II 

113TH CONGRESS 

1ST SESSION S. 1720 

To promote transparency in patent ownership and make other improvements 

to the patent system, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

NOVEMBER 18, 2013 

Mr. LEAHY (for himself, Mr. LEE, Mr. WHITEHOUSE, and Ms. KLOBUCHAR) 

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

Committee on the Judiciary 

A BILL 

To promote transparency in patent ownership and make 

other improvements to the patent system, and for other 

purposes. 

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 Transparency and Improvements Act of 2013’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Transparency of patent ownership. 

Sec. 4. Customer stay. 


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Sec. 5. Bad-faith demand letters. 

Sec. 6. Small business education, outreach, and information access. 

Sec. 7. Improved post-issuance procedures. 

Sec. 8. Protection of intellectual-property licenses in bankruptcy. 

Sec. 9. Codification of the double-patenting doctrine for first-inventor-to-file 

patents. 

Sec. 10. Technical corrections to the Leahy-Smith America Invents Act. 

Sec. 11. Reports. 

Sec. 12. Effective date. 

1 SEC. 2. DEFINITIONS. 

2 In this Act: 

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

4 the Under Secretary of Commerce for Intellectual 

5 Property and Director of the United States Patent 

6 and Trademark Office. 

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

8 United States Patent and Trademark Office. 

9 SEC. 3. TRANSPARENCY OF PATENT OWNERSHIP. 

10 (a) JUDICIAL PROCEEDINGS.— 

11 (1) IN GENERAL.—Section 281 of title 35, 

12 United States Code, is amended— 

13 (A) by striking ‘‘A patentee’’ and inserting 

14 ‘‘(a) IN GENERAL.—A patentee’’; and 

15 (B) by adding at the end the following: 

16 ‘‘(b) INITIAL DISCLOSURE.—The court shall require 

17 a patentee who has filed a civil action under subsection 

18 (a) to disclose to the court and to all adverse parties, any 

19 persons, associations of persons, firms, partnerships, cor20 porations (including parent corporations), or other entities 


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1 other than the patentee itself known by the patentee to 

2 have— 

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

4 subject matter in controversy or in a party to the 

5 proceeding; or 

6 ‘‘(2) any other kind of interest that could be 

7 substantially affected by the outcome of the pro8 ceeding. 

9 ‘‘(c) DEFINITIONS.—For purposes of this section, the 

10 terms ‘proceeding’ and ‘financial interest’ have the mean11 ing given those terms in section 455(d) of title 28.’’. 

12 (2) TECHNICAL AND CONFORMING AMEND13 MENT.—Section 290 of title 35, United States Code, 

14 is amended in the first sentence by inserting after 

15 ‘‘inventor,’’ the following: ‘‘any information that a 

16 patentee has publicly disclosed under section 

17 281(b),’’. 

18 (b) PATENT AND TRADEMARK OFFICE PRO19 CEEDINGS.— 

20 (1) IN GENERAL.—Chapter 26 of title 35, 

21 United States Code, is amended by adding at the 

22 end the following: 

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

24 ownership 

25 ‘‘(a) DEFINITIONS.—In this section— 


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

2 to a period of time during which the ultimate parent 

3 entity of an assignee of a patent has not been dis4 closed to the United States Patent and Trademark 

5 Office in accordance with this section; and 

6 ‘‘(2) the term ‘ultimate parent entity’ has the 

7 meaning given the term in section 801.1(a)(3) of 

8 title 16, Code of Federal Regulations, or any suc9 cessor regulation. 

10 ‘‘(b) REQUIREMENT TO DISCLOSE ASSIGNMENT.— 

11 An assignment of all substantial rights in an issued patent 

12 that results in a change to the ultimate parent entity shall 

13 be recorded in the Patent and Trademark Office within 

14 3 months of the assignment. 

15 ‘‘(c) DISCLOSURE REQUIREMENTS.—A disclosure 

16 under subsection (b) shall include the name of the assignee 

17 and the ultimate parent entity of the assignee. 

