39–008 

113TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 1st Session 113–283 

PROVIDING FOR CONSIDERATION OF THE BILL (H.R. 3309) TO AMEND 

TITLE 35, UNITED STATES CODE, AND THE LEAHY-SMITH AMERICA INVENTS ACT TO MAKE IMPROVEMENTS AND TECHNICAL CORRECTIONS, 

AND FOR OTHER PURPOSES; AND PROVIDING FOR CONSIDERATION OF 

THE BILL (H.R. 1105) TO AMEND THE INVESTMENT ADVISERS ACT OF 

1940 TO PROVIDE A REGISTRATION EXEMPTION FOR PRIVATE EQUITY 

FUND ADVISERS, AND FOR OTHER PURPOSES 

DECEMBER 3, 2013.—Referred to the House Calendar and ordered to be printed 

Mr. NUGENT, from the Committee on Rules, 

submitted the following 

R E P O R T 

[To accompany H. Res. 429] 

The Committee on Rules, having had under consideration House 

Resolution 429, by a vote of 8 to 3, report the same to the House 

with the recommendation that the resolution be adopted. 

SUMMARY OF PROVISIONS OF THE RESOLUTION

The resolution provides for consideration of H.R. 3309, the Innovation Act, under a structured rule. The resolution provides one 

hour of general debate equally divided and controlled by the chair 

and ranking minority member of the Committee on the Judiciary. 

The resolution waives all points of order against consideration of 

the bill. The resolution makes in order as original text for purpose 

of amendment an amendment in the nature of a substitute consisting of the text of Rules Committee Print 113–28 and provides 

that it shall be considered as read. The resolution waives all points 

of order against that amendment in the nature of a substitute. The 

resolution makes in order only those further amendments printed 

in part A of this report. Each such amendment may be offered only 

in the order printed in this report, may be offered only by a Member designated in this report, shall be considered as read, shall be 

debatable for the time specified in this report equally divided and 

controlled by the proponent and an opponent, shall not be subject 

to amendment, and shall not be subject to a demand for division 

of the question in the House or in the Committee of the Whole. The 

resolution waives all points of order against the amendments printed in part A of this report. The rule provides one motion to recommit with or without instructions. 

The resolution also provides for consideration of H.R. 1105, the 

Small Business Capital Access and Job Preservation Act, under a 

structured rule. The resolution provides one hour of debate equally 


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divided and controlled by the chair and ranking minority member 

of the Committee on Financial Services. The resolution waives all 

points of order against consideration of the bill. The resolution provides that an amendment in the nature of a substitute consisting 

of the text of Rules Committee Print 113–29 shall be considered as 

adopted and the bill, as amended, shall be considered as read. The 

resolution waives all points of order against provisions in the bill, 

as amended. The resolution makes in order only the further 

amendment printed in part B of this report if offered by Representative Maloney of New York or her designee. The amendment shall 

be considered as read, shall be separately debatable for 10 minutes 

equally divided and controlled by the proponent and an opponent, 

shall not be subject to amendment, and shall not be subject to a 

demand for division of the question. The resolution waives all 

points of order against the amendment printed in part B of this report. The resolution provides one motion to recommit with or without instructions. 

EXPLANATION OF WAIVERS

Although the resolution waives all points of order against consideration of H.R. 3309, the Committee is not aware of any points of 

order. The waiver is prophylactic in nature. 

Although the resolution waives all points of order against the 

amendment in the nature of a substitute to H.R. 3309 made in 

order as original text, the Committee is not aware of any points of 

order. The waiver is prophylactic in nature. 

Although the resolution waives all points of order against the 

amendments to H.R. 3309 printed in Part A of this report, the 

Committee is not aware of any points of order. The waiver is prophylactic in nature. 

Although the resolution waives all points of order against consideration of H.R. 1105, the Committee is not aware of any points of 

order. The waiver is prophylactic in nature. 

Although the resolution waives all points of order against provisions in H.R. 1105, as amended, the Committee is not aware of any 

points of order. The waiver is prophylactic in nature. 

Although the resolution waives all points of order against the 

amendment to H.R. 1105 printed in Part B of this report, the Committee is not aware of any points of order. The waiver is prophylactic in nature. 

COMMITTEE VOTES

The results of each record vote on an amendment or motion to 

report, together with the names of those voting for and against, are 

printed below: 

Rules Committee record vote No. 92 

Motion by Ms. Slaughter to make in order and provide the appropriate waivers for amendments to H.R. 3309: amendments #10 by 

Rep. Jeffries (NY), which would create pleading parity between 

plaintiffs and defendants; amendment #23 by Rep. Perlmutter 

(CO), which delays subsection (a), (b), and (c) of section 6 until December 1st, 2015 to conform Congressional review of the Federal 

Rules of Civil Procedure in accordance with 28 U.S.C. 2074; amendment #14 by Rep. Conyers Jr. (MI) and Rep. Watt (NC), which ensures that the PTO retains all of the user fees it collects; amendVerDate Mar 15 2010 04:43 Dec 04, 2013 Jkt 039008 PO 00000 Frm 00002 Fmt 6659 Sfmt 6602 E:\HR\OC\HR283.XXX HR283

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ment #11 by Rep. Jeffries (NY), which leaves intact a patent applicant’s ability to challenge the USPTO’s denial of a patent in district court; and amendment #2 by Rep. Johnson (GA) and Rep. 

