I 

109TH CONGRESS 

1ST SESSION H. R. 2795

To amend title 35, United States Code, relating to the procurement, 

enforcement, and validity of patents. 

IN THE HOUSE OF REPRESENTATIVES 

JUNE 8, 2005

Mr. SMITH of Texas (for himself, Mr. BERMAN, Mr. GOODLATTE, Mr. BOUCHER, Ms. ZOE LOFGREN of California, Mr. CANNON, Mr. SCHIFF, Mr. 

ISSA, Mr. CONYERS, and Mr. COBLE) introduced the following bill; which 

was referred to the Committee on the Judiciary 

A BILL

To amend title 35, United States Code, relating to the 

procurement, enforcement, and validity of patents.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

4 (a) SHORT TITLE.—This Act may be cited as the 

5 ‘‘Patent Reform Act of 2005’’. 

6 (b) TABLE OF CONTENTS.—The table of contents of 

7 this Act is as follows:

Sec. 1. Short title; table of contents. 

Sec. 2. Reference to title 35, United States Code. 

Sec. 3. Right of the first inventor to file. 

Sec. 4. Right to a patent. 

Sec. 5. Duty of candor. 
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Sec. 6. Right of the inventor to obtain damages. 

Sec. 7. Injunctions. 

Sec. 8. Continuation applications. 

Sec. 9. Post-grant procedures and other quality enhancements. 

Sec. 10. Submissions by third parties. 

Sec. 11. Applicability; transitional provisions. 

1 SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE. 

2 Whenever in this Act a section or other provision is 

3 amended or repealed, that amendment or repeal shall be 

4 considered to be made to that section or other provision 

5 of title 35, United States Code. 

6 SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE. 

7 (a) DEFINITIONS.—Section 100 is amended by add8 ing at the end the following: 

9 ‘‘(f) The term ‘inventor’ means the individual or, if 

10 a joint invention, the individuals collectively who invented 

11 or discovered the subject matter of the invention. 

12 ‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 

13 any one of the individuals who invented or discovered the 

14 subject matter of a joint invention. 

15 ‘‘(h) The ‘effective filing date’ of a claimed invention 

16 is— 

17 ‘‘(1) the filing date of the patent or the applica18 tion for patent containing the claim to the invention; 

19 or 

20 ‘‘(2) if the patent or application for patent is 

21 entitled to a right of priority of any other applica22 tion under section 119, 365(a), or 365(b) or to the 
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1 benefit of an earlier filing date in the United States 

2 under section 120, 121, or 365(c), the filing date of 

3 the earliest such application in which the claimed in4 vention is disclosed in the manner provided by the 

5 first paragraph of section 112 of this title. 

6 ‘‘(i) The term ‘claimed invention’ means the subject 

7 matter defined by a claim in a patent or an application 

8 for a patent.’’. 

9 (b) CONDITIONS FOR PATENTABILITY.— 

10 (1) IN GENERAL.—Section 102 is amended to 

11 read as follows: 

12 ‘‘§ 102. Conditions for patentability; novelty 

13 ‘‘(a) NOVELTY; PRIOR ART.—A patent for a claimed 

14 invention may not be obtained if— 

15 ‘‘(1) the claimed invention was patented, de16 scribed in a printed publication, or otherwise pub17 licly known— 

18 ‘‘(A) more than one year before the effec19 tive filing date of the claimed invention; or 

20 ‘‘(B) before the effective filing date of the 

21 claimed invention, other than through disclo22 sures made by the inventor or a joint inventor 

23 or by others who obtained the subject matter 

24 disclosed directly or indirectly from the inventor 

25 or a joint inventor; or 
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1 ‘‘(2) the claimed invention was described in a 

2 patent issued under section 151, or in an application 

3 for patent published or deemed published under sec4 tion 122(b), in which the patent or application, as 

5 the case may be, names another inventor and was 

6 effectively filed before the effective filing date of the 

7 claimed invention. 

8 ‘‘(b) LIMITATION ON PRIOR ART.— 

9 ‘‘(1) COMMONLY ASSIGNED INVENTION EXCEP10 TION.—Subject matter that would otherwise qualify 

11 as prior art only under subsection (a)(2) shall not be 

12 prior art to a claimed invention if the subject matter 

13 and the claimed invention were, not later than the 

14 effective filing date of the claimed invention, owned 

15 by the same person or subject to an obligation of as16 signment to the same person. 

17 ‘‘(2) JOINT RESEARCH AGREEMENT EXCEP18 TION.— 

19 ‘‘(A) EXCEPTION.—Subject matter that 

20 would otherwise qualify as prior art only under 

21 subsection (a)(2) shall not be prior art for pur22 poses of section 103 to a claimed invention if— 

23 ‘‘(i) the claimed invention was made 

24 by or on behalf of parties to a joint re25 search agreement that was in effect on or 
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1 before the effective filing date of the 

2 claimed invention; 

3 ‘‘(ii) the subject matter was developed 

4 and the claimed invention was made as a 

5 result of activities undertaken within the 

6 scope of the joint research agreement; and 

7 ‘‘(iii) the application for patent for 

8 the claimed invention discloses or is 

9 amended to disclose the names of the par10 ties to the joint research agreement. 

11 ‘‘(B) DEFINITION.—For purposes of sub12 paragraph (A), the term ‘joint research agree13 ment’ means a written contract, grant, or coop14 erative agreement entered into by two or more 

15 persons or entities for the performance of ex16 perimental, developmental, or research work in 

17 the field of the claimed invention. 

18 ‘‘(3) REASONABLE AND EFFECTIVE ACCESSI19 BILITY REQUIREMENT.— 

20 ‘‘(A) IN GENERAL.—Subject matter is pub21 licly known for the purposes of subsection 

22 (a)(1) only when— 

23 ‘‘(i) it becomes reasonably and effec24 tively accessible through its use, sale, or 

25 disclosure by other means; or 
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1 ‘‘(ii) it is embodied in or otherwise in2 herent in subject matter that has become 

3 reasonably and effectively accessible. 

4 ‘‘(B) REASONABLE AND EFFECTIVE AC5 CESSIBILITY.—For purposes of subparagraph 

6 (A)— 

7 ‘‘(i) subject matter is reasonably ac8 cessible if persons of ordinary skill in the 

9 art to which the subject matter pertains 

10 are able to gain access to the subject mat11 ter by without resort to undue efforts; and 

12 ‘‘(ii) subject matter is effectively ac13 cessible if persons of ordinary skill in the 

14 art to which the subject matter pertains 

15 are able to comprehend the content of the 

16 subject matter without resort to undue ef17 forts. 

18 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

19 EFFECTIVELY FILED.—A patent or application for 

20 patent is effectively filed under subsection (a)(2) 

21 with respect to any subject matter described in the 

22 patent or application— 

23 ‘‘(A) as of the filing date of the patent or 

24 the application for patent; or 
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1 ‘‘(B) if the patent or application for patent 

2 is entitled to claim a right of priority under sec3 tion 119, 365(a), or 365(b) or to claim the ben4 efit of an earlier filing date under section 120, 

5 121, or 365(c), based upon one or more prior 

6 filed applications for patent, as of the filing 

7 date of the earliest such application that de8 scribes the subject matter.’’. 

9 (2) CONFORMING AMENDMENT.—The item re10 lating to section 102 in the table of sections for 

11 chapter 10 is amended to read as follows: 

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

12 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

13 SUBJECT MATTER.—Section 103 is amended— 

14 (1) by striking subsections (b) and (c); and 

15 (2) in subsection (a)— 

16 (A) by striking ‘‘(a) A patent may not be 

17 obtained through the invention’’ and inserting 

18 ‘‘A patent for a claimed invention may not be 

19 obtained through the claimed invention’’; and 

20 (B) by striking ‘‘at the time the invention 

21 was made’’ and inserting ‘‘before the effective 

22 filing date of the claimed invention’’. 

23 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

24 MADE ABROAD.—Section 104, and the item relating to 
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1 that section in the table of sections for chapter 10, are 

2 repealed. 

3 (e) REPEAL OF STATUTORY INVENTION REGISTRA4 TION.—Section 157, and the item relating to that section 

5 in the table of sections for chapter 14, are repealed. 

6 (f) EARLIER FILING DATE FOR INVENTOR AND

7 JOINT INVENTOR.—Section 120 is amended by striking 

8 ‘‘which is filed by an inventor or inventors named’’ and 

9 inserting ‘‘which names an inventor or joint inventor’’. 

10 (g) CONFORMING AMENDMENTS.— 

11 (1) RIGHT OF PRIORITY.—Section 172 is 

12 amended by striking ‘‘and the time specified in sec13 tion 102(d)’’. 

14 (2) LIMITATION ON REMEDIES.—Section 

15 287(c)(4) is amended by striking ‘‘the earliest effec16 tive filing date of which is prior to’’ and inserting 

17 ‘‘which has an effective filing date before’’. 

18 (3) INTERNATIONAL APPLICATION DESIG19 NATING THE UNITED STATES: EFFECT.—Section 

20 363 is amended by striking ‘‘except as otherwise 

21 provided in section 102(e) of this title’’. 

