Yesterday, we reported on the manager’s amendments to the Protecting American Talent and Entrepreneurship Act, or “PATENT Act,” a bi-partisan patent reform bill introduced by Senator Leahy and several other Senators. After two additional amendments by members of the Senate Judiciary Committee during yesterday’s mark-up session, the committee approved the bill by a vote of sixteen (16) to four (4). The two amendments are discussed below.
Senators Feinstein and Tillis’ amendment made changes to the Act’s provisions governing pre-suit notification of infringement by patentees to accused infringers. The amendment prohibits such pre-suit notification from containing, absent “consent of the intended recipient,” a “request for, demand for, or offer to accept a specific monetary amount in exchange for a license, settlement, or similar agreement to resolve allegations of patent infringement” or “a specific monetary amount demanded based on the cost of legal defense in a lawsuit concerning any asserted claim or claims.”
Senator Cornyn’s amendment permits certain “institution[s] of higher education” and employees thereof to qualify for micro entity status when applying for patents and, therefore, pay lower patent application fees.
Senator Coons, who has also introduced proposed patent reform legislation known as the STRONG Act, proposed several amendments to the PATENT Act, but none were approved. One of his proposed amendments would have required petitioners in inter partes and post-grant reviews to prove that a previously issued patent claim is invalid “by clear and convincing evidence” and a proposed amended claim invalid by a preponderance of the evidence. This same language is in Senator Coons’ proposed STRONG Act. Senator Coons’ other proposed amendments would have exempted certain claims and parties from the Act’s provisions. For example, one proposed amendment would have rendered inapplicable the heightened patent infringement pleading standards in the Act to patent plaintiffs that have “never previously brought a civil action alleging infringement of any patent” and who also allege “infringement of a patent that has never been the subject of litigation in any previous civil action.”
Senator Durbin proposed an amendment that would have exempted inventors, joint inventors, “or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, the original assignee of the patent” from the heightened patent infringement pleading standards in the PATENT Act. This amendment was also not approved by the committee.
Prior to the PATENT Act going to the full Senate for a vote, it is expected that members of the committee will make revisions to Section 11’s provisions governing the amendment of patent claims in inter partes and post grant review proceedings.