18 ‘‘(d) FAILURE TO COMPLY.—If subsection (b) has 

19 not been complied with with respect to a patent, in a civil 

20 action in which a party asserts a claim for infringement 

21 of the patent— 

22 ‘‘(1) the party asserting infringement of the 

23 patent may not recover increased damages under 

24 section 284 or attorney fees under section 285 with 


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1 respect to infringing activities taking place during 

2 any period of noncompliance; and 

3 ‘‘(2) the court shall award a prevailing accused 

4 infringer reasonable attorney fees and expenses in5 curred in discovering any previously undisclosed ulti6 mate parent entities in the chain of title.’’. 

7 (2) APPLICABILITY.—The amendment made by 

8 paragraph (1) shall apply to any patent issued on or 

9 after the date of enactment of this Act. 

10 (3) CONFORMING AMENDMENT.—The table of 

11 sections for chapter 26 of title 35, United States 

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

13 new item: 

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

14 SEC. 4. CUSTOMER STAY. 

15 (a) IN GENERAL.—Chapter 29 of title 35, United 

16 States Code, is amended by adding at the end the fol17 lowing new section: 

18 ‘‘§ 299A. Customer stay 

19 ‘‘(a) DEFINITIONS.—In this section— 

20 ‘‘(1) the term ‘covered customer’ means a party 

21 accused of infringing a patent or patents in dispute 

22 based on a covered product or process; 

23 ‘‘(2) the term ‘covered manufacturer’ means a 

24 person who manufactures or supplies, or causes the 


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1 manufacture or supply of, a covered product or proc2 ess, or a relevant part thereof; and 

3 ‘‘(3) the term ‘covered product or process’ 

4 means a component, product, process, system, serv5 ice, method, or a relevant part thereof, that— 

6 ‘‘(A) is alleged to infringe the patent or 

7 patents in dispute; or 

8 ‘‘(B) implements a process alleged to in9 fringe the patent or patents in dispute. 

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

11 a party asserts a claim for relief arising under any Act 

12 of Congress relating to patents (other than an action that 

13 includes a cause of action described in section 271(e) of 

14 this title), the court shall grant a motion to stay at least 

15 the portion of the action against a covered customer that 

16 relates to infringement of a patent involving a covered 

17 product or process if— 

18 ‘‘(1) the covered manufacturer and the covered 

19 customer consent in writing to the stay; 

20 ‘‘(2) the covered manufacturer is a party to the 

21 action or a separate action involving the same patent 

22 or patents relating to the same covered product or 

23 process; 

24 ‘‘(3) the covered customer agrees to be bound 

25 under the principles of collateral estoppel by any 


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1 issues finally decided as to the covered manufacturer 

2 in an action described in paragraph (2) that the cov3 ered customer has in common with the covered man4 ufacturer; and 

5 ‘‘(4) the motion is filed after the first pleading 

6 in the action but not later than the later of— 

7 ‘‘(A) 120 days after service of the first 

8 pleading in the action that specifically identifies 

9 the covered product or process as a basis for 

10 the alleged infringement of the patent by the 

11 covered customer, and specifically identifies how 

12 the covered product or process is alleged to in13 fringe the patent; or 

14 ‘‘(B) the date on which the first scheduling 

15 order in the case is entered. 

16 ‘‘(c) APPLICABILITY.—A stay issued under sub17 section (b) shall apply only to those asserted patents and 

18 products, systems, methods, or components accused of in19 fringement in the action. 

20 ‘‘(d) LIFT OF STAY.— 

21 ‘‘(1) IN GENERAL.—A stay entered under this 

22 section may be lifted upon grant of a motion based 

23 on a showing that— 


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1 ‘‘(A) the action involving the covered man2 ufacturer will not resolve a major issue in suit 

3 against the covered customer; or 

4 ‘‘(B) the stay unreasonably prejudices and 

5 would be manifestly unjust to the party seeking 

6 to lift the stay. 

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

8 entered under this section based on the participation 

9 of the covered manufacturer in a separate action de10 scribed in subsection (b)(2), a motion under para11 graph (1) may only be granted if the court in such 

12 separate action determines that the showing re13 quired under paragraph (1) has been made. 