22 (4) PUBLICATION OF INTERNATIONAL APPLICA23 TION: EFFECT.—Section 374 is amended by striking 

24 ‘‘sections 102(e) and 154(d)’’ and inserting ‘‘section 

25 154(d)’’. 
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1 (5) PATENT ISSUED ON INTERNATIONAL APPLI2 CATION: EFFECT.—The second sentence of section 

3 375(a) is amended by striking ‘‘Subject to section 

4 102(e) of this title, such’’ and inserting ‘‘Such’’. 

5 (6) LIMIT ON RIGHT OF PRIORITY.—Section 

6 119(a) is amended by striking ‘‘; but no patent shall 

7 be granted’’ and all that follows through ‘‘one year 

8 prior to such filing’’. 

9 (7) INVENTIONS MADE WITH FEDERAL ASSIST10 ANCE.—Section 202(c) is amended— 

11 (A) in paragraph (2)— 

12 (i) by striking ‘‘publication, on sale, 

13 or public use,’’ and all that follows through 

14 ‘‘obtained in the United States’’ and in15 serting ‘‘the 1-year period referred to in 

16 section 102(a) would end before the end of 

17 such 2-year period’’; and 

18 (ii) by striking ‘‘the statutory’’ and 

19 inserting ‘‘the 1-year’’; and 

20 (B) in paragraph (3), by striking ‘‘any 

21 statutory bar date that may occur under this 

22 title due to publication, on sale, or public use’’ 

23 and inserting ‘‘the expiration of the 1-year pe24 riod referred to in section 102(a)’’. 
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1 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

2 Section 291, and the item relating to that section in the 

3 table of sections for chapter 29, are repealed. 

4 (i) INVENTOR’S RIGHTS CONTESTS.—Section 135(a) 

5 is amended to read as follows: 

6 ‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 

7 ‘‘(1) INSTITUTION OF INVENTOR’S RIGHTS CON8 TEST.—Whenever patents or applications for patent 

9 naming different individuals as the inventor are 

10 deemed by the Director to interfere because of a dis11 pute over the right to patent under section 101, the 

12 Director shall institute an inventor’s rights contest 

13 for the purpose of determining the right to patent. 

14 ‘‘(2) DETERMINATION BY BOARD OF PATENT

15 APPEALS.—The Board of Patent Appeals— 

16 ‘‘(A) shall determine the question of the 

17 right to patent; 

18 ‘‘(B) in appropriate circumstances, may 

19 correct the naming of the inventor in any appli20 cation or patent at issue; and 

21 ‘‘(C) shall issue a final decision on the 

22 right to patent. 

23 ‘‘(3) EFFECT OF FINAL DECISION.—The final 

24 decision of the Board of Patent Appeals under para25 graph (2), if adverse to the claim of an applicant, 
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1 shall constitute the final refusal by the Patent and 

2 Trademark Office on the claims involved. The Direc3 tor may issue a patent to an applicant who is ad4 judged to have the right to patent. The final decision 

5 of the Board, if adverse to a patentee, shall, if no 

6 appeal or other review of the decision has been or 

7 can be taken or had, constitute cancellation of the 

8 claims involved in the patent, and notice of such 

9 cancellation shall be endorsed on copies of the patent 

10 distributed after such cancellation by the Patent and 

11 Trademark Office.’’. 

12 (j) BOARD OF PATENT APPEALS.— 

13 (1) ELIMINATION OF REFERENCES TO INTER14 FERENCES.—(A) Sections 6, 41, 134, 141, 145, 

15 146, 154, 305, and 314 are each amended by strik16 ing ‘‘Board of Patent Appeals and Interferences’’ 

17 each place it appears and inserting ‘‘Board of Pat18 ent Appeals’’. 

19 (B) Sections 135, 141, 146, and 154 are each 

20 amended by striking ‘‘interference’’ each place it ap21 pears and inserting ‘‘inventor’s rights contest’’. 

22 (C) The section heading for section 6 is amend23 ed to read as follows: 
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1 ‘‘§ 6. Board of Patent Appeals’’. 

2 (D) The section heading for section 134 is 

3 amended to read as follows: 

4 ‘‘§ 134. Appeal to the Board of Patent Appeals’’. 

5 (E) The section heading for section 135 is 

6 amended to read as follows: 

7 ‘‘§ 135. Inventor’s rights contests’’. 

8 (F) The section heading for section 146 is 

9 amended to read as follows: 

10 ‘‘§ 146. Civil action in case of inventor’s rights con11 test’’. 

12 (G) Section 154(b)(1)(C) is amended by strik13 ing ‘‘interferences’’ and inserting ‘‘inventor’s rights 

14 contests’’. 

15 (H) The item relating to section 6 in the table 

16 of sections for chapter 1 is amended to read as fol17 lows:

‘‘6. Board of Patent Appeals.’’.

18 (I) The items relating to sections 134 and 135 

19 in the table of sections for chapter 12 are amended 

20 to read as follows:

‘‘134. Appeal to the Board of Patent Appeals. 

‘‘135. Inventor’s rights contests.’’.

21 (J) The item relating to section 146 in the 

22 table of sections for chapter 13 is amended to read 

23 as follows:

‘‘146. Civil action in case of inventor’s rights contest.’’.
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1 (2) TECHNICAL AND CONFORMING AMEND2 MENTS.—Section 135(c) is amended— 

3 (A) by striking ‘‘(c) Any’’ and inserting 

4 ‘‘(c)(1) Any’’; 

5 (B) in the second paragraph, by striking 

6 ‘‘The Director’’ and inserting ‘‘(2) The Direc7 tor’’; and 

8 (C) in the third paragraph, by striking 

9 ‘‘Any discretionary’’ and inserting ‘‘(3) Any dis10 cretionary’’. 

11 SEC. 4. RIGHT TO A PATENT. 

12 (a) RIGHT TO PATENT.— 

13 (1) IN GENERAL.—Section 101 is amended to 

14 read as follows: 

15 ‘‘§ 101. Right to patent; subject matter eligible for 

16 patenting 

17 ‘‘The inventor of any new and useful process, ma18 chine, manufacture, or composition of matter, or any new 

19 and useful improvement thereof, has the right to apply 

20 for and to obtain a patent therefor, subject to the condi21 tions and requirements of this title.’’. 

22 (2) CONFORMING AMENDMENT.—The item re23 lating to section 101 in the table of sections for 

24 chapter 10 is amended to read as follows: 

‘‘101. Right to patent; subject matter eligible for patenting.’’. 
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1 (b) OATH OF APPLICANT.—Section 115 is amended 

2 to read as follows: 

3 ‘‘§ 115. Oath of applicant 

4 ‘‘The Director may require the applicant to make an 

5 oath setting forth particulars relating to the inventor and 

6 the invention.’’. 

7 (c) FILING BY OTHER THAN INVENTOR.—Section 

8 118 is amended to read as follows: 

9 ‘‘§ 118. Filing by other than inventor 

10 ‘‘A person to whom the inventor has assigned or is 

11 under an obligation to assign the invention may make an 

12 application for patent. A person who otherwise shows suf13 ficient proprietary interest in the matter may make an ap14 plication for patent on behalf of and as agent for the in15 ventor on proof of the pertinent facts and a showing that 

16 such action is appropriate to preserve the rights of the 

17 parties. If the Director grants a patent on an application 

18 filed under this section by a person other than the inven19 tor, the patent shall be granted to the real party in inter20 est and upon such notice to the inventor as the Director 

21 considers to be sufficient.’’. 

22 (d) SPECIFICATION.—Section 112 is amended— 

23 (1) in the first paragraph— 
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1 (A) by striking ‘‘The specification’’ and in2 serting ‘‘(a) IN GENERAL.—The specification’’; 

3 and 

4 (B) by striking ‘‘, and shall set forth the 

5 best mode contemplated by the inventor of car6 rying out his invention’’; 

7 (2) in the second paragraph— 

8 (A) by striking ‘‘The specifications’’ and 

9 inserting ‘‘(b) CONCLUSION.—The specifica10 tion’’; and 

11 (B) by striking ‘‘applicant regards as his 

12 invention’’ and inserting ‘‘inventor or a joint in13 ventor regards as the invention’’; 

14 (3) in the third paragraph, by striking ‘‘A 

15 claim’’ and inserting ‘‘(c) FORM.—A claim’’; 

16 (4) in the fourth paragraph, by striking ‘‘Sub17 ject to the following paragraph,’’ and inserting ‘‘(d) 

18 REFERENCE IN DEPENDENT FORMS.—Subject to 

19 subsection (e),’’; 

20 (5) in the fifth paragraph, by striking ‘‘A 

21 claim’’ and inserting ‘‘(e) REFERENCE IN MULTIPLE

22 DEPENDENT FORM.—A claim’’; and 

23 (6) in the last paragraph, by striking ‘‘An ele24 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

25 A COMBINATION.—An element’’. 
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1 SEC. 5. DUTY OF CANDOR. 

2 (a) IN GENERAL.—Chapter 12 of title 35, United 

3 States Code, is amended by adding at the end the fol4 lowing: 

5 ‘‘§ 136. Duty of candor: patents and applications for 

6 patent 

7 ‘‘(a) DUTY.—The Director shall by regulation impose 

8 a duty of candor and good faith on individuals associated 

9 with the filing and prosecution of an application for patent 

10 and on individuals assisting a patent owner in proceedings 

11 before the Office involving a patent. The duty shall require 

12 each such individual to timely disclose information known 

13 to that individual to be material to any issue before the 

14 Office in connection with the application or patent, and 

15 to not materially misrepresent information. The duty may 

16 further address the types of information for which disclo17 sure is required and the standards upon which a finding 

18 of misrepresentation or concealment on the part of such 

19 individuals could be based. Any allegation of any type of 

20 violation of the duty of candor and good faith under this 

21 subsection shall be governed exclusively by this chapter. 

