II 

Calendar No. 6 

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, Mr. COONS, and Mr. FRANKEN) 

introduced the following bill; which was read twice and referred to the 

Committee on the Judiciary 

FEBRUARY 3, 2011 

Reported by Mr. LEAHY, with amendments 

[Omit the part struck through and insert the part printed in italic] 

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’’. 


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

2 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. 

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. Clarification of jurisdiction. 

Sec. 1718. Effective date; rule of construction. 

3 SEC. 2. FIRST INVENTOR TO FILE. 

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

5 States Code, is amended by adding at the end the fol6 lowing: 

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

8 a joint invention, the individuals collectively who invented 

9 or discovered the subject matter of the invention. 

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

11 any 1 of the individuals who invented or discovered the 

12 subject matter of a joint invention. 

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

14 written contract, grant, or cooperative agreement entered 

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

16 of experimental, developmental, or research work in the 

17 field of the claimed invention. 


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

2 invention in a patent or application for patent means— 

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

4 actual filing date of the patent or the application for 

5 the patent containing a claim to the invention; or 

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

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

8 such invention, to a right of priority under section 

9 119, 365(a), or 365(b) or to the benefit of an earlier 

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

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

12 in an application for reissue or reissued patent shall be 

13 determined by deeming the claim to the invention to have 

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

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

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

17 for a patent.’’. 

18 (b) CONDITIONS FOR PATENTABILITY.— 

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

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

21 ‘‘§ 102. Conditions for patentability; novelty 

22 ‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti23 tled to a patent unless— 

24 ‘‘(1) the claimed invention was patented, de25 scribed in a printed publication, or in public use, on 


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1 sale, or otherwise available to the public before the 

2 effective filing date of the claimed invention; or 

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

4 patent issued under section 151, or in an application 

5 for patent published or deemed published under sec6 tion 122(b), in which the patent or application, as 

7 the case may be, names another inventor and was 

8 effectively filed before the effective filing date of the 

9 claimed invention. 

10 ‘‘(b) EXCEPTIONS.— 

11 ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE12 FORE THE EFFECTIVE FILING DATE OF THE

13 CLAIMED INVENTION.—A disclosure made 1 year or 

14 less before the effective filing date of a claimed in15 vention shall not be prior art to the claimed inven16 tion under subsection (a)(1) if— 

17 ‘‘(A) the disclosure was made by the inven18 tor or joint inventor or by another who obtained 

19 the subject matter disclosed directly or indi20 rectly from the inventor or a joint inventor; or 

21 ‘‘(B) the subject matter disclosed had, be22 fore such disclosure, been publicly disclosed by 

23 the inventor or a joint inventor or another who 

24 obtained the subject matter disclosed directly or 

25 indirectly from the inventor or a joint inventor. 


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1 ‘‘(2) DISCLOSURES APPEARING IN APPLICA2 TIONS AND PATENTS.—A disclosure shall not be 

3 prior art to a claimed invention under subsection 

4 (a)(2) if— 

5 ‘‘(A) the subject matter disclosed was ob6 tained directly or indirectly from the inventor or 

7 a joint inventor; 

8 ‘‘(B) the subject matter disclosed had, be9 fore such subject matter was effectively filed 

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

11 by the inventor or a joint inventor or another 

12 who obtained the subject matter disclosed di13 rectly or indirectly from the inventor or a joint 

14 inventor; or 

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

16 claimed invention, not later than the effective 

17 filing date of the claimed invention, were owned 

18 by the same person or subject to an obligation 

19 of assignment to the same person. 

20 ‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

21 AGREEMENTS.—Subject matter disclosed and a claimed 

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

23 person or subject to an obligation of assignment to the 

24 same person in applying the provisions of subsection 

25 (b)(2)(C) if— 


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

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

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

4 that was in effect on or before the effective filing 

5 date of the claimed invention; 

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

7 of activities undertaken within the scope of the joint 

8 research agreement; and 

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

10 invention discloses or is amended to disclose the 

11 names of the parties to the joint research agree12 ment. 

13 ‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF14 FECTIVE AS PRIOR ART.—For purposes of determining 

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

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

17 or application shall be considered to have been effectively 

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

19 patent or application— 

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

21 actual filing date of the patent or the application for 

22 patent; or 

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

24 entitled to claim a right of priority under section 

25 119, 365(a), or 365(b), or to claim the benefit of an 


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

2 based upon 1 or more prior filed applications for 

3 patent, as of the filing date of the earliest such ap4 plication that describes the subject matter.’’. 

5 (2) CONTINUITY OF INTENT UNDER THE CREATE

6 ACT.—The enactment of section 102(c) of title 35, 

7 United States Code, under the preceding paragraph is 

8 done with the same intent to promote joint research 

9 activities that was expressed, including in the legisla10 tive history, through the enactment of the Cooperative 

11 Research and Technology Enhancement Act of 2004 

12 (Public Law 108–453; the ‘‘CREATE Act’’), the 

13 amendments of which are stricken by subsection (c). 

14 The United States Patent and Trademark Office shall 

15 administer section 102(c) of title 35, United States 

16 Code, in a manner consistent with the legislative his17 tory of the CREATE Act that was relevant to its ad18 ministration by the United States Patent and Trade19 mark Office. 

20 (2)(3) CONFORMING AMENDMENT.—The item 

21 relating to section 102 in the table of sections for 

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

23 amended to read as follows: 

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


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1 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

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

3 States Code, is amended to read as follows: 

4 ‘‘§ 103. Conditions for patentability; nonobvious sub5 ject matter 

6 ‘‘A patent for a claimed invention may not be ob7 tained, notwithstanding that the claimed invention is not 

8 identically disclosed as set forth in section 102, if the dif9 ferences between the claimed invention and the prior art 

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

11 been obvious before the effective filing date of the claimed 

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

13 which the claimed invention pertains. Patentability shall 

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

15 made.’’. 

16 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

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

20 are repealed. 

21 (e) REPEAL OF STATUTORY INVENTION REGISTRA22 TION.— 

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

24 United States Code, and the item relating to that 


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

2 35, United States Code, are repealed. 

3 (2) REMOVAL OF CROSS REFERENCES.—Section 

4 111(b)(8) of title 35, United States Code, is amend5 ed by striking ‘‘sections 115, 131, 135, and 157’’ 

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

7 (3) EFFECTIVE DATE.—The amendments made 

8 by this subsection shall take effect 1 year after the 

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

10 to any request for a statutory invention registration 

11 filed on or after that date. 

12 (f) EARLIER FILING DATE FOR INVENTOR AND

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

14 Code, is amended by striking ‘‘which is filed by an inven15 tor or inventors named’’ and inserting ‘‘which names an 

16 inventor or joint inventor’’. 

17 (g) CONFORMING AMENDMENTS.— 

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

19 35, United States Code, is amended by striking 

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

21 (2) LIMITATION ON REMEDIES.—Section 

22 287(c)(4) of title 35, United States Code, is amend23 ed by striking ‘‘the earliest effective filing date of 

24 which is prior to’’ and inserting ‘‘which has an effec25 tive filing date before’’. 


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1 (3) INTERNATIONAL APPLICATION DESIG2 NATING THE UNITED STATES: EFFECT.—Section 

3 363 of title 35, United States Code, is amended by 

4 striking ‘‘except as otherwise provided in section 

5 102(e) of this title’’. 

6 (4) PUBLICATION OF INTERNATIONAL APPLICA7 TION: EFFECT.—Section 374 of title 35, United 

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

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

10 (5) PATENT ISSUED ON INTERNATIONAL APPLI11 CATION: EFFECT.—The second sentence of section 

12 375(a) of title 35, United States Code, is amended 

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

14 such’’ and inserting ‘‘Such’’. 

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

16 119(a) of title 35, United States Code, is amended 

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

18 all that follows through ‘‘one year prior to such fil19 ing’’. 

20 (7) INVENTIONS MADE WITH FEDERAL ASSIST21 ANCE.—Section 202(c) of title 35, United States 

22 Code, is amended— 

23 (A) in paragraph (2)— 

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

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


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1 ‘‘obtained in the United States’’ and in2 serting ‘‘the 1-year period referred to in 

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

4 that 2-year period’’; and 

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

6 inserting ‘‘that 1-year’’; and 

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

8 statutory bar date that may occur under this 

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

10 and inserting ‘‘the expiration of the 1-year pe11 riod referred to in section 102(b)’’. 

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

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

14 ‘‘§ 291. Derived patents 

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

16 relief by civil action against the owner of another patent 

17 that claims the same invention and has an earlier effective 

18 filing date if the invention claimed in such other patent 

19 was derived from the inventor of the invention claimed in 

20 the patent owned by the person seeking relief under this 

21 section. 

22 ‘‘(b) FILING LIMITATION.—An action under this sec23 tion may only be filed within 1 year after the issuance 

24 of the first patent containing a claim to the allegedly deVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00011 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 rived invention and naming an individual alleged to have 

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

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

4 35, United States Code, is amended to read as follows: 

5 ‘‘§ 135. Derivation proceedings 

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

7 for patent may file a petition to institute a derivation pro8 ceeding in the Office. The petition shall set forth with par9 ticularity the basis for finding that an inventor named in 

10 an earlier application derived the claimed invention from 

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

12 without authorization, the earlier application claiming 

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

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

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

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

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

18 evidence. Whenever the Director determines that a peti19 tion filed under this subsection demonstrates that the 

20 standards for instituting a derivation proceeding are met, 

21 the Director may institute a derivation proceeding. The 

22 determination by the Director whether to institute a deri23 vation proceeding shall be final and nonappealable. 

24 ‘‘(b) DETERMINATION BY PATENT TRIAL AND AP25 PEAL BOARD.—In a derivation proceeding instituted 


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

2 shall determine whether an inventor named in the earlier 

3 application derived the claimed invention from an inventor 

4 named in the petitioner’s application and, without author5 ization, the earlier application claiming such invention was 

6 filed. The Director shall prescribe regulations setting forth 

7 standards for the conduct of derivation proceedings. 

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

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

10 derivation proceeding until 3 months after the date on 

11 which the Director issues a patent that includes the 

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

13 Patent Trial and Appeal Board also may defer action on 

14 a petition for a derivation proceeding, or stay the pro15 ceeding after it has been instituted, until the termination 

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

17 patent of the earlier applicant. 

18 ‘‘(d) EFFECT OF FINAL DECISION.—The final deci19 sion of the Patent Trial and Appeal Board, if adverse to 

20 claims in an application for patent, shall constitute the 

21 final refusal by the Office on those claims. The final deci22 sion of the Patent Trial and Appeal Board, if adverse to 

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

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

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1 tion shall be endorsed on copies of the patent distributed 

2 after such cancellation. 

3 ‘‘(e) SETTLEMENT.—Parties to a proceeding insti4 tuted under subsection (a) may terminate the proceeding 

5 by filing a written statement reflecting the agreement of 

6 the parties as to the correct inventors of the claimed inven7 tion in dispute. Unless the Patent Trial and Appeal Board 

8 finds the agreement to be inconsistent with the evidence 

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

10 agreement. Any written settlement or understanding of 

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

12 of a party to the proceeding, the agreement or under13 standing shall be treated as business confidential informa14 tion, shall be kept separate from the file of the involved 

15 patents or applications, and shall be made available only 

16 to Government agencies on written request, or to any per17 son on a showing of good cause. 

