PUBLIC LAW 112–29—SEPT. 16, 2011 

LEAHY–SMITH AMERICA INVENTS ACT 


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125 STAT. 284 PUBLIC LAW 112–29—SEPT. 16, 2011 

Public Law 112–29 

112th Congress 

An Act 

To amend title 35, United States Code, to provide for patent reform. 

Be it enacted by the Senate and House of Representatives of 

the United States of America in Congress assembled, 

SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

(a) SHORT TITLE.—This Act may be cited as the ‘‘Leahy-Smith 

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 prior commercial use. 

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. Priority examination for important technologies. 

Sec. 26. Study on implementation. 

Sec. 27. Study on genetic testing. 

Sec. 28. Patent Ombudsman Program for small business concerns. 

Sec. 29. Establishment of methods for studying the diversity of applicants. 

Sec. 30. Sense of Congress. 

Sec. 31. USPTO study on international patent protections for small businesses. 

Sec. 32. Pro bono program. 

Sec. 33. Limitation on issuance of patents. 

Sec. 34. Study of patent litigation. 

Sec. 35. Effective date. 

Sec. 36. Budgetary effects. 

Sec. 37. Calculation of 60-day period for application of patent term extension. 

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. 

35 USC 1 note. 

35 USC 1 note. 

Leahy-Smith 

America Invents 

Act. 

Sept. 16, 2011 

[H.R. 1249] 


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(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) 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) 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 

‘‘(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.’’. 

(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— 


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‘‘(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 EFFEC- TIVE 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 


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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.’’. 

(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’’. 

35 USC 102 note. 


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(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 

(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 

Applicability. 

35 USC 111 note. 


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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. In appropriate circumstances, the Patent Trial and Appeal 

Board may correct the naming of the inventor in any application 

or patent at issue. The Director shall prescribe regulations setting 

forth standards for the conduct of derivation proceedings, including 

requiring parties to provide sufficient evidence to prove and rebut 

a claim of derivation. 

‘‘(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 

Time period. 

Regulations. 

Time period. 

Time period. 


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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.’’. 

(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: 

Notice. 

Regulations. 

Confidentiality. 


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‘‘§ 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 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 

35 USC 32 note. 

35 USC 32 note. 


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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-tofile 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. 


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(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 

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

converting the United States patent system from ‘‘first to invent’’ 

to a system of ‘‘first inventor to file’’ will promote the progress 

of science and the useful arts by securing for limited times to 

inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries. 

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

converting the United States patent system from ‘‘first to invent’’ 

to a system of ‘‘first inventor to file’’ will improve the United 

States patent system and promote harmonization of the United 

States patent system with the patent systems commonly used in 

nearly all other countries throughout the world with whom the 

United States conducts trade and thereby promote greater 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 

Applicability. 

35 USC 100 note. 


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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. 

‘‘(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 

Regulations. 


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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

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.’’. 

(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. 

Regulations. 


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(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 


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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 PRIOR COMMERCIAL 

USE. 

(a) IN GENERAL.—Section 273 of title 35, United States Code, 

is amended to read as follows: 

‘‘§ 273. Defense to infringement based on prior commercial 

use 

‘‘(a) IN GENERAL.—A person shall be entitled to a defense 

under section 282(b) with respect to subject matter consisting of 

a process, or consisting of a machine, manufacture, or composition 

of matter used in a manufacturing or other commercial process, 

that would otherwise infringe a claimed invention being asserted 

against the person if— 

‘‘(1) such person, acting in good faith, commercially used 

the subject matter in the United States, either 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 of such commercial use; and 

‘‘(2) such commercial use occurred at least 1 year before 

the earlier of either— 

‘‘(A) the effective filing date of the claimed invention; 

or 

‘‘(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the 

exception from prior art under section 102(b). 

‘‘(b) BURDEN OF PROOF.—A person asserting a defense under 

this section shall have the burden of establishing the defense by 

clear and convincing evidence. 

‘‘(c) ADDITIONAL COMMERCIAL USES.— 

‘‘(1) PREMARKETING REGULATORY REVIEW.—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 to be commercially used for purposes of subsection (a)(1) during such regulatory review period. 

