99–006 

112TH CONGRESS REPT. 112–98 " ! HOUSE OF REPRESENTATIVES 1st Session Part 1 

AMERICA INVENTS ACT 

JUNE 1, 2011.—Committed to the Committee of the Whole House on the State of 

the Union and ordered to be printed 

Mr. SMITH of Texas, from the Committee on the Judiciary, 

submitted the following 

R E P O R T 

together with 

DISSENTING VIEWS AND ADDITIONAL VIEWS 

[To accompany H.R. 1249] 

[Including cost estimate of the Congressional Budget Office] 

The Committee on the Judiciary, to whom was referred the bill 

(H.R. 1249) to amend title 35, United States Code, to provide for 

patent reform, having considered the same, reports favorably thereon with an amendment and recommends that the bill as amended 

do pass. 

CONTENTS 

Page 

The Amendment ...................................................................................................... 1 

Purpose and Summary ............................................................................................ 38 

Background and Need for the Legislation ............................................................. 40 

Hearings ................................................................................................................... 57 

Committee Consideration ........................................................................................ 58 

Committee Votes ...................................................................................................... 58 

Committee Oversight Findings ............................................................................... 63 

New Budget Authority and Tax Expenditures ...................................................... 63 

Congressional Budget Office Cost Estimate .......................................................... 63 

Performance Goals and Objectives ......................................................................... 73 

Advisory on Earmarks ............................................................................................. 73 

Section-by-Section Analysis .................................................................................... 73 

Agency Views ........................................................................................................... 85 

Changes in Existing Law Made by the Bill, as Reported ..................................... 89 

Dissenting Views ..................................................................................................... 162 

Additional Views ...................................................................................................... 163 


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The Amendment 

The amendment is as follows: 

Strike all after the enacting clause and insert the following: 

SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

(a) SHORT TITLE.—This Act may be cited as the ‘‘America Invents Act’’. 

(b) TABLE OF CONTENTS.—The table of contents for this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. First inventor to file. 

Sec. 4. Inventor’s oath or declaration. 

Sec. 5. Defense to infringement based on earlier inventor. 

Sec. 6. Post-grant review proceedings. 

Sec. 7. Patent Trial and Appeal Board. 

Sec. 8. Preissuance submissions by third parties. 

Sec. 9. Venue. 

Sec. 10. Fee setting authority. 

Sec. 11. Fees for patent services. 

Sec. 12. Supplemental examination. 

Sec. 13. Funding agreements. 

Sec. 14. Tax strategies deemed within the prior art. 

Sec. 15. Best mode requirement. 

Sec. 16. Marking. 

Sec. 17. Advice of counsel. 

Sec. 18. Transitional program for covered business method patents. 

Sec. 19. Jurisdiction and procedural matters. 

Sec. 20. Technical amendments. 

Sec. 21. Travel expenses and payment of administrative judges. 

Sec. 22. Patent and Trademark Office funding. 

Sec. 23. Satellite offices. 

Sec. 24. Designation of Detroit satellite office. 

Sec. 25. Patent Ombudsman Program for small business concerns. 

Sec. 26. Priority examination for technologies important to American competitiveness. 

Sec. 27. Calculation of 60-day period for application of patent term extension. 

Sec. 28. Study on implementation. 

Sec. 29. Pro bono program. 

Sec. 30. Effective date. 

Sec. 31. Budgetary effects. 

SEC. 2. DEFINITIONS. 

In this Act: 

(1) DIRECTOR.—The term ‘‘Director’’ means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and 

Trademark Office. 

(2) OFFICE.—The term ‘‘Office’’ means the United States Patent and Trademark Office. 

(3) PATENT PUBLIC ADVISORY COMMITTEE.—The term ‘‘Patent Public Advisory Committee’’ means the Patent Public Advisory Committee established 

under section 5(a)(1) of title 35, United States Code. 

(4) TRADEMARK ACT OF 1946.—The term ‘‘Trademark Act of 1946’’ means the 

Act entitled ‘‘An Act to provide for the registration and protection of trademarks 

used in commerce, to carry out the provisions of certain international conventions, and for other purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et seq.) 

(commonly referred to as the ‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 

(5) TRADEMARK PUBLIC ADVISORY COMMITTEE.—The term ‘‘Trademark Public 

Advisory Committee’’ means the Trademark Public Advisory Committee established under section 5(a)(1) of title 35, United States Code. 

SEC. 3. FIRST INVENTOR TO FILE. 

(a) DEFINITIONS.—Section 100 of title 35, United States Code, is amended— 

(1) in subsection (e), by striking ‘‘or inter partes reexamination under section 311’’; and 

(2) by adding at the end the following: 

‘‘(f) The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention. 

‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals 

who invented or discovered the subject matter of a joint invention. 

‘‘(h) The term ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed 

invention. 

‘‘(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or application for patent means— 

‘‘(A) if subparagraph (B) does not apply, the actual filing date of the patent 

or the application for the patent containing a claim to the invention; or 


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‘‘(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 

365(a), or 365(b) or to the benefit of an earlier filing date un 

‘‘(2) The effective filing date for a claimed invention in an application for reissue 

or reissued patent shall be determined by deeming the claim to the invention to 

have been contained in the patent for which reissue was sought. 

‘‘(j) The term ‘claimed invention’ means the subject matter defined by a claim 

in a patent or an application for a patent.’’. 

(b) CONDITIONS FOR PATENTABILITY.— 

(1) IN GENERAL.—Section 102 of title 35, United States Code, is amended 

to read as follows: 

‘‘§ 102. Conditions for patentability; novelty 

‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— 

‘‘(1) the claimed invention was patented, described in a printed publication, 

or in public use, on sale, or otherwise available to the public before the effective 

filing date of the claimed invention; or 

‘‘(2) the claimed invention was described in a patent issued under section 

151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the 

claimed invention. 

‘‘(b) EXCEPTIONS.— 

‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE

OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— 

‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from 

the inventor or a joint inventor; or 

‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained 

the subject matter disclosed directly or indirectly from the inventor or a 

joint inventor. 

‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure 

shall not be prior art to a claimed invention under subsection (a)(2) if— 

‘‘(A) the subject matter disclosed was obtained directly or indirectly 

from the inventor or a joint inventor; 

‘‘(B) the subject matter disclosed had, before such subject matter was 

effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 

‘‘(C) the subject matter disclosed and the claimed invention, not later 

than the effective filing date of the claimed invention, were owned by the 

same person or subject to an obligation of assignment to the same person. 

‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the 

same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if— 

‘‘(1) the subject matter disclosed was developed and the claimed invention 

was made by, or on behalf of, 1 or more parties to a joint research agreement 

that was in effect on or before the effective filing date of the claimed invention; 

‘‘(2) the claimed invention was made as a result of activities undertaken 

within the scope of the joint research agreement; and 

‘‘(3) the application for patent for the claimed invention discloses or is 

amended to disclose the names of the parties to the joint research agreement. 

‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a 

claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in 

the patent or application— 

‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent 

or the application for patent; or 

‘‘(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier 

filing date under section 120, 121, or 365(c), based upon 1 or more prior filed 

applications for patent, as of the filing date of the earliest such application that 

describes the subject matter.’’. 


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(2) CONTINUITY OF INTENT UNDER THE CREATE ACT.—The enactment of section 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that 

was expressed, including in the legislative history, through the enactment of the 

Cooperative Research and Technology Enhancement Act of 2004 (Public Law 

108–453; the ‘‘CREATE Act’’), the amendments of which are stricken by subsection (c) of this section. The United States Patent and Trademark Office shall 

administer section 102(c) of title 35, United States Code, in a manner consistent 

with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office. 

(3) CONFORMING AMENDMENT.—The item relating to section 102 in the table 

of sections for chapter 10 of title 35, United States Code, is amended to read 

as follows: 

‘‘102. Conditions for patentability; novelty.’’. 

(c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS SUBJECT MATTER.—Section 

103 of title 35, United States Code, is amended to read as follows: 

‘‘§ 103. Conditions for patentability; non-obvious subject matter 

‘‘A patent for a claimed invention may not be obtained, notwithstanding that 

the claimed invention is not identically disclosed as set forth in section 102, if the 

differences between the claimed invention and the prior art are such that the 

claimed invention as a whole would have been obvious before the effective filing 

date of the claimed invention to a person having ordinary skill in the art to which 

the claimed invention pertains. Patentability shall not be negated by the manner 

in which the invention was made.’’. 

(d) REPEAL OF REQUIREMENTS FOR INVENTIONS MADE ABROAD.—Section 104 of 

title 35, United States Code, and the item relating to that section in the table of 

sections for chapter 10 of title 35, United States Code, are repealed. 

(e) REPEAL OF STATUTORY INVENTION REGISTRATION.— 

(1) IN GENERAL.—Section 157 of title 35, United States Code, and the item 

relating to that section in the table of sections for chapter 14 of title 35, United 

States Code, are repealed. 

(2) REMOVAL OF CROSS REFERENCES.—Section 111(b)(8) of title 35, United 

States Code, is amended by striking ‘‘sections 115, 131, 135, and 157’’ and inserting ‘‘sections 131 and 135’’. 

(3) EFFECTIVE DATE.—The amendments made by this subsection shall take 

effect upon the expiration of the 18-month period beginning on the date of the 

enactment of this Act, and shall apply to any request for a statutory invention 

registration filed on or after that effective date. 

(f) EARLIER FILING DATE FOR INVENTOR AND JOINT INVENTOR.—Section 120 of 

title 35, United States Code, is amended by striking ‘‘which is filed by an inventor 

or inventors named’’ and inserting ‘‘which names an inventor or joint inventor’’. 

(g) CONFORMING AMENDMENTS.— 

(1) RIGHT OF PRIORITY.—Section 172 of title 35, United States Code, is 

amended by striking ‘‘and the time specified in section 102(d)’’. 

(2) LIMITATION ON REMEDIES.—Section 287(c)(4) of title 35, United States 

Code, is amended by striking ‘‘the earliest effective filing date of which is prior 

to’’ and inserting ‘‘which has an effective filing date before’’. 

(3) INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES: EFFECT.—Section 363 of title 35, United States Code, is amended by striking ‘‘except as otherwise provided in section 102(e) of this title’’. 

(4) PUBLICATION OF INTERNATIONAL APPLICATION: EFFECT.—Section 374 of 

title 35, United States Code, is amended by striking ‘‘sections 102(e) and 154(d)’’ 

and inserting ‘‘section 154(d)’’. 

(5) PATENT ISSUED ON INTERNATIONAL APPLICATION: EFFECT.—The second 

sentence of section 375(a) of title 35, United States Code, is amended by striking ‘‘Subject to section 102(e) of this title, such’’ and inserting ‘‘Such’’. 

(6) LIMIT ON RIGHT OF PRIORITY.—Section 119(a) of title 35, United States 

Code, is amended by striking ‘‘; but no patent shall be granted’’ and all that 

follows through ‘‘one year prior to such filing’’. 

(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE.—Section 202(c) of title 35, 

United States Code, is amended— 

(A) in paragraph (2)— 

(i) by striking ‘‘publication, on sale, or public use,’’ and all that follows through ‘‘obtained in the United States’’ and inserting ‘‘the 1-year 

period referred to in section 102(b) would end before the end of that 

2-year period’’; and 

(ii) by striking ‘‘prior to the end of the statutory’’ and inserting ‘‘before the end of that 1-year’’; and 


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(B) in paragraph (3), by striking ‘‘any statutory bar date that may occur 

under this title due to publication, on sale, or public use’’ and inserting ‘‘the 

expiration of the 1-year period referred to in section 102(b)’’. 

(h) DERIVED PATENTS.— 

(1) IN GENERAL.—Section 291 of title 35, United States Code, is amended 

to read as follows: 

‘‘§ 291. Derived Patents 

‘‘(a) IN GENERAL.—The owner of a patent may have relief by civil action against 

the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the 

inventor of the invention claimed in the patent owned by the person seeking relief 

under this section. 

‘‘(b) FILING LIMITATION.—An action under this section may be filed only before 

the end of the 1-year period beginning on the date of the issuance of the first patent 

containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.’’. 

(2) CONFORMING AMENDMENT.—The item relating to section 291 in the table 

of sections for chapter 29 of title 35, United States Code, is amended to read 

as follows: 

‘‘291. Derived patents.’’. 

(i) DERIVATION PROCEEDINGS.—Section 135 of title 35, United States Code, is 

amended to read as follows: 

‘‘§ 135. Derivation proceedings 

‘‘(a) INSTITUTION OF PROCEEDING.—An applicant for patent may file a petition 

to institute a derivation proceeding in the Office. The petition shall set forth with 

particularity the basis for finding that an inventor named in an earlier application 

derived the claimed invention from an inventor named in the petitioner’s application 

and, without authorization, the earlier application claiming such invention was 

filed. Any such petition may be filed only within the 1-year period beginning on the 

date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made 

under oath, and shall be supported by substantial evidence. Whenever the Director 

determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a 

derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable. 

‘‘(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed 

invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. The Director 

shall prescribe regulations setting forth standards for the conduct of derivation proceedings. 

‘‘(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month 

period beginning on the date on which the Director issues a patent that includes 

the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay 

the proceeding after it has been instituted, until the termination of a proceeding 

under chapter 30, 31, or 32 involving the patent of the earlier applicant. 

‘‘(d) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the 

final refusal by the Office on those claims. The final decision of the Patent Trial 

and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those 

claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation. 

‘‘(e) SETTLEMENT.—Parties to a proceeding instituted under subsection (a) may 

terminate the proceeding by filing a written statement reflecting the agreement of 

the parties as to the correct inventors of the claimed invention in dispute. Unless 

the Patent Trial and Appeal Board finds the agreement to be inconsistent with the 

evidence of record, if any, it shall take action consistent with the agreement. Any 

written settlement or understanding of the parties shall be filed with the Director. 

At the request of a party to the proceeding, the agreement or understanding shall 

be treated as business confidential information, shall be kept separate from the file 

of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. 


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‘‘(f) ARBITRATION.—Parties to a proceeding instituted under subsection (a) may, 

within such time as may be specified by the Director by regulation, determine such 

contest or any aspect thereof by arbitration. Such arbitration shall be governed by 

the provisions of title 9, to the extent such title is not inconsistent with this section. 

The parties shall give notice of any arbitration award to the Director, and such 

award shall, as between the parties to the arbitration, be dispositive of the issues 

to which it relates. The arbitration award shall be unenforceable until such notice 

is given. Nothing in this subsection shall preclude the Director from determining the 

patentability of the claimed inventions involved in the proceeding.’’. 

(j) ELIMINATION OF REFERENCES TO INTERFERENCES.—(1) Sections 134, 145, 146, 

154, and 305 of title 35, United States Code, are each amended by striking ‘‘Board 

of Patent Appeals and Interferences’’ each place it appears and inserting ‘‘Patent 

Trial and Appeal Board’’. 

(2)(A) Section 146 of title 35, United States Code, is amended— 

(i) by striking ‘‘an interference’’ and inserting ‘‘a derivation proceeding’’; 

and 

(ii) by striking ‘‘the interference’’ and inserting ‘‘the derivation proceeding’’. 

(B) The subparagraph heading for section 154(b)(1)(C) of title 35, United 

States Code, is amended to read as follows: 

‘‘(C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO DERIVATION

PROCEEDINGS, SECRECY ORDERS, AND APPEALS.—’’. 

(3) The section heading for section 134 of title 35, United States Code, is 

amended to read as follows: 

‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 

(4) The section heading for section 146 of title 35, United States Code, is 

amended to read as follows: 

‘‘§ 146. Civil action in case of derivation proceeding’’. 

(5) The items relating to sections 134 and 135 in the table of sections for chapter 12 of title 35, United States Code, are amended to read as follows: 

‘‘134. Appeal to the Patent Trial and Appeal Board. 

‘‘135. Derivation proceedings.’’. 

(6) The item relating to section 146 in the table of sections for chapter 13 of 

title 35, United States Code, is amended to read as follows: 

‘‘146. Civil action in case of derivation proceeding.’’. 

(k) STATUTE OF LIMITATIONS.— 

(1) IN GENERAL.—Section 32 of title 35, United States Code, is amended by 

inserting between the third and fourth sentences the following: ‘‘A proceeding 

under this section shall be commenced not later than the earlier of either the 

date that is 10 years after the date on which the misconduct forming the basis 

for the proceeding occurred, or 1 year after the date on which the misconduct 

forming the basis for the proceeding is made known to an officer or employee 

of the Office as prescribed in the regulations established under section 

2(b)(2)(D).’’. 

(2) REPORT TO CONGRESS.—The Director shall provide on a biennial basis 

to the Judiciary Committees of the Senate and House of Representatives a report providing a short description of incidents made known to an officer or employee of the Office as prescribed in the regulations established under section 

2(b)(2)(D) of title 35, United States Code, that reflect substantial evidence of 

misconduct before the Office but for which the Office was barred from commencing a proceeding under section 32 of title 35, United States Code, by the 

time limitation established by the fourth sentence of that section. 

(3) EFFECTIVE DATE.—The amendment made by paragraph (1) shall apply 

in any case in which the time period for instituting a proceeding under section 

32 of title 35, United States Code, had not lapsed before the date of the enactment of this Act. 

(l) SMALL BUSINESS STUDY.— 

(1) DEFINITIONS.—In this subsection— 

(A) the term ‘‘Chief Counsel’’ means the Chief Counsel for Advocacy of 

the Small Business Administration; 

(B) the term ‘‘General Counsel’’ means the General Counsel of the 

United States Patent and Trademark Office; and 

(C) the term ‘‘small business concern’’ has the meaning given that term 

under section 3 of the Small Business Act (15 U.S.C. 632). 

(2) STUDY.— 

(A) IN GENERAL.—The Chief Counsel, in consultation with the General 

Counsel, shall conduct a study of the effects of eliminating the use of dates 


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of invention in determining whether an applicant is entitled to a patent 

under title 35, United States Code. 

(B) AREAS OF STUDY.—The study conducted under subparagraph (A) 

shall include examination of the effects of eliminating the use of invention 

dates, including examining— 

(i) how the change would affect the ability of small business concerns to obtain patents and their costs of obtaining patents; 

(ii) whether the change would create, mitigate, or exacerbate any 

disadvantages for applicants for patents that are small business concerns relative to applicants for patents that are not small business concerns, and whether the change would create any advantages for applicants for patents that are small business concerns relative to applicants 

for patents that are not small business concerns; 

(iii) the cost savings and other potential benefits to small business 

concerns of the change; and 

(iv) the feasibility and costs and benefits to small business concerns 

of alternative means of determining whether an applicant is entitled to 

a patent under title 35, United States Code. 

(3) REPORT.—Not later than the date that is 1 year after the date of the 

enactment of this Act, the Chief Counsel shall submit to the Committee on 

Small Business and Entrepreneurship and the Committee on the Judiciary of 

the Senate and the Committee on Small Business and the Committee on the 

Judiciary of the House of Representatives a report on the results of the study 

under paragraph (2). 

(m) REPORT ON PRIOR USER RIGHTS.— 

(1) IN GENERAL.—Not later than the end of the 4-month period beginning 

on the date of the enactment of this Act, the Director shall report, to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of 

the House of Representatives, the findings and recommendations of the Director 

on the operation of prior user rights in selected countries in the industrialized 

world. The report shall include the following: 

(A) A comparison between patent laws of the United States and the 

laws of other industrialized countries, including members of the European 

Union and Japan, Canada, and Australia. 

(B) An analysis of the effect of prior user rights on innovation rates in 

the selected countries. 

(C) An analysis of the correlation, if any, between prior user rights and 

start-up enterprises and the ability to attract venture capital to start new 

companies. 

(D) An analysis of the effect of prior user rights, if any, on small businesses, universities, and individual inventors. 

(E) An analysis of legal and constitutional issues, if any, that arise 

from placing trade secret law in patent law. 

(F) An analysis of whether the change to a first-to-file patent system 

creates a particular need for prior user rights. 

(2) CONSULTATION WITH OTHER AGENCIES.—In preparing the report required 

under paragraph (1), the Director shall consult with the United States Trade 

Representative, the Secretary of State, and the Attorney General. 

(n) EFFECTIVE DATE.— 

(1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18- 

month period beginning on the date of the enactment of this Act, and shall 

apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— 

(A) a claim to a claimed invention that has an effective filing date as 

defined in section 100(i) of title 35, United States Code, that is on or after 

the effective date described in this paragraph; or 

(B) a specific reference under section 120, 121, or 365(c) of title 35, 

United States Code, to any patent or application that contains or contained 

at any time such a claim. 

(2) INTERFERING PATENTS.—The provisions of sections 102(g), 135, and 291 

of title 35, United States Code, as in effect on the day before the effective date 

set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments 

made by this section also apply, if such application or patent contains or contained at any time— 

(A) a claim to an invention having an effective filing date as defined 

in section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or 


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(B) a specific reference under section 120, 121, or 365(c) of title 35, 

United States Code, to any patent or application that contains or contained 

at any time such a claim. 

(o) STUDY OF PATENT LITIGATION.— (1) GAO STUDY.—The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by 

patent assertion entities, related to patent claims made under title 35, United 

States Code, and regulations authorized by that title. 

(2) CONTENTS OF STUDY.—The study conducted under this subsection shall 

include the following: 

(A) The annual volume of litigation described in paragraph (1) over the 

20-year period ending on the date of the enactment of this Act. 

(B) The volume of cases comprising such litigation that are found to be 

without merit after judicial review. 

(C) The impacts of such litigation on the time required to resolve patent claims. 

(D) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations. 

(E) The economic impact of such litigation on the economy of the 

United States, including the impact on inventors, job creation, employers, 

employees, and consumers. 

(F) The benefit to commerce, if any, supplied by non-practicing entities 

or patent assertion entities that prosecute such litigation. 

(3) REPORT TO CONGRESS.—The Comptroller General shall, not later than 

the date that is 1 year after the date of the enactment of this Act, submit to 

the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the results of the study required under this subsection, including recommendations for any changes to 

laws and regulations that will minimize any negative impact of patent litigation 

that was the subject of such study. 

(p) SENSE OF CONGRESS.—It is the sense of the Congress that converting the 

United States patent registration system from ‘‘first inventor to use’’ to a system 

of ‘‘first inventor to file’’ will promote the progress of science by securing for limited 

times to inventors the exclusive rights to their discoveries and provide inventors 

with greater certainty regarding the scope of protection granted by the exclusive 

rights to their discoveries. 

(q) SENSE OF CONGRESS.—It is the sense of the Congress that converting the 

United States patent registration system from ‘‘first inventor to use’’ to a system 

of ‘‘first inventor to file’’ will harmonize the United States patent registration system with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby 

promote a greater sense of international uniformity and certainty in the procedures 

used for securing the exclusive rights of inventors to their discoveries. 

SEC. 4. INVENTOR’S OATH OR DECLARATION. 

(a) INVENTOR’S OATH OR DECLARATION.— (1) IN GENERAL.—Section 115 of title 35, United States Code, is amended 

to read as follows: 

‘‘§ 115. Inventor’s oath or declaration 

‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage 

under section 371 shall include, or be amended to include, the name of the inventor 

for any invention claimed in the application. Except as otherwise provided in this 

section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection 

with the application. 

‘‘(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall 

contain statements that— 

‘‘(1) the application was made or was authorized to be made by the affiant 

or declarant; and 

‘‘(2) such individual believes himself or herself to be the original inventor 

or an original joint inventor of a claimed invention in the application. 

‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in 

an oath or declaration under subsection (a). 

‘‘(d) SUBSTITUTE STATEMENT.— 

‘‘(1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under 


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the circumstances described in paragraph (2) and such additional circumstances 

that the Director may specify by regulation. 

‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph 

(1) is permitted with respect to any individual who— 

‘‘(A) is unable to file the oath or declaration under subsection (a) because the individual— 

‘‘(i) is deceased; 

‘‘(ii) is under legal incapacity; or 

‘‘(iii) cannot be found or reached after diligent effort; or 

‘‘(B) is under an obligation to assign the invention but has refused to 

make the oath or declaration required under subsection (a). 

‘‘(3) CONTENTS.—A substitute statement under this subsection shall— 

‘‘(A) identify the individual with respect to whom the statement applies; 

‘‘(B) set forth the circumstances representing the permitted basis for 

the filing of the substitute statement in lieu of the oath or declaration 

under subsection (a); and 

‘‘(C) contain any additional information, including any showing, required by the Director. 

‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual 

who is under an obligation of assignment of an application for patent may include 

the required statements under subsections (b) and (c) in the assignment executed 

by the individual, in lieu of filing such statements separately. 

‘‘(f) TIME FOR FILING.—A notice of allowance under section 151 may be provided 

to an applicant for patent only if the applicant for patent has filed each required 

oath or declaration under subsection (a) or has filed a substitute statement under 

subsection (d) or recorded an assignment meeting the requirements of subsection (e). 

‘‘(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

‘‘(1) EXCEPTION.—The requirements under this section shall not apply to an 

individual with respect to an application for patent in which the individual is 

named as the inventor or a joint inventor and who claims the benefit under section 120, 121, or 365(c) of the filing of an earlier-filed application, if— 

‘‘(A) an oath or declaration meeting the requirements of subsection (a) 

was executed by the individual and was filed in connection with the earlierfiled application; 

‘‘(B) a substitute statement meeting the requirements of subsection (d) 

was filed in connection with the earlier filed application with respect to the 

individual; or 

‘‘(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was 

recorded in connection with the earlier-filed application. 

‘‘(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in 

connection with the earlier-filed application be included in the later-filed application. 

‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.— 

‘‘(1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If 

a change is made in the naming of the inventor requiring the filing of 1 or more 

additional statements under this section, the Director shall establish regulations under which such additional statements may be filed. 

‘‘(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an 

assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to 

make any additional oath, declaration, or other statement equivalent to those 

required by this section in connection with the application for patent or any patent issuing thereon. 

‘‘(3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based 

upon the failure to comply with a requirement under this section if the failure 

is remedied as provided under paragraph (1). 

‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of 

title 18 by fine or imprisonment of not more than 5 years, or both.’’. 


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(2) RELATIONSHIP TO DIVISIONAL APPLICATIONS.—Section 121 of title 35, 

United States Code, is amended by striking ‘‘If a divisional application’’ and all 

that follows through ‘‘inventor.’’. 

(3) REQUIREMENTS FOR NONPROVISIONAL APPLICATIONS.—Section 111(a) of 

title 35, United States Code, is amended— 

(A) in paragraph (2)(C), by striking ‘‘by the applicant’’ and inserting ‘‘or 

declaration’’; 

(B) in the heading for paragraph (3), by inserting ‘‘OR DECLARATION’’ 

after ‘‘AND OATH’’; and 

(C) by inserting ‘‘or declaration’’ after ‘‘and oath’’ each place it appears. 

(4) CONFORMING AMENDMENT.—The item relating to section 115 in the table 

of sections for chapter 11 of title 35, United States Code, is amended to read 

as follows: 

‘‘115. Inventor’s oath or declaration.’’. 

(b) FILING BY OTHER THAN INVENTOR.— 

(1) IN GENERAL.—Section 118 of title 35, United States Code, is amended 

to read as follows: 

‘‘§ 118. Filing by other than inventor 

‘‘A person to whom the inventor has assigned or is under an obligation to assign 

the invention may make an application for patent. A person who otherwise shows 

sufficient proprietary interest in the matter may make an application for patent on 

behalf of and as agent for the inventor on proof of the pertinent facts and a showing 

that such action is appropriate to preserve the rights of the parties. If the Director 

grants a patent on an application filed under this section by a person other than 

the inventor, the patent shall be granted to the real party in interest and upon such 

notice to the inventor as the Director considers to be sufficient.’’. 

(2) CONFORMING AMENDMENT.—Section 251 of title 35, United States Code, 

is amended in the third undesignated paragraph by inserting ‘‘or the application 

for the original patent was filed by the assignee of the entire interest’’ after 

‘‘claims of the original patent’’. 

(c) SPECIFICATION.—Section 112 of title 35, United States Code, is amended— 

(1) in the first undesignated paragraph— 

(A) by striking ‘‘The specification’’ and inserting ‘‘(a) IN GENERAL.—The 

specification’’; and 

(B) by striking ‘‘of carrying out his invention’’ and inserting ‘‘or joint 

inventor of carrying out the invention’’; 

(2) in the second undesignated paragraph— 

(A) by striking ‘‘The specification’’ and inserting ‘‘(b) CONCLUSION.—The 

specification’’; and 

(B) by striking ‘‘applicant regards as his invention’’ and inserting ‘‘inventor or a joint inventor regards as the invention’’; 

(3) in the third undesignated paragraph, by striking ‘‘A claim’’ and inserting 

‘‘(c) FORM.—A claim’’; 

(4) in the fourth undesignated paragraph, by striking ‘‘Subject to the following paragraph,’’ and inserting ‘‘(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e),’’; 

(5) in the fifth undesignated paragraph, by striking ‘‘A claim’’ and inserting 

‘‘(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim’’; and 

(6) in the last undesignated paragraph, by striking ‘‘An element’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element’’. 

(d) CONFORMING AMENDMENTS.— 

(1) Sections 111(b)(1)(A) of title 35, United States Code, is amended by 

striking ‘‘the first paragraph of section 112 of this title’’ and inserting ‘‘section 

112(a)’’. 

(2) Section 111(b)(2) of title 35, United States Code, is amended by striking 

‘‘the second through fifth paragraphs of section 112,’’ and inserting ‘‘subsections 

(b) through (e) of section 112,’’. 

(e) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the expiration of the 1-year period beginning on the date of the enactment of 

this Act and shall apply to any patent application that is filed on or after that effective date. 

SEC. 5. DEFENSE TO INFRINGEMENT BASED ON EARLIER INVENTOR. 

Section 273 of title 35, United States Code, is amended as follows: 

(1) Subsection (a) is amended— 

(A) in paragraph (1)— 

(i) by striking ‘‘use of a method in’’ and inserting ‘‘use of the subject 

matter of a patent in’’; and 


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(ii) by adding ‘‘and’’ after the semicolon; 

(B) in paragraph (2), by striking the semicolon at the end of subparagraph (B) and inserting a period; and 

(C) by striking paragraphs (3) and (4). 

(2) Subsection (b) is amended— 

(A) in paragraph (1)— 

(i) by striking ‘‘for a method’’; and 

(ii) by striking ‘‘at least 1 year’’ and all that follows through the 

end and inserting ‘‘and commercially used the subject matter at least 

1 year before the effective filing date of the claimed invention that is 

the subject matter of the patent.’’; 

(B) in paragraph (2), by striking ‘‘patented method’’ and inserting ‘‘patented process’’; 

(C) in paragraph (3)— 

(i) by striking subparagraph (A); 

(ii) by striking subparagraph (B) and inserting the following: 

‘‘(A) DERIVATION AND PRIOR DISCLOSURE TO THE PUBLIC.—A person may 

not assert the defense under this section if— 

‘‘(i) the subject matter on which the defense is based was derived 

from the patentee or persons in privity with the patentee; or 

‘‘(ii) the claimed invention that is the subject of the defense was 

disclosed to the public in a manner that qualified for the exception from 

the prior art under section 102(b) and the commercialization date relied 

upon under paragraph (1) of this subsection for establishing entitlement to the defense is less than 1 year before the date of such disclosure to the public;’’; 

(iii) by redesignating subparagraph (C) as subparagraph (B); and 

(iv) by adding at the end the following: 

‘‘(C) FUNDING.— ‘‘(i) DEFENSE NOT AVAILABLE IN CERTAIN CASES.—A person may not 

assert the defense under this section if the subject matter of the patent 

on which the defense is based was developed pursuant to a funding 

agreement under chapter 18 or by a nonprofit institution of higher education, or a technology transfer organization affiliated with such an institution, that did not receive funding from a private business enterprise in support of that development. 

‘‘(ii) DEFINITIONS.—In this subparagraph— 

‘‘(I) the term ‘institution of higher education’ has the meaning 

given that term in section 101(a) of the Higher Education Act of 

1965 (20 U.S.C. 1001(a)); and 

‘‘(II) the term ‘technology transfer organization’ means an organization the primary purpose of which is to facilitate the commercialization of technologies developed by one or more institutions of 

higher education.’’; and 

(D) by amending paragraph (6) to read as follows: 

‘‘(6) PERSONAL DEFENSE.— 

‘‘(A) IN GENERAL.—The defense under this section may be asserted only 

by the person who performed or caused the performance of the acts necessary to establish the defense, as well as any other entity that controls, 

is controlled by, or is under common control with such person, and, except 

for any transfer to the patent owner, the right to assert the defense shall 

not be licensed or assigned or transferred to another person except as an 

ancillary and subordinate part of a good faith assignment or transfer for 

other reasons of the entire enterprise or line of business to which the defense relates. 

‘‘(B) EXCEPTION.—Notwithstanding subparagraph (A), any person may, 

on the person’s own behalf, assert a defense based on the exhaustion of 

rights provided under paragraph (2), including any necessary elements 

thereof.’’. 

SEC. 6. POST-GRANT REVIEW PROCEEDINGS. 

(a) INTER PARTES REVIEW.—Chapter 31 of title 35, United States Code, is 

amended to read as follows: 

‘‘CHAPTER 31—INTER PARTES REVIEW 

‘‘Sec. 

‘‘311. Inter partes review. 

‘‘312. Petitions. 

‘‘313. Preliminary response to petition. 

‘‘314. Institution of inter partes review. 


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‘‘315. Relation to other proceedings or actions. 

‘‘316. Conduct of inter partes review. 

‘‘317. Settlement. 

‘‘318. Decision of the Board. 

‘‘319. Appeal. 

‘‘§ 311. Inter partes review 

‘‘(a) IN GENERAL.—Subject to the provisions of this chapter, a person who is not 

the owner of a patent may file with the Office a petition to institute an inter partes 

review of the patent. The Director shall establish, by regulation, fees to be paid by 

the person requesting the review, in such amounts as the Director determines to 

be reasonable, considering the aggregate costs of the review. 

‘‘(b) SCOPE.—A petitioner in an inter partes review may request to cancel as 

unpatentable 1 or more claims of a patent only on a ground that could be raised 

under section 102 or 103 and only on the basis of prior art consisting of patents 

or printed publications. 

‘‘(c) FILING DEADLINE.—A petition for inter partes review shall be filed after the 

later of either— 

‘‘(1) the date that is 1 year after the grant of a patent or issuance of a reissue of a patent; or 

‘‘(2) if a post-grant review is instituted under chapter 32, the date of the 

termination of such post-grant review. 

‘‘§ 312. Petitions 

‘‘(a) REQUIREMENTS OF PETITION.—A petition filed under section 311 may be 

considered only if— 

‘‘(1) the petition is accompanied by payment of the fee established by the 

Director under section 311; 

‘‘(2) the petition identifies all real parties in interest; 

‘‘(3) the petition identifies, in writing and with particularity, each claim 

challenged, the grounds on which the challenge to each claim is based, and the 

evidence that supports the grounds for the challenge to each claim, including— 

‘‘(A) copies of patents and printed publications that the petitioner relies 

upon in support of the petition; and 

‘‘(B) affidavits or declarations of supporting evidence and opinions, if 

the petitioner relies on expert opinions; 

‘‘(4) the petition provides such other information as the Director may require by regulation; and 

‘‘(5) the petitioner provides copies of any of the documents required under 

paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated 

representative of the patent owner. 

‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition 

under section 311, the Director shall make the petition available to the public. 

‘‘§ 313. Preliminary response to petition 

‘‘If an inter partes review petition is filed under section 311, the patent owner 

shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should 

be instituted based upon the failure of the petition to meet any requirement of this 

chapter. 

‘‘§ 314. Institution of inter partes review 

‘‘(a) THRESHOLD.—The Director may not authorize an inter partes review to 

commence unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that 

there is a reasonable likelihood that the petitioner would prevail with respect to at 

least 1 of the claims challenged in the petition. 

‘‘(b) TIMING.—The Director shall determine whether to institute an inter partes 

review under this chapter pursuant to a petition filed under section 311 within 3 

months after— 

‘‘(1) receiving a preliminary response to the petition under section 313; or 

‘‘(2) if no such preliminary response is filed, the last date on which such 

response may be filed. 

‘‘(c) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice 

available to the public as soon as is practicable. Such notice shall include the date 

on which the review shall commence. 

‘‘(d) NO APPEAL.—The determination by the Director whether to institute an 

inter partes review under this section shall be final and nonappealable. 

‘‘§ 315. Relation to other proceedings or actions 

‘‘(a) INFRINGER’S CIVIL ACTION.— 


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‘‘(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes review 

may not be instituted if, before the date on which the petition for such a review 

is filed, the petitioner, real party in interest, or privy of the petitioner filed a 

civil action challenging the validity of a claim of the patent. 

‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, real party in interest, or privy 

of the petitioner files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes 

review of the patent, that civil action shall be automatically stayed until either— 

‘‘(A) the patent owner moves the court to lift the stay; 

‘‘(B) the patent owner files a civil action or counterclaim alleging that 

the petitioner, real party in interest, or privy of the petitioner has infringed 

the patent; or 

‘‘(C) the petitioner, real party in interest, or privy of the petitioner 

moves the court to dismiss the civil action. 

‘‘(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. 

‘‘(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if 

the petition requesting the proceeding is filed more than 1 year after the date on 

which the petitioner, real party in interest, or privy of the petitioner is served with 

a complaint alleging infringement of the patent. The time limitation set forth in the 

preceding sentence shall not apply to a request for joinder under subsection (c). 

‘‘(c) JOINDER.—If the Director institutes an inter partes review, the Director, in 

his or her discretion, may join as a party to that inter partes review any person 

who properly files a petition under section 311 that the Director, after receiving a 

preliminary response under section 313 or the expiration of the time for filing such 

a response, determines warrants the institution of an inter partes review under section 314. 

‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, 

and chapter 30, during the pendency of an inter partes review, if another proceeding 

or matter involving the patent is before the Office, the Director may determine the 

manner in which the inter partes review or other proceeding or matter may proceed, 

including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. 

‘‘(e) ESTOPPEL.— 

‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes 

review of a claim in a patent under this chapter that results in a final written 

decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect 

to that claim on any ground that the petitioner raised or reasonably could have 

raised during that inter partes review. 

‘‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter 

partes review of a claim in a patent under this chapter that results in a final 

written decision under section 318(a), or the real party in interest or privy of 

the petitioner, may not assert either in a civil action arising in whole or in part 

under section 1338 of title 28 or in a proceeding before the International Trade 

Commission under section 337 of the Tariff Act of 1930 that the claim is invalid 

on any ground that the petitioner raised or reasonably could have raised during 

that inter partes review. 

‘‘§ 316. Conduct of inter partes review 

‘‘(a) REGULATIONS.—The Director shall prescribe regulations— 

‘‘(1) providing that the file of any proceeding under this chapter shall be 

made available to the public, except that any petition or document filed with 

the intent that it be sealed shall, if accompanied by a motion to seal, be treated 

as sealed pending the outcome of the ruling on the motion; 

‘‘(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a); 

‘‘(3) establishing procedures for the submission of supplemental information 

after the petition is filed; 

‘‘(4) establishing and governing inter partes review under this chapter and 

the relationship of such review to other proceedings under this title; 

‘‘(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to— 

‘‘(A) the deposition of witnesses submitting affidavits or declarations; 

and 

‘‘(B) what is otherwise necessary in the interest of justice; 


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‘‘(6) prescribing sanctions for abuse of discovery, abuse of process, or any 

other improper use of the proceeding, such as to harass or to cause unnecessary 

delay or an unnecessary increase in the cost of the proceeding; 

‘‘(7) providing for protective orders governing the exchange and submission 

of confidential information; 

‘‘(8) providing for the filing by the patent owner of a response to the petition 

under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent 

owner relies in support of the response; 

‘‘(9) setting forth standards and procedures for allowing the patent owner 

to move to amend the patent under subsection (d) to cancel a challenged claim 

or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered 

under subsection (d) is made available to the public as part of the prosecution 

history of the patent; 

‘‘(10) providing either party with the right to an oral hearing as part of the 

proceeding; 

‘‘(11) requiring that the final determination in an inter partes review be 

issued not later than 1 year after the date on which the Director notices the 

institution of a review under this chapter, except that the Director may, for 

good cause shown, extend the 1-year period by not more than 6 months, and 

may adjust the time periods in this paragraph in the case of joinder under section 315(c); 

‘‘(12) setting a time period for requesting joinder under section 315(c); and 

‘‘(13) providing the petitioner with at least 1 opportunity to file written 

comments within a time period established by the Director. 

‘‘(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of 

the patent system, the efficient administration of the Office, and the ability of the 

Office to timely complete proceedings instituted under this chapter. 

‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board 

shall, in accordance with section 6, conduct each inter partes review instituted 

under this chapter. 

‘‘(d) AMENDMENT OF THE PATENT.— 

‘‘(1) IN GENERAL.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of 

the following ways: 

‘‘(A) Cancel any challenged patent claim. 

‘‘(B) For each challenged claim, propose a reasonable number of substitute claims. 

‘‘(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted 

upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director. 

‘‘(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter. 

‘‘(e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this 

chapter, the petitioner shall have the burden of proving a proposition of 

unpatentability by a preponderance of the evidence. 

‘‘§ 317. Settlement 

‘‘(a) IN GENERAL.—An inter partes review instituted under this chapter shall be 

terminated with respect to any petitioner upon the joint request of the petitioner 

and the patent owner, unless the Office has decided the merits of the proceeding 

before the request for termination is filed. If the inter partes review is terminated 

with respect to a petitioner under this section, no estoppel under section 315(e) shall 

attach to the petitioner, or to the real party in interest or privy of the petitioner, 

on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or 

proceed to a final written decision under section 318(a). 

‘‘(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the 

patent owner and a petitioner, including any collateral agreements referred to in 

such agreement or understanding, made in connection with, or in contemplation of, 

the termination of an inter partes review under this section shall be in writing and 

a true copy of such agreement or understanding shall be filed in the Office before 

the termination of the inter partes review as between the parties. At the request 

of a party to the proceeding, the agreement or understanding shall be treated as 

business confidential information, shall be kept separate from the file of the inVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00014 Fmt 6659 Sfmt 6621 E:\HR\OC\HR098P1.XXX HR098P1

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volved patents, and shall be made available only to Federal Government agencies 

on written request, or to any person on a showing of good cause. 

‘‘§ 318. Decision of the Board 

‘‘(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not 

dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final 

written decision with respect to the patentability of any patent claim challenged by 

the petitioner and any new claim added under section 316(d). 

‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written 

decision under subsection (a) and the time for appeal has expired or any appeal has 

terminated, the Director shall issue and publish a certificate canceling any claim of 

the patent finally determined to be unpatentable, confirming any claim of the patent 

determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable. 

‘‘(c) AMENDED OR NEW CLAIM.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 

for reissued patents on the right of any person who made, purchased, or used within 

the United States, or imported into the United States, anything patented by such 

proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b). 

‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public 

data describing the length of time between the institution of, and the issuance of 

a final written decision under subsection (a) for, each inter partes review. 

‘‘§ 319. Appeal 

‘‘A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 

through 144. Any party to the inter partes review shall have the right to be a party 

to the appeal.’’. 

(b) CONFORMING AMENDMENT.—The table of chapters for part III of title 35, 

United States Code, is amended by striking the item relating to chapter 31 and inserting the following: 

‘‘31. Inter Partes Review ...................................................................................................................................... 311’’. 

(c) REGULATIONS AND EFFECTIVE DATE.— 

(1) REGULATIONS.—The Director shall, not later than the date that is 1 year 

after the date of the enactment of this Act, issue regulations to carry out chapter 31 of title 35, United States Code, as amended by subsection (a) of this section. 

(2) APPLICABILITY.— 

(A) IN GENERAL.—The amendments made by subsection (a) shall take 

effect upon the expiration of the 1-year period beginning on the date of the 

enactment of this Act and shall apply to any patent issued before, on, or 

after that effective date. 

(B) GRADUATED IMPLEMENTATION.—The Director may impose a limit on 

the number of inter partes reviews that may be instituted under chapter 

31 of title 35, United States Code, during each of the first 4 1-year periods 

in which the amendments made by subsection (a) are in effect, if such number in each year equals or exceeds the number of inter partes reexaminations that are ordered under chapter 31 of title 35, United States Code, in 

the last fiscal year ending before the effective date of the amendments 

made by subsection (a). 

(d) POST-GRANT REVIEW.—Part III of title 35, United States Code, is amended 

by adding at the end the following: 

‘‘CHAPTER 32—POST-GRANT REVIEW 

‘‘Sec. 

‘‘321. Post-grant review. 

‘‘322. Petitions. 

‘‘323. Preliminary response to petition. 

‘‘324. Institution of post-grant review. 

‘‘325. Relation to other proceedings or actions. 

‘‘326. Conduct of post-grant review. 

‘‘327. Settlement. 

‘‘328. Decision of the Board. 

‘‘329. Appeal. 

‘‘§ 321. Post-grant review 

‘‘(a) IN GENERAL.—Subject to the provisions of this chapter, a person who is not 

the patent owner may file with the Office a petition to institute a post-grant review 

of a patent. The Director shall establish, by regulation, fees to be paid by the person 


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requesting the review, in such amounts as the Director determines to be reasonable, 

considering the aggregate costs of the post-grant review. 

‘‘(b) SCOPE.—A petitioner in a post-grant review may request to cancel as 

unpatentable 1 or more claims of a patent on any ground that could be raised under 

paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any 

claim). 

‘‘(c) FILING DEADLINE.—A petition for a post-grant review may only be filed not 

later than the date that is 1 year after the date of the grant of the patent or of 

the issuance of a reissue patent (as the case may be). 

‘‘§ 322. Petitions 

‘‘(a) REQUIREMENTS OF PETITION.—A petition filed under section 321 may be 

considered only if— 

‘‘(1) the petition is accompanied by payment of the fee established by the 

Director under section 321; 

‘‘(2) the petition identifies all real parties in interest; 

‘‘(3) the petition identifies, in writing and with particularity, each claim 

challenged, the grounds on which the challenge to each claim is based, and the 

evidence that supports the grounds for the challenge to each claim, including— 

‘‘(A) copies of patents and printed publications that the petitioner relies 

upon in support of the petition; and 

‘‘(B) affidavits or declarations of supporting evidence and opinions, if 

the petitioner relies on other factual evidence or on expert opinions; 

‘‘(4) the petition provides such other information as the Director may require by regulation; and 

‘‘(5) the petitioner provides copies of any of the documents required under 

paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated 

representative of the patent owner. 

‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition 

under section 321, the Director shall make the petition available to the public. 

‘‘§ 323. Preliminary response to petition 

‘‘If a post-grant review petition is filed under section 321, the patent owner 

shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no post-grant review should 

be instituted based upon the failure of the petition to meet any requirement of this 

chapter. 

‘‘§ 324. Institution of post-grant review 

‘‘(a) THRESHOLD.—The Director may not authorize a post-grant review to commence unless the Director determines that the information presented in the petition 

filed under section 321, if such information is not rebutted, would demonstrate that 

it is more likely than not that at least 1 of the claims challenged in the petition 

is unpatentable. 