Conyers Jr. (MI), which strikes section 6 of the bill, which would 

require the Judicial Conference to promulgate certain rules and 

procedures. Defeated: 3–8. 

Majority Members Vote Minority Members Vote 

Ms. Foxx ............................................................ Nay Ms. Slaughter .................................................. Yea 

Mr. Bishop of Utah .......................................... ................... Mr. McGovern ................................................... Yea 

Mr. Cole ............................................................ Nay Mr. Hastings of Florida ................................... ...................

Mr. Woodall ...................................................... Nay Mr. Polis ........................................................... Yea 

Mr. Nugent ....................................................... Nay 

Mr. Webster ...................................................... Nay 

Ms. Ros-Lehtinen ............................................. Nay 

Mr. Burgess ...................................................... Nay 

Mr. Sessions, Chairman ................................... Nay 

Rules Committee record vote No. 93 

Motion by Ms. Foxx to report the rule. Adopted: 8–3. 

Majority Members Vote Minority Members Vote 

Ms. Foxx ............................................................ Yea Ms. Slaughter .................................................. Nay 

Mr. Bishop of Utah .......................................... ................... Mr. McGovern ................................................... Nay 

Mr. Cole ............................................................ Yea Mr. Hastings of Florida ................................... ...................

Mr. Woodall ...................................................... Yea Mr. Polis ........................................................... Nay 

Mr. Nugent ....................................................... Yea 

Mr. Webster ...................................................... Yea 

Ms. Ros-Lehtinen ............................................. Yea 

Mr. Burgess ...................................................... Yea 

Mr. Sessions, Chairman ................................... Yea 

SUMMARY OF THE AMENDMENTS TO H.R. 3309 IN PART A MADE IN

ORDER

1. Goodlatte (VA): MANAGERS Makes a few technical and clarifying changes. Specifically, under Section 3(d), it clarifies that the 

exception in paragraph one applies to biosimilars, it also adds an 

exception for actions seeking relief based on competitive harm, and 

ensures that the provision is not subject to reverse gamesmanship. 

Under Section 6(d) it makes clarifying changes that ensure that 

foreign courts cannot terminate licenses to US IP. Extends time required by the agencies to complete the various studies and reports 

required in the bill. (10 minutes) 

2. Watt (NC): Brings the fee shifting provision in the underlying 

bill more closely aligned with the Equal Access to Justice Act. Allows a judge to consider dilatory or other abusive tactics by the 

prevailing party in determining whether to reduce or deny a fee 

award. (10 minutes) 

3. Polis (CO): Requires claimants to provide additional disclosure 

information in any pre-suit notification to establish a willful infringement claim. (10 minutes) 

4. Massie (KY): Strikes section 5, the ‘‘Customer-suit exception’’ 

provision. (10 minutes) 

5. Jackson Lee (TX): Expands covered customer definition to all 

small businesses so long as their annual revenue does not exceed 

$25 million. (10 minutes) 

6. Jackson Lee (TX): Requires the Director to conduct a study regarding the economic impact of the changes in current law resultVerDate Mar 15 2010 04:43 Dec 04, 2013 Jkt 039008 PO 00000 Frm 00003 Fmt 6659 Sfmt 6602 E:\HR\OC\HR283.XXX HR283

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ing from Sections 3, 4, and 5 of the bill on the ability of individuals 

and small businesses owned by women, veterans, and minorities to 

assert, secure, and vindicate their constitutionally guaranteed exclusive right to their inventions and discoveries. (10 minutes) 

7. Rohrabacher (CA): Strikes 9(a) from the bill and reorder the 

remaining subsections of Section 9. (10 minutes) 

8. Conyers (MI), Watt (NC) SUBSTITUTE: Promotes transparency in patent ownership; protects customers who are targeted 

in infringement suits; directs the PTO to develop educational resources for small businesses; instructs the PTO and others to prepare reports on several issues including the use of deceptive demand letters. (20 minutes) 

SUMMARY OF THE AMENDMENT TO H.R. 1105 IN PART B MADE IN

ORDER

1. Maloney, Carolyn (NY): Requires private equity fund advisers 

to register with the SEC, but directs the SEC to create a simplified 

registration and disclosure regime for small private equity fund advisers. (10 minutes) 

PART A—TEXT OF AMENDMENTS MADE IN ORDER

1. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE GOODLATTE OF VIRGINIA OR HIS DESIGNEE, DEBATABLE FOR 10 MINUTES

Page 12, line 3, strike ‘‘subsection (b)’’ and insert ‘‘subsections (b) 

and (c)’’. 

Page 12, strike lines 14 through 25 and insert the following: 

‘‘(1) TIMELY RESOLUTION OF ACTIONS.—In the case of an action under any provision of Federal law (including an action 

that includes a claim for relief arising under section 271(e)), for 

which resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will 

necessarily affect the rights of a party with respect to the patent, the court shall permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely 

resolution of the action.’’. 

