MEDIA ADVISORY: Congress and President Obama Adopt Pitt Professor Arthur Hellman’s Suggestions for New Patent Law

PITTSBURGH—Congress has passed and President Obama has signed a bill that adopts University of Pittsburgh Professor Arthur Hellman’s proposals as part of the Leahy-Smith America Invents Act (H.R. 1249), previously called the Patent Reform Act of 2011. The new law incorporates Hellman's suggested approach for nullifying the effect of a Supreme Court decision on federal jurisdiction.

One section of the law includes provisions known as the “Holmes Group fix” because they nullify the effect of the Supreme Court’s 2002 decision in Holmes Group, Inc. v. Vornado. The legislation amends two sections of the judicial code dealing with intellectual property (IP) cases and adds a new provision allowing removal of certain IP cases from state to federal court.

The “Holmes Group fix” originated in a hearing of the House Judiciary Committee in March 2005. A bar association proposed legislation to reverse the effect of the Holmes Group decision by revising the provision of the Judicial Code defining the original jurisdiction of the district courts in patent cases. Hellman agreed that Holmes Group decision was bad policy, but he cautioned the committee that the association proposal could have unanticipated consequences. He suggested a more narrowly tailored package of amendments.

The Judiciary Committee agreed with Hellman and unanimously endorsed a bill embodying his proposals. Although that bill did not reach the House floor, the principal elements of the “Holmes Group fix” were incorporated into the America Invents Act. 

A detailed account of the legislative history of the “Holmes Group fix,” including Hellman’s role, can be found in the House Report on the 2006 bill: http://www.gpo.gov/fdsys/pkg/CRPT-109hrpt407/pdf/CRPT-109hrpt407.pdf

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