14 ‘‘(e) WAIVER OF ESTOPPEL EFFECT.—If, following 

15 the grant of a motion to stay under this section, the cov16 ered manufacturer in an action described in subsection 

17 (b)(2)— 

18 ‘‘(1) seeks or consents to entry of a consent 

19 judgment involving one or more of the common 

20 issues that gave rise to the stay; or 

21 ‘‘(2) fails to prosecute, to a final, non-appeal22 able judgment, a final decision as to one or more of 

23 the common issues that gave rise to the stay, 

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

25 judgment or unappealed final decision shall not be binding 


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1 on the covered customer with respect to one or more of 

2 such common issues based on a showing that such an out3 come would unreasonably prejudice and be manifestly un4 just to the covered customer in light of the circumstances 

5 of the case. 

6 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec7 tion shall be construed to limit the ability of a court to 

8 grant any stay, expand any stay granted pursuant to this 

9 section, or grant any motion to intervene, if otherwise per10 mitted by law.’’. 

11 (b) CONFORMING AMENDMENT.—The table of sec12 tions for chapter 29 of title 35, United States Code, is 

13 amended by adding at the end the following new item: 

‘‘299A. Customer stay.’’. 

14 SEC. 5. BAD-FAITH DEMAND LETTERS. 

15 (a) IN GENERAL.—Chapter 29 of title 35, United 

16 States Code, as amended by section 4 of this Act, is 

17 amended by adding at the end the following: 

18 ‘‘SEC. 299B. BAD-FAITH DEMAND LETTERS. 

19 ‘‘(a) DEFINITION.—In this section, the term ‘affili20 ated person’ means a person affiliated with the intended 

21 recipient of a written communication. 

22 ‘‘(b) UNFAIR OR DECEPTIVE ACTS OR PRACTICES.— 

23 It shall be an unfair or deceptive act or practice within 

24 the meaning of section 5(a)(1) of the Federal Trade Com25 mission Act (15 U.S.C. 45(a)(1)) for a person, in connecVerDate Mar 15 2010 18:34 Nov 20, 2013 Jkt 039200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6201 E:\BILLS\S1720.IS S1720

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1 tion with the assertion of a United States patent, to en2 gage in the widespread sending of written communications 

3 that state that the intended recipients or any affiliated 

4 persons are infringing or have infringed the patent and 

5 bear liability or owe compensation to another, if— 

6 ‘‘(1) the communications falsely threaten that 

7 administrative or judicial relief will be sought if com8 pensation is not paid or the infringement issue is not 

9 otherwise resolved; 

10 ‘‘(2) the assertions contained in the commu11 nications lack a reasonable basis in fact or law, in12 cluding, for example, because— 

13 ‘‘(A) the person asserting the patent is not 

14 a person, or does not represent a person, with 

15 the current right to license the patent to, or to 

16 enforce the patent against, the intended recipi17 ents or any affiliated persons; or 

18 ‘‘(B) the communications seek compensa19 tion on account of activities undertaken after 

20 the patent has expired; or 

21 ‘‘(3) the content of the written communications 

22 is likely to materially mislead a reasonable recipient, 

23 including, for example, because the content fails to 

24 include such facts reasonably necessary to inform 

25 the recipient of— 


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1 ‘‘(A) the identity of the person asserting a 

2 right to license the patent to, or enforce the 

3 patent against, the intended recipient or any af4 filiated person; 

5 ‘‘(B) the patent issued by the United 

6 States Patent and Trademark Office alleged to 

7 have been infringed; and 

8 ‘‘(C) the reasons for the assertion that the 

9 patent may be or may have been infringed. 

10 ‘‘(c) ENFORCEMENT BY FEDERAL TRADE COMMIS11 SION.— 

12 ‘‘(1) VIOLATION OF RULE.—The engaging of a 

13 person in an act or practice described in subsection 

14 (b) shall be treated as a violation of a rule defining 

15 an unfair or deceptive act or practice described 

16 under section 18(a)(1)(B) of the Federal Trade 

17 Commission Act (15 U.S.C. 57a(a)(1)(B)). 

18 ‘‘(2) POWERS OF COMMISSION.—The Federal 

19 Trade Commission shall enforce this section in the 

20 same manner, by the same means, and with the 

21 same jurisdiction, powers, and duties as though all 

22 applicable terms and provisions of the Federal Trade 

23 Commission Act (15 U.S.C. 41 et seq.) were incor24 porated into and made a part of this section. 


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1 ‘‘(3) PRIVILEGES AND IMMUNITIES.—Any per2 son who engages in an act or practice described in 

3 subsection (b) shall be subject to the penalties and 

4 entitled to the privileges and immunities provided in 

5 the Federal Trade Commission Act (15 U.S.C. 41 et 

6 seq.).’’. 