22 ‘‘(b) VIOLATION.—Any individual who is subject to 

23 the duty of candor and good faith under subsection (a) 

24 and who, with the intent to deceive or mislead, knowingly 

25 fails to disclose material information or knowingly and 

26 materially misrepresents information has engaged in mis-
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1 conduct under this section, if the Director or a court under 

2 subsection (d), as the case may be, finds, by clear and 

3 convincing evidence, that— 

4 ‘‘(1) the individual failed to disclose information 

5 or misrepresented information; 

6 ‘‘(2) the information not disclosed was material 

7 or, in the case of a misrepresentation, the misrepre8 sentation was material; 

9 ‘‘(3) the individual had knowledge of the mate10 riality of the information not disclosed or, in the 

11 case of a misrepresentation, of the misrepresentation 

12 and materiality of the misrepresentation; and 

13 ‘‘(4) the individual had the intent to deceive or 

14 mislead. 

15 ‘‘(c) ADJUDICATION BY THE OFFICE.— 

16 ‘‘(1) OTHER FORA PRECLUDED.—No court or 

17 Federal department or agency other than the Office, 

18 and no other Federal or State governmental entity, 

19 may investigate or make a determination or an adju20 dication with respect to an alleged violation of the 

21 duty of candor and good faith under subsection (a) 

22 or with respect to an alleged fraud, inequitable con23 duct, or other misconduct in any proceeding before 

24 the Office involving a patent or in connection with 
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1 the filing or examination of an application for pat2 ent, except as expressly permitted in this section. 

3 ‘‘(2) EXCEPTION REGARDING PENDING APPLI4 CATIONS.—Nothing in this subsection shall limit the 

5 authority of the Director to enforce regulations con6 cerning pending applications for patent, including 

7 regulations relating to misconduct. 

8 ‘‘(3) LIMITATION ON DEFENSES TO ENFORCE9 MENT OF PATENT.— No defense of invalidity of a 

10 patent or other defense to the enforcement of a pat11 ent may be based in whole or in part upon a viola12 tion of the duty of candor and good faith under sub13 section (a) or on any fraud, inequitable conduct, or 

14 other misconduct, except as expressly permitted in 

15 this section. 

16 ‘‘(4) REFERRAL BY COURT.—In any matter be17 fore a court involving an issue of validity or infringe18 ment of a patent, if the court determines that an 

19 issue of possible misconduct under subsection (b) ex20 ists, the court shall refer the matter to the Office for 

21 investigation and sanctions under this section. If 

22 such referral is made, the matter shall be resolved 

23 as provided in this section. 

24 ‘‘(d) UNENFORCEABILITY ACTION.— 
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1 ‘‘(1) IN GENERAL.—A patent may be held un2 enforceable if a court determines, pursuant to a 

3 pleading permitted under paragraph (2), that— 

4 ‘‘(A) misconduct under subsection (b) has 

5 occurred and constitutes fraud by reason of re6 liance by the Office on the misconduct which 

7 has resulted in the issuance of, or a certificate 

8 affirming patentability of, one or more invalid 

9 claims in a patent; and 

10 ‘‘(B) the fraud is attributable to the patent 

11 owner. 

12 ‘‘(2) REQUIRED MOTION TO PLEAD UNEN13 FORCEABILITY.—The defense of unenforceability de14 scribed in paragraph (1) may be pled in an action 

15 before a court only upon a motion to amend the 

16 pleadings in the action. The court shall not grant 

17 the motion unless— 

18 ‘‘(A) the validity of one or more claims in 

19 the patent is at issue in the action; 

20 ‘‘(B) the court has previously entered a 

21 judgment in the action that a claim in the pat22 ent is invalid; 

23 ‘‘(C) the motion to amend the pleadings is 

24 brought by a party to the action adverse to the 

25 patent owner within 3 months after a judgment 
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1 is entered by the court invalidating the claim; 

2 and 

3 ‘‘(D) the motion sets out with particularity 

4 a substantial basis for findings that— 

5 ‘‘(i) because of the reliance of the Of6 fice on the misconduct, fraud took place in 

7 a proceeding before the Office involving the 

8 patent or in connection with the filing or 

9 examination of the application for patent, 

10 and as a result at least 1 claim in the pat11 ent invalidated in the action was issued as 

12 a result of the reliance on the misconduct; 

13 and 

14 ‘‘(ii) the alleged fraud is attributable 

15 to the patent owner. 

16 ‘‘(3) REQUIRED FINDINGS FOR UNENFORCE17 ABILITY.— 

18 ‘‘(A) LIABILITY OF PATENT OWNER.—In 

19 determining the unenforceability of a patent, no 

20 misconduct under subsection (b) by an indi21 vidual registered to practice before the Office 

22 and acting in a representative capacity before 

23 the Office in a proceeding before the Office in24 volving the patent or in connection with the fil25 ing or examination of the application for patent 
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1 shall be attributable to the patent owner unless 

2 the patent owner, or another individual who— 

3 ‘‘(i) is subject to the duty of candor 

4 and good faith with respect to the patent, 

5 ‘‘(ii) is not registered to practice be6 fore the Office, and 

7 ‘‘(iii) was acting on the patent owner’s 

8 behalf, 

9 is determined to have violated the duty of can10 dor and good faith. 

11 ‘‘(B) RELIANCE OF THE PATENT EXAM12 INER.—No misconduct may be determined to 

13 constitute fraud sufficient to support a finding 

14 that a patent is unenforceable without clear and 

15 convincing evidence of reliance of the Office on 

16 the alleged misconduct, resulting in the 

17 issuance of a claim invalidated by the court be18 cause a competent patent examiner either— 

19 ‘‘(i) would not have issued the invali20 dated claim, acting reasonably, in the ab21 sence of the misconduct; or 

22 ‘‘(ii) based upon the prosecution his23 tory as a whole objectively considered, 

24 would have done so based upon in whole or 

25 in part on account of the misconduct. 
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1 ‘‘(e) INVESTIGATION OF MISCONDUCT.— 

2 ‘‘(1) IN GENERAL.—The Director shall establish 

3 a special office with authority to investigate possible 

4 violations of the duty of candor and good faith, in5 cluding possible misconduct, in a proceeding before 

6 the Office involving a patent or in connection with 

7 the filing or examination of an application for pat8 ent, in cases in which such matters are referred to 

9 the Office for investigation under subsection (c)(4). 

10 The special office shall, following such referral, com11 mence an investigation into possible violations of the 

12 duty . After such an investigation is begun, any sub13 sequent decision to maintain the investigation or 

14 abandon the investigation may be made only by the 

15 Director, and such decision may not be appealed or 

16 reviewed. 

17 ‘‘(2) PROCEDURES.— 

18 ‘‘(A) SUBPOENAS.—During the period in 

19 which a misconduct investigation is conducted 

20 under paragraph (1), the matter shall be a con21 tested case in the Office and the Director may 

22 seek evidence or other information through sub23 poenas under section 24. 

24 ‘‘(B) NOTICE; SUBJECT PARTIES.—The 

25 Director shall provide written notice to the pat-
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1 ent owner of the commencement of the inves2 tigation and may provide such written notice to 

3 persons who were owners of the patent or appli4 cation for patent (or persons to whom the pat5 ent or application for patent was subject to an 

6 obligation of assignment) at the time the con7 duct that is the subject of the investigation oc8 curred. Any person receiving written notice 

9 under this subparagraph shall be designated as 

10 a ‘subject party.’ The Director shall provide 

11 written notice under this subparagraph of an 

12 investigation before seeking any evidence under 

13 section 24, but otherwise at such time as the 

14 Director shall determine. Upon providing such 

15 written notice to the subject parties, the Direc16 tor shall publish a notice of the commencement 

17 of the investigation in the Federal Register. 

18 ‘‘(C) OBTAINING EVIDENCE.—Upon re19 quest of a subject party, the Director shall de20 termine the manner in which to allow a subject 

21 party to obtain evidence of potential relevance, 

22 including by authorizing the subject party to 

23 seek subpoenas under section 24. 

24 ‘‘(D) PRELIMINARY DETERMINATION.— 

25 The Director, at the earliest practicable time 
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1 after the date on which notice of the investiga2 tion is published under subparagraph (B), shall 

3 conclude the investigation and make a prelimi4 nary determination on the issues under inves5 tigation. The Director shall, within 45 days 

6 after an investigation is begun, establish a tar7 get date for rendering a preliminary determina8 tion. 

9 ‘‘(E) CONSULTATION WITH OTHER DE10 PARTMENTS AND AGENCIES.—During the 

11 course of each investigation under this section 

12 and section 137, the Director may consult with, 

13 seek advice and information from, and other14 wise obtain assistance from the Attorney Gen15 eral, the Federal Trade Commission, the Inter16 national Trade Commission, the Securities and 

17 Exchange Commission, and the heads of such 

18 other departments and agencies as the Director 

19 considers appropriate. 

