S.23 (Manager’s Amendment) Primed for VoteS.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.Significant changes include a provision to end fee diversion, as well as some changes to the proposed proposed post grant landscape.The major post grant refinements of the amendment are as follows: -A transitional post grant proceeding (page 9) specific to business methods was added to S.23. This can be thought of as a special window, of limited time (4 year sunset provision) to challenge a business method patent (if sued, or charged with infringement of a qualifying patent).The business method provision also calls out the ability to stay a district court proceeding and codifies the current factor based analysis of the courts. The provision provides for interlocutory appeal of the denial of a stay. Senator Schumer D-NY commented on the floor today that he could not imagine a case that would not be stayed under this transitional program.  So, long story short, if you have a business method patents sue now….otherwise you might be forced to wait out the sunset of this provision.-a further post grant provision was added to clarify that a case cannot be stayed for post grant review is a motion for a preliminary injunction is pending.Other changes of interest, not relating to post grant practice:-Added a provision to discount multi-track program for small entities added by 50%.-Deleted venue and damage provisions (deemed moot by recent court action). Most of the actual floor debate had absolutely nothing to do with patent reform, or the manager’s changes. Instead, several democratic senators sought to include provisions relating to federal spending /debt ceiling, and salary controls for Congress should the gov’t be shut down.The “First Inventor to File” provision remains intact for now, although several Senators paid lip service to this aspect of the bill in anticipation of challenges.Once through the Senate, as seems inevitable now, the House will issue a companion bill, differences will then be reconciled. Senator Leahy stated at one point today that all of this could happen quickly, and a bill should be ready for presidential signature “very soo

S.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.

Significant changes include  a provision to end fee diversion, as well as some changes to the proposed proposed post grant landscape.

The major post grant refinements of the amendment are as follows: 

-A transitional post grant proceeding (page 9) specific to business methods was added to S.23. This can be thought of as a special window, of limited time (4 year sunset provision) to challenge a business method patent (if sued, or charged with infringement of a qualifying patent).

The business method provision also calls out the ability to stay a district court proceeding and codifies the current factor based analysis of the courts. The provision provides for interlocutory appeal of the denial of a stay. Senator Schumer D-NY commented on the floor today that he could not imagine a case that would not be stayed under this transitional program.  So, long story short, if you have a business method patents sue now….otherwise you might be forced to wait out the sunset of this provision.

-a further post grant provision was added to clarify that a case cannot be stayed for post grant review is a motion for a preliminary injunction is pending.

Other changes of interest, not relating to post grant practice:

-Added a provision to discount multi-track program for small entities added by 50%.

-Deleted venue and damage provisions (deemed moot by recent court action). 

Most of the actual floor debate had absolutely nothing to do with patent reform, or the manager’s changes. Instead, several democratic senators sought to include provisions relating to federal spending /debt ceiling, and salary controls for Congress should the gov’t be shut down.

The “First Inventor to File” provision remains intact for now, although several Senators paid lip service to this aspect of the bill in anticipation of challenges.

Once through the Senate, as seems inevitable now, the House will issue a companion bill, differences will then be reconciled. Senator Leahy stated at one point today that all of this could happen quickly, and a bill should be ready for presidential signature “very soon.”