18 ‘‘(f) ARBITRATION.—Parties to a proceeding insti19 tuted under subsection (a) may, within such time as may 

20 be specified by the Director by regulation, determine such 

21 contest or any aspect thereof by arbitration. Such arbitra22 tion shall be governed by the provisions of title 9, to the 

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

24 parties shall give notice of any arbitration award to the 

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


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1 the arbitration, be dispositive of the issues to which it re2 lates. The arbitration award shall be unenforceable until 

3 such notice is given. Nothing in this subsection shall pre4 clude the Director from determining the patentability of 

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

6 (j) ELIMINATION OF REFERENCES TO INTER7 FERENCES.—(1) Sections 41, 134, 145, 146, 154, 305, 

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

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

10 each place it appears and inserting ‘‘Patent Trial and Ap11 peal Board’’. 

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

13 States Code, are each amended— 

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

15 it appears and inserting ‘‘a derivation pro16 ceeding’’; and 

17 (ii) by striking ‘‘interference’’ each addi18 tional place it appears and inserting ‘‘derivation 

19 proceeding’’. 

20 (B) The subparagraph heading for section 

21 154(b)(1)(C) of title 35, United States Code, as 

22 amended by this paragraph, is further amended 

23 by— 

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


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1 (ii) striking ‘‘SECRECY ORDER’’ and insert2 ing ‘‘SECRECY ORDERS’’. 

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

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

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

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

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

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

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

10 Code, is amended by striking ‘‘INTERFERENCES’’ and in11 serting ‘‘DERIVATION PROCEEDINGS’’. 

12 (6) The item relating to section 6 in the table of sec13 tions for chapter 1 of title 35, United States Code, is 

14 amended to read as follows: 

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

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

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

17 States Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

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

20 is amended to read as follows: 

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

21 (k) FALSE MARKING.— 


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

2 United States Code, is amended— 

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

4 the following: 

5 ‘‘Only the United States may sue for the penalty au6 thorized by this subsection.’’; and 

7 (B) by striking subsection (b) and insert8 ing the following: 

9 ‘‘(b) Any person who has suffered a competitive in10 jury as a result of a violation of this section may file a 

11 civil action in a district court of the United States for re12 covery of damages adequate to compensate for the in13 jury.’’. 

14 (2) EFFECTIVE DATE.—The amendments made 

15 by this subsection shall apply to all cases, without 

16 exception, pending on or after the date of the enact17 ment of this Act. 

18 (l) STATUTE OF LIMITATIONS.— 

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

20 United States Code, is amended by inserting be21 tween the third and fourth sentences the following: 

22 ‘‘A proceeding under this section shall be com23 menced not later than the earlier of either 10 years 

24 after the date on which the misconduct forming the 

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


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1 date on which the misconduct forming the basis for 

2 the proceeding is made known to an officer or em3 ployee of the Office as prescribed in the regulations 

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

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

6 provide on a biennial basis to the Judiciary Commit7 tees of the Senate and House of Representatives a 

8 report providing a short description of incidents 

9 made known to an officer or employee of the Office 

10 as prescribed in the regulations established under 

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

12 that reflect substantial evidence of misconduct be13 fore the Office but for which the Office was barred 

14 from commencing a proceeding under section 32 of 

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

16 established by the fourth sentence of that section. 

17 (3) EFFECTIVE DATE.—The amendment made 

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

19 the time period for instituting a proceeding under 

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

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

22 (m) SMALL BUSINESS STUDY.— 

23 (1) DEFINITIONS.—In this subsection— 


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

2 Chief Counsel for Advocacy of the Small Busi3 ness Administration; 

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

5 General Counsel of the United States Patent 

6 and Trademark Office; and 

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

8 the meaning given that term under section 3 of 

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

10 (2) STUDY.— 

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

12 consultation with the General Counsel, shall 

13 conduct a study of the effects of eliminating the 

14 use of dates of invention in determining wheth15 er an applicant is entitled to a patent under 

16 title 35, United States Code. 

17 (B) AREAS OF STUDY.—The study con18 ducted under subparagraph (A) shall include 

19 examination of the effects of eliminating the use 

20 of invention dates, including examining— 

21 (i) how the change would affect the 

22 ability of small business concerns to obtain 

23 patents and their costs of obtaining pat24 ents; 


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1 (ii) whether the change would create, 

2 mitigate, or exacerbate any disadvantage 

3 for applicants for patents that are small 

4 business concerns relative to applicants for 

5 patents that are not small business con6 cerns, and whether the change would cre7 ate any advantages for applicants for pat8 ents that are small business concerns rel9 ative to applicants for patents that are not 

10 small business concerns; 

11 (iii) the cost savings and other poten12 tial benefits to small business concerns of 

13 the change; and 

14 (iv) the feasibility and costs and bene15 fits to small business concerns of alter16 native means of determining whether an 

17 applicant is entitled to a patent under title 

18 35, United States Code. 

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

20 date of enactment of this Act, the Chief Counsel 

21 shall submit to the Committee on Small Business 

22 and Entrepreneurship and the Committee on the Ju23 diciary of the Senate and the Committee on Small 

24 Business and the Committee on the Judiciary of the 


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1 House of Representatives a report regarding the re2 sults of the study under paragraph (2). 

3 (n) REPORT ON PRIOR USER RIGHTS.— 

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

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

6 shall report, to the Committee on the Judiciary of 

7 the Senate and the Committee on the Judiciary of 

8 the House of Representatives, the findings and rec9 ommendations of the Director on the operation of 

10 prior user rights in selected countries in the indus11 trialized world. The report shall include the fol12 lowing: 

13 (A) A comparison between patent laws of 

14 the United States and the laws of other indus15 trialized countries, including members of the 

16 European Union and Japan, Canada, and Aus17 tralia. 

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

19 rights on innovation rates in the selected coun20 tries. 

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

22 between prior user rights and start-up enter23 prises and the ability to attract venture capital 

24 to start new companies. 


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

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

3 and individual inventors. 

4 (E) An analysis of legal and constitutional 

5 issues, if any, that arise from placing trade se6 cret law in patent law. 

7 (F) An analysis of whether the change to 

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

9 need for prior user rights. 

10 (2) CONSULTATION WITH OTHER AGENCIES.— 

11 In preparing the report required under paragraph 

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

13 States Trade Representative, the Secretary of State, 

14 and the Attorney General. 

15 (o) EFFECTIVE DATE.— 

16 (1) IN GENERAL.—Except as otherwise pro17 vided by this section, the amendments made by this 

18 section shall take effect on the date that is 18 

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

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

21 any patent issuing thereon, that contains or con22 tained at any time— 

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

24 an effective filing date as defined in section 

25 100(i) of title 35, United States Code, that is 


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1 18 months or more after the date of the enact2 ment of this Act; or 

3 (B) a specific reference under section 120, 

4 121, or 365(c) of title 35, United States Code, 

5 to any patent or application that contains or 

6 contained at any time such a claim. 

7 (2) INTERFERING PATENTS.—The provisions of 

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

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

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

11 claim of an application for patent, and any patent 

12 issued thereon, for which the amendments made by 

13 this section also apply, if such application or patent 

14 contains or contained at any time— 

15 (A) a claim to an invention having an ef16 fective filing date as defined in section 100(i) of 

17 title 35, United States Code, earlier than 18 

18 months after the date of the enactment of this 

19 Act; or 

20 (B) a specific reference under section 120, 

21 121, or 365(c) of title 35, United States Code, 

22 to any patent or application that contains or 

23 contained at any time such a claim. 

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

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


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

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

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

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

5 DECLARATION.—An application for patent that is filed 

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

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

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

9 application. Except as otherwise provided in this section, 

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

11 a claimed invention in an application for patent shall exe12 cute an oath or declaration in connection with the applica13 tion. 

14 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara15 tion under subsection (a) shall contain statements that— 

16 ‘‘(1) the application was made or was author17 ized to be made by the affiant or declarant; and 

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

19 to be the original inventor or an original joint inven20 tor of a claimed invention in the application. 

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

22 may specify additional information relating to the inventor 

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

24 oath or declaration under subsection (a). 

25 ‘‘(d) SUBSTITUTE STATEMENT.— 


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

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

3 patent may provide a substitute statement under the 

4 circumstances described in paragraph (2) and such 

5 additional circumstances that the Director may 

6 specify by regulation. 

7 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub8 stitute statement under paragraph (1) is permitted 

9 with respect to any individual who— 

10 ‘‘(A) is unable to file the oath or declara11 tion under subsection (a) because the indi12 vidual— 

13 ‘‘(i) is deceased; 

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

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

16 diligent effort; or 

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

18 invention but has refused to make the oath or 

19 declaration required under subsection (a). 

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

21 this subsection shall— 

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

23 whom the statement applies; 

24 ‘‘(B) set forth the circumstances rep25 resenting the permitted basis for the filing of 


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1 the substitute statement in lieu of the oath or 

2 declaration under subsection (a); and 

3 ‘‘(C) contain any additional information, 

4 including any showing, required by the Direc5 tor. 

6 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN7 MENT OF RECORD.—An individual who is under an obliga8 tion of assignment of an application for patent may in9 clude the required statements under subsections (b) and 

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

11 of filing such statements separately. 

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

13 section 151 may be provided to an applicant for patent 

14 only if the applicant for patent has filed each required 

15 oath or declaration under subsection (a) or has filed a sub16 stitute statement under subsection (d) or recorded an as17 signment meeting the requirements of subsection (e). 

18 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE19 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

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

21 this section shall not apply to an individual with re22 spect to an application for patent in which the indi23 vidual is named as the inventor or a joint inventor 

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


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

2 if— 

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

4 requirements of subsection (a) was executed by 

5 the individual and was filed in connection with 

6 the earlier-filed application; 

7 ‘‘(B) a substitute statement meeting the 

8 requirements of subsection (d) was filed in the 

9 earlier filed application with respect to the indi10 vidual; or 

11 ‘‘(C) an assignment meeting the require12 ments of subsection (e) was executed with re13 spect to the earlier-filed application by the indi14 vidual and was recorded in connection with the 

15 earlier-filed application. 

16 ‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE17 MENTS, OR ASSIGNMENTS.—Notwithstanding para18 graph (1), the Director may require that a copy of 

19 the executed oath or declaration, the substitute 

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

21 application be included in the later-filed application. 

22 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE23 MENTS; FILING ADDITIONAL STATEMENTS.— 

24 ‘‘(1) IN GENERAL.—Any person making a state25 ment required under this section may withdraw, reVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00027 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 place, or otherwise correct the statement at any 

2 time. If a change is made in the naming of the in3 ventor requiring the filing of 1 or more additional 

4 statements under this section, the Director shall es5 tablish regulations under which such additional 

6 statements may be filed. 

7 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE8 QUIRED.—If an individual has executed an oath or 

9 declaration meeting the requirements of subsection 

10 (a) or an assignment meeting the requirements of 

11 subsection (e) with respect to an application for pat12 ent, the Director may not thereafter require that in13 dividual to make any additional oath, declaration, or 

14 other statement equivalent to those required by this 

15 section in connection with the application for patent 

16 or any patent issuing thereon. 