‘‘(2) NONPROFIT LABORATORY USE.—A use of subject matter 

by a nonprofit research laboratory or other nonprofit entity, 

such as a university or hospital, for which the public is the 

intended beneficiary, shall be deemed to be a commercial use 

for purposes of subsection (a)(1), except that a defense under 

this section may be asserted pursuant to this paragraph only 

for continued and noncommercial use by and in the laboratory 

or other nonprofit entity. 

‘‘(d) EXHAUSTION OF RIGHTS.—Notwithstanding subsection 

(e)(1), the sale or other disposition of a useful end result by a 

person entitled to assert a defense under this section in connection 

with a patent with respect to that useful end result shall exhaust 

the patent owner’s rights under the patent to the extent that 

Applicability. 

35 USC 111 note. 


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such rights would have been exhausted had such sale or other 

disposition been made by the patent owner. 

‘‘(e) LIMITATIONS AND EXCEPTIONS.— 

‘‘(1) PERSONAL DEFENSE.— 

‘‘(A) IN GENERAL.—A defense under this section may 

be asserted only by the person who performed or directed 

the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled 

by, or is under common control with such person. 

‘‘(B) TRANSFER OF RIGHT.—Except for any transfer to 

the patent owner, the right to assert a defense under 

this section 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. 

‘‘(C) RESTRICTION ON SITES.—A defense under this section, when acquired by a person as part of an assignment 

or transfer described in subparagraph (B), may only be 

asserted for uses at sites where the subject matter that 

would otherwise infringe a claimed invention is in use 

before the later of the effective filing date of the claimed 

invention or the date of the assignment or transfer of 

such enterprise or line of business. 

‘‘(2) DERIVATION.—A person may not assert a 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. 

‘‘(3) 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 for which it has been established that 

a commercial use that qualifies under this section occurred, 

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. 

‘‘(4) ABANDONMENT OF USE.—A person who has abandoned 

commercial use (that qualifies under this section) of subject 

matter may not rely on activities performed before the date 

of such abandonment in establishing a defense under this section with respect to actions taken on or after the date of 

such abandonment. 

‘‘(5) UNIVERSITY EXCEPTION.— 

‘‘(A) IN GENERAL.—A person commercially using subject 

matter to which subsection (a) applies may not assert a 

defense under this section if the claimed invention with 

respect to which the defense is asserted was, at the time 

the invention was made, owned or subject to an obligation 

of assignment to either an institution of higher education 

(as defined in section 101(a) of the Higher Education Act 

of 1965 (20 U.S.C. 1001(a)), or a technology transfer 

organization whose primary purpose is to facilitate the 

commercialization of technologies developed by one or more 

such institutions of higher education. 


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‘‘(B) EXCEPTION.—Subparagraph (A) shall not apply 

if any of the activities required to reduce to practice the 

subject matter of the claimed invention could not have 

been undertaken using funds provided by the Federal 

Government. 

‘‘(f) UNREASONABLE 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. 

‘‘(g) INVALIDITY.—A patent shall not be deemed to be invalid 

under section 102 or 103 solely because a defense is raised or 

established under this section.’’. 

(b) CONFORMING AMENDMENT.—The item relating to section 

273 in the table of sections for chapter 28 of title 35, United 

States Code, is amended to read as follows: 

‘‘273. Defense to infringement based on prior commercial use.’’. 

(c) EFFECTIVE DATE.—The amendments made by this section 

shall apply to any patent issued on or after the date of the enactment of this Act. 

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. 

‘‘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 9 months 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. 

Regulations. 

Applicability. 

35 USC 273 note. 


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‘‘§ 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 be instituted 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 

or real party in interest filed a civil action challenging the 

validity of a claim of the patent. 

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

in interest 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 or real party in interest has 

infringed the patent; or 

‘‘(C) the petitioner or real party in interest 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 

Deadline. 


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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; 

‘‘(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. 


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‘‘(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 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 

Confidentiality. 


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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) INTERVENING RIGHTS.—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). 

(3) TRANSITION.— 

35 USC 311 note. 

35 USC 311 note. 

Public 

information. 


