II 

112TH CONGRESS 

1ST SESSION S. 23 

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

IN THE SENATE OF THE UNITED STATES 

JANUARY 25 (legislative day, JANUARY 5), 2011 

Mr. LEAHY (for himself, Mr. HATCH, Mr. GRASSLEY, Ms. KLOBUCHAR, Mr. 

SESSIONS, Mr. KYL, Mr. LIEBERMAN, and Mr. COONS) introduced the 

following bill; which was read twice and referred to the Committee on the 

Judiciary 

A BILL 

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

reform. 

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

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Patent Reform Act of 2011’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. First inventor to file. 

Sec. 3. Inventor’s oath or declaration. 

Sec. 4. Damages. 

Sec. 5. Post-grant review proceedings. 

Sec. 6. Patent Trial and Appeal Board. 


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Sec. 7. Preissuance submissions by third parties. 

Sec. 8. Venue. 

Sec. 9. Fee setting authority. 

Sec. 10. Supplemental examination. 

Sec. 11. Residency of Federal Circuit judges. 

Sec. 12. Micro entity defined. 

Sec. 13. Funding agreements. 

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

Sec. 15. Best mode requirement. 

Sec. 16. Technical amendments. 

Sec. 17. Effective date; rule of construction. 

1 SEC. 2. FIRST INVENTOR TO FILE. 

2 (a) DEFINITIONS.—Section 100 of title 35, United 

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

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

6 a joint invention, the individuals collectively who invented 

7 or discovered the subject matter of the invention. 

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

9 any 1 of the individuals who invented or discovered the 

10 subject matter of a joint invention. 

11 ‘‘(h) The term ‘joint research agreement’ means a 

12 written contract, grant, or cooperative agreement entered 

13 into by 2 or more persons or entities for the performance 

14 of experimental, developmental, or research work in the 

15 field of the claimed invention. 

16 ‘‘(i)(1) The term ‘effective filing date’ of a claimed 

17 invention in a patent or application for patent means— 

18 ‘‘(A) if subparagraph (B) does not apply, the 

19 actual filing date of the patent or the application for 

20 the patent containing a claim to the invention; or 


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1 ‘‘(B) the filing date of the earliest application 

2 for which the patent or application is entitled, as to 

3 such invention, to a right of priority under section 

4 119, 365(a), or 365(b) or to the benefit of an earlier 

5 filing date under section 120, 121, or 365(c). 

6 ‘‘(2) The effective filing date for a claimed invention 

7 in an application for reissue or reissued patent shall be 

8 determined by deeming the claim to the invention to have 

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

10 ‘‘(j) The term ‘claimed invention’ means the subject 

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

12 for a patent.’’. 

13 (b) CONDITIONS FOR PATENTABILITY.— 

14 (1) IN GENERAL.—Section 102 of title 35, 

15 United States Code, is amended to read as follows: 

16 ‘‘§ 102. Conditions for patentability; novelty 

17 ‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti18 tled to a patent unless— 

19 ‘‘(1) the claimed invention was patented, de20 scribed in a printed publication, or in public use, on 

21 sale, or otherwise available to the public before the 

22 effective filing date of the claimed invention; or 

23 ‘‘(2) the claimed invention was described in a 

24 patent issued under section 151, or in an application 

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1 tion 122(b), in which the patent or application, as 

2 the case may be, names another inventor and was 

3 effectively filed before the effective filing date of the 

4 claimed invention. 

5 ‘‘(b) EXCEPTIONS.— 

6 ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE7 FORE THE EFFECTIVE FILING DATE OF THE

8 CLAIMED INVENTION.—A disclosure made 1 year or 

9 less before the effective filing date of a claimed in10 vention shall not be prior art to the claimed inven11 tion under subsection (a)(1) if— 

12 ‘‘(A) the disclosure was made by the inven13 tor or joint inventor or by another who obtained 

14 the subject matter disclosed directly or indi15 rectly from the inventor or a joint inventor; or 

16 ‘‘(B) the subject matter disclosed had, be17 fore such disclosure, been publicly disclosed by 

18 the inventor or a joint inventor or another who 

19 obtained the subject matter disclosed directly or 

20 indirectly from the inventor or a joint inventor. 

21 ‘‘(2) DISCLOSURES APPEARING IN APPLICA22 TIONS AND PATENTS.—A disclosure shall not be 

23 prior art to a claimed invention under subsection 

24 (a)(2) if— 


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1 ‘‘(A) the subject matter disclosed was ob2 tained directly or indirectly from the inventor or 

3 a joint inventor; 

4 ‘‘(B) the subject matter disclosed had, be5 fore such subject matter was effectively filed 

6 under subsection (a)(2), been publicly disclosed 

7 by the inventor or a joint inventor or another 

8 who obtained the subject matter disclosed di9 rectly or indirectly from the inventor or a joint 

10 inventor; or 

11 ‘‘(C) the subject matter disclosed and the 

12 claimed invention, not later than the effective 

13 filing date of the claimed invention, were owned 

14 by the same person or subject to an obligation 

15 of assignment to the same person. 

16 ‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

17 AGREEMENTS.—Subject matter disclosed and a claimed 

18 invention shall be deemed to have been owned by the same 

19 person or subject to an obligation of assignment to the 

20 same person in applying the provisions of subsection 

21 (b)(2)(C) if— 

22 ‘‘(1) the subject matter disclosed was developed 

23 and the claimed invention was made by, or on behalf 

24 of, 1 or more parties to a joint research agreement 


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1 that was in effect on or before the effective filing 

2 date of the claimed invention; 

3 ‘‘(2) the claimed invention was made as a result 

4 of activities undertaken within the scope of the joint 

5 research agreement; and 

6 ‘‘(3) the application for patent for the claimed 

7 invention discloses or is amended to disclose the 

8 names of the parties to the joint research agree9 ment. 

10 ‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF11 FECTIVE AS PRIOR ART.—For purposes of determining 

12 whether a patent or application for patent is prior art to 

13 a claimed invention under subsection (a)(2), such patent 

14 or application shall be considered to have been effectively 

15 filed, with respect to any subject matter described in the 

16 patent or application— 

17 ‘‘(1) if paragraph (2) does not apply, as of the 

18 actual filing date of the patent or the application for 

19 patent; or 

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

21 entitled to claim a right of priority under section 

22 119, 365(a), or 365(b), or to claim the benefit of an 

23 earlier filing date under section 120, 121, or 365(c), 

24 based upon 1 or more prior filed applications for 


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1 patent, as of the filing date of the earliest such ap2 plication that describes the subject matter.’’. 

3 (2) CONFORMING AMENDMENT.—The item re4 lating to section 102 in the table of sections for 

5 chapter 10 of title 35, United States Code, is 

6 amended to read as follows: 

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

7 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

8 SUBJECT MATTER.—Section 103 of title 35, United 

9 States Code, is amended to read as follows: 

10 ‘‘§ 103. Conditions for patentability; nonobvious sub11 ject matter 

12 ‘‘A patent for a claimed invention may not be ob13 tained, notwithstanding that the claimed invention is not 

14 identically disclosed as set forth in section 102, if the dif15 ferences between the claimed invention and the prior art 

16 are such that the claimed invention as a whole would have 

17 been obvious before the effective filing date of the claimed 

18 invention to a person having ordinary skill in the art to 

19 which the claimed invention pertains. Patentability shall 

20 not be negated by the manner in which the invention was 

21 made.’’. 

22 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

23 MADE ABROAD.—Section 104 of title 35, United States 

24 Code, and the item relating to that section in the table 


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1 of sections for chapter 10 of title 35, United States Code, 

2 are repealed. 

3 (e) REPEAL OF STATUTORY INVENTION REGISTRA4 TION.— 

5 (1) IN GENERAL.—Section 157 of title 35, 

6 United States Code, and the item relating to that 

7 section in the table of sections for chapter 14 of title 

8 35, United States Code, are repealed. 

9 (2) REMOVAL OF CROSS REFERENCES.—Section 

10 111(b)(8) of title 35, United States Code, is amend11 ed by striking ‘‘sections 115, 131, 135, and 157’’ 

12 and inserting ‘‘sections 131 and 135’’. 

13 (3) EFFECTIVE DATE.—The amendments made 

14 by this subsection shall take effect 1 year after the 

15 date of the enactment of this Act, and shall apply 

16 to any request for a statutory invention registration 

17 filed on or after that date. 

18 (f) EARLIER FILING DATE FOR INVENTOR AND

19 JOINT INVENTOR.—Section 120 of title 35, United States 

20 Code, is amended by striking ‘‘which is filed by an inven21 tor or inventors named’’ and inserting ‘‘which names an 

22 inventor or joint inventor’’. 

23 (g) CONFORMING AMENDMENTS.— 


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1 (1) RIGHT OF PRIORITY.—Section 172 of title 

2 35, United States Code, is amended by striking 

3 ‘‘and the time specified in section 102(d)’’. 

4 (2) LIMITATION ON REMEDIES.—Section 

5 287(c)(4) of title 35, United States Code, is amend6 ed by striking ‘‘the earliest effective filing date of 

7 which is prior to’’ and inserting ‘‘which has an effec8 tive filing date before’’. 

9 (3) INTERNATIONAL APPLICATION DESIG10 NATING THE UNITED STATES: EFFECT.—Section 

11 363 of title 35, United States Code, is amended by 

12 striking ‘‘except as otherwise provided in section 

13 102(e) of this title’’. 

14 (4) PUBLICATION OF INTERNATIONAL APPLICA15 TION: EFFECT.—Section 374 of title 35, United 

16 States Code, is amended by striking ‘‘sections 102(e) 

17 and 154(d)’’ and inserting ‘‘section 154(d)’’. 

18 (5) PATENT ISSUED ON INTERNATIONAL APPLI19 CATION: EFFECT.—The second sentence of section 

20 375(a) of title 35, United States Code, is amended 

21 by striking ‘‘Subject to section 102(e) of this title, 

22 such’’ and inserting ‘‘Such’’. 

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

24 119(a) of title 35, United States Code, is amended 

25 by striking ‘‘; but no patent shall be granted’’ and 


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1 all that follows through ‘‘one year prior to such fil2 ing’’. 

3 (7) INVENTIONS MADE WITH FEDERAL ASSIST4 ANCE.—Section 202(c) of title 35, United States 

5 Code, is amended— 

6 (A) in paragraph (2)— 

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

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

9 ‘‘obtained in the United States’’ and in10 serting ‘‘the 1-year period referred to in 

11 section 102(b) would end before the end of 

12 that 2-year period’’; and 

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

14 inserting ‘‘that 1-year’’; and 

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

16 statutory bar date that may occur under this 

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

18 and inserting ‘‘the expiration of the 1-year pe19 riod referred to in section 102(b)’’. 

20 (h) DERIVED PATENTS.—Section 291 of title 35, 

21 United States Code, is amended to read as follows: 

22 ‘‘§ 291. Derived patents 

23 ‘‘(a) IN GENERAL.—The owner of a patent may have 

24 relief by civil action against the owner of another patent 

25 that claims the same invention and has an earlier effective 


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1 filing date if the invention claimed in such other patent 

2 was derived from the inventor of the invention claimed in 

3 the patent owned by the person seeking relief under this 

4 section. 

5 ‘‘(b) FILING LIMITATION.—An action under this sec6 tion may only be filed within 1 year after the issuance 

7 of the first patent containing a claim to the allegedly de8 rived invention and naming an individual alleged to have 

9 derived such invention as the inventor or joint inventor.’’. 

10 (i) DERIVATION PROCEEDINGS.—Section 135 of title 

11 35, United States Code, is amended to read as follows: 

12 ‘‘§ 135. Derivation proceedings 

13 ‘‘(a) INSTITUTION OF PROCEEDING.—An applicant 

14 for patent may file a petition to institute a derivation pro15 ceeding in the Office. The petition shall set forth with par16 ticularity the basis for finding that an inventor named in 

17 an earlier application derived the claimed invention from 

18 an inventor named in the petitioner’s application and, 

19 without authorization, the earlier application claiming 

20 such invention was filed. Any such petition may only be 

21 filed within 1 year after the first publication of a claim 

22 to an invention that is the same or substantially the same 

23 as the earlier application’s claim to the invention, shall 

24 be made under oath, and shall be supported by substantial 

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1 tion filed under this subsection demonstrates that the 

2 standards for instituting a derivation proceeding are met, 

3 the Director may institute a derivation proceeding. The 

4 determination by the Director whether to institute a deri5 vation proceeding shall be final and nonappealable. 

6 ‘‘(b) DETERMINATION BY PATENT TRIAL AND AP7 PEAL BOARD.—In a derivation proceeding instituted 

8 under subsection (a), the Patent Trial and Appeal Board 

9 shall determine whether an inventor named in the earlier 

10 application derived the claimed invention from an inventor 

11 named in the petitioner’s application and, without author12 ization, the earlier application claiming such invention was 

13 filed. The Director shall prescribe regulations setting forth 

14 standards for the conduct of derivation proceedings. 

15 ‘‘(c) DEFERRAL OF DECISION.—The Patent Trial 

16 and Appeal Board may defer action on a petition for a 

17 derivation proceeding until 3 months after the date on 

18 which the Director issues a patent that includes the 

19 claimed invention that is the subject of the petition. The 

20 Patent Trial and Appeal Board also may defer action on 

21 a petition for a derivation proceeding, or stay the pro22 ceeding after it has been instituted, until the termination 

23 of a proceeding under chapter 30, 31, or 32 involving the 

24 patent of the earlier applicant. 


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1 ‘‘(d) EFFECT OF FINAL DECISION.—The final deci2 sion of the Patent Trial and Appeal Board, if adverse to 

3 claims in an application for patent, shall constitute the 

4 final refusal by the Office on those claims. The final deci5 sion of the Patent Trial and Appeal Board, if adverse to 

6 claims in a patent, shall, if no appeal or other review of 

7 the decision has been or can be taken or had, constitute 

8 cancellation of those claims, and notice of such cancella9 tion shall be endorsed on copies of the patent distributed 

10 after such cancellation. 