Page 13, insert after line 13 the following: 

‘‘(4) ACTIONS SEEKING RELIEF BASED ON COMPETITIVE

HARM.—The limitation on discovery provided under subsection 

(a) shall not apply to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale 

of any allegedly infringing instrumentality that competes with 

a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement. 

‘‘(c) EXCLUSION FROM DISCOVERY LIMITATION.—The parties may 

voluntarily consent to be excluded, in whole or in part, from the 

limitation on discovery provided under subsection (a) if at least one 

plaintiff and one defendant enter into a signed stipulation, to be 

filed with and signed by the court. With regard to any discovery 

excluded from the requirements of subsection (a) under the signed 

stipulation, with respect to such parties, such discovery shall proceed according to the Federal Rules of Civil Procedure.’’. 

Page 35, strike line 16 and all that follows through page 36, line 

3, and insert the following: 


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(1) IN GENERAL.—Section 1522 of title 11, United States 

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

‘‘(e) Section 365(n) shall apply to cases under this chapter. If the 

foreign representative rejects or repudiates a contract under which 

the debtor is a licensor of intellectual property, the licensee under 

such contract shall be entitled to make the election and exercise 

the rights described in section 365(n).’’. 

Page 38, line 1, strike ‘‘OMBUDSMAN’’ and insert ‘‘OUTREACH’’. 

Page 38, strike line 2 and all that follows through ‘‘programs’’ on 

line 6 and insert ‘‘The existing small business patent outreach programs’’. 

Page 38, lines 8 and 9, strike ‘‘to provide’’ and insert ‘‘shall provide’’. 

Page 40, line 13, strike ‘‘1 year’’ and insert ‘‘18 months’’. 

Page 41, lines 20 and 21, strike ‘‘6 months’’ and insert ‘‘1 year’’. 

Page 42, line 6, strike ‘‘shall conduct a study’’ and insert ‘‘shall, 

using existing resources, conduct a study’’. 

Page 43, lines 9 and 10, strike ‘‘6 months’’ and insert ‘‘1 year’’. 

Page 44, line 3, strike ‘‘courts’’ and insert ‘‘procedures’’. 

Page 44, strike lines 8 through 13 and insert the following: 

(i) the necessary criteria for using small claims procedures; 

Page 44, line 14, strike ‘‘(iii)’’ and insert ‘‘(ii)’’. 

Page 44, line 17, strike ‘‘(iv)’’ and insert ‘‘(iii)’’. 

Page 44, line 18, strike ‘‘courts’’ and insert ‘‘procedures used’’. 

Page 45, lines 7 and 8, strike ‘‘shall conduct a study’’ and insert 

‘‘shall, using existing resources, conduct a study’’. 

Page 46, line 4, strike ‘‘shall conduct a study’’ and insert ‘‘shall, 

using existing resources, conduct a study’’. 

Page 46, lines 13 and 14, strike ‘‘6 months’’ and insert ‘‘1 year’’. 

Page 52, line 5, strike ‘‘name the same inventor’’ and insert 

‘‘name the same individual or individuals as the inventor’’. 

Page 53, line 11, after ‘‘double-patenting ground’’ insert ‘‘based 

on a patent described in section 3(n)(1) of the Leahy-Smith America 

Invents Act (35 U.S.C. 100 note)’’. 

Page 53, lines 13–14, after ‘‘shall take effect’’ insert ‘‘upon the expiration of the 1-year period beginning’’. 

Page 55, line 10, strike ‘‘or patent’’. 

Page 57, strike lines 4 through 13 and insert the following: 

(A) AMENDMENT.—The second sentence of section 115(a) 

of title 35, United States Code, is amended by striking 

‘‘shall execute’’ and inserting ‘‘may be required to execute’’. 

Page 57, line 14, strike ‘‘amendments’’ and insert ‘‘amendment’’. 

Page 59, lines 9 and 10, strike ‘‘2 years’’ and insert ‘‘18 months’’. 

2. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE WATT OF

NORTH CAROLINA OR HIS DESIGNEE, DEBATABLE FOR 10 MINUTES

Page 5, insert the following after line 23 and redesignate succeeding subsections, and references thereto, accordingly: 

‘‘(b) REDUCTION OR DENIAL OF AWARDS.—The court, in its discretion, may reduce the amount to be awarded under subsection (a), 

or deny an award, to the extent that the prevailing party during 

the course of the proceedings engaged in conduct that unduly and 


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unreasonably protracted the final resolution of the matter in controversy. 

3. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE POLIS OF

COLORADO OR HIS DESIGNEE, DEBATABLE FOR 10 MINUTES

Page 14, line 20, insert after ‘‘accused,’’ the following: ‘‘identifies 

the ultimate parent entity of the claimant,’’. 

4. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE MASSIE OF

KENTUCKY OR HIS DESIGNEE, DEBATABLE FOR 10 MINUTES

Strike section 5, redesignate subsequent sections, and amend the 

table of contents accordingly. 

5. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE JACKSON

LEE OF TEXAS OR HER DESIGNEE, DEBATABLE FOR 10 MINUTES

Page 24, strike lines 7 through 10 and insert the following: 

‘‘(1) COVERED CUSTOMER.—The term ‘covered customer’ 

means a party that— 

‘‘(A) is accused of infringing a patent or patents in dispute based on a covered product or process; and 

‘‘(B) is a small business concern as defined under section 

3 of the Small Business Act (15 U.S.C. 632) that has an 

annual revenue of $25,000,000 or less.’’. 

6. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE JACKSON

LEE OF TEXAS OR HER DESIGNEE, DEBATABLE FOR 10 MINUTES

Page 46, after line 22, insert the following: 

(g) STUDY ON IMPACT OF LEGISLATION ON ABILITY OF INDIVIDUALS

AND SMALL BUSINESSES TO PROTECT EXCLUSIVE RIGHTS TO INVENTIONS AND DISCOVERIES.— 

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

Secretary of Commerce, the Director of the Administrative Office of the United States Courts, the Director of the Federal Judicial Center, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study to examine the economic impact of sections 3, 4, 

and 5 of this Act, and any amendments made by such sections, 

on the ability of individuals and small businesses owned by 

women, veterans, and minorities to assert, secure, and vindicate the constitutionally guaranteed exclusive right to inventions and discoveries by such individuals and small business. 

(2) REPORT ON STUDY.—Not later than 2 years after the date 

of the enactment of this Act, the Director shall submit to the 

Committee on the Judiciary of the House of Representatives 

and the Committee on the Judiciary of the Senate a report on 

the findings and recommendations of the Director from the 

study required under paragraph (1). 


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7. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE ROHRABACHER OF CALIFORNIA OR HIS DESIGNEE, DEBATABLE FOR 10 

MINUTES

Page 47, strike line 3 and all that follows through page 48, line 

20, and redesignate succeeding subsections, and references thereto, 

accordingly. 

8. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE CONYERS

JR. OF MICHIGAN OR HIS DESIGNEE, DEBATABLE FOR 20 MINUTES

Strike all after the enacting clause and insert the following: 

SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

(a) SHORT TITLE.—This Act may be cited as the ‘‘Deceptive Patent Practices Reduction Act’’. 

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

follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Transparency of patent ownership. 

Sec. 4. Customer stay. 

Sec. 5. Small business education, outreach, and information access. 

Sec. 6. Codification of the double-patenting doctrine for first-inventor-to-file patents. 

Sec. 7. Technical corrections to the Leahy-Smith America Invents Act. 

Sec. 8. Reports. 

Sec. 9. Effective date. 

SEC. 2. DEFINITIONS. 

In this Act: 

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

the United States Patent and Trademark Office. 

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

SEC. 3. TRANSPARENCY OF PATENT OWNERSHIP. 

(a) JUDICIAL PROCEEDINGS.— 

(1) IN GENERAL.—Section 281 of title 35, United States Code, 

is amended— 

(A) by striking ‘‘A patentee’’ and inserting ‘‘(a) IN GENERAL.—A patentee’’; and 

(B) by adding at the end the following: 

‘‘(b) INITIAL DISCLOSURE.—A patentee who has filed a civil action 

under subsection (a) is required to disclose to the court and to all 

adverse parties, any persons, associations of persons, firms, partnerships, corporations (including parent corporations), or other entities other than the patentee itself known by the patentee to 

have— 

‘‘(1) a financial interest (of any kind) in the subject matter 

in controversy or in a party to the proceeding; or 

‘‘(2) any other kind of interest that could be substantially affected by the outcome of the proceeding. 

‘‘(c) ENFORCEMENT.—The court may enforce the requirement 

under subsection (b) upon a motion by an opposing party or sua 

sponte. 

‘‘(d) DEFINITIONS.—For purposes of this section, the terms ‘proceeding’ and ‘financial interest’ have the meaning given those 

terms in section 455(d) of title 28.’’. 


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(2) TECHNICAL AND CONFORMING AMENDMENT.—Section 290 

of title 35, United States Code, is amended in the first sentence by inserting after ‘‘inventor,’’ the following: ‘‘any information that a patentee has publicly disclosed under section 

281(b),’’. 

(b) PATENT AND TRADEMARK OFFICE PROCEEDINGS.— 

(1) IN GENERAL.—Chapter 26 of title 35, United States Code, 

is amended by adding at the end the following: 

‘‘§ 263. Disclosure of information relating to patent ownership 

‘‘(a) DEFINITIONS.—In this section— 

‘‘(1) the term ‘period of noncompliance’ refers to a period of 

time during which the ultimate parent entity of an assignee of 

a patent has not been disclosed to the United States Patent 

and Trademark Office in accordance with this section; and 

‘‘(2) the term ‘ultimate parent entity’ has the meaning given 

the term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. 

‘‘(b) REQUIREMENT TO DISCLOSE ASSIGNMENT.—An assignment of 

all substantial rights in an issued patent that results in a change 

to the ultimate parent entity shall be recorded in the Patent and 

Trademark Office within 3 months of the assignment. 

‘‘(c) DISCLOSURE REQUIREMENTS.—A disclosure under subsection 

(b) shall include the name of the assignee and the ultimate parent 

entity of the assignee. 