‘‘(b) ADDITIONAL GROUNDS.—The determination required under subsection (a) 

may also be satisfied by a showing that the petition raises a novel or unsettled legal 

question that is important to other patents or patent applications. 

‘‘(c) TIMING.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 

months after— 

‘‘(1) receiving a preliminary response to the petition under section 323; or 

‘‘(2) if no such preliminary response is filed, the last date on which such 

response may be filed. 

‘‘(d) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a) or (b), and shall make such 

notice available to the public as soon as is practicable. The Director shall make each 

notice of the institution of a post-grant review available to the public. Such notice 

shall include the date on which the review shall commence. 

‘‘(e) NO APPEAL.—The determination by the Director whether to institute a postgrant review under this section shall be final and nonappealable. 

‘‘§ 325. Relation to other proceedings or actions 

‘‘(a) INFRINGER’S CIVIL ACTION.— 

‘‘(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.—A post-grant review 

may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner, real party in interest, or privy of 

the petitioner filed a civil action challenging the validity of a claim of the patent. 

‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, real party in interest, or privy 

of the petitioner files a civil action challenging the validity of a claim of the patVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00016 Fmt 6659 Sfmt 6621 E:\HR\OC\HR098P1.XXX HR098P1

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ent on or after the date on which the petitioner files a petition for post-grant 

review of the patent, that civil action shall be automatically stayed until either— 

‘‘(A) the patent owner moves the court to lift the stay; 

‘‘(B) the patent owner files a civil action or counterclaim alleging that 

the petitioner, real party in interest, or privy of the petitioner has infringed 

the patent; or 

‘‘(C) the petitioner, real party in interest, or privy of the petitioner 

moves the court to dismiss the civil action. 

‘‘(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. 

‘‘(b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court 

may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant 

review has been filed under this chapter or that such a post-grant review has been 

instituted under this chapter. 

‘‘(c) JOINDER.—If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more 

than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review. 

‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, 

and chapter 30, during the pendency of any post-grant review under this chapter, 

if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding 

or matter may proceed, including providing for the stay, transfer, consolidation, or 

termination of any such matter or proceeding. In determining whether to institute 

or order a proceeding under this chapter, chapter 30, or chapter 31, the Director 

may take into account whether, and reject the petition or request because, the same 

or substantially the same prior art or arguments previously were presented to the 

Office. 

‘‘(e) ESTOPPEL.— 

‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written 

decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect 

to that claim on any ground that the petitioner raised or reasonably could have 

raised during that post-grant review. 

‘‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in a postgrant review of a claim in a patent under this chapter that results in a final 

written decision under section 328(a), or the real party in interest or privy of 

the petitioner, may not assert either in a civil action arising in whole or in part 

under section 1338 of title 28 or in a proceeding before the International Trade 

Commission under section 337 of the Tariff Act of 1930 that the claim is invalid 

on any ground that the petitioner raised or reasonably could have raised during 

that post-grant review. 

‘‘(f) REISSUE PATENTS.—A post-grant review may not be instituted under this 

chapter if the petition requests cancellation of a claim in a reissue patent that is 

identical to or narrower than a claim in the original patent from which the reissue 

patent was issued, and the time limitations in section 321(c) would bar filing a petition for a post-grant review for such original patent. 

‘‘§ 326. Conduct of post-grant review 

‘‘(a) REGULATIONS.—The Director shall prescribe regulations— 

‘‘(1) providing that the file of any proceeding under this chapter shall be 

made available to the public, except that any petition or document filed with 

the intent that it be sealed shall, if accompanied by a motion to seal, be treated 

as sealed pending the outcome of the ruling on the motion; 

‘‘(2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; 

‘‘(3) establishing procedures for the submission of supplemental information 

after the petition is filed; 

‘‘(4) establishing and governing a post-grant review under this chapter and 

the relationship of such review to other proceedings under this title; 

‘‘(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related 

to factual assertions advanced by either party in the proceeding; 


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‘‘(6) prescribing sanctions for abuse of discovery, abuse of process, or any 

other improper use of the proceeding, such as to harass or to cause unnecessary 

delay or an unnecessary increase in the cost of the proceeding; 

‘‘(7) providing for protective orders governing the exchange and submission 

of confidential information; 

‘‘(8) providing for the filing by the patent owner of a response to the petition 

under section 323 after a post-grant review has been instituted, and requiring 

that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent 

owner relies in support of the response; 

‘‘(9) setting forth standards and procedures for allowing the patent owner 

to move to amend the patent under subsection (d) to cancel a challenged claim 

or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered 

under subsection (d) is made available to the public as part of the prosecution 

history of the patent; 

‘‘(10) providing either party with the right to an oral hearing as part of the 

proceeding; and 

‘‘(11) requiring that the final determination in any post-grant review be 

issued not later than 1 year after the date on which the Director notices the 

institution of a proceeding under this chapter, except that the Director may, for 

good cause shown, extend the 1-year period by not more than 6 months, and 

may adjust the time periods in this paragraph in the case of joinder under section 325(c). 

‘‘(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of 

the patent system, the efficient administration of the Office, and the ability of the 

Office to timely complete proceedings instituted under this chapter. 

‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board 

shall, in accordance with section 6, conduct each post-grant review instituted under 

this chapter. 

‘‘(d) AMENDMENT OF THE PATENT.— 

‘‘(1) IN GENERAL.—During a post-grant review instituted under this chapter, 

the patent owner may file 1 motion to amend the patent in 1 or more of the 

following ways: 

‘‘(A) Cancel any challenged patent claim. 

‘‘(B) For each challenged claim, propose a reasonable number of substitute claims. 

‘‘(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted 

upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 327, or upon the request of 

the patent owner for good cause shown. 

‘‘(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter. 

‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant review instituted under this 

chapter, the petitioner shall have the burden of proving a proposition of 

unpatentability by a preponderance of the evidence. 

‘‘§ 327. Settlement 

‘‘(a) IN GENERAL.—A post-grant review instituted under this chapter shall be 

terminated with respect to any petitioner upon the joint request of the petitioner 

and the patent owner, unless the Office has decided the merits of the proceeding 

before the request for termination is filed. If the post-grant review is terminated 

with respect to a petitioner under this section, no estoppel under section 325(e) shall 

attach to the petitioner, or to the real party in interest or privy of the petitioner, 

on the basis of that petitioner’s institution of that post-grant review. If no petitioner 

remains in the post-grant review, the Office may terminate the post-grant review 

or proceed to a final written decision under section 328(a). 

‘‘(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the 

patent owner and a petitioner, including any collateral agreements referred to in 

such agreement or understanding, made in connection with, or in contemplation of, 

the termination of a post-grant review under this section shall be in writing, and 

a true copy of such agreement or understanding shall be filed in the Office before 

the termination of the post-grant review as between the parties. At the request of 

a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved 

patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. 


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‘‘§ 328. Decision of the Board 

‘‘(a) FINAL WRITTEN DECISION.—If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final 

written decision with respect to the patentability of any patent claim challenged by 

the petitioner and any new claim added under section 326(d). 

‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written 

decision under subsection (a) and the time for appeal has expired or any appeal has 

terminated, the Director shall issue and publish a certificate canceling any claim of 

the patent finally determined to be unpatentable, confirming any claim of the patent 

determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable. 

‘‘(c) AMENDED OR NEW CLAIM.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review 

under this chapter shall have the same effect as that specified in section 252 of this 

title for reissued patents on the right of any person who made, purchased, or used 

within the United States, or imported into the United States, anything patented by 

such proposed amended or new claim, or who made substantial preparation therefor, 

before the issuance of a certificate under subsection (b). 

‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public 

data describing the length of time between the institution of, and the issuance of 

a final written decision under subsection (a) for, each post-grant review. 

‘‘§ 329. Appeal 

‘‘A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 328(a) may appeal the decision pursuant to sections 141 

through 144. Any party to the post-grant review shall have the right to be a party 

to the appeal.’’. 

(e) CONFORMING AMENDMENT.—The table of chapters for part III of title 35, 

United States Code, is amended by adding at the end the following: 

‘‘32. Post-Grant Review ........................................................................................................................................ 321’’. 

(f) REGULATIONS AND EFFECTIVE DATE.— (1) REGULATIONS.—The Director shall, not later than the date that is 1 year 

after the date of the enactment of this Act, issue regulations to carry out chapter 32 of title 35, United States Code, as added by subsection (d) of this section. 

(2) APPLICABILITY.— (A) IN GENERAL.—The amendments made by subsection (d) shall take 

effect upon the expiration of the 1-year period beginning on the date of the 

enactment of this Act and, except as provided in section 18 and in paragraph (3), shall apply to any patent that is described in section 3(n)(1). 

(B) LIMITATION.—The Director may impose a limit on the number of 

post-grant reviews that may be instituted under chapter 32 of title 35, 

United States Code, during each of the first 4 1-year periods in which the 

amendments made by subsection (d) are in effect. 

(3) PENDING INTERFERENCES.— 

(A) PROCEDURES IN GENERAL.—The Director shall determine, and include in the regulations issued under paragraph (1), the procedures under 

which an interference commenced before the effective date set forth in paragraph (2)(A) is to proceed, including whether such interference— 

(i) is to be dismissed without prejudice to the filing of a petition 

for a post-grant review under chapter 32 of title 35, United States 

Code; or 

(ii) is to proceed as if this Act had not been enacted. 

(B) PROCEEDINGS BY PATENT TRIAL AND APPEAL BOARD.—For purposes 

of an interference that is commenced before the effective date set forth in 

paragraph (2)(A), the Director may deem the Patent Trial and Appeal 

Board to be the Board of Patent Appeals and Interferences, and may allow 

the Patent Trial and Appeal Board to conduct any further proceedings in 

that interference. 

(C) APPEALS.—The authorization to appeal or have remedy from derivation proceedings in sections 141(d) and 146 of title 35, United States Code, 

as amended by this Act, and the jurisdiction to entertain appeals from derivation proceedings in section 1295(a)(4)(A) of title 28, United States Code, 

as amended by this Act, shall be deemed to extend to any final decision in 

an interference that is commenced before the effective date set forth in 

paragraph (2)(A) of this subsection and that is not dismissed pursuant to 

this paragraph. 

(g) CITATION OF PRIOR ART AND WRITTEN STATEMENTS.— 

(1) IN GENERAL.—Section 301 of title 35, United States Code, is amended 

to read as follows: 


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‘‘§ 301. Citation of prior art and written statements 

‘‘(a) IN GENERAL.—Any person at any time may cite to the Office in writing— 

‘‘(1) prior art consisting of patents or printed publications which that person 

believes to have a bearing on the patentability of any claim of a particular patent; or 

‘‘(2) statements of the patent owner filed in a proceeding before a Federal 

court or the Office in which the patent owner took a position on the scope of 

any claim of a particular patent. 

‘‘(b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the 

prior art or written statements to at least 1 claim of the patent, the citation of the 

prior art or written statements and the explanation thereof shall become a part of 

the official file of the patent. 

‘‘(c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence 

from the proceeding in which the statement was filed that addresses the written 

statement. 

‘‘(d) LIMITATIONS.—A written statement submitted pursuant to subsection (a)(2), 

and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of 

a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 

314, or 324. If any such written statement or additional information is subject to 

an applicable protective order, such statement or information shall be redacted to 

exclude information that is subject to that order. 

‘‘(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art 

or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.’’. 

(2) CONFORMING AMENDMENT.—The item relating to section 301 in the table 

of sections for chapter 30 of title 35, United States Code, is amended to read 

as follows: 

‘‘301. Citation of prior art and written statements.’’. 

(3) EFFECTIVE DATE.—The amendments made by this subsection shall take 

effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that 

effective date. 

(h) REEXAMINATION.— 

(1) DETERMINATION BY DIRECTOR.— 

(A) IN GENERAL.—Section 303(a) of title 35, United States Code, is 

amended by striking ‘‘section 301 of this title’’ and inserting ‘‘section 301 

or 302’’. 

(B) EFFECTIVE DATE.—The amendment made by this paragraph shall 

take effect upon the expiration of the 1-year period beginning on the date 

of the enactment of this Act and shall apply to any patent issued before, 

on, or after that effective date. 

(2) APPEAL.— 

(A) IN GENERAL.—Section 306 of title 35, United States Code, is amended by striking ‘‘145’’ and inserting ‘‘144’’. 

(B) EFFECTIVE DATE.—The amendment made by this paragraph shall 

take effect on the date of the enactment of this Act and shall apply to any 

appeal of a reexamination before the Board of Patent Appeals and Interferences or the Patent Trial and Appeal Board that is pending on, or 

brought on or after, the date of the enactment of this Act. 

SEC. 7. PATENT TRIAL AND APPEAL BOARD. 

(a) COMPOSITION AND DUTIES.— 

(1) IN GENERAL.—Section 6 of title 35, United States Code, is amended to 

read as follows: 

‘‘§ 6. Patent Trial and Appeal Board 

‘‘(a) IN GENERAL.—There shall be in the Office a Patent Trial and Appeal Board. 

The Director, the Deputy Director, the Commissioner for Patents, the Commissioner 

for Trademarks, and the administrative patent judges shall constitute the Patent 

Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in 

consultation with the Director. Any reference in any Federal law, Executive order, 

rule, regulation, or delegation of authority, or any document of or pertaining to the 

Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial 

and Appeal Board. 

‘‘(b) DUTIES.—The Patent Trial and Appeal Board shall— 


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‘‘(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a); 

‘‘(2) review appeals of reexaminations pursuant to section 134(b); 

‘‘(3) conduct derivation proceedings pursuant to section 135; and 

‘‘(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32. 

‘‘(c) 3-MEMBER PANELS.—Each appeal, derivation proceeding, post-grant review, 

and inter partes review shall be heard by at least 3 members of the Patent Trial 

and Appeal Board, who shall be designated by the Director. Only the Patent Trial 

and Appeal Board may grant rehearings. 

‘‘(d) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of Commerce may, in 

the Secretary’s discretion, deem the appointment of an administrative patent judge 

who, before the date of the enactment of this subsection, held office pursuant to an 

appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge 

to the appointment of an administrative patent judge on the basis of the judge’s 

having been originally appointed by the Director that the administrative patent 

judge so appointed was acting as a de facto officer.’’. 

(2) CONFORMING AMENDMENT.—The item relating to section 6 in the table 

of sections for chapter 1 of title 35, United States Code, is amended to read as 

follows: 

‘‘6. Patent Trial and Appeal Board.’’. 

(b) ADMINISTRATIVE APPEALS.—Section 134 of title 35, United States Code, is 

amended— 

(1) in subsection (b), by striking ‘‘any reexamination proceeding’’ and inserting ‘‘a reexamination’’; and 

(2) by striking subsection (c). 

(c) CIRCUIT APPEALS.— 

(1) IN GENERAL.—Section 141 of title 35, United States Code, is amended 

to read as follows: 

‘‘§ 141. Appeal to Court of Appeals for the Federal Circuit 

‘‘(a) EXAMINATIONS.—An applicant who is dissatisfied with the final decision in 

an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal 

the Board’s decision to the United States Court of Appeals for the Federal Circuit. 

By filing such an appeal, the applicant waives his or her right to proceed under section 145. 

‘‘(b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Appeal Board under 

section 134(b) may appeal the Board’s decision only to the United States Court of 

Appeals for the Federal Circuit. 

‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.—A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the 

Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) 

may appeal the Board’s decision only to the United States Court of Appeals for the 

Federal Circuit. 

‘‘(d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have 

all further proceedings conducted as provided in section 146. If the appellant does 

not, within 30 days after the filing of such notice by the adverse party, file a civil 

action under section 146, the Board’s decision shall govern the further proceedings 

in the case.’’. 

(2) JURISDICTION.—Section 1295(a)(4)(A) of title 28, United States Code, is 

amended to read as follows: 

‘‘(A) the Patent Trial and Appeal Board of the United States Patent and 

Trademark Office with respect to a patent application, derivation proceeding, reexamination, post-grant review, or inter partes review under title 

35, at the instance of a party who exercised that party’s right to participate 

in the applicable proceeding before or appeal to the Board, except that an 

applicant or a party to a derivation proceeding may also have remedy by 

civil action pursuant to section 145 or 146 of title 35; an appeal under this 

subparagraph of a decision of the Board with respect to an application or 

derivation proceeding shall waive the right of such applicant or party to 

proceed under section 145 or 146 of title 35;’’. 


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(3) PROCEEDINGS ON APPEAL.—Section 143 of title 35, United States Code, 

is amended— 

(A) by striking the third sentence and inserting the following: ‘‘In an 

ex parte case, the Director shall submit to the court in writing the grounds 

for the decision of the Patent and Trademark Office, addressing all of the 

issues raised in the appeal. The Director shall have the right to intervene 

in an appeal from a decision entered by the Patent Trial and Appeal Board 

in a derivation proceeding under section 135 or in an inter partes or postgrant review under chapter 31 or 32.’’; and 

(B) by striking the last sentence. 

(d) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the expiration of the 1-year period beginning on the date of the enactment of 

this Act and shall apply to proceedings commenced on or after that effective date, 

except that— 

(1) the extension of jurisdiction to the United States Court of Appeals for 

the Federal Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) 

shall be deemed to take effect on the date of the enactment of this Act and shall 

extend to any decision of the Board of Patent Appeals and Interferences with 

respect to a reexamination that is entered before, on, or after the date of the 

enactment of this Act; 

(2) the provisions of sections 6, 134, and 141 of title 35, United States Code, 

as in effect on the day before the effective date of the amendments made by 

this section shall continue to apply to inter partes reexaminations that are requested under section 311 of such title before such effective date; 

(3) the Patent Trial and Appeal Board may be deemed to be the Board of 

Patent Appeals and Interferences for purposes of appeals of inter partes reexaminations that are requested under section 311 of title 35, United States Code, 

before the effective date of the amendments made by this section; and 

(4) the Director’s right under the fourth sentence of section 143 of title 35, 

United States Code, as amended by subsection (c)(3) of this section, to intervene 

in an appeal from a decision entered by the Patent Trial and Appeal Board 

shall be deemed to extend to inter partes reexaminations that are requested 

under section 311 of such title before the effective date of the amendments 

made by this section. 

SEC. 8. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

(a) IN GENERAL.—Section 122 of title 35, United States Code, is amended by 

adding at the end the following: 

‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— 

‘‘(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of 

the application, if such submission is made in writing before the earlier of— 

‘‘(A) the date a notice of allowance under section 151 is given or mailed 

in the application for patent; or 

‘‘(B) the later of— 

‘‘(i) 6 months after the date on which the application for patent is 

first published under section 122 by the Office, or 

‘‘(ii) the date of the first rejection under section 132 of any claim 

by the examiner during the examination of the application for patent. 

‘‘(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall— 

‘‘(A) set forth a concise description of the asserted relevance of each 

submitted document; 

‘‘(B) be accompanied by such fee as the Director may prescribe; and 

‘‘(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.’’. 

(b) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the expiration of the 1-year period beginning on the date of the enactment of 

this Act and shall apply to any patent application filed before, on, or after that effective date. 

SEC. 9. VENUE. 

(a) TECHNICAL AMENDMENTS RELATING TO VENUE.—Sections 32, 145, 146, 

154(b)(4)(A), and 293 of title 35, United States Code, and section 21(b)(4) of the 

Trademark Act of 1946 (15 U.S.C. 1071(b)(4)), are each amended by striking ‘‘United 

States District Court for the District of Columbia’’ each place that term appears and 

inserting ‘‘United States District Court for the Eastern District of Virginia’’. 


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(b) EFFECTIVE DATE.—The amendments made by this section shall take effect 

on the date of the enactment of this Act and shall apply to any civil action commenced on or after that date. 

SEC. 10. FEE SETTING AUTHORITY. 

(a) FEE SETTING.— 

(1) IN GENERAL.—The Director may set or adjust by rule any fee established, authorized, or charged under title 35, United States Code, or the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services performed by or materials furnished by, the Office, subject to paragraph (2). 

(2) FEES TO RECOVER COSTS.—Fees may be set or adjusted under paragraph 

(1) only to recover the aggregate estimated costs to the Office for processing, 

activities, services, and materials relating to patents (in the case of patent fees) 

and trademarks (in the case of trademark fees), including administrative costs 

of the Office with respect to such patent or trademark fees (as the case may 

be). 

(b) SMALL AND MICRO ENTITIES.—The fees set or adjusted under subsection (a) 

for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent with respect to the application of 

such fees to any small entity that qualifies for reduced fees under section 41(h)(1) 

of title 35, United States Code, and shall be reduced by 75 percent with respect to 

the application of such fees to any micro entity as defined in section 123 of that 

title (as added by subsection (g) of this section). 

(c) REDUCTION OF FEES IN CERTAIN FISCAL YEARS.—In each fiscal year, the Director— 

(1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees described in subsection (a); and 

(2) after the consultation required under paragraph (1), may reduce such 

fees. 

(d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.—The Director shall— 

(1) not less than 45 days before publishing any proposed fee under subsection (a) in the Federal Register, submit the proposed fee to the Patent Public 

Advisory Committee or the Trademark Public Advisory Committee, or both, as 

appropriate; 

(2)(A) provide the relevant advisory committee described in paragraph (1) 

a 30-day period following the submission of any proposed fee, in which to deliberate, consider, and comment on such proposal; 

(B) require that, during that 30-day period, the relevant advisory committee 

hold a public hearing relating to such proposal; and 

(C) assist the relevant advisory committee in carrying out that public hearing, including by offering the use of the resources of the Office to notify and 

promote the hearing to the public and interested stakeholders; 

(3) require the relevant advisory committee to make available to the public 

a written report setting forth in detail the comments, advice, and recommendations of the committee regarding the proposed fee; and 

(4) consider and analyze any comments, advice, or recommendations received from the relevant advisory committee before setting or adjusting (as the 

case may be) the fee. 

(e) PUBLICATION IN THE FEDERAL REGISTER.— 

(1) PUBLICATION AND RATIONALE.—The Director shall— 

(A) publish any proposed fee change under this section in the Federal 

Register; 

(B) include, in such publication, the specific rationale and purpose for 

the proposal, including the possible expectations or benefits resulting from 

the proposed change; and 

(C) notify, through the Chair and Ranking Member of the Committees 

on the Judiciary of the Senate and the House of Representatives, the Congress of the proposed change not later than the date on which the proposed 

change is published under subparagraph (A). 

(2) PUBLIC COMMENT PERIOD.—The Director shall, in the publication under 

paragraph (1), provide the public a period of not less than 45 days in which to 

submit comments on the proposed change in fees. 

(3) PUBLICATION OF FINAL RULE.—The final rule setting or adjusting a fee 

under this section shall be published in the Federal Register and in the Official 

Gazette of the Patent and Trademark Office. 

(4) CONGRESSIONAL COMMENT PERIOD.—A fee set or adjusted under subsection (a) may not become effective— 


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(A) before the end of the 45-day period beginning on the day after the 

date on which the Director publishes the final rule adjusting or setting the 

fee under paragraph (3); or 

(B) if a law is enacted disapproving such fee. 

(5) RULE OF CONSTRUCTION.—Rules prescribed under this section shall not 

diminish— 

(A) the rights of an applicant for a patent under title 35, United States 

Code, or for a mark under the Trademark Act of 1946; or 

(B) any rights under a ratified treaty. 

(f) RETENTION OF AUTHORITY.—The Director retains the authority under subsection (a) to set or adjust fees only during such period as the Patent and Trademark Office remains an agency within the Department of Commerce. 

(g) MICRO ENTITY DEFINED.— 

(1) IN GENERAL.—Chapter 11 of title 35, United States Code, is amended 

by adding at the end the following new section: 

‘‘§ 123. Micro entity defined 

‘‘(a) IN GENERAL.—For purposes of this title, the term ‘micro entity’ means an 

applicant who makes a certification that the applicant— 

‘‘(1) qualifies as a small entity, as defined in regulations issued by the Director; 

‘‘(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional 

applications under section 111(b), or international applications filed under the 

treaty defined in section 351(a) for which the basic national fee under section 

41(a) was not paid; 

‘‘(3) did not, in the calendar year preceding the calendar year in which the 

examination fee for the application is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times 

the median household income for that preceding calendar year, as reported by 

the Bureau of the Census; and 

‘‘(4) has not assigned, granted, or conveyed, and is not under an obligation 

by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the examination fee for the application is 

being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as reported by the Bureau of the Census. 

‘‘(b) APPLICATIONS RESULTING FROM PRIOR EMPLOYMENT.—An applicant is not 

considered to be named on a previously filed application for purposes of subsection 

(a)(2) if the applicant has assigned, or is under an obligation by contract or law to 

assign, all ownership rights in the application as the result of the applicant’s previous employment. 

‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the threshold specified in paragraphs (3) or (4) of subsection (a). 

‘‘(d) PUBLIC INSTITUTIONS OF HIGHER EDUCATION.— 

‘‘(1) IN GENERAL.—For purposes of this section, a micro entity shall include 

an applicant who certifies that— 

‘‘(A) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education, as defined in section 101 of the Higher Education Act of 1965 (20 U.S.C. 1001), 

that is a public institution; or 

‘‘(B) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular application to such public institution. 

‘‘(2) DIRECTOR’S AUTHORITY.—The Director may, in the Director’s discretion, 

impose income limits, annual filing limits, or other limits on who may qualify 

as a micro entity pursuant to this subsection if the Director determines that 

such additional limits are reasonably necessary to avoid an undue impact on 

other patent applicants or owners or are otherwise reasonably necessary and 

appropriate. At least 3 months before any limits proposed to be imposed pursuant to this paragraph take effect, the Director shall inform the Committee on 

the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.’’. 


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(2) CONFORMING AMENDMENT.—Chapter 11 of title 35, United States Code, 

is amended by adding at the end the following new item: 

‘‘123. Micro entity defined.’’. 

(h) ELECTRONIC FILING INCENTIVE.— 

(1) IN GENERAL.—Notwithstanding any other provision of this section, a fee 

of $400 shall be established for each application for an original patent, except 

for a design, plant, or provisional application, that is not filed by electronic 

means as prescribed by the Director. The fee established by this subsection 

shall be reduced by 50 percent for small entities that qualify for reduced fees 

under section 41(h)(1) of title 35, United States Code. All fees paid under this 

subsection shall be deposited in the Treasury as an offsetting receipt that shall 

not be available for obligation or expenditure. 

(2) EFFECTIVE DATE.—This subsection shall take effect upon the expiration 

of the 60-day period beginning on the date of the enactment of this Act. 

(i) EFFECTIVE DATE; SUNSET.— 

(1) EFFECTIVE DATE.—This section and the amendments made by this section shall take effect on the date of the enactment of this Act. 

(2) SUNSET.—The authority of the Director to set or adjust any fee under 

subsection (a) shall terminate upon the expiration of the 6-year period beginning on the date of the enactment of this Act. 

SEC. 11. FEES FOR PATENT SERVICES. 

(a) GENERAL PATENT SERVICES.—Subsections (a) and (b) of section 41 of title 35, 

United States Code, are amended to read as follows: 

‘‘(a) GENERAL FEES.—The Director shall charge the following fees: 

‘‘(1) FILING AND BASIC NATIONAL FEES.— 

‘‘(A) On filing each application for an original patent, except for design, 

plant, or provisional applications, $330. 

‘‘(B) On filing each application for an original design patent, $220. 

‘‘(C) On filing each application for an original plant patent, $220. 

‘‘(D) On filing each provisional application for an original patent, $220. 

‘‘(E) On filing each application for the reissue of a patent, $330. 

‘‘(F) The basic national fee for each international application filed 

under the treaty defined in section 351(a) entering the national stage under 

section 371, $330. 

‘‘(G) In addition, excluding any sequence listing or computer program 

listing filed in an electronic medium as prescribed by the Director, for any 

application the specification and drawings of which exceed 100 sheets of 

paper (or equivalent as prescribed by the Director if filed in an electronic 

medium), $270 for each additional 50 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium) or fraction thereof. 

‘‘(2) EXCESS CLAIMS FEES.— 

‘‘(A) IN GENERAL.—In addition to the fee specified in paragraph (1)— 

‘‘(i) on filing or on presentation at any other time, $220 for each 

claim in independent form in excess of 3; 

‘‘(ii) on filing or on presentation at any other time, $52 for each 

claim (whether dependent or independent) in excess of 20; and 

‘‘(iii) for each application containing a multiple dependent claim, 

$390. 

‘‘(B) MULTIPLE DEPENDENT CLAIMS.—For the purpose of computing fees 

under subparagraph (A), a multiple dependent claim referred to in section 

112 or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference 

is made. 

‘‘(C) REFUNDS; ERRORS IN PAYMENT.—The Director may by regulation 

provide for a refund of any part of the fee specified in subparagraph (A) 

for any claim that is canceled before an examination on the merits, as prescribed by the Director, has been made of the application under section 131. 

Errors in payment of the additional fees under this paragraph may be rectified in accordance with regulations prescribed by the Director. 

‘‘(3) EXAMINATION FEES.— 

‘‘(A) IN GENERAL.— 

‘‘(i) For examination of each application for an original patent, except for design, plant, provisional, or international applications, $220. 

‘‘(ii) For examination of each application for an original design patent, $140. 

‘‘(iii) For examination of each application for an original plant patent, $170. 


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‘‘(iv) For examination of the national stage of each international application, $220. 

‘‘(v) For examination of each application for the reissue of a patent, $650. 

‘‘(B) APPLICABILITY OF OTHER FEE PROVISIONS.—The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for 

filing the application shall apply to the payment of the fee specified in subparagraph (A) with respect to an application filed under section 111(a). The 

provisions of section 371(d) relating to the payment of the national fee shall 

apply to the payment of the fee specified in subparagraph (A) with respect 

to an international application. 

‘‘(4) ISSUE FEES.— ‘‘(A) For issuing each original patent, except for design or plant patents, $1,510. 

‘‘(B) For issuing each original design patent, $860. 

‘‘(C) For issuing each original plant patent, $1,190. 

‘‘(D) For issuing each reissue patent, $1,510. 

‘‘(5) DISCLAIMER FEE.—On filing each disclaimer, $140. 

‘‘(6) APPEAL FEES.— ‘‘(A) On filing an appeal from the examiner to the Patent Trial and Ap- peal Board, $540. 

‘‘(B) In addition, on filing a brief in support of the appeal, $540, and 

on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080. 

‘‘(7) REVIVAL FEES.—On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any reexamination proceeding, $1,620, unless the 

petition is filed under section 133 or 151, in which case the fee shall be $540. 

‘‘(8) EXTENSION FEES.—For petitions for 1-month extensions of time to take 

actions required by the Director in an application— 

‘‘(A) on filing a first petition, $130; 

‘‘(B) on filing a second petition, $360; and 

‘‘(C) on filing a third or subsequent petition, $620. 

‘‘(b) MAINTENANCE FEES.— 

‘‘(1) IN GENERAL.—The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 

1980: 

‘‘(A) Three years and 6 months after grant, $980. 

‘‘(B) Seven years and 6 months after grant, $2,480. 

‘‘(C) Eleven years and 6 months after grant, $4,110. 

‘‘(2) GRACE PERIOD; SURCHARGE.—Unless payment of the applicable maintenance fee under paragraph (1) is received in the Office on or before the date 

the fee is due or within a grace period of 6 months thereafter, the patent shall 

expire as of the end of such grace period. The Director may require the payment 

of a surcharge as a condition of accepting within such 6-month grace period the 

payment of an applicable maintenance fee. 

‘‘(3) NO MAINTENANCE FEE FOR DESIGN OR PLANT PATENT.—No fee may be 

established for maintaining a design or plant patent in force.’’. 

(b) DELAYS IN PAYMENT.—Subsection (c) of section 41 of title 35, United States 

Code, is amended— 

(1) by striking ‘‘(c)(1) The Director’’ and inserting: 

‘‘(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.— 

‘‘(1) ACCEPTANCE.—The Director’’; and 

(2) by striking ‘‘(2) A patent’’ and inserting: 

‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A patent’’. 

(c) PATENT SEARCH FEES.—Subsection (d) of section 41 of title 35, United States 

Code, is amended to read as follows: 

‘‘(d) PATENT SEARCH AND OTHER FEES.— 

‘‘(1) PATENT SEARCH FEES.— 

‘‘(A) IN GENERAL.—The Director shall charge the fees specified under 

subparagraph (B) for the search of each application for a patent, except for 

provisional applications. The Director shall adjust the fees charged under 

this paragraph to ensure that the fees recover an amount not to exceed the 

estimated average cost to the Office of searching applications for patent either by acquiring a search report from a qualified search authority, or by 

causing a search by Office personnel to be made, of each application for patent. 

‘‘(B) SPECIFIC FEES.—The fees referred to in subparagraph (A) are— 


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‘‘(i) $540 for each application for an original patent, except for design, plant, provisional, or international applications; ‘‘(ii) $100 for each application for an original design patent; 

‘‘(iii) $330 for each application for an original plant patent; 

‘‘(iv) $540 for the national stage of each international application; 

and 

‘‘(v) $540 for each application for the reissue of a patent. 

‘‘(C) APPLICABILITY OF OTHER PROVISIONS.—The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for 

filing the application shall apply to the payment of the fee specified in this 

paragraph with respect to an application filed under section 111(a). The 

provisions of section 371(d) relating to the payment of the national fee shall 

apply to the payment of the fee specified in this paragraph with respect to 

an international application. 

‘‘(D) REFUNDS.—The Director may by regulation provide for a refund of 

any part of the fee specified in this paragraph for any applicant who files 

a written declaration of express abandonment as prescribed by the Director 

before an examination has been made of the application under section 131. 

‘‘(E) APPLICATIONS SUBJECT TO SECRECY ORDER.—A search of an application that is the subject of a secrecy order under section 181 or otherwise 

involves classified information may be conducted only by Office personnel. 

‘‘(F) CONFLICTS OF INTEREST.—A qualified search authority that is a 

commercial entity may not conduct a search of a patent application if the 

entity has any direct or indirect financial interest in any patent or in any 

pending or imminent application for patent filed or to be filed in the Office. 

‘‘(2) OTHER FEES.— 

‘‘(A) IN GENERAL.—The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section 

to recover the estimated average cost to the Office of such processing, services, or materials, except that the Director shall charge the following fees 

for the following services: 

‘‘(i) For recording a document affecting title, $40 per property. 

‘‘(ii) For each photocopy, $.25 per page. 

‘‘(iii) For each black and white copy of a patent, $3. 

‘‘(B) COPIES FOR LIBRARIES.—The yearly fee for providing a library specified in section 12 with uncertified printed copies of the specifications and 

drawings for all patents in that year shall be $50.’’. 

(d) FEES FOR SMALL ENTITIES.—Subsection (h) of section 41 of title 35, United 

States Code, is amended to read as follows: 

‘‘(h) FEES FOR SMALL ENTITIES.— 

‘‘(1) REDUCTIONS IN FEES.—Subject to paragraph (3), fees charged under 

subsections (a), (b), and (d)(1) shall be reduced by 50 percent with respect to 

their application to any small business concern as defined under section 3 of 

the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director. 

‘‘(2) SURCHARGES AND OTHER FEES.—With respect to its application to any 

entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be higher than the surcharge or fee required of any 

other entity under the same or substantially similar circumstances. 

‘‘(3) REDUCTION FOR ELECTRONIC FILING.—The fee charged under subsection 

(a)(1)(A) shall be reduced by 75 percent with respect to its application to any 

entity to which paragraph (1) applies, if the application is filed by electronic 

means as prescribed by the Director.’’. 

(e) TECHNICAL AMENDMENTS.—Section 41 of title 35, United States Code, is 

amended— 

(1) in subsection (e), in the first sentence, by striking ‘‘The Director’’ and 

inserting ‘‘WAIVER OF FEES; COPIES REGARDING NOTICE.—The Director’’; 

(2) in subsection (f), by striking ‘‘The fees’’ and inserting ‘‘ADJUSTMENT OF

FEES.—The fees’’; 

(3) by repealing subsection (g); and 

(4) in subsection (i)— 

(A) by striking ‘‘(i)(1) The Director’’ and inserting the following: 

‘‘(i) ELECTRONIC PATENT AND TRADEMARK DATA.— 

‘‘(1) MAINTENANCE OF COLLECTIONS.—The Director’’; 

(B) by striking ‘‘(2) The Director’’ and inserting the following: 

‘‘(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS.—The Director’’; 

(C) by striking ‘‘(3) The Director’’ and inserting the following: 

‘‘(3) ACCESS FEES.—The Director’’; and 

(D) by striking ‘‘(4) The Director’’ and inserting the following: 


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‘‘(4) ANNUAL REPORT TO CONGRESS.—The Director’’. 

(f) ADJUSTMENT OF TRADEMARK FEES.—Section 802(a) of division B of the Consolidated Appropriations Act, 2005 (Public Law 108–447) is amended— 

(1) in the first sentence, by striking ‘‘During fiscal years 2005, 2006, and 

2007,’’, and inserting ‘‘Until such time as the Director sets or adjusts the fees 

otherwise,’’; and 

(2) in the second sentence, by striking ‘‘During fiscal years 2005, 2006, and 

2007, the’’ and inserting ‘‘The’’. 

(g) EFFECTIVE DATE, APPLICABILITY, AND TRANSITION PROVISIONS.—Section 

803(a) of division B of the Consolidated Appropriations Act, 2005 (Public Law 108– 

447) is amended by striking ‘‘and shall apply only with respect to the remaining portion of fiscal year 2005 and fiscal year 2006’’. 

(h) REDUCTION IN FEES FOR SMALL ENTITY PATENTS.—The Director shall reduce 

fees for providing prioritized examination of utility and plant patent applications by 

50 percent for small entities that qualify for reduced fees under section 41(h)(1) of 

title 35, United States Code, so long as the fees of the prioritized examination program are set to recover the estimated cost of the program. 

(i) EFFECTIVE DATE.—Except as provided in subsection (h), this section and the 

amendments made by this section shall take effect on the date of the enactment of 

this Act. 

SEC. 12. SUPPLEMENTAL EXAMINATION. 

(a) IN GENERAL.—Chapter 25 of title 35, United States Code, is amended by 

adding at the end the following: 

‘‘§ 257. Supplemental examinations to consider, reconsider, or correct information 

‘‘(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request 

supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request 

for supplemental examination meeting the requirements of this section is received, 

the Director shall conduct the supplemental examination and shall conclude such 

examination by issuing a certificate indicating whether the information presented 

in the request raises a substantial new question of patentability. 

‘‘(b) REEXAMINATION ORDERED.—If the certificate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items 

of information in the request, the Director shall order reexamination of the patent. 

The reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed 

publication or any other provision of such chapter. 

‘‘(c) EFFECT.— ‘‘(1) IN GENERAL.—A patent shall not be held unenforceable on the basis of 

conduct relating to information that had not been considered, was inadequately 

considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence 

thereof, shall not be relevant to enforceability of the patent under section 282. 

‘‘(2) EXCEPTIONS.— ‘‘(A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity 

in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of 

the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental examination request under subsection (a) 

to consider, reconsider, or correct information forming the basis for the allegation. 

‘‘(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of 

this title, paragraph (1) shall not apply to any defense raised in the action 

that is based upon information that was considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection 

(a), unless the supplemental examination, and any reexamination ordered 

pursuant to the request, are concluded before the date on which the action 

is brought. 

‘‘(C) FRAUD.—No supplemental examination may be commenced by the 

Director on, and any pending supplemental examination shall be immediately terminated regarding, an application or patent in connection with 


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which fraud on the Office was practiced or attempted. If the Director determines that such a fraud on the Office was practiced or attempted, the Director shall also refer the matter to the Attorney General for such action 

as the Attorney General may deem appropriate. 

‘‘(d) FEES AND REGULATIONS.— ‘‘(1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each 

item of information submitted in the request. If reexamination is ordered under 

subsection (b), fees established and applicable to ex parte reexamination proceedings under chapter 30 shall be paid, in addition to fees applicable to supplemental examination. 

‘‘(2) REGULATIONS.—The Director shall issue regulations governing the 

form, content, and other requirements of requests for supplemental examination, and establishing procedures for reviewing information submitted in such 

requests. 

‘‘(e) RULE OF CONSTRUCTION.—Nothing in this section shall be construed— 

‘‘(1) to preclude the imposition of sanctions based upon criminal or antitrust 

laws (including section 1001(a) of title 18, the first section of the Clayton Act, 

and section 5 of the Federal Trade Commission Act to the extent that section 

relates to unfair methods of competition); 

‘‘(2) to limit the authority of the Director to investigate issues of possible 

misconduct and impose sanctions for misconduct in connection with matters or 

proceedings before the Office; or 

‘‘(3) to limit the authority of the Director to issue regulations under chapter 

3 relating to sanctions for misconduct by representatives practicing before the 

Office.’’. 

(b) CONFORMING AMENDMENT.—The table of sections for chapter 25 of title 35, 

United States Code, is amended by adding at the end the following new item: 

‘‘257. Supplemental examinations to consider, reconsider, or correct information.’’. 

(c) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the expiration of the 1-year period beginning on the date of the enactment of 

this Act and shall apply to any patent issued before, on, or after that effective date. 

SEC. 13. FUNDING AGREEMENTS. 

(a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 35, United States Code, is 

amended— 

(1) by striking ‘‘75 percent’’ and inserting ‘‘15 percent’’; 

(2) by striking ‘‘25 percent’’ and inserting ‘‘85 percent’’; and 

(3) by striking ‘‘as described above in this clause (D);’’ and inserting ‘‘described above in this clause;’’. 

(b) EFFECTIVE DATE.—The amendments made by this section shall take effect 

on the date of the enactment of this Act and shall apply to any patent issued before, 

on, or after that date. 

SEC. 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR ART. 

(a) IN GENERAL.—For purposes of evaluating an invention under section 102 or 

103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring 

tax liability, whether known or unknown at the time of the invention or application 

for patent, shall be deemed insufficient to differentiate a claimed invention from the 

prior art. 

(b) DEFINITION.—For purposes of this section, the term ‘‘tax liability’’ refers to 

any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, 

imposes, or assesses such tax liability. 

(c) EXCLUSIONS.—This section does not apply to that part of an invention that— 

(1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax 

filing, including one that records, transmits, transfers, or organizes data related 

to such filing; or 

(2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable 

from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor. 

(d) RULE OF CONSTRUCTION.—Nothing in this section shall be construed to 

imply that other business methods are patentable or that other business method 

patents are valid. 

(e) EFFECTIVE DATE; APPLICABILITY.—This section shall take effect on the date 

of the enactment of this Act and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after 

that date. 


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SEC. 15. BEST MODE REQUIREMENT. 

(a) IN GENERAL.—Section 282 of title 35, United States Code, is amended in the 

second undesignated paragraph by striking paragraph (3) and inserting the following: 

‘‘(3) Invalidity of the patent or any claim in suit for failure to comply with— 

‘‘(A) any requirement of section 112, except that the failure to disclose 

the best mode shall not be a basis on which any claim of a patent may be 

canceled or held invalid or otherwise unenforceable; or 

‘‘(B) any requirement of section 251.’’. 

(b) CONFORMING AMENDMENT.—Sections 119(e)(1) and 120 of title 35, United 

States Code, are each amended by striking ‘‘the first paragraph of section 112 of 

this title’’ and inserting ‘‘section 112(a) (other than the requirement to disclose the 

best mode)’’. 

(c) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the date of the enactment of this Act and shall apply to proceedings commenced on or after that date. 

SEC. 16. MARKING. 

(a) VIRTUAL MARKING.— 

(1) IN GENERAL.—Section 287(a) of title 35, United States Code, is amended 

by striking ‘‘or when,’’ and inserting ‘‘or by fixing thereon the word ‘patent’ or 

the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates 

the patented article with the number of the patent, or when,’’. 

(2) EFFECTIVE DATE.—The amendment made by this subsection shall apply 

to any case that is pending on, or commenced on or after, the date of the enactment of this Act. 

(3) REPORT.—Not later than the date that is 3 years after the date of the 

enactment of this Act, the Director shall submit a report to Congress that provides— 

(A) an analysis of the effectiveness of ‘‘virtual marking’’, as provided in 

the amendment made by paragraph (1) of this subsection, as an alternative 

to the physical marking of articles; 

(B) an analysis of whether such virtual marking has limited or improved the ability of the general public to access information about patents; 

(C) an analysis of the legal issues, if any, that arise from such virtual 

marking; and 

(D) an analysis of the deficiencies, if any, of such virtual marking. 

(b) FALSE MARKING.— 

(1) CIVIL PENALTY.—Section 292(a) of title 35, United States, Code, is 

amended by adding at the end the following: ‘‘Only the United States may sue 

for the penalty authorized by this subsection.’’. 

(2) CIVIL ACTION FOR DAMAGES.—Subsection (b) of section 292 of title 35, 

United States Code, is amended to read as follows: 

‘‘(b) A person who has suffered a competitive injury as a result of a violation 

of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.’’. 

(3) EXPIRED PATENTS.—Section 292 of title 35, United States Code, is 

amended by adding at the end the following: 

‘‘(c) Whoever engages in an activity under subsection (a) for which liability 

would otherwise be imposed shall not be liable for such activity— 

‘‘(1) that is engaged in during the 3-year period beginning on the date on 

which the patent at issue expires; or 

‘‘(2) that is engaged in after the end of that 3-year period if the word ‘expired’ is placed before the word ‘patent’, ‘patented’, the abbreviation ‘pat’, or the 

patent number, either on the article or through a posting on the Internet, as 

provided in section 287(a).’’. 

(4) EFFECTIVE DATE.—The amendments made by this subsection shall apply 

to any case that is pending on, or commenced on or after, the date of the enactment of this Act. 

SEC. 17. ADVICE OF COUNSEL. 

(a) IN GENERAL.—Chapter 29 of title 35, United States Code, is amended by 

adding at the end the following: 

‘‘§ 298. Advice of counsel 

‘‘The failure of an infringer to obtain the advice of counsel with respect to any 

allegedly infringed patent, or the failure of the infringer to present such advice to 

the court or jury, may not be used to prove that the accused infringer willfully inVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00030 Fmt 6659 Sfmt 6621 E:\HR\OC\HR098P1.XXX HR098P1

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fringed the patent or that the infringer intended to induce infringement of the patent.’’. 

(b) CONFORMING AMENDMENT.—The table of sections for chapter 29 of title 35, 

United States Code, is amended by adding at the end the following: 

‘‘298. Advice of counsel.’’. 

SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS. 

(a) TRANSITIONAL PROGRAM.— 

(1) ESTABLISHMENT.—Not later than the date that is 1 year after the date 

of the enactment of this Act, the Director shall issue regulations establishing 

and implementing a transitional post-grant review proceeding for review of the 

validity of covered business method patents. The transitional proceeding implemented pursuant to this subsection shall be regarded as, and shall employ the 

standards and procedures of, a post-grant review under chapter 32 of title 35, 

United States Code, subject to the following: 

(A) Section 321(c) of title 35, United States Code, and subsections (b), 

(e)(2), and (f) of section 325 of such title shall not apply to a transitional 

proceeding. 