17 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in18 valid or unenforceable based upon the failure to 

19 comply with a requirement under this section if the 

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

21 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec22 laration or statement filed pursuant to this section shall 

23 contain an acknowledgment that any willful false state24 ment made in such declaration or statement is punishable 


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1 under section 1001 of title 18 by fine or imprisonment 

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

3 (2) RELATIONSHIP TO DIVISIONAL APPLICA4 TIONS.—Section 121 of title 35, United States Code, 

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

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

7 (3) REQUIREMENTS FOR NONPROVISIONAL AP8 PLICATIONS.—Section 111(a) of title 35, United 

9 States Code, is amended— 

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

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

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

13 inserting ‘‘OR DECLARATION’’ after ‘‘AND

14 OATH’’; and 

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

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

17 (4) CONFORMING AMENDMENT.—The item re18 lating to section 115 in the table of sections for 

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

20 amended to read as follows: 

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

21 (b) FILING BY OTHER THAN INVENTOR.— 

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

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


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1 ‘‘§ 118. Filing by other than inventor 

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

3 under an obligation to assign the invention may make an 

4 application for patent. A person who otherwise shows suf5 ficient proprietary interest in the matter may make an ap6 plication for patent on behalf of and as agent for the in7 ventor on proof of the pertinent facts and a showing that 

8 such action is appropriate to preserve the rights of the 

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

10 filed under this section by a person other than the inven11 tor, the patent shall be granted to the real party in inter12 est and upon such notice to the inventor as the Director 

13 considers to be sufficient.’’. 

14 (2) CONFORMING AMENDMENT.—Section 251 

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

16 third undesignated paragraph by inserting ‘‘or the 

17 application for the original patent was filed by the 

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

19 original patent’’. 

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

21 States Code, is amended— 

22 (1) in the first paragraph— 

23 (A) by striking ‘‘The specification’’ and in24 serting ‘‘(a) IN GENERAL.—The specification’’; 

25 and 


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1 (B) by striking ‘‘of carrying out his inven2 tion’’ and inserting ‘‘or joint inventor of car3 rying out the invention’’; 

4 (2) in the second paragraph— 

5 (A) by striking ‘‘The specification’’ and in6 serting ‘‘(b) CONCLUSION.—The specification’’; 

7 and 

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

9 invention’’ and inserting ‘‘inventor or a joint in10 ventor regards as the invention’’; 

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

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

13 (4) in the fourth paragraph, by striking ‘‘Sub14 ject to the following paragraph,’’ and inserting ‘‘(d) 

15 REFERENCE IN DEPENDENT FORMS.—Subject to 

16 subsection (e),’’; 

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

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

19 DEPENDENT FORM.—A claim’’; and 

20 (6) in the last paragraph, by striking ‘‘An ele21 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

22 A COMBINATION.—An element’’. 

23 (d) CONFORMING AMENDMENTS.— 


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1 (1) Sections 111(b)(1)(A) is amended by strik2 ing ‘‘the first paragraph of section 112 of this title’’ 

3 and inserting ‘‘section 112(a)’’. 

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

5 ‘‘the second through fifth paragraphs of section 

6 112,’’ and inserting ‘‘subsections (b) through (e) of 

7 section 112,’’. 

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

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

10 enactment of this Act and shall apply to patent applica11 tions that are filed on or after that effective date. 

12 SEC. 4. DAMAGES. 

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

14 States Code, is amended— 

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

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

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

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

19 the following: ‘‘fixed by the court. When the dam20 ages’’; 

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

22 follows through ‘‘The court may receive’’ and insert23 ing the following: ‘‘shall assess them. In either event 

24 the court may increase the damages up to 3 times the 

25 amount found or assessed. Increased damages under 


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1 this subsection shall not apply to provisional rights 

2 under section 154(d) of this title. The court may re3 ceive’’; and 

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

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

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

7 methodologies and factors that are relevant to the 

8 determination of damages, and the court or jury 

9 shall consider only those methodologies and factors 

10 relevant to making such determination. 

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

12 than the entry of the final pretrial order, unless oth13 erwise ordered by the court, the parties shall state, 

14 in writing and with particularity, the methodologies 

15 and factors the parties propose for instruction to the 

16 jury in determining damages under this section, 

17 specifying the relevant underlying legal and factual 

18 bases for their assertions. 

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

20 introduction of any evidence concerning the deter21 mination of damages, upon motion of either party or 

22 sua sponte, the court shall consider whether one or 

23 more of a party’s damages contentions lacks a le24 gally sufficient evidentiary basis. After providing a 

25 nonmovant the opportunity to be heard, and after 


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1 any further proffer of evidence, briefing, or argu2 ment that the court may deem appropriate, the 

3 court shall identify on the record those methodolo4 gies and factors as to which there is a legally suffi5 cient evidentiary basis, and the court or jury shall 

6 consider only those methodologies and factors in 

7 making the determination of damages under this 

8 section. The court shall only permit the introduction 

9 of evidence relating to the determination of damages 

10 that is relevant to the methodologies and factors 

11 that the court determines may be considered in mak12 ing the damages determination. 

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

14 patent-infringement trial be sequenced so that the trier 

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

16 validity before the issues of damages and willful infringe17 ment are tried to the court or the jury. The court shall 

18 grant such a request absent good cause to reject the re19 quest, such as the absence of issues of significant damages 

20 or infringement and validity. The sequencing of a trial 

21 pursuant to this subsection shall not affect other matters, 

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

23 authorize a party to request that the issues of damages 

24 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 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00035 Fmt 6652 Sfmt 6401 E:\BILLS\S23.RS 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 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00037 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS 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 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re18 view may not be instituted if the petition requesting the 

19 proceeding is filed more than 6 months after the date on 

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

21 is served with a complaint alleging infringement of the pat22 ent. The time limitation set forth in the preceding sentence 

23 shall not apply to a request for joinder under subsection 

24 (c). 


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

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

3 a party to that inter partes review any person who prop4 erly files a petition under section 311 that the Director, 

5 after receiving a preliminary response under section 313 

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

7 determines warrants the institution of an inter partes re8 view under section 314. 

9 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

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

11 pendency of an inter partes review, if another proceeding 

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

13 Director may determine the manner in which the inter 

14 partes review or other proceeding or matter may proceed, 

15 including providing for stay, transfer, consolidation, or 

16 termination of any such matter or proceeding. 

17 ‘‘(e) ESTOPPEL.— 

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

19 petitioner in an inter partes review under this chap20 ter, or his real party in interest or privy, may not 

21 request or maintain a proceeding before the Office 

22 with respect to a claim on any ground that the peti23 tioner raised or reasonably could have raised during 

24 an inter partes review of the claim that resulted in 

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


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1 ‘‘(2) CIVIL ACTIONS AND OTHER PRO2 CEEDINGS.—The petitioner in an inter partes review 

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

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

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

6 or in a proceeding before the International Trade 

7 Commission that a claim in a patent is invalid on 

8 any ground that the petitioner raised or reasonably 

9 could have raised during an inter partes review of 

10 the claim that resulted in a final written decision 

11 under section 318(a). 

12 ‘‘§ 316. Conduct of inter partes review 

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

14 regulations— 

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

16 under this chapter shall be made available to the 

17 public, except that any petition or document filed 

18 with the intent that it be sealed shall be accom19 panied by a motion to seal, and such petition or doc20 ument shall be treated as sealed pending the out21 come of the ruling on the motion; 

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

23 of sufficient grounds to institute a review under sec24 tion 314(a); 


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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 inter partes review under this 

6 chapter and the relationship of such review to other 

7 proceedings under this title; 

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

9 under section 315(c); 

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

11 discovery of relevant evidence, including that such 

12 discovery shall be limited to— 

13 ‘‘(A) the deposition of witnesses submitting 

14 affidavits or declarations; and 

15 ‘‘(B) what is otherwise necessary in the in16 terest of justice; 

17 ‘‘(7) prescribing sanctions for abuse of dis18 covery, abuse of process, or any other improper use 

19 of the proceeding, such as to harass or to cause un20 necessary delay or an unnecessary increase in the 

21 cost of the proceeding; 

22 ‘‘(8) providing for protective orders governing 

23 the exchange and submission of confidential infor24 mation; 


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1 ‘‘(9) allowing the patent owner to file a re2 sponse to the petition after an inter partes review 

3 has been instituted, and requiring that the patent 

4 owner file with such response, through affidavits or 

5 declarations, any additional factual evidence and ex6 pert opinions on which the patent owner relies in 

7 support of the response; 

8 ‘‘(10) setting forth standards and procedures 

9 for allowing the patent owner to move to amend the 

10 patent under subsection (d) to cancel a challenged 

11 claim or propose a reasonable number of substitute 

12 claims, and ensuring that any information submitted 

13 by the patent owner in support of any amendment 

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

15 public as part of the prosecution history of the pat16 ent; 

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

18 an oral hearing as part of the proceeding; and 

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

20 an inter partes review be issued not later than 1 

21 year after the date on which the Director notices the 

22 institution of a review under this chapter, except 

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

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


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1 may adjust the time periods in this paragraph in the 

2 case of joinder under section 315(c). 

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

4 under this section, the Director shall consider the effect 

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

6 the patent system, the efficient administration of the Of7 fice, and the ability of the Office to timely complete pro8 ceedings instituted under this chapter. 

9 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat10 ent Trial and Appeal Board shall, in accordance with sec11 tion 6, conduct each proceeding authorized by the Direc12 tor. 

13 ‘‘(d) AMENDMENT OF THE PATENT.— 

14 ‘‘(1) IN GENERAL.—During an inter partes re15 view instituted under this chapter, the patent owner 

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

17 of the following ways: 

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

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

20 reasonable number of substitute claims. 

21 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo22 tions to amend may be permitted upon the joint re23 quest of the petitioner and the patent owner to ma24 terially advance the settlement of a proceeding under 


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1 section 317, or as permitted by regulations pre2 scribed by the Director. 

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

4 this subsection may not enlarge the scope of the 

5 claims of the patent or introduce new matter. 

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

7 review instituted under this chapter, the petitioner shall 

8 have the burden of proving a proposition of 

9 unpatentability by a preponderance of the evidence. 

10 ‘‘§ 317. Settlement 

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

12 under this chapter shall be terminated with respect to any 

13 petitioner upon the joint request of the petitioner and the 

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

15 the proceeding before the request for termination is filed. 

16 If the inter partes review is terminated with respect to 

17 a petitioner under this section, no estoppel under section 

18 315(e) shall apply to that petitioner. If no petitioner re19 mains in the inter partes review, the Office may terminate 

20 the review or proceed to a final written decision under sec21 tion 318(a). 

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

23 understanding between the patent owner and a petitioner, 

24 including any collateral agreements referred to in such 

25 agreement or understanding, made in connection with, or 


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1 in contemplation of, the termination of an inter partes re2 view under this section shall be in writing and a true copy 

3 of such agreement or understanding shall be filed in the 

4 Office before the termination of the inter partes review 

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

6 or understanding so requests, the copy shall be kept sepa7 rate from the file of the inter partes review, and shall be 

8 made available only to Federal Government agencies upon 

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

10 good cause. 