11 ‘‘(e) SETTLEMENT.—Parties to a proceeding insti12 tuted under subsection (a) may terminate the proceeding 

13 by filing a written statement reflecting the agreement of 

14 the parties as to the correct inventors of the claimed inven15 tion in dispute. Unless the Patent Trial and Appeal Board 

16 finds the agreement to be inconsistent with the evidence 

17 of record, if any, it shall take action consistent with the 

18 agreement. Any written settlement or understanding of 

19 the parties shall be filed with the Director. At the request 

20 of a party to the proceeding, the agreement or under21 standing shall be treated as business confidential informa22 tion, shall be kept separate from the file of the involved 

23 patents or applications, and shall be made available only 

24 to Government agencies on written request, or to any per25 son on a showing of good cause. 


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1 ‘‘(f) ARBITRATION.—Parties to a proceeding insti2 tuted under subsection (a) may, within such time as may 

3 be specified by the Director by regulation, determine such 

4 contest or any aspect thereof by arbitration. Such arbitra5 tion shall be governed by the provisions of title 9, to the 

6 extent such title is not inconsistent with this section. The 

7 parties shall give notice of any arbitration award to the 

8 Director, and such award shall, as between the parties to 

9 the arbitration, be dispositive of the issues to which it re10 lates. The arbitration award shall be unenforceable until 

11 such notice is given. Nothing in this subsection shall pre12 clude the Director from determining the patentability of 

13 the claimed inventions involved in the proceeding.’’. 

14 (j) ELIMINATION OF REFERENCES TO INTER15 FERENCES.—(1) Sections 41, 134, 145, 146, 154, 305, 

16 and 314 of title 35, United States Code, are each amended 

17 by striking ‘‘Board of Patent Appeals and Interferences’’ 

18 each place it appears and inserting ‘‘Patent Trial and Ap19 peal Board’’. 

20 (2)(A) Sections 146 and 154 of title 35, United 

21 States Code, are each amended— 

22 (i) by striking ‘‘an interference’’ each place 

23 it appears and inserting ‘‘a derivation pro24 ceeding’’; and 


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1 (ii) by striking ‘‘interference’’ each addi2 tional place it appears and inserting ‘‘derivation 

3 proceeding’’. 

4 (B) The subparagraph heading for section 

5 154(b)(1)(C) of title 35, United States Code, as 

6 amended by this paragraph, is further amended 

7 by— 

8 (i) striking ‘‘OR’’ and inserting ‘‘OF’’; and 

9 (ii) striking ‘‘SECRECY ORDER’’ and insert10 ing ‘‘SECRECY ORDERS’’. 

11 (3) The section heading for section 134 of title 35, 

12 United States Code, is amended to read as follows: 

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

14 (4) The section heading for section 146 of title 35, 

15 United States Code, is amended to read as follows: 

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

17 (5) Section 154(b)(1)(C) of title 35, United States 

18 Code, is amended by striking ‘‘INTERFERENCES’’ and in19 serting ‘‘DERIVATION PROCEEDINGS’’. 

20 (6) The item relating to section 6 in the table of sec21 tions for chapter 1 of title 35, United States Code, is 

22 amended to read as follows: 

‘‘6. Patent Trial and Appeal Board.’’. 

23 (7) The items relating to sections 134 and 135 in 

24 the table of sections for chapter 12 of title 35, United 

25 States Code, are amended to read as follows: 


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

‘‘135. Derivation proceedings.’’. 

1 (8) The item relating to section 146 in the table of 

2 sections for chapter 13 of title 35, United States Code, 

3 is amended to read as follows: 

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

4 (k) FALSE MARKING.— 

5 (1) IN GENERAL.—Section 292 of title 35, 

6 United States Code, is amended— 

7 (A) in subsection (a), by adding at the end 

8 the following: 

9 ‘‘Only the United States may sue for the penalty au10 thorized by this subsection.’’; and 

11 (B) by striking subsection (b) and insert12 ing the following: 

13 ‘‘(b) Any person who has suffered a competitive in14 jury as a result of a violation of this section may file a 

15 civil action in a district court of the United States for re16 covery of damages adequate to compensate for the in17 jury.’’. 

18 (2) EFFECTIVE DATE.—The amendments made 

19 by this subsection shall apply to all cases, without 

20 exception, pending on or after the date of the enact21 ment of this Act. 

22 (l) STATUTE OF LIMITATIONS.— 


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1 (1) IN GENERAL.—Section 32 of title 35, 

2 United States Code, is amended by inserting be3 tween the third and fourth sentences the following: 

4 ‘‘A proceeding under this section shall be com5 menced not later than the earlier of either 10 years 

6 after the date on which the misconduct forming the 

7 basis for the proceeding occurred, or 1 year after the 

8 date on which the misconduct forming the basis for 

9 the proceeding is made known to an officer or em10 ployee of the Office as prescribed in the regulations 

11 established under section 2(b)(2)(D).’’. 

12 (2) REPORT TO CONGRESS.—The Director shall 

13 provide on a biennial basis to the Judiciary Commit14 tees of the Senate and House of Representatives a 

15 report providing a short description of incidents 

16 made known to an officer or employee of the Office 

17 as prescribed in the regulations established under 

18 section 2(b)(2)(D) of title 35, United States Code, 

19 that reflect substantial evidence of misconduct be20 fore the Office but for which the Office was barred 

21 from commencing a proceeding under section 32 of 

22 title 35, United States Code, by the time limitation 

23 established by the fourth sentence of that section. 

24 (3) EFFECTIVE DATE.—The amendment made 

25 by paragraph (1) shall apply in all cases in which 


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1 the time period for instituting a proceeding under 

2 section 32 of title 35, United State Code, had not 

3 lapsed prior to the date of the enactment of this Act. 

4 (m) SMALL BUSINESS STUDY.— 

5 (1) DEFINITIONS.—In this subsection— 

6 (A) the term ‘‘Chief Counsel’’ means the 

7 Chief Counsel for Advocacy of the Small Busi8 ness Administration; 

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

10 General Counsel of the United States Patent 

11 and Trademark Office; and 

12 (C) the term ‘‘small business concern’’ has 

13 the meaning given that term under section 3 of 

14 the Small Business Act (15 U.S.C. 632). 

15 (2) STUDY.— 

16 (A) IN GENERAL.—The Chief Counsel, in 

17 consultation with the General Counsel, shall 

18 conduct a study of the effects of eliminating the 

19 use of dates of invention in determining wheth20 er an applicant is entitled to a patent under 

21 title 35, United States Code. 

22 (B) AREAS OF STUDY.—The study con23 ducted under subparagraph (A) shall include 

24 examination of the effects of eliminating the use 

25 of invention dates, including examining— 


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1 (i) how the change would affect the 

2 ability of small business concerns to obtain 

3 patents and their costs of obtaining pat4 ents; 

5 (ii) whether the change would create, 

6 mitigate, or exacerbate any disadvantage 

7 for applicants for patents that are small 

8 business concerns relative to applicants for 

9 patents that are not small business con10 cerns, and whether the change would cre11 ate any advantages for applicants for pat12 ents that are small business concerns rel13 ative to applicants for patents that are not 

14 small business concerns; 

15 (iii) the cost savings and other poten16 tial benefits to small business concerns of 

17 the change; and 

18 (iv) the feasibility and costs and bene19 fits to small business concerns of alter20 native means of determining whether an 

21 applicant is entitled to a patent under title 

22 35, United States Code. 

23 (3) REPORT.—Not later than 1 year after the 

24 date of enactment of this Act, the Chief Counsel 

25 shall submit to the Committee on Small Business 


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1 and Entrepreneurship and the Committee on the Ju2 diciary of the Senate and the Committee on Small 

3 Business and the Committee on the Judiciary of the 

4 House of Representatives a report regarding the re5 sults of the study under paragraph (2). 

6 (n) REPORT ON PRIOR USER RIGHTS.— 

7 (1) IN GENERAL.—Not later than 1 year after 

8 the date of the enactment of this Act, the Director 

9 shall report, to the Committee on the Judiciary of 

10 the Senate and the Committee on the Judiciary of 

11 the House of Representatives, the findings and rec12 ommendations of the Director on the operation of 

13 prior user rights in selected countries in the indus14 trialized world. The report shall include the fol15 lowing: 

16 (A) A comparison between patent laws of 

17 the United States and the laws of other indus18 trialized countries, including members of the 

19 European Union and Japan, Canada, and Aus20 tralia. 

21 (B) An analysis of the effect of prior user 

22 rights on innovation rates in the selected coun23 tries. 

24 (C) An analysis of the correlation, if any, 

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1 prises and the ability to attract venture capital 

2 to start new companies. 

3 (D) An analysis of the effect of prior user 

4 rights, if any, on small businesses, universities, 

5 and individual inventors. 

6 (E) An analysis of legal and constitutional 

7 issues, if any, that arise from placing trade se8 cret law in patent law. 

9 (F) An analysis of whether the change to 

10 a first-to-file patent system creates a particular 

11 need for prior user rights. 

12 (2) CONSULTATION WITH OTHER AGENCIES.— 

13 In preparing the report required under paragraph 

14 (1), the Director shall consult with the United 

15 States Trade Representative, the Secretary of State, 

16 and the Attorney General. 

17 (o) EFFECTIVE DATE.— 

18 (1) IN GENERAL.—Except as otherwise pro19 vided by this section, the amendments made by this 

20 section shall take effect on the date that is 18 

21 months after the date of the enactment of this Act, 

22 and shall apply to any application for patent, and to 

23 any patent issuing thereon, that contains or con24 tained at any time— 


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1 (A) a claim to a claimed invention that has 

2 an effective filing date as defined in section 

3 100(i) of title 35, United States Code, that is 

4 18 months or more after the date of the enact5 ment of this Act; or 

6 (B) a specific reference under section 120, 

7 121, or 365(c) of title 35, United States Code, 

8 to any patent or application that contains or 

9 contained at any time such a claim. 

10 (2) INTERFERING PATENTS.—The provisions of 

11 sections 102(g), 135, and 291 of title 35, United 

12 States Code, in effect on the day prior to the date 

13 of the enactment of this Act, shall apply to each 

14 claim of an application for patent, and any patent 

15 issued thereon, for which the amendments made by 

16 this section also apply, if such application or patent 

17 contains or contained at any time— 

18 (A) a claim to an invention having an ef19 fective filing date as defined in section 100(i) of 

20 title 35, United States Code, earlier than 18 

21 months after the date of the enactment of this 

22 Act; or 

23 (B) a specific reference under section 120, 

24 121, or 365(c) of title 35, United States Code, 


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1 to any patent or application that contains or 

2 contained at any time such a claim. 

3 SEC. 3. INVENTOR’S OATH OR DECLARATION. 

4 (a) INVENTOR’S OATH OR DECLARATION.— 

5 (1) IN GENERAL.—Section 115 of title 35, 

6 United States Code, is amended to read as follows: 

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

8 ‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR

9 DECLARATION.—An application for patent that is filed 

10 under section 111(a) or commences the national stage 

11 under section 371 shall include, or be amended to include, 

12 the name of the inventor for any invention claimed in the 

13 application. Except as otherwise provided in this section, 

14 each individual who is the inventor or a joint inventor of 

15 a claimed invention in an application for patent shall exe16 cute an oath or declaration in connection with the applica17 tion. 

18 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara19 tion under subsection (a) shall contain statements that— 

20 ‘‘(1) the application was made or was author21 ized to be made by the affiant or declarant; and 

22 ‘‘(2) such individual believes himself or herself 

23 to be the original inventor or an original joint inven24 tor of a claimed invention in the application. 


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1 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director 

2 may specify additional information relating to the inventor 

3 and the invention that is required to be included in an 

4 oath or declaration under subsection (a). 

5 ‘‘(d) SUBSTITUTE STATEMENT.— 

6 ‘‘(1) IN GENERAL.—In lieu of executing an oath 

7 or declaration under subsection (a), the applicant for 

8 patent may provide a substitute statement under the 

9 circumstances described in paragraph (2) and such 

10 additional circumstances that the Director may 

11 specify by regulation. 

12 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub13 stitute statement under paragraph (1) is permitted 

14 with respect to any individual who— 

15 ‘‘(A) is unable to file the oath or declara16 tion under subsection (a) because the indi17 vidual— 

18 ‘‘(i) is deceased; 

19 ‘‘(ii) is under legal incapacity; or 

20 ‘‘(iii) cannot be found or reached after 

21 diligent effort; or 

22 ‘‘(B) is under an obligation to assign the 

23 invention but has refused to make the oath or 

24 declaration required under subsection (a). 


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1 ‘‘(3) CONTENTS.—A substitute statement under 

2 this subsection shall— 

3 ‘‘(A) identify the individual with respect to 

4 whom the statement applies; 

5 ‘‘(B) set forth the circumstances rep6 resenting the permitted basis for the filing of 

7 the substitute statement in lieu of the oath or 

8 declaration under subsection (a); and 

9 ‘‘(C) contain any additional information, 

10 including any showing, required by the Direc11 tor. 

12 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN13 MENT OF RECORD.—An individual who is under an obliga14 tion of assignment of an application for patent may in15 clude the required statements under subsections (b) and 

16 (c) in the assignment executed by the individual, in lieu 

17 of filing such statements separately. 

18 ‘‘(f) TIME FOR FILING.—A notice of allowance under 

19 section 151 may be provided to an applicant for patent 

20 only if the applicant for patent has filed each required 

21 oath or declaration under subsection (a) or has filed a sub22 stitute statement under subsection (d) or recorded an as23 signment meeting the requirements of subsection (e). 

24 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE25 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 


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1 ‘‘(1) EXCEPTION.—The requirements under 

2 this section shall not apply to an individual with re3 spect to an application for patent in which the indi4 vidual is named as the inventor or a joint inventor 

5 and who claims the benefit under section 120, 121, 

6 or 365(c) of the filing of an earlier-filed application, 

7 if— 

8 ‘‘(A) an oath or declaration meeting the 

9 requirements of subsection (a) was executed by 

10 the individual and was filed in connection with 

11 the earlier-filed application; 

12 ‘‘(B) a substitute statement meeting the 

13 requirements of subsection (d) was filed in the 

14 earlier filed application with respect to the indi15 vidual; or 

16 ‘‘(C) an assignment meeting the require17 ments of subsection (e) was executed with re18 spect to the earlier-filed application by the indi19 vidual and was recorded in connection with the 

20 earlier-filed application. 