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PUBLIC LAW 112–29—SEPT. 16, 2011 125 STAT. 305 

(A) IN GENERAL.—Chapter 31 of title 35, United States 

Code, is amended— 

(i) in section 312— 

(I) in subsection (a)— 

(aa) in the first sentence, by striking ‘‘a 

substantial new question of patentability 

affecting any claim of the patent concerned 

is raised by the request,’’ and inserting ‘‘the 

information presented in the request shows 

that there is a reasonable likelihood that the 

requester would prevail with respect to at 

least 1 of the claims challenged in the 

request,’’; and 

(bb) in the second sentence, by striking 

‘‘The existence of a substantial new question 

of patentability’’ and inserting ‘‘A showing that 

there is a reasonable likelihood that the 

requester would prevail with respect to at 

least 1 of the claims challenged in the 

request’’; and 

(II) in subsection (c), in the second sentence, 

by striking ‘‘no substantial new question of patentability has been raised,’’ and inserting ‘‘the 

showing required by subsection (a) has not been 

made,’’; and 

(ii) in section 313, by striking ‘‘a substantial new 

question of patentability affecting a claim of the patent 

is raised’’ and inserting ‘‘it has been shown that there 

is a reasonable likelihood that the requester would 

prevail with respect to at least 1 of the claims challenged in the request’’. 

(B) APPLICATION.—The amendments made by this 

paragraph— 

(i) shall take effect on the date of the enactment 

of this Act; and 

(ii) shall apply to requests for inter partes 

reexamination that are filed on or after such date 

of enactment, but before the effective date set forth 

in paragraph (2)(A) of this subsection. 

(C) CONTINUED APPLICABILITY OF PRIOR PROVISIONS.— The provisions of chapter 31 of title 35, United States 

Code, as amended by this paragraph, shall continue to 

apply to requests for inter partes reexamination that are 

filed before the effective date set forth in paragraph (2)(A) 

as if subsection (a) had not been enacted. 

(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. 

35 USC 312 note. 

35 USC 312 note. 


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‘‘§ 321. Post-grant 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 a post-grant 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 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 9 months 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 be instituted 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. 

Regulations. 


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‘‘(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. 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 or real party in interest filed a civil action challenging the validity of a claim of the patent. 

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

in interest 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 or real party in interest has 

infringed the patent; or 

‘‘(C) the petitioner or real party in interest 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 postVerDate Nov 24 2008 13:59 Sep 22, 2011 Jkt 099139 PO 00029 Frm 00025 Fmt 6580 Sfmt 6581 E:\PUBLAW\PUBL029.112 PUBL029

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125 STAT. 308 PUBLIC LAW 112–29—SEPT. 16, 2011 

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 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; 

‘‘(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 


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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; 

‘‘(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); and 

‘‘(12) 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 

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. 


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‘‘§ 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) INTERVENING RIGHTS.—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. 

Public 

information. 

Confidentiality. 


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‘‘§ 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 only to patents 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: 

35 USC 321 note. 

35 USC 321 note. 

35 USC 321 note. 


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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 

Applicability. 

35 USC 306 note. 

Applicability. 

35 USC 303 note. 

35 USC 301 note. 


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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— 

‘‘(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 

Establishment. 


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(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;’’. 

(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 

Deadlines. 

Notices. 


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PUBLIC LAW 112–29—SEPT. 16, 2011 125 STAT. 315 

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) CONFORMING AMENDMENTS.— (1) ATOMIC ENERGY ACT OF 1954.—Section 152 of the Atomic 

Energy Act of 1954 (42 U.S.C. 2182) is amended in the third 

undesignated paragraph— 

(A) by striking ‘‘Board of Patent Appeals and Interferences’’ each place it appears and inserting ‘‘Patent Trial 

and Appeal Board’’; and 

(B) by inserting ‘‘and derivation’’ after ‘‘established for 

interference’’. 

(2) TITLE 51.—Section 20135 of title 51, United States 

Code, is amended— 

(A) in subsections (e) and (f), by striking ‘‘Board of 

Patent Appeals and Interferences’’ each place it appears 

and inserting ‘‘Patent Trial and Appeal Board’’; and 

(B) in subsection (e), by inserting ‘‘and derivation’’ 

after ‘‘established for interference’’. 