11 ‘‘§ 318. Decision of the board 

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

13 review is instituted and not dismissed under this chapter, 

14 the Patent Trial and Appeal Board shall issue a final writ15 ten decision with respect to the patentability of any patent 

16 claim challenged by the petitioner and any new claim 

17 added under section 316(d). 

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

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

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

21 terminated, the Director shall issue and publish a certifi22 cate canceling any claim of the patent finally determined 

23 to be unpatentable, confirming any claim of the patent de24 termined to be patentable, and incorporating in the patent 


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1 by operation of the certificate any new or amended claim 

2 determined to be patentable. 

3 ‘‘§ 319. Appeal 

4 ‘‘A party dissatisfied with the final written decision 

5 of the Patent Trial and Appeal Board under section 

6 318(a) may appeal the decision pursuant to sections 141 

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

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

9 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

12 31 and inserting the following: 

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

13 (c) REGULATIONS AND EFFECTIVE DATE.— 

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

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

16 the enactment of this Act, issue regulations to carry 

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

18 amended by subsection (a) of this section. 

19 (2) APPLICABILITY.— 

20 (A) IN GENERAL.—The amendments made 

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

22 that is 1 year after the date of the enactment 

23 of this Act and shall apply to all patents issued 

24 before, on, or after the effective date of sub25 section (a). 


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1 (B) EXCEPTION.—The provisions of chap2 ter 31 of title 35, United States Code, as 

3 amended by paragraph (3), shall continue to 

4 apply to requests for inter partes reexamination 

5 that are filed prior to the effective date of sub6 section (a) as if subsection (a) had not been en7 acted. 

8 (C) GRADUATED IMPLEMENTATION.—The 

9 Director may impose a limit on the number of 

10 inter partes reviews that may be instituted dur11 ing each of the first 4 years following the effec12 tive date of subsection (a), provided that such 

13 number shall in each year be equivalent to or 

14 greater than the number of inter partes reex15 aminations that are ordered in the last full fis16 cal year prior to the effective date of subsection 

17 (a). 

18 (3) TRANSITION.— 

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

20 United States Code, is amended— 

21 (i) in section 312— 

22 (I) in subsection (a)— 

23 (aa) in the first sentence, by 

24 striking ‘‘a substantial new ques25 tion of patentability affecting any 


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1 claim of the patent concerned is 

2 raised by the request,’’ and in3 serting ‘‘the information pre4 sented in the request shows that 

5 there is a reasonable likelihood 

6 that the requester would prevail 

7 with respect to at least 1 of the 

8 claims challenged in the re9 quest,’’; and 

10 (bb) in the second sentence, 

11 by striking ‘‘The existence of a 

12 substantial new question of pat13 entability’’ and inserting ‘‘A 

14 showing that there is a reason15 able likelihood that the requester 

16 would prevail with respect to at 

17 least 1 of the claims challenged 

18 in the request’’; and 

19 (II) in subsection (c), in the sec20 ond sentence, by striking ‘‘no substan21 tial new question of patentability has 

22 been raised,’’ and inserting ‘‘the show23 ing required by subsection (a) has not 

24 been made,’’; and 


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1 (ii) in section 313, by striking ‘‘a sub2 stantial new question of patentability af3 fecting a claim of the patent is raised’’ and 

4 inserting ‘‘it has been shown that there is 

5 a reasonable likelihood that the requester 

6 would prevail with respect to at least 1 of 

7 the claims challenged in the request’’. 

8 (B) APPLICATION.—The amendments 

9 made by this paragraph shall apply to requests 

10 for inter partes reexamination that are filed on 

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

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

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

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

15 following: 

16 ‘‘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. 

17 ‘‘§ 321. Post-grant review 

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

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

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


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

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

3 such amounts as the Director determines to be reasonable, 

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

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

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

7 patent on any ground that could be raised under para8 graph (2) or (3) of section 282(b) (relating to invalidity 

9 of the patent or any claim). 

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

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

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

13 ‘‘§ 322. Petitions 

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

15 under section 321 may be considered only if— 

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

17 the fee established by the Director under section 

18 321; 

19 ‘‘(2) the petition identifies all real parties in in20 terest; 

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

22 particularity, each claim challenged, the grounds on 

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

24 evidence that supports the grounds for the challenge 

25 to each claim, including— 


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1 ‘‘(A) copies of patents and printed publica2 tions that the petitioner relies upon in support 

3 of the petition; and 

4 ‘‘(B) affidavits or declarations of sup5 porting evidence and opinions, if the petitioner 

6 relies on other factual evidence or on expert 

7 opinions; 

8 ‘‘(4) the petition provides such other informa9 tion as the Director may require by regulation; and 

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

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

12 (4) to the patent owner or, if applicable, the des13 ignated representative of the patent owner. 

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

15 after the receipt of a petition under section 321, the Direc16 tor shall make the petition available to the public. 

17 ‘‘§ 323. Preliminary response to petition 

18 ‘‘(a) PRELIMINARY RESPONSE.—If a post-grant re19 view petition is filed under section 321, the patent owner 

20 shall have the right to file a preliminary response within 

21 2 months of the filing of the petition. 

22 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re23 sponse to a petition for post-grant review shall set forth 

24 reasons why no post-grant review should be instituted 


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1 based upon the failure of the petition to meet any require2 ment of this chapter. 

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

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

5 a post-grant review to commence unless the Director de6 termines that the information presented in the petition, 

7 if such information is not rebutted, would demonstrate 

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

9 challenged in the petition is unpatentable. 

10 ‘‘(b) ADDITIONAL GROUNDS.—The determination re11 quired under subsection (a) may also be satisfied by a 

12 showing that the petition raises a novel or unsettled legal 

13 question that is important to other patents or patent ap14 plications. 

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

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

17 3 months after receiving a preliminary response under sec18 tion 323 or, if none is filed, the expiration of the time 

19 for filing such a response. 

20 ‘‘(d) NOTICE.—The Director shall notify the peti21 tioner and patent owner, in writing, of the Director’s de22 termination under subsection (a) or (b), and shall make 

23 such notice available to the public as soon as is prac24 ticable. The Director shall make each notice of the institu25 tion of a post-grant review available to the public. Such 


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

3 ‘‘(e) NO APPEAL.—The determination by the Direc4 tor whether to institute a post-grant review under this sec5 tion shall be final and nonappealable. 

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

7 ‘‘(a) INFRINGER’S ACTION.—A post-grant 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.—A post-grant 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 ‘‘(b) PATENT OWNER’S ACTION.—A post-grant review 

18 may not be instituted if the petition requesting the pro19 ceeding is filed more than 6 months after the date on which 

20 the petitioner, real party in interest, or his privy is served 

21 with a complaint alleging infringement of the patent. The 

22 time limitation set forth in the preceding sentence shall not 

23 apply to a request for joinder under subsection (c). 

24 ‘‘(c) JOINDER.—If more than 1 petition for a post25 grant review is properly filed against the same patent and 


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1 the Director determines that more than 1 of these peti2 tions warrants the institution of a post-grant review under 

3 section 324, the Director may consolidate such reviews 

4 into a single post-grant review. 

5 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

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

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

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

9 Director may determine the manner in which the post10 grant review or other proceeding or matter may proceed, 

11 including providing for stay, transfer, consolidation, or 

12 termination of any such matter or proceeding. In deter13 mining whether to institute or order a proceeding under 

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

15 take into account whether, and reject the petition or re16 quest because, the same or substantially the same prior 

17 art or arguments previously were presented to the Office. 

18 ‘‘(e) ESTOPPEL.— 

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

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

21 or his real party in interest or privy, may not re22 quest or maintain a proceeding before the Office 

23 with respect to a claim on any ground that the peti24 tioner raised or reasonably could have raised during 


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

2 final written decision under section 328(a). 

3 ‘‘(2) CIVIL ACTIONS AND OTHER PRO4 CEEDINGS.—The petitioner in a post-grant review 

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

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

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

8 or in a proceeding before the International Trade 

9 Commission that a claim in a patent is invalid on 

10 any ground that the petitioner raised during a post11 grant review of the claim that resulted in a final 

12 written decision under section 328(a). 

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

14 alleging infringement of a patent is filed within 3 months 

15 of the grant of the patent, the court may not stay its con16 sideration of the patent owner’s motion for a preliminary 

17 injunction against infringement of the patent on the basis 

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

19 such a proceeding has been instituted. 

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

21 not be instituted if the petition requests cancellation of 

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

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

24 patent was issued, and the time limitations in section 


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1 321(c) would bar filing a petition for a post-grant review 

2 for such original patent. 

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

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

5 regulations— 

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

7 under this chapter shall be made available to the 

8 public, except that any petition or document filed 

9 with the intent that it be sealed shall be accom10 panied by a motion to seal, and such petition or doc11 ument shall be treated as sealed pending the out12 come of the ruling on the motion; 

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

14 of sufficient grounds to institute a review under sub15 sections (a) and (b) of section 324; 

16 ‘‘(3) establishing procedures for the submission 

17 of supplemental information after the petition is 

18 filed; 

19 ‘‘(4) in accordance with section 2(b)(2), estab20 lishing and governing a post-grant review under this 

21 chapter and the relationship of such review to other 

22 proceedings under this title; 

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

24 discovery of relevant evidence, including that such 

25 discovery shall be limited to evidence directly related 


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1 to factual assertions advanced by either party in the 

2 proceeding; 

3 ‘‘(6) prescribing sanctions for abuse of dis4 covery, abuse of process, or any other improper use 

5 of the proceeding, such as to harass or to cause un6 necessary delay or an unnecessary increase in the 

7 cost of the proceeding; 

8 ‘‘(7) providing for protective orders governing 

9 the exchange and submission of confidential infor10 mation; 

11 ‘‘(8) allowing the patent owner to file a re12 sponse to the petition after a post-grant review has 

13 been instituted, and requiring that the patent owner 

14 file with such response, through affidavits or dec15 larations, any additional factual evidence and expert 

16 opinions on which the patent owner relies in support 

17 of the response; 

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

19 allowing the patent owner to move to amend the pat20 ent under subsection (d) to cancel a challenged claim 

21 or propose a reasonable number of substitute claims, 

22 and ensuring that any information submitted by the 

23 patent owner in support of any amendment entered 

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

25 as part of the prosecution history of the patent; 


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

2 an oral hearing as part of the proceeding; and 

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

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

5 year after the date on which the Director notices the 

6 institution of a proceeding under this chapter, except 

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

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

9 may adjust the time periods in this paragraph in the 

10 case of joinder under section 325(c). 

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

12 under this section, the Director shall consider the effect 

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

14 the patent system, the efficient administration of the Of15 fice, and the ability of the Office to timely complete pro16 ceedings instituted under this chapter. 

17 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat18 ent Trial and Appeal Board shall, in accordance with sec19 tion 6, conduct each proceeding authorized by the Direc20 tor. 

21 ‘‘(d) AMENDMENT OF THE PATENT.— 

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

23 instituted under this chapter, the patent owner may 

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

25 the following ways: 


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

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

3 reasonable number of substitute claims. 

4 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo5 tions to amend may be permitted upon the joint re6 quest of the petitioner and the patent owner to ma7 terially advance the settlement of a proceeding under 

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

9 for good cause shown. 