‘‘(d) FAILURE TO COMPLY.—If a party required to make a disclosure under subsection (b) fails to comply with such requirement, in 

a civil action in which that party asserts a claim for infringement 

of the patent, that party may not recover increased damages under 

section 284 or attorney fees under section 285 with respect to infringing activities taking place during any period of noncompliance.’’. 

(2) APPLICABILITY.—The amendment made by paragraph (1) 

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

(3) CONFORMING AMENDMENT.—The table of sections for 

chapter 26 of title 35, United States Code, is amended by adding at the end the following new item: 

‘‘263. Disclosure of information relating to patent ownership.’’. 

SEC. 4. CUSTOMER STAY. 

(a) IN GENERAL.—Chapter 29 of title 35, United States Code, is 

amended by adding at the end the following new section: 

‘‘§ 299A. Customer stay 

‘‘(a) DEFINITIONS.—In this section— 

‘‘(1) the term ‘covered customer’ means a party accused of infringing a patent or patents in dispute based on a covered 

product or process; 

‘‘(2) the term ‘covered manufacturer’ means a person who 

manufactures or supplies, or causes the manufacture or supply 

of, a covered product or process, or a relevant part thereof; and 

‘‘(3) the term ‘covered product or process’ means a component, product, process, system, service, method, or a relevant 

part thereof, that— 


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‘‘(A) is alleged to infringe the patent or patents in dispute, or 

‘‘(B) implements a process alleged to infringe the patent 

or patents in dispute. 

‘‘(b) MOTION FOR STAY.—In a civil action in which a party asserts 

a claim for relief arising under any Act of Congress relating to patents (other than an action that includes a cause of action described 

in section 271(e) of this title), the court shall grant a motion to stay 

at least the portion of the action against a covered customer that 

relates to infringement of a patent involving a covered product or 

process if— 

‘‘(1) the covered manufacturer and the covered customer consent in writing to the stay; 

‘‘(2) the covered manufacturer is a party to the action or a 

separate action involving the same patent or patents relating 

to the same covered product or process; 

‘‘(3) the covered customer agrees to be bound under the principles of collateral estoppel by any issues finally decided as to 

the covered manufacturer in an action described in paragraph 

(2) that the covered customer has in common with the covered 

manufacturer; and 

‘‘(4) the motion is filed after the first pleading in the action 

but not later than the later of— 

‘‘(A) 120 days after service of the first pleading in the action that specifically identifies the covered product or process as a basis for the alleged infringement of the patent by 

the covered customer, and specifically identifies how the 

covered product or process is alleged to infringe the patent; 

or 

‘‘(B) the date on which the first scheduling order in the 

case is entered. 

‘‘(c) APPLICABILITY.—A stay issued under subsection (b) shall 

apply only to those asserted patents and products, systems, methods, or components accused of infringement in the action. 

‘‘(d) VACATING STAY.— 

‘‘(1) IN GENERAL.—A stay entered under this section may be 

vacated upon grant of a motion based on a showing that— 

‘‘(A) the action involving the covered manufacturer will 

not resolve a major issue in suit against the covered customer; or 

‘‘(B) the stay unreasonably prejudices or would be manifestly unjust to the party seeking to vacate the stay. 

‘‘(2) SEPARATE ACTIONS.—In the case of a stay entered under 

this section based on the participation of the covered manufacturer in a separate action described in subsection (b)(2), a motion under paragraph (1) may only be granted if the court in 

such separate action determines that the showing required 

under paragraph (1) has been made. 

‘‘(e) WAIVER OF ESTOPPEL EFFECT.—If, following the grant of a 

motion to stay under this section, the covered manufacturer in an 

action described in subsection (b)(2)— 

‘‘(1) seeks or consents to entry of a consent judgment involving one or more of the common issues that gave rise to the 

stay; or 


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‘‘(2) fails to prosecute, to a final, non-appealable judgment, a 

final decision as to one or more of the common issues that gave 

rise to the stay, 

the court may, upon motion, determine that such consent judgment 

or unappealed final decision shall not be binding on the covered 

customer with respect to one or more of such common issues based 

on a showing that such an outcome would unreasonably prejudice 

or be manifestly unjust to the covered customer in light of the circumstances of the case. 

‘‘(f) RULE OF CONSTRUCTION.—Nothing in this section shall be 

construed to limit the ability of a court to grant, expand, or modify 

any stay granted pursuant to this section, or grant any motion to 

intervene, if otherwise permitted by law.’’. 

(b) CONFORMING AMENDMENT.—The table of sections for chapter 

29 of title 35, United States Code, is amended by adding at the end 

the following new item: 

‘‘299A. Customer stay.’’. 

SEC. 5. SMALL BUSINESS EDUCATION, OUTREACH, AND INFORMATION 

ACCESS. 

(a) SMALL BUSINESS EDUCATION AND OUTREACH.— 

(1) RESOURCES FOR SMALL BUSINESS.—Using existing resources, the Director shall develop educational resources for 

small businesses to address concerns arising from patent infringement. 

(2) SMALL BUSINESS PATENT OMBUDSMAN.—The Patent Ombudsman Program established under section 28 of the LeahySmith America Invents Act (35 U.S.C. 2 note) shall coordinate 

with the existing small business outreach programs of the Office to provide education and awareness on abusive patent litigation practices. 