(B) A person may not file a petition for a transitional proceeding with 

respect to a covered business method patent unless the person or the person’s real party in interest has been sued for infringement of the patent or 

has been charged with infringement under that patent. 

(C) A petitioner in a transitional proceeding who challenges the validity 

of 1 or more claims in a covered business method patent on a ground raised 

under section 102 or 103 of title 35, United States Code, as in effect on the 

day before the effective date set forth in section 3(n)(1), may support such 

ground only on the basis of— 

(i) prior art that is described by section 102(a) of such title of such 

title (as in effect on the day before such effective date); or 

(ii) prior art that— 

(I) discloses the invention more than 1 year before the date of 

the application for patent in the United States; and 

(II) would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) 

if the disclosure had been made by another before the invention 

thereof by the applicant for patent. 

(D) The petitioner in a transitional proceeding, or the petitioner’s real 

party in interest, may not assert, either in a civil action arising in whole 

or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the 

Tariff Act of 1930 (19 U.S.C. 1337), that a claim in a patent is invalid on 

any ground that the petitioner raised during a transitional proceeding that 

resulted in a final written decision. 

(E) The Director may institute a transitional proceeding only for a patent that is a covered business method patent. 

(2) EFFECTIVE DATE.—The regulations issued under paragraph (1) shall 

take effect upon the expiration of the 1-year period beginning on the date of the 

enactment of this Act and shall apply to any covered business method patent 

issued before, on, or after that effective date, except that the regulations shall 

not apply to a patent described in section 6(f)(2)(A) of this Act during the period 

in which a petition for post-grant review of that patent would satisfy the requirements of section 321(c) of title 35, United States Code. 

(3) SUNSET.— 

(A) IN GENERAL.—This subsection, and the regulations issued under 

this subsection, are repealed effective upon the expiration of the 10-year period beginning on the date that the regulations issued under to paragraph 

(1) take effect. 

(B) APPLICABILITY.—Notwithstanding subparagraph (A), this subsection 

and the regulations issued under this subsection shall continue to apply, 

after the date of the repeal under subparagraph (A), to any petition for a 

transitional proceeding that is filed before the date of such repeal. 

(b) REQUEST FOR STAY.— 

(1) IN GENERAL.—If a party seeks a stay of a civil action alleging infringement of a patent under section 281 of title 35, United States Code, relating to 

a transitional proceeding for that patent, the court shall decide whether to enter 

a stay based on— 

(A) whether a stay, or the denial thereof, will simplify the issues in 

question and streamline the trial; 


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(B) whether discovery is complete and whether a trial date has been 

set; 

(C) whether a stay, or the denial thereof, would unduly prejudice the 

nonmoving party or present a clear tactical advantage for the moving party; 

and 

(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court. 

(2) REVIEW.—A party may take an immediate interlocutory appeal from a 

district court’s decision under paragraph (1). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure 

consistent application of established precedent, and such review may be de 

novo. 

(c) ATM EXEMPTION FOR VENUE PURPOSES.—In an action for infringement 

under section 281 of title 35, United States Code, of a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business for purposes of section 1400(b) of title 28, United States 

Code. 

(d) DEFINITION.— (1) IN GENERAL.—For purposes of this section, the term ‘‘covered business 

method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, 

administration, or management of a financial product or service, except that the 

term does not include patents for technological inventions. 

(2) REGULATIONS.—To assist in implementing the transitional proceeding 

authorized by this subsection, the Director shall issue regulations for determining whether a patent is for a technological invention. 

(e) RULE OF CONSTRUCTION.—Nothing in this section shall be construed as 

amending or interpreting categories of patent-eligible subject matter set forth under 

section 101 of title 35, United States Code. 

SEC. 19. JURISDICTION AND PROCEDURAL MATTERS. 

(a) STATE COURT JURISDICTION.—Section 1338(a) of title 28, United States Code, 

is amended by striking the second sentence and inserting the following: ‘‘No State 

court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For purposes of this 

subsection, the term ‘State’ includes any State of the United States, the District of 

Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, 

American Samoa, Guam, and the Northern Mariana Islands.’’. 

(b) COURT OF APPEALS FOR THE FEDERAL CIRCUIT.—Section 1295(a)(1) of title 

28, United States Code, is amended to read as follows: 

‘‘(1) of an appeal from a final decision of a district court of the United 

States, the District Court of Guam, the District Court of the Virgin Islands, or 

the District Court of the Northern Mariana Islands, in any civil action arising 

under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents or plant variety 

protection;’’. 

(c) REMOVAL.— (1) IN GENERAL.—Chapter 89 of title 28, United States Code, is amended 

by adding at the end the following new section: 

‘‘§ 1454. Patent, plant variety protection, and copyright cases 

‘‘(a) IN GENERAL.—A civil action in which any party asserts a claim for relief 

arising under any Act of Congress relating to patents, plant variety protection, or 

copyrights may be removed to the district court of the United States for the district 

and division embracing the place where the action is pending. 

‘‘(b) SPECIAL RULES.—The removal of an action under this section shall be made 

in accordance with section 1446, except that if the removal is based solely on this 

section— 

‘‘(1) the action may be removed by any party; and 

‘‘(2) the time limitations contained in section 1446(b) may be extended at 

any time for cause shown. 

‘‘(c) CLARIFICATION OF JURISDICTION IN CERTAIN CASES.—The court to which a 

civil action is removed under this section is not precluded from hearing and determining any claim in the civil action because the State court from which the civil 

action is removed did not have jurisdiction over that claim. 

‘‘(d) REMAND.—If a civil action is removed solely under this section, the district 

court— 

‘‘(1) shall remand all claims that are neither a basis for removal under subsection (a) nor within the original or supplemental jurisdiction of the district 

court under any Act of Congress; and 


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‘‘(2) may, under the circumstances specified in section 1367(c), remand any 

claims within the supplemental jurisdiction of the district court under section 

1367.’’. 

(2) CONFORMING AMENDMENT.—The table of sections for chapter 89 of title 

28, United States Code, is amended by adding at the end the following new 

item: 

‘‘1454. Patent, plant variety protection, and copyright cases.’’. 

(d) TRANSFER BY COURT OF APPEALS FOR THE FEDERAL CIRCUIT.— (1) IN GENERAL.—Chapter 99 of title 28, United States Code, is amended 

by adding at the end the following new section: 

‘‘§ 1632. Transfer by the Court of Appeals for the Federal Circuit 

‘‘When a case is appealed to the Court of Appeals for the Federal Circuit under 

section 1295(a)(1), and no claim for relief arising under any Act of Congress relating 

to patents or plant variety protection is the subject of the appeal by any party, the 

Court of Appeals for the Federal Circuit shall transfer the appeal to the court of 

appeals for the regional circuit embracing the district from which the appeal has 

been taken.’’. 

(2) CONFORMING AMENDMENT.—The table of sections for chapter 99 of title 

28, United States Code, is amended by adding at the end the following new 

item: 

‘‘1632. Transfer by the Court of Appeals for the Federal Circuit.’’. 

(e) PROCEDURAL MATTERS IN PATENT CASES.— 

(1) JOINDER OF PARTIES AND STAY OF ACTIONS.—Chapter 29 of title 35, 

United States Code, as amended by this Act, is further amended by adding at 

the end the following new section: 

‘‘§ 299. Joinder of parties 

‘‘(a) JOINDER OF ACCUSED INFRINGERS.—In any civil action arising under any 

Act of Congress relating to patents, other than an action or trial in which an act 

of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants only 

if— 

‘‘(1) any right to relief is asserted against the parties jointly, severally, or 

in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused 

product or process; and 

‘‘(2) questions of fact common to all defendants or counterclaim defendants 

will arise in the action. 

‘‘(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—For purposes of this subsection, 

accused infringers may not be joined in one action or trial as defendants or counterclaim defendants based solely on allegations that they each have infringed the patent or patents in suit.’’. 

(2) CONFORMING AMENDMENT.—The table of sections for chapter 29 of title 

35, United States Code, as amended by this Act, is further amended by adding 

at the end the following new item: 

‘‘299. Joinder of parties.’’. 

(e) EFFECTIVE DATE.—The amendments made by this section shall apply to any 

civil action commenced on or after the date of the enactment of this Act. 

SEC. 20. TECHNICAL AMENDMENTS. 

(a) JOINT INVENTIONS.—Section 116 of title 35, United States Code, is amended— 

(1) in the first undesignated paragraph, by striking ‘‘When’’ and inserting ‘‘(a) JOINT INVENTIONS.—When’’; 

(2) in the second undesignated paragraph, by striking ‘‘If a joint inventor’’ and inserting ‘‘(b) OMITTED INVENTOR.—If a joint inventor’’; and 

(3) in the third undesignated paragraph— 

(A) by striking ‘‘Whenever’’ and inserting ‘‘(c) CORRECTION OF ER- RORS IN APPLICATION.—Whenever’’; and 

(B) by striking ‘‘and such error arose without any deceptive intention on his part,’’. 

(b) FILING OF APPLICATION IN FOREIGN COUNTRY.—Section 184 of title 35, 

United States Code, is amended— 

(1) in the first undesignated paragraph— 

(A) by striking ‘‘Except when’’ and inserting ‘‘(a) FILING IN FOREIGN

COUNTRY.—Except when’’; and 

(B) by striking ‘‘and without deceptive intent’’; 


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(2) in the second undesignated paragraph, by striking ‘‘The term’’ and inserting ‘‘(b) APPLICATION.—The term’’; and 

(3) in the third undesignated paragraph, by striking ‘‘The scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

scope’’. 

(c) FILING WITHOUT A LICENSE.—Section 185 of title 35, United States Code, is 

amended by striking ‘‘and without deceptive intent’’. 

(d) REISSUE OF DEFECTIVE PATENTS.—Section 251 of title 35, United States 

Code, is amended— 

(1) in the first undesignated paragraph— 

(A) by striking ‘‘Whenever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; and 

(B) by striking ‘‘without any deceptive intention’’; 

(2) in the second undesignated paragraph, by striking ‘‘The Director’’ and 

inserting ‘‘(b) MULTIPLE REISSUED PATENTS.—The Director’’; 

(3) in the third undesignated paragraph, by striking ‘‘The provisions’’ and 

inserting ‘‘(c) APPLICABILITY OF THIS TITLE.—The provisions’’; and 

(4) in the last undesignated paragraph, by striking ‘‘No reissued patent’’ 

and inserting ‘‘(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued 

patent’’. 

(e) EFFECT OF REISSUE.—Section 253 of title 35, United States Code, is amended— 

(1) in the first undesignated paragraph, by striking ‘‘Whenever, without any 

deceptive intention,’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; and 

(2) in the second undesignated paragraph, by striking ‘‘In like manner’’ and 

inserting ‘‘(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth 

in subsection (a),’’. 

(f) CORRECTION OF NAMED INVENTOR.—Section 256 of title 35, United States 

Code, is amended— 

(1) in the first undesignated paragraph— 

(A) by striking ‘‘Whenever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; and 

(B) by striking ‘‘and such error arose without any deceptive intention 

on his part’’; and 

(2) in the second undesignated paragraph, by striking ‘‘The error’’ and inserting ‘‘(b) PATENT VALID IF ERROR CORRECTED.—The error’’. 

(g) PRESUMPTION OF VALIDITY.—Section 282 of title 35, United States Code, is 

amended— 

(1) in the first undesignated paragraph— 

(A) by striking ‘‘A patent’’ and inserting ‘‘(a) IN GENERAL.—A patent’’; 

and 

(B) by striking the third sentence; 

(2) in the second undesignated paragraph— 

(A) by striking ‘‘The following’’ and inserting ‘‘(b) DEFENSES.—The following’’; 

(B) in paragraph (1), by striking ‘‘uneforceability,’’ and inserting ‘‘unenforceability.’’; and 

(C) in paragraph (2), by striking ‘‘patentability,’’ and inserting ‘‘patentability.’’ ; and 

(3) in the third undesignated paragraph— 

(A) by striking ‘‘In actions involving the validity or infringement of a 

patent’’ and inserting ‘‘(c) NOTICE OF ACTIONS; ACTIONS DURING EXTENSION

OF PATENT TERM.—In an action involving the validity or infringement of 

patent, the party asserting infringement shall identify, in the pleadings or 

otherwise in writing to the adverse party, all of its real parties in interest, 

and’’; and 

(B) by striking ‘‘Claims Court’’ and inserting ‘‘Court of Federal Claims’’. 

(h) ACTION FOR INFRINGEMENT.—Section 288 of title 35, United States Code, is 

amended by striking ‘‘, without deceptive intention,’’. 

(i) REVISER’S NOTES.— 

(1) Section 3(e)(2) of title 35, United States Code, is amended by striking 

‘‘this Act,’’ and inserting ‘‘that Act,’’. 

(2) Section 202 of title 35, United States Code, is amended— 

(A) in subsection (b)(3), by striking ‘‘the section 203(b)’’ and inserting 

‘‘section 203(b)’’; and 

(B) in subsection (c)(7)(D), by striking ‘‘except where it proves’’ and all 

that follows through ‘‘small business firms; and’’ and inserting: ‘‘except 

where it is determined to be infeasible following a reasonable inquiry, a 


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preference in the licensing of subject inventions shall be given to small 

business firms; and’’. 

(3) Section 209(d)(1) of title 35, United States Code, is amended by striking 

‘‘nontransferrable’’ and inserting ‘‘nontransferable’’. 

(4) Section 287(c)(2)(G) of title 35, United States Code, is amended by striking ‘‘any state’’ and inserting ‘‘any State’’. 

(5) Section 371(b) of title 35, United States Code, is amended by striking 

‘‘of the treaty’’ and inserting ‘‘of the treaty.’’. 

(j) UNNECESSARY REFERENCES.— 

(1) IN GENERAL.—Title 35, United States Code, is amended by striking ‘‘of 

this title’’ each place that term appears. 

(2) EXCEPTION.—The amendment made by paragraph (1) shall not apply to 

the use of such term in the following sections of title 35, United States Code: 

(A) Section 1(c). 

(B) Section 101. 

(C) Subsections (a) and (b) of section 105. 

(D) The first instance of the use of such term in section 111(b)(8). 

(E) Section 161. 

(F) Section 164. 

(G) Section 171. 

(H) Section 251(c), as so designated by this section. 

(I) Section 261. 

(J) Subsections (g) and (h) of section 271. 

(K) Section 287(b)(1). 

(L) Section 289. 

(M) The first instance of the use of such term in section 375(a). 

(k) EFFECTIVE DATE.—The amendments made by this section shall take effect 

upon the expiration of the 1-year period beginning on the date of the enactment of 

this Act and shall apply to proceedings commenced on or after that effective date. 

SEC. 21. TRAVEL EXPENSES AND PAYMENT OF ADMINISTRATIVE JUDGES. 

(a) AUTHORITY TO COVER CERTAIN TRAVEL RELATED EXPENSES.—Section 

2(b)(11) of title 35, United States Code, is amended by inserting ‘‘, and the Office 

is authorized to expend funds to cover the subsistence expenses and travel-related 

expenses, including per diem, lodging costs, and transportation costs, of persons attending such programs who are not Federal employees’’ after ‘‘world’’. 

(b) PAYMENT OF ADMINISTRATIVE JUDGES.—Section 3(b) of title 35, United 

States Code, is amended by adding at the end the following: 

‘‘(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK

JUDGES.—The Director may fix the rate of basic pay for the administrative patent judges appointed pursuant to section 6 and the administrative trademark 

judges appointed pursuant to section 17 of the Trademark Act of 1946 (15 

U.S.C. 1067) at not greater than the rate of basic pay payable for level III of 

the Executive Schedule under section 5314 of title 5. The payment of a rate of 

basic pay under this paragraph shall not be subject to the pay limitation under 

section 5306(e) or 5373 of title 5.’’. 

SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING. 

(a) DEFINITION.—In this section, the term ‘‘Fund’’ means the United States Patent and Trademark Office Public Enterprise Fund established under subsection (c). 

(b) FUNDING.— 

(1) IN GENERAL.—Section 42 of title 35, United States Code, is amended— 

(A) in subsection (b), by striking ‘‘Patent and Trademark Office Appropriation Account’’ and inserting ‘‘United States Patent and Trademark Office Public Enterprise Fund’’; and 

(B) in subsection (c), in the first sentence— 

(i) by striking ‘‘To the extent’’ and all that follows through ‘‘fees’’ 

and inserting ‘‘Fees’’; and 

(ii) by striking ‘‘shall be collected by and shall be available to the 

Director’’ and inserting ‘‘shall be collected by the Director and shall be 

available until expended’’. 

(2) EFFECTIVE DATE.—The amendments made by paragraph (1) shall take 

effect on the later of— 

(A) October 1, 2011; or 

(B) the first day of the first fiscal year that begins after the date of the 

enactment of this Act. 

(c) USPTO REVOLVING FUND.— 

(1) ESTABLISHMENT.—There is established in the Treasury of the United 

States a revolving fund to be known as the ‘‘United States Patent and TradeVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00035 Fmt 6659 Sfmt 6621 E:\HR\OC\HR098P1.XXX HR098P1

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mark Office Public Enterprise Fund’’. Any amounts in the Fund shall be available for use by the Director without fiscal year limitation. 

(2) DERIVATION OF RESOURCES.—There shall be deposited into the Fund and 

recorded as offsetting receipts, on and after the effective date set forth in subsection (b)(2)— 

(A) any fees collected under sections 41, 42, and 376 of title 35, United 

States Code, except that— 

(i) notwithstanding any other provision of law, if such fees are collected by, and payable to, the Director, the Director shall transfer such 

amounts to the Fund; and 

(ii) no funds collected pursuant to section 10(h) of this Act or section 1(a)(2) of Public Law 111–45 shall be deposited in the Fund; and 

(B) any fees collected under section 31 of the Trademark Act of 1946 

(15 U.S.C. 1113). 

(3) EXPENSES.—Amounts deposited into the Fund under paragraph (2) shall 

be available, without fiscal year limitation, to cover— 

(A) all expenses to the extent consistent with the limitation on the use 

of fees set forth in section 42(c) of title 35, United States Code, including 

all administrative and operating expenses, determined in the discretion of 

the Director to be ordinary and reasonable, incurred by the Director for the 

continued operation of all services, programs, activities, and duties of the 

Office relating to patents and trademarks, as such services, programs, activities, and duties are described under— 

(i) title 35, United States Code; and 

(ii) the Trademark Act of 1946; and 

(B) all expenses incurred pursuant to any obligation, representation, or 

other commitment of the Office. 

(d) ANNUAL REPORT.—Not later than 60 days after the end of each fiscal year, 

the Director shall submit a report to Congress which shall— 

(1) summarize the operations of the Office for the preceding fiscal year, including financial details and staff levels broken down by each major activity of 

the Office; 

(2) detail the operating plan of the Office, including specific expense and 

staff needs for the upcoming fiscal year; 

(3) describe the long-term modernization plans of the Office; 

(4) set forth details of any progress towards such modernization plans made 

in the previous fiscal year; and 

(5) include the results of the most recent audit carried out under subsection 

(f). 

(e) ANNUAL SPENDING PLAN.— 

(1) IN GENERAL.—Not later than 30 days after the beginning of each fiscal 

year, the Director shall notify the Committees on Appropriations of both Houses 

of Congress of the plan for the obligation and expenditure of the total amount 

of the funds for that fiscal year in accordance with section 605 of the Science, 

State, Justice, Commerce, and Related Agencies Appropriations Act, 2006 (Public Law 109–108; 119 Stat. 2334). 

(2) CONTENTS.—Each plan under paragraph (1) shall— 

(A) summarize the operations of the Office for the current fiscal year, 

including financial details and staff levels with respect to major activities; 

and 

(B) detail the operating plan of the Office, including specific expense 

and staff needs, for the current fiscal year. 

(f) AUDIT.—The Director shall, on an annual basis, provide for an independent 

audit of the financial statements of the Office. Such audit shall be conducted in accordance with generally acceptable accounting procedures. 

(g) BUDGET.—The Director shall prepare and submit each year to the President 

a business-type budget for the Fund in a manner, and before a date, as the President prescribes by regulation for the Federal budget. 

SEC. 23. SATELLITE OFFICES. 

(a) ESTABLISHMENT.—Subject to available resources, the Director shall, by not 

later than the date that is 3 years after the date of the enactment of this Act, establish 3 or more satellite offices in the United States to carry out the responsibilities 

of the Office. 

(b) PURPOSES.—The purposes of the satellite offices established under subsection (a) are to— 

(1) increase outreach activities to better connect patent filers and 

innovators with the Office; 

(2) enhance patent examiner retention; 


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(3) improve recruitment of patent examiners; 

(4) decrease the number of patent applications waiting for examination; and 

(5) improve the quality of patent examination. 

(c) REQUIRED CONSIDERATIONS.— 

(1) IN GENERAL.—In selecting the location of each satellite office to be established under subsection (a), the Director— 

(A) shall ensure geographic diversity among the offices, including by 

ensuring that such offices are established in different States and regions 

throughout the Nation; 

(B) may rely upon any previous evaluations by the Office of potential 

locales for satellite offices, including any evaluations prepared as part of 

the Office’s Nationwide Workforce Program that resulted in the 2010 selection of Detroit, Michigan, as the first satellite office of the Office. 

(2) OPEN SELECTION PROCESS.—Nothing in paragraph (1) shall constrain the 

Office to only consider its evaluations in selecting the Detroit, Michigan, satellite office. 

(d) REPORT TO CONGRESS.—Not later than the end of the third fiscal year that 

begins after the date of the enactment of this Act, the Director shall submit a report 

to Congress on— 

(1) the rationale of the Director in selecting the location of any satellite office required under subsection (a); 

(2) the progress of the Director in establishing all such satellite offices; and 

(3) whether the operation of existing satellite offices is achieving the purposes under subsection (b). 

SEC. 24. DESIGNATION OF DETROIT SATELLITE OFFICE. 

(a) DESIGNATION.—The satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as 

the ‘‘Elijah J. McCoy United States Patent and Trademark Office’’. 

(b) REFERENCES.—Any reference in a law, map, regulation, document, paper, or 

other record of the United States to the satellite office of the United States Patent 

and Trademark Office to be located in Detroit, Michigan, referred to in subsection 

(a) shall be deemed to be a reference to the ‘‘Elijah J. McCoy United States Patent 

and Trademark Office’’. 

SEC. 25. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSINESS CONCERNS. 

Using available resources, the Director shall establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program’s staff shall include 

providing support and services relating to patent filings to small business concerns. 

SEC. 26. PRIORITY EXAMINATION FOR TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS. 

Section 2(b)(2) of title 35, United States Code, is amended— 

(1) in subparagraph (E), by striking ‘‘and’’ after the semicolon; 

(2) in subparagraph (F), by inserting ‘‘and’’ after the semicolon; and 

(3) by adding at the end the following: 

‘‘(G) may, subject to any conditions prescribed by the Director and at 

the request of the patent applicant, provide for prioritization of examination 

of applications for products, processes, or technologies that are important 

to the national economy or national competitiveness without recovering the 

aggregate extra cost of providing such prioritization, notwithstanding section 41 or any other provision of law;’’. 

SEC. 27. CALCULATION OF 60-DAY PERIOD FOR APPLICATION OF PATENT TERM EXTENSION. 

(a) IN GENERAL.—Section 156(d)(1) of title 35, United States Code, is amended 

by adding at the end the following flush sentence: 

‘‘For purposes of determining the date on which a product receives permission under 

the second sentence of this paragraph, if such permission is transmitted after 4:30 

P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business day. For purposes of the preceding sentence, the term ‘business day’ means any 

Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday 

under section 6103 of title 5.’’. 

(b) APPLICABILITY.—The amendment made by subsection (a) shall apply to any 

application for extension of a patent term under section 156 of title 35, United 

States Code, that is pending on, that is filed after, or as to which a decision regarding the application is subject to judicial review on, the date of the enactment of this 

Act. 


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1 U.S. Const. Art. 1, § 8. 

2See 35 U.S.C. § 101. 3See Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Reforms: 

Hearing before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th 

Cong. (2006) (statement of Nathan P. Myhrvold, Chief Executive Officer, Intellectual Ventures); 

Perspectives on Patents: Hearing before the Subcomm. on Intellectual Prop. of the Senate Comm. 

on the Judiciary, 109th Cong. (2005) (statement of Dean Kamen, President, DEKA Research and 

Development Corp.). 4The last major revision of the patent laws was the Patent Act of 1952, P.L. 82–593. 

SEC. 28. STUDY ON IMPLEMENTATION. 

(a) PTO STUDY.—The Director shall conduct a study on the manner in which 

this Act and the amendments made by this Act are being implemented by the Office, and on such other aspects of the patent policies and practices of the Federal 

Government with respect to patent rights, innovation in the United States, competitiveness of United States markets, access by small businesses to capital for investment, and such other issues, as the Director considers appropriate. 

(b) REPORT TO CONGRESS.—The Director shall, not later than the date that is 

4 years after the date of the enactment of this Act, submit to the Committees on 

the Judiciary of the House of Representatives and the Senate a report on the results 

of the study conducted under subsection (a), including recommendations for any 

changes to laws and regulations that the Director considers appropriate. 

SEC. 29. PRO BONO PROGRAM. 

(a) IN GENERAL.—The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs 

designed to assist financially under-resourced independent inventors and small businesses. (b) EFFECTIVE DATE.—This section shall take effect on the date of the enactment of this Act. 

SEC. 30. EFFECTIVE DATE. 

Except as otherwise provided in this Act, the provisions of this Act shall take 

effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date. 

SEC. 31. BUDGETARY EFFECTS. 

The budgetary effects of this Act, for the purpose of complying with the Statutory Pay-As-You-Go Act of 2010, shall be determined by reference to the latest statement titled ‘‘Budgetary Effects of PAYGO Legislation’’ for this Act, submitted for 

printing in the Congressional Record by the Chairman of the House Budget Committee, provided that such statement has been submitted prior to the vote on passage. 

Purpose and Summary 

The Constitution explicitly grants Congress the power to ‘‘promote the progress of science and useful arts, by securing for limited 

times to . . . inventors the exclusive right to their respective . . . 

discoveries.’’ 1 Congress has responded by authorizing patents to 

issue to inventors of new and useful inventions or improvements on 

inventions.2 The patent law thus accomplishes two objectives, consistent with the authorization granted by the Constitution: first, it 

encourages inventors by granting them limited, but exclusive rights 

to their inventions; second, in exchange for the grant of those exclusive rights, the patent law requires disclosure of the invention 

and terminates the monopoly after a period of years.3 This disclosure and limited time benefits both society and future inventors by 

making the details of the invention available to the public immediately, and the right to make use of that invention after the expiration of 20 years from the date the patent application was filed. 

Congress has not enacted comprehensive patent law reform in 

nearly 60 years.4 The object of the patent law today must remain 

true to the constitutional command, but its form needs to change, 

both to correct flaws in the system that have become unbearable, 

and to accommodate changes in the economy and the litigation 


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5The National Academy of Sciences (NAS), and the Federal Trade Commission (FTC) conducted multi-year studies on the patent system and its need for reform. See National Research 

Council of the National Academies, A Patent System for the 21st Century (2004) (hereinafter 

‘‘NAS Report’’); and Federal Trade Comm’n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy (2003) (hereinafter ‘‘FTC Report’’). 6See, e.g., Mark A. Lemley and Carl Shapiro, Patent Holdup and Royalty Stacking, 85 Tex. 

L. Rev. 1991 (2007); Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. 

Prop. L. 336 (2005); Gerald J. Mossinghoff, The First-to-Invent Rule in the U.S. Patent System 

has Provided no Advantage to Small Entities, 87 JPTOS 514 (2005); Joseph Farrell & Robert 

P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won’t Reliably Fix Patent 

Office Errors and Why Administrative Patent Review Might Help, 19 Berkeley Tech. L.J. 943, 

958 (2004); see also Adam B. Jaffe & Josh Lerner, Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It (2004); 

Kevin G. Rivette & David Kline, Rembrandts in the Attic, Unlocking the Hidden Value of Pat- ents (2000). 7See Bilski v. Kappos,lll U.S. ll, 130 S.Ct. 3218 (2010) (reversing the Federal Circuit 

and holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process); Quanta Computer, Inc. v. LG Elecs. Inc., 553 U.S. 617 (2008) (reversing the Federal Circuit and holding that patent exhaustion applies to method patents when the 

essential or inventive feature of the invention is embodied in the product); Microsoft Corp. v. 

AT&T Corp., 550 U.S. 437 (2007) (reversing the Federal Circuit and limiting the extraterritorial 

reach of section 271(f), which imposes liability on a party which supplies from the U.S. components of a patented invention for combination outside the U.S.); KSR Int’l Co. v. Teleflex Inc., 

550 U.S. 398 (2007) (reversing the Federal Circuit and strengthening the standard for determining when an invention is obvious under section 103); MedImmune, Inc. v. Genentech, Inc., 

549 U.S. 118 (2007) (reversing the Federal Circuit and holding that the threat of a private enforcement action is sufficient to confirm standing under the Constitution); eBay Inc. v. 

MercExchange, L.L.C., 547 U.S. 388 (2006) (reversing the Federal Circuit and holding that the 

generally applicable four-factor test for injunctive relief applies to disputes in patent cases). 8See generally Patent Reform in the 111th Congress: Legislation and Recent Court Decisions, 

Senate Judiciary Committee, 111th Cong. (2009) (statement of Professor Mark A. Lemley, Stanford Law School). 9See, e.g., In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (holding that willful infringement requires at least a demonstration of objectively reckless behavior and removing any 

affirmative obligation to obtain an opinion of counsel letter to combat an allegation of willful 

infringement). 

practices in the patent realm. The need to update our patent laws 

has been meticulously documented in 15 hearings before the Committee or its Subcommittee on Courts, the Internet, and Intellectual Property, as well as eight hearings before the United States 

Senate Committee on the Judiciary. In addition, these legislative 

findings are augmented by the Federal Trade Commission and the 

National Academy of Sciences,5 both of which published authoritative reports on patent reform, and a plethora of academic commentary.6

While Congress has considered patent reform legislation over the 

last four Congresses, the need to modernize our patent laws has 

found expression in the courts, as well. The Supreme Court has reversed the Federal Circuit in six of the patent-related cases that 

it has heard since the beginning of the 109th Congress.7 The 

Court’s decisions have moved in the direction of improving patent 

quality and making the determination of patent validity more efficient. The decisions reflect a growing sense that questionable patents are too easily obtained and are too difficult to challenge.8 Recent decisions by the Federal Circuit reflect a similar trend in response to these concerns.9 But the courts are constrained in their 

decisions by the text of the statutes at issue. It is time for Congress 

to act. 

The voices heard during the debate over changes to the patent 

law have been diverse and their proposals have been far from uniform. They have focused the Committee’s attention on the value of 

harmonizing our system for granting patents with the best parts of 

other major patent systems throughout the industrialized world for 

the benefit of U.S. patent holders; improving patent quality and 

providing a more efficient system for challenging patents that 


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10When the term ‘‘filing date’’ is used herein, it is also meant to include, when appropriate, 

the effective filing date, i.e., the earliest date the claim in an application-claims priority. 

should not have issued; and reducing unwarranted litigation costs 

and inconsistent damage awards. 

The purpose of the ‘‘America Invents Act,’’ as reported by the 

Committee on the Judiciary, is to ensure that the patent system in 

the 21st century reflects the constitutional imperative. Congress 

must promote innovation by granting inventors temporally limited 

monopolies on their inventions in a manner that ultimately benefits the public through the disclosure of the invention to the public. 

The legislation is designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs. 

If the United States is to maintain its competitive edge in the 

global economy, it needs a system that will support and reward all 

innovators with high quality patents. The Committee has taken 

testimony from and its members have held meetings with interested parties that have different and often conflicting perspectives 

on the patent system. The Committee has taken all of those views 

into consideration, and drafted and then amended the ‘‘America Invents Act’’ to balance the competing interests. The legislation ordered reported by the Committee on a vote of 32–3 is a consensus 

approach that will modernize the United States patent system in 

significant respects. 

Background and Need for the Legislation 

First Inventor to File 

The ‘‘America Invents Act’’ creates a new ‘‘first-inventor-to-file’’ 

system. Every industrialized nation other than the United States 

uses a patent priority system commonly referred to as ‘‘first-to-file.’’ 

In a first-to-file system, when more than one application claiming 

the same invention is filed, the priority of a right to a patent is 

based on the earlier-filed application. The United States, by contrast, currently uses a ‘‘first-to-invent’’ system, in which priority is 

established through a proceeding to determine which applicant actually invented the claimed invention first. Differences between the 

two systems arise in large part from the date that is most relevant 

to each respective system. In a first-to-file system, the filing date 

of the application is most relevant;10 the filing date of an application is an objective date, simple to determine, for it is listed on the 

face of the patent. In contrast, in a first-to-invent system, the date 

the invention claimed in the application was actually invented is 

the determinative date. Unlike the objective date of filing, the date 

someone invents something is often uncertain, and, when disputed, 

typically requires corroborating evidence as part of an adjudication. 

There are significant, practical differences between the two systems. Among them is the ease of determining the right to a claimed 

invention in the instance in which two different people file patent 

applications for the same invention. In a first-to-file system, the application with the earlier filing date prevails and will be awarded 

the patent, if one issues. In the first-to-invent system, a lengthy, 

complex and costly administrative proceeding (called an ‘‘interference proceeding’’) must be conducted at the United States Patent 

and Trademark Office (‘‘USPTO’’) to determine who actually inVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00040 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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11See 35 U.S.C. § 135. 12See, e.g., Robert W. Pritchard, The Future is Now—The Case for Patent Harmonization, 20 

N.C. J. Int’l L. & Com. Reg. 291, 313 (1995). 13See, e.g., Perspectives on Patents: Harmonization and Other Matters: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Charles E. Phelps, Provost, University of Rochester, on behalf of the Association of 

American Universities); Patent Law Reform: Injunctions and Damages: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Carl Gulbrandsen, Managing Director, Wisconsin Alumni Research Foundation 

(WARF)); Perspective on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of William Parker, Diffraction, Ltd.). 14See, e.g., Perspectives on Patents: Harmonization and Other Matters: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Gerald J. Mossinghoff, Former Assistant Secretary of Commerce and Commissioner of 

Patents and Trademarks); Perspectives on Patents: Harmonization and Other Matters: Hearing 

Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 

(2005) (statement of Q. Todd Dickinson, Former Under Secretary of Commerce for Intellectual 

Property and Director of the United States Patent and Trademark Office); Patent Law Reform: 

Injunctions and Damages: Hearing Before the Subcomm. on Intellectual Prop. of the Senate 

Comm. on the Judiciary, 109th Cong. (2005) (statement of Jeffrey P. Kushan, Partner, Sidley 

Austin Brown & Wood, LLP); Patent Law Reform: Injunctions and Damages: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Mark A. Lemley, Professor, Stanford Law School); Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 

(2005) (statement of Robert A. Armitage, Senior Vice President and General Patent Counsel, Eli 

Lilly and Company); Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. 

of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Michael K. Kirk, Executive Director, American Intellectual Property Law Association). 15See NAS Report at 124; see also Perspectives on Patents: Hearing Before the Subcomm. on 

Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of Richard C. Levin, Yale University). 16See Perspectives on Patents: Harmonization and Other Matters: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (stateContinued 

vented first.11 Interference proceedings can take years to complete 

(even if there is no appeal to the United States Court of Appeals 

for the Federal Circuit), cost hundreds of thousands of dollars, and 

require extensive discovery.12 In addition, because it is always possible that an applicant could be involved in an interference proceeding, companies must maintain extensive recording and document retention systems in case they are later required to prove the 

date they invented the claimed invention. 

Another important difference between the two systems is that in 

some first-to-file systems, prior art can include the inventor’s own 

disclosure of his invention prior to the filing date of his application. 

Such systems do not provide the inventor any grace period during 

which time he is allowed to publish his invention without fear of 

its later being used against him as prior art. The Committee heard 

from universities and small inventors, in particular, about the importance of maintaining that grace period in our system.13 They argued that the grace period affords the necessary time to prepare 

and file applications, and in some instances, to obtain the necessary funding that enables the inventor to prepare adequately the 

application. In addition, the grace period benefits the public by encouraging early disclosure of new inventions, regardless of whether 

an application may later be filed for a patent on it. 

Numerous organizations, institutions, and companies have advocated that the U.S. adopt a first-to-file system similar to those used 

in the rest of the world.14 The National Academy of Sciences made 

a similar recommendation after an extensive study of the patent 

system.15 When the United States patent system was first adopted, 

inventors did not typically file in other countries. It is now common 

for inventors and companies to file for protection in several countries at the same time.16 Thus, United States applicants, who also 


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ment of Gerald J. Mossinghoff, Former Assistant Secretary of Commerce and Commissioner of 

Patents and Trademarks) . 17See Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate 

Comm. on the Judiciary, 109th Cong. (2005) (statement of Richard C. Levin, President, Yale 

University, and Mark B. Meyers, Visiting Executive Professor, Management Department at the 

Wharton Business School, University of Pennsylvania), estimating that it costs as much as 

$750,000 to $1 million to obtain worldwide patent protection on an important invention, and 

the lack of harmonization regarding filing systems adds unnecessary cost and delay. 18The NAS recommended changing the U.S. to a first-to-file system, while maintaining a 

grace period. See NAS Report at 124–27. See also Patent Reform in the 111th Congress: Legislation and Recent Court Decisions: Hearing Before the Senate Comm. on the Judiciary, 111th 

Cong. (2009) (statement of Steven Appleton, Chairman and Chief Executive Officer, Micron 

Technologies, Inc.); Patent Reform in the 111th Congress: Legislation and Recent Court Decisions: Hearing Before the Senate Comm. on the Judiciary, 111th Cong. (2009) (statement of Philip S. Johnson, Chief Patent Counsel, Johnson & Johnson); Patent Reform in the 111th Congress: 

Legislation and Recent Court Decisions: Hearing Before the Senate Comm. on the Judiciary, 

111th Cong. (2009) (statement of Herbert C. Wamsley, Executive Director, Intellectual Property 

Owners Association); Patent Reform in the 111th Congress: Legislation and Recent Court Decisions: Hearing Before the Senate Comm. on the Judiciary, 111th Cong. (2009) (statement of 

Mark A. Lemley, Professor, Stanford Law School). 

want to file abroad, are forced to follow and comply with two different filing systems. Maintaining a filing system so different from 

the rest of the world disadvantages United States applicants who, 

in most instances, also file in other countries.17 A change is long 

overdue.18

Drawing on the best aspects of the two existing systems, the 

America Invents Act creates a new ‘‘first-inventor-to-file’’ system. 

This new system provides patent applicants in the United States 

the efficiency benefits of the first-to-file systems used in the rest 

of the world by moving the U.S. system much closer to a first-tofile system and making the filing date that which is most relevant 

in determining whether an application is patentable. The new system continues, however, to provide inventors the benefit of the 1- 

year grace period. As part of the transition to a simpler, more efficient first-inventor-to-file system, this provision eliminates costly, 

complex interference proceedings, because priority will be based on 

the first application. A new administrative proceeding—called a 

‘‘derivation’’ proceeding—is created to ensure that the first person 

to file the application is actually a true inventor. This new proceeding will ensure that a person will not be able to obtain a patent for the invention that he did not actually invent. If a dispute 

arises as to which of two applicants is a true inventor (as opposed 

to who invented it first), it will be resolved through an administrative proceeding by the Patent Board. The Act also simplifies how 

prior art is determined, provides more certainty, and reduces the 

cost associated with filing and litigating patents. 

The Act maintains a 1-year grace period for U.S. applicants. Applicants’ own publication or disclosure that occurs within 1 year 

prior to filing will not act as prior art against their applications. 

Similarly, disclosure by others during that time based on information obtained (directly or indirectly) from the inventor will not constitute prior art. This 1-year grace period should continue to give 

U.S. applicants the time they need to prepare and file their applications. 

This provision also, and necessarily, modifies the prior-art sections of the patent law. Prior art will be measured from the filing 

date of the application and will typically include all art that publicly exists prior to the filing date, other than disclosures by the inventor within 1 year of filing. Prior art also will no longer have any 

geographic limitations. Thus, in section 102 the ‘‘in this country’’ 


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19 Compare current § 102(e) with new § 102(a)(2). 20See generally 157 Cong. Rec. S.1496–97 (daily ed. March 9, 2011), S. 1370–71 (daily ed. 

March 8, 2011). 21The Committee does not intend a substantive change by replacing the word ‘‘negatived’’ in 

section 103 of title 35 with ‘‘negated.’’ 22See John R. Allison & Mark A. Lemley, The Growing Complexity of the United States Patent 

System, 82 B.U. L. Rev. 77, 97 (2002) (study showing that approximately 85% of the patents 

issued between 1996–98 were assigned by inventors to corporations; an increase from 79% during the period between 1976–78). 23See Jerry C. Liu, Overview of Patent Ownership Considerations in Joint Technology Development, 2005 Syracuse Sci. & Tech. L. Rep. 1 (2005). 24 35 U.S.C. § 115. 25See 37 C.F.R. § 1.47, which permits an applicant to petition the Director of the USPTO to 

have the application accepted without every inventor’s signature in limited circumstances, e.g., 

when the inventor cannot be found or refuses to participate in the application. 26See Perspectives on Patents: Harmonization and Other Matters: Hearing Before the 

Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. (2005) (statement of David Beier, Senior Vice President of Global Government Affairs, Amgen). 

limitation as applied to ‘‘public use’’ and ‘‘on sale’’ is removed, and 

the phrase ‘‘available to the public’’ is added to clarify the broad 

scope of relevant prior art, as well as to emphasize the fact that 

it must be publicly accessible. Prior art based on earlier-filed 

United States applications is maintained,19 as is current law’s 

grace period, which will apply to all actions by the patent owner 

during the year prior to filing that would otherwise create § 102(a) 

prior art.20 Sections (and subsections) of the existing statute are renumbered, modified, or deleted consistent with converting to a 

first-inventor-to-file system.21 Finally, the intent behind the CREATE Act to promote joint research activities is preserved by including a prior art exception for subject matter invented by parties to 

a joint research agreement. The Act also provides that its enactment of new section 102(c) of title 35 is done with the same intent 

to promote joint research activities that was expressed in the Cooperative Research and Technology Enhancement Act of 2004 (Public 

Law 108–453), and that section 102(c) shall be administered in a 

manner consistent with such intent. 

Inventor’s oath or declaration 

The U.S. patent system, when first adopted in 1790, contemplated that individual inventors would file their own patent applications, or would have a patent practitioner do so on their behalf. It has become increasingly common for patent applications to 

be assigned to corporate entities, most commonly the employer of 

the inventor.22 In fact, many employment contracts require employees to assign their inventions to their employer.23

Current law still reflects the antiquated notion that it is the inventor who files the application, not the company-assignee. For example, every inventor must sign an oath as part of the patent application stating that the inventor believes he or she is the true inventor of the invention claimed in the application.24 By the time an 

application is eventually filed, however, the applicant filing as an 

assignee may have difficulty locating and obtaining every inventor’s signature for the statutorily required oath. Although the 

USPTO has adopted certain regulations to allow filing of an application when the inventor’s signature is unobtainable,25 many have 

advocated that the statute be modernized to facilitate the filing of 

applications by assignees.26

The Act updates the patent system by facilitating the process by 

which an assignee may file and prosecute patent applications. It 


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27See 18 U.S.C. § 1001. 28 35 U.S.C. § 273(a)(3) states: ‘‘The term ‘method’ means a method of doing or conducting 

business.’’ 29See 35 U.S.C. § 273. 

provides similar flexibility for a person to whom the inventor is obligated to assign, but has not assigned, rights to the invention (the 

‘‘obligated assignee’’). 

Section 115 of title 35 is amended to allow a substitute statement 

to be submitted in lieu of an inventor’s oath when either the inventor (i) is unable to submit an oath, or (ii) is both unwilling to do 

so and under an obligation to assign the invention. If an error is 

discovered, the statement may later be corrected. A savings clause 

is included to prevent an invalidity or unenforceability challenge to 

the patent based on failure to comply with these requirements, provided that any error has been remedied. Willful false statements 

remain punishable, however, under Federal criminal laws.27

Section 118 of title 35 is also amended to make it easier for an 

assignee to file a patent application. The amendment now allows 

obligated assignees—entities to which the inventor is obligated to 

assign the application—to file applications, as well. It also allows 

a person who has a sufficient proprietary interest in the invention 

to file an application to preserve that person’s rights and those of 

the inventor. 

Defense to infringement based on earlier inventor 

Under current law, ‘‘prior user rights’’ may offer a defense to patent infringement when the patent in question is a ‘‘business method patent’’ 28 and its inventor uses the invention, but never files a 

patent application for it.29 If the same invention is later patented 

by another party, the prior user may not be liable for infringement 

to the new patent holder, although all others may be. 

Many counties include a more expansive prior-user rights regime 

within their first-to-file system. In the United States, this is particularly important to high-tech businesses that prefer not to patent every process or method that is part of their commercial operations. The Act responds to this point by revising US law as follows: First, the prior-use defense may be asserted against any patent (not just method patents), provided the person asserting the defense reduced the subject matter of the patent to practice and commercially used the subject matter at least 1 year before the effective filing date of the patent. Second, the defense cannot be asserted if the subject matter was derived from the patent holder or 

persons in privity with the patent holder. And third, the defense 

cannot be asserted unless the prior user both reduced the subject 

matter of the patent to practice and commercially used it at least 

1 year before the effective filing date of the patent or the date that 

the patentee publicly disclosed the invention and invoked the 

§ 102(b) grace period, whichever is earlier. 

This narrow expansion of prior-user rights balances the interests 

of patent holders, including universities, against the legitimate concerns of businesses that want to avoid infringement suits relating 

to processes that they developed and used prior to another party 

acquiring related patents. 


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30See 35 U.S.C. §§ 301–307. A patent holder will typically request reexamination to bolster 

the patent in view of new prior art. A third party may request reexamination to challenge, and 

ultimately invalidate, the patent. 31 ‘‘Reexamination will permit efficient resolution of questions about the validity of issued patents without recourse to expensive and lengthy infringement litigation. . . . The reexamination 

of issued patents could be conducted with a fraction of the time and cost of formal legal proceedings and would help restore confidence in the effectiveness of our patent system. . . . It 

is anticipated that these measures provide a useful and necessary alternative for challengers 

and for patent owners to test the validity of united states patents in an efficient and relatively 

inexpensive manner.’’ See H.R. Rep. No. 96–1307(I) at 3 (1980), reprinted in 1980 U.S.C.C.A.N. 

6460, 6462–63. 32See 35 U.S.C. § 303. 33See Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate 

Comm. on the Judiciary, 109th Cong. (2005) (statement of Jon W. Dudas, Undersecretary of 

Commerce for Intellectual Property, Director of the U.S. Patent and Trademark Office), explaining that ‘‘a large number of reexamination proceedings have been pending before the USPTO 

for more than 4 years,’’ and questioning whether this amount of time is consistent with the statutory requirement that ‘‘[a]ll reexamination proceedings . . . will be conducted with special dispatch within the Office.’’ See also 35 U.S.C. § 305. 34For several years, the standard practice at the USPTO was to assign the reexamination to 

the patent examiner who had originally examined that patent. In addition, the same third-party 

requester could file multiple, serial reexaminations based on the same ‘‘substantial new question 

of patentability,’’ so long as the initial reexamination was not complete. More recently, the 

Continued 

Post-grant review proceedings 

The Act amends ex parte and inter partes reexamination and establishes a new post-grant review procedure. Under current law, 

there are two ways to challenge the validity and enforceability of 

a patent that has issued. The patent may be challenged in district 

court litigation or in a reexamination at the USPTO. 