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

11 this subsection may not enlarge the scope of the 

12 claims of the patent or introduce new matter. 

13 ‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re14 view instituted under this chapter, the petitioner shall 

15 have the burden of proving a proposition of 

16 unpatentability by a preponderance of the evidence. 

17 ‘‘§ 327. Settlement 

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

19 under this chapter shall be terminated with respect to any 

20 petitioner upon the joint request of the petitioner and the 

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

22 the proceeding before the request for termination is filed. 

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

24 petitioner under this section, no estoppel under section 

25 325(e) shall apply to that petitioner. If no petitioner reVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00063 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 mains in the post-grant review, the Office may terminate 

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

3 under section 328(a). 

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

5 understanding between the patent owner and a petitioner, 

6 including any collateral agreements referred to in such 

7 agreement or understanding, made in connection with, or 

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

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

10 such agreement or understanding shall be filed in the Of11 fice before the termination of the post-grant review as be12 tween the parties. If any party filing such agreement or 

13 understanding so requests, the copy shall be kept separate 

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

15 available only to Federal Government agencies upon writ16 ten request, or to any other person on a showing of good 

17 cause. 

18 ‘‘§ 328. Decision of the board 

19 ‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re20 view is instituted and not dismissed under this chapter, 

21 the Patent Trial and Appeal Board shall issue a final writ22 ten decision with respect to the patentability of any patent 

23 claim challenged by the petitioner and any new claim 

24 added under section 326(d). 


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

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

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

4 terminated, the Director shall issue and publish a certifi5 cate canceling any claim of the patent finally determined 

6 to be unpatentable, confirming any claim of the patent de7 termined to be patentable, and incorporating in the patent 

8 by operation of the certificate any new or amended claim 

9 determined to be patentable. 

10 ‘‘§ 329. Appeal 

11 ‘‘A party dissatisfied with the final written decision 

12 of the Patent Trial and Appeal Board under section 

13 328(a) may appeal the decision pursuant to sections 141 

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

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

16 (e) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

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

19 (f) REGULATIONS AND EFFECTIVE DATE.— 

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

21 later than the date that is 1 year 18 months after 

22 the date of the enactment of this Act, issue regula23 tions to carry out chapter 32 of title 35, United 

24 States Code, as added by subsection (d) of this sec25 tion. 


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1 (2) APPLICABILITY.—The amendments made 

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

3 is 1 year 18 months after the date of the enactment 

4 of this Act and shall apply only to patents issued on 

5 or after that date. The Director may impose a limit 

6 on the number of post-grant reviews that may be in7 stituted during each of the 4 years following the ef8 fective date of subsection (d). 

9 (3) PENDING INTERFERENCES.—The Director 

10 shall determine the procedures under which inter11 ferences commenced before the effective date of sub12 section (d) are to proceed, including whether any 

13 such interference is to be dismissed without preju14 dice to the filing of a petition for a post-grant review 

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

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

17 The Director shall include such procedures in regu18 lations issued under paragraph (1). For purposes of 

19 an interference that is commenced before the effec20 tive date of subsection (d), the Director may deem 

21 the Patent Trial and Appeal Board to be the Board 

22 of Patent Appeals and Interferences, and may allow 

23 the Patent Trial and Appeal Board to conduct any 

24 further proceedings in that interference. The author25 ization to appeal or have remedy from derivation 


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

2 United States Code, and the jurisdiction to entertain 

3 appeals from derivation proceedings in section 

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

5 be deemed to extend to final decisions in inter6 ferences that are commenced before the effective 

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

8 pursuant to this paragraph. 

9 (g) CITATION OF PRIOR ART AND WRITTEN STATE10 MENTS.— 

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

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

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

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

15 to the Office in writing— 

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

17 publications which that person believes to have a 

18 bearing on the patentability of any claim of a par19 ticular patent; or 

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

21 proceeding before a Federal court or the Office in 

22 which the patent owner took a position on the scope 

23 of any claim of a particular patent. 

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

25 or written statements pursuant to subsection (a) explains 


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1 in writing the pertinence and manner of applying the prior 

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

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

4 explanation thereof shall become a part of the official file 

5 of the patent. 

6 ‘‘(c) ADDITIONAL INFORMATION.—A party that sub7 mits a written statement pursuant to subsection (a)(2) 

8 shall include any other documents, pleadings, or evidence 

9 from the proceeding in which the statement was filed that 

10 addresses the written statement. 

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

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

13 submitted pursuant to subsection (c), shall not be consid14 ered by the Office for any purpose other than to determine 

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

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

17 324. If any such written statement or additional informa18 tion is subject to an applicable protective order, it shall 

19 be redacted to exclude information that is subject to that 

20 order. 

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

22 of the person citing prior art or written statements pursu23 ant to subsection (a), that person’s identity shall be ex24 cluded from the patent file and kept confidential.’’. 


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1 (2) EFFECTIVE DATE.—The amendment made 

2 by this subsection shall take effect 1 year 18 months 

3 after the date of the enactment of this Act and shall 

4 apply to patents issued before, on, or after that ef5 fective date. 

6 (h) REEXAMINATION.— 

7 (1) DETERMINATION BY DIRECTOR.— 

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

9 35, United States Code, is amended by striking 

10 ‘‘section 301 of this title’’ and inserting ‘‘sec11 tion 301 or 302’’. 

12 (B) EFFECTIVE DATE.—The amendment 

13 made by this paragraph shall take effect 1 year 

14 18 months after the date of the enactment of 

15 this Act and shall apply to patents issued be16 fore, on, or after that effective date. 

17 (2) APPEAL.— 

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

19 United States Code, is amended by striking 

20 ‘‘145’’ and inserting ‘‘144’’. 

21 (B) EFFECTIVE DATE.—The amendment 

22 made by this paragraph shall take effect on the 

23 date of enactment of this Act and shall apply 

24 to appeals of reexaminations that are pending 

25 before the Board of Patent Appeals and InterVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00069 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 ferences or the Patent Trial and Appeal Board 

2 on or after the date of the enactment of this 

3 Act. 

4 SEC. 6. PATENT TRIAL AND APPEAL BOARD. 

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

6 35, United States Code, is amended to read as follows: 

7 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

10 Commissioner for Patents, the Commissioner for Trade11 marks, and the administrative patent judges shall con12 stitute the Patent Trial and Appeal Board. The adminis13 trative patent judges shall be persons of competent legal 

14 knowledge and scientific ability who are appointed by the 

15 Secretary, in consultation with the Director. Any reference 

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

17 delegation of authority, or any document of or pertaining 

18 to the Board of Patent Appeals and Interferences is 

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

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

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

22 adverse decisions of examiners upon applications for 

23 patents pursuant to section 134(a); 

24 ‘‘(2) review appeals of reexaminations pursuant 

25 to section 134(b); 


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1 ‘‘(3) conduct derivation proceedings pursuant to 

2 section 135; and 

3 ‘‘(4) conduct inter partes reviews and post4 grant reviews pursuant to chapters 31 and 32. 

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

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

7 3 members of the Patent Trial and Appeal Board, who 

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

9 and Appeal Board may grant rehearings. 

10 ‘‘(d) The Secretary of Commerce may, in his discre11 tion, deem the appointment of an administrative patent 

12 judge who, before the date of the enactment of this sub13 section, held office pursuant to an appointment by the Di14 rector to take effect on the date on which the Director 

15 initially appointed the administrative patent judge. It shall 

16 be a defense to a challenge to the appointment of an ad17 ministrative patent judge on the basis of the judge’s hav18 ing been originally appointed by the Director that the ad19 ministrative patent judge so appointed was acting as a de 

20 facto officer.’’. 

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

22 35, United States Code, is amended— 

23 (1) in subsection (b), by striking ‘‘any reexam24 ination proceeding’’ and inserting ‘‘a reexamina25 tion’’; and 


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1 (2) by striking subsection (c). 

2 (c) CIRCUIT APPEALS.— 

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

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

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

6 Circuit 

7 ‘‘(a) EXAMINATIONS.—An applicant who is dissatis8 fied with the final decision in an appeal to the Patent Trial 

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

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

11 for the Federal Circuit. By filing such an appeal, the ap12 plicant waives his right to proceed under section 145. 

13 ‘‘(b) REEXAMINATIONS.—A patent owner who is dis14 satisfied with the final decision in an appeal of a reexam15 ination to the Patent Trial and Appeal Board under sec16 tion 134(b) may appeal the Board’s decision only to the 

17 United States Court of Appeals for the Federal Circuit. 

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

19 A party to a post-grant or inter partes review who is dis20 satisfied with the final written decision of the Patent Trial 

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

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

23 Court of Appeals for the Federal Circuit. 

24 ‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri25 vation proceeding who is dissatisfied with the final deciVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00072 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 sion of the Patent Trial and Appeal Board on the pro2 ceeding may appeal the decision to the United States 

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

4 shall be dismissed if any adverse party to such derivation 

5 proceeding, within 20 days after the appellant has filed 

6 notice of appeal in accordance with section 142, files no7 tice with the Director that the party elects to have all fur8 ther proceedings conducted as provided in section 146. If 

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

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

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

12 proceedings in the case.’’. 

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

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

15 follows: 

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

17 the United States Patent and Trademark Office 

18 with respect to patent applications, derivation 

19 proceedings, reexaminations, post-grant reviews, 

20 and inter partes reviews at the instance of a 

21 party who exercised his right to participate in 

22 a proceeding before or appeal to the Board, ex23 cept that an applicant or a party to a derivation 

24 proceeding may also have remedy by civil action 

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


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1 appeal under this subparagraph of a decision of 

2 the Board with respect to an application or der3 ivation proceeding shall waive the right of such 

4 applicant or party to proceed under section 145 

5 or 146 of title 35;’’. 

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

7 title 35, United States Code, is amended— 

8 (A) by striking the third sentence and in9 serting the following: ‘‘In an ex parte case, the 

10 Director shall submit to the court in writing the 

11 grounds for the decision of the Patent and 

12 Trademark Office, addressing all of the issues 

13 raised in the appeal. The Director shall have 

14 the right to intervene in an appeal from a deci15 sion entered by the Patent Trial and Appeal 

16 Board in a derivation proceeding under section 

17 135 or in an inter partes or post-grant review 

18 under chapter 31 or 32.’’; and 

19 (B) by repealing the second of the two 

20 identical fourth sentences. 

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

22 this section shall take effect 1 year 18 months after the 

23 date of the enactment of this Act and shall apply to pro24 ceedings commenced on or after that effective date, except 

25 that— 


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1 (1) the extension of jurisdiction to the United 

2 States Court of Appeals for the Federal Circuit to 

3 entertain appeals of decisions of the Patent Trial 

4 and Appeal Board in reexaminations under the 

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

6 deemed to take effect on the date of enactment of 

7 this Act and shall extend to any decision of the 

8 Board of Patent Appeals and Interferences with re9 spect to a reexamination that is entered before, on, 

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

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

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

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

14 continue to apply to inter partes reexaminations that 

15 are requested under section 311 prior to the date 

16 that is 1 year 18 months after the date of the enact17 ment of this Act; 

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

19 deemed to be the Board of Patent Appeals and 

20 Interferences for purposes of appeals of inter partes 

21 reexaminations that are requested under section 311 

22 prior to the date that is 1 year 18 months after the 

23 date of the enactment of this Act; and 

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

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


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1 amended by subsection (c)(3), to intervene in an ap2 peal from a decision entered by the Patent Trial and 

3 Appeal Board shall be deemed to extend to inter 

4 partes reexaminations that are requested under sec5 tion 311 prior to the date that is 1 year 18 months 

6 after the date of the enactment of this Act. 

