The Senate Judiciary Committee gave us a watershed moment in the patent reform movement when, last week, it approved an amended version of the Patent Reform Act of 2009. The Committee’s action is a significant step toward enactment of comprehensive patent reform, particularly because it represents a compromise amongst major stakeholders on the controversial damages provision that has, for some time, played spoiler for the legislation.

So now what?  Where do we go from here?

Turns out, we’re not going anywhere…for now. All eyes will remain fixed on the Senate Judiciary Committee in the foreseeable future for two reasons:

1. Will the Judiciary Committee issue a written report to accompany the bill?

First, we’re looking for a Committee Report. Reports are an important part of the legislative process as they serve to inform the public and other members of Congress about the purpose of the proposed legislation and its impact on current law and life. Committee reports often explain the perceived need for the legislation and may present dissenting views. Reports can also include the views of executive agencies that stand to be impacted by the bill, and are required to include cost estimates and regulatory impact statements.

In contrast to the rules of the House, Senate committees are not required to submit a written report when approving a bill and passing it to the entire chamber. Indeed, as noted on its web site, the Judiciary Committee “sometimes publishes reports to accompany legislation that [it has] reported to the Senate Floor.” (emphasis added)

If the Committee publishes a report, potential interesting content includes the dissenting views of Senator Kyl, who has introduced a competing patent reform bill (S.610 [.pdf]) and represents the most visible opposition to S.515, and Senator Hatch, who voted against the bill he originally sponsored because it fails to address his concerns over inequitable conduct. If included, any input from the Patent and Trademark Office would also make interesting reading, particularly in light of the first-to-file and post-grant review provisions that stand to significantly change the operations of the Office.

2. When will the Judiciary Committee consider a nomination for Director of the Patent and Trademark Office?

With the confirmation of Gary Locke as the Commerce Secretary, we’re now waiting for President Obama to nominate a Director of the Patent and Trademark Office (Under Secretary, Intellectual Property). Once he does, the nomination goes to the Judiciary Committee for hearings.

With respect to any report it may decide to publish, the Committee has a chicken-and-egg issue of sorts.  Does it wait to publish a report until after it acts on a forthcoming Director nomination? Or does patent reform have sufficient inertia in light of the agreement on damages that the Committee (read Leahy, Specter, Feinstein) chooses to push the bill even in the absence of a Director nomination? On this question, a comment made by Senator Feinstein during markup might prove telling: “We have substantial meeting of the minds…We’ve got what we need to move the bill.”

Certainly quick passage by the Senate is possible, particularly if the Committee elects not to publish a report. Considering the importance and controversial nature of the bill, though, this seems highly unlikely.

The relative timing of any report that might issue and the Director nomination will be interesting to watch.

But, for now, we’re not going anywhere.