On June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (“PATENT”) Act, incorporating two amendments introduced during a mark-up session prior to the vote, as well as a series of changes introduced in a Manager’s Amendment on June 2.
The Manager’s Amendment, which was introduced by Sen. Leahy (D-Vt.) and other co-sponsors of the PATENT Act, proposes a number of revisions to the original PATENT Act specifically targeted to Inter-Partes Review (IPR) and Post-Grant Review (PGR) proceedings. These include:
- Requiring IPR and PGR proceedings to construe each claim as it would be construed by a district court, rather than under the Broadest Reasonable Interpretation (BRI) standard.1
- Requiring the consideration of any previous district court claim constructions.2
- Binding parties in any subsequent proceedings before the office or in district court by any representations made regarding claim construction in IPR and PGR.3
- Granting a presumption of validity to any patents challenged via IPR or PGR.4
- Allowing the director to choose not to institute an IPR or a PGR based on a consideration of whether the grounds of unpatentability on prior art or arguments set forth are the same or substantially the same as those considered and decided in a prior judicial proceeding, or in a prior proceeding before the office involving the same claim(s).5
- Allowing patent owners to submit supporting evidence and opinions in response to a petition to institute an IPR or PGR, and allowing petitioners to file a reply responding to any new issues raised in the response.6
- Requiring the merits of an IPR or PGR proceeding to be decided by a panel that includes no more than one member of the panel that instituted the IPR or PGR.7
Furthermore, during the mark-up session prior to approval of the PATENT Act, additional amendments were incorporated that prohibit pre-suit notification of infringement by patentees from containing 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” absent consent of the intended recipient.8
The current version of the PATENT Act, S. 1137, will now be sent to the floor of the Senate for further debate and a floor vote.
- See Redlined Text of PATENT Act accessible at: http://www.judiciary.senate.gov/imo/media/doc/S.%201137%20Redline.pdf, p. 20, ll. 24-28 and p. 23, ll. 5-9. (Accessed June 16, 2015).
- Id. at p. 20, ll. 29-32 and p. 23, ll. 10-13.
- Id. at p. 19, ll. 35-41 and p. 22, ll. 18-23.
- Id. at p. 21, ll. 17-18 and p. 23, ll. 38-39.
- Id. at p. 18, l. 36 – p. 19, l. 6 and p. 21, l. 38 – p. 22, l. 8.
- Id. at p. 18, ll. 25-29 and p. 29, ll. 28-32.
- Id. at p. 24, ll. 4-11.
- http://www.essentialpatentblog.com/2015/06/senate-judiciary-committee-approves-patent-act/ (Accessed June 16, 2015).