The Senate Judiciary Committee recently released a draft report on the status and amendments to the Senate version of the Patent Reform bill, otherwise known as S. 1145. The report details the history of the bill and enumerates the proposed changes to the existing laws. Additionally, the report explains the 10 amendments suggested by various members of the committee and the subsequent votes on those proposed amendments from their meeting last July. Senators Leahy and Hatch offered an amendment that brought the sections for venue, willfulness, post-grant review, and USPTO funding to their current form that was affirmed by unanimous consent of the committee. They also offered amendments to codify and raise the standard to prove inequitable conduct with materiality defined as ‘information that a patent examiner would consider important in deciding whether to allow the patent.’ This amendment passed by the slimmest of margins, 10-9. Senator Sessions offered an amendment that would limit liability for certain check imaging patents against certain potential defendants which also passed unanimously. Senator Kennedy offered an amendment giving the Director of the USPTO the discretion to accept late filings in limited circumstances when the delay is unintentional. The amendment initially passed by unanimous consent, though Senator Grassley and Senator Sessions later changed their votes to no votes, which did not affect the outcome of the vote. Senator Coburn’s amendment eliminating fee diversion passed by a voice vote. Sadly, Senator Specter’s proposed amendment to eliminate best mode as a means for invalidation was denied 9-10. Senator Kyl wanted to define reasonable royalty as ‘what a willing licensor / licensee would have voluntarily negotiated at the time of the infringement’, but was shot down 7-10 (2 members did not vote). Senator Kyl then tried to eliminate the section on damages altogether, but was once again rebuffed 7-11 (apparently, in spite of the fact that there was no “barking from the dog”, and “no smog”, it was not a “good day” for the Senator from Arizona). Senator Coburn’s proposed amendment removing post-grant review from the bill, and requiring that the PTO and the DOJ conduct a 6-month study of post-grant review systems used by other countries, failed by an even wider margin of 5-13. Lastly, the Committee voted to recommend the bill as amended 13-5, with Senators Brownback, Grassley, Coburn, Kyl, and Feingold just saying NO to Patent Reform. The full report can be read at here, courtesy of the IPO.

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