(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 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.— 

35 USC 6 note. 


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125 STAT. 316 PUBLIC LAW 112–29—SEPT. 16, 2011 

‘‘(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’’. 

(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 

35 USC 41 note. 

Applicability. 

35 USC 1071 

note. 

Applicability. 

35 USC 122 note. 


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PUBLIC LAW 112–29—SEPT. 16, 2011 125 STAT. 317 

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 

Notification. 

Deadline. 

Time period. 

Time period. 

Deadline. 

Consultation. 


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125 STAT. 318 PUBLIC LAW 112–29—SEPT. 16, 2011 

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— 

(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 applicable fee 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 most recently 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 applicable fee 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 most recently 

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. 


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‘‘(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) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this 

section, a micro entity shall include an applicant who certifies 

that— 

‘‘(1) 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(a) of the Higher 

Education Act of 1965 (20 U.S.C. 1001(a)); or 

‘‘(2) 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 

applications to such an institution of higher education. 

‘‘(e) DIRECTOR’S AUTHORITY.—In addition to the limits imposed 

by this section, 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 section 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 subsection 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.’’. 

(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, an additional 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.—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. 

(2) SUNSET.—The authority of the Director to set or adjust 

any fee under subsection (a) shall terminate upon the expiration 

of the 7-year period beginning on the date of the enactment 

of this Act. 

Deadline. 

Notification. 


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125 STAT. 320 PUBLIC LAW 112–29—SEPT. 16, 2011 

(3) PRIOR REGULATIONS NOT AFFECTED.—The termination 

of authority under this subsection shall not affect any regulations issued under this section before the effective date of 

such termination or any rulemaking proceeding for the issuance 

of regulations under this section that is pending on such date. 

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 


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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 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 Appeal 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. 


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‘‘(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 by Office personnel. 

‘‘(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 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. 

Regulations. 

Expiration date. 


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‘‘(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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125 STAT. 324 PUBLIC LAW 112–29—SEPT. 16, 2011 

‘‘(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) PRIORITIZED EXAMINATION FEE.— 

(1) IN GENERAL.— 

(A) FEE.— 

(i) PRIORITIZED EXAMINATION FEE.—A fee of $4,800 

shall be established for filing a request, pursuant to 

section 2(b)(2)(G) of title 35, United States Code, for 

prioritized examination of a nonprovisional application 

for an original utility or plant patent. 

(ii) ADDITIONAL FEES.—In addition to the 

prioritized examination fee under clause (i), the fees 

due on an application for which prioritized examination 

is being sought are the filing, search, and examination 

fees (including any applicable excess claims and 

application size fees), processing fee, and publication 

fee for that application. 

(B) REGULATIONS; LIMITATIONS.— 

(i) REGULATIONS.—The Director may by regulation 

prescribe conditions for acceptance of a request under 

subparagraph (A) and a limit on the number of filings 

for prioritized examination that may be accepted. 

(ii) LIMITATION ON CLAIMS.— Until regulations are 

prescribed under clause (i), no application for which 

prioritized examination is requested may contain or 

be amended to contain more than 4 independent claims 

or more than 30 total claims. 

(iii) LIMITATION ON TOTAL NUMBER OF REQUESTS.— 

The Director may not accept in any fiscal year more 

than 10,000 requests for prioritization until regulations 

are prescribed under this subparagraph setting another 

limit. 

(2) REDUCTION IN FEES FOR SMALL ENTITIES.—The Director 

shall reduce fees for providing prioritized examination of nonprovisional applications for original utility and plant patents 

by 50 percent for small entities that qualify for reduced fees 

under section 41(h)(1) of title 35, United States Code. 

(3) DEPOSIT OF FEES.—All fees paid under this subsection 

shall be credited to the United States Patent and Trademark 

Office Appropriation Account, shall remain available until 

expended, and may be used only for the purposes specified 

in section 42(c)(3)(A) of title 35, United States Code. 

(4) EFFECTIVE DATE AND TERMINATION.— 

35 USC 41 note. 

35 USC 41 note. 

35 USC 41 note. 


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(A) EFFECTIVE DATE.—This subsection shall take effect 

on the date that is 10 days after the date of the enactment 

of this Act. 