21 ‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE22 MENTS, OR ASSIGNMENTS.—Notwithstanding para23 graph (1), the Director may require that a copy of 

24 the executed oath or declaration, the substitute 


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1 statement, or the assignment filed in the earlier-filed 

2 application be included in the later-filed application. 

3 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE4 MENTS; FILING ADDITIONAL STATEMENTS.— 

5 ‘‘(1) IN GENERAL.—Any person making a state6 ment required under this section may withdraw, re7 place, or otherwise correct the statement at any 

8 time. If a change is made in the naming of the in9 ventor requiring the filing of 1 or more additional 

10 statements under this section, the Director shall es11 tablish regulations under which such additional 

12 statements may be filed. 

13 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE14 QUIRED.—If an individual has executed an oath or 

15 declaration meeting the requirements of subsection 

16 (a) or an assignment meeting the requirements of 

17 subsection (e) with respect to an application for pat18 ent, the Director may not thereafter require that in19 dividual to make any additional oath, declaration, or 

20 other statement equivalent to those required by this 

21 section in connection with the application for patent 

22 or any patent issuing thereon. 

23 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in24 valid or unenforceable based upon the failure to 


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1 comply with a requirement under this section if the 

2 failure is remedied as provided under paragraph (1). 

3 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec4 laration or statement filed pursuant to this section shall 

5 contain an acknowledgment that any willful false state6 ment made in such declaration or statement is punishable 

7 under section 1001 of title 18 by fine or imprisonment 

8 of not more than 5 years, or both.’’. 

9 (2) RELATIONSHIP TO DIVISIONAL APPLICA10 TIONS.—Section 121 of title 35, United States Code, 

11 is amended by striking ‘‘If a divisional application’’ 

12 and all that follows through ‘‘inventor.’’. 

13 (3) REQUIREMENTS FOR NONPROVISIONAL AP14 PLICATIONS.—Section 111(a) of title 35, United 

15 States Code, is amended— 

16 (A) in paragraph (2)(C), by striking ‘‘by 

17 the applicant’’ and inserting ‘‘or declaration’’; 

18 (B) in the heading for paragraph (3), by 

19 inserting ‘‘OR DECLARATION’’ after ‘‘AND

20 OATH’’; and 

21 (C) by inserting ‘‘or declaration’’ after 

22 ‘‘and oath’’ each place it appears. 

23 (4) CONFORMING AMENDMENT.—The item re24 lating to section 115 in the table of sections for 


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1 chapter 11 of title 35, United States Code, is 

2 amended to read as follows: 

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

3 (b) FILING BY OTHER THAN INVENTOR.— 

4 (1) IN GENERAL.—Section 118 of title 35, 

5 United States Code, is amended to read as follows: 

6 ‘‘§ 118. Filing by other than inventor 

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

8 under an obligation to assign the invention may make an 

9 application for patent. A person who otherwise shows suf10 ficient proprietary interest in the matter may make an ap11 plication for patent on behalf of and as agent for the in12 ventor on proof of the pertinent facts and a showing that 

13 such action is appropriate to preserve the rights of the 

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

15 filed under this section by a person other than the inven16 tor, the patent shall be granted to the real party in inter17 est and upon such notice to the inventor as the Director 

18 considers to be sufficient.’’. 

19 (2) CONFORMING AMENDMENT.—Section 251 

20 of title 35, United States Code, is amended in the 

21 third undesignated paragraph by inserting ‘‘or the 

22 application for the original patent was filed by the 

23 assignee of the entire interest’’ after ‘‘claims of the 

24 original patent’’. 


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1 (c) SPECIFICATION.—Section 112 of title 35, United 

2 States Code, is amended— 

3 (1) in the first paragraph— 

4 (A) by striking ‘‘The specification’’ and in5 serting ‘‘(a) IN GENERAL.—The specification’’; 

6 and 

7 (B) by striking ‘‘of carrying out his inven8 tion’’ and inserting ‘‘or joint inventor of car9 rying out the invention’’; 

10 (2) in the second paragraph— 

11 (A) by striking ‘‘The specification’’ and in12 serting ‘‘(b) CONCLUSION.—The specification’’; 

13 and 

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

15 invention’’ and inserting ‘‘inventor or a joint in16 ventor regards as the invention’’; 

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

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

19 (4) in the fourth paragraph, by striking ‘‘Sub20 ject to the following paragraph,’’ and inserting ‘‘(d) 

21 REFERENCE IN DEPENDENT FORMS.—Subject to 

22 subsection (e),’’; 

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

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

25 DEPENDENT FORM.—A claim’’; and 


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1 (6) in the last paragraph, by striking ‘‘An ele2 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

3 A COMBINATION.—An element’’. 

4 (d) CONFORMING AMENDMENTS.— 

5 (1) Sections 111(b)(1)(A) is amended by strik6 ing ‘‘the first paragraph of section 112 of this title’’ 

7 and inserting ‘‘section 112(a)’’. 

8 (2) Section 111(b)(2) is amended by striking 

9 ‘‘the second through fifth paragraphs of section 

10 112,’’ and inserting ‘‘subsections (b) through (e) of 

11 section 112,’’. 

12 (e) EFFECTIVE DATE.—The amendments made by 

13 this section shall take effect 1 year after the date of the 

14 enactment of this Act and shall apply to patent applica15 tions that are filed on or after that effective date. 

16 SEC. 4. DAMAGES. 

17 (a) DAMAGES.—Section 284 of title 35, United 

18 States Code, is amended— 

19 (1) by striking ‘‘Upon finding’’ and inserting 

20 the following: ‘‘(a) IN GENERAL.—Upon finding’’; 

21 (2) by striking ‘‘fixed by the court’’ and all that 

22 follows through ‘‘When the damages’’ and inserting 

23 the following: ‘‘fixed by the court. When the dam24 ages’’; 


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1 (3) by striking ‘‘shall assess them.’’ and all that 

2 follows through ‘‘The court may receive’’ and insert3 ing the following: ‘‘shall assess them. The court may 

4 receive’’; and 

5 (4) by adding at the end the following: 

6 ‘‘(b) PROCEDURE FOR DETERMINING DAMAGES.— 

7 ‘‘(1) IN GENERAL.—The court shall identify the 

8 methodologies and factors that are relevant to the 

9 determination of damages, and the court or jury 

10 shall consider only those methodologies and factors 

11 relevant to making such determination. 

12 ‘‘(2) DISCLOSURE OF CLAIMS.—By no later 

13 than the entry of the final pretrial order, unless oth14 erwise ordered by the court, the parties shall state, 

15 in writing and with particularity, the methodologies 

16 and factors the parties propose for instruction to the 

17 jury in determining damages under this section, 

18 specifying the relevant underlying legal and factual 

19 bases for their assertions. 

20 ‘‘(3) SUFFICIENCY OF EVIDENCE.—Prior to the 

21 introduction of any evidence concerning the deter22 mination of damages, upon motion of either party or 

23 sua sponte, the court shall consider whether one or 

24 more of a party’s damages contentions lacks a le25 gally sufficient evidentiary basis. After providing a 


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1 nonmovant the opportunity to be heard, and after 

2 any further proffer of evidence, briefing, or argu3 ment that the court may deem appropriate, the 

4 court shall identify on the record those methodolo5 gies and factors as to which there is a legally suffi6 cient evidentiary basis, and the court or jury shall 

7 consider only those methodologies and factors in 

8 making the determination of damages under this 

9 section. The court shall only permit the introduction 

10 of evidence relating to the determination of damages 

11 that is relevant to the methodologies and factors 

12 that the court determines may be considered in mak13 ing the damages determination. 

14 ‘‘(c) SEQUENCING.—Any party may request that a 

15 patent-infringement trial be sequenced so that the trier 

16 of fact decides questions of the patent’s infringement and 

17 validity before the issues of damages and willful infringe18 ment are tried to the court or the jury. The court shall 

19 grant such a request absent good cause to reject the re20 quest, such as the absence of issues of significant damages 

21 or infringement and validity. The sequencing of a trial 

22 pursuant to this subsection shall not affect other matters, 

23 such as the timing of discovery. This subsection does not 

24 authorize a party to request that the issues of damages 

25 and willful infringement be tried to a jury different than 


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1 the one that will decide questions of the patent’s infringe2 ment and validity. 

3 ‘‘(d) WILLFUL INFRINGEMENT.— 

4 ‘‘(1) IN GENERAL.—The court may increase 

5 damages up to 3 times the amount found or as6 sessed if the court or the jury, as the case may be, 

7 determines that the infringement of the patent was 

8 willful. Increased damages under this subsection 

9 shall not apply to provisional rights under section 

10 154(d). Infringement is not willful unless the claim11 ant proves by clear and convincing evidence that the 

12 accused infringer’s conduct with respect to the pat13 ent was objectively reckless. An accused infringer’s 

14 conduct was objectively reckless if the infringer was 

15 acting despite an objectively high likelihood that his 

16 actions constituted infringement of a valid patent, 

17 and this objectively-defined risk was either known or 

18 so obvious that it should have been known to the ac19 cused infringer. 

20 ‘‘(2) PLEADING STANDARDS.—A claimant as21 serting that a patent was infringed willfully shall 

22 comply with the pleading requirements set forth 

23 under Federal Rule of Civil Procedure 9(b). 

24 ‘‘(3) KNOWLEDGE ALONE INSUFFICIENT.—In25 fringement of a patent may not be found to be willVerDate Mar 15 2010 19:11 Jan 27, 2011 Jkt 099200 PO 00000 Frm 00034 Fmt 6652 Sfmt 6201 E:\BILLS\S23.IS S23

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1 ful solely on the basis that the infringer had knowl2 edge of the infringed patent. 

3 ‘‘(4) PRE-SUIT NOTIFICATION.—A claimant 

4 seeking to establish willful infringement may not 

5 rely on evidence of pre-suit notification of infringe6 ment unless that notification identifies with particu7 larity the asserted patent, identifies the product or 

8 process accused, and explains with particularity, to 

9 the extent possible following a reasonable investiga10 tion or inquiry, how the product or process infringes 

11 one or more claims of the patent. 

12 ‘‘(5) CLOSE CASE.—The court shall not in13 crease damages under this subsection if the court 

14 determines that there is a close case as to infringe15 ment, validity, or enforceability. On the motion of ei16 ther party, the court shall determine whether a close 

17 case as to infringement, validity, or enforceability ex18 ists, and the court shall explain its decision. Once 

19 the court determines that such a close case exists, 

20 the issue of willful infringement shall not thereafter 

21 be tried to the jury. 

22 ‘‘(6) ACCRUED DAMAGES.—If a court or jury 

23 finds that the infringement of patent was willful, the 

24 court may increase only those damages that accrued 

25 after the infringement became willful.’’. 


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1 (b) DEFENSE TO INFRINGEMENT BASED ON EAR2 LIER INVENTOR.—Section 273(b)(6) of title 35, United 

3 States Code, is amended to read as follows: 

4 ‘‘(6) PERSONAL DEFENSE.—The defense under 

5 this section may be asserted only by the person who 

6 performed or caused the performance of the acts 

7 necessary to establish the defense as well as any 

8 other entity that controls, is controlled by, or is 

9 under common control with such person and, except 

10 for any transfer to the patent owner, the right to as11 sert the defense shall not be licensed or assigned or 

12 transferred to another person except as an ancillary 

13 and subordinate part of a good faith assignment or 

14 transfer for other reasons of the entire enterprise or 

15 line of business to which the defense relates. Not16 withstanding the preceding sentence, any person 

17 may, on its own behalf, assert a defense based on 

18 the exhaustion of rights provided under paragraph 

19 (3), including any necessary elements thereof.’’. 

20 (c) VIRTUAL MARKING.—Section 287(a) of title 35, 

21 United States Code, is amended by inserting ‘‘, or by fix22 ing thereon the word ‘patent’ or the abbreviation ‘pat.’ to23 gether with an address of a posting on the Internet, acces24 sible to the public without charge for accessing the adVerDate Mar 15 2010 19:11 Jan 27, 2011 Jkt 099200 PO 00000 Frm 00036 Fmt 6652 Sfmt 6201 E:\BILLS\S23.IS S23

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1 dress, that associates the patented article with the number 

2 of the patent’’ before ‘‘, or when’’. 

3 (d) ADVICE OF COUNSEL.—Chapter 29 of title 35, 

4 United States Code, is amended by adding at the end the 

5 following: 

6 ‘‘§ 298. Advice of Counsel 

7 ‘‘The failure of an infringer to obtain the advice of 

8 counsel with respect to any allegedly infringed patent or 

9 the failure of the infringer to present such advice to the 

10 court or jury may not be used to prove that the accused 

11 infringer willfully infringed the patent or that the in12 fringer intended to induce infringement of the patent.’’. 

13 (e) EFFECTIVE DATE.—The amendments made by 

14 this section shall apply to any civil action commenced on 

15 or after the date of the enactment of this Act. 

16 SEC. 5. POST-GRANT REVIEW PROCEEDINGS. 

17 (a) INTER PARTES REVIEW.—Chapter 31 of title 35, 

18 United States Code, is amended to read as follows: 

19 ‘‘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. 


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1 ‘‘§ 311. Inter partes review 

2 ‘‘(a) IN GENERAL.—Subject to the provisions of this 

3 chapter, a person who is not the patent owner may file 

4 with the Office a petition to institute an inter partes re5 view for a patent. The Director shall establish, by regula6 tion, fees to be paid by the person requesting the review, 

7 in such amounts as the Director determines to be reason8 able, considering the aggregate costs of the review. 

9 ‘‘(b) SCOPE.—A petitioner in an inter partes review 

10 may request to cancel as unpatentable 1 or more claims 

11 of a patent only on a ground that could be raised under 

12 section 102 or 103 and only on the basis of prior art con13 sisting of patents or printed publications. 