7 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

8 The table of sections for chapter 29 of title 35, United 

9 States Code, as amended by section 4 of this Act, is 

10 amended by adding at the end the following: 

‘‘Sec. 299B. Bad-faith demand letters.’’. 

11 (c) RULE OF CONSTRUCTION.—Nothing in any 

12 amendment made by this section shall be construed to 

13 limit the authority of the Federal Trade Commission 

14 under any other provision of law or to provide the Federal 

15 Trade Commission with any additional authority. 

16 SEC. 6. SMALL BUSINESS EDUCATION, OUTREACH, AND IN17 FORMATION ACCESS. 

18 (a) SMALL BUSINESS EDUCATION AND OUT19 REACH.— 

20 (1) RESOURCES FOR SMALL BUSINESS.—Using 

21 existing resources, the Director shall develop edu22 cational resources for small businesses to address 

23 concerns arising from patent infringement. 

24 (2) SMALL BUSINESS PATENT OMBUDSMAN.— 

25 The Patent Ombudsman Program established under 


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1 section 28 of the Leahy-Smith America Invents Act 

2 (35 U.S.C. 2 note) shall coordinate with the existing 

3 small business outreach programs of the Office to 

4 provide education and awareness on abusive patent 

5 litigation practices. 

6 (b) IMPROVING INFORMATION TRANSPARENCY FOR

7 SMALL BUSINESS AND THE UNITED STATES PATENT AND

8 TRADEMARK OFFICE USERS.— 

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

10 Director shall create a user-friendly section on the 

11 official Web site of the Office to notify the public 

12 when a patent case is brought in Federal court and 

13 with respect to each patent at issue in such case, the 

14 Director shall include— 

15 (A) information disclosed pursuant to sec16 tion 290 of title 35, United States Code, as 

17 amended by section 3(b) of this Act; and 

18 (B) any information the Director deter19 mines to be relevant. 

20 (2) FORMAT.—In order to promote accessibility 

21 for the public, the information described in para22 graph (1) shall be searchable by patent number, pat23 ent art area, and entity. 


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1 SEC. 7. IMPROVED POST-ISSUANCE PROCEDURES. 

2 (a) POST-GRANT REVIEW AMENDMENT.—Section 

3 325(e)(2) of title 35, United States Code, is amended by 

4 striking ‘‘or reasonably could have raised’’. 

5 (b) USE OF DISTRICT-COURT CLAIM CONSTRUCTION

6 IN POST-GRANT AND INTER PARTES REVIEWS.— 

7 (1) INTER PARTES REVIEW.—Section 316(a) of 

8 title 35, United States Code, is amended— 

9 (A) in paragraph (12), by striking ‘‘; and’’ 

10 and inserting a semicolon; 

11 (B) in paragraph (13), by striking the pe12 riod at the end and inserting ‘‘; and’’; and 

13 (C) by adding at the end the following new 

14 paragraph: 

15 ‘‘(14) providing that for all purposes under this 

16 chapter— 

17 ‘‘(A) each claim of a patent shall be con18 strued as such claim would be in a civil action 

19 to invalidate a patent under section 282(b), in20 cluding construing each claim of the patent in 

21 accordance with the ordinary and customary 

22 meaning of such claim as understood by one of 

23 ordinary skill in the art and the prosecution 

24 history pertaining to the patent; and 

25 ‘‘(B) if a court has previously construed 

26 the claim or a claim term in a civil action in 


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1 which the patent owner was a party, the Office 

2 shall consider such claim construction.’’. 