Nearly 30 years ago, Congress created the administrative ‘‘reexamination’’ process, through which the USPTO could review the validity of already-issued patents on the request of either the patent 

holder or a third party,30 in the expectation that it would serve as 

an effective and efficient alternative to often costly and protracted 

district court litigation.31 Reexamination requires the USPTO to review the patent in light of a substantial new question of patentability not presented during the original examination.32 The initial 

reexamination statute had several limitations that later proved to 

make it a less viable alternative to litigation for evaluating patent 

validity than Congress intended. First, a reexamination request 

could only be based on prior art, and could not be based on prior 

public use or prior sales. Moreover, the requestor could not raise 

any challenge based on § 101 (utility, eligibility) or § 112 (indefiniteness, enablement, written description, best mode). A third party alleging a patent is invalid, therefore, had fewer challenges it could 

raise in the proceeding and, therefore, may instead opt to risk infringement and litigate the validity of the patent in court. Second, 

in the original reexamination system, the third-party challenger 

had no role once the proceeding was initiated, while the patent 

holder had significant input throughout the entire process. Third, 

a challenger that lost at the USPTO under reexamination had no 

right to appeal an examiner’s, or the Patent Board’s, decision either 

administratively or in court. Restrictions such as these made reexamination a much less favored avenue to challenge questionable 

patents than litigation. Reexamination proceedings are also often 

costly, taking several years to complete,33 and are first conducted 

by examiners and, if the patent is rejected, then by Patent Board 

judges. Thus, many patents must go through two rounds of administrative review (one by the examiner, and a second by the Patent 

Board) adding to the length of the proceeding.34


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USPTO ended some of these procedures, and now reexaminations are handled by a Central Reexamination Unit (CRU), and subsequent serial reexamination, based on the same ‘‘substantial 

new question of patentability,’’ is no longer permitted. See, e.g., Manual of Patent Examining 

Procedure (MPEP) §§ 2236 and 2240 (August 2006). 35See e.g., 21st Century Dep’t of Justice Appropriations Authorization Act, Pub. L. No. 107– 

273, §§ 13105–06, 13202, 116 Stat. 1758, 1761 (2002) (effective Nov. 2, 2002); American Inventors Protection Act, Pub.L. 106–113, 113 Stat. 1536, § 1501A et seq. (1999) (creating inter partes 

reexamination) (hereafter referred to as the ‘‘AIPA’’). 36See 35 U.S.C. §§ 311–318. 37See 35 U.S.C. § 315(b). 38 AIPA, Pub. L. 106–113, § 4606. 39See United States Patent and Trademark Office, Report to Congress on Inter Partes Reexamination (2004) (hereinafter referred to as ‘‘Report on Inter Partes Reexamination’’), at 4. 40 Id. at 5. 41 Id. 42The scope of ‘‘patent and printed publication’’ prior art in the amended section 301 is intended to be coextensive with these terms in current section 102 of the title 35. Further, amendments made by Section 2 of the Act, which expand and contract the definition of certain other 

forms of prior art, are not intended to change the particular ‘‘patent or printed publication’’ prior 

art, which will continue to be the sole basis for initiating reexamination proceedings. 

Congress has responded several times to criticisms of the reexamination system by making amendments to the process.35 In 

1999, Congress created a second reexamination procedure—called 

inter partes reexamination—that gave third-party challengers 

greater input throughout the proceeding by permitting them to respond to every pleading submitted by the patent holder.36 Congress 

also eventually gave third-party challengers the right to appeal adverse decisions.37

As part of the 1999 improvements to reexamination, Congress directed the USPTO to submit a report to Congress evaluating the 

inter partes reexamination process and making any recommendations for changes.38 Initially, the USPTO projected that in the first 

year after the creation of inter partes reexamination, it would receive 400 such requests and it projected that by 2004 it would receive nearly 600.39 No inter partes reexamination requests were actually filed in 2000 and only 27 such requests had been filed by 

2004.40 Over the 5-year period studied by the USPTO, it issued 

900,000 patents and received only 53 requests for inter partes reexamination.41

The Act expands the category of documents that may be cited in 

a reexamination proceeding to include written statements of the 

patent owner that have been filed in a proceeding before a Federal 

court or the USPTO regarding the scope of claims. This addition 

will counteract the ability of patent owners to offer differing interpretations of prior art in different proceedings. These written statements, which include documents, pleadings or evidence from proceedings that address the patent owner’s statements, shall not be 

considered for any purpose other than to determine the proper 

meaning of the claims that are the subject of the request in a proceeding. Specifically, the Committee does not intend these statements to be a basis for the institution of a reexamination proceeding. Reexaminations will continue to be available only on the 

basis of ‘‘patents or printed publications.’’ 42

The Act also amends the ex parte reexamination procedure to 

allow the Director to institute a reexamination on the Director’s 

own initiative if a substantial new question of patentability is 

raised by patents or publications. 

The Act converts inter partes reexamination from an 

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ceeding ‘‘inter partes review.’’ The Act also makes the following improvements to this proceeding: 

• ‘‘Reasonable likelihood of success’’ for instituting inter 

partes review. The threshold for initiating an inter partes 

review is elevated from ‘‘significant new question of patentability’’—a standard that currently allows 95% of all requests to be granted—to a standard requiring petitioners to 

present information showing that their challenge has a reasonable likelihood of success. Satisfaction of the new threshold will be assessed based on the information presented both 

in the petition for the proceeding and in the patent owner’s 

response to the petition. 

• ‘‘Reasonably could have raised’’ estoppel applied to 

subsequent administrative proceedings. A party that 

uses inter partes review is estopped from raising in a subsequent PTO proceeding (such as an ex parte reexam or inter 

partes review) any issue that it raised or reasonably could 

have raised in the inter partes review. 

• Repeal of the 1999 limit. The limit on challenging patents 

issued before 1999 in inter partes reexamination is eliminated; all patents can be challenged in inter partes review. 

• Preponderance burden. Petitioners bear the burden of 

proving that a patent is invalid by a preponderance of the 

evidence in inter partes review. 

• Time limits during litigation. Parties who want to use 

inter partes review during litigation are required to seek a 

proceeding within 12 months of being served with a complaint alleging infringement of the patent, and are barred 

from seeking or maintaining an inter partes review if they 

file an action for a declaratory judgment that the patent is 

invalid. 

• Discovery. Parties may depose witnesses submitting affidavits or declarations and seek such discovery as the Patent 

Office determines is otherwise necessary in the interest of 

justice. 

• 12- to 18-month deadline. Inter partes review must be 

completed within 1 year of when the proceeding is instituted, 

except that the Office can extend this deadline by 6 months 

for good cause. 

• Oral hearing. Each party has the right to request an oral 

hearing as part of an inter partes review. 

• Three-judge panels. Inter partes reviews will be conducted 

before a panel of three APJs. Decisions will be appealed directly to the Federal Circuit. 

The Act also creates a new post-grant opposition procedure that 

can be utilized during the first 12 months after the grant of a patent or issue of a reissue patent. Unlike reexamination proceedings, 

which provide only a limited basis on which to consider whether a 

patent should have issued, the post-grant review proceeding permits a challenge on any ground related to invalidity under section 

282. The intent of the post-grant review process is to enable early 


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43See 35 C.F.R. § 1.99. 

challenges to patents, while still protecting the rights of inventors 

and patent owners against new patent challenges unbounded in 

time and scope. The Committee believes that this new, early-stage 

process for challenging patent validity and its clear procedures for 

submission of art will make the patent system more efficient and 

improve the quality of patents and the patent system. This new, 

but time-limited, post-grant review procedure will provide a meaningful opportunity to improve patent quality and restore confidence 

in the presumption of validity that comes with issued patents in 

court. 

In utilizing the post-grant review process, petitioners, real parties in interest, and their privies are precluded from improperly 

mounting multiple challenges to a patent or initiating challenges 

after filing a civil action challenging the validity a claim in the patent. Further, a final decision in a post-grant review process will 

prevent the petitioner, a real party in interest, or its privy from 

challenging any patent claim on a ground that was raised in the 

post-grant review process. The post-grant review procedure is not 

intended, however, to inhibit patent owners from pursuing the various avenues of enforcement of their rights under a patent, and the 

amendment makes clear that the filing or institution of a postgrant review proceeding does not limit a patent owner from commencing such actions. 

The Committee recognizes the importance of quiet title to patent 

owners to ensure continued investment resources. While this 

amendment is intended to remove current disincentives to current 

administrative processes, the changes made by it are not to be used 

as tools for harassment or a means to prevent market entry 

through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation. 

Further, such activity would divert resources from the research and 

development of inventions. As such, the Committee intends for the 

USPTO to address potential abuses and current inefficiencies 

under its expanded procedural authority. 

Patent Trial and Appeal Board. 

The Act renames the Patent Board the ‘‘Patent Trial and Appeal 

Board’’ and sets forth its duties, which are expanded to include jurisdiction over the new post-grant review and derivation proceedings. This section strikes references to proceedings eliminated 

by the Act, including interference proceedings, and updates the 

various appeals statutes. 

Preissuance submissions by third parties 

After an application is published, members of the public—most 

likely, a competitor or someone else familiar with the patented invention’s field—may realize they have information relevant to a 

pending application. The relevant information may include prior 

art that would prohibit the pending application from issuing as a 

patent. Current USPTO rules permit the submission of such prior 

art by third parties only if it is in the form of a patent or publication,43 but the submitter is precluded from explaining why the 


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44See 35 C.F.R. § 1.99(d) (‘‘A submission under this section shall not include any explanation 

of the patents or publications, or any other information.’’). 45See Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate 

Comm. on the Judiciary, 109th Cong. (2005) (statement of David Simon, Chief Patent Counsel, 

Intel Corporation). 46See 35 U.S.C. § 1(b). 47See, e.g., 35 U.S.C. § 41. 

prior art was submitted or what its relevancy to the application 

might be.44 Such restrictions decrease the value of the information 

to the examiner and may, as a result, deter such submissions.45

The Act improves the process by which third parties submit relevant information to the UPSTO by permitting those third parties 

to make statements concerning the relevance of the patents, patent 

applications, and other printed publications that they bring to the 

USPTO’s attention. 

Venue 

In 1999, as part of the American Inventors Protection Act 

(AIPA), Congress established that as a general matter the venue of 

the USPTO is the district where it resides.46 The USPTO currently 

resides in the Eastern District of Virginia. However, Congress inadvertently failed to make this change uniformly throughout the entire patent statute. As a result, certain sections of the patent statute (and one section of the trademark statute) continue to allow 

challenges to USPTO decisions to be brought in the District of Columbia, a place where the USPTO has not resided in decades. 

Because the USPTO no longer resides in the District of Columbia, the sections that authorize venue for litigation against the 

USPTO are consistently changed to reflect the venue where the 

USPTO currently resides. 

Fee-setting authority 

a) Agency fee setting authority 

Although the USPTO has had the ability to set certain fees by 

regulation, most fees (e.g., filing fee, issuance fee, maintenance 

fees) are set by Congress.47 History has shown that such a scheme 

does not allow the USPTO to respond promptly to the challenges 

that confront it. The USPTO has argued for years that it must 

have fee-setting authority to administer properly the agency and 

its growing workload. 

The Act allows the USPTO to set or adjust all of its fees, including those related to patents and trademarks, so long as they do no 

more than reasonably compensate the USPTO for the services performed. Prior to setting such fees, the Director must give notice to, 

and receive input from, the Patent or Trademark Public Advisory 

Committee (PPAC or TPAC). The Director may also reduce fees for 

any given fiscal year, but only after consultation with the PPAC or 

TPAC. The Act details the procedures for how the Director shall 

consult with the PPAC and TPAC, including providing for public 

hearings and the dissemination to the public of any recommendations made by either Committee. Fees shall be prescribed by rule. 

Any proposed fee change shall be published in the Federal Register 

and include the specific rationale and purpose for the proposed 

change. The Director must seek public comments for no less than 

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48See 35 U.S.C. § 41(h). 

sion regarding proposed fees. Congress shall have no more than 45 

days to consider and comment on any proposed fee, but no proposed fee shall be effective prior to the expiration of this 45-day period. 

b) ‘‘Micro entity’’ defined 

As part of the ongoing effort to nurture U.S. innovation, Congress has long recognized that certain groups, including independent inventors, small business concerns, and non-profit organizations (collectively referred to as ‘‘small business entities’’) should 

not bear the same financial burden for filing patent applications as 

larger corporate interests. The current statute provides for a significant reduction in certain fees for small business entities.48 The 

Committee was made aware, however, that there is likely a benefit 

to describing—and then accommodating—a group of inventors who 

are even smaller, in order to ensure that the USPTO can tailor its 

requirements, and its assistance, to the people with very little capital, and just a few inventions, as they are starting out. 

This section of the Act defines this even smaller group—the 

micro-entity—that includes only truly independent inventors. The 

Committee expects that the USPTO will make accommodations 

under its authority in recognition of the special status of micro-entities. 

Supplemental examination 

Patents are unenforceable and invalid if they are obtained 

through fraud. This concept is addressed in the ‘‘inequitable conduct’’ defense, which allows a defendant in an infringement suit to 

plead that the plaintiff patent-holder would not have received a 

patent but for misrepresentations made to the USPTO. Inequitable 

conduct requires proof of materiality as well as intent to deceive. 

These standards require courts and litigants to invest time and resources in determining the patent-holder’s state of mind or intent 

when developing the invention and submitting the application. 

Critics of the inequitable conduct defense, including the National 

Academies and the Federal Trade Commission, argue that our patent system is hampered by provisions that require courts to divine 

the difficult-to-prove subjective intent of individuals in patent disputes. And most defendants reflexively plead inequitable conduct 

as a defense to infringement, prompting the Federal Circuit to 

label the practice a ‘‘plague’’ on the patent system. 

The Act addresses the inequitable conduct doctrine by authorizing supplemental examination of a patent to correct errors or 

omissions in proceedings before the Office. Under this new procedure, information that was not considered or was inadequately considered or was incorrect can be presented to the Office. If the Office 

determines that the information does not present a substantial new 

question of patentability or that the patent is still valid, that information cannot later be used to hold the patent unenforceable or invalid on the basis for an inequitable-conduct attack in civil litigation. 


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49P.L. 96–517. 50P.L. 98–620, § 501. 51 35 U.S.C. § 202(c)(7). 52See The Role of Federally-Funded University Research in the Patent System: Hearing Before 

the Senate Comm. on the Judiciary, 110th Cong. (2008) (statement of Dr. Elizabeth Hoffman, 

Executive Vice President and Provost, Iowa State University). 

Funding agreements 

The Patent and Trademark Amendments Act of 1980 (commonly 

referred to as the Bayh-Dole Act)49 granted universities, other nonprofit organizations, and small businesses the right to title to inventions developed using Federal funds. In 1984, Congress amended the law to ensure that universities and small businesses operating at Government facilities (GOCOs) reaped the benefits of 

Bayh-Dole by giving them the right to elect title to a subject invention.50 The 1984 Act permitted GOCOs to retain the balance of any 

royalties or income earned from licensing inventions, up to 5 percent of the annual budget of the facility, for further research, development, and related activities. If the balance exceeds 5 percent of 

the facility’s annual budget, however, 75 percent of the excess is recouped by the Government, with the remaining 25 percent of the 

excess also retained by the GOCO for further research, development, and related activities.51

The Senate Judiciary Committee considered testimony that the 

requirement to repay the government 75 percent of the excess on 

royalty payments may be causing a disincentive for universities 

and small business operating under the GOCO provisions to commercialize products.52 Based on these concerns, the Act maintains 

the essence of the agreement GOCOs made with the taxpayers 

when they received funding that they would reimburse the taxpayer if they are sufficiently successful in commercializing a product invented with taxpayer dollars, but which reduces the burden 

on universities and small businesses, thereby encouraging commercialization. Pursuant to the Act, instead of reimbursing 75% of the 

excess to the Government, the GOCO will retain 85 percent for further research, development, and related activities and reimburse 

the Government 15 percent. 

Tax strategies deemed within the prior art 

In recent years, the numbers of patents on tax-strategies have 

increased. Critics assert that it is not fair to permit patents on 

techniques used to satisfy a government mandate, such as compliance with the Internal Revenue Code. 

Tax preparers, lawyers, and planners have a long history of sharing their knowledge regarding how to file returns, plan estates, and 

advise clients. The ability to interpret the tax law and implement 

such interpretations should remain in the public domain, available 

to all taxpayers and their advisors. 

The Act mandates that tax strategies are deemed ‘‘insufficient to 

differentiate a claimed invention from the prior art.’’ In other 

words, any future tax strategy will be considered indistinguishable 

from all other publicly available information that is relevant to a 

patent’s claim of originality. Under the Act, however, protection (an 

exclusion) is made available for software that enables individuals 

to file their income tax returns or that assists them with managing 


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53 35 U.S.C. § 112. Section 112 also requires an applicant to disclose a written description of 

the invention and a written description of the manner of making and using the invention, sufficient to enable one skilled in the art to make and use it. 54 Among those who have so argued are the National Academy of Sciences, the Biotechnology 

Industry Organization, the American Intellectual Property Law Association, the Intellectual 

Property Owners Association, and Pharmaceutical Research and Manufacturers of America. 55See 35 U.S.C. § 287. 56See id. 

their finances. The exclusion does not apply to that part of the software related to a tax strategy. 

Best mode requirement 

The Act amends § 282(b) to eliminate as a defense to patent infringement the patentee’s failure to comply with the best mode requirement of § 112. An applicant for a patent must disclose: (1) a 

written description of the invention; (2) a written description of the 

manner of making and using the invention, sufficient to enable one 

skilled in the art to make and use it (known as the ‘‘enablement 

requirement’’); and (3) the best mode contemplated by the inventor 

of carrying out the invention.53 The disclosures required of an applicant are part of the important tradeoff that underlies the patent 

laws: the grant of a limited-term monopoly in exchange for disclosure of the invention. 

Under current law, the defense of patent invalidity is available 

for failure to comply with any requirement of § 112 (specification) 

or § 251 (reissued patents). Further, a defendant in patent litigation may also allege an intentional nondisclosure of the best mode, 

with intent to deceive the Office, as a basis for an unenforceability 

defense. Many have argued in recent years that the best mode requirement, which is unique to American patent law, is counterproductive.54 They argue that challenges to patents based on best 

mode are inherently subjective and not relevant by the time the 

patent is in litigation, because the best mode contemplated at the 

time of the invention may not be the best mode for practicing or 

using the invention years later. 

In response to these concerns, the Act includes a provision that 

eliminates best mode as a basis for both invalidity and unenforceability defenses under § 282; other defenses are unaffected. 

Marking 

a) Virtual Marking 

In general, for patented ‘‘articles,’’ a patent holder must give an 

alleged infringer notice of the claimed infringement, and the infringer must continue to infringe, before the patent holder may succeed in a suit for damages.55 Actual notice requires the affirmative 

communication of infringement to the defendant, which may include the filing of a lawsuit. Constructive notice is possible by 

‘‘marking’’ any patented article that the patent holder (or its licensee) makes, uses, sells or imports.56 Failure to appropriately 

mark an article can preclude the recovery of damages until notice 

is effective. 

The Act permits patent holders to ‘‘virtually mark’’ a product by 

providing the address of a publicly available website that associates the patented article with the number of the patent. The burden will remain on the patent holder to demonstrate that the 

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ducers of products that include technology on which a patent issues 

after the product is on the market, and will facilitate effective 

marking on smaller products. 

b) False marking 

The Federal Circuit’s recent decision in Forest Group, Inc. v. Bon 

Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), which held that section 

292’s $500 fine is assessed for each product that is falsely marked, 

has created a surge in false-marking qui tam litigation. Though one 

might assume that section 292 actions are targeted at parties that 

assert fictitious patents in order to deter competitors, such a scenario is almost wholly unknown to false-marking litigation. Falsemarking suits are almost always based on allegations that a valid 

patent that did cover the product has expired, but the manufacturer continued to sell products stamped with the patent; or that 

an existing patent used to mark products is invalid or unenforceable; or that an existing and valid patent’s claims should not be 

construed to cover the product in question. 

Indeed, a recent survey of such suits found that a large majority 

involved valid patents that covered the products in question but 

had simply expired. For many products, it is difficult and expensive 

to change a mold or other means by which a product is marked as 

patented, and marked products continue to circulate in commerce 

for some period after the patent expires. It is doubtful that the 

Congress that originally enacted this section anticipated that it 

would force manufacturers to immediately remove marked products 

from commerce once the patent expired, given that the expense to 

manufacturers of doing so will generally greatly outweigh any conceivable harm of allowing such products to continue to circulate in 

commerce. 

To address the recent surge in litigation, the bill replaces the qui 

tam remedy for false marking with a new action that allows a 

party that has suffered a competitive injury as a result of such 

marking to seek compensatory damages. The United States would 

be allowed to seek the $500-per-article fine, and competitors may 

recover in relation to actual injuries that they have suffered as a 

result of false marking, but the bill would eliminate litigation 

brought by unrelated, private third parties. 

Advice of Counsel 

The Act includes a new provision that bars courts and juries 

from drawing an adverse inference from an accused infringer’s failure to obtain opinion of counsel as to infringement or his failure 

to waive privilege and disclose such an opinion. Section 298 of title 

35 is designed to protect attorney-client privilege and to reduce 

pressure on accused infringers to obtain opinions of counsel for litigation purposes. It reflects a policy choice that the probative value 

of this type of evidence is outweighed by the harm that coercing a 

waiver of attorney-client privilege inflicts on the attorney-client relationship. Section 298 applies to findings of both willfulness and 

intent to induce infringement—and thus legislatively abrogates the 

Federal Circuit’s decision in Broadcom Corp. v. Qualcomm Inc., 543 

F.3d 683, 699 (Fed. Cir. 2008). 


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57 28 USC § 1338. 58 28 USC § 1295. 59 Holmes Group, Inc., v. Vornado Air Circulation Systems, Inc. 535 U.S. 826 (2002). 60 H. Rep. 109–405. 

Transitional program for covered business method patents 

A number of patent observers believe the issuance of poor business-method patents during the late 1990’s through the early 

2000’s led to the patent ‘‘troll’’ lawsuits that compelled the Committee to launch the patent reform project 6 years ago. At the time, 

the USPTO lacked a sufficient number of examiners with expertise 

in the relevant art area. Compounding this problem, there was a 

dearth of available prior art to assist examiners as they reviewed 

business method applications. Critics also note that most countries 

do not grant patents for business methods. 

The Act responds to the problem by creating a transitional program 1 year after enactment of the bill to implement a provisional 

post-grant proceeding for review of the validity of any business 

method patent. In contrast to the era of the late 1990’s-early 

2000’s, examiners will review the best prior art available. A petition to initiate a review will not be granted unless the petitioner 

is first sued for infringement or is accused of infringement. The 

program otherwise generally functions on the same terms as other 

post-grant proceedings initiated pursuant to the bill. Any party 

may request a stay of a civil action if a related post-grant proceeding is granted. The program sunsets after 10 years, which ensures that patent holders cannot delay filing a lawsuit over a shorter time period to avoid reevaluation under the transitional program. 

Jurisdictional and procedural matters 

a) State court jurisdiction and the US Court of Appeals for 

the Federal Circuit 

The US district courts area given original jurisdiction to hear 

patent cases,57 while the US Court of Appeals for the Federal Circuit adjudicates all patent appeals.58 The Supreme Court ruled in 

2002,59 however, that patent counterclaims do not give the Federal 

Circuit appellate jurisdiction over a case. 

The Act clarifies the jurisdiction of the US district courts and 

stipulates that the US Court of Appeals for the Federal Circuit has 

jurisdiction over appeals involving compulsory patent counterclaims. The legislative history of this provision, which we reaffirm 

and adopt as our own, appears in the Committee Report accompanying H.R. 2955 from the 109th Congress,60 which the Committee reported favorably to the House on April 5, 2006. 

b) Joinder 

The Act also addresses problems occasioned by the joinder of defendants (sometimes numbering in the dozens) who have tenuous 

connections to the underlying disputes in patent infringement 

suits. 

The Act amends chapter 29 of the Patent Act by creating a new 

§ 299 that addresses joinder under Rule 20 and consolidation of 

trials under Rule 42. Pursuant to the provision, parties who are accused infringers in most patent suits may be joined as defendants 


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61Section 299 legislatively abrogates the construction of Rule 20(a) adopted in MyMail, Ltd. 

v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004); Sprint Communications Co. v. 

Theglobe.com, Inc., 233 F.R.D. 615 (D. Kan. 2006); Adrain v. Genetec Inc., 2009 WL3063414 

(E.D. Tex. September 22, 2009); Better Educ. Inc. v. Einstruction Corp., 2010 WL 918307 (E.D. 

Tex. March 10, 2010); Mannatech, Inc. v. Country Life, LLC, 2010 WL 2944574 (N.D. Tex. July 

26, 2010); Alford Safety Services, Inc., v. Hot-Hed, Inc., 2010 WL 3418233 (E.D. La. August 24, 

2010); and Eolas Technologies, Inc. v. Adobe Systems, Inc., 2010 WL 3835762 (E.D. Tex. September 28, 2010)—effectively conforming these courts’ jurisprudence to that followed by a majority of jurisdictions. See generally Rudd v. Lux Products Corp., 2011 WL 148052 (N.D. Ill. January 12, 2011). 

or counterclaim defendants only if: (1) relief is asserted against the 

parties, jointly, severally, or in the alternative, arising out of the 

same transaction regarding the manufacture, use, or importation of 

the accused product or process; and (2) questions of fact common 

to all of the defendants will arise in the action. New § 299 also 

clarifies that joinder will not be available if it based solely on allegations that a defendant has infringed the patent(s) in question.61

Technical amendments 

The Act contains technical amendments to improve the organization of the patent statute. 

Travel expenses and payment of administrative judges 

The USPTO Director is authorized to conduct programs or exchanges pertaining to intellectual property law and protection ‘‘domestically and throughout the world.’’ The House bill clarifies that 

this authority includes expending funds to cover the subsistence 

and travel expenses of non-Federal employees who attend these 

programs. 

The House bill also clarifies that the Director may fix the pay for 

administrative patent judges and administrative trademark judges 

under the new Patent Trial and Appeal Board set forth in Section 

6 of the bill. 

Patent and Trademark Office funding 

The USPTO is a fee-funded agency. The revenue it collects from 

fees imposed on inventors and trademark filers is deposited in a 

special USPTO appropriations account in the Treasury. To obtain 

funding for its operations, the agency must request the revenue 

back from congressional appropriators. Since the early 1990’s, however, more than $800 million has been diverted from the agency 

and spent on non-USPTO initiatives. 

The Committee believes the USPTO could operate more efficiently and productively if the agency had full access to all of its 

fee-generated revenue. The House bill therefore creates a USPTO 

revolving fund within the Treasury that allows the agency to keep 

all of the funds it raises until expended. 

The provision also requires the Director to submit an annual 

spending plan as well as an annual year-end report to the House 

and Senate Appropriations and Judiciary Committees. 

Satellite offices 

The USPTO is conducting a pilot to create and operate a new 

satellite office located in Detroit. The bill requires the Director to 

establish three other satellite offices within a 3-year window, subject to available resources. The legislation includes criteria that 

must be invoked when selecting the new sites. 


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62The Medicines Co. v. Kappos, et. al., 10–CV–286 (E.D. Va. August 3, 2010). 

Designation of Detroit satellite office 

The House and Senate bills contain a provision that designates 

the PTO satellite office in Detroit as the ‘‘Elijah J. McCoy United 

States Patent and Trademark Office.’’ Elijah McCoy was an African-Canadian inventor who spent much of his life in Michigan and 

earned 57 US patents. His work on an automatic lubricator to oil 

railroad steam engines gave rise to the expression, ‘‘the real 

McCoy.’’ 

Patent Ombudsman Program for small business concerns 

The Act requires the USPTO Director to establish a Patent Ombudsman Program to provide support and services regarding patent 

filings to small business concerns. The authorization is subject to 

available resources. 

Priority examination for technologies important to American competitiveness 

The Act stipulates that the USPTO may promulgate regulations, 

not inconsistent with law, that prioritize examination of applications for products, processes, or technologies that are important to 

the national economy or national competitiveness. This may be 

done without recovering the aggregate extra cost of providing the 

prioritization. 

Calculation of 60-day period for application of patent term extension 

The USPTO has inconsistently applied ‘‘counting’’ rules that are 

imposed on patent holders who must submit documents to the 

agency within statutory time periods for consideration of additional 

patent term under § 156 of the Patent Act. The Act clarifies that 

the agency should impose a ‘‘business-day’’ construction for application to § 156, consistent with recent case law on the matter 62. 

Study on implementation 

The Act requires the USPTO Director to conduct a study regarding the implementation of the legislation and on such other aspects 

of Federal patent policies and practices with respect to patent 

rights, innovation in the United States, competitiveness of US markets, access by small business to capital and investment, and such 

other issues as the Director deems appropriate. The study must be 

completed within 4 years and the results submitted to the House 

and Senate Committees on the Judiciary. 

Pro bono program 

The Committee acknowledges the importance of individuals and 

small businesses to the patent system and our national culture of 

innovation. Consistent with this sentiment, the Act requires the 

USPTO Director to support intellectual property law associations 

across the United States to establish pro bono programs to assist 

under-resourced independent inventors and businesses. 


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Effective date 

Except as otherwise provided, the provisions of the bill take effect 1 year following the date of enactment and shall apply to any 

patent issued on or after that date. 

Budgetary effects 

The House bill retains a Senate provision that references a CBO 

PAYGO score in The Congressional Record. 

Hearings 

The Committee’s Subcommittee on Intellectual Property, Competition, and the Internet held 1 day of hearings on H.R. 1249. The 

hearing took place on March 30, 2011. Testimony was received 

from the Honorable David Kappos, Under Secretary of Commerce 

for Intellectual Property and Director of the United States Patent 

and Trademark Office; Steve Bartlett, President and CEO of The 

Financial Services Roundtable; Steven Miller, President and General Counsel (Intellectual Property) for Procter & Gamble; Mark 

Chandler, Senior Vice President, General Counsel, and Secretary 

for Cisco; and John Vaughn, Executive Vice President of the Association of American Universities. 

The Subcommittee also conducted three separate but related 

hearings on January 25, 2011 (‘‘How an Improved US Patent and 

Trademark Office Can Create Jobs,’’ Serial No. 112–6), February 

11, 2011 (‘‘Crossing the Finish Line on Patent Reform—What Can 

and Should be Done,’’ Serial No. 112–8), and March 10, 2011 (‘‘Review of Recent Judicial Decisions on Patent Law,’’ Serial No. 112– 

20). 

Given that the bill is a 6-year work in progress, the legislative 

record should also reflect that the Subcommittee conducted related 

hearings on patent reform in the 109th through 111th Congresses. 

These hearings include the following: ‘‘H.R. 2795, the ‘Patent Reform Act of 2005’’’ (June 19, 2005); ‘‘Committee Print Regarding 

Patent Quality Improvement (Part I)’’ (April 20, 2005, Serial No. 

109–11); ‘‘Committee Print Regarding Patent Quality Improvement 

(Part II)’’ (April 28, 2005, Serial No. 109–11); ‘‘Review of US Patent 

and Trademark Office Operations’’ (September 8, 2005, Serial No. 

109–48); ‘‘Patent Quality Enhancement in the Information-Based 

Economy’’ (April 5, 2006, Serial No. 109–99); ‘‘Patent Harmonization’’ (April 26, 2006, Serial No. 109–100); ‘‘Patent Trolls: Fact or 

Fiction?’’ (June 15, 2006, Serial No. 109–104); ‘‘Oversight Hearing 

on the US Patent and Trademark Office’’ (February 27, 2008, Serial No. 110–115); ‘‘The ‘Patent Reform Act of 2007’’’ (April 26, 

2007, Serial No. 110–65); ‘‘H.R. 1260, The ‘Patent Reform Act of 

2009’’’ (April 30, 2009, Serial No. 111–92); and ‘‘The US Patent and 

Trademark Office’’ (May 5, 2010, Serial No. 111–135). 

Finally, the United States Senate Committee on the Judiciary 

devoted substantial process to patent reform over the same time 

period. Beginning in 2005, the Senate Judiciary Committee conducted eight hearings on the subject and reported separate bills in 

the 110th (S. 1145), 111th (S. 515), and 112th (S. 23) Congresses. 

The full Senate passed S. 23 on March 8, 2011, by a vote of 95– 

5. H.R. 1249 is substantially similar to S. 23. 


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Committee Consideration 

On April 14, 2011, the Committee met in open session and ordered the bill H.R. 1249 favorably reported with an amendment, by 

a rollcall vote of 32 to 3, a quorum being present. 

Committee Votes 

In compliance with clause 3(b) of rule XIII of the Rules of the 

House of Representatives, the Committee advises that the following 

rollcall votes occurred during the Committee’s consideration of H.R. 

1249. 

1. Amendment #7 to the Manager’s Amendment, offered by Ms. 

Lofgren. The amendment ties the commencement of an inter partes 

proceeding to a claims-construction order following a ‘‘Markman’’ 

hearing. Failed by a rollcall of 14–17. 

ROLLCALL NO. 1 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ...........................................................................................................

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ...................................................................................................... X 

Mr. Jordan .........................................................................................................

Mr. Poe ..............................................................................................................

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin ......................................................................................................... X 

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ........................................................................................................... X 

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................ X 

Ms. Waters ........................................................................................................ X 

Mr. Cohen .......................................................................................................... X 

Mr. Johnson ....................................................................................................... X 

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ......................................................................................................

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 14 17 

2. Amendment #11 to the Manager’s amendment, offered by Ms. 

Chu. The amendment strikes the inter partes review threshold and 


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retains the lower threshold of a ‘‘substantial new questions of patentability.’’ Failed by a rollcall of 7–21. 

ROLLCALL NO. 2 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ......................................................................................................

Mr. Jordan .........................................................................................................

Mr. Poe ..............................................................................................................

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin .........................................................................................................

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ...........................................................................................................

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................

Ms. Waters ........................................................................................................ X 

Mr. Cohen ..........................................................................................................

Mr. Johnson ....................................................................................................... X 

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ......................................................................................................

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 7 21 

3. Manager’s amendment as amended to H.R. 1249. The manager’s amendment revises the inter partes review proceeding, clarifies the application of the prior-user defense, and makes other improvements to H.R. 1249. Adopted by a rollcall of 29–2. 

ROLLCALL NO. 3 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa .............................................................................................................

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 


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ROLLCALL NO. 3—Continued 

Ayes Nays Present 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ......................................................................................................

Mr. Jordan .........................................................................................................

Mr. Poe .............................................................................................................. X 

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin .........................................................................................................

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ...........................................................................................................

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................

Ms. Waters ........................................................................................................ X 

Mr. Cohen .......................................................................................................... X 

Mr. Johnson ....................................................................................................... X 

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................ X 

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ...................................................................................................... X 

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 29 2 

4. Amendment #8 to H.R. 1249, offered by Mr. Goodlatte. The 

amendment precludes the use of supplemental examination by any 

patent holder who attempts to practice or practices fraud on the 

USPTO. The amendment passed by a rollcall of 21–9, with one vote 

recorded as ‘‘present’’ and one vote recorded as ‘‘pass.’’ 

ROLLCALL NO. 4 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ......................................................................................................

Mr. Jordan .........................................................................................................

Mr. Poe ..............................................................................................................

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin ......................................................................................................... X 

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 


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ROLLCALL NO. 4—Continued 

Ayes Nays Present 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ........................................................................................................... X 

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................ X 

Ms. Waters ........................................................................................................ X 

Mr. Cohen .......................................................................................................... Pass 

Mr. Johnson ....................................................................................................... X 

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ......................................................................................................

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 21 9 

5. Amendment #15 to H.R. 1249, offered by Ms. Lofgren. The 

amendment strikes the supplemental examination provision from 

the bill. Failed by a rollcall of 8–21. 

ROLLCALL NO. 5 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ......................................................................................

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence ..........................................................................................................

Mr. Forbes .........................................................................................................

Mr. King ............................................................................................................

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ......................................................................................................

Mr. Jordan .........................................................................................................

Mr. Poe ..............................................................................................................

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin ......................................................................................................... X 

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ........................................................................................................... X 

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................ X 

Ms. Waters ........................................................................................................

Mr. Cohen .......................................................................................................... X 

Mr. Johnson ....................................................................................................... X 

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................ X 

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ...................................................................................................... X 


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ROLLCALL NO. 5—Continued 

Ayes Nays Present 

Ms. Wasserman Schultz .................................................................................... X 

Total ................................................................................................ 8 21 

6. Amendment #1 to H.R. 1249, offered by Mr. Conyers. The 

amendment limits the application of the business method patent 

program. Failed by a rollcall of 11–24. 

ROLLCALL NO. 6 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ...................................................................................................... X 

Mr. Jordan ......................................................................................................... X 

Mr. Poe .............................................................................................................. X 

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin ......................................................................................................... X 

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ........................................................................................................... X 

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................ X 

Ms. Waters ........................................................................................................

Mr. Cohen .......................................................................................................... X 

Mr. Johnson .......................................................................................................

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................ X 

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ...................................................................................................... X 

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 11 24 

7. Reporting H.R. 1249 as amended. The bill bolsters funding for 

the USPTO, switches the United States to a first-to-file patent system, and makes further improvements to the Patent Act. Reported 

by a rollcall of 32–3. 

ROLLCALL NO. 7 

Ayes Nays Present 

Mr. Smith, Chairman ........................................................................................ X 


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ROLLCALL NO. 7—Continued 

Ayes Nays Present 

Mr. Sensenbrenner, Jr. ...................................................................................... X 

Mr. Coble ........................................................................................................... X 

Mr. Gallegly ....................................................................................................... X 

Mr. Goodlatte .................................................................................................... X 

Mr. Lungren ....................................................................................................... X 

Mr. Chabot ........................................................................................................ X 

Mr. Issa ............................................................................................................. X 

Mr. Pence .......................................................................................................... X 

Mr. Forbes ......................................................................................................... X 

Mr. King ............................................................................................................ X 

Mr. Franks ......................................................................................................... X 

Mr. Gohmert ...................................................................................................... X 

Mr. Jordan ......................................................................................................... X 

Mr. Poe .............................................................................................................. X 

Mr. Chaffetz ...................................................................................................... X 

Mr. Griffin ......................................................................................................... X 

Mr. Marino ......................................................................................................... X 

Mr. Gowdy ......................................................................................................... X 

Mr. Ross ............................................................................................................ X 

Ms. Adams ........................................................................................................ X 

Mr. Quayle ......................................................................................................... X 

Mr. Conyers, Jr., Ranking Member .................................................................... X 

Mr. Berman ....................................................................................................... X 

Mr. Nadler ......................................................................................................... X 

Mr. Scott ........................................................................................................... X 

Mr. Watt ............................................................................................................ X 

Ms. Lofgren ....................................................................................................... X 

Ms. Jackson Lee ................................................................................................ X 

Ms. Waters ........................................................................................................

Mr. Cohen .......................................................................................................... X 

Mr. Johnson .......................................................................................................

Mr. Pierluisi ....................................................................................................... X 

Mr. Quigley ........................................................................................................ X 

Ms. Chu ............................................................................................................. X 

Mr. Deutch ........................................................................................................ X 

Ms. Sa ́nchez ...................................................................................................... X 

Ms. Wasserman Schultz ....................................................................................

Total ................................................................................................ 32 3 

Committee Oversight Findings 

In compliance with clause 3(c)(1) of rule XIII of the Rules of the 

House of Representatives, the Committee advises that the findings 

and recommendations of the Committee, based on oversight activities under clause 2(b)(1) of rule X of the Rules of the House of Representatives, are incorporated in the descriptive portions of this report. 

New Budget Authority and Tax Expenditures 

Clause 3(c)(2) of rule XIII of the Rules of the House of Representatives is inapplicable because this legislation does not provide new 

budgetary authority or increased tax expenditures. 

Congressional Budget Office Cost Estimate 

In compliance with clause 3(c)(3) of rule XIII of the Rules of the 

House of Representatives, the Committee sets forth, with respect to 

the bill, H.R. 1249, the following estimate and comparison prepared 


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by the Director of the Congressional Budget Office under section 

402 of the Congressional Budget Act of 1974: 

U.S. CONGRESS, 

CONGRESSIONAL BUDGET OFFICE, 

Washington, DC, May 26, 2011. 

Hon. LAMAR SMITH, CHAIRMAN, 

Committee on the Judiciary, 

House of Representatives, Washington, DC. 

DEAR MR. CHAIRMAN: The Congressional Budget Office has prepared the enclosed cost estimate for H.R. 1249, the ‘‘America Invents Act.’’ 

If you wish further details on this estimate, we will be pleased 

to provide them. The CBO staff contact is Susan Willie. 

Sincerely, 

DOUGLAS W. ELMENDORF, 

DIRECTOR. 

Enclosure. 

cc: Honorable John Conyers, Jr. 

Ranking Member 

H.R. 1249—America Invents Act. 

SUMMARY

H.R. 1249 would amend the law that governs how the Patent and 

Trademark Office (PTO) awards patents. Among other things, the 

bill would alter the rule that prioritizes the award of a patent from 

the ‘‘first to invent’’ to the ‘‘first inventor to file.’’ As a result, PTO 

would change certain procedures it follows in awarding patents. 

The bill also would establish new review procedures that would 

allow individuals to challenge the validity of a patent and would 

modify PTO’s authority to collect and spend fees. 

CBO estimates that enacting the bill would reduce net direct spending by $725 million and revenues by $8 million over the 

2011–2021 period. Most of the change in direct spending would result from providing PTO with permanent authority to collect and 

spend certain fees. In total, the changes would decrease budget 

deficits by $717 million over the 2011–2021 period. Because enacting the legislation would affect direct spending and revenues, payas-you-go procedures apply. CBO estimates that implementing H.R. 

1249 would have a discretionary cost of $446 million over the 

2011–2016 period, assuming appropriation of the necessary 

amounts. 

H.R. 1249 would impose both intergovernmental and private-sector mandates, as defined in the Unfunded Mandates Reform Act 

(UMRA), on certain patent applicants and other entities. The bill 

also would preempt the authority of state courts to hear certain 

patent cases. Based on information from PTO, CBO estimates that 

the costs of complying with those mandates would exceed the annual threshold for private-sector mandates established in UMRA 

($142 million in 2011, adjusted annually for inflation) in each of 

the first 5 years the mandate is in effect. CBO estimates that the 

cost to state, local, and tribal governments would fall below the annual threshold established in UMRA ($71 million in 2011, adjusted 

annually for inflation). 


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ESTIMATED COST TO THE FEDERAL GOVERNMENT

The estimated budgetary impact of H.R. 1249 is shown in the following table. The costs of this legislation fall within budget function 370 (commerce and housing credit). 


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By Fiscal Year, in Millions of Dollars 

2011 2012 2013 2014 2015 2016 2017 2018 2019 2020 2021 2011–2016 2011–2021 

CHANGES IN DIRECT SPENDING 

Reclassification of PTO Spending 

Estimated Budget Authority 0 2,266 2,573 2,784 2,907 3,017 3,143 3,262 3,375 3,472 3,593 13,547 30,392 Estimated Outlays 0 1,869 2,486 2,743 2,883 2,995 3,119 3,238 3,353 3,453 3,571 12,976 29,710 

New and Amended PTO Processes 

Estimated Budget Authority 0 43 92 99 113 123 129 134 141 149 157 470 1,180 Estimated Outlays 0 35 83 97 110 121 127 134 140 147 155 446 1,149 

PTO Administrative Costs 

Estimated Budget Authority 0 8 7 3 0 0 0 0 0 0 0 18 18 Estimated Outlays 0 8 7 3 0 0 0 0 0 0 0 18 18 

Reclassification of PTO Collections 

Estimated Budget Authority 0 –2,318 –2,672 –2,886 –3,019 –3,140 –3,272 –3,396 –3,516 –3,620 –3,750 –14,035 –31,589 Estimated Outlays 0 –2,318 –2,672 –2,886 –3,019 –3,140 –3,272 –3,396 –3,516 –3,620 –3,750 –14,035 –31,589 

Electronic Filing Incentive 

Estimated Budget Authority 0 –3 3 –2 –2 –2 –1 –1 –1 –1 –1 –12 –17 Estimated Outlays 0 –3 –3 –2 –2 –2 –1 –1 –1 –1 –1 –12 –17 

Funding Agreements 

Estimated Budget Authority * 1 1 * * * * * * ............ * 2 4 Estimated Outlays * 1 1 * * * * * * * * 2 4 Total Changes in Direct Spending 

Estimated Budget Authority * –3 –2 –2 –1 –2 –1 –1 –1 0 0 –10 –12 Estimated Outlays * –408 –98 –45 –28 –26 –27 –25 –24 –21 –25 –605 –725 

CHANGES IN REVENUES 

Estimated Revenues –1 –3 –2 –1 * * * * * * * –7 –8 

NET INCREASE OR DECREASE (–) IN THE DEFICIT FROM CHANGES IN DIRECT SPENDING AND RECEIPTS 

Impact on Deficit 1 –405 –96 –44 –28 –26 –27 –25 –24 –21 –25 –598 –717 

CHANGES IN SPENDING SUBJECT TO APPROPRIATION 

Estimated Authorization Level 0 –76 –37 5 44 76 n.a. n.a. n.a. n.a. n.a. 13 n.a. Estimated Outlays 0 294 –8 16 55 88 n.a. n.a. n.a. n.a. n.a. 446 n.a. 

Notes: Components may not sum to totals because of rounding. Negative numbers denote reductions in spending, revenues, and the deficit. PTO = Patent and Trademark Office; * = between –$500,000 and $500,000; n.a. = not applicable. 


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BASIS OF ESTIMATE

For this estimate, CBO assumes that the bill will be enacted 

near the end of fiscal year 2011, the necessary amounts will be appropriated each year, and spending will follow historical patterns 

for the PTO. Further, CBO assumes that most of the bill’s provisions would be effective 1 year after the date of enactment. 

H.R. 1249 would change the basis that PTO uses to award patents. Under current law, where two or more persons independently 

develop identical or similar inventions at approximately the same 

time, the patent is awarded to the inventor PTO established to be 

first through PTO’s examination process. H.R. 1249 would direct 

PTO, under the same circumstances, to award the patent to the inventor whose application to PTO had the earliest filing date. 

H.R. 1249 also would provide PTO with permanent authority to 

collect and spend certain fees, shifting collections and spending out 

of the PTO appropriation account and into a revolving fund. Further, H.R. 1249 would direct PTO’s collections to be recorded in the 

budget as offsetting receipts, that is, offsets to direct spending. 

Under current law, PTO is authorized to collect fees from the public for specific activities related to processing applications for patents and trademarks. The agency assesses and collects fees for a 

number of different activities, and the rate for each is set in law. 