14 ‘‘(c) FILING DEADLINE.—A petition for inter partes 

15 review shall be filed after the later of either— 

16 ‘‘(1) 9 months after the grant of a patent or 

17 issuance of a reissue of a patent; or 

18 ‘‘(2) if a post-grant review is instituted under 

19 chapter 32, the date of the termination of such post20 grant review. 

21 ‘‘§ 312. Petitions 

22 ‘‘(a) REQUIREMENTS OF PETITION.—A petition filed 

23 under section 311 may be considered only if— 

24 ‘‘(1) the petition is accompanied by payment of 

25 the fee established by the Director under section 

26 311; 


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1 ‘‘(2) the petition identifies all real parties in in2 terest; 

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

4 particularity, each claim challenged, the grounds on 

5 which the challenge to each claim is based, and the 

6 evidence that supports the grounds for the challenge 

7 to each claim, including— 

8 ‘‘(A) copies of patents and printed publica9 tions that the petitioner relies upon in support 

10 of the petition; and 

11 ‘‘(B) affidavits or declarations of sup12 porting evidence and opinions, if the petitioner 

13 relies on expert opinions; 

14 ‘‘(4) the petition provides such other informa15 tion as the Director may require by regulation; and 

16 ‘‘(5) the petitioner provides copies of any of the 

17 documents required under paragraphs (2), (3), and 

18 (4) to the patent owner or, if applicable, the des19 ignated representative of the patent owner. 

20 ‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 

21 after the receipt of a petition under section 311, the Direc22 tor shall make the petition available to the public. 

23 ‘‘§ 313. Preliminary response to petition 

24 ‘‘(a) PRELIMINARY RESPONSE.—If an inter partes 

25 review petition is filed under section 311, the patent owner 


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1 shall have the right to file a preliminary response within 

2 a time period set by the Director. 

3 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re4 sponse to a petition for inter partes review shall set forth 

5 reasons why no inter partes review should be instituted 

6 based upon the failure of the petition to meet any require7 ment of this chapter. 

8 ‘‘§ 314. Institution of inter partes review 

9 ‘‘(a) THRESHOLD.—The Director may not authorize 

10 an inter partes review to commence unless the Director 

11 determines that the information presented in the petition 

12 filed under section 311 and any response filed under sec13 tion 313 shows that there is a reasonable likelihood that 

14 the petitioner would prevail with respect to at least 1 of 

15 the claims challenged in the petition. 

16 ‘‘(b) TIMING.—The Director shall determine whether 

17 to institute an inter partes review under this chapter with18 in 3 months after receiving a preliminary response under 

19 section 313 or, if none is filed, within three months after 

20 the expiration of the time for filing such a response. 

21 ‘‘(c) NOTICE.—The Director shall notify the peti22 tioner and patent owner, in writing, of the Director’s de23 termination under subsection (a), and shall make such no24 tice available to the public as soon as is practicable. Such 


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1 notice shall list the date on which the review shall com2 mence. 

3 ‘‘(d) NO APPEAL.—The determination by the Direc4 tor whether to institute an inter partes review under this 

5 section shall be final and nonappealable. 

6 ‘‘§ 315. Relation to other proceedings or actions 

7 ‘‘(a) INFRINGER’S ACTION.—An inter partes review 

8 may not be instituted or maintained if the petitioner or 

9 real party in interest has filed a civil action challenging 

10 the validity of a claim of the patent. 

11 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re12 view may not be instituted if the petition requesting the 

13 proceeding is filed more than 3 months after the date on 

14 which the petitioner, real party in interest, or his privy 

15 is required to respond to a civil action alleging infringe16 ment of the patent. 

17 ‘‘(c) JOINDER.—If the Director institutes an inter 

18 partes review, the Director, in his discretion, may join as 

19 a party to that inter partes review any person who prop20 erly files a petition under section 311 that the Director, 

21 after receiving a preliminary response under section 313 

22 or the expiration of the time for filing such a response, 

23 determines warrants the institution of an inter partes re24 view under section 314. 


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1 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

2 sections 135(a), 251, and 252, and chapter 30, during the 

3 pendency of an inter partes review, if another proceeding 

4 or matter involving the patent is before the Office, the 

5 Director may determine the manner in which the inter 

6 partes review or other proceeding or matter may proceed, 

7 including providing for stay, transfer, consolidation, or 

8 termination of any such matter or proceeding. 

9 ‘‘(e) ESTOPPEL.— 

10 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 

11 petitioner in an inter partes review under this chap12 ter, or his real party in interest or privy, may not 

13 request or maintain a proceeding before the Office 

14 with respect to a claim on any ground that the peti15 tioner raised or reasonably could have raised during 

16 an inter partes review of the claim that resulted in 

17 a final written decision under section 318(a). 

18 ‘‘(2) CIVIL ACTIONS AND OTHER PRO19 CEEDINGS.—The petitioner in an inter partes review 

20 under this chapter, or his real party in interest or 

21 privy, may not assert either in a civil action arising 

22 in whole or in part under section 1338 of title 28 

23 or in a proceeding before the International Trade 

24 Commission that a claim in a patent is invalid on 

25 any ground that the petitioner raised or reasonably 


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1 could have raised during an inter partes review of 

2 the claim that resulted in a final written decision 

3 under section 318(a). 

4 ‘‘§ 316. Conduct of inter partes review 

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

6 regulations— 

7 ‘‘(1) providing that the file of any proceeding 

8 under this chapter shall be made available to the 

9 public, except that any petition or document filed 

10 with the intent that it be sealed shall be accom11 panied by a motion to seal, and such petition or doc12 ument shall be treated as sealed pending the out13 come of the ruling on the motion; 

14 ‘‘(2) setting forth the standards for the showing 

15 of sufficient grounds to institute a review under sec16 tion 314(a); 

17 ‘‘(3) establishing procedures for the submission 

18 of supplemental information after the petition is 

19 filed; 

20 ‘‘(4) in accordance with section 2(b)(2), estab21 lishing and governing inter partes review under this 

22 chapter and the relationship of such review to other 

23 proceedings under this title; 

24 ‘‘(5) setting a time period for requesting joinder 

25 under section 315(c); 


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1 ‘‘(6) setting forth standards and procedures for 

2 discovery of relevant evidence, including that such 

3 discovery shall be limited to— 

4 ‘‘(A) the deposition of witnesses submitting 

5 affidavits or declarations; and 

6 ‘‘(B) what is otherwise necessary in the in7 terest of justice; 

8 ‘‘(7) prescribing sanctions for abuse of dis9 covery, abuse of process, or any other improper use 

10 of the proceeding, such as to harass or to cause un11 necessary delay or an unnecessary increase in the 

12 cost of the proceeding; 

13 ‘‘(8) providing for protective orders governing 

14 the exchange and submission of confidential infor15 mation; 

16 ‘‘(9) allowing the patent owner to file a re17 sponse to the petition after an inter partes review 

18 has been instituted, and requiring that the patent 

19 owner file with such response, through affidavits or 

20 declarations, any additional factual evidence and ex21 pert opinions on which the patent owner relies in 

22 support of the response; 

23 ‘‘(10) setting forth standards and procedures 

24 for allowing the patent owner to move to amend the 

25 patent under subsection (d) to cancel a challenged 


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1 claim or propose a reasonable number of substitute 

2 claims, and ensuring that any information submitted 

3 by the patent owner in support of any amendment 

4 entered under subsection (d) is made available to the 

5 public as part of the prosecution history of the pat6 ent; 

7 ‘‘(11) providing either party with the right to 

8 an oral hearing as part of the proceeding; and 

9 ‘‘(12) requiring that the final determination in 

10 an inter partes review be issued not later than 1 

11 year after the date on which the Director notices the 

12 institution of a review under this chapter, except 

13 that the Director may, for good cause shown, extend 

14 the 1-year period by not more than 6 months, and 

15 may adjust the time periods in this paragraph in the 

16 case of joinder under section 315(c). 

17 ‘‘(b) CONSIDERATIONS.—In prescribing regulations 

18 under this section, the Director shall consider the effect 

19 of any such regulation on the economy, the integrity of 

20 the patent system, the efficient administration of the Of21 fice, and the ability of the Office to timely complete pro22 ceedings instituted under this chapter. 

23 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat24 ent Trial and Appeal Board shall, in accordance with secVerDate Mar 15 2010 19:11 Jan 27, 2011 Jkt 099200 PO 00000 Frm 00045 Fmt 6652 Sfmt 6201 E:\BILLS\S23.IS S23

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1 tion 6, conduct each proceeding authorized by the Direc2 tor. 

3 ‘‘(d) AMENDMENT OF THE PATENT.— 

4 ‘‘(1) IN GENERAL.—During an inter partes re5 view instituted under this chapter, the patent owner 

6 may file 1 motion to amend the patent in 1 or more 

7 of the following ways: 

8 ‘‘(A) Cancel any challenged patent claim. 

9 ‘‘(B) For each challenged claim, propose a 

10 reasonable number of substitute claims. 

11 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo12 tions to amend may be permitted upon the joint re13 quest of the petitioner and the patent owner to ma14 terially advance the settlement of a proceeding under 

15 section 317, or as permitted by regulations pre16 scribed by the Director. 

17 ‘‘(3) SCOPE OF CLAIMS.—An amendment under 

18 this subsection may not enlarge the scope of the 

19 claims of the patent or introduce new matter. 

20 ‘‘(e) EVIDENTIARY STANDARDS.—In an inter partes 

21 review instituted under this chapter, the petitioner shall 

22 have the burden of proving a proposition of 

23 unpatentability by a preponderance of the evidence. 


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1 ‘‘§ 317. Settlement 

2 ‘‘(a) IN GENERAL.—An inter partes review instituted 

3 under this chapter shall be terminated with respect to any 

4 petitioner upon the joint request of the petitioner and the 

5 patent owner, unless the Office has decided the merits of 

6 the proceeding before the request for termination is filed. 

7 If the inter partes review is terminated with respect to 

8 a petitioner under this section, no estoppel under section 

9 315(e) shall apply to that petitioner. If no petitioner re10 mains in the inter partes review, the Office may terminate 

11 the review or proceed to a final written decision under sec12 tion 318(a). 

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

14 understanding between the patent owner and a petitioner, 

15 including any collateral agreements referred to in such 

16 agreement or understanding, made in connection with, or 

17 in contemplation of, the termination of an inter partes re18 view under this section shall be in writing and a true copy 

19 of such agreement or understanding shall be filed in the 

20 Office before the termination of the inter partes review 

21 as between the parties. If any party filing such agreement 

22 or understanding so requests, the copy shall be kept sepa23 rate from the file of the inter partes review, and shall be 

24 made available only to Federal Government agencies upon 

25 written request, or to any other person on a showing of 

26 good cause. 


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1 ‘‘§ 318. Decision of the board 

2 ‘‘(a) FINAL WRITTEN DECISION.—If an inter partes 

3 review is instituted and not dismissed under this chapter, 

4 the Patent Trial and Appeal Board shall issue a final writ5 ten decision with respect to the patentability of any patent 

6 claim challenged by the petitioner and any new claim 

7 added under section 316(d). 

8 ‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 

9 Board issues a final written decision under subsection (a) 

10 and the time for appeal has expired or any appeal has 

11 terminated, the Director shall issue and publish a certifi12 cate canceling any claim of the patent finally determined 

13 to be unpatentable, confirming any claim of the patent de14 termined to be patentable, and incorporating in the patent 

15 by operation of the certificate any new or amended claim 

16 determined to be patentable. 

17 ‘‘§ 319. Appeal 

18 ‘‘A party dissatisfied with the final written decision 

19 of the Patent Trial and Appeal Board under section 

20 318(a) may appeal the decision pursuant to sections 141 

21 through 144. Any party to the inter partes review shall 

22 have the right to be a party to the appeal.’’. 

23 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

24 The table of chapters for part III of title 35, United States 


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1 Code, is amended by striking the item relating to chapter 

2 31 and inserting the following: 

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

3 (c) REGULATIONS AND EFFECTIVE DATE.— 

4 (1) REGULATIONS.—The Director shall, not 

5 later than the date that is 1 year after the date of 

6 the enactment of this Act, issue regulations to carry 

7 out chapter 31 of title 35, United States Code, as 

8 amended by subsection (a) of this section. 

9 (2) APPLICABILITY.— 

10 (A) IN GENERAL.—The amendments made 

11 by subsection (a) shall take effect on the date 

12 that is 1 year after the date of the enactment 

13 of this Act and shall apply to all patents issued 

14 before, on, or after the effective date of sub15 section (a). 

16 (B) EXCEPTION.—The provisions of chap17 ter 31 of title 35, United States Code, as 

18 amended by paragraph (3), shall continue to 

19 apply to requests for inter partes reexamination 

20 that are filed prior to the effective date of sub21 section (a) as if subsection (a) had not been en22 acted. 

23 (C) GRADUATED IMPLEMENTATION.—The 

24 Director may impose a limit on the number of 

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1 ing each of the first 4 years following the effec2 tive date of subsection (a), provided that such 

3 number shall in each year be equivalent to or 

4 greater than the number of inter partes reex5 aminations that are ordered in the last full fis6 cal year prior to the effective date of subsection 

7 (a). 

8 (3) TRANSITION.— 

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

10 United States Code, is amended— 

11 (i) in section 312— 

12 (I) in subsection (a)— 

13 (aa) in the first sentence, by 

14 striking ‘‘a substantial new ques15 tion of patentability affecting any 

16 claim of the patent concerned is 

17 raised by the request,’’ and in18 serting ‘‘the information pre19 sented in the request shows that 

20 there is a reasonable likelihood 

21 that the requester would prevail 

22 with respect to at least 1 of the 

23 claims challenged in the re24 quest,’’; and 


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1 (bb) in the second sentence, 

2 by striking ‘‘The existence of a 

3 substantial new question of pat4 entability’’ and inserting ‘‘A 

5 showing that there is a reason6 able likelihood that the requester 

7 would prevail with respect to at 

8 least 1 of the claims challenged 

9 in the request’’; and 

10 (II) in subsection (c), in the sec11 ond sentence, by striking ‘‘no substan12 tial new question of patentability has 

13 been raised,’’ and inserting ‘‘the show14 ing required by subsection (a) has not 

15 been made,’’; and 

16 (ii) in section 313, by striking ‘‘a sub17 stantial new question of patentability af18 fecting a claim of the patent is raised’’ and 

19 inserting ‘‘it has been shown that there is 

20 a reasonable likelihood that the requester 

21 would prevail with respect to at least 1 of 

22 the claims challenged in the request’’. 

