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Jessica Chesher

Managing Editor

Innovation eReview
IP Law Watch:112th & 113th Congress

As January approaches and the Senate and House of Representatives embark upon a new, 113th United States Congress, we look at legislation that was enacted by the 112th Congress, and items that weren't passed that may be enacted by the 113th Congress  relevant to technology commercialization. 

The bills that were introduced can be browsed by subject at govtrack.us. Hundreds of bills were introduced in the last two years in the areas of Commerce, Energy, Education, Finance, Foreign Trade and Science and Technology. Very few of those became law or even progressed. The summary of the record of the 112th congress is a useful resource for checking which laws passed. 

The following is a summary of laws relevant to technology commercialization that were signed into law: 

      • Continuing implementation of the 2011 Leahy-Smith America Invents Act (“AIA”) – post grant review procedures will be available through the USPTO for claims that patent infringe where infringement is alleged in March 2013. This ability to challenge the validity of a patent at the USPTO is expected to save time and money. The post grant review procedures for business method patents went into effect on September 16, 2012. However, according to at least one commentary, there is little evidence yet as to how the system is working. Look for a webcast on the new post grant review procedures by Professor Lisa Dolak in the spring Lab to Market webcast series.

      • Implementation of the Jumpstart Our Business Startups (“JOBS”) Act . Signed in April of 2012, the JOBS Act amends securities laws to ease the ability of “emerging growth companies” to obtain capital for projects, without necessarily going public (for example, through SEC accredited investors, crowdfunding and general advertising). Especially touted is the “IPO On-Ramp exemptions and allowances for smaller companies looking to go public.

      • Provisions of the Patient Protection and Affordable Care Act  ("PPACA"), signed into law in March of 2010, continue to be implemented. The Act, along with the Health Care and Education Reconciliation Act was upheld as constitutional in the National Federation of Independent Business v. Sebelius case decided in June, 2012. All individuals will need to obtain health care, either from employer, private insurers or health care exchanges. Understanding what the health care options are including government exchanges, and, who needs them and which ones are most beneficial is something consumers will need to grapple with. The focus on compliance will create opportunities for entrepreneurs to provide systems to comply with record keeping and health care option determination and record installation.

      • SBIR/STTR Reauthorization Act of 2011 In December of 2011, a six year extension (through September 30, 2017) of the SBIR and STTR programs was authorized as part of the National Defense Reauthorization Act of 2012. The US Small Business Administration (SBA) wrote to SBIR managers that: the … Act creates several pilot programs and amends current SBIR and STTR statutory provisions relating to program eligibility, technical assistance, annual reporting and data collection. The changes have been categorized by commentators as significant. The SBA website provides information about the new changes and policy directives as well as frequently asked questions.

      • The Trademark Act of 1947 was amended in October of 2012 to correct an error relating to the remedies to dilution of the trademark.

Items to watch for in the upcoming 113th Congress include: 

    • America Innovates Act of 2012 Actively promoted by New York Senator Kristin Gillibrand, the bill seeks to establish an innovation bank, to improve science and technology job training and to authorize grants for to institutes of research and higher education for developing science and engineering discoveries into new companies, products, or jobs, including additional research or data collection with the goal of making a particular discovery attractive to investment from private entities such as corporations and venture capital firms. .

      • The Startup Act of 2011 This legislation has a number of provisions including amendments to the Internal revenue code regarding qualified small business stock, and income tax credit for startups. Especially relevant to research universities a section on “accelerated commercialization of university-based research”, which would make awards to institutions with innovative initiatives to improve an institution’s capacity to commercialize faculty research that can be widely adopted if the research yields measurable results. See the Debate regarding free agency for more information on this topic.

      • STEM Jobs Act of 2012 The STEM Act aims to provide permanent residency to an increased number of foreign nationals who earn advanced degrees in science, technology, engineering, and math so that they may remain in the United States to work in STEM areas.

      • Advancing Innovative Manufacturing Act of 2012

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