Currently, authority to collect and spend those fees is provided in 

annual appropriation acts, and the fees are classified as offsets to 

the agency’s discretionary spending levels. For 2011, PTO received 

a gross appropriation of $2,016 million, and CBO estimates the 

agency will collect fees of $2,198 million that year to more than offset that appropriation. 

Direct Spending 

Based on information from PTO and other agencies, CBO estimates that enacting H.R. 1249 would reduce net direct spending by 

about $0.7 billion over the 2012–2021 period. Provisions of the bill 

that would reclassify PTO spending and broaden the agency’s 

workload would increase spending by $30.9 billion over the 2012– 

2021 period. Other provisions of the bill would decrease direct 

spending (by changing the amount of collections classified as offsets 

to direct spending) by $31.6 billion over the same period. 

Reclassification of PTO Spending. Because PTO’s spending 

would no longer be controlled by the availability of appropriated 

funds, H.R. 1249 would make all of the agency’s fee collections permanently available for spending. Based on historical growth in the 

number of applications filed for patents and trademarks and historical spending patterns, we estimate that enacting those provisions 

of H.R. 1249 would increase gross direct spending by about $29.7 

billion over the 2012–2021 period. 

New and Amended PTO Processes. H.R. 1249 would establish 

two new procedures to review or update patents and amend one 

process already available under current law to review existing patents. PTO would be authorized to collect fees to offset much of the 

costs associated with those activities. Based on information from 

PTO, CBO estimates that those new and amended processes, taken 

together, would increase direct spending by $1.1 billion over the 

2012–2021 period. 


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Specifically, the bill would: 

• Establish a new procedure, known as post-grant review, to 

review the validity of a patent. This option generally would 

be available within 12 months of the date the patent was 

issued and would take place in a court-like proceeding in 

which both the challenger and the owner of the patent 

present information regarding the validity of a patent. CBO 

estimates that implementing this new process would increase direct spending by $140 million over the 2012–2021 

period. 

• Establish a new procedure that would allow patent holders 

to request that PTO review an existing patent to consider, 

reconsider, or correct information believed to be relevant to 

the patent. Should this supplemental review raise a new 

question of patentability, PTO would then reexamine the 

patent. CBO estimates that the supplemental reviews and 

the additional reexaminations that would result under the 

bill would increase direct spending by $758 million over the 

2012–2021 period. 

• Amend a process already existing under current law, inter 

partes reexamination, to expand the universe of patents that 

could be challenged through this proceeding but also limit 

the time period during which such a challenge could be 

raised. CBO estimates that implementing the changes to 

inter partes reexamination procedures would increase direct 

spending by $251 million over the 2012–2021 period. 

PTO Administrative Costs. As a result of the switch to a 

‘‘first-to-file’’ principle for granting patents, PTO would incur additional administrative costs, including updating its information technology systems, training staff, and preparing several reports for the 

Congress. Further, the bill would require PTO to establish at least 

three additional satellite offices in different regions throughout the 

country. CBO estimates that those changes would cost $18 million 

over the 2012–2021 period. 

Reclassification of PTO Fees. As noted above, the bill would 

permanently authorize PTO to set and collect fees and would direct 

those collections to be recorded in the budget as offsetting receipts 

(credits against direct spending). Further, the bill would amend 

current law to permanently increase fee rates that have been temporarily authorized in annual appropriation acts since 2005 and 

authorize PTO, after specified public notice and comment periods, 

to set fee rates at levels sufficient to cover the agency’s operating 

costs. 

Based on information from PTO and historical patterns of collections, CBO estimates that enacting H.R. 1249 would result in collections of $31.6 billion over the 2012–2021 period. Most of that 

amount, about $30.5 billion, would stem from the reclassification of 

the fees from offsets to discretionary spending to offsetting receipts 

and from PTO’s new authority to set fees to recover costs; the balance, about $1.1 billion, would result from increases in fee collections related to the increases in the agency’s workload. 

Electronic Filing Incentive. In addition to fees PTO collects 

under current law, H.R. 1249 would establish a new fee that would 


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be charged to patent applicants that do not use electronic means 

to file an application. Based on information from PTO, CBO estimates that about 5,000 paper applications, on average, would be 

filed per year, generating collections of about $17 million over the 

2012–2021 period. The bill would direct those collections to be recorded as offsets to direct spending and would make them unavailable for spending by PTO. 

Funding Agreements. H.R. 1249 would change the amount of 

royalties or income earned by certain contractors that is required 

to be remitted to the federal government. Under current law, funding agreements between the federal government and contractors 

operating government-owned, contractor-operated (GOCO) laboratories allow contractors to retain, up to a certain threshold, all royalty and other income earned from patents received as a result of 

work performed under the contract. Beyond that, 75 percent of royalties or income earned above the threshold must be returned to 

the U.S. Treasury. The royalties returned to the Treasury are recorded as offsetting receipts. H.R. 1249 would reduce the amount 

deposited into the Treasury to 15 percent. 

Currently, only one entity operating a GOCO laboratory returns 

royalties and license fees to the federal government. Over the past 

several years, the Ames Laboratory, operated by Iowa State University, has returned to the Treasury approximately $1 million a 

year in license fees earned from patents awarded under its contract 

with the federal government. CBO estimates that reducing the percentage of income that is returned to the Treasury would reduce 

offsetting receipts (and thus increase direct spending) by about $4 

million over the 2011–2021 period. 

REVENUES

H.R. 1249 would change how certain patent cases, known as 

false marking cases, are handled by the court system. False marking cases are brought when a defendant is accused of incorrectly 

claiming a product’s right to certain patent protection. Under current law, such cases can be brought by any person on behalf of the 

government; the government receives half of the value of any fines 

or amount paid as part of a court-mediated settlement, with the 

person bringing the case receiving the other. H.R. 1249 would permit competitors to recover damages for the competitive harm 

caused by a defendant’s false marking but would eliminate the option for individuals to seek fines on behalf of the government by 

stating that only the United States can sue for a civil penalty. H.R. 

1249 would further specify that a defendant would not be liable for 

a false marking suit if the patent involved either expired within 3 

years of the alleged false marking or if the word ’expired’ were 

added to the claim of patent protection. 

Information from the Department of Justice (DOJ) indicates that 

in 2010, the government collected fines (recorded as revenues) of 

about $3 million from false marking cases. Under current law, CBO 

expects that a diminishing number of new cases will be filed 

through 2011 and beyond, as courts define stricter standards for 

proving ’intent to deceive’ on the part of the defendant, and as companies rectify their patent marking procedures in response to the 

risk of litigation. Based on information from DOJ, CBO estimates 

that about a third of currently pending cases will eventually be setVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00069 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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tled in court; we expect the rest to be dismissed with no monetary 

settlement. Thus, CBO estimates that under current law, by 2014, 

federal revenues from those cases will drop to less than $500,000 

a year. 

By changing both who can litigate and their incentives for doing 

so, H.R. 1249 would significantly reduce both the pending caseload 

and the number of future cases filed. Therefore, CBO estimates 

that enacting the bill would reduce federal revenues by $7 million 

over the 2011–2016 period and by $8 million over the 2011–2021 

period. 

Spending Subject to Appropriation 

H.R. 1249 would provide PTO with permanent authority to collect fees and spend those collections thus changing the budgetary 

classification of those fees and spending. Under that permanent authority, PTO fees would be recorded as offsetting receipts rather 

than as offsets to discretionary spending. As a result of the reclassification, CBO estimates that this provision would decrease discretionary spending by $10.4 billion and offsetting collections by about 

$10.8 billion over the 2012-2016 period. On net, CBO estimates 

that implementing this provision would increase net discretionary 

spending by $445 million over the 5-year period, assuming that appropriation actions consistent with H.R. 1249 are enacted. 

H.R. 1249 also would require the Small Business Administration 

to prepare a study of the effects on small businesses of eliminating 

the use of dates of invention for determining entitlement to a patent. The results of the study would be included in a report to the 

Congress due 1 year after enactment of the bill. In addition, H.R. 

1249 would require the Government Accountability Office to conduct a study on the implementation of the bill’s provisions by PTO; 

a report on the results of the study would be due 4 years after enactment of the bill. Based on information from the affected agencies, CBO estimates that those reporting requirements would cost 

$1 million over the 2012–2016 period, assuming availability of appropriated funds. 

PAY-AS-YOU-GO CONSIDERATIONS

The Statutory Pay-As-You-Go Act of 2010 establishes budget-reporting and enforcement procedures for legislation affecting direct 

spending or revenues. The net changes in outlays and revenues 

that are subject to those pay-as-you-go procedures are shown in the 

following table. 


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CBO Estimate of Pay-As-You-Go Effects for H.R. 1249 as ordered reported by the 

House Committee on the Judiciary on April 14, 2011 

By Fiscal Year, in Millions of Dollars 

2011 2012 2013 2014 2015 2016 2017 2018 2019 2020 2021 2011– 

2016 

2011– 

2021 

NET INCREASE OR DECREASE (–) IN THE DEFICIT 

Statutory Pay-AsYou-Go Impact 1 –405 –96 –44 –28 –26 –27 –25 –24 –21 –25 –598 –717 

Memorandum: 

Changes in 

Outlays 0 –408 –98 –45 –28 –26 –27 –25 –24 –21 –25 –605 –725 

Changes in 

Revenues –1 –3 –2 –1 0 0 0 0 0 0 0 –7 –8 

Note: Components may not sum to totals because of rounding. 

INTERGOVERNMENTAL AND PRIVATE-SECTOR IMPACT

H.R. 1249 would impose both intergovernmental and private-sector mandates, as defined in UMRA, on certain patent applicants 

and other entities. The bill also would preempt the authority of 

state courts to hear certain patent cases. Based on information 

from PTO, CBO estimates that the costs of complying with those 

mandates would exceed the annual threshold for private-sector 

mandates established in UMRA ($142 million in 2011, adjusted annually for inflation) in each of the first 5 years the mandate is in 

effect. CBO estimates that the costs to state, local, and tribal governments would fall below the annual threshold established in 

UMRA ($71 million in 2011, adjusted annually for inflation). 

Mandates That Apply to Both Public and Private Entities 

PTO fees. H.R. 1249 would impose a mandate on both public 

and private entities by allowing PTO to set or adjust certain fees 

and by permanently extending other fee increases that are set to 

expire at the end of fiscal year 2011. The requirement to pay those 

fees is a mandate because the federal government controls the patent and trademark systems, and no reasonable alternatives to the 

systems exist. 

Based on information from PTO, CBO estimates that the total 

cost to comply with the mandate would range from about $220 million in 2013 to about $350 million in 2017, with less than $1 million of those costs accruing to public entities and the rest accruing 

to private entities. 

Restricting Prior-Use Defense. H.R. 1249 would prohibit public and private entities from using the prior-use defense to patent 

infringement claims for business processes brought by a university 

or technology-transfer organization. Consequently, public and private entities that have been using business processes which are 

later patented by a university or technology-transfer organization 

would no longer be eligible to use those processes without permission from the patent holder. That restriction would be an intergovernmental and private-sector mandate. The cost of the mandate 

would be the cost to purchase a license from the patent holder, or 

the amount of net income the entity would lose as a result of no 

longer being able to use that patent commercially. Based on the 

small number of public entities that use business methods, CBO esVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00071 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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timates that the cost to comply with the mandate would be small 

for public entities. According to information from industry experts, 

the prior-use defense has never been asserted in a recorded case 

and therefore it is likely that the use of such a defense would be 

uncommon. Consequently, CBO estimates that the cost to comply 

with the mandate for private entities would probably be small. 

Mandate That Applies to Public Entities Only 

H.R. 1249 would preempt the authority of state courts to hear 

certain patent cases. That provision would be an intergovernmental 

mandate as defined in UMRA. While it would limit the authority 

of state courts, CBO estimates that it would impose no duty on 

states that would result in additional spending. 

Mandate That Applies to Private Entities Only 

The bill also would impose a mandate on patent applicants by 

prohibiting certain tax strategies from being patented. The prohibition would apply to any application pending on the date of enactment and any application submitted for such a patent after that 

date. CBO has no basis for estimating the net income that would 

be forgone by a patent applicant for not receiving such a patent. 

Therefore, the cost to private entities to comply with this mandate 

is uncertain. 

PREVIOUS CBO ESTIMATE

On March 8, 2011, CBO transmitted a pay-as-you-go estimate for 

S. 23, the America Invents Act, reflecting a number of amendments 

adopted prior to Senate passage of the bill. One amendment would 

provide permanent authority to PTO to collect and spend fees. CBO 

estimated that enacting S. 23 would reduce budget deficits by $750 

million over the 2011–2021 period. 

On March 1, 2011, CBO transmitted a cost estimate for S. 23, 

the Patent Reform Act of 2011, as ordered reported by the Senate 

Committee on the Judiciary on February 3, 2011. That version of 

the legislation would not provide permanent authority to PTO to 

collect and spend fees. CBO’s estimates of the House and Senate 

bills reflect those differences. The mandates contained in both the 

House and Senate bills are the same, except for the mandate regarding prior-use defense, which is only in H.R. 1249. 

ESTIMATE PREPARED BY: 

Federal Spending: Susan Willie 

Federal Revenue: Kalyani Parthasarathy 

Impact on State, Local, and Tribal Governments: Elizabeth Cove 

Delisle 

Impact on the Private Sector: Paige Piper/Bach 

ESTIMATE APPROVED BY: 

Theresa Gullo 

Deputy Assistant Director for Budget Analysis 

Frank Sammartino 

Assistant Director for Tax Analysis 


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Performance Goals and Objectives 

The Committee states that pursuant to clause 3(c)(4) of rule XIII 

of the Rules of the House of Representatives, H.R. 1249 modernizes 

US patent law to improve the operations of the US Patent and 

Trademark Office, inhibit frivolous patent lawsuits, protect the 

rights of all inventors, and spur innovation as a means to create 

American jobs and raise standards of living. 

Advisory on Earmarks 

In accordance with clause 9 of rule XXI of the Rules of the House 

of Representatives, H.R. 1249 does not contain any congressional 

earmarks, limited tax benefits, or limited tariff benefits as defined 

in clause 9(e), 9(f), or 9(g) of Rule XXI. 

Section-by-Section 

Section 1. Short title; table of contents. 

This Act may be cited as the ‘‘America Invents Act.’’ 

Section 2. Definitions. 

Section 2 defines the following terms: ‘‘Director,’’ ‘‘Office,’’ ‘‘Patent 

Public Advisory Committee,’’ ‘‘Trademark Act of 1946,’’ and ‘‘Trademark Public Advisory Committee’’. 

Section 3. First inventor to file. 

Subsection (a)—§ 100 is amended to include definitions for additional terms, including ‘‘effective filing date.’’ 

Subsection (b)—§ 102 is amended to make an invention’s priority 

date its effective filing date. This change moves the United States 

to the first-to-file system. New section 102(b) preserves the grace 

period, ensuring that during the year prior to filing, an invention 

will not be rendered unpatentable based on any of the inventor’s 

own disclosures, or any disclosure made by any party after the inventor has disclosed his invention to the public. Section 102(c) recodifies the CREATE Act, and section 102(d) defines the effective 

filing date of a patent or application that is cited as prior art to 

a claimed invention. 

Subsection (c)—§ 103 is amended consistent with moving to a 

first-to-file system. Existing subsection (a) is amended slightly; subsection (b) is deleted because it is no longer needed; subsection (c), 

which is the CREATE Act, has been moved to § 102. 

Subsection (d)—Repeals § 104 (Inventions Made Abroad). 

Subsection (e)—Repeals § 157 (Statutory Invention Registration). 

Subsection (f)—Amends § 120 related to filing dates to conform 

with the CREATE Act. 

Subsection (g)—Makes various conforming amendments. 

Subsections (h), (i) & (j)—Repeals interference proceeding and 

makes conforming changes to § 291. Amends § 135(a) and provides 

for a ‘‘derivation proceeding,’’ designed to determine the inventor 

with the right to file an application on a claimed invention. An applicant requesting a derivation proceeding must set forth the basis 

for finding that an earlier applicant derived the claimed invention 

and without authorization filed an application claiming such invention. The request must be filed within 1 year of the date of first 


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publication of an application for a claim that is substantially the 

same as the claimed invention. The Patent Trial and Appeal Board 

(the ‘‘Board’’) shall determine the right to patent and issue a final 

decision thereon. Decisions of the Board may be appealed to the 

Federal Circuit, or to district court pursuant to § 146. 

Subsection (k)—Paragraph (1) amends § 32 of the Patent Act 

(‘‘suspension or exclusion from practice’’) by placing time limitations on the commencement of a proceeding. Paragraph (2) imposes 

a reporting requirement on the Director regarding instances of misconduct before the agency and how they were addressed. 

Subsection (l)—Contains a provision for a study regarding firstto-file to be conducted by the Small Business Administration and 

the USPTO. 

Subsection (m)—Requires a study of prior user rights. 

Subsection (n)—Contains an effective date provision. 

Subsection (o)—Contains a study of patent litigation and its effect on the patent system. 

Subsection (p)—Sets forth the sense of Congress that the first-tofile system promotes the purposes of Article I, section 8, clause 8, 

of the US Constitution. 

Subsection (q)—Sets forth the sense of Congress that the first-tofile system promotes harmonization of the US and other patent 

systems. 

Section 4. Inventor’s oath or declaration. 

The section streamlines the requirement that the inventor submit an oath as part of a patent application, and makes it easier for 

patent owners to file applications. 

Subsection (a)—Section 115 is amended to permit an applicant to 

submit a substitute statement in lieu of the inventor’s oath or declaration in certain circumstances, including if the inventor is (i) unable to do so, or (ii) unwilling to do so and is under an obligation 

to assign the invention. A savings clause provides that failure to 

comply with the requirements of this section will not be a basis for 

invalidity or unenforceability of the patent if the failure is remedied by a supplemental and corrected statement. False substitute 

statements are subject to the same penalties as false oaths and 

declarations. 

Subsection (b)—Section 118 is amended to allow the person to 

whom the inventor has assigned (or is under an obligation to assign) the invention to file a patent application. A person who otherwise shows sufficient proprietary interest in the invention may file 

a patent application as an agent of the inventor to preserve the 

rights of the parties. 

Section 5. Defense to infringement based on earlier inventor. 

Section 5 amends § 273 of the Patent Act, which addresses prioruser rights, as follows: 

The prior-use defense may be asserted against any patent (not 

just methods), provided the person asserting the defense reduced 

the subject matter of the patent to practice and commercially used 

the subject matter at least 1 year before the effective filing date of 

the patent. However, the defense cannot be asserted if the subject 

matter was derived from the patent holder or persons in privity 

with the patent holder. Nor can the defense be asserted unless the 


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prior user both reduced the subject matter of the patent to practice 

and commercially used it at least 1 year before the effective filing 

date of the patent or the date that the patentee publicly disclosed 

the invention and invoked the § 102(b) grace period, whichever is 

earlier. 

Section 5 also clarifies that a person may not assert the defense 

if the subject matter of the patent on which the defense is based 

was developed pursuant to a funding agreement under Chapter 18 

of the Patent Act (patent rights in inventions made with Federal 

assistance) or by a university or a technology transfer organization 

affiliated with a university that did not receive private business 

funding in support of the patent’s development. 

Finally, Section 5 states that the defense may only be asserted 

by the person who performed or caused the performance of the acts 

necessary to establish the defense, as well as any other entity that 

controls, is controlled by, or is under common control with such 

person; and except for any transfer to the patent owner, the right 

to assert the defense cannot be licensed or assigned or transferred 

to another person except as an ancillary and subordinate part of 

a good faith assignment or transfer for other reasons of the entire 

enterprise or line of bsiness to which the defense relates. 

Section 6. Post-grant review proceedings. 

Subsections (a) and (d) enact new chapters 31 and 32, which create adjudicative systems of post-grant and inter partes review. The 

parallel sections of these new chapters are as follows: 

§§ 311 and 321. Inter partes review may be sought on the basis 

of patents and printed publications any time after a post-grant 

review is concluded or, if no such review is instituted, after the 

time for seeking such review has expired. Post-grant review 

may be sought on any invalidity ground during the first 12 

months after a patent is issue or reissued. 

§§ 312 and 322. Petitions for review shall explain the basis for 

seeking review, shall identify the petitioner’s real parties in interest and privies, and shall be made publicly available as soon 

as is practicable. 

§§ 313 and 323. Patent owners may file a response to a petition 

for reviewing explaining why a review should not be instituted. 

§§ 314 and 324. Inter partes review shall not be instituted unless the information in the petition and response shows that 

there is a reasonable likelihood that a claim would be found invalid. Post-grant review shall not be instituted unless the information presented in the petition, if not rebutted, shows that 

it is more likely than not that a claim would be found invalid, 

or the petition raises a novel or unsettled legal question that 

is important to other patents or applications. 

§§ 315 and 325. (a) Review may not be instituted if the petitioner has previously filed a civil action challenging the validity of the patent. The petitioner may, however, file a declaratory-judgment action challenging the validity of one or more 

claims in the patent on or after the day that he files the review 

petition, but such action is automatically stayed until the patent owner countersues for infringement. 


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(b) Inter partes review must be sought by a party within 12 

months of the date when the party is served with a complaint 

for infringement. If a patent owner sues for infringement within 3 months of the patent’s issue, a pending petition for postgrant review or the institution of such a proceeding may not 

serve as a basis for staying the court’s consideration of the patent owner’s motion for a preliminary injunction. 

(c) The Director may allow other petitioners to join an inter 

partes or post-grant review. 

(d) The Director may consolidate multiple proceedings or matters concerning the same patent and decline requests for repeated proceedings on the same question. 

(e) Inter partes and post-grant petitioners are estopped from 

raising in a subsequent Office proceeding any issue that they 

raised or reasonably could have raised in the inter partes or 

post grant review, and inter partes petitioners are also estopped from raising in civil litigation or an ITC proceeding any 

issue that they raised or could have raised in the inter partes 

review. Post-grant petitioners are only estopped from raising in 

civil litigation or ITC proceedings those issues that they actually raised in the post-grant review. 

(f) Post-grant review may not be used to challenge claims in 

a reissue patent that are the same as or narrower than claims 

in the original patent if the time for seeking review of the 

original patent has lapsed. 

§§ 316 and 326. (a) The Director shall prescribe regulations 

that make the file in proceedings public; define standards for 

instituting reviews; allow submission of additional information; 

establish and govern review and its relationship to other proceedings; set a time limit for requesting joinder in inter partes 

review; set standards for discovery; prescribe sanctions for 

abuse of the proceedings; provide for protective orders for confidential information; allow the patent owner to file a response 

after an inter partes review has been instituted; allow the patent owner to amend the patent; provide either party with the 

right to an oral hearing; and set a 1-year time limit for completion of the proceeding, with a 6-month extension for good 

cause; and provide the petitioner with at least one opportunity 

to file written comments after the proceeding is instituted. 

(b) In prescribing regulations, the Director shall consider the 

integrity of the patent system and the efficient operation of the 

Office. 

(c) The Patent Trial and Appeal Board shall conduct review 

proceedings. 

(d) The patent owner may submit one amendment with a reasonable number of substitute claims, and additional amendments either as agreed to by the parties for settlement, for 

good cause shown in post-grant review, or as prescribed in regulations by the Director in inter partes review. 

(e) The challenger shall have the burden of providing 

unpatentability by a preponderance of the evidence. 


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§§ 317 and 327. Parties may agree to settle review proceedings, 

in which case estoppel shall not apply and a copy of the settlement 

agreement shall be filed in the Office. 

§§ 318 and 328. The Patent Trial and Appeal Board shall issue 

a final written decision and a certificate cancelling, confirming, or 

incorporating claims. 

§§ 319 and 329. A party dissatisfied with a final written decision 

may appeal to the U.S. Court of Appeals for the Federal Circuit. 

Subsections (b) and (e) of section 5 make technical and conforming amendments. 

Subsections (c) and (f) require the Director to issue regulations 

implementing the new reviews within 1 year, and create transition 

provisions for proceedings pending between the enactment of the 

Act and the full implementation of the new reviews. 

Subsection (g) amends § 301 to include written statements of the 

patent owner filed in a proceedings before a Federal court or the 

Office as citable prior art. The section is further amended to provide rules for submitting such statements and the limitations on 

their use. 

Subsection (h) amends § 303 to provide that the Director may determine whether to initiate reexamination on the Director’s own 

initiative based on citations by any person other than the owner of 

the patent under section 301 or 302. Also, § 306 is amended to conform to the changes made by § 4605 of the American Inventors Protection Act of 1999, Public Law 106–113, to §§ 134 and 141 of title 

35. 

Section 7. Patent Trial and Appeal Board. 

The Board of Patent Appeals and Interferences is replaced with 

the new Patent Trial and Appeal Board (‘‘Board’’). The Board is 

charged with (i) reviewing adverse decisions of examiners on applications and reexamination proceedings, (ii) conducting derivation 

proceedings, and (iii) conducting the post-grant review proceedings. 

This section also updates the various appeals statutes. 

Section 8. Preissuance submissions by third parties. 

This section amends § 122 to create a mechanism for third parties to submit timely pre-issuance information relevant to the examination of the application, including a concise statement of the 

relevance of the submission. 

Section 9. Venue. 

The venue for certain district court challenges of USPTO decisions is changed from the District of Columbia to the Eastern District of Virginia, the district where the USPTO resides. 

Section 10. Fee-setting authority. 

This section gives the Director rulemaking authority to set or adjust any fee under §§ 41 and 376, and section 1113 of title 15, provided that such fee amounts are set to reasonably compensate the 

USPTO for the services performed. The Director may also reduce 

such fees. The Director shall consult with the patent and trademark advisory committees as provided for in this section. Any proposal for a change in fees (including the rationale, purpose, and 


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possible expectations or benefits that will result) shall be published 

in the Federal Register and shall seek public comment for a period 

of not less than 45 days. The Director shall notify Congress of any 

final proposed fee change and Congress shall have up to 45 days 

to consider and comment before any proposed fee change becomes 

effective. 

Rules of construction are provided. 

Section 11. Fees for patent services. 

The Act includes the current patent fee schedule in the text. This 

schedule represents a reference point for any future adjustments to 

the fee schedule by the Director. 

Section 12. Supplemental examination. 

This section authorizes a new § 257 of the Patent Act that addresses the ‘‘supplemental examination’’ of a patent to correct errors or omissions in proceedings before the Office. Information that 

was not considered or was inadequately considered or was incorrect 

can be presented to the Office. 

Under new subsection (a) of § 257, the Director must initially determine whether a petitioner’s request for supplemental examination of one or more items in the request raises a new question of 

patentability. The Director must make this determination within 3 

months of receiving a request for supplemental examination. 

Under new subsection (b), if the Director issues a certificate affirming that this threshold is met, a reexamination shall be ordered and will be conducted according to the procedures under 

Chapter 30 of the Patent Act (ex parte reexamination). 

New Subsection (c) of § 257 stipulates that a patent cannot be 

held unenforceable on the basis of conduct relating to information 

that had not been considered, was inadequately considered, or was 

incorrect in a prior examination if the information was considered, 

reconsidered, or corrected during the supplemental examination. 

Challengers may still argue in court that the Office’s conclusion in 

supplemental examination was erroneous and that the information 

renders the patent invalid, but the information cannot be used to 

render the patent invalid or unenforceable on the basis of inequitable conduct. 

New subsection (c) also enumerates three exceptions to these 

terms: (1) prior allegations involving certain new drug applications 

(21 USC § 355(j)); (2) patent enforcement actions before the International Trade Commission or a US district court, unless the supplemental examination was concluded before the date on which the 

action is brought; and (3) instances in which fraud on the USPTO 

was practiced or attempted. 

New subsection (d) of § 257 authorizes the Director to establish 

fees, by regulation, to help defray the cost of a supplemental examination, in addition to those charged pursuant to Chapter 30. 

Finally, new subsection (e) clarifies that nothing in Section 12 

limits the application of criminal or antitrust laws or the ability of 

the USPTO Director to investigate and sanction persons or their 

representatives for misconduct before the Office. 


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Section 13. Funding agreements. 

Clause (i) of § 202(c)(7)(E) is amended to permit a nonprofit organization that has a funding agreement for the operation of a Government-owned-contractor-operated facility to retain 85%, rather 

than 25% under current law, of licensing royalties in excess of the 

amount equal to 5% of the annual budget of the facility. 

Section 14. Tax strategies deemed within the prior art. 

This section provides that strategies for reducing, avoiding, or 

deferring tax liability shall be deemed insufficient to differentiate 

an invention from the prior art. In other words, applicants will no 

longer be able to rely on the novelty or non-obviousness of a tax 

strategy embodied in their claims in order to distinguish their 

claims from the prior art under the statutory novelty and non-obviousness requirements of those provisions. 

Under the provision, the term ‘‘tax liability’’ refers to any liability 

for a tax under any Federal, State, or local law, or law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability. 

The provision is directed to tax strategies, which are a subset of 

business methods, and is not intended to deny patent protection for 

an invention that consists of tax preparation software or other tools 

used solely to enter data on tax or information returns or any other 

filing required by a tax authority. Thus, a software program that 

is novel and non-obvious as software would not be affected by this 

section even though the software is used for a tax purpose. A priorart software program, however, could not overcome the section 102 

and 103 hurdles by implementing a novel and non-obvious strategy 

for reducing, avoiding, or deferring taxes. 

There may be situations in which some aspects of an invention 

are separable from the tax strategy. In this case, any claim that 

encompasses a tax strategy will be subject to the provision and the 

novelty or non-obviousness of the tax strategy will be deemed insufficient to differentiate that claim from the prior art. However, 

any claim that does not involve a tax strategy would not be within 

the scope of the provision. In such a case, if the invention includes 

claims that are separable from the tax strategy, such claims could, 

if otherwise enforceable, be enforced. 

Inventions that fall within the scope of the provision include 

those especially suitable for use with tax-favored structures that 

must meet certain requirements, such as employee benefit plans, 

tax-exempt organizations, or any other entities that must be structured or operated in a particular manner to obtain certain tax consequences. Thus, the provision applies if the effect of an invention 

is to aid in satisfying the qualification requirements for the desired 

tax-favored entity status, to take advantage of the specific tax benefits offered in a tax-favored structure, or to allow for tax reduction, avoidance, or deferral not otherwise automatically available in 

such entity or structure. 

In general, the USPTO may seek advice and assistance from 

Treasury and the IRS to better recognize tax strategies. Such consultations should help ensure that patents do not infringe on the 

ability of others to interpret the tax law and that implementing 

such interpretations remains in the public domain, available to all 

taxpayers and their advisors. 


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Section 15. Best Mode Requirement. 

This section amends § 282(b) by removing the failure to disclose 

the best mode under section 112 as a basis for canceling or holding 

either invalid or unenforceable a patent claim. 

Section 16. Marking. 

Subsection (a) addresses virtual marking. The provision allows a 

patent holder to satisfy the requirements of § 287 of the Patent Act 

by affixing to a patented article the word ‘‘patent’’ or the abbreviation ‘‘pat.’’ together with an Internet address that the public can 

access free of charge to determine the status of the patent. The 

USPTO is also instructed to submit a report to Congress on the effectiveness of virtual marking that is due no later than 3 years 

after the date of enactment. 

Subsection (b) addresses false marking in the following ways: (1) 

Only the United States may sue for the qui tam penalty under the 

subsection. (2) A person who has suffered a competitive injury as 

a result of a violation may still bring a civil action in US district 

court for compensatory damages. (3) Persons or companies otherwise liable under § 292 (the false marking statute) are protected 

during a 3-year window beginning on the date the patent at issue 

expires. Beyond the 3-year window, persons or companies are also 

protected if they place the word ‘‘patent’’ or ‘‘patented’’, the abbreviation ‘‘pat.’’, or the patent number either on the article or through 

an Internet posting, consistent with the amendments in subsection 

(a). 

Section 17. Advice of Counsel. 

Section 17 creates a new § 298 of the Patent Act that states that 

the failure of an infringer to obtain the advice of counsel regarding 

any allegedly infringed patent, or the failure of the infringer to 

present such advice to the court or jury, may not be used to prove 

that the accused infringer willfully infringed the patent or that the 

infringer intended to induce infringement of the patent. 

Section 18. Transitional program for covered business method patents. 

Section 18 creates a transitional program to allow post-grant review of the validity of business method patents. 

Under subsection (a), the Director is authorized to establish regulations governing the use of the new proceeding, which will be 

modeled after post-grant review as set forth in Section 6 (new 

Chapter 32 of the Patent Act). The proceeding is limited in certain 

respects. A petition cannot be accepted unless the petitioner or his 

real party in interest has been sued for infringement of the patent 

or has been charged with infringement. Nor can the petitioner or 

his real party in interest later assert invalidity before the ITC or 

a Federal court on a ground that was considered and resulted in 

a written decision by the agency in the course of a transitional proceeding. 

The program takes effect 1 year following the date of enactment 

and applies to any covered business method patent issued before, 

on, or after the effective date, with the exception of a patent that 

satisfies the requirements of § 321(c) of the Patent Act as set forth 

in Section 6 of the bill. The program sunsets after 10 years. 


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63 28 USC § 1400(b). 

Subsection (b) addresses requests for a stay of a civil action alleging infringement under § 281 of the Patent Act. A US district court 

shall decide to grant a stay based on prescribed criteria: (A) whether a stay (or denial thereof) will simplify the issues in question and 

streamline the trial; (B) whether discovery is complete and whether 

a trial date has been set; (C) whether a stay (or a denial thereof) 

would unduly prejudice the non-moving party or present a clear 

tactical advantage for the moving party; and (D) whether a stay (or 

the denial thereof) will reduce the burden of litigation on the parties and on the court. A party may seek an interlocutory appeal of 

the US district court’s decision, which the Federal Circuit shall review to ensure consistent application of established precedent, and 

such review may be de novo. 

Subsection (c) deems that in an action for infringement under 

§ 281 of a covered business method patent, an automated teller machine (‘‘ATM’’) shall not be considered a regular and established 

place of business for purposes of the patent venue statute.63

Subsection (d) defines ‘‘covered business method patent’’ as one 

that claims a method or corresponding apparatus for performing 

data processing or other operations used in the practice, administration, or management of a financial product or service, except 

that it does not include patents for technological inventions. 

Finally, subsection (e) clarifies that nothing in Section 18 shall 

be construed as amending or interpreting categories of patent-eligible subject matter under § 101 of the Patent Act. 

Section 19. Jurisdiction and procedural matters. 

Subsection (a) through (d) enact the so-called Holmes Group fix 

(H.R. 2955, 109th Congress), which the House Judiciary Committee 

reported favorably in 2006. The Committee Report accompanying 

H.R. 2955 (House Rep. 109–407), which we reaffirm, explains the 

bill’s reasons for abrogating Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002), and more fully precluding state court jurisdiction over patent legal claims. 

Subsection (e) creates a new § 299 of the Patent Act that addresses joinder of accused infringers in patent actions or trials not involving certain drugs and biologics. Parties accused as defendants 

may be joined in one action as defendants or counterclaim defendants only if: (1) any right to relief is asserted against the parties 

jointly, severally, or in the alternative with respect to or arising out 

of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United 

States, offering for sale, or selling of the same accused product or 

process; and (2) questions of fact common to all defendants or counterclaim defendants will arise in the action. 

For purposes of subsection (e), accused infringers may not be 

joined based solely on allegations that they each have infringed the 

patent or patents in suit. 

The changes set forth in Section 19 shall apply to any civil action 

commenced on or after the date of enactment of the Act. 


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Section 20. Technical amendments. 

This section sets forth technical amendments consistent with this 

Act. 

Section 21. Travel expenses and payment of administrative judges. 

Subsection (a) authorizes the USPTO to expend funds to cover 

the subsistence and travel-related expenses of non-Federal employees attending intellectual property programs hosted by the agency. 

Subsection (b) authorizes the Director to fix the rate of basic pay 

for administrative patent and trademark judges at a rate not greater than that payable for level III of the Executive Pay Schedule 

under 5 USC § 5314. 

Section 22. Patent and Trademark Office funding. 

Subsections (a) defines the ‘‘United State Patent and Trademark 

Office Public Enterprise Fund’’ (‘‘the Fund’’) that replaces the existing ‘‘Patent and Trademark Office Appropriation Account.’’ 

Subsection (b) clarifies the USPTO Director’s authority under the 

new Fund to collect all patent and trademark user fee revenue, 

which shall be available to the agency until expended. This change 

shall take effect on the later of October 1, 2011, or the first day 

of the first fiscal year that begins after the date of the enactment 

of the Act. 

Subsection (c) establishes the Fund as a revolving fund in the US 

Treasury. Any amounts in the Fund shall be available for use by 

the Director without fiscal year limitation. Patent and trademark 

fees deposited in the Fund shall be recorded as offsetting receipts. 

Amounts deposited in the Fund shall be available, without fiscal 

year limitation, to cover all expenses determined in the discretion 

of the Director to be ordinary and reasonable. 

Subsection (d) requires the Director, not later than 60 days after 

the end of each fiscal year, to submit a report to Congress that 

summarizes the USPTO operations for the preceding fiscal year, 

details the operating plan of the agency, describes its long-term 

modernization plans as well as any progress made toward modernization efforts in the previous fiscal year, and includes the results of the most recent audit as carried out by subsection (f). 

Not later than 30 days after the beginning of each fiscal year, 

subsection (e) instructs the Director to notify the Committees on 

Appropriations of both houses of Congress of the plan for the obligation and expenditure of the total amount of the funds for that 

fiscal year under Public Law 109–108. 

Subsection (f) mandates that the Director annually shall provide 

for an independent audit of the financial statement of the USPTO. 

Subsection (g) requires the Director to prepare and submit to the 

President an annual ‘‘business-type’’ budget for the Fund as the 

President prescribes by regulation for the Federal Budget. 

Section 23. Satellite offices. 

Pursuant to subsection (a), and subject to available resources, the 

Director shall establish three or more satellite offices in the United 

States to carry out the responsibilities of the USPTO. The Director 

has 3 years after the date of enactment of the Act to complete the 

task. 


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Subject (b) enumerates the purposes of the satellite offices, including efforts to increase outreach activities, enhance patent examiner retention, and improve the quality of patent examination. 

Subsection (c) details the required considerations the Director 

must invoke in selecting each location. Among the criteria are geographic diversity among the offices and reliance upon previous 

evaluations. 

Not later than three fiscal years after the date of enactment of 

the Act, Subsection (d) requires the Director to submit a report to 

Congress on the rationale of the Director in selecting the location 

of any satellite office, the progress in establishing any satellite offices so selected, and whether the operation of any existing satellite 

office is achieving the purposes set forth in subsection (b). 

Section 24. Designation of the Detroit satellite office. 

Section 24 designates the USPTO satellite office to be located in 

Detroit, Michigan, as the ‘‘Elijah J. McCoy United States Patent 

and Trademark Office.’’ 

Section 25. Patent Ombudsman Program for small business concerns. 

Section 25 states that, using available resources, the Director 

shall establish and maintain in the USPTO a Patent Ombudsman 

Program, whose staff shall provide support and services relating to 

patent filings to small business concerns. 

Section 26. Priority examination for technologies important to American competitiveness. 

Section 26 amends § 2(b)(2) of the Patent Act by permitting the 

USPTO to prioritize the examination of applications for products, 

processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate 

extra cost of providing such prioritization. 

Section 27. Calculation of 60-day period for application of patent 

term extension. 

Subsection (a) clarifies USPTO ‘‘counting’’ rules that are used to 

determine whether an applicant has submitted an application to 

the agency in a timely manner under § 156(d)(1) of the Patent Act. 

If the application is transmitted after 4:30 pm, EST, on a business 

day, or is transmitted on a day that is not a business day, the product addressed by the application shall be deemed to receive ‘‘permission’’ on the next business day. ‘‘Business day’’ means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal 

holiday under 5 USC § 6103. 

Subsection (b) states that subsection (a) shall apply to any application for extension of term under § 156 of the Patent Act that is 

pending on, filed after, or as to which a decision regarding the application is subject judicial review on, the date of enactment of the 

Act. 

Section 28. Study on implementation. 

Subsection (a) requires the Director to conduct a study on the 

manner in which the Act is being implemented by the USPTO, 

along with a review of patent policies and practices of the Federal 


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Government with respect to patent rights, US innovation, access by 

small business to capital, and other issues as the Director deems 

appropriate. 

Subsection (b) stipulates that the Director shall submit the results of the study along with his recommendations for any changes 

to the Senate and House Judiciary Committees not later than 4 

years after the date of enactment of the Act. 

Section 29. Pro bono program. 

Section 29 requires the Director to work with and support intellectual law associations across the country to establish pro bono 

programs to assist financially under-resourced independent inventors and small businesses. 

Section 30. Effective date. 

Except as otherwise provided, this Act takes effect 12 months 

after the date of enactment and applies to any patent issued on or 

after that effective date. 

Section 31. Budgetary effects. 

Section 31 references text from S. 23 regarding the budgetary effects of the Act as it pertains to PAYGO compliance. 


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Agency Views 


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Changes in Existing Law Made by the Bill, as Reported 

In compliance with clause 3(e) of rule XIII of the Rules of the 

House of Representatives, changes in existing law made by the bill, 

as reported, are shown as follows (existing law proposed to be omitted is enclosed in black brackets, new matter is printed in italics, 

existing law in which no change is proposed is shown in roman): 

TITLE 35, UNITED STATES CODE 

PART I—UNITED STATES PATENT AND 

TRADEMARK OFFICE 

CHAPTER 1—ESTABLISHMENT, OFFICERS AND 

EMPLOYEES, FUNCTIONS 

Sec. 

1. Establishment. 

* * * * * * * 

ø6. Board of Patent Appeals and Interferences.¿ 

6. Patent Trial and Appeal Board. 

* * * * * * * 

§ 2. Powers and duties 

(a) * * * 

(b) SPECIFIC POWERS.—The Office— 

(1) * * * 

(2) may establish regulations, not inconsistent with law, 

which— 

(A) * * * 

* * * * * * * 

(E) shall recognize the public interest in continuing to 

safeguard broad access to the United States patent system 

through the reduced fee structure for small entities under 

section 41(h)(1) øof this title; and¿; 

(F) provide for the development of a performancebased process that includes quantitative and qualitative 

measures and standards for evaluating cost-effectiveness 

and is consistent with the principles of impartiality and 

competitiveness; and 

(G) may, subject to any conditions prescribed by the Director and at the request of the patent applicant, provide 

for prioritization of examination of applications for products, processes, or technologies that are important to the 

national economy or national competitiveness without recovering the aggregate extra cost of providing such 

prioritization, notwithstanding section 41 or any other provision of law; 

* * * * * * * 

(11) may conduct programs, studies, or exchanges of items 

or services regarding domestic and international intellectual 

property law and the effectiveness of intellectual property protection domestically and throughout the world, and the Office 


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is authorized to expend funds to cover the subsistence expenses 

and travel-related expenses, including per diem, lodging costs, 

and transportation costs, of persons attending such programs 

who are not Federal employees; 

* * * * * * * 

§ 3. Officers and employees 

(a) * * * 

(b) OFFICERS AND EMPLOYEES OF THE OFFICE.— (1) * * * 

* * * * * * * 

(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE

TRADEMARK JUDGES.—The Director may fix the rate of basic 

pay for the administrative patent judges appointed pursuant to 

section 6 and the administrative trademark judges appointed 

pursuant to section 17 of the Trademark Act of 1946 (15 U.S.C. 

1067) at not greater than the rate of basic pay payable for level 

III of the Executive Schedule under section 5314 of title 5. The 

payment of a rate of basic pay under this paragraph shall not 

be subject to the pay limitation under section 5306(e) or 5373 

of title 5. 

* * * * * * * 

(e) CARRYOVER OF PERSONNEL.— (1) * * * 

(2) OTHER PERSONNEL.—Any individual who, on the day 

before the effective date of the Patent and Trademark Office 

Efficiency Act, is an officer or employee of the Department of 

Commerce (other than an officer or employee under paragraph 

(1)) shall be transferred to the Office, as necessary to carry out 

the purposes of øthis Act,¿ that Act, if— 

(A) * * * 

* * * * * * * 

ø§ 6. Board of Patent Appeals and Interferences 

ø(a) ESTABLISHMENT AND COMPOSITION.—There shall be in the 

United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative 

patent judges shall constitute the Board. The administrative patent 

judges shall be persons of competent legal knowledge and scientific 

ability who are appointed by the Secretary of Commerce, in consultation with the Director. 

ø(b) DUTIES.—The Board of Patent Appeals and Interferences 

shall, on written appeal of an applicant, review adverse decisions 

of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under 

section 135(a). Each appeal and interference shall be heard by at 

least three members of the Board, who shall be designated by the 

Director. Only the Board of Patent Appeals and Interferences may 

grant rehearings. 

ø(c) AUTHORITY OF THE SECRETARY.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an 

administrative patent judge who, before the date of the enactment 


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of this subsection, held office pursuant to an appointment by the 

Director to take effect on the date on which the Director initially 

appointed the administrative patent judge. 

ø(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—It shall be a 

defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.¿ 

§ 6. Patent Trial and Appeal Board 

(a) IN GENERAL.—There shall be in the Office a Patent Trial 

and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of 

competent legal knowledge and scientific ability who are appointed 

by the Secretary, in consultation with the Director. Any reference in 

any Federal law, Executive order, rule, regulation, or delegation of 

authority, or any document of or pertaining to the Board of Patent 

Appeals and Interferences is deemed to refer to the Patent Trial and 

Appeal Board. 

(b) DUTIES.—The Patent Trial and Appeal Board shall— 

(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to 

section 134(a); 

(2) review appeals of reexaminations pursuant to section 

134(b); 

(3) conduct derivation proceedings pursuant to section 135; 

and 

(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32. 

(c) 3-MEMBER PANELS.—Each appeal, derivation proceeding, 

post-grant review, and inter partes review shall be heard by at least 

3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board 

may grant rehearings. 

(d) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of 

Commerce may, in the Secretary’s discretion, deem the appointment 

of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by 

the Director to take effect on the date on which the Director initially 

appointed the administrative patent judge. It shall be a defense to 

a challenge to the appointment of an administrative patent judge on 

the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting 

as a de facto officer. 

* * * * * * * 

§ 12. Copies of patents and applications for public libraries 

The Director may supply copies of specifications and drawings 

of patents in printed or electronic form and published applications 

for patents to public libraries in the United States which shall 

maintain such copies for the use of the public, at the rate for each 


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year’s issue established for this purpose in section 41(d) øof this 

title¿. 

* * * * * * * 

CHAPTER 3—PRACTICE BEFORE PATENT AND 

TRADEMARK OFFICE 

§ 32. Suspension or exclusion from practice 

The Director may, after notice and opportunity for a hearing, 

suspend or exclude, either generally or in any particular case, from 

further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or 

guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) øof this title¿, or who 

shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant 

or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The Director shall have 

the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section. A proceeding under this 

section shall be commenced not later than the earlier of either the 

date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date 

on which the misconduct forming the basis for the proceeding is 

made known to an officer or employee of the Office as prescribed in 

the regulations established under section 2(b)(2)(D). The øUnited 

States District Court for the District of Columbia¿ United States 

District Court for the Eastern District of Virginia, under such conditions and upon such proceedings as it by its rules determines, may 

review the action of the Director upon the petition of the person so 

refused recognition or so suspended or excluded. 