23 (B) APPLICATION.—The amendments 

24 made by this paragraph shall apply to requests 

25 for inter partes reexamination that are filed on 


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1 or after the date of the enactment of this Act, 

2 but prior to the effective date of subsection (a). 

3 (d) POST-GRANT REVIEW.—Part III of title 35, 

4 United States Code, is amended by adding at the end the 

5 following: 

6 ‘‘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. 

7 ‘‘§ 321. Post-grant review 

8 ‘‘(a) IN GENERAL.—Subject to the provisions of this 

9 chapter, a person who is not the patent owner may file 

10 with the Office a petition to institute a post-grant review 

11 for a patent. The Director shall establish, by regulation, 

12 fees to be paid by the person requesting the review, in 

13 such amounts as the Director determines to be reasonable, 

14 considering the aggregate costs of the post-grant review. 

15 ‘‘(b) SCOPE.—A petitioner in a post-grant review may 

16 request to cancel as unpatentable 1 or more claims of a 

17 patent on any ground that could be raised under para18 graph (2) or (3) of section 282(b) (relating to invalidity 

19 of the patent or any claim). 


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1 ‘‘(c) FILING DEADLINE.—A petition for a post-grant 

2 review shall be filed not later than 9 months after the 

3 grant of the patent or issuance of a reissue patent. 

4 ‘‘§ 322. Petitions 

5 ‘‘(a) REQUIREMENTS OF PETITION.—A petition filed 

6 under section 321 may be considered only if— 

7 ‘‘(1) the petition is accompanied by payment of 

8 the fee established by the Director under section 

9 321; 

10 ‘‘(2) the petition identifies all real parties in in11 terest; 

12 ‘‘(3) the petition identifies, in writing and with 

13 particularity, each claim challenged, the grounds on 

14 which the challenge to each claim is based, and the 

15 evidence that supports the grounds for the challenge 

16 to each claim, including— 

17 ‘‘(A) copies of patents and printed publica18 tions that the petitioner relies upon in support 

19 of the petition; and 

20 ‘‘(B) affidavits or declarations of sup21 porting evidence and opinions, if the petitioner 

22 relies on other factual evidence or on expert 

23 opinions; 

24 ‘‘(4) the petition provides such other informa25 tion as the Director may require by regulation; and 


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1 ‘‘(5) the petitioner provides copies of any of the 

2 documents required under paragraphs (2), (3), and 

3 (4) to the patent owner or, if applicable, the des4 ignated representative of the patent owner. 

5 ‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 

6 after the receipt of a petition under section 321, the Direc7 tor shall make the petition available to the public. 

8 ‘‘§ 323. Preliminary response to petition 

9 ‘‘(a) PRELIMINARY RESPONSE.—If a post-grant re10 view petition is filed under section 321, the patent owner 

11 shall have the right to file a preliminary response within 

12 2 months of the filing of the petition. 

13 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re14 sponse to a petition for post-grant review shall set forth 

15 reasons why no post-grant review should be instituted 

16 based upon the failure of the petition to meet any require17 ment of this chapter. 

18 ‘‘§ 324. Institution of post-grant review 

19 ‘‘(a) THRESHOLD.—The Director may not authorize 

20 a post-grant review to commence unless the Director de21 termines that the information presented in the petition, 

22 if such information is not rebutted, would demonstrate 

23 that it is more likely than not that at least 1 of the claims 

24 challenged in the petition is unpatentable. 


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1 ‘‘(b) ADDITIONAL GROUNDS.—The determination re2 quired under subsection (a) may also be satisfied by a 

3 showing that the petition raises a novel or unsettled legal 

4 question that is important to other patents or patent ap5 plications. 

6 ‘‘(c) TIMING.—The Director shall determine whether 

7 to institute a post-grant review under this chapter within 

8 3 months after receiving a preliminary response under sec9 tion 323 or, if none is filed, the expiration of the time 

10 for filing such a response. 

11 ‘‘(d) NOTICE.—The Director shall notify the peti12 tioner and patent owner, in writing, of the Director’s de13 termination under subsection (a) or (b), and shall make 

14 such notice available to the public as soon as is prac15 ticable. The Director shall make each notice of the institu16 tion of a post-grant review available to the public. Such 

17 notice shall list the date on which the review shall com18 mence. 

19 ‘‘(e) NO APPEAL.—The determination by the Direc20 tor whether to institute a post-grant review under this sec21 tion shall be final and nonappealable. 

22 ‘‘§ 325. Relation to other proceedings or actions 

23 ‘‘(a) INFRINGER’S ACTION.—A post-grant review 

24 may not be instituted or maintained if the petitioner or 


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1 real party in interest has filed a civil action challenging 

2 the validity of a claim of the patent. 

3 ‘‘(b) PATENT OWNER’S ACTION.—A post-grant re4 view may not be instituted if the petition requesting the 

5 proceeding is filed more than 3 months after the date on 

6 which the petitioner, real party in interest, or his privy 

7 is required to respond to a civil action alleging infringe8 ment of the patent. 

9 ‘‘(c) JOINDER.—If more than 1 petition for a post10 grant review is properly filed against the same patent and 

11 the Director determines that more than 1 of these peti12 tions warrants the institution of a post-grant review under 

13 section 324, the Director may consolidate such reviews 

14 into a single post-grant review. 

15 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

16 sections 135(a), 251, and 252, and chapter 30, during the 

17 pendency of any post-grant review, if another proceeding 

18 or matter involving the patent is before the Office, the 

19 Director may determine the manner in which the post20 grant review or other proceeding or matter may proceed, 

21 including providing for stay, transfer, consolidation, or 

22 termination of any such matter or proceeding. In deter23 mining whether to institute or order a proceeding under 

24 this chapter, chapter 30, or chapter 31, the Director may 

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1 quest because, the same or substantially the same prior 

2 art or arguments previously were presented to the Office. 

3 ‘‘(e) ESTOPPEL.— 

4 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 

5 petitioner in a post-grant review under this chapter, 

6 or his real party in interest or privy, may not re7 quest or maintain a proceeding before the Office 

8 with respect to a claim on any ground that the peti9 tioner raised or reasonably could have raised during 

10 a post-grant review of the claim that resulted in a 

11 final written decision under section 328(a). 

12 ‘‘(2) CIVIL ACTIONS AND OTHER PRO13 CEEDINGS.—The petitioner in a post-grant review 

14 under this chapter, or his real party in interest or 

15 privy, may not assert either in a civil action arising 

16 in whole or in part under section 1338 of title 28 

17 or in a proceeding before the International Trade 

18 Commission that a claim in a patent is invalid on 

19 any ground that the petitioner raised during a post20 grant review of the claim that resulted in a final 

21 written decision under section 328(a). 

22 ‘‘(f) PRELIMINARY INJUNCTIONS.—If a civil action 

23 alleging infringement of a patent is filed within 3 months 

24 of the grant of the patent, the court may not stay its con25 sideration of the patent owner’s motion for a preliminary 


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1 injunction against infringement of the patent on the basis 

2 that a petition for post-grant review has been filed or that 

3 such a proceeding has been instituted. 

4 ‘‘(g) REISSUE PATENTS.—A post-grant review may 

5 not be instituted if the petition requests cancellation of 

6 a claim in a reissue patent that is identical to or narrower 

7 than a claim in the original patent from which the reissue 

8 patent was issued, and the time limitations in section 

9 321(c) would bar filing a petition for a post-grant review 

10 for such original patent. 

11 ‘‘§ 326. Conduct of post-grant review 

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

13 regulations— 

14 ‘‘(1) providing that the file of any proceeding 

15 under this chapter shall be made available to the 

16 public, except that any petition or document filed 

17 with the intent that it be sealed shall be accom18 panied by a motion to seal, and such petition or doc19 ument shall be treated as sealed pending the out20 come of the ruling on the motion; 

21 ‘‘(2) setting forth the standards for the showing 

22 of sufficient grounds to institute a review under sub23 sections (a) and (b) of section 324; 


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1 ‘‘(3) establishing procedures for the submission 

2 of supplemental information after the petition is 

3 filed; 

4 ‘‘(4) in accordance with section 2(b)(2), estab5 lishing and governing a post-grant review under this 

6 chapter and the relationship of such review to other 

7 proceedings under this title; 

8 ‘‘(5) setting forth standards and procedures for 

9 discovery of relevant evidence, including that such 

10 discovery shall be limited to evidence directly related 

11 to factual assertions advanced by either party in the 

12 proceeding; 

13 ‘‘(6) prescribing sanctions for abuse of dis14 covery, abuse of process, or any other improper use 

15 of the proceeding, such as to harass or to cause un16 necessary delay or an unnecessary increase in the 

17 cost of the proceeding; 

18 ‘‘(7) providing for protective orders governing 

19 the exchange and submission of confidential infor20 mation; 

21 ‘‘(8) allowing the patent owner to file a re22 sponse to the petition after a post-grant review has 

23 been instituted, and requiring that the patent owner 

24 file with such response, through affidavits or dec25 larations, any additional factual evidence and expert 


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1 opinions on which the patent owner relies in support 

2 of the response; 

3 ‘‘(9) setting forth standards and procedures for 

4 allowing the patent owner to move to amend the pat5 ent under subsection (d) to cancel a challenged claim 

6 or propose a reasonable number of substitute claims, 

7 and ensuring that any information submitted by the 

8 patent owner in support of any amendment entered 

9 under subsection (d) is made available to the public 

10 as part of the prosecution history of the patent; 

11 ‘‘(10) providing either party with the right to 

12 an oral hearing as part of the proceeding; and 

13 ‘‘(11) requiring that the final determination in 

14 any post-grant review be issued not later than 1 

15 year after the date on which the Director notices the 

16 institution of a proceeding under this chapter, except 

17 that the Director may, for good cause shown, extend 

18 the 1-year period by not more than 6 months, and 

19 may adjust the time periods in this paragraph in the 

20 case of joinder under section 325(c). 

21 ‘‘(b) CONSIDERATIONS.—In prescribing regulations 

22 under this section, the Director shall consider the effect 

23 of any such regulation on the economy, the integrity of 

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1 fice, and the ability of the Office to timely complete pro2 ceedings instituted under this chapter. 

3 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat4 ent Trial and Appeal Board shall, in accordance with sec5 tion 6, conduct each proceeding authorized by the Direc6 tor. 

7 ‘‘(d) AMENDMENT OF THE PATENT.— 

8 ‘‘(1) IN GENERAL.—During a post-grant review 

9 instituted under this chapter, the patent owner may 

10 file 1 motion to amend the patent in 1 or more of 

11 the following ways: 

12 ‘‘(A) Cancel any challenged patent claim. 

13 ‘‘(B) For each challenged claim, propose a 

14 reasonable number of substitute claims. 

15 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo16 tions to amend may be permitted upon the joint re17 quest of the petitioner and the patent owner to ma18 terially advance the settlement of a proceeding under 

19 section 327, or upon the request of the patent owner 

20 for good cause shown. 

21 ‘‘(3) SCOPE OF CLAIMS.—An amendment under 

22 this subsection may not enlarge the scope of the 

23 claims of the patent or introduce new matter. 

24 ‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re25 view instituted under this chapter, the petitioner shall 


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1 have the burden of proving a proposition of 

2 unpatentability by a preponderance of the evidence. 

3 ‘‘§ 327. Settlement 

4 ‘‘(a) IN GENERAL.—A post-grant review instituted 

5 under this chapter shall be terminated with respect to any 

6 petitioner upon the joint request of the petitioner and the 

7 patent owner, unless the Office has decided the merits of 

8 the proceeding before the request for termination is filed. 

9 If the post-grant review is terminated with respect to a 

10 petitioner under this section, no estoppel under section 

11 325(e) shall apply to that petitioner. If no petitioner re12 mains in the post-grant review, the Office may terminate 

13 the post-grant review or proceed to a final written decision 

14 under section 328(a). 

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

16 understanding between the patent owner and a petitioner, 

17 including any collateral agreements referred to in such 

18 agreement or understanding, made in connection with, or 

19 in contemplation of, the termination of a post-grant review 

20 under this section shall be in writing, and a true copy of 

21 such agreement or understanding shall be filed in the Of22 fice before the termination of the post-grant review as be23 tween the parties. If any party filing such agreement or 

24 understanding so requests, the copy shall be kept separate 

25 from the file of the post-grant review, and shall be made 


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1 available only to Federal Government agencies upon writ2 ten request, or to any other person on a showing of good 

3 cause. 

4 ‘‘§ 328. Decision of the board 

5 ‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re6 view is instituted and not dismissed under this chapter, 

7 the Patent Trial and Appeal Board shall issue a final writ8 ten decision with respect to the patentability of any patent 

9 claim challenged by the petitioner and any new claim 

10 added under section 326(d). 

11 ‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 

12 Board issues a final written decision under subsection (a) 

13 and the time for appeal has expired or any appeal has 

14 terminated, the Director shall issue and publish a certifi15 cate canceling any claim of the patent finally determined 

16 to be unpatentable, confirming any claim of the patent de17 termined to be patentable, and incorporating in the patent 

18 by operation of the certificate any new or amended claim 

19 determined to be patentable. 

20 ‘‘§ 329. Appeal 

21 ‘‘A party dissatisfied with the final written decision 

22 of the Patent Trial and Appeal Board under section 

23 328(a) may appeal the decision pursuant to sections 141 

24 through 144. Any party to the post-grant review shall have 

25 the right to be a party to the appeal.’’. 