20 ‘‘(3) NOTICE OF DETERMINATION.— 

21 ‘‘(A) IF NO MISCONDUCT FOUND.—If the 

22 Director determines in an investigation under 

23 paragraph (2) that there is no basis for con24 cluding that misconduct under subsection (b) 

25 has occurred, the Director shall provide written 
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1 notice of such determination to each of the sub2 ject parties not later than 1 month after the 

3 conclusion of the investigation. A determination 

4 of the Director under this subparagraph is final 

5 and may not be appealed. 

6 ‘‘(B) IF MISCONDUCT MAY HAVE OC7 CURRED.—If the Director makes a preliminary 

8 determination in an investigation under para9 graph (2) that misconduct under subsection (b) 

10 may have occurred, the Director shall provide 

11 written notice of the preliminary determination 

12 to each of the subject parties not later than 1 

13 month after the conclusion of the investigation. 

14 Such written notice shall provide a description 

15 with particularity of the separate acts alleged to 

16 constitute such possible misconduct. The Direc17 tor shall afford the subject parties an oppor18 tunity to respond to the preliminary determina19 tion and a period of time within which to reach 

20 a settlement of the issue before taking any fur21 ther action. 

22 ‘‘(4) FINAL DETERMINATION; APPEAL TO

23 BOARD.— 

24 ‘‘(A) IN GENERAL.—If a matter relating to 

25 possible misconduct is not settled under para-
26 

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1 graph (3), the preliminary determination shall 

2 become final and may not be appealed unless 1 

3 or more of the subject parties contests the pre4 liminary determination by requesting a hearing 

5 on the matter, within 2 months after the end of 

6 the settlement period provided under paragraph 

7 (3)(B), before a panel of the Board of Patent 

8 Appeals. 

9 ‘‘(B) HEARING.—If a hearing is timely re10 quested under subparagraph (A), the hearing 

11 shall provide the Director and the patent owner 

12 an opportunity to present evidence and argu13 ments. 

14 ‘‘(C) DETERMINATION OF PANEL.—The 

15 panel shall, not later than 1 year after the date 

16 of the request by 1 or more of the subject par17 ties for a hearing under subparagraph (B), 

18 issue a written determination containing find19 ings of facts and conclusions of law on the mat20 ters before it. If the written determination by 

21 the panel concludes that one or more alleged 

22 violations of the duty of candor and good faith 

23 do not constitute acts of misconduct, then the 

24 determination is final with respect to such 

25 issues of possible misconduct and may not be 
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1 appealed, and no penalty shall be imposed with 

2 respect to such issues. If the written determina3 tion by the panel concludes that one or more al4 leged violations of the duty of candor and good 

5 faith do constitute acts of misconduct, then the 

6 decision of the panel shall represent a final de7 termination of the Office on the matters in8 volved. 

9 ‘‘(5) NOTICE OF FINAL DETERMINATION.—If a 

10 matter of possible misconduct is not settled or other11 wise terminated following the opportunity for settle12 ment and hearing under paragraphs (3) and (4), the 

13 Director shall notify the subject parties in writing of 

14 the final determination on the matter under para15 graph (4), setting forth— 

16 ‘‘(A) the factual findings of the investiga17 tion; 

18 ‘‘(B) the legal conclusions reached; 

19 ‘‘(C) a description of each separate act of 

20 misconduct determined to have taken place; 

21 ‘‘(D) the amount of any civil monetary 

22 penalty imposed against the subject parties 

23 under paragraph (6); and 

24 ‘‘(E) a deadline for payment of any penalty 

25 imposed, which may not be earlier than 6 
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1 months after the date on which the notice is 

2 provided to the patent owner under this para3 graph of the final determination. 

4 ‘‘(6) PENALTY AMOUNT.— 

5 ‘‘(A) IN GENERAL.—Subject to the limita6 tions of this paragraph, the Director may im7 pose civil monetary penalties on each subject 

8 party for each act of misconduct of which notice 

9 is given under paragraph (5), in amounts that 

10 the Director considers sufficient in the Direc11 tor’s discretion to act as a deterrent to future 

12 such violations of the duty of candor and good 

13 faith under this section, taking into account the 

14 totality of the circumstances in each individual 

15 case. 

16 ‘‘(B) LIMITATION ON AMOUNT.—The 

17 amount of a civil penalty imposed under sub18 paragraph (A) may not exceed $1,000,000 for 

19 each separate act of misconduct, except that in 

20 a case in which the violation of the duty of can21 dor and good faith is found to be the result of 

22 fraudulent or other particularly egregious mis23 conduct, the penalty imposed may not exceed 

24 $5,000,000 for such act of misconduct. In an 

25 exceptional case, the Director may impose an 
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1 additional penalty in an amount equal to the 

2 costs incurred by the Director in conducting the 

3 investigation. 

4 ‘‘(C) LIMITATION ON PARTIES ON WHICH

5 PENALTIES MAY BE IMPOSED.—No penalty 

6 based upon an act of misconduct may be im7 posed under subparagraph (A) on a subject 

8 party other than the patent owner unless the 

9 subject party was the owner of a claimed inven10 tion in the patent or application for patent (or 

11 entitled to an assignment thereof), at the time 

12 the act of misconduct giving rise to the penalty 

13 occurred. Unless otherwise specified in the final 

14 determination, subject parties shall be jointly 

15 and severally liable for any penalty imposed. 

16 ‘‘(7) TOLLING OF PENALTY; FAILURE OF TIME17 LY PAYMENT.—The deadline for payment of any 

18 penalty imposed shall be tolled during the pendency 

19 of an appeal brought by a subject party under para20 graph (8). If the patent owner fails to make timely 

21 payment of any penalty imposed on the patent 

22 owner, including any penalty for which the patent 

23 owner is jointly liable, before the expiration of the 

24 deadline provided under paragraph (5)(E), the fail25 ure to pay the penalty constitutes a disclaimer of all 
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1 enforceable rights in each patent involved in the vio2 lation of the duty of candor and good faith for which 

3 the penalty was imposed. 

4 ‘‘(8) APPEAL.—A subject party dissatisfied with 

5 the final determination of the Director under this 

6 section may, unless the penalty has been paid pursu7 ant to the final determination, appeal the determina8 tion under sections 141 through 144. 

9 ‘‘(f) OTHER ACTIONS NOT SUBJECT TO PREEMP10 TION.—Nothing in this section shall in any manner oper11 ate to— 

12 ‘‘(1) prevent or otherwise obstruct a criminal 

13 investigation or supersede any criminal law, or any 

14 penalty imposed pursuant thereto, in connection 

15 with any matter involving a patent or application for 

16 patent; 

17 ‘‘(2) limit the ability of the courts of any State 

18 or the District of Columbia to investigate and make 

19 determinations with respect to issues of attorney 

20 malpractice and impose sanctions on an attorney for 

21 malpractice; or 

22 ‘‘(3) limit the ability of any entity before which 

23 an individual is registered or otherwise entitled to 

24 practice a profession to investigate and sanction 

25 such individual based upon professional misconduct. 
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1 ‘‘(g) ACTIONS BASED UPON PRIOR MISCONDUCT AD2 JUDICATION.—If a final, nonappealable adjudication of 

3 misconduct has been made based upon a criminal action 

4 not subject to preemption under subsection (f)(1), a fraud 

5 pleading described in subsection (d), or a misconduct pro6 ceeding instituted pursuant to a referral described in sub7 section (e)(1), such adjudication of misconduct may be 

8 used as a basis for pursuing further remedies under any 

9 Federal or State law, including common law, except that 

10 nothing in this subsection shall authorize any investigation 

11 or determination of misconduct that is otherwise pre12 empted under this section. 

13 ‘‘§ 137. Duty of candor: parties adverse to a patent or 

14 application 

15 ‘‘(a) DUTY.—The Director shall prescribe by regula16 tion a duty of candor and good faith applicable to individ17 uals who are parties adverse to a patent or application 

18 for patent in contested cases before the Office. The duty 

19 shall apply to individuals associated with such a pro20 ceeding on behalf of a party adverse to the patent or appli21 cation. Each such individual shall timely disclose informa22 tion known to that individual to be material to issues 

23 raised or responded to by the adverse party on whose be24 half the individual is involved and shall not materially mis25 represent information. 
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1 ‘‘(b) MISCONDUCT.—Misconduct under this section 

2 shall be defined with respect to individuals described in 

3 subsection (a) in the same manner as that provided in sec4 tion 136(b) with respect to individuals under that section. 

5 The Director may conduct an investigation of possible 

6 misconduct by an individual based upon a violation of the 

7 duty described in subsection (a) in the manner provided 

8 in section 136(e), except that the written notice described 

9 in section 136(e)(2)(B) shall be given by the Director to 

10 each party on whose behalf an individual is acting who 

11 is being investigated for possible violation of the duty of 

12 candor and good faith under this section. The persons re13 ceiving such written notice shall be the subject parties of 

14 the investigation. If, on the basis of an investigation the 

15 Director determines that there is a basis for concluding 

16 that a violation of the duty that amounts to misconduct 

17 may have occurred, the Director shall provide written no18 tice of the preliminary determination to each subject party 

19 and shall afford the subject party an opportunity to reach 

20 a settlement of the issue before taking any further action. 

