On June 4 the Senate Judiciary Committee met to consider Chairman CHUCK GRASSLEY’s “PATENT Act,” S. 1137, which is intended to address abusive patent litigation. The Committee approved the bill, with two amendments, by a vote of 16-4. The committee will now “report out” the bill as amended for consideration by the full Senate.
The two amendments make small changes to the manager’s amendment that was published by the Committee late Tuesday evening. The first, offered by Senator DIANE FEINSTEIN (D-Calif.), adds to the section addressing clarity and specificity in patent demand letters by prohibiting the sender of a demand letter from demanding a specific monetary amount in its first written communication. The second, offered by Senator JOHN CORNYN (R-Tex.), allows certain institutions of higher education to quality for microentity status and pay lower patent fees to the USPTO.
The Committee rejected several amendments offered by Senator CHRIS COONS (D-Del.) that would have carved out exemptions to various provisions of the bill and an amendment offered by Coons and Senator DICK DURBIN (D-Ill.) to exempt universities from the bill’s attorney fee-shifting provision. The Committee also did not accept an amendment offered by Senator DAVID VITTER (R-La.) to expand an existing exemption for pharmaceutical patents in USPTO challenges to small businesses.
Two changes are expected before the bill is considered on the Senate floor. A provision in the manager’s amendment addressing the amendment of patent claims in IPR and PGR proceedings is said to be “placeholder” language because Senators and stakeholders continue “good faith negotiations” to refine this provision. A second expected change would exempt from the USPTO’s PTO’s post grant proceedings patents that are subject to the Hatch-Waxman Act and Biologics Price Competition and Innovation Act (BPCIA) processes.
The manager’s amendment, amendments offered in markup, Grassley’s and Ranking Member PATRICK LEAHY’s (D-Vt.) opening statements, and a video recording of the hearing are posted on the Committee website.