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1 (e) TECHNICAL AND CONFORMING AMENDMENT.— 

2 The table of chapters for part III of title 35, United States 

3 Code, is amended by adding at the end the following: 

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

4 (f) REGULATIONS AND EFFECTIVE DATE.— 

5 (1) REGULATIONS.—The Director shall, not 

6 later than the date that is 1 year after the date of 

7 the enactment of this Act, issue regulations to carry 

8 out chapter 32 of title 35, United States Code, as 

9 added by subsection (d) of this section. 

10 (2) APPLICABILITY.—The amendments made 

11 by subsection (d) shall take effect on the date that 

12 is 1 year after the date of the enactment of this Act 

13 and shall apply only to patents issued on or after 

14 that date. The Director may impose a limit on the 

15 number of post-grant reviews that may be instituted 

16 during each of the 4 years following the effective 

17 date of subsection (d). 

18 (3) PENDING INTERFERENCES.—The Director 

19 shall determine the procedures under which inter20 ferences commenced before the effective date of sub21 section (d) are to proceed, including whether any 

22 such interference is to be dismissed without preju23 dice to the filing of a petition for a post-grant review 

24 under chapter 32 of title 35, United States Code, or 

25 is to proceed as if this Act had not been enacted. 


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1 The Director shall include such procedures in regu2 lations issued under paragraph (1). For purposes of 

3 an interference that is commenced before the effec4 tive date of subsection (d), the Director may deem 

5 the Patent Trial and Appeal Board to be the Board 

6 of Patent Appeals and Interferences, and may allow 

7 the Patent Trial and Appeal Board to conduct any 

8 further proceedings in that interference. The author9 ization to appeal or have remedy from derivation 

10 proceedings in sections 141(d) and 146 of title 35, 

11 United States Code, and the jurisdiction to entertain 

12 appeals from derivation proceedings in section 

13 1295(a)(4)(A) of title 28, United States Code, shall 

14 be deemed to extend to final decisions in inter15 ferences that are commenced before the effective 

16 date of subsection (d) and that are not dismissed 

17 pursuant to this paragraph. 

18 (g) CITATION OF PRIOR ART AND WRITTEN STATE19 MENTS.— 

20 (1) IN GENERAL.—Section 301 of title 35, 

21 United States Code, is amended to read as follows: 

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

23 ‘‘(a) IN GENERAL.—Any person at any time may cite 

24 to the Office in writing— 


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1 ‘‘(1) prior art consisting of patents or printed 

2 publications which that person believes to have a 

3 bearing on the patentability of any claim of a par4 ticular patent; or 

5 ‘‘(2) statements of the patent owner filed in a 

6 proceeding before a Federal court or the Office in 

7 which the patent owner took a position on the scope 

8 of any claim of a particular patent. 

9 ‘‘(b) OFFICIAL FILE.—If the person citing prior art 

10 or written statements pursuant to subsection (a) explains 

11 in writing the pertinence and manner of applying the prior 

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

13 the citation of the prior art or written statements and the 

14 explanation thereof shall become a part of the official file 

15 of the patent. 

16 ‘‘(c) ADDITIONAL INFORMATION.—A party that sub17 mits a written statement pursuant to subsection (a)(2) 

18 shall include any other documents, pleadings, or evidence 

19 from the proceeding in which the statement was filed that 

20 addresses the written statement. 

21 ‘‘(d) LIMITATIONS.—A written statement submitted 

22 pursuant to subsection (a)(2), and additional information 

23 submitted pursuant to subsection (c), shall not be consid24 ered by the Office for any purpose other than to determine 

25 the proper meaning of a patent claim in a proceeding that 


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1 is ordered or instituted pursuant to section 304, 314, or 

2 324. If any such written statement or additional informa3 tion is subject to an applicable protective order, it shall 

4 be redacted to exclude information that is subject to that 

5 order. 

6 ‘‘(e) CONFIDENTIALITY.—Upon the written request 

7 of the person citing prior art or written statements pursu8 ant to subsection (a), that person’s identity shall be ex9 cluded from the patent file and kept confidential.’’. 

10 (2) EFFECTIVE DATE.—The amendment made 

11 by this subsection shall take effect 1 year after the 

12 date of the enactment of this Act and shall apply to 

13 patents issued before, on, or after that effective 

14 date. 

15 (h) REEXAMINATION.— 

16 (1) DETERMINATION BY DIRECTOR.— 

17 (A) IN GENERAL.—Section 303(a) of title 

18 35, United States Code, is amended by striking 

19 ‘‘section 301 of this title’’ and inserting ‘‘sec20 tion 301 or 302’’. 

21 (B) EFFECTIVE DATE.—The amendment 

22 made by this paragraph shall take effect 1 year 

23 after the date of the enactment of this Act and 

24 shall apply to patents issued before, on, or after 

25 that effective date. 


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1 (2) APPEAL.— 

2 (A) IN GENERAL.—Section 306 of title 35, 

3 United States Code, is amended by striking 

4 ‘‘145’’ and inserting ‘‘144’’. 

5 (B) EFFECTIVE DATE.—The amendment 

6 made by this paragraph shall take effect on the 

7 date of enactment of this Act and shall apply 

8 to appeals of reexaminations that are pending 

9 before the Board of Patent Appeals and Inter10 ferences or the Patent Trial and Appeal Board 

11 on or after the date of the enactment of this 

12 Act. 

13 SEC. 6. PATENT TRIAL AND APPEAL BOARD. 

14 (a) COMPOSITION AND DUTIES.—Section 6 of title 

15 35, United States Code, is amended to read as follows: 

16 ‘‘§ 6. Patent Trial and Appeal Board 

17 ‘‘(a) There shall be in the Office a Patent Trial and 

18 Appeal Board. The Director, the Deputy Director, the 

19 Commissioner for Patents, the Commissioner for Trade20 marks, and the administrative patent judges shall con21 stitute the Patent Trial and Appeal Board. The adminis22 trative patent judges shall be persons of competent legal 

23 knowledge and scientific ability who are appointed by the 

24 Secretary, in consultation with the Director. Any reference 

25 in any Federal law, Executive order, rule, regulation, or 


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1 delegation of authority, or any document of or pertaining 

2 to the Board of Patent Appeals and Interferences is 

3 deemed to refer to the Patent Trial and Appeal Board. 

4 ‘‘(b) The Patent Trial and Appeal Board shall— 

5 ‘‘(1) on written appeal of an applicant, review 

6 adverse decisions of examiners upon applications for 

7 patents pursuant to section 134(a); 

8 ‘‘(2) review appeals of reexaminations pursuant 

9 to section 134(b); 

10 ‘‘(3) conduct derivation proceedings pursuant to 

11 section 135; and 

12 ‘‘(4) conduct inter partes reviews and post13 grant reviews pursuant to chapters 31 and 32. 

14 ‘‘(c) Each appeal, derivation proceeding, post-grant 

15 review, and inter partes review shall be heard by at least 

16 3 members of the Patent Trial and Appeal Board, who 

17 shall be designated by the Director. Only the Patent Trial 

18 and Appeal Board may grant rehearings. 

19 ‘‘(d) The Secretary of Commerce may, in his discre20 tion, deem the appointment of an administrative patent 

21 judge who, before the date of the enactment of this sub22 section, held office pursuant to an appointment by the Di23 rector to take effect on the date on which the Director 

24 initially appointed the administrative patent judge. It shall 

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1 ministrative patent judge on the basis of the judge’s hav2 ing been originally appointed by the Director that the ad3 ministrative patent judge so appointed was acting as a de 

4 facto officer.’’. 

5 (b) ADMINISTRATIVE APPEALS.—Section 134 of title 

6 35, United States Code, is amended— 

7 (1) in subsection (b), by striking ‘‘any reexam8 ination proceeding’’ and inserting ‘‘a reexamina9 tion’’; and 

10 (2) by striking subsection (c). 

11 (c) CIRCUIT APPEALS.— 

12 (1) IN GENERAL.—Section 141 of title 35, 

13 United States Code, is amended to read as follows: 

14 ‘‘§ 141. Appeal to the Court of Appeals for the Federal 

15 Circuit 

16 ‘‘(a) EXAMINATIONS.—An applicant who is dissatis17 fied with the final decision in an appeal to the Patent Trial 

18 and Appeal Board under section 134(a) may appeal the 

19 Board’s decision to the United States Court of Appeals 

20 for the Federal Circuit. By filing such an appeal, the ap21 plicant waives his right to proceed under section 145. 

22 ‘‘(b) REEXAMINATIONS.—A patent owner who is dis23 satisfied with the final decision in an appeal of a reexam24 ination to the Patent Trial and Appeal Board under secVerDate Mar 15 2010 19:11 Jan 27, 2011 Jkt 099200 PO 00000 Frm 00070 Fmt 6652 Sfmt 6201 E:\BILLS\S23.IS S23

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1 tion 134(b) may appeal the Board’s decision only to the 

2 United States Court of Appeals for the Federal Circuit. 

3 ‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.— 

4 A party to a post-grant or inter partes review who is dis5 satisfied with the final written decision of the Patent Trial 

6 and Appeal Board under section 318(a) or 328(a) may 

7 appeal the Board’s decision only to the United States 

8 Court of Appeals for the Federal Circuit. 

9 ‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri10 vation proceeding who is dissatisfied with the final deci11 sion of the Patent Trial and Appeal Board on the pro12 ceeding may appeal the decision to the United States 

13 Court of Appeals for the Federal Circuit, but such appeal 

14 shall be dismissed if any adverse party to such derivation 

15 proceeding, within 20 days after the appellant has filed 

16 notice of appeal in accordance with section 142, files no17 tice with the Director that the party elects to have all fur18 ther proceedings conducted as provided in section 146. If 

19 the appellant does not, within 30 days after the filing of 

20 such notice by the adverse party, file a civil action under 

21 section 146, the Board’s decision shall govern the further 

22 proceedings in the case.’’. 

23 (2) JURISDICTION.—Section 1295(a)(4)(A) of 

24 title 28, United States Code, is amended to read as 

25 follows: 


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1 ‘‘(A) the Patent Trial and Appeal Board of 

2 the United States Patent and Trademark Office 

3 with respect to patent applications, derivation 

4 proceedings, reexaminations, post-grant reviews, 

5 and inter partes reviews at the instance of a 

6 party who exercised his right to participate in 

7 a proceeding before or appeal to the Board, ex8 cept that an applicant or a party to a derivation 

9 proceeding may also have remedy by civil action 

10 pursuant to section 145 or 146 of title 35. An 

11 appeal under this subparagraph of a decision of 

12 the Board with respect to an application or der13 ivation proceeding shall waive the right of such 

14 applicant or party to proceed under section 145 

15 or 146 of title 35;’’. 

16 (3) PROCEEDINGS ON APPEAL.—Section 143 of 

17 title 35, United States Code, is amended— 

18 (A) by striking the third sentence and in19 serting the following: ‘‘In an ex parte case, the 

20 Director shall submit to the court in writing the 

21 grounds for the decision of the Patent and 

22 Trademark Office, addressing all of the issues 

23 raised in the appeal. The Director shall have 

24 the right to intervene in an appeal from a deci25 sion entered by the Patent Trial and Appeal 


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1 Board in a derivation proceeding under section 

2 135 or in an inter partes or post-grant review 

3 under chapter 31 or 32.’’; and 

4 (B) by repealing the second of the two 

5 identical fourth sentences. 

6 (d) EFFECTIVE DATE.—The amendments made by 

7 this section shall take effect 1 year after the date of the 

8 enactment of this Act and shall apply to proceedings com9 menced on or after that effective date, except that— 

10 (1) the extension of jurisdiction to the United 

11 States Court of Appeals for the Federal Circuit to 

12 entertain appeals of decisions of the Patent Trial 

13 and Appeal Board in reexaminations under the 

14 amendment made by subsection (c)(2) shall be 

15 deemed to take effect on the date of enactment of 

16 this Act and shall extend to any decision of the 

17 Board of Patent Appeals and Interferences with re18 spect to a reexamination that is entered before, on, 

19 or after the date of the enactment of this Act; 

20 (2) the provisions of sections 6, 134, and 141 

21 of title 35, United States Code, in effect on the day 

22 prior to the date of the enactment of this Act shall 

23 continue to apply to inter partes reexaminations that 

24 are requested under section 311 prior to the date 


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1 that is 1 year after the date of the enactment of this 

2 Act; 

3 (3) the Patent Trial and Appeal Board may be 

4 deemed to be the Board of Patent Appeals and 

5 Interferences for purposes of appeals of inter partes 

6 reexaminations that are requested under section 311 

7 prior to the date that is 1 year after the date of the 

8 enactment of this Act; and 

9 (4) the Director’s right under the last sentence 

10 of section 143 of title 35, United States Code, as 

11 amended by subsection (c)(3), to intervene in an ap12 peal from a decision entered by the Patent Trial and 

13 Appeal Board shall be deemed to extend to inter 

14 partes reexaminations that are requested under sec15 tion 311 prior to the date that is 1 year after the 

16 date of the enactment of this Act. 

17 SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

18 (a) IN GENERAL.—Section 122 of title 35, United 

19 States Code, is amended by adding at the end the fol20 lowing: 

21 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR22 TIES.— 

23 ‘‘(1) IN GENERAL.—Any third party may sub24 mit for consideration and inclusion in the record of 

25 a patent application, any patent, published patent 


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1 application, or other printed publication of potential 

2 relevance to the examination of the application, if 

3 such submission is made in writing before the earlier 

4 of— 

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

6 section 151 is given or mailed in the application 

7 for patent; or 

8 ‘‘(B) the later of— 

9 ‘‘(i) 6 months after the date on which 

10 the application for patent is first published 

11 under section 122 by the Office, or 

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

13 under section 132 of any claim by the ex14 aminer during the examination of the ap15 plication for patent. 

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

17 under paragraph (1) shall— 

18 ‘‘(A) set forth a concise description of the 

19 asserted relevance of each submitted document; 

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

21 Director may prescribe; and 

22 ‘‘(C) include a statement by the person 

23 making such submission affirming that the sub24 mission was made in compliance with this sec25 tion.’’. 


