On February 3, 2011, the Senate Judiciary Committee amended and unanimously approved S. 23, the Patent Reform Act of 2011, sending it on to the Senate for a full vote. It will be the third time patent reform legislation reaches the Senate since 2008, but this version appears to have better chances than its predecessors. The Judiciary Committee voted 15-0 to approve it, with only Senators Tom Coburn (R-Oklahoma) and John Cornyn (R-Texas) abstaining. Members of both parties have suggested they support the proposed legislation as re-drafted in the wake of last fall’s elections.
The legislation, authored by Chairman Patrick Leahy (D-Vermont), ranking member Orrin Hatch (R-Utah) and Sen. Chuck Grassley (R-Iowa), aims to streamline and transition the patent system so the first inventor to file the patent — rather than the first person to invent something — wins the protections.
Two amendments were adopted: (1) a manager’s amendment offered by Chairman Leahy, making mainly technical changes; and (2) an amendment offered by Senators Dianne Feinstein (D-California) and Jon Kyl (R-Arizona) striking the willful infringement provision. The committee was notified in advance of a total of seven possible amendments, but the other five were not offered. Senator Coburn spoke at length about his amendment to fully fund the U.S. Patent and Trademark office by creating a revolving fund for patent and trademark fee collections, which he plans to offer when the bill gets to the Senate.
Other changes approved Thursday included an addition in Chairman Leahy's manager's amendment that would effectively undo the U.S. Supreme Court's ruling in Holmes Group Inc. v. Vornado Air Circulation System and keep all patent-related claims in federal courts. It would also require that post-grant review petitions be filed no later than six months after the filing of a complaint alleging infringement of the underlying patent. Sen. Grassley, newly appointed ranking member on the Judiciary Committee, successfully lobbied to include provisions to curtail the patenting of tax strategies, which he said had been narrowly tailored to avoid disruptions to patents for tax preparation software. Another amendment, offered by Sen. Feinstein and unanimously adopted, would allow courts to assess treble damages only for findings of willful infringement.
Of particular note, Section 8 of the bill addresses venue revision and largely adopts the standard the Federal Circuit has announced in its recent series of mandamus rulings on the issue arising out of the Eastern District of Texas. The bill is not expected to be taken up in the Senate immediately.