3 (2) POST-GRANT REVIEW.—Section 326(a) of 

4 title 35, United States Code, is amended— 

5 (A) in paragraph (11), by striking ‘‘; and’’ 

6 and inserting a semicolon; 

7 (B) in paragraph (12), by striking the pe8 riod at the end and inserting ‘‘; and’’; and 

9 (C) by adding at the end the following new 

10 paragraph: 

11 ‘‘(13) providing that for all purposes under this 

12 chapter— 

13 ‘‘(A) each claim of a patent shall be con14 strued as such claim would be in a civil action 

15 to invalidate a patent under section 282(b), in16 cluding construing each claim of the patent in 

17 accordance with the ordinary and customary 

18 meaning of such claim as understood by one of 

19 ordinary skill in the art and the prosecution 

20 history pertaining to the patent; and 

21 ‘‘(B) if a court has previously construed 

22 the claim or a claim term in a civil action in 

23 which the patent owner was a party, the Office 

24 shall consider such claim construction.’’. 


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1 (3) TECHNICAL AND CONFORMING AMEND2 MENT.—Section 18(a)(1)(A) of the Leahy-Smith 

3 America Invents Act (Public Law 112–29; 126 Stat. 

4 329) is amended by striking ‘‘Section 321(c)’’ and 

5 inserting ‘‘Sections 321(c) and 326(a)(13)’’. 

6 (4) EFFECTIVE DATE.—The amendments made 

7 by this subsection shall take effect upon the expira8 tion of the 90-day period beginning on the date of 

9 the enactment of this Act, and shall apply to any 

10 proceeding under chapter 31 or 32 of title 35, 

11 United States Code, for which the petition for review 

12 is filed on or after such effective date. 

13 SEC. 8. PROTECTION OF INTELLECTUAL-PROPERTY LI14 CENSES IN BANKRUPTCY. 

15 (a) IN GENERAL.—Section 1520(a) of title 11, 

16 United States Code, is amended— 

17 (1) in paragraph (3), by striking ‘‘; and’’ and 

18 inserting a semicolon; 

19 (2) in paragraph (4), by striking the period at 

20 the end and inserting ‘‘; and’’; and 

21 (3) by inserting at the end the following new 

22 paragraph: 

23 ‘‘(5) section 365(n) applies to intellectual prop24 erty of which the debtor is a licensor or which the 

25 debtor has transferred.’’. 


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1 (b) TRADEMARKS.— 

2 (1) IN GENERAL.—Section 101(35A) of title 11, 

3 United States Code, is amended— 

4 (A) in subparagraph (E), by striking ‘‘or’’; 

5 (B) in subparagraph (F), by striking ‘‘title 

6 17;’’ and inserting ‘‘title 17; or’’; and 

7 (C) by adding after subparagraph (F) the 

8 following new subparagraph: ‘‘(G) trademark, 

9 service mark, or trade name, as defined in sec10 tion 1127 of title 15;’’. 

11 (2) CONFORMING AMENDMENT.—Section 

12 365(n)(2) of title 11, United States Code, is amend13 ed— 

14 (A) in subparagraph (B)— 

15 (i) by striking ‘‘royalty payments’’ 

16 and inserting ‘‘royalty or other payments’’; 

17 and 

18 (ii) by striking ‘‘and’’ where it ap19 pears after the semicolon; 

20 (B) in subparagraph (C), by striking the 

21 period and inserting ‘‘; and’’; and 

22 (C) by adding at the end the following new 

23 subparagraph: 

24 ‘‘(D) in the case of a trademark, service 

25 mark, or trade name, the trustee shall not be 


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1 relieved of a contractual obligation to monitor 

2 and control the quality of a licensed product or 

3 service.’’. 

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

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

6 of this Act and shall apply to any case that is pending 

7 on, or for which a petition or complaint is filed on or after, 

8 such date of enactment. 

9 SEC. 9. CODIFICATION OF THE DOUBLE-PATENTING DOC10 TRINE FOR FIRST-INVENTOR-TO-FILE PAT11 ENTS. 

12 (a) AMENDMENT.—Chapter 10 of title 35, United 

13 States Code, is amended by adding at the end the fol14 lowing new section: 

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

16 ‘‘A claimed invention of a patent issued under section 

17 151 (referred to in this section as the ‘first patent’) that 

18 is not prior art to a claimed invention of another patent 

19 (referred to in this section as the ‘second patent’) shall 

20 be considered prior art to the claimed invention of the sec21 ond patent for the purpose of determining the nonobvious22 ness of the claimed invention of the second patent under 

23 section 103 if— 

24 ‘‘(1) the claimed invention of the first patent 

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1 fore the effective filing date of the claimed invention 

2 of the second patent; 

3 ‘‘(2) either— 

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

5 name the same inventor; or 

6 ‘‘(B) the claimed invention of the first pat7 ent would constitute prior art to the claimed in8 vention of the second patent under section 

9 102(a)(2) if an exception under section 

10 102(b)(2) were deemed to be inapplicable and 

11 the claimed invention of the first patent was, or 

12 were deemed to be, effectively filed under sec13 tion 102(d) before the effective filing date of 

14 the claimed invention of the second patent; and 

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

16 disclaimed the rights to enforce the second patent 

17 independently from, and beyond the statutory term 

18 of, the first patent.’’. 