(b) IMPROVING INFORMATION TRANSPARENCY FOR SMALL BUSINESS

AND THE UNITED STATES PATENT AND TRADEMARK OFFICE USERS.— 

(1) WEB SITE.—Using existing resources, the Director shall 

create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and with respect to each patent at issue in such 

case, the Director shall include— 

(A) information disclosed pursuant to section 290 of title 

35, United States Code, as amended by section 4(a)(2) of 

this Act; and 

(B) any information the Director determines to be relevant. 

(2) FORMAT.—In order to promote accessibility for the public, 

the information described in paragraph (1) shall be searchable 

by patent number, patent art area, and entity. 

SEC. 6. CODIFICATION OF THE DOUBLE-PATENTING DOCTRINE FOR 

FIRST-INVENTOR-TO-FILE PATENTS. 

(a) AMENDMENT.—Chapter 10 of title 35, United States Code, is 

amended by adding at the end the following new section: 

‘‘§ 106. Prior art in cases of double patenting 

‘‘A claimed invention of a patent issued under section 151 (referred to in this section as the ‘first patent’) that is not prior art 

to a claimed invention of another patent (referred to in this section 

as the ‘second patent’) shall be considered prior art to the claimed 


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invention of the second patent for the purpose of determining the 

nonobviousness of the claimed invention of the second patent under 

section 103 if— 

‘‘(1) the claimed invention of the first patent was effectively 

filed under section 102(d) on or before the effective filing date 

of the claimed invention of the second patent; 

‘‘(2) either— 

‘‘(A) the first patent and the second patent name the 

same inventor; or 

‘‘(B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 

102(b)(2) were deemed to be inapplicable and the claimed 

invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and 

‘‘(3) the patentee of the second patent has not disclaimed the 

rights to enforce the second patent independently from, and beyond the statutory term of, the first patent.’’. 

(b) REGULATIONS.—The Director shall promulgate regulations 

setting forth the form and content of any disclaimer required for 

a patent to be issued in compliance with section 106 of title 35, 

United States Code, as added by subsection (a). Such regulations 

shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, 

United States Code. 

(c) CONFORMING AMENDMENT.—The table of sections for chapter 

10 of title 35, United States Code, is amended by adding at the end 

the following new item: 

‘‘106. Prior art in cases of double patenting.’’. 

(d) EXCLUSIVE RULE.—A patent subject to section 106 of title 35, 

United States Code, as added by subsection (a), shall not be held 

invalid on any nonstatutory, double-patenting ground. 

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

shall take effect on the date of the enactment of this Act and shall 

apply to a patent or patent application only if both the first and 

second patents described in section 106 of title 35, United States 

Code, as added by subsection (a), are patents or patent applications 

that are described in section 3(n)(1) of the Leahy-Smith America 

Invents Act (35 U.S.C. 100 note). 

SEC. 7. TECHNICAL CORRECTIONS TO THE LEAHY-SMITH AMERICA INVENTS ACT. 

(a) TECHNICAL CORRECTIONS.— 

(1) INVENTOR’S OATH OR DECLARATION.— 

(A) AMENDMENT.—Section 115(g)(1) of title 35, United 

States Code, is amended— 

(i) in the matter preceding subparagraph (A), by 

striking ‘‘claims the benefit’’ and inserting ‘‘is entitled, 

as to each invention claimed in the application, to the 

benefit’’; and 

(ii) in subparagraph (A), by striking ‘‘meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlierfiled application’’ and inserting the following: ‘‘exeVerDate Mar 15 2010 04:58 Dec 04, 2013 Jkt 039008 PO 00000 Frm 00011 Fmt 6659 Sfmt 6602 E:\HR\OC\HR283.XXX HR283

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cuted by or on behalf of the individual was filed in 

connection with the earlier-filed application and meets 

the requirements of this section as effective on the 

date such oath or declaration was filed’’. 

(B) EFFECTIVE DATE.—The amendment made by subparagraph (A) shall be effective as if included in the 

amendment made by section 4(a)(1) of the Leahy-Smith 

America Invents Act (Public Law 112–29; 125 Stat. 293). 

(2) NOVELTY.— 

(A) AMENDMENT.—Section 102(b)(1)(A) of title 35, United 

States Code, is amended by striking ‘‘the inventor or joint 

inventor or by another’’ and inserting ‘‘the inventor or a 

joint inventor or another’’. 

(B) EFFECTIVE DATE.—The amendment made by subparagraph (A) shall be effective as if included in the 

amendment made by section 3(b)(1) of the Leahy-Smith 

America Invents Act (Public Law 112–29; 125 Stat. 285). 

(3) ASSIGNEE FILERS.— 

(A) BENEFIT OF EARLIER FILING DATE; RIGHT OF PRIORITY.—Section 119(e)(1) of title 35, United States Code, is 

amended, in the first sentence, by striking ‘‘by an inventor 

or inventors named’’ and inserting ‘‘that names the inventor or a joint inventor’’. 