* * * * * * * 

CHAPTER 4—PATENT FEES; FUNDING; SEARCH 

SYSTEMS 

§ 41. Patent fees; patent and trademark search systems 

ø(a) The Director shall charge the following fees: 

ø(1)(A) On filing each application for an original patent, 

except in design or plant cases, $690. 

ø(B) In addition, on filing or on presentation at any other 

time, $78 for each claim in independent form which is in excess 

of 3, $18 for each claim (whether independent or dependent) 

which is in excess of 20, and $260 for each application containing a multiple dependent claim. 

ø(C) On filing each provisional application for an original 

patent, $150. 

ø(2) For issuing each original or reissue patent, except in 

design or plant cases, $1,210. 

ø(3) In design and plant cases— 

ø(A) on filing each design application, $310; 

ø(B) on filing each plant application, $480; 


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ø(C) on issuing each design patent, $430; and 

ø(D) on issuing each plant patent, $580. 

ø(4)(A) On filing each application for the reissue of a patent, $690. 

ø(B) In addition, on filing or on presentation at any other 

time, $78 for each claim in independent form which is in excess 

of the number of independent claims of the original patent, and 

$18 for each claim (whether independent or dependent) which 

is in excess of 20 and also in excess of the number of claims 

of the original patent. 

ø(5) On filing each disclaimer, $110. 

ø(6)(A) On filing an appeal from the examiner to the Board 

of Patent Appeals and Interferences, $300. 

ø(B) In addition, on filing a brief in support of the appeal, 

$300, and on requesting an oral hearing in the appeal before 

the Board of Patent Appeals and Interferences, $260. 

ø(7) On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or 

for an unintentionally delayed response by the patent owner in 

any reexamination proceeding, $1,210, unless the petition is 

filed under section 133 or 151 of this title, in which case the 

fee shall be $110. 

ø(8) For petitions for 1-month extensions of time to take 

actions required by the Director in an application— 

ø(A) on filing a first petition, $110; 

ø(B) on filing a second petition, $270; and 

ø(C) on filing a third petition or subsequent petition, 

$490. 

ø(9) Basic national fee for an international application 

where the Patent and Trademark Office was the International 

Preliminary Examining Authority and the International 

Searching Authority, $670. 

ø(10) Basic national fee for an international application 

where the Patent and Trademark Office was the International 

Searching Authority but not the International Preliminary Examining Authority, $690. 

ø(11) Basic national fee for an international application 

where the Patent and Trademark Office was neither the International Searching Authority nor the International Preliminary Examining Authority, $970. 

ø(12) Basic national fee for an international application 

where the international preliminary examination fee has been 

paid to the Patent and Trademark Office, and the international 

preliminary examination report states that the provisions of 

Article 33(2), (3), and (4) of the Patent Cooperation Treaty 

have been satisfied for all claims in the application entering 

the national stage, $96. 

ø(13) For filing or later presentation of each independent 

claim in the national stage of an international application in 

excess of 3, $78. 

ø(14) For filing or later presentation of each claim (whether independent or dependent) in a national stage of an international application in excess of 20, $18. 


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ø(15) For each national stage of an international applica- tion containing a multiple dependent claim, $260. 

For the purpose of computing fees, a multiple dependent claim referred to in section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made. Errors 

in payment of the additional fees may be rectified in accordance 

with regulations of the Director. 

ø(b) The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980: 

ø(1) 3 years and 6 months after grant, $830. 

ø(2) 7 years and 6 months after grant, $1,900. 

ø(3) 11 years and 6 months after grant, $2,910. 

Unless payment of the applicable maintenance fee is received in 

the Patent and Trademark Office on or before the date the fee is 

due or within a grace period of 6 months thereafter, the patent will 

expire as of the end of such grace period. The Director may require 

the payment of a surcharge as a condition of accepting within such 

6-month grace period the payment of an applicable maintenance 

fee. No fee may be established for maintaining a design or plant 

patent in force.¿ 

(a) GENERAL FEES.—The Director shall charge the following 

fees: 

(1) FILING AND BASIC NATIONAL FEES.— (A) On filing each application for an original patent, except for design, plant, or provisional applications, $330. 

(B) On filing each application for an original design patent, $220. 

(C) On filing each application for an original plant patent, $220. 

(D) On filing each provisional application for an origi- nal patent, $220. 

(E) On filing each application for the reissue of a patent, $330. 

(F) The basic national fee for each international application filed under the treaty defined in section 351(a) entering the national stage under section 371, $330. 

(G) In addition, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director, for any application the specification 

and drawings of which exceed 100 sheets of paper (or 

equivalent as prescribed by the Director if filed in an electronic medium), $270 for each additional 50 sheets of paper 

(or equivalent as prescribed by the Director if filed in an 

electronic medium) or fraction thereof. 

(2) EXCESS CLAIMS FEES.— 

(A) IN GENERAL.—In addition to the fee specified in 

paragraph (1)— 

(i) on filing or on presentation at any other time, 

$220 for each claim in independent form in excess of 

3; 

(ii) on filing or on presentation at any other time, 

$52 for each claim (whether dependent or independent) 

in excess of 20; and 


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(iii) for each application containing a multiple de- pendent claim, $390. 

(B) MULTIPLE DEPENDENT CLAIMS.—For the purpose of 

computing fees under subparagraph (A), a multiple dependent claim referred to in section 112 or any claim depending 

therefrom shall be considered as separate dependent claims 

in accordance with the number of claims to which reference 

is made. 

(C) REFUNDS; ERRORS IN PAYMENT.—The Director may 

by regulation provide for a refund of any part of the fee 

specified in subparagraph (A) for any claim that is canceled before an examination on the merits, as prescribed by 

the Director, has been made of the application under section 131. Errors in payment of the additional fees under 

this paragraph may be rectified in accordance with regulations prescribed by the Director. 

(3) EXAMINATION FEES.— (A) IN GENERAL.— (i) For examination of each application for an 

original patent, except for design, plant, provisional, or 

international applications, $220. 

(ii) For examination of each application for an original design patent, $140. 

(iii) For examination of each application for an original plant patent, $170. 

(iv) For examination of the national stage of each international application, $220. 

(v) For examination of each application for the re- issue of a patent, $650. 

(B) APPLICABILITY OF OTHER FEE PROVISIONS.—The 

provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for filing the application shall 

apply to the payment of the fee specified in subparagraph 

(A) with respect to an application filed under section 

111(a). The provisions of section 371(d) relating to the payment of the national fee shall apply to the payment of the 

fee specified in subparagraph (A) with respect to an international application. 

(4) ISSUE FEES.— (A) For issuing each original patent, except for design or plant patents, $1,510. (B) For issuing each original design patent, $860. 

(C) For issuing each original plant patent, $1,190. 

(D) For issuing each reissue patent, $1,510. 

(5) DISCLAIMER FEE.—On filing each disclaimer, $140. 

(6) APPEAL FEES.— 

(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540. 

(B) In addition, on filing a brief in support of the ap- peal, $540, and on requesting an oral hearing in the appeal 

before the Patent Trial and Appeal Board, $1,080. 

(7) REVIVAL FEES.—On filing each petition for the revival 

of an unintentionally abandoned application for a patent, for 

the unintentionally delayed payment of the fee for issuing each 

patent, or for an unintentionally delayed response by the patent 


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owner in any reexamination proceeding, $1,620, unless the petition is filed under section 133 or 151, in which case the fee 

shall be $540. 

(8) EXTENSION FEES.—For petitions for 1-month extensions 

of time to take actions required by the Director in an application— 

(A) on filing a first petition, $130; 

(B) on filing a second petition, $360; and 

(C) on filing a third or subsequent petition, $620. 

(b) MAINTENANCE FEES.— (1) IN GENERAL.—The Director shall charge the following 

fees for maintaining in force all patents based on applications 

filed on or after December 12, 1980: (A) Three years and 6 months after grant, $980. 

(B) Seven years and 6 months after grant, $2,480. 

(C) Eleven years and 6 months after grant, $4,110. 

(2) GRACE PERIOD; SURCHARGE.—Unless payment of the applicable maintenance fee under paragraph (1) is received in the 

Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end 

of such grace period. The Director may require the payment of 

a surcharge as a condition of accepting within such 6-month 

grace period the payment of an applicable maintenance fee. 

(3) NO MAINTENANCE FEE FOR DESIGN OR PLANT PATENT.— No fee may be established for maintaining a design or plant 

patent in force. 

ø(c)(1) The Director¿ 

(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.— (1) ACCEPTANCE.—The Director may accept the payment of 

any maintenance fee required by subsection (b) of this section 

which is made within twenty-four months after the six-month 

grace period if the delay is shown to the satisfaction of the Director to have been unintentional, or at any time after the sixmonth grace period if the delay is shown to the satisfaction of 

the Director to have been unavoidable. The Director may require the payment of a surcharge as a condition of accepting 

payment of any maintenance fee after the six-month grace period. If the Director accepts payment of a maintenance fee 

after the six-month grace period, the patent shall be considered 

as not having expired at the end of the grace period. 

ø(2) A patent¿ 

(2) EFFECT ON RIGHTS OF OTHERS.—A patent, the term of 

which has been maintained as a result of the acceptance of a 

payment of a maintenance fee under this subsection, shall not 

abridge or affect the right of any person or that person’s successors in business who made, purchased, offered to sell, or 

used anything protected by the patent within the United 

States, or imported anything protected by the patent into the 

United States after the 6-month grace period but prior to the 

acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, 

offered for sale, or sold, the specific thing so made, purchased, 

offered for sale, used, or imported. The court before which such 

matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, 


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offered for sale, or used within the United States, or imported 

into the United States, as specified, or for the manufacture, 

use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period 

but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice of any process that is practiced, or for the practice of which 

substantial preparation was made, after the 6-month grace period but before the acceptance of a maintenance fee under this 

subsection, to the extent and under such terms as the court 

deems equitable for the protection of investments made or 

business commenced after the 6-month grace period but before 

the acceptance of a maintenance fee under this subsection. 

ø(d) The Director shall establish fees for all other processing, 

services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such 

processing, services, or materials, except that the Director shall 

charge the following fees for the following services: 

ø(1) For recording a document affecting title, $40 per property. 

ø(2) For each photocopy, $.25 per page. 

ø(3) For each black and white copy of a patent, $3. 

The yearly fee for providing a library specified in section 13 of this 

title with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.¿ 

(d) PATENT SEARCH AND OTHER FEES.— (1) PATENT SEARCH FEES.— (A) IN GENERAL.—The Director shall charge the fees 

specified under subparagraph (B) for the search of each application for a patent, except for provisional applications. 

The Director shall adjust the fees charged under this paragraph to ensure that the fees recover an amount not to exceed the estimated average cost to the Office of searching 

applications for patent either by acquiring a search report 

from a qualified search authority, or by causing a search 

by Office personnel to be made, of each application for patent. 

(B) SPECIFIC FEES.—The fees referred to in subparagraph (A) are— (i) $540 for each application for an original patent, 

except for design, plant, provisional, or international 

applications; (ii) $100 for each application for an original design patent; (iii) $330 for each application for an original plant 

patent; (iv) $540 for the national stage of each international application; and (v) $540 for each application for the reissue of a 

patent. 

(C) APPLICABILITY OF OTHER PROVISIONS.—The provisions of paragraphs (3) and (4) of section 111(a) relating to 

the payment of the fee for filing the application shall apply 

to the payment of the fee specified in this paragraph with 

respect to an application filed under section 111(a). The 


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provisions of section 371(d) relating to the payment of the 

national fee shall apply to the payment of the fee specified 

in this paragraph with respect to an international application. 

(D) REFUNDS.—The Director may by regulation provide 

for a refund of any part of the fee specified in this paragraph for any applicant who files a written declaration of 

express abandonment as prescribed by the Director before 

an examination has been made of the application under 

section 131. 

(E) APPLICATIONS SUBJECT TO SECRECY ORDER.—A 

search of an application that is the subject of a secrecy 

order under section 181 or otherwise involves classified information may be conducted only by Office personnel. 

(F) CONFLICTS OF INTEREST.—A qualified search authority that is a commercial entity may not conduct a 

search of a patent application if the entity has any direct 

or indirect financial interest in any patent or in any pending or imminent application for patent filed or to be filed 

in the Office. 

(2) OTHER FEES.— (A) IN GENERAL.—The Director shall establish fees for 

all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials, except that the Director shall charge the following 

fees for the following services: (i) For recording a document affecting title, $40 

per property. (ii) For each photocopy, $.25 per page. 

(iii) For each black and white copy of a patent, $3. 

(B) COPIES FOR LIBRARIES.—The yearly fee for providing a library specified in section 12 with uncertified 

printed copies of the specifications and drawings for all 

patents in that year shall be $50. 

(e) øThe Director¿ WAIVER OF FEES; COPIES REGARDING NO- TICE.—The Director may waive the payment of any fee for any service or material related to patents in connection with an occasional 

or incidental request made by a department or agency of the Government, or any officer thereof. The Director may provide any applicant issued a notice under section 132 øof this title¿ with a copy 

of the specifications and drawings for all patents referred to in that 

notice without charge. 

(f) øThe fees¿ ADJUSTMENT OF FEES.—The fees established in 

subsections (a) and (b) of this section may be adjusted by the Director on October 1, 1992, and every year thereafter, to reflect any 

fluctuations occurring during the previous 12 months in the Consumer Price Index, as determined by the Secretary of Labor. 

Changes of less than 1 per centum may be ignored. 

ø(g) No fee established by the Director under this section shall 

take effect until at least 30 days after notice of the fee has been 

published in the Federal Register and in the Official Gazette of the 

Patent and Trademark Office. 

ø(h)(1) Fees charged under subsection (a) or (b) shall be reduced by 50 percent with respect to their application to any small 


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business concern as defined under section 3 of the Small Business 

Act, and to any independent inventor or nonprofit organization as 

defined in regulations issued by the Director. 

ø(2) With respect to its application to any entity described in 

paragraph (1), any surcharge or fee charged under subsection (c) or 

(d) shall not be higher than the surcharge or fee required of any 

other entity under the same or substantially similar circumstances.¿ 

(h) FEES FOR SMALL ENTITIES.— 

(1) REDUCTIONS IN FEES.—Subject to paragraph (3), fees 

charged under subsections (a), (b), and (d)(1) shall be reduced 

by 50 percent with respect to their application to any small 

business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director. 

(2) SURCHARGES AND OTHER FEES.—With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be 

higher than the surcharge or fee required of any other entity 

under the same or substantially similar circumstances. 

(3) REDUCTION FOR ELECTRONIC FILING.—The fee charged 

under subsection (a)(1)(A) shall be reduced by 75 percent with 

respect to its application to any entity to which paragraph (1) 

applies, if the application is filed by electronic means as prescribed by the Director. 

ø(i)(1) The Director¿ 

(i) ELECTRONIC PATENT AND TRADEMARK DATA.— 

(1) MAINTENANCE OF COLLECTIONS.—The Director shall 

maintain, for use by the public, paper, microform, or electronic 

collections of United States patents, foreign patent documents, 

and United States trademark registrations arranged to permit 

search for and retrieval of information. The Director may not 

impose fees directly for the use of such collections, or for the 

use of the public patent or trademark search rooms or libraries. 

ø(2) The Director¿ 

(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS.—The 

Director shall provide for the full deployment of the automated 

search systems of the Patent and Trademark Office so that 

such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent 

and trademark information, using a variety of automated 

methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems. 

ø(3) The Director¿ 

(3) ACCESS FEES.—The Director may establish reasonable 

fees for access by the public to the automated search systems 

of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available 

to users of the systems for purposes of education and training. 

The Director may waive the payment by an individual of fees 

authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest. 

ø(4) The Director¿ 


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(4) ANNUAL REPORT TO CONGRESS.—The Director shall submit to the Congress an annual report on the automated search 

systems of the Patent and Trademark Office and the access by 

the public to such systems. The Director shall also publish 

such report in the Federal Register. The Director shall provide 

an opportunity for the submission of comments by interested 

persons on each such report. 

§ 42. Patent and Trademark Office funding 

(a) * * * 

(b) All fees paid to the Director and all appropriations for defraying the costs of the activities of the Patent and Trademark Office will be credited to the øPatent and Trademark Office Appropriation Account¿ United States Patent and Trademark Office Public Enterprise Fund in the Treasury of the United States. 

(c) øTo the extent and in the amounts provided in advance in 

appropriations Acts, fees¿ Fees authorized in this title or any other 

Act to be charged or established by the Director øshall be collected 

by and shall be available to the Director¿ shall be collected by the 

Director and shall be available until expended to carry out the activities of the Patent and Trademark Office. All fees available to 

the Director under section 31 of the Trademark Act of 1946 shall 

be used only for the processing of trademark registrations and for 

other activities, services, and materials relating to trademarks and 

to cover a proportionate share of the administrative costs of the 

Patent and Trademark Office. 

* * * * * * * 

CHAPTER 10—PATENTABILITY OF INVENTIONS 

Sec. 

100. Definitions. 

* * * * * * * 

ø102. Conditions for patentability; novelty and loss of right to patent.¿ 

102. Conditions for patentability; novelty. 

* * * * * * * 

ø104. Invention made abroad.¿ 

* * * * * * * 

§ 100. Definitions 

When used in this title unless the context otherwise indicates— 

(a) * * * 

* * * * * * * 

(e) The term ‘‘third-party requester’’ means a person requesting 

ex parte reexamination under section 302 øor inter partes reexamination under section 311¿ who is not the patent owner. 

(f) The term ‘‘inventor’’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention. 

(g) The terms ‘‘joint inventor’’ and ‘‘coinventor’’ mean any 1 of 

the individuals who invented or discovered the subject matter of a 

joint invention. 

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sons or entities for the performance of experimental, developmental, 

or research work in the field of the claimed invention. 

(i)(1) The term ‘‘effective filing date’’ for a claimed invention in 

a patent or application for patent means— 

(A) if subparagraph (B) does not apply, the actual filing 

date of the patent or the application for the patent containing 

a claim to the invention; or 

(B) the filing date of the earliest application for which the 

patent or application is entitled, as to such invention, to a right 

of priority under section 119, 365(a), or 365(b) or to the benefit 

of an earlier filing date under section 120, 121, or 365(c). 

(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming 

the claim to the invention to have been contained in the patent for 

which reissue was sought. 

(j) The term ‘‘claimed invention’’ means the subject matter defined by a claim in a patent or an application for a patent. 

* * * * * * * 

ø§ 102. Conditions for patentability; novelty and loss of right 

to patent 

øA person shall be entitled to a patent unless— 

ø(a) the invention was known or used by others in this country, 

or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or 

ø(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this 

country, more than one year prior to the date of the application for 

patent in the United States, or 

ø(c) he has abandoned the invention, or 

ø(d) the invention was first patented or caused to be patented, 

or was the subject of an inventor’s certificate, by the applicant or 

his legal representatives or assigns in a foreign country prior to the 

date of the application for patent in this country on an application 

for patent or inventor’s certificate filed more than twelve months 

before the filing of the application in the United States, or 

ø(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United 

States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the 

United States before the invention by the applicant for patent, except that an international application filed under the treaty defined 

in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; 

or 

ø(f) he did not himself invent the subject matter sought to be 

patented, or 

ø(g)(1) during the course of an interference conducted under 

section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before 


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such person’s invention thereof, the invention was made in this 

country by another inventor who had not abandoned, suppressed, 

or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of 

conception and reduction to practice of the invention, but also the 

reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. 

ø§ 103. Conditions for patentability; non-obvious subject 

matter 

ø(a) A patent may not be obtained though the invention is not 

identically disclosed or described as set forth in section 102 of this 

title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole 

would have been obvious at the time the invention was made to a 

person having ordinary skill in the art to which said subject matter 

pertains. Patentability shall not be negatived by the manner in 

which the invention was made. 

ø(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, 

a biotechnological process using or resulting in a composition of 

matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if— 

ø(A) claims to the process and the composition of matter 

are contained in either the same application for patent or in 

separate applications having the same effective filing date; and 

ø(B) the composition of matter, and the process at the time 

it was invented, were owned by the same person or subject to 

an obligation of assignment to the same person. 

ø(2) A patent issued on a process under paragraph (1)— 

ø(A) shall also contain the claims to the composition of 

matter used in or made by that process, or 

ø(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other 

patent, notwithstanding section 154. 

ø(3) For purposes of paragraph (1), the term ‘‘biotechnological 

process’’ means— 

ø(A) a process of genetically altering or otherwise inducing 

a single- or multi-celled organism to— 

ø(i) express an exogenous nucleotide sequence, 

ø(ii) inhibit, eliminate, augment, or alter expression of 

an endogenous nucleotide sequence, or 

ø(iii) express a specific physiological characteristic not 

naturally associated with said organism; 

ø(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and 

ø(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B). 

ø(c)(1) Subject matter developed by another person, which 

qualifies as prior art only under one or more of subsections (e), (f), 

and (g) of section 102 of this title, shall not preclude patentability 

under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by 


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the same person or subject to an obligation of assignment to the 

same person. 

ø(2) For purposes of this subsection, subject matter developed 

by another person and a claimed invention shall be deemed to have 

been owned by the same person or subject to an obligation of assignment to the same person if— 

ø(A) the claimed invention was made by or on behalf of 

parties to a joint research agreement that was in effect on or 

before the date the claimed invention was made; 

ø(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and 

ø(C) the application for patent for the claimed invention 

discloses or is amended to disclose the names of the parties to 

the joint research agreement. 

ø(3) For purposes of paragraph (2), the term ‘‘joint research 

agreement’’ means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the 

field of the claimed invention. 

ø§ 104. Invention made abroad 

ø(a) IN GENERAL.— 

ø(1) PROCEEDINGS.—In proceedings in the Patent and 

Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may 

not establish a date of invention by reference to knowledge or 

use thereof, or other activity with respect thereto, in a foreign 

country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365 of this title. 

ø(2) RIGHTS.—If an invention was made by a person, civil 

or military— 

ø(A) while domiciled in the United States, and serving 

in any other country in connection with operations by or 

on behalf of the United States, 

ø(B) while domiciled in a NAFTA country and serving 

in another country in connection with operations by or on 

behalf of that NAFTA country, or 

ø(C) while domiciled in a WTO member country and 

serving in another country in connection with operations 

by or on behalf of that WTO member country, 

that person shall be entitled to the same rights of priority in 

the United States with respect to such invention as if such invention had been made in the United States, that NAFTA 

country, or that WTO member country, as the case may be. 

ø(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or 

disproving a date of invention has not been made available for 

use in a proceeding in the Patent and Trademark Office, a 

court, or any other competent authority to the same extent as 

such information could be made available in the United States, 

the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, 


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rule, or regulation, in favor of the party that requested the information in the proceeding. 

ø(b) DEFINITIONS.—As used in this section— 

ø(1) the term ‘‘NAFTA country’’ has the meaning given 

that term in section 2(4) of the North American Free Trade 

Agreement Implementation Act; and 

ø(2) the term ‘‘WTO member country’’ has the meaning 

given that term in section 2(10) of the Uruguay Round Agreements Act.¿ 

§ 102. Conditions for patentability; novelty 

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent 

unless— 

(1) the claimed invention was patented, described in a 

printed publication, or in public use, on sale, or otherwise 

available to the public before the effective filing date of the 

claimed invention; or 

(2) the claimed invention was described in a patent issued 

under section 151, or in an application for patent published or 

deemed published under section 122(b), in which the patent or 

application, as the case may be, names another inventor and 

was effectively filed before the effective filing date of the claimed 

invention. 

(b) EXCEPTIONS.— 

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure 

made 1 year or less before the effective filing date of a claimed 

invention shall not be prior art to the claimed invention under 

subsection (a)(1) if— 

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed 

directly or indirectly from the inventor or a joint inventor. 

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— 

(A) the subject matter disclosed was obtained directly 

or indirectly from the inventor or a joint inventor; 

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 

been publicly disclosed by the inventor or a joint inventor 

or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed 

invention, were owned by the same person or subject to an 

obligation of assignment to the same person. 

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be 

deemed to have been owned by the same person or subject to an obliVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00104 Fmt 6659 Sfmt 6603 E:\HR\OC\HR098P1.XXX HR098P1

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gation of assignment to the same person in applying the provisions 

of subsection (b)(2)(C) if— 

(1) the subject matter disclosed was developed and the 

claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before 

the effective filing date of the claimed invention; 

(2) the claimed invention was made as a result of activities 

undertaken within the scope of the joint research agreement; 

and 

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the 

joint research agreement. 

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS

PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have 

been effectively filed, with respect to any subject matter described in 

the patent or application— 

(1) if paragraph (2) does not apply, as of the actual filing 

date of the patent or the application for patent; or 

(2) if the patent or application for patent is entitled to 

claim a right of priority under section 119, 365(a), or 365(b), or 

to claim the benefit of an earlier filing date under section 120, 

121, or 365(c), based upon 1 or more prior filed applications for 

patent, as of the filing date of the earliest such application that 

describes the subject matter. 

§ 103. Conditions for patentability; non-obvious subject matter 

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as 

set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a 

whole would have been obvious before the effective filing date of the 

claimed invention to a person having ordinary skill in the art to 

which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 

CHAPTER 11—APPLICATION FOR PATENT 

Sec. 

111. Application. 

* * * * * * * 

ø115. Oath of applicant.¿ 

115. Inventor’s oath or declaration. 

* * * * * * * 

123. Micro entity defined. 

§ 111. Application 

(a) IN GENERAL.— 

(1) * * * 

(2) CONTENTS.—Such application shall include— 

(A) a specification as prescribed by section 112 øof this 

title¿; 

(B) a drawing as prescribed by section 113 øof this 

title¿; and 


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(C) an oath øby the applicant¿ or declaration as prescribed by section 115 øof this title¿. 

(3) FEE AND OATH OR DECLARATION.—The application must 

be accompanied by the fee required by law. The fee and oath 

or declaration may be submitted after the specification and any 

required drawing are submitted, within such period and under 

such conditions, including the payment of a surcharge, as may 

be prescribed by the Director. 

(4) FAILURE TO SUBMIT.—Upon failure to submit the fee 

and oath or declaration within such prescribed period, the application shall be regarded as abandoned, unless it is shown to 

the satisfaction of the Director that the delay in submitting the 

fee and oath or declaration was unavoidable or unintentional. 

The filing date of an application shall be the date on which the 

specification and any required drawing are received in the Patent and Trademark Office. 

(b) PROVISIONAL APPLICATION.— (1) AUTHORIZATION.—A provisional application for patent 

shall be made or authorized to be made by the inventor, except 

as otherwise provided in this title, in writing to the Director. 

Such application shall include— 

(A) a specification as prescribed by øthe first paragraph of section 112 of this title¿ section 112(a); and 

(B) a drawing as prescribed by section 113 øof this 

title¿. (2) CLAIM.—A claim, as required by øthe second through 

fifth paragraphs of section 112,¿ subsections (b) through (e) of 

section 112, shall not be required in a provisional application. 

* * * * * * * 

(5) ABANDONMENT.—Notwithstanding the absence of a 

claim, upon timely request and as prescribed by the Director, 

a provisional application may be treated as an application filed 

under subsection (a). Subject to section 119(e)(3) øof this title¿, 

if no such request is made, the provisional application shall be 

regarded as abandoned 12 months after the filing date of such 

application and shall not be subject to revival after such 12- 

month period. 

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject 

to all the conditions in this subsection and section 119(e) øof 

this title¿, and as prescribed by the Director, an application for 

patent filed under subsection (a) may be treated as a provisional application for patent. 

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING

DATE.—A provisional application shall not be entitled to the 

right of priority of any other application under section 119 or 

365(a) øof this title¿ or to the benefit of an earlier filing date 

in the United States under section 120, 121, or 365(c) øof this 

title¿. 

(8) APPLICABLE PROVISIONS.—The provisions of this title 

relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except 

that provisional applications for patent shall not be subject to 

øsections 115, 131, 135, and 157 of this title¿ sections 131 and 

135. 


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§ 112. Specification 

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to 

enable any person skilled in the art to which it pertains, or with 

which it is most nearly connected, to make and use the same, and 

shall set forth the best mode contemplated by the inventor øof carrying out his invention¿ or joint inventor of carrying out the invention. 

(b) CONCLUSION.—The specification shall conclude with one or 

more claims particularly pointing out and distinctly claiming the 

subject matter which the øapplicant regards as his invention¿ inventor or a joint inventor regards as the invention. 

(c) FORM.—A claim may be written in independent or, if the 

nature of the case admits, in dependent or multiple dependent 

form. 

øSubject to the following paragraph,¿ (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent 

form shall contain a reference to a claim previously set forth and 

then specify a further limitation of the subject matter claimed. A 

claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 

(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in 

multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then 

specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered. 

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a 

claim for a combination may be expressed as a means or step for 

performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed 

to cover the corresponding structure, material, or acts described in 

the specification and equivalents thereof. 

* * * * * * * 

ø§ 115. Oath of applicant 

øThe applicant shall make oath that he believes himself to be 

the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which 

he solicits a patent; and shall state of what country he is a citizen. 

Such oath may be made before any person within the United 

States authorized by law to administer oaths, or, when, made in a 

foreign country, before any diplomatic or consular officer of the 

United States authorized to administer oaths, or before any officer 

having an official seal and authorized to administer oaths in the 

foreign country in which the applicant may be, whose authority is 

proved by certificate of a diplomatic or consular officer of the 

United States, or apostille of an official designated by a foreign 

country which, by treaty or convention, accords like effect to 

apostilles of designated officials in the United States, and such 

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try where made. When the application is made as provided in this 

title by a person other than the inventor, the oath may be so varied 

in form that it can be made by him. For purposes of this section, 

a consular officer shall include any United States citizen serving 

overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).¿ 

§ 115. Inventor’s oath or declaration 

(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) 

or commences the national stage under section 371 shall include, or 

be amended to include, the name of the inventor for any invention 

claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a 

claimed invention in an application for patent shall execute an oath 

or declaration in connection with the application. 

(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that— 

(1) the application was made or was authorized to be made 

by the affiant or declarant; and 

(2) such individual believes himself or herself to be the 

original inventor or an original joint inventor of a claimed invention in the application. 

(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that 

is required to be included in an oath or declaration under subsection (a). 

(d) SUBSTITUTE STATEMENT.— 

(1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide 

a substitute statement under the circumstances described in 

paragraph (2) and such additional circumstances that the Director may specify by regulation. 

(2) PERMITTED CIRCUMSTANCES.—A substitute statement 

under paragraph (1) is permitted with respect to any individual 

who— 

(A) is unable to file the oath or declaration under subsection (a) because the individual— 

(i) is deceased; 

(ii) is under legal incapacity; or 

(iii) cannot be found or reached after diligent effort; or 

(B) is under an obligation to assign the invention but 

has refused to make the oath or declaration required under 

subsection (a). 

(3) CONTENTS.—A substitute statement under this subsection shall— 

(A) identify the individual with respect to whom the 

statement applies; 

(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu 

of the oath or declaration under subsection (a); and 

(C) contain any additional information, including any 

showing, required by the Director. 


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(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF

RECORD.—An individual who is under an obligation of assignment 

of an application for patent may include the required statements 

under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately. 

(f) TIME FOR FILING.—A notice of allowance under section 151 

may be provided to an applicant for patent only if the applicant for 

patent has filed each required oath or declaration under subsection 

(a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e). 

(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATE- MENTS OR SUBSTITUTE STATEMENT.— (1) EXCEPTION.—The requirements under this section shall 

not apply to an individual with respect to an application for 

patent in which the individual is named as the inventor or a 

joint inventor and who claims the benefit under section 120, 

121, or 365(c) of the filing of an earlier-filed application, if— 

(A) an oath or declaration meeting the requirements of 

subsection (a) was executed by the individual and was filed 

in connection with the earlier-filed application; 

(B) a substitute statement meeting the requirements of 

subsection (d) was filed in connection with the earlier filed 

application with respect to the individual; or 

(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection 

with the earlier-filed application. 

(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR AS- SIGNMENTS.—Notwithstanding paragraph (1), the Director may 

require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the 

earlier-filed application be included in the later-filed application. 

(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.— (1) IN GENERAL.—Any person making a statement required 

under this section may withdraw, replace, or otherwise correct 

the statement at any time. If a change is made in the naming 

of the inventor requiring the filing of 1 or more additional 

statements under this section, the Director shall establish regulations under which such additional statements may be filed. 

(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for 

patent, the Director may not thereafter require that individual 

to make any additional oath, declaration, or other statement 

equivalent to those required by this section in connection with 

the application for patent or any patent issuing thereon. 

(3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided 

under paragraph (1). 

(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00109 Fmt 6659 Sfmt 6603 E:\HR\OC\HR098P1.XXX HR098P1

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ment that any willful false statement made in such declaration or 

statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both. 

§ 116. Inventors 

(a) JOINT INVENTIONS.—When an invention is made by two or 

more persons jointly, they shall apply for patent jointly and each 

make the required oath, except as otherwise provided in this title. 

Inventors may apply for a patent jointly even though (1) they did 

not physically work together or at the same time, (2) each did not 

make the same type or amount of contribution, or (3) each did not 

make a contribution to the subject matter of every claim of the patent. 

(b) OMITTED INVENTOR.—If a joint inventor refuses to join in 

an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on 

behalf of himself and the omitted inventor. The Director, on proof 

of the pertinent facts and after such notice to the omitted inventor 

as he prescribes, may grant a patent to the inventor making the 

application, subject to the same rights which the omitted inventor 

would have had if he had been joined. The omitted inventor may 

subsequently join in the application. 

(c) CORRECTION OF ERRORS IN APPLICATION.—Whenever 

through error a person is named in an application for patent as the 

inventor, or through error an inventor is not named in an application, øand such error arose without any deceptive intention on his 

part,¿ the Director may permit the application to be amended accordingly, under such terms as he prescribes. 

* * * * * * * 

ø§ 118. Filing by other than inventor 

øWhenever an inventor refuses to execute an application for 

patent, or cannot be found or reached after diligent effort, a person 

to whom the inventor has assigned or agreed in writing to assign 

the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for 

patent on behalf of and as agent for the inventor on proof of the 

pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; 

and the Director may grant a patent to such inventor upon such 

notice to him as the Director deems sufficient, and on compliance 

with such regulations as he prescribes.¿ 

§ 118. Filing by other than inventor 

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. 

A person who otherwise shows sufficient proprietary interest in the 

matter may make an application for patent on behalf of and as 

agent for the inventor on proof of the pertinent facts and a showing 

that such action is appropriate to preserve the rights of the parties. 

If the Director grants a patent on an application filed under this 

section by a person other than the inventor, the patent shall be 

granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient. 


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§ 119. Benefit of earlier filing date; right of priority 

(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for 

the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have 

the same effect as the same application would have if filed in this 

country on the date on which the application for patent for the 

same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filedø; but no patent shall be granted on any application for patent for an invention 

which had been patented or described in a printed publication in 

any country more than one year before the date of the actual filing 

of the application in this country, or which had been in public use 

or on sale in this country more than one year prior to such filing¿. 

* * * * * * * 

(e)(1) An application for patent filed under section 111(a) or 

section 363 øof this title¿ for an invention disclosed in the manner provided by øthe first paragraph of section 112 of this title¿ 

section 112(a) (other than the requirement to disclose the best mode) 

in a provisional application filed under section 111(b) øof this 

title¿, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though 

filed on the date of the provisional application filed under section 

111(b) øof this title¿, if the application for patent filed under section 111(a) or section 363 øof this title¿ is filed not later than 12 

months after the date on which the provisional application was 

filed and if it contains or is amended to contain a specific reference 

to the provisional application. No application shall be entitled to 

the benefit of an earlier filed provisional application under this 

subsection unless an amendment containing the specific reference 

to the earlier filed provisional application is submitted at such time 

during the pendency of the application as required by the Director. 

The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this 

subsection. The Director may establish procedures, including the 

payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application. 

(2) A provisional application filed under section 111(b) øof this 

title¿ may not be relied upon in any proceeding in the Patent and 

Trademark Office unless the fee set forth in subparagraph (A) or 

(C) of section 41(a)(1) øof this title¿ has been paid. 

* * * * * * * 

(g) As used in this section— 

(1) the term ‘‘WTO member country’’ has the same meaning as the term is defined in section 104(b)(2) øof this title¿; 

and 

* * * * * * * 


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§ 120. Benefit of earlier filing date in the United States 

An application for patent for an invention disclosed in the 

manner provided by øthe first paragraph of section 112 of this 

title¿ section 112(a) (other than the requirement to disclose the best 

mode) in an application previously filed in the United States, or as 

provided by section 363 øof this title¿, øwhich is filed by an inventor or inventors named¿ which names an inventor or joint inventor 

in the previously filed application shall have the same effect, as to 

such invention, as though filed on the date of the prior application, 

if filed before the patenting or abandonment of or termination of 

proceedings on the first application or on an application similarly 

entitled to the benefit of the filing date of the first application and 

if it contains or is amended to contain a specific reference to the 

earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an 

amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider 

the failure to submit such an amendment within that time period 

as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept 

an unintentionally delayed submission of an amendment under this 

section. 

§ 121. Divisional applications 

If two or more independent and distinct inventions are claimed 

in one application, the Director may require the application to be 

restricted to one of the inventions. If the other invention is made 

the subject of a divisional application which complies with the requirements of section 120 øof this title¿ it shall be entitled to the 

benefit of the filing date of the original application. A patent 

issuing on an application with respect to which a requirement for 

restriction under this section has been made, or on an application 

filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts 

against a divisional application or against the original application 

or any patent issued on either of them, if the divisional application 

is filed before the issuance of the patent on the other application. 

øIf a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director 

may dispense with signing and execution by the inventor.¿ The validity of a patent shall not be questioned for failure of the Director 

to require the application to be restricted to one invention. 

§ 122. Confidential status of applications; publication of patent applications 

(a) * * * 

(b) PUBLICATION.— 

(1) * * * 

(2) EXCEPTIONS.—(A) An application shall not be published 

if that application is— 

(i) * * * 

(ii) subject to a secrecy order under section 181 øof 

this title¿; 


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(iii) a provisional application filed under section 111(b) 

øof this title¿; or 

(iv) an application for a design patent filed under 

chapter 16 øof this title¿. 

* * * * * * * 

(d) NATIONAL SECURITY.—No application for patent shall be 

published under subsection (b)(1) if the publication or disclosure of 

such invention would be detrimental to the national security. The 

Director shall establish appropriate procedures to ensure that such 

applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 øof this title¿. (e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— (1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any 

patent, published patent application, or other printed publication of potential relevance to the examination of the application, 

if such submission is made in writing before the earlier of— 

(A) the date a notice of allowance under section 151 is 

given or mailed in the application for patent; or 

(B) the later of— 

(i) 6 months after the date on which the application for patent is first published under section 122 by 

the Office, or 

(ii) the date of the first rejection under section 132 

of any claim by the examiner during the examination 

of the application for patent. 

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall— 

(A) set forth a concise description of the asserted relevance of each submitted document; 

(B) be accompanied by such fee as the Director may 

prescribe; and 

(C) include a statement by the person making such 

submission affirming that the submission was made in 

compliance with this section. 

§ 123. Micro entity defined 

(a) IN GENERAL.—For purposes of this title, the term ‘‘micro entity’’ means an applicant who makes a certification that the applicant— 

(1) qualifies as a small entity, as defined in regulations 

issued by the Director; 

(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed 

in another country, provisional applications under section 

111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under 

section 41(a) was not paid; 

(3) did not, in the calendar year preceding the calendar 

year in which the examination fee for the application is being 

paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median 

household income for that preceding calendar year, as reported 

by the Bureau of the Census; and 


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(4) has not assigned, granted, or conveyed, and is not under 

an obligation by contract or law to assign, grant, or convey, a 

license or other ownership interest in the application concerned 

to an entity that, in the calendar year preceding the calendar 

year in which the examination fee for the application is being 

paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median 

household income for that preceding calendar year, as reported 

by the Bureau of the Census. 

(b) APPLICATIONS RESULTING FROM PRIOR EMPLOYMENT.—An 

applicant is not considered to be named on a previously filed application for purposes of subsection (a)(2) if the applicant has assigned, 

or is under an obligation by contract or law to assign, all ownership 

rights in the application as the result of the applicant’s previous employment. 

(c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or 

entity’s gross income in the preceding calendar year is not in United 

States dollars, the average currency exchange rate, as reported by 

the Internal Revenue Service, during that calendar year shall be 

used to determine whether the applicant’s or entity’s gross income 

exceeds the threshold specified in paragraphs (3) or (4) of subsection 

(a). 

(d) PUBLIC INSTITUTIONS OF HIGHER EDUCATION.— (1) IN GENERAL.—For purposes of this section, a micro entity shall include an applicant who certifies that— 

(A) the applicant’s employer, from which the applicant 

obtains the majority of the applicant’s income, is an institution of higher education, as defined in section 101 of the 

Higher Education Act of 1965 (20 U.S.C. 1001), that is a 

public institution; or 

(B) the applicant has assigned, granted, conveyed, or is 

under an obligation by contract or law to assign, grant, or 

convey, a license or other ownership interest in the particular application to such public institution. 

(2) DIRECTOR’S AUTHORITY.—The Director may, in the Director’s discretion, impose income limits, annual filing limits, or 

other limits on who may qualify as a micro entity pursuant to 

this subsection if the Director determines that such additional 

limits are reasonably necessary to avoid an undue impact on 

other patent applicants or owners or are otherwise reasonably 

necessary and appropriate. At least 3 months before any limits 

proposed to be imposed pursuant to this paragraph take effect, 

the Director shall inform the Committee on the Judiciary of the 

House of Representatives and the Committee on the Judiciary 

of the Senate of any such proposed limits. 

CHAPTER 12—EXAMINATION OF APPLICATION 

Sec. 

131. Examination of application. 

* * * * * * * 

ø134. Appeal to the Board of Patent Appeals and Interferences. 

ø135. Interferences.¿ 

134. Appeal to the Patent Trial and Appeal Board. 

135. Derivation proceedings. 

* * * * * * * 


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§ 132. Notice of rejection; reexamination 

(a) * * * 

(b) The Director shall prescribe regulations to provide for the 

continued examination of applications for patent at the request of 

the applicant. The Director may establish appropriate fees for such 

continued examination and shall provide a 50 percent reduction in 

such fees for small entities that qualify for reduced fees under section 41(h)(1) øof this title¿. 

* * * * * * * 

ø§ 134. Appeal to the Board of Patent Appeals and Interferences¿ 

§ 134. Appeal to the Patent Trial and Appeal Board 

(a) PATENT APPLICANT.—An applicant for a patent, any of 

whose claims has been twice rejected, may appeal from the decision 

of the primary examiner to the øBoard of Patent Appeals and 

Interferences¿ Patent Trial and Appeal Board, having once paid 

the fee for such appeal. 

(b) PATENT OWNER.—A patent owner in øany reexamination 

proceeding¿ a reexamination may appeal from the final rejection of 

any claim by the a primary examiner to the øBoard of Patent Appeals and Interferences¿ Patent Trial and Appeal Board, having 

once paid the fee for such appeal. 

ø(c) THIRD-PARTY.—A third-party requester in an inter partes 

proceeding may appeal to the Patent Trial and Appeal Board from 

the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.¿ 

ø§ 135. Interferences 

ø(a) Whenever an application is made for a patent which, in 

the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the 

applicants, or applicant and patentee, as the case may be. The 

Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of 

patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a 

patent to the applicant who is adjudged the prior inventor. A final 

judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation 

of the claims involved in the patent, and notice of such cancellation 

shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office. 

ø(b)(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent 

may not be made in any application unless such a claim is made 

prior to one year from the date on which the patent was granted. 

ø(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an applicaVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00115 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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tion filed after the application is published only if the claim is 

made before 1 year after the date on which the application is published. 

ø(c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, 

made in connection with or in contemplation of the termination of 

the interference, shall be in writing and a true copy thereof filed 

in the Patent and Trademark Office before the termination of the 

interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall 

be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such 

agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued 

on any application of such parties so involved. The Director may, 

however, on a showing of good cause for failure to file within the 

time prescribed, permit the filing of the agreement or understanding during the six-month period subsequent to the termination of the interference as between the parties to the agreement 

or understanding.The Director shall give notice to the parties or 

their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the Director 

gives such notice at a later time, irrespective of the right to file 

such agreement or understanding within the six-month period on 

a showing of good cause, the parties may file such agreement or 

understanding within sixty days of the receipt of such notice.Any 

discretionary action of the Director under this subsection shall be 

reviewable under section 10 of the Administrative Procedure Act. 

ø(d) Parties to a patent interference, within such time as may 

be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be 

governed by the provisions of title 9 to the extent such title is not 

inconsistent with this section. The parties shall give notice of any 

arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to 

which it relates. The arbitration award shall be unenforceable until 

such notice is given. Nothing in this subsection shall preclude the 

Director from determining patentability of the invention involved 

in the interference.¿ 

§ 135. Derivation proceedings 

(a) INSTITUTION OF PROCEEDING.—An applicant for patent may 

file a petition to institute a derivation proceeding in the Office. The 

petition shall set forth with particularity the basis for finding that 

an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, 

without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year 

period beginning on the date of the first publication of a claim to 

an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, 

and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00116 Fmt 6659 Sfmt 6603 E:\HR\OC\HR098P1.XXX HR098P1

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onstrates that the standards for instituting a derivation proceeding 

are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable. 

(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—In 

a derivation proceeding instituted under subsection (a), the Patent 

Trial and Appeal Board shall determine whether an inventor 

named in the earlier application derived the claimed invention from 

an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was 

filed. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings. 

(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal 

Board may defer action on a petition for a derivation proceeding 

until the expiration of the 3-month period beginning on the date on 

which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal 

Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the 

termination of a proceeding under chapter 30, 31, or 32 involving 

the patent of the earlier applicant. 

(d) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application 

for patent, shall constitute the final refusal by the Office on those 

claims. The final decision of the Patent Trial and Appeal Board, if 

adverse to claims in a patent, shall, if no appeal or other review of 

the decision has been or can be taken or had, constitute cancellation 

of those claims, and notice of such cancellation shall be endorsed on 

copies of the patent distributed after such cancellation. 

(e) SETTLEMENT.—Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and 

Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall 

be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of 

the involved patents or applications, and shall be made available 

only to Government agencies on written request, or to any person on 

a showing of good cause. 

(f) ARBITRATION.—Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by 

arbitration. Such arbitration shall be governed by the provisions of 

title 9, to the extent such title is not inconsistent with this section. 

The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, 

be dispositive of the issues to which it relates. The arbitration 

award shall be unenforceable until such notice is given. Nothing in 

this subsection shall preclude the Director from determining the 

patentability of the claimed inventions involved in the proceeding. 

* * * * * * * 


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CHAPTER 13—REVIEW OF PATENT AND TRADEMARK 

OFFICE DECISIONS 

Sec. 

