Senators have completed votes on two amendments to the patent reform legislation (America Invents Act – S. 23) currently being debated.
The first was a managers’ amendment offered by Judiciary Committee Chairman Pat Leahy (D-VT) and Ranking Member Chuck Grassley (R-IA). It was adopted by a vote of 97-2.
A press release from Leahy’s office notes the key provisions in this amendment:
- Change the short title of the legislation to “The America Invents Act”
- Correct the fee setting section to avoid any potential “blue slip” issues
- BACKGROUND: Revenue raising legislation must begin in the House of Representatives. This provision will address any possible concerns that the bill as originally drafted could lead to so-called blue slip concerns regarding its origin.
- Provide a 50 percent reduction in application and search fees for small entities requesting accelerated patent examination at the U.S. Patent and Trademark Office (USPTO)
- BACKGROUND: The USPTO recently created a “fast track” process to allow applicants to pay an additional fee to cover the cost of having examiners work overtime on certain applications. This provision will ensure that small businesses and inventors receive a 50 percent reduction in the fee.
- Require the creation of three new USPTO satellite offices, subject to the availability of funds; require the USPTO to ensure geographic diversity in the selection of offices; and require reports to Congress on the rationale for the selection of locations
- BACKGROUND: The USPTO announced in December its intention to open a satellite office in Detroit, Michigan. The USPTO intends to open three more satellite offices in the next several years.
- End fee diversion at the U.S. Patent and Trademark Office; establish a revolving fund to ensure that funds collected by the USPTO can be used at the USPTO
- BACKGROUND: This provision will benefit users of the patent system who expect the money they pay in fees to be used for patent services and operations, and will benefit the patent office, which is completely user-funded, by allowing the USPTO to budget for the future.
- Create a pilot program to review the validity of business method patents
- BACKGROUND: Many business method patents are of dubious validity because they are not truly inventive. This provision will create a temporary, limited proceeding at the USPTO to challenge business method patents.
- Strike provisions related to damages and venue
- BACKGROUND: These provisions as currently drafted do not make substantive changes to existing law. The current damages provisions establish a gatekeeper role for the court, but do not change the actual legal standard for awarding damages. The current venue provisions codify recent circuit court decisions, provide useful clarity, but make no meaningful change to applicable law. Striking these provisions will address recent concerns of the high tech community, and address concerns of certain Members of the House.
- Change the definition of a “micro entity”
- BACKGROUND: This provision will provide more clarity and increase the income threshold.
- Technical changes
- BACKGROUND: This provision makes minor modifications to effective dates, federal jurisdiction and residency requirements of Federal Circuit judges.
The second amendment, offered by Senators Pat Toomey (R-PA) and David Vitter (R-LA), was tabled by a vote of 52-47.
It contained provisions of Toomey’s Full Faith and Credit Act, which would “ensure that the U.S. government does not default on its debt by requiring the Treasury to prioritize payments on the debt in case the debt ceiling is not raised,” according to a press release from his office.
Vitter’s portion of the amendment would introduce the same protections for Social Security payments.