Senate Marks Up Patent Reform Act

Yesterday, the Senate was hoping to complete the panel's markup of the The Patent Reform Act (S. 1145), but managed to work only two amendments after adopting a manager's amendment that eliminated the provision that would have given the Patent and Trademark Office substantive rule-making authority.

The committee rejected, 7-11, an amendment that would provide the CAFC with greater discretion in considering interlocutory appeals.

However, panel members adopted, 12-6, an amendment that would further limit venue (oddly enough, John Cornyn of Texas, usually one of strongest critics of forum shopping in lawsuits, opposed the amendment).

Highlights of the mark up includes provisions that:

1) Prohibit patent holders from "manufacturing venue" by assignment/incorporation to establish venue for a specific district;

(2) Expand venue restrictions to apply not just to claims for infringement but to declaratory judgment actions as well;

(3) Provide that venue for a US infringer will be (a) where infringer resides (the principal place of business or state of incorporation) or (b) where infringer has committed "substantial" acts of infringement and has a "regular and established physical facility" (previously referred to as "regular place of business");

(4) Provide that venue for a foreign infringer will be (a) the foreign corporation's residence, which is where its main U.S. subsidiary is located or (b) where the foreign corporation has committed "substantial" acts of infringement AND has a "regular and established physical facility";

(5) Provide a "safe harbor" for universities from venue reform restrictions by allowing venue for university plaintiffs to be where the university resides ;

(6) provides a safe harbor for individual inventor plaintiffs who qualify as a micro-entity by allowing venue where the individual resides.

View/download the venue mark-up here (link).