141. Appeal to Court of Appeals for the Federal Circuit. 

* * * * * * * 

ø146. Civil action in case of interference.¿ 

146. Civil action in case of derivation proceeding. 

ø§ 141. Appeal to Court of Appeals for the Federal Circuit 

øAn applicant dissatisfied with the decision in an appeal to the 

Board of Patent Appeals and Interferences under section 134 of 

this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant 

waives his or her right to proceed under section 145 of this title. 

A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent 

Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit. A party to an interference dissatisfied with the decision of the 

Board of Patent Appeals and Interferences on the interference may 

appeal the decision to the United States Court of Appeals for the 

Federal Circuit, but such appeal shall be dismissed if any adverse 

party to such interference, within twenty days after the appellant 

has filed notice of appeal in accordance with section 142 of this 

title, files notice with the Director that the party elects to have all 

further proceedings conducted as provided in section 146 of this 

title. If the appellant does not, within thirty days after the filing 

of such notice by the adverse party, file a civil action under section 

146, the decision appealed from shall govern the further proceedings in the case.¿ 

§ 141. Appeal to Court of Appeals for the Federal Circuit 

(a) EXAMINATIONS.—An applicant who is dissatisfied with the 

final decision in an appeal to the Patent Trial and Appeal Board 

under section 134(a) may appeal the Board’s decision to the United 

States Court of Appeals for the Federal Circuit. By filing such an 

appeal, the applicant waives his or her right to proceed under section 145. 

(b) REEXAMINATIONS.—A patent owner who is dissatisfied with 

the final decision in an appeal of a reexamination to the Patent 

Trial and Appeal Board under section 134(b) may appeal the 

Board’s decision only to the United States Court of Appeals for the 

Federal Circuit. 

(c) POST-GRANT AND INTER PARTES REVIEWS.—A party to an 

inter partes review or a post-grant review who is dissatisfied with 

the final written decision of the Patent Trial and Appeal Board 

under section 318(a) or 328(a) (as the case may be) may appeal the 

Board’s decision only to the United States Court of Appeals for the 

Federal Circuit. 

(d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent 

Trial and Appeal Board in the proceeding may appeal the decision 

to the United States Court of Appeals for the Federal Circuit, but 

such appeal shall be dismissed if any adverse party to such derivaVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00118 Fmt 6659 Sfmt 6603 E:\HR\OC\HR098P1.XXX HR098P1

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tion proceeding, within 20 days after the appellant has filed notice 

of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted 

as provided in section 146. If the appellant does not, within 30 days 

after the filing of such notice by the adverse party, file a civil action 

under section 146, the Board’s decision shall govern the further proceedings in the case. 

* * * * * * * 

§ 143. Proceedings on appeal 

With respect to an appeal described in section 142 øof this 

title¿, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court 

may request that the Director forward the original or certified copies of such documents during pendency of the appeal. In an ex 

parte case or any reexamination case, the Director shall submit to 

the court in writing the grounds for the decision of the Patent and 

Trademark Office, addressing all the issues involved in the appeal. 

øThe court shall, before hearing an appeal, give notice of the time 

and place of the hearing to the Director and the parties in the appeal. The court shall, before hearing an appeal, give notice of the 

time and place of the hearing to the Director and the parties in the 

appeal¿ In an ex parte case, the Director shall submit to the court 

in writing the grounds for the decision of the Patent and Trademark 

Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision 

entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review 

under chapter 31 or 32. 

* * * * * * * 

§ 145. Civil action to obtain patent 

An applicant dissatisfied with the decision of the øBoard of 

Patent Appeals and Interferences¿ Patent Trial and Appeal Board 

in an appeal under section 134(a) øof this title¿ may, unless appeal has been taken to the United States Court of Appeals for the 

Federal Circuit, have remedy by civil action against the Director in 

the øUnited States District Court for the District of Columbia¿ 

United States District Court for the Eastern District of Virginia if 

commenced within such time after such decision, not less than 

sixty days, as the Director appoints. The court may adjudge that 

such applicant is entitled to receive a patent for his invention, as 

specified in any of his claims involved in the decision of the øBoard 

of Patent Appeals and Interferences¿ Patent Trial and Appeal 

Board, as the facts in the case may appear and such adjudication 

shall authorize the Director to issue such patent on compliance 

with the requirements of law. All the expenses of the proceedings 

shall be paid by the applicant. 


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ø§ 146. Civil action in case of interference¿ 

§ 146. Civil action in case of derivation proceeding 

Any party to øan interference¿ a derivation proceeding dissatisfied with the decision of the øBoard of Patent Appeals and Interferences¿ Patent Trial and Appeal Board on øthe interference¿ the 

derivation proceeding, may have remedy by civil action, if commenced within such time after such decision, not less than sixty 

days, as the Director appoints or as provided in section 141 øof this 

title¿, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has 

been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the 

terms and conditions as to costs, expenses, and the further crossexamination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken 

and produced in the suit. 

Such suit may be instituted against the party in interest as 

shown by the records of the Patent and Trademark Office at the 

time of the decision complained of, but any party in interest may 

become a party to the action. If there be adverse parties residing 

in a plurality of districts not embraced within the same state, or 

an adverse party residing in a foreign country, the øUnited States 

District Court for the District of Columbia¿ United States District 

Court for the Eastern District of Virginia shall have jurisdiction 

and may issue summons against the adverse parties directed to the 

marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be 

served by publication or otherwise as the court directs. The Director shall not be a necessary party but he shall be notified of the 

filing of the suit by the clerk of the court in which it is filed and 

shall have the right to intervene. Judgment of the court in favor 

of the right of an applicant to a patent shall authorize the Director 

to issue such patent on the filing in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the 

requirements of law. 

* * * * * * * 

CHAPTER 14—ISSUE OF PATENT 

Sec. 

151. Issue of patent. 

* * * * * * * 

ø157. Statutory invention registration.¿ 

* * * * * * * 

§ 154. Contents and term of patent; provisional rights 

(a) IN GENERAL.— (1) * * * 

(2) TERM.—Subject to the payment of fees under this title, 

such grant shall be for a term beginning on the date on which 

the patent issues and ending 20 years from the date on which 

the application for the patent was filed in the United States or, 


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if the application contains a specific reference to an earlier 

filed application or applications under section 120, 121, or 

365(c) øof this title¿, from the date on which the earliest such 

application was filed. 

(3) PRIORITY.—Priority under section 119, 365(a), or 365(b) 

øof this title¿ shall not be taken into account in determining 

the term of a patent. 

* * * * * * * 

(b) ADJUSTMENT OF PATENT TERM.— (1) PATENT TERM GUARANTEES.— (A) GUARANTEE OF PROMPT PATENT AND TRADEMARK

OFFICE RESPONSES.—Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due 

to the failure of the Patent and Trademark Office to— 

(i) provide at least one of the notifications under 

section 132 øof this title¿ or a notice of allowance 

under section 151 øof this title¿ not later than 14 

months after— 

(I) the date on which an application was filed 

under section 111(a) øof this title¿; or 

(II) the date on which an international application fulfilled the requirements of section 371 øof 

this title¿; 

* * * * * * * 

(iii) act on an application within 4 months after 

the date of a decision by the øBoard of Patent Appeals 

and Interferences¿ Patent Trial and Appeal Board 

under section 134 or 135 or a decision by a Federal 

court under section 141, 145, or 146 in a case in which 

allowable claims remain in the application; or 

* * * * * * * 

the term of the patent shall be extended 1 day for each 

day after the end of the period specified in clause (i), (ii), 

(iii), or (iv), as the case may be, until the action described 

in such clause is taken. 

(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION

PENDENCY.—Subject to the limitations under paragraph 

(2), if the issue of an original patent is delayed due to the 

failure of the United States Patent and Trademark Office 

to issue a patent within 3 years after the actual filing date 

of the application in the United States, not including— 

(i) * * * 

(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an 

order under section 181, or any time consumed by appellate review by the øBoard of Patent Appeals and 

Interferences¿ Patent Trial and Appeal Board or by a 

Federal court; or 

* * * * * * * 

the term of the patent shall be extended 1 day for each 

day after the end of that 3-year period until the patent is 

issued. 


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ø(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO

INTERFERENCES, SECRECY ORDERS, AND APPEALS.—¿ 

(C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO

DERIVATION PROCEEDINGS, SECRECY ORDERS, AND AP- PEALS.—Subject to the limitations under paragraph (2), if 

the issue of an original patent is delayed due to— 

(i) * * * 

* * * * * * * 

(iii) appellate review by the øBoard of Patent Appeals and Interferences¿ Patent Trial and Appeal 

Board or by a Federal court in a case in which the 

patent was issued under a decision in the review reversing an adverse determination of patentability, 

the term of the patent shall be extended 1 day for each 

day of the pendency of the proceeding, order, or review, as 

the case may be. 

* * * * * * * 

(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINA- TION.— (A) An applicant dissatisfied with a determination 

made by the Director under paragraph (3) shall have remedy by a civil action against the Director filed in the 

øUnited States District Court for the District of Columbia¿ 

United States District Court for the Eastern District of Virginia within 180 days after the grant of the patent. Chapter 7 of title 5 shall apply to such action. Any final judgment resulting in a change to the period of adjustment of 

the patent term shall be served on the Director, and the 

Director shall thereafter alter the term of the patent to reflect such change. 

* * * * * * * 

(c) CONTINUATION.— 

(1) * * * 

(2) REMEDIES.—The remedies of sections 283, 284, and 285 

øof this title¿ shall not apply to acts which— 

(A) * * * 

* * * * * * * 

(3) REMUNERATION.—The acts referred to in paragraph (2) 

may be continued only upon the payment of an equitable remuneration to the patentee that is determined in an action 

brought under chapter 28 and chapter 29 (other than those 

provisions excluded by paragraph (2)) øof this title¿. 

* * * * * * * 

§ 155A. Patent term restoration 

(a) Notwithstanding section 154 øof this title¿, the term of 

each of the following patents shall be extended in accordance with 

this section: 

(1) * * * 

* * * * * * * 


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§ 156. Extension of patent term 

(a) * * * 

* * * * * * * 

(d)(1) To obtain an extension of the term of a patent under this 

section, the owner of record of the patent or its agent shall submit 

an application to the Director. Except as provided in paragraph (5), 

such an application may only be submitted within the sixty-day period beginning on the date the product received permission under 

the provision of law under which the applicable regulatory review 

period occurred for commercial marketing or use. The application 

shall contain— 

(A) * * * 

* * * * * * * 

For purposes of determining the date on which a product receives 

permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business 

day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business 

day. For purposes of the preceding sentence, the term ‘‘business day’’ 

means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5. 

* * * * * * * 

ø§ 157. Statutory invention registration 

ø(a) Notwithstanding any other provision of this title, the Director is authorized to publish a statutory invention registration 

containing the specification and drawings of a regularly filed application for a patent without examination if the applicant— 

ø(1) meets the requirements of section 112 of this title; 

ø(2) has complied with the requirements for printing, as 

set forth in regulations of the Director; 

ø(3) waives the right to receive a patent on the invention 

within such period as may be prescribed by the Director; and 

ø(4) pays application, publication, and other processing 

fees established by the Director. 

If an interference is declared with respect to such an application, 

a statutory invention registration may not be published unless the 

issue of priority of invention is finally determined in favor of the 

applicant. 

ø(b) The waiver under subsection (a)(3) of this section by an 

applicant shall take effect upon publication of the statutory invention registration. 

ø(c) A statutory invention registration published pursuant to 

this section shall have all of the attributes specified for patents in 

this title except those specified in section 183 and sections 271 

through 289 of this title. A statutory invention registration shall 

not have any of the attributes specified for patents in any other 

provision of law other than this title. A statutory invention registration published pursuant to this section shall give appropriate 

notice to the public, pursuant to regulations which the Director 

shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention certificate is 


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published is not a patented invention for purposes of section 292 

of this title. 

ø(d) The Director shall report to the Congress annually on the 

use of statutory invention registrations. Such report shall include 

an assessment of the degree to which agencies of the Federal Government are making use of the statutory invention registration system, the degree to which it aids the management of federally developed technology, and an assessment of the cost savings to the Federal Government of the use of such procedures.¿ 

* * * * * * * 

CHAPTER 15—PLANT PATENTS 

* * * * * * * 

§ 162. Description, claim 

No plant patent shall be declared invalid for noncompliance 

with section 112 øof this title¿ if the description is as complete as 

is reasonably possible. 

The claim in the specification shall be in formal terms to the 

plant shown and described. 

* * * * * * * 

CHAPTER 16—DESIGNS 

* * * * * * * 

§ 172. Right of priority 

The right of priority provided for by subsections (a) through (d) 

of section 119 øof this title and the time specified in section 102(d)¿

shall be six months in the case of designs. The right of priority provided for by section 119(e) øof this title¿ shall not apply to designs. 

* * * * * * * 

CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND 

FILING APPLICATIONS IN FOREIGN COUNTRY 

* * * * * * * 

§ 182. Abandonment of invention for unauthorized disclosure 

The invention disclosed in an application for patent subject to 

an order made pursuant to section 181 øof this title¿ may be held 

abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has 

been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or 

them, without the consent of the Commissioner of Patents. The 

abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given 

without the concurrence of the heads of the departments and the 

chief officers of the agencies who caused the order to be issued. A 

holding of abandonment shall constitute forfeiture by the applicant, 

his successors, assigns, or legal representatives, or anyone in privVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00124 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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ity with him or them, of all claims against the United States based 

upon such invention. 

§ 183. Right to compensation 

An applicant, his successors, assigns, or legal representatives, 

whose patent is withheld as herein provided, shall have the right, 

beginning at the date the applicant is notified that, except for such 

order, his application is otherwise in condition for allowance, or 

February 1, 1952, whichever is later, and ending six years after a 

patent is issued thereon, to apply to the head of any department 

or agency who caused the order to be issued for compensation for 

the damage caused by the order of secrecy and/or for the use of the 

invention by the Government, resulting from his disclosure. The 

right to compensation for use shall begin on the date of the first 

use of the invention by the Government. The head of the department or agency is authorized, upon the presentation of a claim, to 

enter into an agreement with the applicant, his successors, assigns, 

or legal representatives, in full settlement for the damage and/or 

use. This settlement agreement shall be conclusive for all purposes 

notwithstanding any other provision of law to the contrary. If full 

settlement of the claim cannot be effected, the head of the department or agency may award and pay to such applicant, his successors, assigns, or legal representatives, a sum not exceeding 75 per 

centum of the sum which the head of the department or agency 

considers just compensation for the damage and/or use. A claimant 

may bring suit against the United States in the United States 

Court of Federal Claims or in the District Court of the United 

States for the district in which such claimant is a resident for an 

amount which when added to the award shall constitute just compensation for the damage and/or use of the invention by the Government. The owner of any patent issued upon an application that 

was subject to a secrecy order issued pursuant to section 181 øof 

this title¿, who did not apply for compensation as above provided, 

shall have the right, after the date of issuance of such patent, to 

bring suit in the United States Court of Federal Claims for just 

compensation for the damage caused by reason of the order of secrecy and/or use by the Government of the invention resulting from 

his disclosure. The right to compensation for use shall begin on the 

date of the first use of the invention by the Government. In a suit 

under the provisions of this section the United States may avail 

itself of all defenses it may plead in an action under section 1498 

of title 28. This section shall not confer a right of action on anyone 

or his successors, assigns, or legal representatives who, while in 

the full-time employment or service of the United States, discovered, invented, or developed the invention on which the claim is 

based. 

§ 184. Filing of application in foreign country 

(a) FILING IN FOREIGN COUNTRY.—Except when authorized by 

a license obtained from the Commissioner of Patents a person shall 

not file or cause or authorize to be filed in any foreign country prior 

to six months after filing in the United States an application for 

patent or for the registration of a utility model, industrial design, 

or model in respect of an invention made in this country. A license 

shall not be granted with respect to an invention subject to an 


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order issued by the Commissioner of Patents pursuant to section 

181 øof this title¿ without the concurrence of the head of the departments and the chief officers of the agencies who caused the 

order to be issued. The license may be granted retroactively where 

an application has been filed abroad through error øand without 

deceptive intent¿ and the application does not disclose an invention within the scope of section 181 øof this title¿. (b) APPLICATION.—The term ‘‘application’’ when used in this 

chapter includes applications and any modifications, amendments, 

or supplements thereto, or divisions thereof. 

(c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND SUPPLE- MENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject 

matter if the application upon which the request for the license is 

based is not, or was not, required to be made available for inspection under section 181 øof this title¿ and if such modifications, 

amendments, and supplements do not change the general nature of 

the invention in a manner which would require such application to 

be made available for inspection under such section 181. In any 

case in which a license is not, or was not, required in order to file 

an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United 

States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and 

supplements do not, or did not, change the general nature of the 

invention in a manner which would require the United States application to have been made available for inspection under such 

section 181. 

§ 185. Patent barred for filing without license 

Notwithstanding any other provisions of law any person, and 

his successors, assigns, or legal representatives, shall not receive a 

United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the 

license prescribed in section 184 øof this title¿, have made, or consented to or assisted another’s making, application in a foreign 

country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States 

patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error øand without deceptive intent¿, and the 

patent does not disclose subject matter within the scope of section 

181 øof this title¿. 

§ 186. Penalty 

Whoever, during the period or periods of time an invention has 

been ordered to be kept secret and the grant of a patent thereon 

withheld pursuant to section 181 øof this title¿, shall, with knowledge of such order and without due authorization, willfully publish 

or disclose or authorize or cause to be published or disclosed the 

invention, or material information with respect thereto, or whoever 

willfully, in violation of the provisions of section 184 øof this title¿, 

shall file or cause or authorize to be filed in any foreign country 

an application for patent or for the registration of a utility model, 


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industrial design, or model in respect of any invention made in the 

United States, shall, upon conviction, be fined not more than 

$10,000 or imprisoned for not more than two years, or both. 

* * * * * * * 

CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE 

WITH FEDERAL ASSISTANCE 

* * * * * * * 

§ 202. Disposition of rights 

(a) * * * 

(b)(1) * * * 

* * * * * * * 

(3) If the contractor believes that a determination is contrary 

to the policies and objectives of this chapter or constitutes an abuse 

of discretion by the agency, the determination shall be subject to 

øthe section 203(b)¿ section 203(b). 

(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following: 

(1) * * * 

(2) That the contractor make a written election within two 

years after disclosure to the Federal agency (or such additional 

time as may be approved by the Federal agency) whether the 

contractor will retain title to a subject invention: Provided, 

That in any case where øpublication, on sale, or public use, has 

initiated the one year statutory period in which valid patent 

protection can still be obtained in the United States¿ the 1-year 

period referred to in section 102(b) would end before the end of 

that 2-year period, the period for election may be shortened by 

the Federal agency to a date that is not more than sixty days 

øprior to the end of the statutory¿ before the end of that 1-year 

period: And provided further, That the Federal Government 

may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights 

within such times. 

(3) That a contractor electing rights in a subject invention 

agrees to file a patent application prior to øany statutory bar 

date that may occur under this title due to publication, on sale, 

or public use¿ the expiration of the 1-year period referred to in 

section 102(b), and shall thereafter file corresponding patent 

applications in other countries in which it wishes to retain title 

within reasonable times, and that the Federal Government 

may receive title to any subject inventions in the United States 

or other countries in which the contractor has not filed patent 

applications on the subject invention within such times. 

* * * * * * * 

(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the 

United States without the approval of the Federal agency, except where such assignment is made to an organization which 

has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same 


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provisions as the contractor); (B) a requirement that the contractor share royalties with the inventor; (C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that 

the balance of any royalties or income earned by the contractor 

with respect to subject inventions, after payment of expenses 

(including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research or education; (D) a requirement that, øexcept 

where it proves infeasible after a reasonable inquiry, in the licensing of subject inventions shall be given to small business 

firms; and¿ except where it is determined to be infeasible following a reasonable inquiry, a preference in the licensing of 

subject inventions shall be given to small business firms; and 

(E) with respect to a funding agreement for the operation of a 

Government-owned-contractor-operated facility, requirements 

(i) that after payment of patenting costs, licensing costs, payments to inventors, and other expenses incidental to the administration of subject inventions, 100 percent of the balance 

of any royalties or income earned and retained by the contractor during any fiscal year up to an amount equal to 5 percent of the annual budget of the facility, shall be used by the 

contractor for scientific research, development, and education 

consistent with the research and development mission and objectives of the facility, including activities that increase the licensing potential of other inventions of the facility; provided 

that if said balance exceeds 5 percent of the annual budget of 

the facility, that ø75¿ 15 percent of such excess shall be paid 

to the Treasury of the United States and the remaining ø25¿ 

85 percent shall be used for the same purposes øas described 

above in this clause (D);¿ described above in this clause; and 

(ii) that, to the extent it provides the most effective technology 

transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility. 

* * * * * * * 

§ 207. Domestic and foreign protection of federally owned inventions 

(a) Each Federal agency is authorized to— 

(1) * * * 

(2) grant nonexclusive, exclusive, or partially exclusive licenses under federally owned inventions, royalty-free or for 

royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the provisions of chapter 29 øof this title¿ as 

determined appropriate in the public interest; 

* * * * * * * 

§ 209. Licensing federally owned inventions 

(a) * * * 

* * * * * * * 


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(d) TERMS AND CONDITIONS.—Any licenses granted under section 207(a)(2) shall contain such terms and conditions as the granting agency considers appropriate, and shall include provisions— 

(1) retaining a ønontransferrable¿ nontransferable, irrevocable, paid-up license for any Federal agency to practice the 

invention or have the invention practiced throughout the world 

by or on behalf of the Government of the United States; 

* * * * * * * 

§ 210. Precedence of chapter 

(a) * * * 

* * * * * * * 

(c) Nothing in this chapter is intended to limit the authority 

of agencies to agree to the disposition of rights in inventions made 

in the performance of work under funding agreements with persons 

other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued 

on February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such 

persons to retain ownership of inventions except that all funding 

agreements, including those with other than small business firms 

and nonprofit organizations, shall include the requirements established in section 202(c)(4) and section 203 øof this title¿. Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized. 

* * * * * * * 

* * * * * * * 

PART III—PATENTS AND PROTECTION OF 

PATENT RIGHTS 

Chap. Sec. 

ø31. Optional Inter Partes Reexamination of Patents .................................... 311¿ 

31. Inter Partes Review .................................................................................... 311 

32. Post-Grant Review ...................................................................................... 321 

* * * * * * * 

CHAPTER 25—AMENDMENT AND CORRECTION OF 

PATENTS 

Sec. 

251. Reissue of defective patents. 

* * * * * * * 

257. Supplemental examinations to consider, reconsider, or correct information. 

§ 251. Reissue of defective patents 

(a) IN GENERAL.—Whenever any patent is, through error 

øwithout any deceptive intention¿, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, 

or by reason of the patentee claiming more or less than he had a 

right to claim in the patent, the Director shall, on the surrender 

of such patent and the payment of the fee required by law, reissue 

the patent for the invention disclosed in the original patent, and 


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in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall 

be introduced into the application for reissue. 

(b) MULTIPLE REISSUED PATENTS.—The Director may issue 

several reissued patents for distinct and separate parts of the thing 

patented, upon demand of the applicant, and upon payment of the 

required fee for a reissue for each of such reissued patents. 

(c) APPLICABILITY OF THIS TITLE.—The provisions of this title 

relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may 

be made and sworn to by the assignee of the entire interest if the 

application does not seek to enlarge the scope of the claims of the 

original patent or the application for the original patent was filed 

by the assignee of the entire interest. 

(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of 

the original patent unless applied for within two years from the 

grant of the original patent. 

* * * * * * * 

§ 253. Disclaimer 

øWhenever, without any deceptive intention,¿ (a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining 

claims shall not thereby be rendered invalid. A patentee, whether 

of the whole or any sectional interest therein, may, on payment of 

the fee required by law, make disclaimer of any complete claim, 

stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the 

original patent to the extent of the interest possessed by the 

disclaimant and by those claiming under him. 

øIn like manner¿ (b) ADDITIONAL DISCLAIMER OR DEDICA- TION.—In the manner set forth in subsection (a), any patentee or 

applicant may disclaim or dedicate to the public the entire term, 

or any terminal part of the term, of the patent granted or to be 

granted. 

* * * * * * * 

§ 256. Correction of named inventor 

(a) CORRECTION.—Whenever through error a person is named 

in an issued patent as the inventor, or through error an inventor 

is not named in an issued patent øand such error arose without 

any deceptive intention on his part¿, the Director may, on application of all the parties and assignees, with proof of the facts and 

such other requirements as may be imposed, issued a certificate 

correcting such error. 

(b) PATENT VALID IF ERROR CORRECTED.—The error of omitting 

inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected 

as provided in this section. The court before which such matter is 

called in question may order correction of the patent on notice and 

hearing of all parties concerned and the Director shall issue a certificate accordingly. 


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§ 257. Supplemental examinations to consider, reconsider, or 

correct information 

(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent 

owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for 

supplemental examination meeting the requirements of this section 

is received, the Director shall conduct the supplemental examination 

and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a 

substantial new question of patentability. 

(b) REEXAMINATION ORDERED.—If the certificate issued under 

subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, 

the Director shall order reexamination of the patent. The reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file 

a statement pursuant to section 304. During the reexamination, the 

Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter. 

(c) EFFECT.— (1) IN GENERAL.—A patent shall not be held unenforceable 

on the basis of conduct relating to information that had not 

been considered, was inadequately considered, or was incorrect 

in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection 

(a), or the absence thereof, shall not be relevant to enforceability 

of the patent under section 282. 

(2) EXCEPTIONS.— (A) PRIOR ALLEGATIONS.—Paragraph (1) shall not 

apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by 

the patent owner under section 505(j)(2)(B)(iv)(II) of the 

Federal Food, Drug, and Cosmetic Act (21 U.S.C. 

355(j)(2)(B)(iv)(II)), before the date of a supplemental examination request under subsection (a) to consider, reconsider, 

or correct information forming the basis for the allegation. 

(B) PATENT ENFORCEMENT ACTIONS.—In an action 

brought under section 337(a) of the Tariff Act of 1930 (19 

U.S.C. 1337(a)), or section 281 of this title, paragraph (1) 

shall not apply to any defense raised in the action that is 

based upon information that was considered, reconsidered, 

or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is 

brought. 

(C) FRAUD.—No supplemental examination may be 

commenced by the Director on, and any pending supplemental examination shall be immediately terminated regarding, an application or patent in connection with which 


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fraud on the Office was practiced or attempted. If the Director determines that such a fraud on the Office was practiced or attempted, the Director shall also refer the matter 

to the Attorney General for such action as the Attorney General may deem appropriate. 

(d) FEES AND REGULATIONS.— (1) FEES.—The Director shall, by regulation, establish fees 

for the submission of a request for supplemental examination of 

a patent, and to consider each item of information submitted in 

the request. If reexamination is ordered under subsection (b), 

fees established and applicable to ex parte reexamination proceedings under chapter 30 shall be paid, in addition to fees applicable to supplemental examination. 

(2) REGULATIONS.—The Director shall issue regulations 

governing the form, content, and other requirements of requests 

for supplemental examination, and establishing procedures for 

reviewing information submitted in such requests. 

(e) RULE OF CONSTRUCTION.—Nothing in this section shall be 

construed— 

(1) to preclude the imposition of sanctions based upon 

criminal or antitrust laws (including section 1001(a) of title 18, 

the first section of the Clayton Act, and section 5 of the Federal 

Trade Commission Act to the extent that section relates to unfair methods of competition); 

(2) to limit the authority of the Director to investigate issues 

of possible misconduct and impose sanctions for misconduct in 

connection with matters or proceedings before the Office; or 

(3) to limit the authority of the Director to issue regulations 

under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office. 

* * * * * * * 

CHAPTER 27—GOVERNMENT INTERESTS IN PATENTS 

§ 267. Time for taking action in Government applications 

Notwithstanding the provisions of sections 133 and 151 øof this 

title¿, the Director may extend the time for taking any action to 

three years, when an application has become the property of the 

United States and the head of the appropriate department or agency of the Government has certified to the Director that the invention disclosed therein is important to the armament or defense of 

the United States. 

CHAPTER 28—INFRINGEMENT OF PATENTS 

* * * * * * * 

§ 273. Defense to infringement based on earlier inventor 

(a) DEFINITIONS.—For purposes of this section— 

(1) the terms ‘‘commercially used’’ and ‘‘commercial use’’ 

mean øuse of a method in¿ use of the subject matter of a patent 

in the United States, so long as such use is in connection with 

an internal commercial use or an actual arm’s-length sale or 

other arm’s-length commercial transfer of a useful end result, 

whether or not the subject matter at issue is accessible to or 


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otherwise known to the public, except that the subject matter 

for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period 

specified in section 156(g), shall be deemed ‘‘commercially 

used’’ and in ‘‘commercial use’’ during such regulatory review 

period; and 

(2) in the case of activities performed by a nonprofit research laboratory, or nonprofit entity such as a university, research center, or hospital, a use for which the public is the intended beneficiary shall be considered to be a use described in 

paragraph (1), except that the use— 

(A) * * * 

(B) may not be asserted as a defense with respect to 

any subsequent commercialization or use outside such laboratory or nonprofit entityø;¿. ø(3) the term ‘‘method’’ means a method of doing or conducting business; and 

ø(4) the ‘‘effective filing date’’ of a patent is the earlier of 

the actual filing date of the application for the patent or the 

filing date of any earlier United States, foreign, or international application to which the subject matter at issue is entitled under section 119, 120, or 365 of this title.¿ 

(b) DEFENSE TO INFRINGEMENT.— (1) IN GENERAL.—It shall be a defense to an action for infringement under section 271 øof this title¿ with respect to 

any subject matter that would otherwise infringe one or more 

claims øfor a method¿ in the patent being asserted against a 

person, if such person had, acting in good faith, actually reduced the subject matter to practice øat least 1 year before the 

effective filing date of such patent, and commercially used the 

subject matter before the effective filing date of such patent.¿ 

and commercially used the subject matter at least 1 year before 

the effective filing date of the claimed invention that is the subject matter of the patent. 

(2) EXHAUSTION OF RIGHT.—The sale or other disposition of 

a useful end product produced by a øpatented method¿ patented process, by a person entitled to assert a defense under 

this section with respect to that useful end result shall exhaust 

the patent owner’s rights under the patent to the extent such 

rights would have been exhausted had such sale or other disposition been made by the patent owner. 

(3) LIMITATIONS AND QUALIFICATIONS OF DEFENSE.—The 

defense to infringement under this section is subject to the following: 

ø(A) PATENT.—A person may not assert the defense 

under this section unless the invention for which the defense is asserted is for a method. 

ø(B) DERIVATION.—A person may not assert the defense under this section if the subject matter on which the 

defense is based was derived from the patentee or persons 

in privity with the patentee.¿ 

(A) DERIVATION AND PRIOR DISCLOSURE TO THE PUB- LIC.—A person may not assert the defense under this section if— 


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(i) the subject matter on which the defense is based 

was derived from the patentee or persons in privity 

with the patentee; or 

(ii) the claimed invention that is the subject of the 

defense was disclosed to the public in a manner that 

qualified for the exception from the prior art under section 102(b) and the commercialization date relied upon 

under paragraph (1) of this subsection for establishing 

entitlement to the defense is less than 1 year before the 

date of such disclosure to the public; 

ø(C)¿ (B) NOT A GENERAL LICENSE.—The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends 

only to the specific subject matter claimed in the patent 

with respect to which the person can assert a defense 

under this chapter, except that the defense shall also extend to variations in the quantity or volume of use of the 

claimed subject matter, and to improvements in the 

claimed subject matter that do not infringe additional specifically claimed subject matter of the patent. 

(C) FUNDING.— (i) DEFENSE NOT AVAILABLE IN CERTAIN CASES.—A 

person may not assert the defense under this section if 

the subject matter of the patent on which the defense 

is based was developed pursuant to a funding agreement under chapter 18 or by a nonprofit institution of 

higher education, or a technology transfer organization 

affiliated with such an institution, that did not receive 

funding from a private business enterprise in support 

of that development. 

(ii) DEFINITIONS.—In this subparagraph— 

(I) the term ‘‘institution of higher education’’ 

has the meaning given that term in section 101(a) 

of the Higher Education Act of 1965 (20 U.S.C. 

1001(a)); and 

(II) the term ‘‘technology transfer organization’’ 

means an organization the primary purpose of 

which is to facilitate the commercialization of technologies developed by one or more institutions of 

higher education. 

* * * * * * * 

ø(6) PERSONAL DEFENSE.—The defense under this section 

may be asserted only by the person who performed the acts 

necessary to establish the defense and, except for any transfer 

to the patent owner, the right to assert the defense shall not 

be licensed or assigned or transferred to another person except 

as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or 

line of business to which the defense relates.¿ 

(6) PERSONAL DEFENSE.— (A) IN GENERAL.—The defense under this section may 

be asserted only by the person who performed or caused the 

performance of the acts necessary to establish the defense, 

as well as any other entity that controls, is controlled by, 

or is under common control with such person, and, except 


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for any transfer to the patent owner, the right to assert the 

defense shall not be licensed or assigned or transferred to 

another person except as an ancillary and subordinate part 

of a good faith assignment or transfer for other reasons of 

the entire enterprise or line of business to which the defense 

relates. 

(B) EXCEPTION.—Notwithstanding subparagraph (A), 

any person may, on the person’s own behalf, assert a defense based on the exhaustion of rights provided under 

paragraph (2), including any necessary elements thereof. 

* * * * * * * 

(8) UNSUCCESSFUL ASSERTION OF DEFENSE.—If the defense 

under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a 

reasonable basis for asserting the defense, the court shall find 

the case exceptional for the purpose of awarding attorney fees 

under section 285 øof this title¿. 

(9) INVALIDITY.—A patent shall not be deemed to be invalid under section 102 or 103 øof this title¿ solely because a 

defense is raised or established under this section. 

CHAPTER 29—REMEDIES FOR INFRINGEMENT OF 

PATENT, AND OTHER ACTIONS 

Sec. 

281. Remedy for infringement of patent. 

* * * * * * * 

ø291. Interfering patents.¿ 

291. Derived patents. 

* * * * * * * 

298. Advice of counsel. 

299. Joinder of parties. 

* * * * * * * 

§ 282. Presumption of validity; defenses 

(a) IN GENERAL.—A patent shall be presumed valid. Each 

claim of a patent (whether in independent, dependent, or multiple 

dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall 

be presumed valid even though dependent upon an invalid claim. 

øNotwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness under section 103(b)(1), the process 

shall no longer be considered nonobvious solely on the basis of section 103(b)(1).¿ The burden of establishing invalidity of a patent or 

any claim thereof shall rest on the party asserting such invalidity. 

(b) DEFENSES.—The following shall be defenses in any action 

involving the validity or infringement of a patent and shall be 

pleaded: 

(1) Noninfringement, absence of liability for infringement 

or øunenforceability,¿ unenforceability. 

(2) Invalidity of the patent or any claim in suit on any 

ground specified in part II øof this title¿ as a condition for 

øpatentability,¿ patentability. 


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ø(3) Invalidity of the patent or any claim in suit for failure 

to comply with any requirement of sections 112 or 251 of this 

title,¿ 

(3) Invalidity of the patent or any claim in suit for failure 

to comply with— 

(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which 

any claim of a patent may be canceled or held invalid or 

otherwise unenforceable; or 

(B) any requirement of section 251. 

(4) Any other fact or act made a defense by this title. 

øIn actions involving the validity or infringement of a patent¿

(c) NOTICE OF ACTIONS; ACTIONS DURING EXTENSION OF PATENT

TERM.—In an action involving the validity or infringement of patent, the party asserting infringement shall identify, in the pleadings 

or otherwise in writing to the adverse party, all of its real parties 

in interest, and the party asserting invalidity or noninfringement 

shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, 

number, date, and name of the patentee of any patent, the title, 

date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United 

States øClaims Court¿ Court of Federal Claims, as showing the 

state of the art, and the name and address of any person who may 

be relied upon as the prior inventor or as having prior knowledge 

of or as having previously used or offered for sale the invention of 

the patent in suit. In the absence of such notice proof of the said 

matters may not be made at the trial except on such terms as the 

court requires. Invalidity of the extension of a patent term or any 

portion thereof under section 154(b) or 156 øof this title¿ because 

of the material failure— 

(1) * * * 

* * * * * * * 

§ 284. Damages 

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in 

no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed 

by the court. 

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up 

to three times the amount found or assessed. Increased damages 

under this paragraph shall not apply to provisional rights under 

section 154(d) øof this title¿. The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under 

the circumstances. 

* * * * * * * 

§ 287. Limitation on damages and other remedies; marking 

and notice 

(a) Patentees, and persons making, offering for sale, or selling 

within the United States any patented article for or under them, 


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or importing any patented article into the United States, may give 

notice to the public that the same is patented, either by fixing 

thereon the word ‘‘patent’’ or the abbreviation ‘‘pat.’’, together with 

the number of the patent, øor when,¿ or by fixing thereon the word 

‘‘patent’’ or the abbreviation ‘‘pat.’’ together with an address of a 

posting on the Internet, accessible to the public without charge for 

accessing the address, that associates the patented article with the 

number of the patent, or when, from the character of the article, 

this can not be done, by fixing to it, or to the package wherein one 

or more of them is contained, a label containing a like notice. In 

the event of failure so to mark, no damages shall be recovered by 

the patentee in any action for infringement, except on proof that 

the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only 

for infringement occurring after such notice. Filing of an action for 

infringement shall constitute such notice. 

(b)(1) * * * 

(2) No remedies for infringement under section 271(g) øof this 

title¿ shall be available with respect to any product in the possession of, or in transit to, the person subject to liability under such 

section before that person had notice of infringement with respect 

to that product. The person subject to liability shall bear the burden of proving any such possession or transit. 

* * * * * * * 

(c)(1) With respect to a medical practitioner’s performance of a 

medical activity that constitutes an infringement under section 271 

(a) or (b) øof this title¿, the provisions of sections 281, 283, 284, 

and 285 øof this title¿ shall not apply against the medical practitioner or against a related health care entity with respect to such 

medical activity. 

(2) For the purposes of this subsection: 

(A) * * * 

* * * * * * * 

(G) the term ‘‘State’’ shall mean øany state¿ any State or 

territory of the United States, the District of Columbia, and 

the Commonwealth of Puerto Rico. 

* * * * * * * 

(4) This subsection shall not apply to any patent issued based 

on an application øthe earliest effective filing date of which is prior 

to¿ which has an effective filing date before September 30, 1996. 

§ 288. Action for infringement of a patent containing an invalid claim 

Wheneverø, without deceptive intention,¿ a claim of a patent 

is invalid, an action may be maintained for the infringement of a 

claim of the patent which may be valid. The patentee shall recover 

no costs unless a disclaimer of the invalid claim has been entered 

at the Patent and Trademark Office before the commencement of 

the suit. 

* * * * * * * 


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ø§ 291. Interfering patents 

øThe owner of an interfering patent may have relief against 

the owner of another by civil action, and the court may adjudge the 

question of the validity of any of the interfering patents, in whole 

or in part. The provisions of the second paragraph of section 146 

of this title shall apply to actions brought under this section.¿ 

§ 291. Derived Patents 

(a) IN GENERAL.—The owner of a patent may have relief by civil 

action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention 

claimed in such other patent was derived from the inventor of the 

invention claimed in the patent owned by the person seeking relief 

under this section. 

(b) FILING LIMITATION.—An action under this section may be 

filed only before the end of the 1-year period beginning on the date 

of the issuance of the first patent containing a claim to the allegedly 

derived invention and naming an individual alleged to have derived 

such invention as the inventor or joint inventor. 

§ 292. False marking 

(a) Whoever, without the consent of the patentee, marks upon, 

or affixes to, or uses in advertising in connection with anything 

made, used, offered for sale, or sold by such person within the 

United States, or imported by the person into the United States, 

the name or any imitation of the name of the patentee, the patent 

number, or the words ‘‘patent,’’ ‘‘patentee,’’ or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of 

deceiving the public and inducing them to believe that the thing 

was made, offered for sale, sold, or imported into the United States 

by or with the consent of the patentee; or 

Whoever marks upon, or affixes to, or uses in advertising in 

connection with any unpatented article, the word ‘‘patent’’ or any 

word or number importing that the same is patented for the purpose of deceiving the public; or 

Whoever marks upon, or affixes to, or uses in advertising in 

connection with any article, the words ‘‘patent applied for,’’ ‘‘patent 

pending,’’ or any word importing that an application for patent has 

been made, when no application for patent has been made, or if 

made, is not pending, for the purpose of deceiving the public— Shall be fined not more than $500 for every such offense. Only 

the United States may sue for the penalty authorized by this subsection. 

ø(b) Any person may sue for the penalty, in which event onehalf shall go to the person suing and the other to the use of the 

United States.¿ 

(b) A person who has suffered a competitive injury as a result 

of a violation of this section may file a civil action in a district court 

of the United States for recovery of damages adequate to compensate 

for the injury. 

(c) Whoever engages in an activity under subsection (a) for 

which liability would otherwise be imposed shall not be liable for 

such activity— 

(1) that is engaged in during the 3-year period beginning 

on the date on which the patent at issue expires; or 


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(2) that is engaged in after the end of that 3-year period if 

the word ‘‘expired’’ is placed before the word ‘‘patent’’, ‘‘patented’’, the abbreviation ‘‘pat’’, or the patent number, either on 

the article or through a posting on the Internet, as provided in 

section 287(a). 

§ 293. Nonresident patentee; service and notice 

Every patentee not residing in the United States may file in 

the Patent and Trademark Office a written designation stating the 

name and address of a person residing within the United States on 

whom may be served process or notice of proceedings affecting the 

patent or rights thereunder. If the person designated cannot be 

found at the address given in the last designation, or if no person 

has been designated, the øUnited States District Court for the District of Columbia¿ United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be 

served by publication or otherwise as the court directs. The court 

shall have the same jurisdiction to take any action respecting the 

patent or rights thereunder that it would have if the patentee were 

personally within the jurisdiction of the court. 

§ 294. Voluntary arbitration 

(a) * * * 

(b) Arbitration of such disputes, awards by arbitrators and confirmation of awards shall be governed by title 9, to the extent such 

title is not inconsistent with this section. In any such arbitration 

proceeding, the defenses provided for under section 282 øof this 

title¿ shall be considered by the arbitrator if raised by any party 

to the proceeding. 

* * * * * * * 

§ 298. Advice of counsel 

The failure of an infringer to obtain the advice of counsel with 

respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used 

to prove that the accused infringer willfully infringed the patent or 

that the infringer intended to induce infringement of the patent. 

§ 299. Joinder of parties 

(a) JOINDER OF ACCUSED INFRINGERS.—In any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) 

has been pled, parties that are accused infringers may be joined in 

one action as defendants or counterclaim defendants only if— 

(1) any right to relief is asserted against the parties jointly, 

severally, or in the alternative with respect to or arising out of 

the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the 

United States, offering for sale, or selling of the same accused 

product or process; and 

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action. 

(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—For purposes of 

this subsection, accused infringers may not be joined in one action 


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or trial as defendants or counterclaim defendants based solely on 

allegations that they each have infringed the patent or patents in 

suit. 

CHAPTER 30—PRIOR ART CITATIONS TO OFFICE AND EX 

PARTE REEXAMINATION OF PATENTS 

Sec. 

ø301. Citation of prior art.¿ 

301. Citation of prior art and written statements. 

* * * * * * * 

ø§ 301. Citation of prior art 

øAny person at any time may cite to the Office in writing prior 

art consisting of patents or printed publications which that person 

believes to have a bearing on the patentability of any claim of a 

particular patent. If the person explains in writing the pertinency 

and manner of applying such prior art to at least one claim of the 

patent, the citation of such prior art and the explanation thereof 

will become a part of the official file of the patent. At the written 

request of the person citing the prior art, his or her identity will 

be excluded from the patent file and kept confidential.¿ 

§ 301. Citation of prior art and written statements 

(a) IN GENERAL.—Any person at any time may cite to the Office 

in writing— 

(1) prior art consisting of patents or printed publications 

which that person believes to have a bearing on the patentability of any claim of a particular patent; or 

(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner 

took a position on the scope of any claim of a particular patent. 

(b) OFFICIAL FILE.—If the person citing prior art or written 

statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements 

to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of 

the official file of the patent. 

(c) ADDITIONAL INFORMATION.—A party that submits a written 

statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the 

statement was filed that addresses the written statement. 

(d) LIMITATIONS.—A written statement submitted pursuant to 

subsection (a)(2), and additional information submitted pursuant to 

subsection (c), shall not be considered by the Office for any purpose 

other than to determine the proper meaning of a patent claim in a 

proceeding that is ordered or instituted pursuant to section 304, 

314, or 324. If any such written statement or additional information 

is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to 

that order. 

(e) CONFIDENTIALITY.—Upon the written request of the person 

citing prior art or written statements pursuant to subsection (a), 

that person’s identity shall be excluded from the patent file and kept 

confidential. 


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§ 302. Request for reexamination 

Any person at any time may file a request for reexamination 

by the Office of any claim of a patent on the basis of any prior art 

cited under the provisions of section 301 øof this title¿. The request 

must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41 øof this title¿. The request must set forth the 

pertinency and manner of applying cited prior art to every claim 

for which reexamination is requested. Unless the requesting person 

is the owner of the patent, the Director promptly will send a copy 

of the request to the owner of record of the patent. 

§ 303. Determination of issue by Director 

(a) Within three months following the filing of a request for reexamination under the provisions of section 302 øof this title¿, the 

Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by 

the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director 

may determine whether a substantial new question of patentability 

is raised by patents and publications discovered by him or cited 

under the provisions of øsection 301 of this title¿ section 301 or 

302. The existence of a substantial new question of patentability is 

not precluded by the fact that a patent or printed publication was 

previously cited by or to the Office or considered by the Office. 

* * * * * * * 

(c) A determination by the Director pursuant to subsection (a) 

of this section that no substantial new question of patentability has 

been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination 

fee required under section 302 øof this title¿. 

§ 304. Reexamination order by Director 

If, in a determination made under the provisions of subsection 

303(a) øof this title¿, the Director finds that a substantial new 

question of patentability affecting any claim of a patent is raised, 

the determination will include an order for reexamination of the 

patent for resolution of the question. The patent owner will be 

given a reasonable period, not less than two months from the date 

a copy of the determination is given or mailed to him, within which 

he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner 

files such a statement, he promptly will serve a copy of it on the 

person who has requested reexamination under the provisions of 

section 302 øof this title¿. Within a period of two months from the 

date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. 

That person promptly will serve on the patent owner a copy of any 

reply filed. 

§ 305. Conduct of reexamination proceedings 

After the times for filing the statement and reply provided for 

by section 304 øof this title¿ have expired, reexamination will be 


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conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 øof this title¿. 

In any reexamination proceeding under this chapter, the patent 

owner will be permitted to propose any amendment to his patent 

and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of 

section 301 øof this title¿, or in response to a decision adverse to 

the patentability of a claim of a patent. No proposed amended or 

new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to 

the øBoard of Patent Appeals and Interferences¿ Patent Trial and 

Appeal Board, will be conducted with special dispatch within the 

Office. 