21 ‘‘(c) PENALTIES.—If an issue of misconduct arising 

22 from a possible violation of the duty of candor and good 

23 faith under this section is not settled or otherwise termi24 nated following the opportunity for settlement and hearing 

25 described in subsection (b), the Director may impose a 
33 

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1 civil monetary penalty against the subject parties. The 

2 procedures described in section 136(e) shall be followed 

3 in imposing a civil penalty under this subsection, except 

4 that the maximum civil monetary penalty that may be im5 posed on a subject party under this section may not exceed 

6 $500,000.’’. 

7 (b) TABLE OF SECTIONS.—The table of sections for 

8 chapter 12 is amended by adding at the end the following 

9 new items: 

‘‘136. Duty of candor: patents and applications for patent. 

‘‘137. Duty of candor: parties adverse to a patent or application.’’. 

10 (c) REMOVAL OF DECEPTIVE INTENT RESTRIC11 TION.— 

12 (1) INVENTOR.— 

13 (A) IN GENERAL.—The third paragraph of 

14 section 116 is amended— 

15 (i) by striking ‘‘Whenever’’ and insert16 ing ‘‘(c) CORRECTION OF ERRORS IN AP17 PLICATION.—Whenever’’; and 

18 (ii) by striking ‘‘, and such error 

19 arose without any deceptive intention on 

20 his part’’. 

21 (B) CORRECTION OF NAMED INVENTOR.— 

22 Section 256 is amended— 

23 (i) in the first paragraph— 
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1 (I) by striking ‘‘Whenever’’ and 

2 inserting ‘‘(a) CORRECTION.—When3 ever’’; and 

4 (II) by striking ‘‘and such error 

5 arose without any deceptive intention 

6 on his part’’; and 

7 (ii) in the second paragraph, by strik8 ing ‘‘The error’’ and inserting ‘‘(b) PAT9 ENT VALID IF ERROR CORRECTED.—The 

10 error’’. 

11 (2) FILING.— 

12 (A) FILING OF APPLICATION IN FOREIGN

13 COUNTRY.—The first paragraph of section 184 

14 is amended— 

15 (i) by striking ‘‘Except when’’ and in16 serting ‘‘(a) FILING IN FOREIGN COUN17 TRY.—Except when’’; and 

18 (ii) by striking ‘‘and without deceptive 

19 intent’’. 

20 (B) PATENT BARRED FOR FILING WITH21 OUT LICENSE.—Section 185 is amended by 

22 striking ‘‘and without deceptive intent’’. 

23 (3) REISSUE OF DEFECTIVE PATENTS.—The 

24 first paragraph of section 251 is amended— 
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1 (A) by striking ‘‘Whenever’’ and inserting 

2 ‘‘(a) IN GENERAL.—Whenever’’; and 

3 (B) by striking ‘‘, through error without 

4 any deceptive intention,’’. 

5 (4) DISCLAIMER.—The first paragraph of sec6 tion 253 is amended— 

7 (A) by striking ‘‘Whenever’’ and inserting 

8 ‘‘(a) IN GENERAL.—Whenever’’; and 

9 (B) by striking ‘‘, without any deceptive 

10 intention,’’. 

11 (5) ACTION FOR INFRINGEMENT.—Section 288 

12 is amended by striking ‘‘, without deceptive inten13 tion,’’. 

14 (d) TECHNICAL AMENDMENTS.—(1) Section 116 is 

15 amended— 

16 (A) in the first paragraph, by striking ‘‘When’’ 

17 and inserting ‘‘(a) JOINT INVENTIONS.—When’’; 

18 and 

19 (B) in the second paragraph, by striking ‘‘If a 

20 joint inventor’’ and inserting ‘‘(b) OMITTED INVEN21 TOR.—If a joint inventor’’. 

22 (2) Section 184 is amended— 

23 (A) in the second paragraph, by striking ‘‘The 

24 term’’ and inserting ‘‘(b) APPLICATION.—The 

25 term’’; and 
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1 (B) in the third paragraph, by striking ‘‘The 

2 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA3 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

4 scope’’. 

5 (3) Section 251 is amended— 

6 (A) in the second paragraph, by striking ‘‘The 

7 Director’’ and inserting ‘‘(b) MULTIPLE REISSUED

8 PATENTS.—The Director’’; 

9 (B) in the third paragraph, by striking ‘‘The 

10 provision’’ and inserting ‘‘(c) APPLICABILITY OF

11 THIS TITLE.—The provisions’’; and 

12 (C) in the last paragraph, by striking ‘‘No re13 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

14 ENLARGING SCOPE OF CLAIMS.—No reissued pat15 ent’’. 

16 (4) Section 253 is amended in the second paragraph, 

17 by striking ‘‘in like manner’’ and inserting ‘‘(b) ADDI18 TIONAL DISCLAIMER OR DEDICATION.—In the manner set 

19 forth in subsection (a),’’. 

20 SEC. 6. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 

21 Section 284 is amended— 

22 (1) in the first paragraph— 

23 (A) by striking ‘‘Upon’’ and inserting ‘‘(a) 

24 AWARD OF DAMAGES.—Upon’’; and 
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1 (B) by adding at the end the following: ‘‘In 

2 determining a reasonable royalty in the case of 

3 a combination, the court shall consider, if rel4 evant and among other factors, the portion of 

5 the realizable profit that should be credited to 

6 the inventive contribution as distinguished from 

7 other features of the combination, the manufac8 turing process, business risks, or significant 

9 features or improvements added by the in10 fringer.’’; 

11 (2) by amending the second paragraph to read 

12 as follows: 

13 ‘‘(b) WILLFUL INFRINGEMENT.— 

14 ‘‘(1) INCREASED DAMAGES.—A court that has 

15 determined that the infringer has willfully infringed 

16 a patent or patents may increase the damages up to 

17 three times the amount of damages found or as18 sessed under subsection (a), except that increased 

19 damages under this paragraph shall not apply to 

20 provisional rights under section 154(d) of this title. 

21 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL22 NESS.—A court may find that an infringer has will23 fully infringed a patent only if the patent owner pre24 sents clear and convincing evidence that— 
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1 ‘‘(A) after receiving written notice from 

2 the patentee— 

3 ‘‘(i) alleging acts of infringement in a 

4 manner sufficient to give the infringer an 

5 objectively reasonable apprehension of suit 

6 on such patent, and 

7 ‘‘(ii) identifying with particularity 

8 each claim of the patent, each product or 

9 process that the patent owner alleges in10 fringes the patent, and the relationship of 

11 such product or process to such claim, 

12 the infringer, after a reasonable opportunity to 

13 investigate, thereafter performed one or more of 

14 the alleged acts of infringement; 

15 ‘‘(B) the infringer intentionally copied the 

16 patented invention with knowledge that it was 

17 patented; or 

18 ‘‘(C) after having been found by a court to 

19 have infringed that patent, the infringer en20 gaged in conduct that was not colorably dif21 ferent from the conduct previously found to 

22 have infringed the patent, and which resulted in 

23 a separate finding of infringement of the same 

24 patent. 
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1 ‘‘(3) LIMITATIONS ON WILLFULNESS.—(A) A 

2 court shall not find that an infringer has willfully in3 fringed a patent under paragraph (2) for any period 

4 of time during which the infringer had an informed 

5 good faith belief that the patent was invalid or unen6 forceable, or would not be infringed by the conduct 

7 later shown to constitute infringement of the patent. 

8 ‘‘(B) Reasonable reliance on advice of counsel 

9 shall establish an informed good faith belief within 

10 the meaning of subparagraph (A). 

11 ‘‘(C) The decision of the infringer not to 

12 present evidence of advice of counsel shall have no 

13 relevance to a determination of willful infringement 

14 under paragraph (2). 

15 ‘‘(4) LIMITATION ON PLEADING.—A patentee 

16 may not plead, and a court may not determine, that 

17 an infringer has willfully infringed a patent before 

18 the date on which a determination has been made 

19 that the patent in suit is not invalid, is enforceable, 

20 and has been infringed by the infringer.’’; and 

21 (3) in the third paragraph, by striking ‘‘The 

22 court’’ and inserting ‘‘(c) EXPERT TESTIMONY.— 

23 The court’’. 
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1 SEC. 7. INJUNCTIONS. 

2 Section 283 is amended by adding at the end the fol3 lowing: 

4 ‘‘In determining equity, the court shall consider the fair5 ness of the remedy in light of all the facts and the relevant 

6 interests of the parties associated with the invention. Un7 less the injunction is entered pursuant to a nonappealable 

8 judgment of infringement, a court shall stay the injunction 

9 pending an appeal upon an affirmative showing that the 

10 stay would not result in irreparable harm to the owner 

11 of the patent and that the balance of hardships from the 

12 stay does not favor the owner of the patent.’’. 

