Empty vintage congress hall with seats and microphones.Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137.  In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.

The PATENT Act includes the following proposed changes [S. 1137, sections 11 and 15]:

  1. The patent owner is permitted to support its preliminary response with new declaration evidence, a departure from the current practice which prohibits the submission of such new testimony evidence.
  2. The PTAB must use the district court standard (Phillips) for interpreting patent claims in post-grant proceedings, rather than the PTAB’s current ‘broadest reasonable interpretation’ standard, as sanctioned by the Federal Circuit in In re Cuozzo.
  3. The burden of proving unpatentability of a proposed substitute (amended) claim is now placed squarely on the petitioner, instead of the current practice requiring the patent owner as the movant to bear the burden of showing patentability.
  4. Estoppel in civil actions is limited to grounds that were actually raised, striking the previous estoppel requirement which previously included grounds that the petitioner “reasonably could have raised.”

The bill also includes sections targeting abusive litigation tactics; such reforms include a requirement for clarity and specificity in demand letters, stricter pleading requirements, discovery limits, and more stringent standards for fee shifting. The Judiciary Committee is expected to consider the bill on Thursday during its executive business meeting.  The official news release regarding the amendment to the bill is here and indicates that further revisions are expected to the provisions addressing claim amendments during post-grant proceedings.

The PATENT Act was introduced April 29, 2015 by Senate Judiciary Committee Chairman Chuck Grassley and Ranking Member Patrick Leahy, along with committee members John Cornyn, Chuck Schumer, Orrin Hatch, Mike Lee, and Amy Klobuchar.  The companion effort of the House Judiciary Committee is the Innovation Act, H.R. 9.