaries Derived from Information Provided by Sponsors

Listed in Alphabetical Order

Dec 3, 2013 3:44 PM

Click on sponsor for amendment text.

Castor (FL)


Delays flood insurance premium changes until completion of affordability study.

Conyers (MI), Jackson Lee (TX)


Strikes Section 3(b), the fee shifting provision.

Conyers (MI), Watt (NC)


Ensures that the PTO retains all of the user fees it collects.

Conyers (MI), Watt (NC)


SUBSTITUTE REVISED Promotes transparency in patent ownership; protects customers who are targeted in infringement suits; directs the PTO to develop educational resources for small businesses; instructs the PTO and others to prepare reports on several issues including the use of deceptive demand letters.

DeGette (CO)


Clarifies that lawsuits that both claim patent infringement related to technologies used to provide 9-1-1 or other emergency services and are brought against wireless carriers or IP-enabled voice service providers required by law to provide 9-1-1 services are under the jurisdiction of the U.S. Court of Federal Claims.

Goodlatte (VA)


LATE MANAGERS Makes a few technical and clarifying changes. Specifically, under Section 3(d), it clarifies that the exception in paragraph one applies to biosimilars, it also adds an exception for actions seeking relief based on competitive harm, and ensures that the provision is not subject to reverse gamesmanship. Under Section 6(d) it makes clarifying changes that ensure that foreign courts cannot terminate licenses to US IP. Extends time required by the agencies to complete the various studies and reports required in the bill.

Jackson Lee (TX)


Strikes Section 9(a) of the bill.

Jackson Lee (TX)


Expands covered customer definition to all small businesses so long as their annual revenue does not exceed $25 million.

Jackson Lee (TX)


Requires the Director to conduct a study regarding the economic impact of the changes in current law resulting from Sections 3, 4, and 5 of the bill on the ability of individuals and small businesses owned by women, veterans, and minorities to assert, secure, and vindicate their constitutionally guaranteed exclusive right to their inventions and discoveries.

Jeffries (NY)


This amendment would create pleading parity between plaintiffs and defendants.

Jeffries (NY)


Leave intact a patent applicant's ability to challenge the USPTO's denial of a patent in district court.

Jeffries (NY), Farenthold (TX)


Stays discovery until a court decides a motion to transfer venue.

Johnson, Hank (GA), Conyers (MI)


Strikes Section 6 of the bill, which would require the Judicial Conference to promulgate certain rules and procedures.

Kaptur (OH)


Provides an exemption to nonprevailing parties in a suit that is a small business concern (50 employees or fewer) as defined under 15 U.S.C 602(a) in the Small Business Act

Marino (PA)


LATE REVISED Inserts a bond attached to discovery requests, at the motion of the defendant, to cover the costs of any additional discovery costs and attorney’s fees for discovery requests beyond that for core documents.

Massie (KY)


Strikes section 5, the "Customer-suit exception" provision.

Perlmutter (CO)


Delays subsection (a), (b), and (c) of Section 6 until December 1st, 2015 to conform Congressional review of the Federal Rules of Civil Procedure in accordance with 28 U.S.C. 2074.

Polis (CO)


REVISED Requires claimants to provide additional disclosure information in any pre-suit notification to establish a willful infringement claim.

Polis (CO), Marino (PA)


Requires the inclusion of disclosure information in pre-litigation demand letters in order to provide information for small companies and end users who receive demand letters.

Rohrabacher (CA)


Strikes 9(a) from the bill and reorder the remaining subsections of Section 9.

Rohrabacher (CA)


Replaces the specific pleading, procedural, and evidentiary requirements to be met by plaintiffs in Section 3 and Section 6 with guidance to the Judicial Conference and district courts to develop rules of procedure to address abusive litigation practices.

Rohrabacher (CA)


Exempts small businesses (defined as those who have fewer than 50 employees) from the bill’s “Discovery Limits” provision, so the limits on discovery provision would pertain only to firms with 50 or more employees.

Watt (NC), Nadler (NY), Jackson Lee (TX)


Restores the discretion in the fee-shifting provision under current law, and provides judges with greater flexibility to determine when to shift fees by allowing fee awards to prevailing parties in “appropriate cases” as opposed to “exceptional cases.”

Watt (NC)


Brings the fee shifting provision in the underlying bill more closely aligned with the Equal Access to Justice Act. Allows a judge to consider dilatory or other abusive tactics by the prevailing party in determining whether to reduce or deny a fee award.

Watt (NC), Chabot (OH)


Requires a court to specify whether it will stay discovery pending the hearing on patent claim construction and deletes narrow, specific authority when it can expand discovery during that time.

Watt (NC)


Modifies the underlying fee-shifting provision by requiring the court to award fees only if the position of the non-prevailing party was substantially unjustified.