(B) TERMINATION.—The fee imposed under paragraph 

(1)(A)(i), and the reduced fee under paragraph (2), shall 

terminate on the effective date of the setting or adjustment 

of the fee under paragraph (1)(A)(i) pursuant to the exercise 

of the authority under section 10 for the first time with 

respect to that fee. 

(i) APPROPRIATION ACCOUNT TRANSITION FEES.— (1) SURCHARGE.— (A) IN GENERAL.—There shall be a surcharge of 15 

percent, rounded by standard arithmetic rules, on all fees 

charged or authorized by subsections (a), (b), and (d)(1) 

of section 41, and section 132(b), of title 35, United States 

Code. Any surcharge imposed under this subsection is, 

and shall be construed to be, separate from and in addition 

to any other surcharge imposed under this Act or any 

other provision of law. 

(B) DEPOSIT OF AMOUNTS.—Amounts collected pursuant 

to the surcharge imposed under subparagraph (A) shall 

be credited to the United States Patent and Trademark 

Appropriation Account, shall remain available until 

expended, and may be used only for the purposes specified 

in section 42(c)(3)(A) of title 35, United States Code. 

(2) EFFECTIVE DATE AND TERMINATION OF SURCHARGE.— 

The surcharge provided for in paragraph (1)— 

(A) shall take effect on the date that is 10 days after 

the date of the enactment of this Act; and 

(B) shall terminate, with respect to a fee to which 

paragraph (1)(A) applies, on the effective date of the setting 

or adjustment of that fee pursuant to the exercise of the 

authority under section 10 for the first time with respect 

to that fee. 

(j) EFFECTIVE DATE.—Except as otherwise provided in this section, 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, 

Deadline. 

Certificate. 

35 USC 41 note. 

Applicability. 

35 USC 41 note. 


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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. 

‘‘(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) FRAUD.—If the Director becomes aware, during the course 

of a supplemental examination or reexamination proceeding ordered 

under this section, that a material fraud on the Office may have 

been committed in connection with the patent that is the subject 

of the supplemental examination, then in addition to any other 

actions the Director is authorized to take, including the cancellation 

of any claims found to be invalid under section 307 as a result 

of a reexamination ordered under this section, the Director shall 


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also refer the matter to the Attorney General for such further 

action as the Attorney General may deem appropriate. Any such 

referral shall be treated as confidential, shall not be included in 

the file of the patent, and shall not be disclosed to the public 

unless the United States charges a person with a criminal offense 

in connection with such referral. 

‘‘(f) 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 

35 USC 102 note. 

Applicability. 

35 USC 202 note. 

Applicability. 

35 USC 257 note. 


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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. 

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; 

Applicability. 

35 USC 287 note. 

Applicability. 

35 USC 119 note. 


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(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) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that 

product but has expired is not a violation of this section.’’. 

(4) EFFECTIVE DATE.—The amendments made by this subsection shall apply to all cases, without exception, that are 

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 infringed 

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 postgrant 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. 

Deadline. 

Regulations. 

35 USC 321 note. 

Applicability. 

35 USC 292 note. 


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(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 or privy 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 that 

results in a final written decision under section 328(a) 

of title 35, United States Code, with respect to a claim 

in a covered business method patent, 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 the claim 

is invalid on any ground that the petitioner raised during 

that transitional proceeding. 

(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 postgrant 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 8-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 


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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; 

(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: 


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‘‘(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 

‘‘(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) 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.—With respect to 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, or have their actions consolidated for trial, or counterclaim defendants only if— 


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‘‘(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 as defendants or counterclaim defendants, or have their 

actions consolidated for trial, based solely on allegations that they 

each have infringed the patent or patents in suit. 

‘‘(c) WAIVER.—A party that is an accused infringer may waive 

the limitations set forth in this section with respect to that party.’’. 

(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 ERRORS 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’’; 

(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 GEN- ERAL.—Whenever’’; and 

Applicability. 

28 USC 1295 

note. 


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(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 a 

patent’’; 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— 


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(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 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) ADDITIONAL TECHNICAL AMENDMENTS.—Sections 155 and 

155A of title 35, United States Code, and the items relating to 

those sections in the table of sections for chapter 14 of such title, 

are repealed. 