13 SEC. 8. CONTINUATION APPLICATIONS. 

14 (a) IN GENERAL.—Chapter 11 is amended by adding 

15 at the end the following: 

16 ‘‘§ 123. Limitations on continuation applications 

17 ‘‘The Director may by regulation limit the cir18 cumstances under which an application for patent, other 

19 than a divisional application that meets the requirements 

20 for filing under section 121, may be entitled to the benefit 

21 under section 120 of the filing date of a prior-filed applica22 tion. No such regulation may deny applicants an adequate 

23 opportunity to obtain claims for any invention disclosed 

24 in an application for patent.’’. 
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1 (b) CONFORMING AMENDMENT.—The table of sec2 tions for chapter 11 is amended by adding at the end the 

3 following new item: 

‘‘123. Limitations on continuation applications.’’. 

4 SEC. 9. POST-GRANT PROCEDURES AND OTHER QUALITY 

5 ENHANCEMENTS. 

6 (a) PUBLICATION.—Section 122(b)(2) is amended— 

7 (1) by striking subparagraph (B); and 

8 (2) in subparagraph (A)— 

9 (A) by striking ‘‘(A) An application’’ and 

10 inserting ‘‘An application’’; and 

11 (B) by redesignating clauses (i) through 

12 (iv) as subparagraphs (A) through (D), respec13 tively. 

14 (b) DEFENSE TO INFRINGEMENT BASED ON EAR15 LIER INVENTOR.—Section 273 of title 35, United States 

16 Code, is amended— 

17 (1) in subsection (a)— 

18 (A) in paragraph (1)— 

19 (i) by striking ‘‘of a method’’; and 

20 (ii) by striking ‘‘review period;’’ and 

21 inserting ‘‘review period; and’’; 

22 (B) in paragraph (2)(B), by striking the 

23 semicolon at the end and inserting a period; 

24 and 

25 (C) by striking paragraphs (3) and (4); 
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1 (2) in subsection (b)— 

2 (A) in paragraph (1)— 

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

4 (ii) by striking ‘‘at least 1 year before 

5 the effective filing date of such patent, 

6 and’’ and all that follows through the pe7 riod and inserting ‘‘and commercially used, 

8 or made substantial preparations for com9 mercial use of, the subject matter before 

10 the effective filing date of the claimed in11 vention.’’; 

12 (B) in paragraph (2)— 

13 (i) by striking ‘‘The sale or other dis14 position of a useful end result produced by 

15 a patented method’’ and inserting ‘‘The 

16 sale or other disposition of subject matter 

17 that qualifies for the defense set forth in 

18 this section’’; and 

19 (ii) by striking ‘‘a defense under this 

20 section with respect to that useful end re21 sult’’ and inserting ‘‘such defense’’; and 

22 (C) in paragraph (3)— 

23 (i) by striking subparagraph (A); and 
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1 (ii) by redesignating subparagraphs 

2 (B) and (C) as subparagraphs (A) and 

3 (B), respectively; 

4 (3) in paragraph (7), by striking ‘‘of the pat5 ent’’ and inserting ‘‘of the claimed invention’’; and 

6 (4) by amending the heading to read as follows: 

7 ‘‘§ 273. Special defenses to and exemptions from in8 fringement’’. 

9 (c) TABLE OF SECTIONS.—The item related to sec10 tion 273 in the table of sections for chapter 28 is amended 

11 to read as follows: 

‘‘273. Special defenses to and exemptions from infringement.’’. 

12 (d) REEXAMINATION.—Section 315(c) is amended by 

13 striking ‘‘or could have raised’’. 

14 (e) EFFECTIVE DATES.—Notwithstanding any other 

15 provision of law, sections 311 through 318 of title 35, 

16 United States Code, as amended by this Act, shall apply 

17 to any patent that issues from an original application filed 

18 on any date. 

19 (f) POST-GRANT OPPOSITION PROCEDURES.— 

20 (1) IN GENERAL.—Part III is amended by add21 ing at the end the following new chapter: 

22 ‘‘CHAPTER 32—POST-GRANT OPPOSITION 

23 PROCEDURES 

‘‘321. Right to oppose patent; opposition request. 

‘‘322. Real party in interest. 

‘‘323. Timing of opposition request. 
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‘‘324. Limits on scope of validity issues raised. 

‘‘325. Institution of the opposition proceeding. 

‘‘326. Patent owner response. 

‘‘327. Amendment of claims. 

‘‘328. Discovery and sanctions. 

‘‘329. Supplemental submissions. 

‘‘330. Hearing and briefs. 

‘‘331. Written decision. 

‘‘332. Burden of proof and evidence. 

‘‘333. Reconsideration. 

‘‘334. Appeal. 

‘‘335. Certificate. 

‘‘336. Estoppel. 

‘‘337. Duration of opposition. 

‘‘338. Settlement. 

‘‘339. Intervening rights. 

‘‘340. Relationship with reexamination proceedings. 

1 ‘‘§ 321. Right to oppose patent; opposition request 

2 ‘‘(a) FILING OF OPPOSITION.—A person may request 

3 that the grant or reissue of a patent be reconsidered by 

4 the Office by filing an opposition seeking to invalidate one 

5 or more claims in the patent. The Director shall establish, 

6 by regulation, fees to be paid by the opposer. Copies of 

7 patents and printed publications to be relied upon in sup8 port of the request must be filed with the request. If an 

9 opposer relies on other factual evidence or on expert opin10 ions in support of the opposition, such evidence and opin11 ions must be filed with the request through one or more 

12 accompanying affidavits or declarations. 

13 ‘‘(b) COPIES PROVIDED TO PATENT OWNER.—Copies 

14 of any documents filed under subsection (a) must be pro15 vided to the patent owner or, if applicable, the designated 

16 representative of the patent owner, at the time of filing 

17 under subsection (a), except that if a request is made 
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1 under section 322(b) that the identity of a real party in 

2 interest be kept separate, then the identity of the real 

3 party in interest may be redacted from the copies pro4 vided. 

5 ‘‘(c) FILE AVAILABLE TO THE PUBLIC.—The file of 

6 any opposition proceeding shall be made available to the 

7 public except as provided in section 322. 

8 ‘‘§ 322. Real party in interest 

9 ‘‘(a) IDENTIFICATION.—The person making the re10 quest under section 321 shall identify in writing each real 

11 party in interest, and the opposition shall proceed in the 

12 name of the real party in interest. 

13 ‘‘(b) IDENTITY KEPT SECRET UPON REQUEST.— 

14 ‘‘(1) IN GENERAL.—Subject to paragraph (2), 

15 if requested by the opposer, the identity of a real 

16 party in interest shall be kept separate from the file 

17 of the opposition and made available only to Govern18 ment agencies upon written request, or to any per19 son upon a showing of good cause. If the identity of 

20 a real party in interest is kept separate from the file 

21 under this subsection, then the opposition shall pro22 ceed in the name of the individual filing the request 

23 as representative of the real party in interest. 

24 ‘‘(2) EXCEPTION.—No request under this para25 graph (1) to keep the identity of a real party in in-
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1 terest separate from the file of the opposition may 

2 be made or maintained if the opposer relies upon 

3 factual evidence or expert opinions in the form of af4 fidavits or declarations during the opposition pro5 ceeding or if the opposer becomes a party to an ap6 peal under section 141. 

7 ‘‘§ 323. Timing of opposition request 

8 ‘‘An person may not make an opposition request 

9 under section 321 later than 9 months after the grant of 

10 the patent or issuance of a reissue patent, or later than 

11 6 months after receiving notice from the patent holder al12 leging infringement, except that, if the patent owner con13 sents in writing, an opposition request may be filed at any 

14 time during the period of enforceability of the patent. A 

15 court having jurisdiction over an issue of validity of a pat16 ent may not require the patent owner to consent to such 

17 a request. 

18 ‘‘§ 324. Limits on scope of validity issues raised 

19 ‘‘An opposition request must identify with particu20 larity the claims that are alleged to be invalid and, as to 

21 each claim, one or more issues of invalidity on which the 

22 opposition is based. The issues of invalidity that may be 

23 considered during the opposition proceeding are double 

24 patenting and any of the requirements for patentability 

25 set forth in sections 101, 102, 103, 112, and 251(d). 
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1 ‘‘§ 325. Institution of the opposition proceeding; stay 

2 upon timely filed suit 

3 ‘‘(a) DETERMINATION ON OPPOSITION REQUEST; IN4 STITUTION OF OPPOSITION PROCEEDING.— 

5 ‘‘(1) DETERMINATION BY THE DIRECTOR.—For 

6 each opposition request submitted under section 

7 321(a), the Director shall determine if the written 

8 statement, and any evidence submitted with the re9 quest, establish that a substantial question of pat10 entability exists for at least one claim in the patent. 

11 The Director shall notify the patent owner and each 

12 opposer in writing of the Director’s findings, not 

13 later than the date in which an opposition pro14 ceeding is instituted pursuant to the request. Any 

15 determination made by the Director under this para16 graph shall not be appealable. 

17 ‘‘(2) INSTITUTION.—If the Director makes a 

18 determination under paragraph (1) that a substan19 tial question of patentability exists, the Director 

20 shall commence an opposition proceeding. The Di21 rector shall institute such proceeding not earlier 

22 than the date on which the applicable period speci23 fied in section 323 expires, and not later than the 

24 date that is three months after such date. Absent a 

25 showing of good cause, the opposition proceeding 
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1 shall be limited to review of the claim or claims and 

2 the issues identified in the opposition request. 