7 SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

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

9 States Code, is amended by adding at the end the fol10 lowing: 

11 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR12 TIES.— 

13 ‘‘(1) IN GENERAL.—Any third party may sub14 mit for consideration and inclusion in the record of 

15 a patent application, any patent, published patent 

16 application, or other printed publication of potential 

17 relevance to the examination of the application, if 

18 such submission is made in writing before the earlier 

19 of— 

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

21 section 151 is given or mailed in the application 

22 for patent; or 

23 ‘‘(B) the later of— 


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

2 the application for patent is first published 

3 under section 122 by the Office, or 

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

5 under section 132 of any claim by the ex6 aminer during the examination of the ap7 plication for patent. 

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

9 under paragraph (1) shall— 

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

11 asserted relevance of each submitted document; 

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

13 Director may prescribe; and 

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

15 making such submission affirming that the sub16 mission was made in compliance with this sec17 tion.’’. 

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

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

20 enactment of this Act and shall apply to patent applica21 tions filed before, on, or after that effective date. 

22 SEC. 8. VENUE. 

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

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

25 following: 


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

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

3 court shall transfer any civil action arising under any Act 

4 of Congress relating to patents upon a showing that the 

5 transferee venue is clearly more convenient than the venue 

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

7 (b) TECHNICAL AMENDMENTS RELATING TO

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

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

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

11 and protection of trademarks used in commerce, to carry 

12 out the provisions of certain international conventions, 

13 and for other purposes’’, approved July 5, 1946 (com14 monly referred to as the ‘‘Trademark Act of 1946’’ or the 

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

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

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

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

19 Virginia’’. 

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

21 this section shall take effect upon the date of the enact22 ment of this Act and shall apply to civil actions com23 menced on or after that date. 

24 SEC. 9. FEE SETTING AUTHORITY. 

25 (a) FEE SETTING.— 


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1 (1) IN GENERAL.—The Director shall have au2 thority to set or adjust by rule any fee established 

3 or charged by the Office under sections 41 and 376 

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

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

6 any other fee established or charged by the Office 

7 under any other provision of law, notwithstanding 

8 the fee amounts established or charged thereunder, 

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

10 for all other services performed by or materials fur11 nished by, the Office, provided that patent and 

12 trademark fee amounts are in the aggregate set to 

13 recover the estimated cost to the Office for proc14 essing, activities, services and materials relating to 

15 patents and trademarks, respectively, including pro16 portionate shares of the administrative costs of the 

17 Office. 

18 (2) SMALL AND MICRO ENTITIES.—The fees es19 tablished under paragraph (1) for filing, processing, 

20 issuing, and maintaining patent applications and 

21 patents shall be reduced by 50 percent with respect 

22 to their application to any small entity that qualifies 

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

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1 cent with respect to their application to any micro 

2 entity as defined in section 123 of that title. 

3 (3) REDUCTION OF FEES IN CERTAIN FISCAL

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

5 (A) shall consult with the Patent Public 

6 Advisory Committee and the Trademark Public 

7 Advisory Committee on the advisability of re8 ducing any fees described in paragraph (1); and 

9 (B) after the consultation required under 

10 subparagraph (A), may reduce such fees. 

11 (4) ROLE OF THE PUBLIC ADVISORY COM12 MITTEE.—The Director shall— 

13 (A) submit to the Patent Public Advisory 

14 Committee or the Trademark Public Advisory 

15 Committee, or both, as appropriate, any pro16 posed fee under paragraph (1) not less than 45 

17 days before publishing any proposed fee in the 

18 Federal Register; 

19 (B) provide the relevant advisory com20 mittee described in subparagraph (A) a 30-day 

21 period following the submission of any proposed 

22 fee, on which to deliberate, consider, and com23 ment on such proposal, and require that— 


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1 (i) during such 30-day period, the rel2 evant advisory committee hold a public 

3 hearing related to such proposal; and 

4 (ii) the Director shall assist the rel5 evant advisory committee in carrying out 

6 such public hearing, including by offering 

7 the use of Office resources to notify and 

8 promote the hearing to the public and in9 terested stakeholders; 

10 (C) require the relevant advisory com11 mittee to make available to the public a written 

12 report detailing the comments, advice, and rec13 ommendations of the committee regarding any 

14 proposed fee; 

15 (D) consider and analyze any comments, 

16 advice, or recommendations received from the 

17 relevant advisory committee before setting or 

18 adjusting any fee; and 

19 (E) notify, through the Chair and Ranking 

20 Member of the Senate and House Judiciary 

21 Committees, the Congress of any final rule set22 ting or adjusting fees under paragraph (1). 

23 (5) PUBLICATION IN THE FEDERAL REG24 ISTER.— 


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1 (A) IN GENERAL.—Any rules prescribed 

2 under this subsection shall be published in the 

3 Federal Register. 

4 (B) RATIONALE.—Any proposal for a 

5 change in fees under this section shall— 

6 (i) be published in the Federal Reg7 ister; and 

8 (ii) include, in such publication, the 

9 specific rationale and purpose for the pro10 posal, including the possible expectations 

11 or benefits resulting from the proposed 

12 change. 

13 (C) PUBLIC COMMENT PERIOD.—Following 

14 the publication of any proposed fee in the Fed15 eral Register pursuant to subparagraph (A), the 

16 Director shall seek public comment for a period 

17 of not less than 45 days. 

18 (6) CONGRESSIONAL COMMENT PERIOD.—Fol19 lowing the notification described in paragraph 

20 (3)(E), Congress shall have not more than 45 days 

21 to consider and comment on any final rule setting or 

22 adjusting fees under paragraph (1). No fee set or 

23 adjusted under paragraph (1) shall be effective prior 

24 to the end of such 45-day comment period. 


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1 (7) RULE OF CONSTRUCTION.—No rules pre2 scribed under this subsection may diminish— 

3 (A) an applicant’s rights under title 35, 

4 United States Code, or the Trademark Act of 

5 1946; or 

6 (B) any rights under a ratified treaty. 

7 (b) FEES FOR PATENT SERVICES.—Division B of 

8 Public Law 108–447 is amended in title VIII of the De9 partments of Commerce, Justice, and State, the Judiciary, 

10 and Related Agencies Appropriations Act, 2005— 

11 (1) in subsections (a), (b), and (c) of section 

12 801, by— 

13 (A) striking ‘‘During’’ and all that follows 

14 through ‘‘ 2006, subsection’’ and inserting 

15 ‘‘Subsection’’; and 

16 (B) striking ‘‘shall be administered as 

17 though that subsection reads’’ and inserting ‘‘is 

18 amended to read’’; 

19 (2) in subsection (d) of section 801, by striking 

20 ‘‘During’’ and all that follows through ‘‘ 2006, sub21 section’’ and inserting ‘‘Subsection’’; and 

22 (3) in subsection (e) of section 801, by— 

23 (A) striking ‘‘During’’ and all that follows 

24 through ‘‘2006, subsection’’ and inserting 

25 ‘‘Subsection’’; and 


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1 (B) striking ‘‘shall be administered as 

2 though that subsection’’. 

3 (c) ADJUSTMENT OF TRADEMARK FEES.—Division 

4 B of Public Law 108–447 is amended in title VIII of the 

5 Departments of Commerce, Justice and State, the Judici6 ary and Related Agencies Appropriations Act, 2005, in 

7 section 802(a) by striking ‘‘During fiscal years 2005, 

8 2006 and 2007’’, and inserting ‘‘Until such time as the 

9 Director sets or adjusts the fees otherwise,’’. 

10 (d) EFFECTIVE DATE, APPLICABILITY, AND TRANSI11 TION PROVISIONS.—Division B of Public Law 108–447 is 

12 amended in title VIII of the Departments of Commerce, 

13 Justice and State, the Judiciary and Related Agencies Ap14 propriations Act, 2005, in section 803(a) by striking ‘‘and 

15 shall apply only with respect to the remaining portion of 

16 fiscal year 2005, 2006 and 2007’’. 

17 (e) STATUTORY AUTHORITY.—Section 41(d)(1)(A) of 

18 title 35, United States Code, is amended by striking ‘‘, 

19 and the Director may not increase any such fee there20 after’’. 

21 (f) RULE OF CONSTRUCTION.—Nothing in this sec22 tion shall be construed to affect any other provision of Di23 vision B of Public Law 108–447, including section 801(c) 

24 of title VIII of the Departments of Commerce, Justice and 


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1 State, the Judiciary and Related Agencies Appropriations 

2 Act, 2005. 

3 (g) DEFINITIONS.—In this section, the following defi4 nitions shall apply: 

5 (1) DIRECTOR.—The term ‘‘Director’’ means 

6 the Director of the United States Patent and Trade7 mark Office. 

8 (2) OFFICE.—The term ‘‘Office’’ means the 

9 United States Patent and Trademark Office. 

10 (3) TRADEMARK ACT OF 1946.—The term 

11 ‘‘Trademark Act of 1946’’ means an Act entitled 

12 ‘‘Act to provide for the registration and protection 

13 of trademarks used in commerce, to carry out the 

14 provisions of certain international conventions, and 

15 for other purposes’’, approved July 5, 1946 (15 

16 U.S.C. 1051 et seq.) (commonly referred to as the 

17 Trademark Act of 1946 or the Lanham Act). 

18 (h) ELECTRONIC FILING INCENTIVE.— 

19 (1) IN GENERAL.—Notwithstanding any other 

20 provision of this section, a fee of $400 shall be es21 tablished for each application for an original patent, 

22 except for a design, plant, or provisional application, 

23 that is not filed by electronic means as prescribed by 

24 the Director. The fee established by this subsection 

25 shall be reduced 50 percent for small entities that 


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1 qualify for reduced fees under section 41(h)(1) of 

2 title 35, United States Code. All fees paid under this 

3 subsection shall be deposited in the Treasury as an 

4 offsetting receipt that shall not be available for obli5 gation or expenditure. 

6 (2) EFFECTIVE DATE.—This subsection shall 

7 become effective 60 days after the date of the enact8 ment of this Act. 

9 (i) EFFECTIVE DATE.—Except as provided in sub10 section (h), the provisions of this section shall take effect 

11 upon the date of the enactment of this Act. 

12 SEC. 10. SUPPLEMENTAL EXAMINATION. 

13 (a) IN GENERAL.—Chapter 25 of title 35, United 

14 States Code, is amended by adding at the end the fol15 lowing: 

16 ‘‘§ 257. Supplemental examinations to consider, re17 consider, or correct information 

18 ‘‘(a) IN GENERAL.—A patent owner may request 

19 supplemental examination of a patent in the Office to con20 sider, reconsider, or correct information believed to be rel21 evant to the patent. Within 3 months of the date a request 

22 for supplemental examination meeting the requirements of 

23 this section is received, the Director shall conduct the sup24 plemental examination and shall conclude such examina25 tion by issuing a certificate indicating whether the inforVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00086 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 mation presented in the request raises a substantial new 

2 question of patentability. 