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1 (b) EFFECTIVE DATE.—The amendments made by 

2 this section shall take effect 1 year after the date of the 

3 enactment of this Act and shall apply to patent applica4 tions filed before, on, or after that effective date. 

5 SEC. 8. VENUE. 

6 (a) CHANGE OF VENUE.—Section 1400 of title 28, 

7 United States Code, is amended by adding at the end the 

8 following: 

9 ‘‘(c) CHANGE OF VENUE.—For the convenience of 

10 parties and witnesses, in the interest of justice, a district 

11 court shall transfer any civil action arising under any Act 

12 of Congress relating to patents upon a showing that the 

13 transferee venue is clearly more convenient than the venue 

14 in which the civil action is pending.’’. 

15 (b) TECHNICAL AMENDMENTS RELATING TO

16 VENUE.—Sections 32, 145, 146, 154(b)(4)(A), and 293 

17 of title 35, United States Code, and section 21(b)(4) of 

18 the Act entitled ‘‘An Act to provide for the registration 

19 and protection of trademarks used in commerce, to carry 

20 out the provisions of certain international conventions, 

21 and for other purposes’’, approved July 5, 1946 (com22 monly referred to as the ‘‘Trademark Act of 1946’’ or the 

23 ‘‘Lanham Act’’; 15 U.S.C. 1071(b)(4)), are each amended 

24 by striking ‘‘United States District Court for the District 

25 of Columbia’’ each place that term appears and inserting 


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1 ‘‘United States District Court for the Eastern District of 

2 Virginia’’. 

3 (c) EFFECTIVE DATE.—The amendments made by 

4 this section shall take effect upon the date of the enact5 ment of this Act and shall apply to civil actions com6 menced on or after that date. 

7 SEC. 9. FEE SETTING AUTHORITY. 

8 (a) FEE SETTING.— 

9 (1) IN GENERAL.—The Director shall have au10 thority to set or adjust by rule any fee established 

11 or charged by the Office under sections 41 and 376 

12 of title 35, United States Code, or under section 31 

13 of the Trademark Act of 1946 (15 U.S.C. 1113), or 

14 any other fee established or charged by the Office 

15 under any other provision of law, notwithstanding 

16 the fee amounts established or charged thereunder, 

17 for the filing or processing of any submission to, and 

18 for all other services performed by or materials fur19 nished by, the Office, provided that patent and 

20 trademark fee amounts are in the aggregate set to 

21 recover the estimated cost to the Office for proc22 essing, activities, services and materials relating to 

23 patents and trademarks, respectively, including pro24 portionate shares of the administrative costs of the 

25 Office. 


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1 (2) SMALL AND MICRO ENTITIES.—The fees es2 tablished under paragraph (1) for filing, processing, 

3 issuing, and maintaining patent applications and 

4 patents shall be reduced by 50 percent with respect 

5 to their application to any small entity that qualifies 

6 for reduced fees under section 41(h)(1) of title 35, 

7 United States Code, and shall be reduced by 75 per8 cent with respect to their application to any micro 

9 entity as defined in section 123 of that title. 

10 (3) REDUCTION OF FEES IN CERTAIN FISCAL

11 YEARS.—In any fiscal year, the Director— 

12 (A) shall consult with the Patent Public 

13 Advisory Committee and the Trademark Public 

14 Advisory Committee on the advisability of re15 ducing any fees described in paragraph (1); and 

16 (B) after the consultation required under 

17 subparagraph (A), may reduce such fees. 

18 (4) ROLE OF THE PUBLIC ADVISORY COM19 MITTEE.—The Director shall— 

20 (A) submit to the Patent Public Advisory 

21 Committee or the Trademark Public Advisory 

22 Committee, or both, as appropriate, any pro23 posed fee under paragraph (1) not less than 45 

24 days before publishing any proposed fee in the 

25 Federal Register; 


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1 (B) provide the relevant advisory com2 mittee described in subparagraph (A) a 30-day 

3 period following the submission of any proposed 

4 fee, on which to deliberate, consider, and com5 ment on such proposal, and require that— 

6 (i) during such 30-day period, the rel7 evant advisory committee hold a public 

8 hearing related to such proposal; and 

9 (ii) the Director shall assist the rel10 evant advisory committee in carrying out 

11 such public hearing, including by offering 

12 the use of Office resources to notify and 

13 promote the hearing to the public and in14 terested stakeholders; 

15 (C) require the relevant advisory com16 mittee to make available to the public a written 

17 report detailing the comments, advice, and rec18 ommendations of the committee regarding any 

19 proposed fee; 

20 (D) consider and analyze any comments, 

21 advice, or recommendations received from the 

22 relevant advisory committee before setting or 

23 adjusting any fee; and 

24 (E) notify, through the Chair and Ranking 

25 Member of the Senate and House Judiciary 


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1 Committees, the Congress of any final rule set2 ting or adjusting fees under paragraph (1). 

3 (5) PUBLICATION IN THE FEDERAL REG4 ISTER.— 

5 (A) IN GENERAL.—Any rules prescribed 

6 under this subsection shall be published in the 

7 Federal Register. 

8 (B) RATIONALE.—Any proposal for a 

9 change in fees under this section shall— 

10 (i) be published in the Federal Reg11 ister; and 

12 (ii) include, in such publication, the 

13 specific rationale and purpose for the pro14 posal, including the possible expectations 

15 or benefits resulting from the proposed 

16 change. 

17 (C) PUBLIC COMMENT PERIOD.—Following 

18 the publication of any proposed fee in the Fed19 eral Register pursuant to subparagraph (A), the 

20 Director shall seek public comment for a period 

21 of not less than 45 days. 

22 (6) CONGRESSIONAL COMMENT PERIOD.—Fol23 lowing the notification described in paragraph 

24 (3)(E), Congress shall have not more than 45 days 

25 to consider and comment on any final rule setting or 


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1 adjusting fees under paragraph (1). No fee set or 

2 adjusted under paragraph (1) shall be effective prior 

3 to the end of such 45-day comment period. 

4 (7) RULE OF CONSTRUCTION.—No rules pre5 scribed under this subsection may diminish— 

6 (A) an applicant’s rights under title 35, 

7 United States Code, or the Trademark Act of 

8 1946; or 

9 (B) any rights under a ratified treaty. 

10 (b) FEES FOR PATENT SERVICES.—Division B of 

11 Public Law 108–447 is amended in title VIII of the De12 partments of Commerce, Justice, and State, the Judiciary, 

13 and Related Agencies Appropriations Act, 2005— 

14 (1) in subsections (a), (b), and (c) of section 

15 801, by— 

16 (A) striking ‘‘During’’ and all that follows 

17 through ‘‘ 2006, subsection’’ and inserting 

18 ‘‘Subsection’’; and 

19 (B) striking ‘‘shall be administered as 

20 though that subsection reads’’ and inserting ‘‘is 

21 amended to read’’; 

22 (2) in subsection (d) of section 801, by striking 

23 ‘‘During’’ and all that follows through ‘‘ 2006, sub24 section’’ and inserting ‘‘Subsection’’; and 

25 (3) in subsection (e) of section 801, by— 


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1 (A) striking ‘‘During’’ and all that follows 

2 through ‘‘2006, subsection’’ and inserting 

3 ‘‘Subsection’’; and 

4 (B) striking ‘‘shall be administered as 

5 though that subsection’’. 

6 (c) ADJUSTMENT OF TRADEMARK FEES.—Division 

7 B of Public Law 108–447 is amended in title VIII of the 

8 Departments of Commerce, Justice and State, the Judici9 ary and Related Agencies Appropriations Act, 2005, in 

10 section 802(a) by striking ‘‘During fiscal years 2005, 

11 2006 and 2007’’, and inserting ‘‘Until such time as the 

12 Director sets or adjusts the fees otherwise,’’. 

13 (d) EFFECTIVE DATE, APPLICABILITY, AND TRANSI14 TION PROVISIONS.—Division B of Public Law 108–447 is 

15 amended in title VIII of the Departments of Commerce, 

16 Justice and State, the Judiciary and Related Agencies Ap17 propriations Act, 2005, in section 803(a) by striking ‘‘and 

18 shall apply only with respect to the remaining portion of 

19 fiscal year 2005, 2006 and 2007’’. 

20 (e) STATUTORY AUTHORITY.—Section 41(d)(1)(A) of 

21 title 35, United States Code, is amended by striking ‘‘, 

22 and the Director may not increase any such fee there23 after’’. 

24 (f) RULE OF CONSTRUCTION.—Nothing in this sec25 tion shall be construed to affect any other provision of DiVerDate Mar 15 2010 19:11 Jan 27, 2011 Jkt 099200 PO 00000 Frm 00082 Fmt 6652 Sfmt 6201 E:\BILLS\S23.IS S23

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1 vision B of Public Law 108–447, including section 801(c) 

2 of title VIII of the Departments of Commerce, Justice and 

3 State, the Judiciary and Related Agencies Appropriations 

4 Act, 2005. 

5 (g) DEFINITIONS.—In this section, the following defi6 nitions shall apply: 

7 (1) DIRECTOR.—The term ‘‘Director’’ means 

8 the Director of the United States Patent and Trade9 mark Office. 

10 (2) OFFICE.—The term ‘‘Office’’ means the 

11 United States Patent and Trademark Office. 

12 (3) TRADEMARK ACT OF 1946.—The term 

13 ‘‘Trademark Act of 1946’’ means an Act entitled 

14 ‘‘Act to provide for the registration and protection 

15 of trademarks used in commerce, to carry out the 

16 provisions of certain international conventions, and 

17 for other purposes’’, approved July 5, 1946 (15 

18 U.S.C. 1051 et seq.) (commonly referred to as the 

19 Trademark Act of 1946 or the Lanham Act). 

20 (h) ELECTRONIC FILING INCENTIVE.— 

21 (1) IN GENERAL.—Notwithstanding any other 

22 provision of this section, a fee of $400 shall be es23 tablished for each application for an original patent, 

24 except for a design, plant, or provisional application, 

25 that is not filed by electronic means as prescribed by 


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1 the Director. The fee established by this subsection 

2 shall be reduced 50 percent for small entities that 

3 qualify for reduced fees under section 41(h)(1) of 

4 title 35, United States Code. All fees paid under this 

5 subsection shall be deposited in the Treasury as an 

6 offsetting receipt that shall not be available for obli7 gation or expenditure. 

8 (2) EFFECTIVE DATE.—This subsection shall 

9 become effective 60 days after the date of the enact10 ment of this Act. 

11 (i) EFFECTIVE DATE.—Except as provided in sub12 section (h), the provisions of this section shall take effect 

13 upon the date of the enactment of this Act. 

14 SEC. 10. SUPPLEMENTAL EXAMINATION. 

15 (a) IN GENERAL.—Chapter 25 of title 35, United 

16 States Code, is amended by adding at the end the fol17 lowing: 

18 ‘‘§ 257. Supplemental examinations to consider, re19 consider, or correct information 

20 ‘‘(a) IN GENERAL.—A patent owner may request 

21 supplemental examination of a patent in the Office to con22 sider, reconsider, or correct information believed to be rel23 evant to the patent. Within 3 months of the date a request 

24 for supplemental examination meeting the requirements of 

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1 plemental examination and shall conclude such examina2 tion by issuing a certificate indicating whether the infor3 mation presented in the request raises a substantial new 

4 question of patentability. 

5 ‘‘(b) REEXAMINATION ORDERED.—If a substantial 

6 new question of patentability is raised by 1 or more items 

7 of information in the request, the Director shall order re8 examination of the patent. The reexamination shall be 

9 conducted according to procedures established by chapter 

10 30, except that the patent owner shall not have the right 

11 to file a statement pursuant to section 304. During the 

12 reexamination, the Director shall address each substantial 

13 new question of patentability identified during the supple14 mental examination, notwithstanding the limitations 

15 therein relating to patents and printed publication or any 

16 other provision of chapter 30. 

17 ‘‘(c) EFFECT.— 

18 ‘‘(1) IN GENERAL.—A patent shall not be held 

19 unenforceable on the basis of conduct relating to in20 formation that had not been considered, was inad21 equately considered, or was incorrect in a prior ex22 amination of the patent if the information was con23 sidered, reconsidered, or corrected during a supple24 mental examination of the patent. The making of a 

25 request under subsection (a), or the absence thereof, 


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1 shall not be relevant to enforceability of the patent 

2 under section 282. 

3 ‘‘(2) EXCEPTIONS.— 

4 ‘‘(A) PRIOR ALLEGATIONS.—This sub5 section shall not apply to an allegation pled 

6 with particularity, or set forth with particu7 larity in a notice received by the patent owner 

8 under section 505(j)(2)(B)(iv)(II) of the Fed9 eral Food, Drug, and Cosmetic Act (21 U.S.C. 

10 355(j)(2)(B)(iv)(II)), before the date of a sup11 plemental-examination request under subsection 

12 (a) to consider, reconsider, or correct informa13 tion forming the basis for the allegation. 

14 ‘‘(B) PATENT ENFORCEMENT ACTIONS.— 

15 In an action brought under section 337(a) of 

16 the Tariff Act of 1930 (19 U.S.C. 1337(a)), or 

17 section 281 of this title, this subsection shall 

18 not apply to any defense raised in the action 

19 that is based upon information that was consid20 ered, reconsidered, or corrected pursuant to a 

21 supplemental-examination request under sub22 section (a) unless the supplemental examina23 tion, and any reexamination ordered pursuant 

24 to the request, are concluded before the date on 

25 which the action is brought. 


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1 ‘‘(d) FEES AND REGULATIONS.—The Director shall, 

2 by regulation, establish fees for the submission of a re3 quest for supplemental examination of a patent, and to 

4 consider each item of information submitted in the re5 quest. If reexamination is ordered pursuant to subsection 

6 (a), fees established and applicable to ex parte reexamina7 tion proceedings under chapter 30 shall be paid in addition 

8 to fees applicable to supplemental examination. The Direc9 tor shall promulgate regulations governing the form, con10 tent, and other requirements of requests for supplemental 

11 examination, and establishing procedures for conducting 

12 review of information submitted in such requests. 