3 ‘‘(3) CONSOLIDATED PROCEEDING.—If an op4 position is instituted based upon more than one op5 position request, the opposition shall proceed as a 

6 single consolidated proceeding, unless later divided 

7 under subsection (c). 

8 ‘‘(b) PARTIES.—The parties to the opposition pro9 ceeding shall be the patent owner and each opposer who 

10 has filed a request that results in a determination under 

11 subsection (a)(2) to institute the opposition proceeding. 

12 ‘‘(c) ASSIGNMENT TO PANEL.—The Director shall as13 sign the opposition proceeding to a panel of three adminis14 trative patent judges (in this chapter referred to as the 

15 ‘panel’). The panel shall decide the questions of patent16 ability raised in the opposition request. The decision shall 

17 be based upon the prosecution record that was the basis 

18 for the grant or reissue of the patent and the additional 

19 submissions by the parties to the opposition proceeding 

20 authorized under this chapter. The panel may, in appro21 priate cases, divide the opposition into separate pro22 ceedings if the opposition involves multiple opposition re23 quests by different parties. 

24 ‘‘(d) STAY OF OPPOSITION.—If the owner of a patent 

25 files suit alleging infringement of the patent before the 
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1 expiration of the 9-month or 6-month period for filing an 

2 opposition request under section 321, the Director, if re3 quested by the patent owner, shall stay the opposition pro4 ceeding until judgment in the suit, and all appeals thereof, 

5 have become final. 

6 ‘‘§ 326. Patent owner response 

7 ‘‘After the Director has instituted an opposition pro8 ceeding under section 325, the patent owner shall have 

9 the right to file, within a time period set by the panel, 

10 a response to each opposition request that results in a de11 termination under section 325(a)(2) to institute an opposi12 tion proceeding. The patent owner shall file with the re13 sponse, through affidavits or declarations, any additional 

14 factual evidence and expert opinions on which the patent 

15 owner relies in support of the response. 

16 ‘‘§ 327. Amendment of claims 

17 ‘‘The patent owner is entitled to request amendment 

18 of any claims that are the subject of an opposition pro19 ceeding under this chapter, including by the addition of 

20 new claims. Any such request for amendment shall be filed 

21 with the patent owner’s response to an opposition request. 

22 The panel may permit further requests for amendment of 

23 the claims only upon good cause shown by the patent 

24 owner. No amendment enlarging the scope of the claims 
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1 of the patent shall be permitted in the opposition pro2 ceeding. 

3 ‘‘§ 328. Discovery and sanctions 

4 ‘‘(a) DEPOSITIONS.—After an opposition proceeding 

5 under this chapter is instituted, the patent owner shall 

6 have the right to depose each person submitting an affi7 davit or declaration on behalf of any opposer, and each 

8 opposer shall have the right to depose each person submit9 ting an affidavit or declaration on behalf of the patent 

10 owner. Such depositions shall be limited to cross-examina11 tion on matters relevant to the affidavit or declaration. 

12 ‘‘(b) ADDITIONAL DISCOVERY.—No discovery other 

13 than that provided for in subsection (a) shall be permitted 

14 unless the panel determines that additional discovery is 

15 required in the interest of justice. 

16 ‘‘(c) SCHEDULE.—The panel shall determine the 

17 schedule for the taking of discovery under subsections (a) 

18 and (b). 

19 ‘‘(d) CONSEQUENCES FOR FAILURE TO RESPOND

20 PROPERLY.—If any party to an opposition proceeding 

21 fails to properly respond to any discovery under subsection 

22 (a) or (b), the panel may draw appropriate adverse infer23 ences and take other action permitted by statute, rule, or 

24 regulation. 
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1 ‘‘§ 329. Supplemental submissions 

2 ‘‘The panel may permit one or more supplemental 

3 submissions to be made by any party to an opposition pro4 ceeding under this chapter, subject to the rights and limi5 tations on discovery under section 328. 

6 ‘‘§ 330. Hearing and briefs 

7 ‘‘A party to an opposition proceeding under this 

8 chapter may request an oral hearing by the date set by 

9 the panel. If a hearing is requested or the panel deter10 mines sua sponte that a hearing is warranted, the panel 

11 shall set a time for the hearing. The panel may permit 

12 the parties to file briefs for the hearing, and shall permit 

13 cross-examination of all affiants and declarants in the 

14 hearing, either before the panel or by deposition taken 

15 under section 328. 

16 ‘‘§ 331. Written decision 

17 ‘‘The panel shall issue a written decision on each 

18 issue of patentability with respect to each claim that is 

19 the subject of an opposition proceeding under this chapter. 

20 The written decision shall consist of findings of fact and 

21 conclusions of law. The written decision shall become a 

22 final determination of the Office on the issues raised in 

23 the opposition unless a party to the opposition files a re24 quest for reconsideration and modification of the written 

25 decision within a period of time set by the panel. Such 
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1 time period shall not be less than two weeks after the date 

2 of the written decision. 

3 ‘‘§ 332. Burden of proof and evidence 

4 ‘‘(a) BURDEN OF PROOF.—The opposer in an opposi5 tion proceeding under this chapter shall have the burden 

6 to prove the invalidity of a claim by a preponderance of 

7 the evidence. The determination of invalidity shall be 

8 based upon the broadest reasonable construction of the 

9 claim. 

10 ‘‘(b) EVIDENCE.—The Federal Rules of Evidence 

11 shall apply to the opposition proceeding, except to the ex12 tent inconsistent with any provision of this chapter. 

13 ‘‘§ 333. Reconsideration 

14 ‘‘If a request is filed for reconsideration of the written 

15 decision in an opposition proceeding under this chapter, 

16 the panel may authorize a party to the proceeding who 

17 did not file such a request to file a response to the request 

18 for reconsideration. Following any reconsideration, the 

19 panel shall either deny the request for modification of the 

20 written decision or grant the request and issue a modified 

21 written decision, which shall constitute the final deter22 mination of the Office on the issues raised in the opposi23 tion proceeding. 
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1 ‘‘§ 334. Appeal 

2 ‘‘A party dissatisfied with the final determination of 

3 the panel in an opposition proceeding under this chapter 

4 may appeal the determination under sections 141 through 

5 144. Any party to the opposition proceeding shall have the 

6 right to be a party to the appeal. 

7 ‘‘§ 335. Certificate 

8 ‘‘When a decision of a panel in an opposition pro9 ceeding under this chapter has become final under section 

10 331, 333, or 334, the Director shall issue and publish a 

11 certificate in accordance with the decision, canceling any 

12 claim of the patent determined to be unpatentable, and 

13 shall incorporate into the patent any new or amended 

14 claims determined to be patentable. The issuance of the 

15 certificate shall terminate the opposition proceeding. 

16 ‘‘§ 336. Estoppel 

17 ‘‘(a) ESTOPPEL.— 

18 ‘‘(1) IN GENERAL.—Subject to paragraph (2), 

19 after a certificate has been issued under section 335 

20 in accordance with the decision of the panel in an 

21 opposition proceeding, the determination with re22 spect to an issue of invalidity raised by an opposer 

23 shall bar the opposer from asserting, in any subse24 quent proceeding before the Office or a court involv25 ing that opposer under this title, that any claim of 

26 that patent addressed in the opposition proceeding is 
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1 invalid on the basis of any issue of fact or law actu2 ally decided by the panel and necessary to the deter3 mination of that issue. 

4 ‘‘(2) EXCEPTION.—If an opposer in an opposi5 tion proceeding demonstrates in a subsequent pro6 ceeding referred to in paragraph (1) that there is 

7 additional factual evidence that is material to an 

8 issue of fact actually decided and necessary to the 

9 final determination in the opposition proceeding, 

10 that could not reasonably have been discovered by 

11 that opposer, the opposer may raise, in that subse12 quent proceeding, that issue of fact and any deter13 mined issue of law for which the issue of fact was 

14 necessary. 

15 ‘‘(b) EXPANDED DEFINITION OF OPPOSER.—For 

16 purposes of this section, the term ‘opposer’ includes the 

17 person making the request under section 321, any real 

18 party in interest, and their successors in interest. 

19 ‘‘(c) NEW PARTY IN INTEREST.—If a proceeding 

20 arising by reason of additional factual evidence raised 

21 under subsection (a)(2) involves a real party in interest 

22 not identified to the patent owner under section 322, the 

23 real party in interest shall notify the Director and the pat24 ent owner of that fact and of the subsequent proceeding, 
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1 within 30 days after receiving notice that the subsequent 

2 proceeding has been filed. 

3 ‘‘§ 337. Duration of opposition 

4 ‘‘The final determination of a panel described in sec5 tion 333 shall issue not later than one year after the date 

6 on which the opposition proceeding is instituted under sec7 tion 325. Upon good cause shown, the Director may ex8 tend the 1-year period by not more than six months. 

9 ‘‘§ 338. Settlement 

10 ‘‘(a) IN GENERAL.—An opposition proceeding under 

11 this chapter shall be terminated with respect to any op12 poser upon the joint request of the opposer and the patent 

13 owner, unless the panel has issued a written decision 

14 under section 331 before the request for termination is 

15 filed. If the opposition is terminated with respect to an 

16 opposer under this section, no estoppel under section 336 

17 shall apply to that opposer. If no opposer remains in the 

18 proceeding, the panel may terminate the proceeding or 

19 proceed without the opposer to issue a written decision 

20 under section 331. 