3 ‘‘(b) REEXAMINATION ORDERED.—If a substantial 

4 new question of patentability is raised by 1 or more items 

5 of information in the request, the Director shall order re6 examination of the patent. The reexamination shall be 

7 conducted according to procedures established by chapter 

8 30, except that the patent owner shall not have the right 

9 to file a statement pursuant to section 304. During the 

10 reexamination, the Director shall address each substantial 

11 new question of patentability identified during the supple12 mental examination, notwithstanding the limitations 

13 therein relating to patents and printed publication or any 

14 other provision of chapter 30. 

15 ‘‘(c) EFFECT.— 

16 ‘‘(1) IN GENERAL.—A patent shall not be held 

17 unenforceable on the basis of conduct relating to in18 formation that had not been considered, was inad19 equately considered, or was incorrect in a prior ex20 amination of the patent if the information was con21 sidered, reconsidered, or corrected during a supple22 mental examination of the patent. The making of a 

23 request under subsection (a), or the absence thereof, 

24 shall not be relevant to enforceability of the patent 

25 under section 282. 


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1 ‘‘(2) EXCEPTIONS.— 

2 ‘‘(A) PRIOR ALLEGATIONS.—This sub3 section shall not apply to an allegation pled 

4 with particularity, or set forth with particu5 larity in a notice received by the patent owner 

6 under section 505(j)(2)(B)(iv)(II) of the Fed7 eral Food, Drug, and Cosmetic Act (21 U.S.C. 

8 355(j)(2)(B)(iv)(II)), before the date of a sup9 plemental-examination request under subsection 

10 (a) to consider, reconsider, or correct informa11 tion forming the basis for the allegation. 

12 ‘‘(B) PATENT ENFORCEMENT ACTIONS.— 

13 In an action brought under section 337(a) of 

14 the Tariff Act of 1930 (19 U.S.C. 1337(a)), or 

15 section 281 of this title, this subsection shall 

16 not apply to any defense raised in the action 

17 that is based upon information that was consid18 ered, reconsidered, or corrected pursuant to a 

19 supplemental-examination request under sub20 section (a) unless the supplemental examina21 tion, and any reexamination ordered pursuant 

22 to the request, are concluded before the date on 

23 which the action is brought. 

24 ‘‘(d) FEES AND REGULATIONS.—The Director shall, 

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1 quest for supplemental examination of a patent, and to 

2 consider each item of information submitted in the re3 quest. If reexamination is ordered pursuant to subsection 

4 (a), fees established and applicable to ex parte reexamina5 tion proceedings under chapter 30 shall be paid in addition 

6 to fees applicable to supplemental examination. The Direc7 tor shall promulgate regulations governing the form, con8 tent, and other requirements of requests for supplemental 

9 examination, and establishing procedures for conducting 

10 review of information submitted in such requests. 

11 ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec12 tion shall be construed— 

13 ‘‘(1) to preclude the imposition of sanctions 

14 based upon criminal or antitrust laws (including sec15 tion 1001(a) of title 18, the first section of the Clay16 ton Act, and section 5 of the Federal Trade Com17 mission Act to the extent that section relates to un18 fair methods of competition); 

19 ‘‘(2) to limit the authority of the Director to in20 vestigate issues of possible misconduct and impose 

21 sanctions for misconduct in connection with matters 

22 or proceedings before the Office; or 

23 ‘‘(3) to limit the authority of the Director to 

24 promulgate regulations under chapter 3 relating to 


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1 sanctions for misconduct by representatives prac2 ticing before the Office.’’. 

3 (b) EFFECTIVE DATE.—This section shall take effect 

4 1 year after the date of the enactment of this Act and 

5 shall apply to patents issued before, on, or after that date. 

6 SEC. 11. RESIDENCY OF FEDERAL CIRCUIT JUDGES. 

7 (a) RESIDENCY.—The second sentence of section 

8 44(c) of title 28, United States Code, is repealed. 

9 (b) FACILITIES.—Section 44 of title 28, United 

10 States Code, is amended by adding at the end the fol11 lowing: 

12 ‘‘(e)(1) The Director of the Administrative Office of 

13 the United States Courts shall provide— 

14 ‘‘(A) a judge of the Federal judicial circuit who 

15 lives within 50 miles of the District of Columbia 

16 with appropriate facilities and administrative sup17 port services in the District of the District of Colum18 bia; and 

19 ‘‘(B) a judge of the Federal judicial circuit who 

20 does not live within 50 miles of the District of Co21 lumbia with appropriate facilities and administrative 

22 support services— 

23 ‘‘(i) in the district and division in which 

24 that judge resides; or 


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1 ‘‘(ii) if appropriate facilities are not avail2 able in the district and division in which that 

3 judge resides, in the district and division closest 

4 to the residence of that judge in which such fa5 cilities are available, as determined by the Di6 rector. 

7 ‘‘(2) Nothing in this subsection may be construed to 

8 authorize or require the construction of new facilities.’’. 

9 SEC. 11. RESIDENCY OF FEDERAL CIRCUIT JUDGES. 

10 (a) IN GENERAL.—Section 44(c) of title 28, United 

11 States Code, is amended— 

12 (1) by repealing the second sentence; and 

13 (2) in the third sentence, by striking ‘‘state’’ and 

14 inserting ‘‘State’’. 

15 (b) EFFECTIVE DATE.—This section shall take effect 

16 on the date of enactment of this Act. 

17 SEC. 12. MICRO ENTITY DEFINED. 

18 Chapter 11 of title 35, United States Code, is amend19 ed by adding at the end the following new section: 

20 ‘‘§ 123. Micro entity defined 

21 ‘‘(a) IN GENERAL.—For purposes of this title, the 

22 term ‘micro entity’ means an applicant who makes a cer23 tification under either subsection (b) or (c). 


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1 ‘‘(b) UNASSIGNED APPLICATION.—For an unas2 signed application, each applicant shall certify that the ap3 plicant— 

4 ‘‘(1) qualifies as a small entity, as defined in 

5 regulations issued by the Director; 

6 ‘‘(2) has not been named on 5 or more pre7 viously filed patent applications; 

8 ‘‘(3) has not assigned, granted, or conveyed, 

9 and is not under an obligation by contract or law to 

10 assign, grant, or convey, a license or any other own11 ership interest in the particular application; and 

12 ‘‘(4) does not have a gross income, as defined 

13 in section 61(a) of the Internal Revenue Code (26 

14 U.S.C. 61(a)), exceeding 2.5 times the average gross 

15 income, as reported by the Department of Labor, in 

16 the calendar year immediately preceding the cal17 endar year in which the examination fee is being 

18 paid. 

19 ‘‘(c) ASSIGNED APPLICATION.—For an assigned ap20 plication, each applicant shall certify that the applicant— 

21 ‘‘(1) qualifies as a small entity, as defined in 

22 regulations issued by the Director, and meets the re23 quirements of subsection (b)(4); 

24 ‘‘(2) has not been named on 5 or more pre25 viously filed patent applications; and 


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1 ‘‘(3) has assigned, granted, conveyed, or is 

2 under an obligation by contract or law to assign, 

3 grant, or convey, a license or other ownership inter4 est in the particular application to an entity that has 

5 5 or fewer employees and that such entity has a 

6 gross income, as defined in section 61(a) of the In7 ternal Revenue Code (26 U.S.C. 61(a)), that does 

8 not exceed 2.5 times the average gross income, as 

9 reported by the Department of Labor, in the cal10 endar year immediately preceding the calendar year 

11 in which the examination fee is being paid. 

12 ‘‘(d) INCOME LEVEL ADJUSTMENT.—The gross in13 come levels established under subsections (b) and (c) shall 

14 be adjusted by the Director on October 1, 2009, and every 

15 year thereafter, to reflect any fluctuations occurring dur16 ing the previous 12 months in the Consumer Price Index, 

17 as determined by the Secretary of Labor.’’. 

18 SEC. 13. FUNDING AGREEMENTS. 

19 (a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 

20 35, United States Code, is amended— 

21 (1) by striking ‘‘75 percent’’ and inserting ‘‘15 

22 percent’’; and 

23 (2) by striking ‘‘25 percent’’ and inserting ‘‘85 

24 percent’’. 


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

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

3 this Act and shall apply to patents issued before, on, or 

4 after that date. 

5 SEC. 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR 

6 ART. 

7 (a) IN GENERAL.—For purposes of evaluating an in8 vention under section 102 or 103 of title 35, United States 

9 Code, any strategy for reducing, avoiding, or deferring tax 

10 liability, whether known or unknown at the time of the 

11 invention or application for patent, shall be deemed insuf12 ficient to differentiate a claimed invention from the prior 

13 art. 

14 (b) DEFINITION.—For purposes of this section, the 

15 term ‘‘tax liability’’ refers to any liability for a tax under 

16 any Federal, State, or local law, or the law of any foreign 

17 jurisdiction, including any statute, rule, regulation, or or18 dinance that levies, imposes, or assesses such tax liability. 

19 (c) EFFECTIVE DATE; APPLICABILITY.—This section 

20 shall take effect on the date of enactment of this Act and 

21 shall apply to any patent application pending and any pat22 ent issued on or after that date. 

23 SEC. 15. BEST MODE REQUIREMENT. 

24 (a) IN GENERAL.—Section 282 of title 35, United 

25 State Code, is amended in its second undesignated paraVerDate Mar 15 2010 23:00 Feb 03, 2011 Jkt 099200 PO 00000 Frm 00094 Fmt 6652 Sfmt 6201 E:\BILLS\S23.RS S23

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1 graph by striking paragraph (3) and inserting the fol2 lowing: 

3 ‘‘(3) Invalidity of the patent or any claim in 

4 suit for failure to comply with— 

5 ‘‘(A) any requirement of section 112, ex6 cept that the failure to disclose the best mode 

7 shall not be a basis on which any claim of a 

8 patent may be canceled or held invalid or other9 wise unenforceable; or 

10 ‘‘(B) any requirement of section 251.’’. 

11 (b) CONFORMING AMENDMENT.—Sections 119(e)(1) 

12 and 120 of title 35, United States Code, are each amended 

13 by striking ‘‘the first paragraph of section 112 of this 

14 title’’ and inserting ‘‘section 112(a) (other than the re15 quirement to disclose the best mode)’’. 

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

17 this section shall take effect upon the date of the enact18 ment of this Act and shall apply to proceedings com19 menced on or after that date. 

20 SEC. 16. TECHNICAL AMENDMENTS. 

21 (a) JOINT INVENTIONS.—Section 116 of title 35, 

22 United States Code, is amended— 

23 (1) in the first paragraph, by striking 

24 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN25 TIONS.—When’’; 


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1 (2) in the second paragraph, by striking 

2 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT3 TED INVENTOR.—If a joint inventor’’; and 

4 (3) in the third paragraph— 

5 (A) by striking ‘‘Whenever’’ and in6 serting ‘‘(c) CORRECTION OF ERRORS IN

7 APPLICATION.—Whenever’’; and 

8 (B) by striking ‘‘and such error arose 

9 without any deceptive intent on his part,’’. 