(B) BENEFIT OF EARLIER FILING DATE IN THE UNITED

STATES.—Section 120 of title 35, United States Code, is 

amended, in the first sentence, by striking ‘‘names an inventor or joint inventor’’ and inserting ‘‘names the inventor 

or a joint inventor’’. 

(C) EFFECTIVE DATE.—The amendments made by this 

paragraph shall take effect on the date of the enactment 

of this Act and shall apply to any patent application, and 

any patent issuing from such application, that is filed on 

or after September 16, 2012. 

(4) DERIVED PATENTS.— 

(A) AMENDMENT.—Section 291(b) of title 35, United 

States Code, is amended by striking ‘‘or joint inventor’’ and 

inserting ‘‘or a joint inventor’’. 

(B) EFFECTIVE DATE.—The amendment made by subparagraph (A) shall be effective as if included in the 

amendment made by section 3(h)(1) of the Leahy-Smith 

America Invents Act (Public Law 112–29; 125 Stat. 288). 

(5) SPECIFICATION.—Notwithstanding section 4(e) of the 

Leahy-Smith America Invents Act (Public Law 112–29; 125 

Stat. 297), the amendments made by subsections (c) and (d) of 

section 4 of such Act shall apply to any proceeding or matter, 

that is pending on, or filed on or after, the date of the enactment of this Act. 

(6) PATENT OWNER RESPONSE.— 

(A) CONDUCT OF INTER PARTES REVIEW.—Section 

316(a)(8) of title 35, United States Code, is amended by 

striking ‘‘the petition under section 313’’ and inserting ‘‘the 

petition under section 311’’. 

(B) CONDUCT OF POST-GRANT REVIEW.—Section 326(a)(8) 

of title 35, United States Code, is amended by striking ‘‘the 


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petition under section 323’’ and inserting ‘‘the petition 

under section 321’’. 

(C) EFFECTIVE DATE.—The amendments made by this 

paragraph shall take effect on the date of the enactment 

of this Act. 

(7) TIME LIMIT FOR COMMENCING MISCONDUCT PRO- CEEDINGS.— (A) AMENDMENT.—The fourth sentence of section 32 of 

title 35, United States Code, is amended by striking ‘‘1 

year’’ and inserting ‘‘2 years’’. 

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

paragraph shall apply to any action in which the Office 

files a complaint on or after the date of enactment of this 

Act. 

(b) POST-GRANT REVIEW AMENDMENT.—Section 325(e)(2) of title 

35, United States Code, is amended by striking ‘‘or reasonably 

could have raised’’. 

(c) CLARIFICATION OF JURISDICTION.—Section 1338 of title 28, 

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

‘‘(d) For purposes of this section, section 1454, and section 

1295(a), a claim of legal malpractice that necessarily raises a disputed question of patent law shall be deemed to arise under an Act 

of Congress relating to patents.’’. 

SEC. 8. REPORTS. 

(a) STUDY ON SECONDARY MARKET OVERSIGHT FOR PATENT

TRANSACTIONS TO PROMOTE TRANSPARENCY AND ETHICAL BUSINESS

PRACTICES.— 

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

Secretary of Commerce, the Secretary of the Treasury, the 

Chairman of the Securities and Exchange Commission, the 

heads of other relevant agencies, and interested parties, shall, 

using existing resources of the Office, conduct a study— 

(A) to develop legislative recommendations to ensure 

greater transparency and accountability in patent transactions occurring on the secondary market; 

(B) to examine the economic impact that the patent secondary market has on the United States; 

(C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, 

including on the participants in such markets, to ensure 

that the market is a level playing field and that brokers 

in the market have the requisite expertise and adhere to 

ethical business practices; and 

(D) to examine the requirements placed on other markets. 

(2) SUBMISSION OF STUDY.—Not later than 18 months after 

the date of the enactment of this Act, the Director shall submit 

a report to the Committee on the Judiciary of the House of 

Representatives and the Committee on the Judiciary of the 

Senate on the findings and recommendations of the Director 

from the study required under paragraph (1). 

(b) STUDY ON PATENTS OWNED BY THE UNITED STATES GOVERNMENT.— 

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

heads of relevant agencies and interested parties, shall, using 


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existing resources of the Office, conduct a study on patents 

owned by the United States Government that— 

(A) examines how such patents are licensed and sold, 

with reference to any litigation relating to the licensing or 

sale of such patents; 

(B) provides legislative and administrative recommendations on whether there should be restrictions placed on 

patents acquired from the United States Government; 

(C) examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, 

assignment, and Government grants for technology related 

to such patents; and 

(D) provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency. 

(2) REPORT ON STUDY.—Not later than 9 months after the 

date of completion of the study required by subsection (a)(1), 

the Director shall submit to the Committee on the Judiciary of 

the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph 

(1). 

(c) STUDY ON PATENT QUALITY AND ACCESS TO THE BEST INFORMATION DURING EXAMINATION.— 

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

States shall conduct a study on patent examination at the Office and the technologies available to improve examination and 

improve patent quality. 

(2) CONTENTS OF THE STUDY.—The study required under 

paragraph (1) shall include the following: 

(A) An examination of patent quality at the Office. 

(B) An examination of ways to improve quality, specifically through technology, that shall include examining best 

practices at foreign patent offices and the use of existing 

off-the-shelf technologies to improve patent examination. 

