On June 4 the Senate Judiciary Committee met to consider Chairman CHUCK GRASSLEY\u2019s \u201cPATENT Act,\u201d 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 \u201creport out\u201d the bill as amended for consideration by the full Senate.<\/p>\n
The two amendments make small changes to the manager\u2019s 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.<\/p>\n
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\u2019s 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.<\/p>\n
Two changes are expected before the bill is considered on the Senate floor. A provision in the manager\u2019s amendment addressing the amendment of patent claims in IPR and PGR proceedings is said to be \u201cplaceholder\u201d language because Senators and stakeholders continue \u201cgood faith negotiations\u201d to refine this provision. A second expected change would exempt from the USPTO\u2019s PTO\u2019s post grant proceedings patents that are subject to the Hatch-Waxman Act and Biologics Price Competition and Innovation Act (BPCIA) processes.<\/p>\n