10 (b) FILING OF APPLICATION IN FOREIGN COUN11 TRY.—Section 184 of title 35, United States Code, is 

12 amended— 

13 (1) in the first paragraph— 

14 (A) by striking ‘‘Except when’’ and insert15 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Ex16 cept when’’; and 

17 (B) by striking ‘‘and without deceptive in18 tent’’; 

19 (2) in the second paragraph, by striking ‘‘The 

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

21 term’’; and 

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

23 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA24 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

25 scope’’. 


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1 (c) FILING WITHOUT A LICENSE.—Section 185 of 

2 title 35, United States Code, is amended by striking ‘‘and 

3 without deceptive intent’’. 

4 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

5 of title 35, United States Code, is amended— 

6 (1) in the first paragraph— 

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

8 ‘‘(a) IN GENERAL.—Whenever’’; and 

9 (B) by striking ‘‘without any deceptive in10 tention’’; 

11 (2) in the second paragraph, by striking ‘‘The 

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

13 PATENTS.—The Director’’; 

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

15 provisions’’ and inserting ‘‘(c) APPLICABILITY OF

16 THIS TITLE.—The provisions’’; and 

17 (4) in the last paragraph, by striking ‘‘No re18 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

19 ENLARGING SCOPE OF CLAIMS.—No reissued pat20 ent’’. 

21 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

22 United States Code, is amended— 

23 (1) in the first paragraph, by striking ‘‘When24 ever, without any deceptive intention’’ and inserting 

25 ‘‘(a) IN GENERAL.—Whenever’’; and 


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1 (2) in the second paragraph, by striking ‘‘in 

2 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS3 CLAIMER OR DEDICATION.—In the manner set forth 

4 in subsection (a),’’. 

5 (f) CORRECTION OF NAMED INVENTOR.—Section 

6 256 of title 35, United States Code, is amended— 

7 (1) in the first paragraph— 

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

9 ‘‘(a) CORRECTION.—Whenever’’; and 

10 (B) by striking ‘‘and such error arose with11 out any deceptive intention on his part’’; and 

12 (2) in the second paragraph, by striking ‘‘The 

13 error’’ and inserting ‘‘(b) PATENT VALID IF ERROR

14 CORRECTED.—The error’’. 

15 (g) PRESUMPTION OF VALIDITY.—Section 282 of 

16 title 35, United States Code, is amended— 

17 (1) in the first undesignated paragraph— 

18 (A) by striking ‘‘A patent’’ and inserting 

19 ‘‘(a) IN GENERAL.—A patent’’; and 

20 (B) by striking the third sentence; 

21 (2) in the second undesignated paragraph, by 

22 striking ‘‘The following’’ and inserting ‘‘(b) DE23 FENSES.—The following’’; and 

24 (3) in the third undesignated paragraph, by 

25 striking ‘‘In actions’’ and inserting ‘‘(c) NOTICE OF


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1 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

2 TERM.—In actions’’. 

3 (h) ACTION FOR INFRINGEMENT.—Section 288 of 

4 title 35, United States Code, is amended by striking ‘‘, 

5 without deceptive intention,’’. 

6 (i) REVISER’S NOTES.— 

7 (1) Section 3(e)(2) of title 35, United States 

8 Code, is amended by striking ‘‘this Act,’’ and insert9 ing ‘‘that Act,’’. 

10 (2) Section 202(b)(3) of title 35, United States 

11 Code, is amended by striking ‘‘the section 203(b)’’ 

12 and inserting ‘‘section 203(b)’’. 

13 (2) Section 202 of title 35, United States Code, 

14 is amended— 

15 (A) in subsection (b)(3), by striking ‘‘the 

16 section 203(b)’’ and inserting ‘‘section 203(b)’’; 

17 and 

18 (B) in subsection (c)(7)— 

19 (i) in subparagraph (D), by striking 

20 ‘‘except where it proves’’ and all that follows 

21 through ‘‘; and’’ and inserting: ‘‘except 

22 where it is determined to be infeasible fol23 lowing a reasonable inquiry, a preference in 

24 the licensing of subject inventions shall be 

25 given to small business firms; and’’; and 


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1 (ii) in subparagraph (E)(i), by strik2 ing ‘‘as described above in this clause (D);’’ 

3 and inserting ‘‘described above in this 

4 clause;’’. 

5 (3) Section 209(d)(1) of title 35, United States 

6 Code, is amended by striking ‘‘nontransferrable’’ 

7 and inserting ‘‘nontransferable’’. 

8 (4) Section 287(c)(2)(G) of title 35, United 

9 States Code, is amended by striking ‘‘any state’’ and 

10 inserting ‘‘any State’’. 

11 (5) Section 371(b) of title 35, United States 

12 Code, is amended by striking ‘‘of the treaty’’ and in13 serting ‘‘of the treaty.’’. 

14 (j) UNNECESSARY REFERENCES.— 

15 (1) IN GENERAL.—Title 35, United States 

16 Code, is amended by striking ‘‘of this title’’ each 

17 place that term appears. 

18 (2) EXCEPTION.—The amendment made by 

19 paragraph (1) shall not apply to the use of such 

20 term in the following sections of title 35, United 

21 States Code: 

22 (A) Section 1(c). 

23 (B) Section 101. 

24 (C) Subsections (a) and (b) of section 105. 


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1 (D) The first instance of the use of such 

2 term in section 111(b)(8). 

3 (E) Section 157(a). 

4 (F) Section 161. 

5 (G) Section 164. 

6 (H) Section 171. 

7 (I) Section 251(c), as so designated by this 

8 section. 

9 (J) Section 261. 

10 (K) Subsections (g) and (h) of section 271. 

11 (L) Section 287(b)(1). 

12 (M) Section 289. 

13 (N) The first instance of the use of such 

14 term in section 375(a). 

15 (k) EFFECTIVE DATE.—The amendments made by 

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

17 enactment of this Act and shall apply to proceedings com18 menced on or after that effective date. 

19 SEC. 17. CLARIFICATION OF JURISDICTION. 

20 (a) SHORT TITLE.—This section may be cited as the 

21 ‘‘Intellectual Property Jurisdiction Clarification Act of 

22 2011’’. 

23 (b) STATE COURT JURISDICTION.—Section 1338(a) of 

24 title 28, United States Code, is amended by striking the 

25 second sentence and inserting the following: ‘‘No State court 


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1 shall have jurisdiction over any claim for relief arising 

2 under any Act of Congress relating to patents, plant variety 

3 protection, or copyrights.’’. 

4 (c) COURT OF APPEALS FOR THE FEDERAL CIR5 CUIT.—Section 1295(a)(1) of title 28, United States Code, 

6 is amended to read as follows: 

7 ‘‘(1) of an appeal from a final decision of a dis8 trict court of the United States, the District Court of 

9 Guam, the District Court of the Virgin Islands, or the 

10 District Court of the Northern Mariana Islands, in 

11 any civil action arising under, or in any civil action 

12 in which a party has asserted a compulsory counter13 claim arising under, any Act of Congress relating to 

14 patents or plant variety protection;’’. 

15 (d) REMOVAL.— 

16 (1) IN GENERAL.—Chapter 89 of title 28, United 

17 States Code, is amended by adding at the end the fol18 lowing new section: 

19 ‘‘§ 1454. Patent, plant variety protection, and copy20 right cases 

21 ‘‘(a) IN GENERAL.—A civil action in which any party 

22 asserts a claim for relief arising under any Act of Congress 

23 relating to patents, plant variety protection, or copyrights 

24 may be removed to the district court of the United States 


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1 for the district and division embracing the place where such 

2 action is pending. 

3 ‘‘(b) SPECIAL RULES.—The removal of an action 

4 under this section shall be made in accordance with section 

5 1446 of this chapter, except that if the removal is based 

6 solely on this section— 

7 ‘‘(1) the action may be removed by any party; 

8 and 

9 ‘‘(2) the time limitations contained in section 

10 1446(b) may be extended at any time for cause 

11 shown. 

12 ‘‘(c) REMAND.—If a civil action is removed solely 

13 under this section, the district court— 

14 ‘‘(1) shall remand all claims that are neither a 

15 basis for removal under subsection (a) nor within the 

16 original or supplemental jurisdiction of the district 

17 court under any Act of Congress; and 

18 ‘‘(2) may, under the circumstances specified in 

19 section 1367(c), remand any claims within the sup20 plemental jurisdiction of the district court under sec21 tion 1367.’’. 

22 (2) CONFORMING AMENDMENT.—The table of sec23 tions for chapter 89 of title 28, United States Code, 

24 is amended by adding at the end the following new 

25 item: 

‘‘1454. Patent, plant variety protection, and copyright cases.’’. 


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1 (e) TRANSFER BY COURT OF APPEALS FOR THE FED2 ERAL CIRCUIT.— 

3 (1) IN GENERAL.—Chapter 99 of title 28, United 

4 States Code, is amended by adding at the end the fol5 lowing new section: 

6 ‘‘§ 1632. Transfer by the Court of Appeals for the Fed7 eral Circuit 

8 ‘‘When a case is appealed to the Court of Appeals for 

9 the Federal Circuit under section 1295(a)(1), and no claim 

10 for relief arising under any Act of Congress relating to pat11 ents or plant variety protection is the subject of the appeal 

12 by any party, the Court of Appeals for the Federal Circuit 

13 shall transfer the appeal to the court of appeals for the re14 gional circuit embracing the district from which the appeal 

15 has been taken.’’. 

16 (2) CONFORMING AMENDMENT.—The table of sec17 tions for chapter 99 of title 28, United States Code, 

18 is amended by adding at the end the following new 

19 item: 

‘‘1632. Transfer by the Court of Appeals for the Federal Circuit.’’. 

20 (f) EFFECTIVE DATE.—The amendments made by this 

21 section shall apply to any civil action commenced on or 

22 after the date of the enactment of this Act. 

23 SEC. 17.18. EFFECTIVE DATE; RULE OF CONSTRUCTION. 

24 (a) EFFECTIVE DATE.—Except as otherwise provided 

25 in this Act, the provisions of this Act shall take effect 1 


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1 year after the date of the enactment of this Act and shall 

2 apply to any patent issued on or after that effective date. 

3 (b) CONTINUITY OF INTENT UNDER THE CREATE

4 ACT.—The enactment of section 102(c) of title 35, United 

5 States Code, under section (2)(b) of this Act is done with 

6 the same intent to promote joint research activities that 

7 was expressed, including in the legislative history, through 

8 the enactment of the Cooperative Research and Tech9 nology Enhancement Act of 2004 (Public Law 108–453; 

10 the ‘‘CREATE Act’’), the amendments of which are 

11 stricken by section 2(c) of this Act. The United States 

12 Patent and Trademark Office shall administer section 

13 102(c) of title 35, United States Code, in a manner con14 sistent with the legislative history of the CREATE Act 

15 that was relevant to its administration by the United 

16 States Patent and Trademark Office. 


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Calendar No. 6 

112TH CONGRESS 

1ST SESSION S. 23 

A BILL 

To amend title 35, United States Code, to provide 

F

for patent reform. 

EBRUARY 3, 2011 

Reported with amendments 


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