13 ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec14 tion shall be construed— 

15 ‘‘(1) to preclude the imposition of sanctions 

16 based upon criminal or antitrust laws (including sec17 tion 1001(a) of title 18, the first section of the Clay18 ton Act, and section 5 of the Federal Trade Com19 mission Act to the extent that section relates to un20 fair methods of competition); 

21 ‘‘(2) to limit the authority of the Director to in22 vestigate issues of possible misconduct and impose 

23 sanctions for misconduct in connection with matters 

24 or proceedings before the Office; or 


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1 ‘‘(3) to limit the authority of the Director to 

2 promulgate regulations under chapter 3 relating to 

3 sanctions for misconduct by representatives prac4 ticing before the Office.’’. 

5 (b) EFFECTIVE DATE.—This section shall take effect 

6 1 year after the date of the enactment of this Act and 

7 shall apply to patents issued before, on, or after that date. 

8 SEC. 11. RESIDENCY OF FEDERAL CIRCUIT JUDGES. 

9 (a) RESIDENCY.—The second sentence of section 

10 44(c) of title 28, United States Code, is repealed. 

11 (b) FACILITIES.—Section 44 of title 28, United 

12 States Code, is amended by adding at the end the fol13 lowing: 

14 ‘‘(e)(1) The Director of the Administrative Office of 

15 the United States Courts shall provide— 

16 ‘‘(A) a judge of the Federal judicial circuit who 

17 lives within 50 miles of the District of Columbia 

18 with appropriate facilities and administrative sup19 port services in the District of the District of Colum20 bia; and 

21 ‘‘(B) a judge of the Federal judicial circuit who 

22 does not live within 50 miles of the District of Co23 lumbia with appropriate facilities and administrative 

24 support services— 


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1 ‘‘(i) in the district and division in which 

2 that judge resides; or 

3 ‘‘(ii) if appropriate facilities are not avail4 able in the district and division in which that 

5 judge resides, in the district and division closest 

6 to the residence of that judge in which such fa7 cilities are available, as determined by the Di8 rector. 

9 ‘‘(2) Nothing in this subsection may be construed to 

10 authorize or require the construction of new facilities.’’. 

11 SEC. 12. MICRO ENTITY DEFINED. 

12 Chapter 11 of title 35, United States Code, is amend13 ed by adding at the end the following new section: 

14 ‘‘§ 123. Micro entity defined 

15 ‘‘(a) IN GENERAL.—For purposes of this title, the 

16 term ‘micro entity’ means an applicant who makes a cer17 tification under either subsection (b) or (c). 

18 ‘‘(b) UNASSIGNED APPLICATION.—For an unas19 signed application, each applicant shall certify that the ap20 plicant— 

21 ‘‘(1) qualifies as a small entity, as defined in 

22 regulations issued by the Director; 

23 ‘‘(2) has not been named on 5 or more pre24 viously filed patent applications; 


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1 ‘‘(3) has not assigned, granted, or conveyed, 

2 and is not under an obligation by contract or law to 

3 assign, grant, or convey, a license or any other own4 ership interest in the particular application; and 

5 ‘‘(4) does not have a gross income, as defined 

6 in section 61(a) of the Internal Revenue Code (26 

7 U.S.C. 61(a)), exceeding 2.5 times the average gross 

8 income, as reported by the Department of Labor, in 

9 the calendar year immediately preceding the cal10 endar year in which the examination fee is being 

11 paid. 

12 ‘‘(c) ASSIGNED APPLICATION.—For an assigned ap13 plication, each applicant shall certify that the applicant— 

14 ‘‘(1) qualifies as a small entity, as defined in 

15 regulations issued by the Director, and meets the re16 quirements of subsection (b)(4); 

17 ‘‘(2) has not been named on 5 or more pre18 viously filed patent applications; and 

19 ‘‘(3) has assigned, granted, conveyed, or is 

20 under an obligation by contract or law to assign, 

21 grant, or convey, a license or other ownership inter22 est in the particular application to an entity that has 

23 5 or fewer employees and that such entity has a 

24 gross income, as defined in section 61(a) of the In25 ternal Revenue Code (26 U.S.C. 61(a)), that does 


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1 not exceed 2.5 times the average gross income, as 

2 reported by the Department of Labor, in the cal3 endar year immediately preceding the calendar year 

4 in which the examination fee is being paid. 

5 ‘‘(d) INCOME LEVEL ADJUSTMENT.—The gross in6 come levels established under subsections (b) and (c) shall 

7 be adjusted by the Director on October 1, 2009, and every 

8 year thereafter, to reflect any fluctuations occurring dur9 ing the previous 12 months in the Consumer Price Index, 

10 as determined by the Secretary of Labor.’’. 

11 SEC. 13. FUNDING AGREEMENTS. 

12 (a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 

13 35, United States Code, is amended— 

14 (1) by striking ‘‘75 percent’’ and inserting ‘‘15 

15 percent’’; and 

16 (2) by striking ‘‘25 percent’’ and inserting ‘‘85 

17 percent’’. 

18 (b) EFFECTIVE DATE.—The amendments made by 

19 this section shall take effect on the date of enactment of 

20 this Act and shall apply to patents issued before, on, or 

21 after that date. 

22 SEC. 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR 

23 ART. 

24 (a) IN GENERAL.—For purposes of evaluating an in25 vention under section 102 or 103 of title 35, United States 


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1 Code, any strategy for reducing, avoiding, or deferring tax 

2 liability, whether known or unknown at the time of the 

3 invention or application for patent, shall be deemed insuf4 ficient to differentiate a claimed invention from the prior 

5 art. 

6 (b) DEFINITION.—For purposes of this section, the 

7 term ‘‘tax liability’’ refers to any liability for a tax under 

8 any Federal, State, or local law, or the law of any foreign 

9 jurisdiction, including any statute, rule, regulation, or or10 dinance that levies, imposes, or assesses such tax liability. 

11 (c) EFFECTIVE DATE; APPLICABILITY.—This section 

12 shall take effect on the date of enactment of this Act and 

13 shall apply to any patent application pending and any pat14 ent issued on or after that date. 

15 SEC. 15. BEST MODE REQUIREMENT. 

16 (a) IN GENERAL.—Section 282 of title 35, United 

17 State Code, is amended in its second undesignated para18 graph by striking paragraph (3) and inserting the fol19 lowing: 

20 ‘‘(3) Invalidity of the patent or any claim in 

21 suit for failure to comply with— 

22 ‘‘(A) any requirement of section 112, ex23 cept that the failure to disclose the best mode 

24 shall not be a basis on which any claim of a 


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1 patent may be canceled or held invalid or other2 wise unenforceable; or 

3 ‘‘(B) any requirement of section 251.’’. 

4 (b) CONFORMING AMENDMENT.—Sections 119(e)(1) 

5 and 120 of title 35, United States Code, are each amended 

6 by striking ‘‘the first paragraph of section 112 of this 

7 title’’ and inserting ‘‘section 112(a) (other than the re8 quirement to disclose the best mode)’’. 

9 (c) EFFECTIVE DATE.—The amendments made by 

10 this section shall take effect upon the date of the enact11 ment of this Act and shall apply to proceedings com12 menced on or after that date. 

13 SEC. 16. TECHNICAL AMENDMENTS. 

14 (a) JOINT INVENTIONS.—Section 116 of title 35, 

15 United States Code, is amended— 

16 (1) in the first paragraph, by striking 

17 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN18 TIONS.—When’’; 

19 (2) in the second paragraph, by striking 

20 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT21 TED INVENTOR.—If a joint inventor’’; and 

22 (3) in the third paragraph— 

23 (A) by striking ‘‘Whenever’’ and in24 serting ‘‘(c) CORRECTION OF ERRORS IN

25 APPLICATION.—Whenever’’; and 


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1 (B) by striking ‘‘and such error arose 

2 without any deceptive intent on his part,’’. 

3 (b) FILING OF APPLICATION IN FOREIGN COUN4 TRY.—Section 184 of title 35, United States Code, is 

5 amended— 

6 (1) in the first paragraph— 

7 (A) by striking ‘‘Except when’’ and insert8 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Ex9 cept when’’; and 

10 (B) by striking ‘‘and without deceptive in11 tent’’; 

12 (2) in the second paragraph, by striking ‘‘The 

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

14 term’’; and 

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

16 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA17 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

18 scope’’. 

19 (c) FILING WITHOUT A LICENSE.—Section 185 of 

20 title 35, United States Code, is amended by striking ‘‘and 

21 without deceptive intent’’. 

22 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

23 of title 35, United States Code, is amended— 

24 (1) in the first paragraph— 


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

2 ‘‘(a) IN GENERAL.—Whenever’’; and 

3 (B) by striking ‘‘without any deceptive in4 tention’’; 

5 (2) in the second paragraph, by striking ‘‘The 

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

7 PATENTS.—The Director’’; 

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

9 provisions’’ and inserting ‘‘(c) APPLICABILITY OF

10 THIS TITLE.—The provisions’’; and 

11 (4) in the last paragraph, by striking ‘‘No re12 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

13 ENLARGING SCOPE OF CLAIMS.—No reissued pat14 ent’’. 

15 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

16 United States Code, is amended— 

17 (1) in the first paragraph, by striking ‘‘When18 ever, without any deceptive intention’’ and inserting 

19 ‘‘(a) IN GENERAL.—Whenever’’; and 

20 (2) in the second paragraph, by striking ‘‘in 

21 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS22 CLAIMER OR DEDICATION.—In the manner set forth 

23 in subsection (a),’’. 

24 (f) CORRECTION OF NAMED INVENTOR.—Section 

25 256 of title 35, United States Code, is amended— 


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1 (1) in the first paragraph— 

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

3 ‘‘(a) CORRECTION.—Whenever’’; and 

4 (B) by striking ‘‘and such error arose with5 out any deceptive intention on his part’’; and 

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

7 error’’ and inserting ‘‘(b) PATENT VALID IF ERROR

8 CORRECTED.—The error’’. 

9 (g) PRESUMPTION OF VALIDITY.—Section 282 of 

10 title 35, United States Code, is amended— 

11 (1) in the first undesignated paragraph— 

12 (A) by striking ‘‘A patent’’ and inserting 

13 ‘‘(a) IN GENERAL.—A patent’’; and 

14 (B) by striking the third sentence; 

15 (2) in the second undesignated paragraph, by 

16 striking ‘‘The following’’ and inserting ‘‘(b) DE17 FENSES.—The following’’; and 

18 (3) in the third undesignated paragraph, by 

19 striking ‘‘In actions’’ and inserting ‘‘(c) NOTICE OF

20 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

21 TERM.—In actions’’. 

22 (h) ACTION FOR INFRINGEMENT.—Section 288 of 

23 title 35, United States Code, is amended by striking ‘‘, 

24 without deceptive intention,’’. 

25 (i) REVISER’S NOTES.— 


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1 (1) Section 3(e)(2) of title 35, United States 

2 Code, is amended by striking ‘‘this Act,’’ and insert3 ing ‘‘that Act,’’. 

4 (2) Section 202(b)(3) of title 35, United States 

5 Code, is amended by striking ‘‘the section 203(b)’’ 

6 and inserting ‘‘section 203(b)’’. 

7 (3) Section 209(d)(1) of title 35, United States 

8 Code, is amended by striking ‘‘nontransferrable’’ 

9 and inserting ‘‘nontransferable’’. 

10 (4) Section 287(c)(2)(G) of title 35, United 

11 States Code, is amended by striking ‘‘any state’’ and 

12 inserting ‘‘any State’’. 

13 (5) Section 371(b) of title 35, United States 

14 Code, is amended by striking ‘‘of the treaty’’ and in15 serting ‘‘of the treaty.’’. 

16 (j) UNNECESSARY REFERENCES.— 

17 (1) IN GENERAL.—Title 35, United States 

18 Code, is amended by striking ‘‘of this title’’ each 

19 place that term appears. 

20 (2) EXCEPTION.—The amendment made by 

21 paragraph (1) shall not apply to the use of such 

22 term in the following sections of title 35, United 

23 States Code: 

24 (A) Section 1(c). 

25 (B) Section 101. 


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1 (C) Subsections (a) and (b) of section 105. 

2 (D) The first instance of the use of such 

3 term in section 111(b)(8). 

4 (E) Section 157(a). 

5 (F) Section 161. 

6 (G) Section 164. 

7 (H) Section 171. 

8 (I) Section 251(c), as so designated by this 

9 section. 

10 (J) Section 261. 

11 (K) Subsections (g) and (h) of section 271. 

12 (L) Section 287(b)(1). 

13 (M) Section 289. 

14 (N) The first instance of the use of such 

15 term in section 375(a). 

16 (k) EFFECTIVE DATE.—The amendments made by 

17 this section shall take effect 1 year after the date of the 

18 enactment of this Act and shall apply to proceedings com19 menced on or after that effective date. 

20 SEC. 17. EFFECTIVE DATE; RULE OF CONSTRUCTION. 

21 (a) EFFECTIVE DATE.—Except as otherwise provided 

22 in this Act, the provisions of this Act shall take effect 1 

23 year after the date of the enactment of this Act and shall 

24 apply to any patent issued on or after that effective date. 


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1 (b) CONTINUITY OF INTENT UNDER THE CREATE

2 ACT.—The enactment of section 102(c) of title 35, United 

3 States Code, under section (2)(b) of this Act is done with 

4 the same intent to promote joint research activities that 

5 was expressed, including in the legislative history, through 

6 the enactment of the Cooperative Research and Tech7 nology Enhancement Act of 2004 (Public Law 108–453; 

8 the ‘‘CREATE Act’’), the amendments of which are 

9 stricken by section 2(c) of this Act. The United States 

10 Patent and Trademark Office shall administer section 

11 102(c) of title 35, United States Code, in a manner con12 sistent with the legislative history of the CREATE Act 

13 that was relevant to its administration by the United 

14 States Patent and Trademark Office. 

Æ 


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