(l) 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’’. 

Applicability. 

35 USC 2 note. 

35 USC 2, 12, 32, 

41, 103, 104, 111, 

119–123, 132, 

135, 143, 145, 

146, 154, 157, 

162, 172, 

182–186, 207, 

210, 257, 267. 


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125 STAT. 336 PUBLIC LAW 112–29—SEPT. 16, 2011 

(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) IN GENERAL.—Section 42(c) of title 35, United States Code, 

is amended— 

(1) by striking ‘‘(c)’’ and inserting ‘‘(c)(1)’’; 

(2) in the first sentence, by striking ‘‘shall be available’’ 

and inserting ‘‘shall, subject to paragraph (3), be available’’; 

(3) by striking the second sentence; and 

(4) by adding at the end the following: 

‘‘(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to 

the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark 

Fee Reserve Fund. To the extent and in the amounts provided 

in appropriations Acts, amounts in the Fund shall be made available 

until expended only for obligation and expenditure by the Office 

in accordance with paragraph (3). 

‘‘(3)(A) Any fees that are collected under sections 41, 42, and 

376, and any surcharges on such fees, may only be used for expenses 

of the Office relating to the processing of patent applications and 

for other activities, services, and materials relating to patents and 

to cover a share of the administrative costs of the Office relating 

to patents. 

‘‘(B) Any fees that are collected under section 31 of the Trademark Act of 1946, and any surcharges on such fees, may only 

be used for expenses of the Office relating to the processing of 

trademark registrations and for other activities, services, and materials relating to trademarks and to cover a share of the administrative costs of the Office relating to trademarks.’’. 

(b) EFFECTIVE DATE.—The amendments made by this section 

shall take effect on October 1, 2011. 

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; 

(3) improve recruitment of patent examiners; 

Deadline. 

35 USC 1 note. 

35 USC 142 note. 


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(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; 

(C) shall evaluate and consider the extent to which 

the purposes of satellite offices listed under subsection 

(b) will be achieved; 

(D) shall consider the availability of scientific and technically knowledgeable personnel in the region from which 

to draw new patent examiners at minimal recruitment 

cost; and 

(E) shall consider the economic impact to the region. 

(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), including 

an explanation of how the selected location will achieve the 

purposes of satellite offices listed under subsection (b) and 

how the required considerations listed under subsection (c) 

were met; 

(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. PRIORITY EXAMINATION FOR IMPORTANT TECHNOLOGIES. 

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 

35 USC 1 note. 


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(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. 26. 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. 27. STUDY ON GENETIC TESTING. 

(a) IN GENERAL.—The Director shall conduct a study on effective ways to provide independent, confirming genetic diagnostic 

test activity where gene patents and exclusive licensing for primary 

genetic diagnostic tests exist. 

(b) ITEMS INCLUDED IN STUDY.—The study shall include an 

examination of at least the following: 

(1) The impact that the current lack of independent second 

opinion testing has had on the ability to provide the highest 

level of medical care to patients and recipients of genetic diagnostic testing, and on inhibiting innovation to existing testing 

and diagnoses. 

(2) The effect that providing independent second opinion 

genetic diagnostic testing would have on the existing patent 

and license holders of an exclusive genetic test. 

(3) The impact that current exclusive licensing and patents 

on genetic testing activity has on the practice of medicine, 

including but not limited to: the interpretation of testing results 

and performance of testing procedures. 

(4) The role that cost and insurance coverage have on 

access to and provision of genetic diagnostic tests. 

(c) CONFIRMING GENETIC DIAGNOSTIC TEST ACTIVITY

DEFINED.—For purposes of this section, the term ‘‘confirming 

genetic diagnostic test activity’’ means the performance of a genetic 

diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an 

independent confirmation of results obtained from another test 

provider’s prior performance of the test on the individual. 

(d) REPORT.—Not later than 9 months after the date of enactment of this Act, the Director shall report to the Committee on 

the Judiciary of the Senate and the Committee on the Judiciary 


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of the House of Representatives on the findings of the study and 

provide recommendations for establishing the availability of such 

independent confirming genetic diagnostic test activity. 

SEC. 28. 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 and independent inventors. 