§ 306. Appeal 

The patent owner involved in a reexamination proceeding 

under this chapter may appeal under the provisions of section 134 

øof this title¿, and may seek court review under the provisions of 

sections 141 to ø145 of this title¿ 144, with respect to any decision 

adverse to the patentability of any original or proposed amended 

or new claim of the patent. 

§ 307. Certificate of patentability, unpatentability, and claim 

cancellation 

(a) * * * 

(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination 

proceeding will have the same effect as that specified in section 252 

øof this title¿ for reissued patents on the right of any person who 

made, purchased, or used within the United States, or imported 

into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the 

same, prior to issuance of a certificate under the provisions of subsection (a) of this section. 

øCHAPTER 31—OPTIONAL INTER PARTES 

REEXAMINATION PROCEDURES 

ø§ 311. Request for inter partes reexamination 

ø(a) IN GENERAL.—Any third-party requester at any time may 

file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301. 

ø(b) REQUIREMENTS.—The request shall— 

ø(1) be in writing, include the identity of the real party in 

interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; 

and 

ø(2) set forth the pertinency and manner of applying cited 

prior art to every claim for which reexamination is requested. 

ø(c) COPY.—The Director promptly shall send a copy of the 

request to the owner of record of the patent. 


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ø§ 312. Determination of issue by Director 

ø(a) REEXAMINATION.—Not later than 3 months after the filing 

of a request for inter partes reexamination under section 311, the 

Director shall determine whether a substantial new question of 

patentability affecting any claim of the patent concerned is raised 

by the request, with or without consideration of other patents or 

printed publications. The existence of a substantial new question of 

patentability is not precluded by the fact that a patent or printed 

publication was previously cited by or to the Office or considered 

by the Office. 

ø(b) RECORD.—A record of the Director’s determination under 

subsection (a) shall be placed in the official file of the patent, and 

a copy shall be promptly given or mailed to the owner of record of 

the patent and to the third-party requester. 

ø(c) FINAL DECISION.—A determination by the Director under 

subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been 

raised, the Director may refund a portion of the inter partes reexamination fee required under section 311. 

ø§ 313. Inter partes reexamination order by Director 

øIf, in a determination made under section 312(a), the Director 

finds that a substantial new question of patentability affecting a 

claim of a patent is raised, the determination shall include an 

order for inter partes reexamination of the patent for resolution of 

the question. The order may be accompanied by the initial action 

of the Patent and Trademark Office on the merits of the inter 

partes reexamination conducted in accordance with section 314. 

ø§ 314. Conduct of inter partes reexamination proceedings 

ø(a) IN GENERAL.—Except as otherwise provided in this section, reexamination shall be conducted according to the procedures 

established for initial examination under the provisions of sections 

132 and 133. In any inter partes reexamination proceeding under 

this chapter, the patent owner shall be permitted to propose any 

amendment to the patent and a new claim or claims, except that 

no proposed amended or new claim enlarging the scope of the 

claims of the patent shall be permitted. 

ø(b) RESPONSE.—(1) With the exception of the inter partes reexamination request, any document filed by either the patent 

owner or the third-party requester shall be served on the other 

party. In addition, the Office shall send to the third-party requester 

a copy of any communication sent by the Office to the patent owner 

concerning the patent subject to the inter partes reexamination 

proceeding. 

ø(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the 

third-party requester shall have one opportunity to file written 

comments addressing issues raised by the action of the Office or 

the patent owner’s response thereto, if those written comments are 

received by the Office within 30 days after the date of service of 

the patent owner’s response. 

ø(c) SPECIAL DISPATCH.—Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings 

under this section, including any appeal to the Board of Patent ApVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00143 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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peals and Interferences, shall be conducted with special dispatch 

within the Office. 

ø§ 315. Appeal 

ø(a) PATENT OWNER.—The patent owner involved in an inter 

partes reexamination proceeding under this chapter— 

ø(1) may appeal under the provisions of section 134 and 

may appeal under the provisions of sections 141 through 144, 

with respect to any decision adverse to the patentability of any 

original or proposed amended or new claim of the patent; and 

ø(2) may be a party to any appeal taken by a third-party 

requester under subsection (b). 

ø(b) THIRD-PARTY REQUESTER.—A third-party requester— 

ø(1) may appeal under the provisions of section 134, and 

may appeal under the provisions of sections 141 through 144, 

with respect to any final decision favorable to the patentability 

of any original or proposed amended or new claim of the patent; and 

ø(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 

134 or sections 141 through 144. 

ø(c) CIVIL ACTION.—A third-party requester whose request for 

an inter partes reexamination results in an order under section 313 

is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity 

of any claim finally determined to be valid and patentable on any 

ground which the third-party requester raised or could have raised 

during the inter partes reexamination proceedings. This subsection 

does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings. 

ø§ 316. Certificate of patentability, unpatentability, and 

claim cancellation 

ø(a) IN GENERAL.—In an inter partes reexamination proceeding 

under this chapter, when the time for appeal has expired or any 

appeal proceeding has terminated, the Director shall issue and 

publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable. 

ø(b) AMENDED OR NEW CLAIM.—Any proposed amended or new 

claim determined to be patentable and incorporated into a patent 

following an inter partes reexamination proceeding shall have the 

same effect as that specified in section 252 of this title for reissued 

patents on the right of any person who made, purchased, or used 

within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who 

made substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section. 

ø§ 317. Inter partes reexamination prohibited 

ø(a) ORDER FOR REEXAMINATION.—Notwithstanding any provision of this chapter, once an order for inter partes reexamination 


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of a patent has been issued under section 313, neither the thirdparty requester nor its privies, may file a subsequent request for 

inter partes reexamination of the patent until an inter partes reexamination certificate is issued and published under section 316, unless authorized by the Director. 

ø(b) FINAL DECISION.—Once a final decision has been entered 

against a party in a civil action arising in whole or in part under 

section 1338 of title 28, that the party has not sustained its burden 

of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a 

third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither 

that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which 

that party or its privies raised or could have raised in such civil 

action or inter partes reexamination proceeding, and an inter 

partes reexamination requested by that party or its privies on the 

basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly 

discovered prior art unavailable to the third-party requester and 

the Patent and Trademark Office at the time of the inter partes reexamination proceedings. 

ø§ 318. Stay of litigation 

øOnce an order for inter partes reexamination of a patent has 

been issued under section 313, the patent owner may obtain a stay 

of any pending litigation which involves an issue of patentability 

of any claims of the patent which are the subject of the inter partes 

reexamination order, unless the court before which such litigation 

is pending determines that a stay would not serve the interests of 

justice.¿ 

CHAPTER 31—INTER PARTES REVIEW 

Sec. 

311. Inter partes review. 

312. Petitions. 

313. Preliminary response to petition. 

314. Institution of inter partes review. 

315. Relation to other proceedings or actions. 

316. Conduct of inter partes review. 

317. Settlement. 

318. Decision of the Board. 

319. Appeal. 

§ 311. Inter partes review 

(a) IN GENERAL.—Subject to the provisions of this chapter, a 

person who is not the owner of a patent may file with the Office a 

petition to institute an inter partes review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to 

be reasonable, considering the aggregate costs of the review. 

(b) SCOPE.—A petitioner in an inter partes review may request 

to cancel as unpatentable 1 or more claims of a patent only on a 

ground that could be raised under section 102 or 103 and only on 

the basis of prior art consisting of patents or printed publications. 


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(c) FILING DEADLINE.—A petition for inter partes review shall 

be filed after the later of either— 

(1) the date that is 1 year after the grant of a patent or 

issuance of a reissue of a patent; or 

(2) if a post-grant review is instituted under chapter 32, the 

date of the termination of such post-grant review. 

§ 312. Petitions 

(a) REQUIREMENTS OF PETITION.—A petition filed under section 

311 may be considered only if— 

(1) the petition is accompanied by payment of the fee established by the Director under section 311; 

(2) the petition identifies all real parties in interest; 

(3) the petition identifies, in writing and with particularity, 

each claim challenged, the grounds on which the challenge to 

each claim is based, and the evidence that supports the grounds 

for the challenge to each claim, including— 

(A) copies of patents and printed publications that the 

petitioner relies upon in support of the petition; and 

(B) affidavits or declarations of supporting evidence 

and opinions, if the petitioner relies on expert opinions; 

(4) the petition provides such other information as the Director may require by regulation; and 

(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner 

or, if applicable, the designated representative of the patent 

owner. 

(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public. 

§ 313. Preliminary response to petition 

If an inter partes review petition is filed under section 311, the 

patent owner shall have the right to file a preliminary response to 

the petition, within a time period set by the Director, that sets forth 

reasons why no inter partes review should be instituted based upon 

the failure of the petition to meet any requirement of this chapter. 

§ 314. Institution of inter partes review 

(a) THRESHOLD.—The Director may not authorize an inter 

partes review to commence unless the Director determines that the 

information presented in the petition filed under section 311 and 

any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at 

least 1 of the claims challenged in the petition. 

(b) TIMING.—The Director shall determine whether to institute 

an inter partes review under this chapter pursuant to a petition 

filed under section 311 within 3 months after— 

(1) receiving a preliminary response to the petition under 

section 313; or 

(2) if no such preliminary response is filed, the last date on 

which such response may be filed. 

(c) NOTICE.—The Director shall notify the petitioner and patent 

owner, in writing, of the Director’s determination under subsection 

(a), and shall make such notice available to the public as soon as 


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is practicable. Such notice shall include the date on which the review shall commence. 

(d) NO APPEAL.—The determination by the Director whether to 

institute an inter partes review under this section shall be final and 

nonappealable. 

§ 315. Relation to other proceedings or actions 

(a) INFRINGER’S CIVIL ACTION.— (1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An 

inter partes review may not be instituted if, before the date on 

which the petition for such a review is filed, the petitioner, real 

party in interest, or privy of the petitioner filed a civil action 

challenging the validity of a claim of the patent. 

(2) STAY OF CIVIL ACTION.—If the petitioner, real party in 

interest, or privy of the petitioner files a civil action challenging 

the validity of a claim of the patent on or after the date on 

which the petitioner files a petition for inter partes review of the 

patent, that civil action shall be automatically stayed until either— 

(A) the patent owner moves the court to lift the stay; 

(B) the patent owner files a civil action or counterclaim 

alleging that the petitioner, real party in interest, or privy 

of the petitioner has infringed the patent; or 

(C) the petitioner, real party in interest, or privy of the 

petitioner moves the court to dismiss the civil action. 

(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute 

a civil action challenging the validity of a claim of a patent for 

purposes of this subsection. 

(b) PATENT OWNER’S ACTION.—An inter partes review may not 

be instituted if the petition requesting the proceeding is filed more 

than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging 

infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). 

(c) JOINDER.—If the Director institutes an inter partes review, 

the Director, in his or her discretion, may join as a party to that 

inter partes review any person who properly files a petition under 

section 311 that the Director, after receiving a preliminary response 

under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review 

under section 314. 

(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 

251, and 252, and chapter 30, during the pendency of an inter 

partes review, if another proceeding or matter involving the patent 

is before the Office, the Director may determine the manner in 

which the inter partes review or other proceeding or matter may 

proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. 

(e) ESTOPPEL.— 

(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in 

an inter partes review of a claim in a patent under this chapter 

that results in a final written decision under section 318(a), or 

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quest or maintain a proceeding before the Office with respect to 

that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under 

this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole 

or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of 

the Tariff Act of 1930 that the claim is invalid on any ground 

that the petitioner raised or reasonably could have raised during that inter partes review. 

§ 316. Conduct of inter partes review 

(a) REGULATIONS.—The Director shall prescribe regulations— 

(1) providing that the file of any proceeding under this 

chapter shall be made available to the public, except that any 

petition or document filed with the intent that it be sealed shall, 

if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; 

(2) setting forth the standards for the showing of sufficient 

grounds to institute a review under section 314(a); 

(3) establishing procedures for the submission of supplemental information after the petition is filed; 

(4) establishing and governing inter partes review under 

this chapter and the relationship of such review to other proceedings under this title; 

(5) setting forth standards and procedures for discovery of 

relevant evidence, including that such discovery shall be limited 

to— 

(A) the deposition of witnesses submitting affidavits or 

declarations; and 

(B) what is otherwise necessary in the interest of justice; 

(6) prescribing sanctions for abuse of discovery, abuse of 

process, or any other improper use of the proceeding, such as to 

harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding; 

(7) providing for protective orders governing the exchange 

and submission of confidential information; 

(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner 

file with such response, through affidavits or declarations, any 

additional factual evidence and expert opinions on which the 

patent owner relies in support of the response; 

(9) setting forth standards and procedures for allowing the 

patent owner to move to amend the patent under subsection (d) 

to cancel a challenged claim or propose a reasonable number of 

substitute claims, and ensuring that any information submitted 

by the patent owner in support of any amendment entered 

under subsection (d) is made available to the public as part of 

the prosecution history of the patent; 


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(10) providing either party with the right to an oral hearing as part of the proceeding; 

(11) requiring that the final determination in an inter 

partes review be issued not later than 1 year after the date on 

which the Director notices the institution of a review under this 

chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder 

under section 315(c); 

(12) setting a time period for requesting joinder under section 315(c); and 

(13) providing the petitioner with at least 1 opportunity to 

file written comments within a time period established by the 

Director. 

(b) CONSIDERATIONS.—In prescribing regulations under this 

section, the Director shall consider the effect of any such regulation 

on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely 

complete proceedings instituted under this chapter. 

(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and 

Appeal Board shall, in accordance with section 6, conduct each 

inter partes review instituted under this chapter. 

(d) AMENDMENT OF THE PATENT.— 

(1) IN GENERAL.—During an inter partes review instituted 

under this chapter, the patent owner may file 1 motion to 

amend the patent in 1 or more of the following ways: 

(A) Cancel any challenged patent claim. 

(B) For each challenged claim, propose a reasonable 

number of substitute claims. 

(2) ADDITIONAL MOTIONS.—Additional motions to amend 

may be permitted upon the joint request of the petitioner and 

the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director. 

(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or 

introduce new matter. 

(e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of 

proving a proposition of unpatentability by a preponderance of the 

evidence. 

§ 317. Settlement 

(a) IN GENERAL.—An inter partes review instituted under this 

chapter shall be terminated with respect to any petitioner upon the 

joint request of the petitioner and the patent owner, unless the Office 

has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect 

to a petitioner under this section, no estoppel under section 315(e) 

shall attach to the petitioner, or to the real party in interest or privy 

of the petitioner, on the basis of that petitioner’s institution of that 

inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a). 


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(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any 

collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in 

writing and a true copy of such agreement or understanding shall 

be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of 

the involved patents, and shall be made available only to Federal 

Government agencies on written request, or to any person on a 

showing of good cause. 

§ 318. Decision of the Board 

(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and 

Appeal Board shall issue a final written decision with respect to the 

patentability of any patent claim challenged by the petitioner and 

any new claim added under section 316(d). 

(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues 

a final written decision under subsection (a) and the time for appeal 

has expired or any appeal has terminated, the Director shall issue 

and publish a certificate canceling any claim of the patent finally 

determined to be unpatentable, confirming any claim of the patent 

determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to 

be patentable. 

(c) AMENDED OR NEW CLAIM.—Any proposed amended or new 

claim determined to be patentable and incorporated into a patent 

following an inter partes review under this chapter shall have the 

same effect as that specified in section 252 for reissued patents on 

the right of any person who made, purchased, or used within the 

United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate 

under subsection (b). 

(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review. 

§ 319. Appeal 

A party dissatisfied with the final written decision of the Patent 

Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter 

partes review shall have the right to be a party to the appeal. 

CHAPTER 32—POST-GRANT REVIEW 

Sec. 

321. Post-grant review. 

322. Petitions. 

323. Preliminary response to petition. 

324. Institution of post-grant review. 

325. Relation to other proceedings or actions. 

326. Conduct of post-grant review. 


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327. Settlement. 

328. Decision of the Board. 

329. Appeal. 

§ 321. Post-grant review 

(a) IN GENERAL.—Subject to the provisions of this chapter, a 

person who is not the patent owner may file with the Office a petition to institute a post-grant review of a patent. The Director shall 

establish, by regulation, fees to be paid by the person requesting the 

review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review. 

(b) SCOPE.—A petitioner in a post-grant review may request to 

cancel as unpatentable 1 or more claims of a patent on any ground 

that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim). 

(c) FILING DEADLINE.—A petition for a post-grant review may 

only be filed not later than the date that is 1 year after the date of 

the grant of the patent or of the issuance of a reissue patent (as the 

case may be). 

§ 322. Petitions 

(a) REQUIREMENTS OF PETITION.—A petition filed under section 

321 may be considered only if— 

(1) the petition is accompanied by payment of the fee established by the Director under section 321; 

(2) the petition identifies all real parties in interest; 

(3) the petition identifies, in writing and with particularity, 

each claim challenged, the grounds on which the challenge to 

each claim is based, and the evidence that supports the grounds 

for the challenge to each claim, including— 

(A) copies of patents and printed publications that the 

petitioner relies upon in support of the petition; and 

(B) affidavits or declarations of supporting evidence 

and opinions, if the petitioner relies on other factual evidence or on expert opinions; 

(4) the petition provides such other information as the Director may require by regulation; and 

(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner 

or, if applicable, the designated representative of the patent 

owner. 

(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition under section 321, the Director shall make the petition available to the public. 

§ 323. Preliminary response to petition 

If a post-grant review petition is filed under section 321, the 

patent owner shall have the right to file a preliminary response to 

the petition, within a time period set by the Director, that sets forth 

reasons why no post-grant review should be instituted based upon 

the failure of the petition to meet any requirement of this chapter. 

§ 324. Institution of post-grant review 

(a) THRESHOLD.—The Director may not authorize a post-grant 

review to commence unless the Director determines that the information presented in the petition filed under section 321, if such inVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00151 Fmt 6659 Sfmt 6603 E:\HR\OC\HR098P1.XXX HR098P1

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formation is not rebutted, would demonstrate that it is more likely 

than not that at least 1 of the claims challenged in the petition is 

unpatentable. 

(b) ADDITIONAL GROUNDS.—The determination required under 

subsection (a) may also be satisfied by a showing that the petition 

raises a novel or unsettled legal question that is important to other 

patents or patent applications. 

(c) TIMING.—The Director shall determine whether to institute 

a post-grant review under this chapter pursuant to a petition filed 

under section 321 within 3 months after— 

(1) receiving a preliminary response to the petition under 

section 323; or 

(2) if no such preliminary response is filed, the last date on 

which such response may be filed. 

(d) NOTICE.—The Director shall notify the petitioner and patent 

owner, in writing, of the Director’s determination under subsection 

(a) or (b), and shall make such notice available to the public as soon 

as is practicable. The Director shall make each notice of the institution of a post-grant review available to the public. Such notice shall 

include the date on which the review shall commence. 

(e) NO APPEAL.—The determination by the Director whether to 

institute a post-grant review under this section shall be final and 

nonappealable. 

§ 325. Relation to other proceedings or actions 

(a) INFRINGER’S CIVIL ACTION.— 

(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.—A postgrant review may not be instituted under this chapter if, before 

the date on which the petition for such a review is filed, the petitioner, real party in interest, or privy of the petitioner filed a 

civil action challenging the validity of a claim of the patent. 

(2) STAY OF CIVIL ACTION.—If the petitioner, real party in 

interest, or privy of the petitioner files a civil action challenging 

the validity of a claim of the patent on or after the date on 

which the petitioner files a petition for post-grant review of the 

patent, that civil action shall be automatically stayed until either— 

(A) the patent owner moves the court to lift the stay; 

(B) the patent owner files a civil action or counterclaim 

alleging that the petitioner, real party in interest, or privy 

of the petitioner has infringed the patent; or 

(C) the petitioner, real party in interest, or privy of the 

petitioner moves the court to dismiss the civil action. 

(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute 

a civil action challenging the validity of a claim of a patent for 

purposes of this subsection. 

(b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on 

which the patent is granted, the court may not stay its consideration 

of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant 

review has been filed under this chapter or that such a post-grant 

review has been instituted under this chapter. 


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(c) JOINDER.—If more than 1 petition for a post-grant review 

under this chapter is properly filed against the same patent and the 

Director determines that more than 1 of these petitions warrants the 

institution of a post-grant review under section 324, the Director 

may consolidate such reviews into a single post-grant review. 

(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 

251, and 252, and chapter 30, during the pendency of any postgrant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine 

the manner in which the post-grant review or other proceeding or 

matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this 

chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same 

or substantially the same prior art or arguments previously were 

presented to the Office. 

(e) ESTOPPEL.— 

(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in a 

post-grant review of a claim in a patent under this chapter that 

results in a final written decision under section 328(a), or the 

real party in interest or privy of the petitioner, may not request 

or maintain a proceeding before the Office with respect to that 

claim on any ground that the petitioner raised or reasonably 

could have raised during that post-grant review. 

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in a post-grant review of a claim in a patent under this 

chapter that results in a final written decision under section 

328(a), or the real party in interest or privy of the petitioner, 

may not assert either in a civil action arising in whole or in 

part under section 1338 of title 28 or in a proceeding before the 

International Trade Commission under section 337 of the Tariff 

Act of 1930 that the claim is invalid on any ground that the 

petitioner raised or reasonably could have raised during that 

post-grant review. 

(f) REISSUE PATENTS.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a 

claim in a reissue patent that is identical to or narrower than a 

claim in the original patent from which the reissue patent was 

issued, and the time limitations in section 321(c) would bar filing 

a petition for a post-grant review for such original patent. 

§ 326. Conduct of post-grant review 

(a) REGULATIONS.—The Director shall prescribe regulations— 

(1) providing that the file of any proceeding under this 

chapter shall be made available to the public, except that any 

petition or document filed with the intent that it be sealed shall, 

if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; 

(2) setting forth the standards for the showing of sufficient 

grounds to institute a review under subsections (a) and (b) of 

section 324; 

(3) establishing procedures for the submission of supplemental information after the petition is filed; 


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(4) establishing and governing a post-grant review under 

this chapter and the relationship of such review to other proceedings under this title; 

(5) setting forth standards and procedures for discovery of 

relevant evidence, including that such discovery shall be limited 

to evidence directly related to factual assertions advanced by either party in the proceeding; 

(6) prescribing sanctions for abuse of discovery, abuse of 

process, or any other improper use of the proceeding, such as to 

harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding; 

(7) providing for protective orders governing the exchange 

and submission of confidential information; 

(8) providing for the filing by the patent owner of a response to the petition under section 323 after a post-grant review has been instituted, and requiring that the patent owner 

file with such response, through affidavits or declarations, any 

additional factual evidence and expert opinions on which the 

patent owner relies in support of the response; 

(9) setting forth standards and procedures for allowing the 

patent owner to move to amend the patent under subsection (d) 

to cancel a challenged claim or propose a reasonable number of 

substitute claims, and ensuring that any information submitted 

by the patent owner in support of any amendment entered 

under subsection (d) is made available to the public as part of 

the prosecution history of the patent; 

(10) providing either party with the right to an oral hearing as part of the proceeding; and 

(11) requiring that the final determination in any postgrant review be issued not later than 1 year after the date on 

which the Director notices the institution of a proceeding under 

this chapter, except that the Director may, for good cause 

shown, extend the 1-year period by not more than 6 months, 

and may adjust the time periods in this paragraph in the case 

of joinder under section 325(c). 

(b) CONSIDERATIONS.—In prescribing regulations under this 

section, the Director shall consider the effect of any such regulation 

on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely 

complete proceedings instituted under this chapter. 

(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and 

Appeal Board shall, in accordance with section 6, conduct each 

post-grant review instituted under this chapter. 

(d) AMENDMENT OF THE PATENT.— 

(1) IN GENERAL.—During a post-grant review instituted 

under this chapter, the patent owner may file 1 motion to 

amend the patent in 1 or more of the following ways: 

(A) Cancel any challenged patent claim. 

(B) For each challenged claim, propose a reasonable 

number of substitute claims. 

(2) ADDITIONAL MOTIONS.—Additional motions to amend 

may be permitted upon the joint request of the petitioner and 

the patent owner to materially advance the settlement of a proceeding under section 327, or upon the request of the patent 

owner for good cause shown. 


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(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or 

introduce new matter. 

(e) EVIDENTIARY STANDARDS.—In a post-grant review instituted 

under this chapter, the petitioner shall have the burden of proving 

a proposition of unpatentability by a preponderance of the evidence. 

§ 327. Settlement 

(a) IN GENERAL.—A post-grant review instituted under this 

chapter shall be terminated with respect to any petitioner upon the 

joint request of the petitioner and the patent owner, unless the Office 

has decided the merits of the proceeding before the request for termination is filed. If the post-grant review is terminated with respect 

to a petitioner under this section, no estoppel under section 325(e) 

shall attach to the petitioner, or to the real party in interest or privy 

of the petitioner, on the basis of that petitioner’s institution of that 

post-grant review. If no petitioner remains in the post-grant review, 

the Office may terminate the post-grant review or proceed to a final 

written decision under section 328(a). 

(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any 

collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of a post-grant review under this section shall be in writing, and a true copy of such agreement or understanding shall be 

filed in the Office before the termination of the post-grant review as 

between the parties. At the request of a party to the proceeding, the 

agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved 

patents, and shall be made available only to Federal Government 

agencies on written request, or to any person on a showing of good 

cause. 

§ 328. Decision of the Board 

(a) FINAL WRITTEN DECISION.—If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and 

Appeal Board shall issue a final written decision with respect to the 

patentability of any patent claim challenged by the petitioner and 

any new claim added under section 326(d). 

(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues 

a final written decision under subsection (a) and the time for appeal 

has expired or any appeal has terminated, the Director shall issue 

and publish a certificate canceling any claim of the patent finally 

determined to be unpatentable, confirming any claim of the patent 

determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to 

be patentable. 

(c) AMENDED OR NEW CLAIM.—Any proposed amended or new 

claim determined to be patentable and incorporated into a patent 

following a post-grant review under this chapter shall have the 

same effect as that specified in section 252 of this title for reissued 

patents on the right of any person who made, purchased, or used 

within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who 


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made substantial preparation therefor, before the issuance of a certificate under subsection (b). 

(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each post-grant review. 

§ 329. Appeal 

A party dissatisfied with the final written decision of the Patent 

Trial and Appeal Board under section 328(a) may appeal the decision pursuant to sections 141 through 144. Any party to the postgrant review shall have the right to be a party to the appeal. 

PART IV—PATENT COOPERATION TREATY 

* * * * * * * 

CHAPTER 36—INTERNATIONAL STAGE 

§ 363. International application designating the United 

States: Effect 

An international application designating the United States 

shall have the effect, from its international filing date under article 

11 of the treaty, of a national application for patent regularly filed 

in the Patent and Trademark Office øexcept as otherwise provided 

in section 102(e) of this title¿. 

§ 365. Right of priority; benefit of the filing date of a prior 

application 

(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119 øof this title¿, a national application shall be entitled to the right of priority based on a prior 

filed international application which designated at least one country other than the United States. 

(b) In accordance with the conditions and requirement of section 119(a) øof this title¿ and the treaty and the Regulations, an 

international application designating the United States shall be entitled to the right of priority based on a prior foreign application, 

or a prior international application designating at least one country 

other than the United States. 

(c) In accordance with the conditions and requirements of section 120 øof this title¿, an international application designating the 

United States shall be entitled to the benefit of the filing date of 

a prior national application or a prior international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit 

of an earlier filing date is based on a prior international application 

which designated but did not originate in the United States, the 

Director may require the filing in the Patent and Trademark Office 

of a certified copy of such application together with a translation 

thereof into the English language, if it was filed in another language. 

* * * * * * * 


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§ 368. Secrecy of certain inventions; filing international applications in foreign countries 

(a) International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17 øof this 

title¿. 

(b) In accordance with article 27(8) of the treaty, the filing of 

an international application in a country other than the United 

States on the invention made in this country shall be considered 

to constitute the filing of an application in a foreign country within 

the meaning of chapter 17 øof this title¿, whether or not the 

United States is designated in that international application. 

* * * * * * * 

CHAPTER 37—NATIONAL STAGE 

§ 371. National stage: Commencement 

(a) * * * 

(b) Subject to subsection (f) of this section, the national stage 

shall commence with the expiration of the applicable time limit 

under article 22(1) or (2), or under article 39(1)(a) øof the treaty¿ 

of the treaty. 

(c) The applicant shall file in the Patent and Trademark Office— 

(1) the national fee provided in section 41(a) øof this title¿; 

* * * * * * * 

(4) an oath or declaration of the inventor (or other person 

authorized under chapter 11 øof this title¿) complying with the 

requirements of section 115 øof this title¿ and with regulations 

prescribed for oaths or declarations of applicants; 

* * * * * * * 

§ 372. National stage: Requirements and procedure 

(a) * * * 

(b) In case of international applications designating but not 

originating in, the United States— 

(1) * * * 

(2) the Director may cause the question of unity of invention to be reexamined under section 121 øof this title¿, within 

the scope of the requirements of the treaty and the Regulations; and 

* * * * * * * 

§ 373. Improper applicant 

An international application designating the United States, 

shall not be accepted by the Patent and Trademark Office for the 

national stage if it was filed by anyone not qualified under chapter 

11 øof this title¿ to be an applicant for the purpose of filing a national application in the United States. Such international applications shall not serve as the basis for the benefit of an earlier filing 

date under section 120 øof this title¿ in a subsequently filed application, but may serve as the basis for a claim of the right of priority under subsections (a) through (d) of section 119 øof this title¿, 


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if the United States was not the sole country designated in such 

international application. 

§ 374. Publication of international application 

The publication under the treaty defined in section 351(a) øof 

this title¿, of an international application designating the United 

States shall be deemed a publication under section 122(b), except 

as provided in øsections 102(e) and 154(d) of this title¿ section 

154(d). 

The publication under the treaty of an international application shall confer no rights and shall have no effect under this title 

other than that of a printed publication. 

§ 375. Patent issued on international application: Effect 

(a) A patent may be issued by the Director based on an international application designating the United States, in accordance 

with the provisions of this title. øSubject to section 102(e) of this 

title, such¿ Such patent shall have the force and effect of a patent 

issued on a national application filed under the provisions of chapter 11 øof this title¿. 

* * * * * * * 

TITLE 28, UNITED STATES CODE 

* * * * * * * 

PART IV—JURISDICTION AND VENUE 

* * * * * * * 

CHAPTER 83—COURTS OF APPEALS 

* * * * * * * 

§ 1295. Jurisdiction of the united states court of appeals for 

the federal circuit 

(a) The United States Court of Appeals for the Federal Circuit 

shall have exclusive jurisdictionø(1) of an appeal from a final decision of a district court 

of the United States, the United States District Court for the 

District of the Canal Zone, the District Court of Guam, the District Court of the Virgin Islands, or the District Court for the 

Northern Mariana Islands, if the jurisdiction of that court was 

based, in whole or in part, on section 1338 of this title, except 

that a case involving a claim arising under any Act of Congress 

relating to copyrights, exclusive rights in mask works, or 

trademarks and no other claims under section 1338(a) shall be 

governed by sections 1291, 1292, and 1294 of this title;¿ 

(1) of an appeal from a final decision of a district court of 

the United States, the District Court of Guam, the District 

Court of the Virgin Islands, or the District Court of the Northern Mariana Islands, in any civil action arising under, or in 

any civil action in which a party has asserted a compulsory 


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counterclaim arising under, any Act of Congress relating to patents or plant variety protection; 

* * * * * * * 

(4) of an appeal from a decision ofø(A) the Board of Patent Appeals and Interferences of 

the United States Patent and Trademark Office with respect to patent applications and interferences, at the instance of an applicant for a patent or any party to a patent 

interference, and any such appeal shall waive the right of 

such applicant or party to proceed under section 145 or 

146 of title 35;¿ 

(A) the Patent Trial and Appeal Board of the United 

States Patent and Trademark Office with respect to a patent application, derivation proceeding, reexamination, postgrant review, or inter partes review under title 35, at the 

instance of a party who exercised that party’s right to participate in the applicable proceeding before or appeal to the 

Board, except that an applicant or a party to a derivation 

proceeding may also have remedy by civil action pursuant 

to section 145 or 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to an application or derivation proceeding shall waive the right of 

such applicant or party to proceed under section 145 or 146 

of title 35; 

* * * * * * * 

CHAPTER 85—COURTS OF APPEALS 

* * * * * * * 

§ 1338. Patents, plant variety protection, copyrights, mask 

works, designs, trademarks, and unfair competition 

(a) The district courts shall have original jurisdiction of any 

civil action arising under any Act of Congress relating to patents, 

plant variety protection, copyrights and trademarks. øSuch jurisdiction shall be exclusive of the courts of the states in patent, plant 

variety protection and copyright cases.¿ No State court shall have 

jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For 

purposes of this subsection, the term ‘‘State’’ includes any State of 

the United States, the District of Columbia, the Commonwealth of 

Puerto Rico, the United States Virgin Islands, American Samoa, 

Guam, and the Northern Mariana Islands. 

* * * * * * * 

CHAPTER 89—DISTRICT COURTS; REMOVAL OF CASES 

FROM STATE COURTS 

Sec. 

1441. Actions removable generally. 

* * * * * * * 

1454. Patent, plant variety protection, and copyright cases. 

* * * * * * * 


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§ 1454. Patent, plant variety protection, and copyright cases 

(a) IN GENERAL.—A civil action in which any party asserts a 

claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights may be removed to the 

district court of the United States for the district and division embracing the place where the action is pending. 

(b) SPECIAL RULES.—The removal of an action under this section shall be made in accordance with section 1446, except that if 

the removal is based solely on this section— 

(1) the action may be removed by any party; and 

(2) the time limitations contained in section 1446(b) may be 

extended at any time for cause shown. 

(c) CLARIFICATION OF JURISDICTION IN CERTAIN CASES.—The 

court to which a civil action is removed under this section is not 

precluded from hearing and determining any claim in the civil action because the State court from which the civil action is removed 

did not have jurisdiction over that claim. 

(d) REMAND.—If a civil action is removed solely under this section, the district court— 

(1) shall remand all claims that are neither a basis for removal under subsection (a) nor within the original or supplemental jurisdiction of the district court under any Act of Congress; and 

(2) may, under the circumstances specified in section 

1367(c), remand any claims within the supplemental jurisdiction of the district court under section 1367. 

* * * * * * * 

CHAPTER 99—GENERAL PROVISIONS 

Sec. 

1631. Transfer to cure want of jurisdiction. 

1632. Transfer by the Court of Appeals for the Federal Circuit. 

* * * * * * * 

§ 1632. Transfer by the Court of Appeals for the Federal Circuit 

When a case is appealed to the Court of Appeals for the Federal 

Circuit under section 1295(a)(1), and no claim for relief arising 

under any Act of Congress relating to patents or plant variety protection is the subject of the appeal by any party, the Court of Appeals for the Federal Circuit shall transfer the appeal to the court 

of appeals for the regional circuit embracing the district from which 

the appeal has been taken. 

* * * * * * * 

TRADEMARK ACT OF 1946 

TITLE I—THE PRINCIPAL REGISTER 

* * * * * * * 

SEC. 21. (a) * * * 


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(b)(1) * * * 

* * * * * * * 

(4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the 

United States Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party 

to the action. If there are adverse parties residing in a plurality of 

districts not embraced within the same State, or an adverse party 

residing in a foreign country, the øUnited States District Court for 

the District of Columbia¿ United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any 

district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. 

* * * * * * * 

CONSOLIDATED APPROPRIATIONS ACT, 2005 

* * * * * * * 

DIVISION B—DEPARTMENTS OF COMMERCE, JUSTICE, AND STATE, THE JUDICIARY, AND RELATED AGENCIES 

APPROPRIATIONS ACT, 2005 

* * * * * * * 

TITLE VIII—PATENT AND TRADEMARK 

FEES 

* * * * * * * 

SEC. 802. ADJUSTMENT OF TRADEMARK FEES. 

(a) FEE FOR FILING APPLICATION.—øDuring fiscal years 2005, 

2006, and 2007,¿ Until such time as the Director sets or adjusts the 

fees otherwise, under such conditions as may be prescribed by the 

Director, the fee under section 31(a) of the Trademark Act of 1946 

(15 U.S.C. 1113(a)) for: (1) the filing of a paper application for the 

registration of a trademark shall be $375; (2) the filing of an electronic application shall be $325; and (3) the filing of an electronic 

application meeting certain additional requirements prescribed by 

the Director shall be $275. øDuring fiscal years 2005, 2006, and 

2007, the¿ The provisions of the second and third sentences of section 31(a) of the Trademark Act of 1946 shall apply to the fees established under this section. 

* * * * * * * 


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1 America Invents Act, H.R. 1249, 112th Cong. § 18. 

2 Id. § 15(b). 

SEC. 803. EFFECTIVE DATE, APPLICABILITY, AND TRANSITIONAL PROVISION. 

(a) EFFECTIVE DATE.—Except as otherwise provided in this 

title (including this section), the provisions of this title shall take 

effect on the date of the enactment of this Act øand shall apply 

only with respect to the remaining portion of fiscal year 2005 and 

fiscal year 2006¿. 

* * * * * * * 

Dissenting Views 

Patent reform is one of the most important issues facing Congress and the Nation. Increasingly our nation has an information 

based economy, and the key to such an economy is intellectual 

property such as patents, copyrights and trademarks. Studies establish that intellectual property drives this economy to the tune 

of $5 trillion dollars, accounting for half of all U.S. exports and employing nearly 18 million workers. This is why the House Judiciary 

Committee has been working on patent reform for over 6 years, 

under both parties. 

Unfortunately, the legislation does not represent an overall improvement over the status quo and, as presently drafted is not one 

that I can support. Among other things, I object to provisions in the 

bill that apply retroactively with regard to business method patents 1 and false markings cases. 2 Most of the proposed reforms in 

both the House and Senate patent reform bills such as the other 

post-grant provisions are applicable going forward, not retroactively. If we are seeking to craft a bipartisan bill with consensus, 

stripping the legal rights of private parties involved in pending litigation is a non-starter. 

Section 18 in the bill is purportedly designed to create an administrative mechanism to review so-called business method patents 

whose validity has been questioned. However, Section 18 is both 

too broad and too narrow to serve its purported goal, and works an 

injustice on legitimate patent holders as a result. Section 18 is 

overly broad because it is retroactive, applying to patents granted 

more than a decade ago. It is also overly broad because it could affect patents that have been upheld as valid through additional review at the USPTO, such as ex parte re-examination, or that have 

been held valid by a federal court. It applies not only to business 

methods but also to apparatus inventions. On the other hand, Section 18 is too narrow because instead of applying to all kinds of 

business methods, it only applies to financially-related business 

methods. Further, it is unfair and inappropriate to force specific 

patent holders that have been through reexamination, or that have 

survived years of legal challenge, to defend their patents under an 

entirely new set of rules at the USPTO. It is also contrary to patent law norms and establishes a bad precedent for our trade partners to force a small subset of patent holders—those who have invented financially-related business methods and associated apparatus—to defend themselves in a new, retroactive procedure that 

does not apply to any other patent holders. 


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3Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009). 4 Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc., No. 10-1912, 2011 U.S. Dist. LEXIS 

(N.D. Ohio Feb. 23, 2011); In re BP Lubricants USA Inc., Misc. Docket No. 960, 2011 U.S. App. 

LEXIS 5015 (Fed. Cir. March 15, 2011). 

I am also opposed to the section dealing with false markings 

cases. I say this as a member who has expressed concerns in the 

past with the Federal Circuit decision in Forest Group Inc. v. Bon 

Tool Co. 3 The legislation, in essence, would change the rules of the 

game for cases that are currently being litigated. To the extent legislation is needed, I support applying the new rules going forward 

because these rules would be implemented and cases would be adjudicated in conjunction with the new broader reforms of the entire 

patent system the bill proposes, creating balance and fairness for 

all parties. Moreover, based on recent court decisions that have already imposed more restrictive standards concerning present 

claims, there is absolutely no reason for Congress to interfere in 

these claims which are before the courts. 4

I am also concerned about the creation of a 3-year safe harbor 

for companies accused of false marking their products. Providing a 

safe harbor for expiring patents only compounds the retroactivity 

problem by ensuring that almost all ongoing litigation will be eliminated. 

I would also like to express my support for the Additional Views 

being filed by other Democratic Members noting improvements that 

should be made in the bill regarding inter partes reexamination. 

It is my hope that these and other problems can be alleviated 

and the bill modified so that it can become a true bipartisan consensus product. 

JOHN CONYERS, JR. 

Additional Views 

Congressional efforts to enact comprehensive patent reform 

began in the 107th Congress. Since that time, various iterations of 

patent reform bills have fallen short of the elusive finish-line. 

Today, however, we are closer than we have ever been to crafting 

legislation that will strengthen the patent system and afford the 

U.S. Patent and Trademark Office (PTO) the resources it requires 

to clear the still sizeable backlog of patent applications and move 

forward to deliver to all American inventors the first rate service 

they deserve. We are not there yet and the process has not been 

perfect. But Committee Democrats are encouraged that some of the 

core provisions we sought, for example, the expansion of prior user 

rights and the end to fee diversion, are in H.R. 1249. We write separately to highlight our concerns with modifications to the postgrant review procedures designed to provide controls on the quality 

of issued patents. 

A longstanding goal of patent reform has been to improve the 

PTO’s administrative procedures for challenging dubious patents 

through reexamination. H.R. 1249 creates a new post-grant review 

procedure to provide an additional check on poor-quality patents 

than currently available under current law. However, this new procedure is limited to challenges filed within 12 months of the date 

that a patent is granted. This 12-month deadline will limit the utilVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00163 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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1See Federal Trade Commission, The Evolving IP Marketplace: Aligning Patent Notice and 

Remedies with Competition (Mar. 2011), available at http://www.ftc.gov/os/2011/03/110307 

patentreport.pdf. 2 National Research Council of the National Academies, A Patent System for the 21st Century 

(2004) at 101. 3 Under Sec. 5 of H.R. 1249, inter partes reexamination is renamed as ‘‘inter partes review.’’ 4 United States Patent and Trademark Office (USPTO), Inter Partes Reexamination Filing 

Data (Mar. 31, 2011), available at http://www.uspto.gov/patents/IPlquarterlyl reportlMarchl2011.pdf. 5 United States Patent and Trademark Office, U.S. Patent Activity, Calendar Years 1790 to 

the Present, available at http://www.uspto.gov/web/offices/ac/ido/oeip/taf/hlcounts.htm. 6The Optional Inter Partes Reexamination Act, Pub. L. No. 106–113. 

7See Inter Partes Reexamination Filing Data, supra note 4. 

ity of the post-grant review as an efficient, low-cost alternative to 

litigation. The lack of clear notice of the precise scope of a given 

patents is well documented.1 In several industries, patents are 

often multitudinous, vague, and highly abstract. This prevents 

practitioners from being able to identify and assess relevant patents before they receive some specific warning of liability, which 

often comes many years after a patent has been issued. For this 

reason, the National Research Council of the National Academies 

recommended, at a minimum, the creation of a ‘‘second window’’ for 

post-grant review challenges triggered by litigation or a threat of 

enforcement by a patent owner.2

In the absence of a second window, patent reform legislation 

should maintain the existing system for reexaminations by the 

PTO, through ex parte and inter partes procedures. Inter partes reexamination in particular provides important ongoing opportunities 

for expert review of patent validity in some cases. H.R. 1249 maintains this procedure with some changes. We support the continued 

existence of inter partes reexamination 3 as well as the creation of 

the new post-grant review procedure. However, we have significant 

concerns about the limitations that H.R. 1249 imposes on inter 

partes review. 

Use of inter partes reexamination is already exceedingly rare in 

the status quo. In Fiscal Year 2010, 281 reexamination petitions 

were filed,4 while 219,614 utility patents were granted.5 The limitations imposed by H.R. 1249 and the managers amendment are 

motivated by assertions that the inter partes procedure may be 

abused to harass patent owners and interfere with the enforcement 

of valid patents. However, no empirical evidence, even anecdotally, 

was proffered to the Committee to demonstrate such abuses occur 

in the current reexamination system. On the contrary, of the 253 

inter partes reexaminations decided since the procedure was created in 1999,6 224 (89%) resulted in the modification or nullification of at least one patent claim, which means that the challenges 

were ultimately found meritorious.7 This suggests that further limitations and deterrents against inter partes petitions, beyond those 

already in place in current law, are unnecessary and counterproductive. 

Patent reform legislation should seek to expand opportunities for 

low-cost, efficient alternatives to litigation as a way of resolving 

disputes about the validity of issued patents. In the context of inter 

partes reexamination, H.R. 1249 does the opposite, by placing unnecessary constraints on a procedure that is already under-utilized. 

We are particularly concerned about two specific provisions. 

First, H.R. 1249 as amended sets a 12-month deadline for a defendant in litigation to file a petition for inter partes review, startVerDate Mar 15 2010 23:58 Jun 01, 2011 Jkt 099006 PO 00000 Frm 00164 Fmt 6659 Sfmt 6601 E:\HR\OC\HR098P1.XXX HR098P1

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ing from the date on which the party is served with a complaint 

for infringement. The length of this deadline is completely arbitrary, and does not account for the complexity of many patent cases 

that can encompass dozens of patents and defendants and hundreds of separate patent claims. In such complex cases, the 12- 

month period imposes an extremely compressed schedule that will 

not provide enough time for the defendants to prepare and file an 

inter partes petition. Instead, the deadline should be tied to substantive progress in patent litigation, such as the entry of an order 

by the district court construing the relevant patent claims. This 

would ensure that defendants have an opportunity to prepare legitimate petitions for inter partes review based upon the core issues 

in a patent case. 

Second, H.R. 1249 as amended raises the threshold for initiating 

an inter partes review procedure. In order to initiate a review, the 

Director must find ‘‘a reasonable likelihood that the petitioner 

would prevail with respect to at least one of the claims challenged 

in the petition.’’ The existing threshold—whether a petition raises 

a ‘‘substantial new question of patentability’’—should be maintained instead. As noted above, the overwhelming majority of inter 

partes reexaminations that have been initiated under the current 

standard have been ultimately deemed meritorious. A stricter 

threshold is therefore unjustified. Moreover, the practical meaning 

of the new standard in H.R. 1249 is not clear and creates a risk 

that the PTO will reject legitimate petitions at the outset of the 

procedure, without further inquiry. 

Because of these provisions, we do not support Sec. 5(a) of H.R. 

1249. Several Democratic amendments designed to address these 

provisions were offered but defeated during the markup of the bill. 

We believe that, at minimum, in order to preserve the existing utility of inter partes reexaminations, current law should be maintained. Ensuring the high caliber of patents circulating in the marketplace inures to the benefit of all Americans by stimulating innovation, encouraging investment and creating jobs. We hope that as 

H.R. 1249 moves closer to the floor, needed revisions will be made 

to ensure that inter partes reexamination remains a viable, efficient 

alternative to litigation for weeding out bad patents. 

HOWARD L. BERMAN. 

MELVIN L. WATT. 

ZOE LOFGREN. 

Æ 


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