(C) A description of how patents are classified. 

(D) An examination of procedures in place to prevent 

double patenting through filing by applicants in multiple 

art areas. 

(E) An examination of the types of off-the-shelf prior art 

databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, 

and whether those databases and search tools could be 

used by the Office to improve patent examination. 

(F) An examination of any other areas the Comptroller 

General determines to be relevant. 

(3) REPORT TO CONGRESS.—Not later than 6 months after the 

date of the completion of the study required by subsection 

(b)(1), the Comptroller General shall submit to the Committee 

on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings 

and recommendations from the study required by this subsection, including recommendations for any changes to laws 


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and regulations that will improve the examination of patent 

applications and patent quality. 

(d) STUDY ON PATENT SMALL CLAIMS COURT.— (1) STUDY REQUIRED.— (A) IN GENERAL.—The Director of the Administrative Office of the United States Courts, in consultation with the 

Director of the Federal Judicial Center, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims courts in 

certain judicial districts within the existing patent pilot 

program mandated by Public Law 111–349 (28 U.S.C. 137 

note). 

(B) CONTENTS OF STUDY.—The study conducted under 

subparagraph (A) shall examine— 

(i) the number and qualifications for judges that 

could serve on the courts described in subparagraph 

(A); 

(ii) how the courts described in subparagraph (A) 

would be designated and the necessary criteria; 

(iii) the costs that would be incurred for establishing, maintaining and operating the pilot program 

described in subparagraph (A); and 

(iv) the steps that would be taken to ensure that the 

pilot small claims courts are not misused for abusive 

patent litigation. 

(2) REPORT.—Not later than 1 year after the date of the enactment of this Act, the Director of the Administrative Office 

of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and 

the Committee on the Judiciary of the Senate on the findings 

and recommendations from the study required under paragraph (1). 

(e) STUDY ON BAD-FAITH DEMAND LETTERS.— (1) STUDY.—The Intellectual Property Enforcement Coordinator, in consultation with the Director, shall conduct a study 

of the practice by a person, in connection with the assertion of 

a United States patent, of sending written communications 

that state that the intended recipients or any affiliated persons 

of such recipients are infringing or have infringed the patent 

and bear liability or owe compensation to another, whereby— 

(A) the communications falsely threaten that administrative or judicial relief will be sought if compensation is 

not paid or the infringement issue is not otherwise resolved; 

(B) the assertions contained in the communications lack 

a reasonable basis in fact or law, including, for example, 

because— 

(i) the person asserting the patent is not a person, 

or does not represent a person, with the current right 

to license the patent to, or to enforce the patent 

against, the intended recipients or any such affiliated 

persons; or 

(ii) the communications seek compensation on account of activities undertaken after the patent has expired; or 


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(C) the content of the written communications is likely 

to materially mislead a reasonable recipient, including, for 

example, because the content fails to include such facts 

reasonably necessary to inform the recipient of— 

(i) the identity of the person asserting a right to license the patent to, or enforce the patent against, the 

intended recipient or any affiliated person of the recipient; 

(ii) the patent issued by the United States Patent 

and Trademark Office alleged to have been infringed; 

and 

(iii) the reasons for the assertion that the patent 

may be or may have been infringed. 

(2) REPORT TO CONGRESS.—Not later than 18 months after 

the date of the enactment of this Act, the Intellectual Property 

Enforcement Coordinator shall submit to the Committee on the 

Judiciary of the House of Representatives and the Committee 

on the Judiciary of the Senate a report on the study conducted 

under paragraph (1), including recommendations for any 

changes to laws and regulations that will deter any abuses 

found in the practice described in paragraph (1). 

SEC. 9. EFFECTIVE DATE. 

Except as otherwise provided in this Act, the provisions of this 

Act shall take effect on the date of the enactment of this Act, and 

shall apply to any patent issued, or any action filed, on or after 

that date. 

PART B—TEXT OF AMENDMENT MADE IN ORDER

1. AN AMENDMENT TO BE OFFERED BY REPRESENTATIVE CAROLYN

MALONEY OF NEW YORK OR HER DESIGNEE, DEBATABLE FOR 10 

MINUTES

Page 1, strike line 10 and all that follows through page 2, line 

17, and insert the following: 

‘‘(o) SIMPLIFIED REGISTRATION AND DISCLOSURE FOR SMALL PRIVATE EQUITY FUND ADVISERS.— 

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

shall promulgate rules providing for a simplified procedure for 

registration and disclosure under this section for any investment adviser acting as an investment adviser to a private equity fund or funds that, in the aggregate, have assets under 

management in the United States of between $150,000,000 and 

$1,000,000,000. 

‘‘(2) TAILORED APPLICATION.—The rules promulgated under 

paragraph (1) shall take into account compliance costs, fund 

size, governance, and any other factors that the Commission 

determines necessary. 

‘‘(3) PRIVATE EQUITY FUND DEFINED.—Not later than 6 

months after the date of enactment of this subsection, the 

Commission shall issue final rules to define the term ‘private 

equity fund’ for purposes of this subsection.’’. 

Æ 


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