SEC. 29. ESTABLISHMENT OF METHODS FOR STUDYING THE DIVERSITY OF APPLICANTS. 

The Director shall, not later than the end of the 6-month 

period beginning on the date of the enactment of this Act, establish 

methods for studying the diversity of patent applicants, including 

those applicants who are minorities, women, or veterans. The 

Director shall not use the results of such study to provide any 

preferential treatment to patent applicants. 

SEC. 30. SENSE OF CONGRESS. 

It is the sense of Congress that the patent system should 

promote industries to continue to develop new technologies that 

spur growth and create jobs across the country which includes 

protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovation. 

SEC. 31. USPTO STUDY ON INTERNATIONAL PATENT PROTECTIONS 

FOR SMALL BUSINESSES. 

(a) STUDY REQUIRED.—The Director, in consultation with the 

Secretary of Commerce and the Administrator of the Small Business 

Administration, shall, using the existing resources of the Office, 

carry out a study— 

(1) to determine how the Office, in coordination with other 

Federal departments and agencies, can best help small 

businesses with international patent protection; and 

(2) whether, in order to help small businesses pay for 

the costs of filing, maintaining, and enforcing international 

patent applications, there should be established either— 

(A) a revolving fund loan program to make loans to 

small businesses to defray the costs of such applications, 

maintenance, and enforcement and related technical assistance; or 

(B) a grant program to defray the costs of such applications, maintenance, and enforcement and related technical 

assistance. 

(b) REPORT.—Not later than 120 days after the date of the 

enactment of this Act, the Director shall issue a report to the 

Congress containing— 

(1) all findings and determinations made in carrying out 

the study required under subsection (a); 

(2) a statement of whether the determination was made 

that— 

(A) a revolving fund loan program described under 

subsection (a)(2)(A) should be established; 

(B) a grant program described under subsection 

(a)(2)(B) should be established; or 

Deadline. 

35 USC 2 note. 


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(C) neither such program should be established; and 

(3) any legislative recommendations the Director may have 

developed in carrying out such study. 

SEC. 32. 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. 33. LIMITATION ON ISSUANCE OF PATENTS. 

(a) LIMITATION.—Notwithstanding any other provision of law, 

no patent may issue on a claim directed to or encompassing a 

human organism. 

(b) EFFECTIVE DATE.— 

(1) IN GENERAL.—Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the 

date of the enactment of this Act. 

(2) PRIOR APPLICATIONS.—Subsection (a) shall not affect 

the validity of any patent issued on an application to which 

paragraph (1) does not apply. 

SEC. 34. STUDY OF PATENT LITIGATION. 

(a) GAO STUDY.—The Comptroller General of the United States 

shall conduct a study of the consequences of litigation by nonpracticing entities, or by patent assertion entities, related to patent 

claims made under title 35, United States Code, and regulations 

authorized by that title. 

(b) CONTENTS OF STUDY.—The study conducted under this section shall include the following: 

(1) The annual volume of litigation described in subsection 

(a) over the 20-year period ending on the date of the enactment 

of this Act. 

(2) The volume of cases comprising such litigation that 

are found to be without merit after judicial review. 

(3) The impacts of such litigation on the time required 

to resolve patent claims. 

(4) 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. 

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

of the United States, including the impact on inventors, job 

creation, employers, employees, and consumers. 

(6) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such 

litigation. 

(c) 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 

section, 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. 

Applicability. 

35 USC 101 note. 

35 USC 2 note. 


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PUBLIC LAW 112–29—SEPT. 16, 2011 125 STAT. 341 

LEGISLATIVE HISTORY—H.R. 1249: 

HOUSE REPORTS: No. 112–98, Pt. 1 (Comm. on the Judiciary). 

CONGRESSIONAL RECORD, Vol. 157 (2011): 

June 22, 23, considered and passed House. 

Sept. 7, 8, considered and passed Senate. 

DAILY COMPILATION OF PRESIDENTIAL DOCUMENTS (2011): 

Sept. 16, Presidential remarks. 

Æ 

SEC. 35. 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. 36. 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. 

SEC. 37. 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. 

Approved September 16, 2011. 

35 USC 156 note. 

Applicability. 

35 USC 1 note. 


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