21 ‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 

22 understanding between the patent owner and an opposer, 

23 including any collateral agreements referred to therein, 

24 that is made in connection with or in contemplation of 

25 the termination of an opposition proceeding, shall be in 
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1 writing. An opposition proceeding as between the parties 

2 to the agreement or understanding shall not be terminated 

3 until a true copy of the agreement or understanding, in4 cluding any such collateral agreements, has been filed in 

5 the Office. If any party filing an agreement or under6 standing requests, the agreement or understanding shall 

7 be kept separate from the file of the opposition, and shall 

8 be made available only to Government agencies on written 

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

10 ‘‘(c) DISCRETIONARY ACTIONS REVIEWABLE.—Any 

11 discretionary action of the Director under subsection (b) 

12 shall be reviewable under chapter 7 of title 5. 

13 ‘‘§ 339. Intervening rights 

14 ‘‘Any proposed amended or new claim determined to 

15 be patentable and incorporated into a patent following an 

16 opposition proceeding under this chapter shall have the 

17 same effect as that specified in section 252 of this title 

18 for reissued patents on the right of any person who made, 

19 purchased, or used within the United States, or imported 

20 into the United States, anything patented by such pro21 posed amended or new claim, or who made substantial 

22 preparation therefor, before the certificate is issued under 

23 section 335 with respect to that amended or new claim. 
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1 ‘‘§ 340. Relationship with reexamination proceedings 

2 ‘‘A patent for which an opposition proceeding has 

3 been instituted under this chapter may not thereafter be 

4 made the subject of a request under section 302 or 311 

5 for reexamination by the same opposer or on behalf of the 

6 same real party in interest, on the same claim and on the 

7 same issue that was the basis of the opposition proceeding. 

8 An ex parte reexamination request made by a person other 

9 than the patent owner during the 9-month or 6-month pe10 riod specified in section 323, or an inter partes reexamina11 tion request made during the 9-month or 6-month period 

12 specified in section 323, shall be treated as a request 

13 under section 321, and no ex parte reexamination or inter 

14 partes reexamination may be ordered based on such re15 quest. A request for ex parte reexamination or inter partes 

16 reexamination made after the 9-month or 6-month period 

17 specified in section 323, and a request for ex parte reex18 amination made by the patent owner at any time, shall 

19 be stayed during the pendency of any opposition pro20 ceeding under this chapter.’’. 

21 (g) CONFORMING AMENDMENT.—The table of chap22 ters for part III of title 35, United States Code, is amend23 ed by adding at the end the following: 

‘‘32. Post-Grant Opposition Procedures .................................... 321’’. 
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1 SEC. 10. SUBMISSIONS BY THIRD PARTIES. 

2 Section 122 is amended by adding at the end the fol3 lowing: 

4 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR5 TIES.— 

6 ‘‘(1) IN GENERAL.—Any person may submit for 

7 consideration and inclusion in the record of a patent 

8 application, any patent, published patent application 

9 or other publication of potential relevance to the ex10 amination of the application, if such submission is 

11 made in writing before the earlier of— 

12 ‘‘(A) the date a notice of allowance under 

13 section 151 is mailed in the application for pat14 ent; or 

15 ‘‘(B) either— 

16 ‘‘(i) six months after the date on 

17 which the application for patent is pub18 lished under section 122, or 

19 ‘‘(ii) the date of the first rejection 

20 under section 132 of any claim by the ex21 aminer during the examination of the ap22 plication for patent, 

23 whichever occurs later. 

24 ‘‘(2) OTHER REQUIREMENTS.—Any submission 

25 under paragraph (1) shall— 
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1 ‘‘(A) set forth a concise description of the 

2 asserted relevance of each submitted document; 

3 ‘‘(B) be accompanied by such fee as the 

4 Director may prescribe; and 

5 ‘‘(C) include a statement by the submitter 

6 affirming that the submission was made in 

7 compliance with this section.’’. 

8 SEC. 11. APPLICABILITY; TRANSITIONAL PROVISIONS. 

9 (a) SECTION 3.—The amendments made by section 

10 3 shall apply to applications for patent, and any patents 

11 issued thereon, that contain a claim to a claimed invention 

12 that has an effective filing date (as defined in section 

13 100(h) of title 35, United States Code) that is one year 

14 or more after the date of the enactment of this Act. With 

15 respect to any patent or application for patent to which 

16 the amendments made by section 3 apply, no claim in the 

17 patent or in the application shall be entitled to an effective 

18 filing date that is before the date of the enactment of this 

19 Act. 

20 (b) SECTIONS 4, 6, AND 7.—The amendments made 

21 by sections 4, 6, and 7 shall take effect on the date of 

22 the enactment of this Act, except that such amendments 

23 shall not apply to any action brought in any court before 

24 such date of the enactment. 
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1 (c) SECTION 5.—The amendments made by section 

2 5 shall take effect on the date of the enactment of this 

3 Act and shall apply to patents issued on or after such date 

4 of enactment, except that, in any action brought on or 

5 after the date of the enactment of this Act in any court 

6 involving a patent issued before the date of the enactment 

7 of this Act, the patent owner may consent to— 

8 (1) the jurisdiction of the United States Patent 

9 and Trademark Office based on a referral by the 

10 court under section 136(c)(4) of title 35, United 

11 States Code; and 

12 (2) any penalty imposed by the Patent and 

13 Trademark Office under section 136(e) of such title 

14 pursuant to such referral. 

15 (d) SECTION 8.—Any regulations issued under sec16 tion 123 of title 35, United States Code, as added by sec17 tion 8 of this Act, shall apply to any application for patent 

18 that is filed on or after the effective date of such regula19 tions. Such regulations may not take effect before the end 

20 of the 1-year period beginning on the date of the enact21 ment of this Act. 

22 (e) SECTION 9.—(1) The amendments made by sec23 tion 9(a) shall apply to applications for patent filed on 

24 or after the date of the enactment of this Act. 
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1 (2) The amendments made by section 9(b) shall apply 

2 to patents issuing on applications filed on or after the date 

3 of the enactment of this Act. 

4 (3) The amendments made by subsections (c) and (d) 

5 of section 9 shall apply to any request made under section 

6 311 of title 35, United States Code, on or after the date 

7 of the enactment of this Act. 

8 (4) The amendments made by section 9(e) shall take 

9 effect on the date of the enactment of this Act, except 

10 that— 

11 (A) no request for institution of an opposition 

12 proceeding under chapter 32 of title 35, United 

13 States Code, may be made until— 

14 (i) the end of the 1-year period beginning 

15 on the date of the enactment of this Act; or 

16 (ii) such later date that the Director may 

17 establish through notice published in the Fed18 eral Register; and 

19 (B) no such request may be made unless the 

20 amendments made by section 3 apply with respect to 

21 the patent that is the subject of the request. 

22 (f) SECTION 10.—The amendments made by section 

23 10 shall take effect at the end of the 1-year period begin24 ning on the date of the enactment of this Act. 
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1 (g) DETERMINING VALIDITY OF CLAIMS.—For the 

2 purpose of determining the validity of a claim in any pat3 ent or the patentability of any claim in a nonprovisional 

4 application for patent that is made before the effective 

5 date of the amendments made by section 3, other than 

6 in an action brought in a court before the date of the en7 actment of this Act— 

8 (1) the provisions of sections 102(c) and 102(d) 

9 of title 35, United States Code, shall be deemed to 

10 be repealed; 

11 (2) the provisions of sections 102(f) of title 35, 

12 United States Code, shall be deemed to be repealed 

13 and replaced by the provisions of section 101 of title 

14 35, United States Code, as amended by section 4(a) 

15 of this Act, relating to the inventor’s right to seek 

16 and obtain a patent, except that a claim in a patent 

17 that is otherwise valid shall not be invalidated by 

18 reason of this paragraph; and 

19 (3) the term ‘‘in public use or on sale’’ as used 

20 in section 102(b) of title 35, United States Code, 

21 shall be deemed to exclude the use, sale, or offer for 

22 sale of any subject matter that had not become rea23 sonably and effectively accessible to persons of ordi24 nary skill in the art to which the subject matter per-
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1 tains, as defined in the amendments made by section 

2 3 of this Act. 

3 (h) EFFECT OF EUROPEAN PATENT CONVENTION

4 AND PATENT LAWS OF JAPAN.—Before the date, if ever, 

5 that the Director of the United States Patent and Trade6 mark Office publishes a notice in the Official Gazette of 

7 the Office declaring that both the European Patent Con8 vention and the patent laws of Japan afford inventors 

9 seeking patents a 1-year period prior to the effective filing 

10 date of a claimed invention during which disclosures made 

11 by the inventor or by others who obtained the subject mat12 ter disclosed directly or indirectly from the inventor do not 

13 constitute prior art, the term ‘‘effective filing date’’ as 

14 used in section 102(a)(1)(A) of title 35, United States 

15 Code, shall be construed by disregarding any right of pri16 ority except that provided under section 119(e) of title 35, 

17 United States Code. 

Æ