19 (b) REGULATIONS.—The Director shall promulgate 

20 regulations setting forth the form and content of any dis21 claimer required for a patent to be issued in compliance 

22 with section 106 of title 35, United States Code, as added 

23 by subsection (a). Such regulations shall apply to any dis24 claimer filed after a patent has issued. A disclaimer, when 

25 filed, shall be considered for the purpose of determining 


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1 the validity of the patent under section 106 of title 35, 

2 United States Code. 

3 (c) CONFORMING AMENDMENT.—The table of sec4 tions for chapter 10 of title 35, United States Code, is 

5 amended by adding at the end the following new item: 

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

6 (d) EXCLUSIVE RULE.—A patent subject to section 

7 106 of title 35, United States Code, as added by sub8 section (a), shall not be held invalid on any nonstatutory, 

9 double-patenting ground. 

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

11 this section shall take effect on the date of the enactment 

12 of this Act and shall apply to a patent or patent applica13 tion only if both the first and second patents described 

14 in section 106 of title 35, United States Code, as added 

15 by subsection (a), are patents or patent applications that 

16 are described in section 3(n)(1) of the Leahy-Smith Amer17 ica Invents Act (35 U.S.C. 100 note). 

18 SEC. 10. TECHNICAL CORRECTIONS TO THE LEAHY-SMITH 

19 AMERICA INVENTS ACT. 

20 (a) TECHNICAL CORRECTIONS.— 

21 (1) INVENTOR’S OATH OR DECLARATION.— 

22 (A) AMENDMENT.—Section 115(g)(1) of 

23 title 35, United States Code, is amended— 

24 (i) in the matter preceding subpara25 graph (A), by striking ‘‘claims the benefit’’ 


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1 and inserting ‘‘is entitled, as to each inven2 tion claimed in the application, to the ben3 efit’’; and 

4 (ii) in subparagraph (A), by striking 

5 ‘‘meeting the requirements of subsection 

6 (a) was executed by the individual and was 

7 filed in connection with the earlier-filed ap8 plication’’ and inserting the following: ‘‘ex9 ecuted by or on behalf of the individual 

10 was filed in connection with the earlier11 filed application and meets the require12 ments of this section as effective on the 

13 date such oath or declaration was filed’’. 

14 (B) EFFECTIVE DATE.—The amendment 

15 made by subparagraph (A) shall be effective as 

16 if included in the amendment made by section 

17 4(a)(1) of the Leahy-Smith America Invents 

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

19 (2) NOVELTY.— 

20 (A) AMENDMENT.—Section 102(b)(1)(A) 

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

22 striking ‘‘the inventor or joint inventor or by 

23 another’’ and inserting ‘‘the inventor or a joint 

24 inventor or another’’. 


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1 (B) EFFECTIVE DATE.—The amendment 

2 made by subparagraph (A) shall be effective as 

3 if included in the amendment made by section 

4 3(b)(1) of the Leahy-Smith America Invents 

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

6 (3) ASSIGNEE FILERS.— 

7 (A) BENEFIT OF EARLIER FILING DATE; 

8 RIGHT OF PRIORITY.—Section 119(e)(1) of title 

9 35, United States Code, is amended, in the first 

10 sentence, by striking ‘‘by an inventor or inven11 tors named’’ and inserting ‘‘that names the in12 ventor or a joint inventor’’. 

13 (B) BENEFIT OF EARLIER FILING DATE IN

14 THE UNITED STATES.—Section 120 of title 35, 

15 United States Code, is amended, in the first 

16 sentence, by striking ‘‘names an inventor or 

17 joint inventor’’ and inserting ‘‘names the inven18 tor or a joint inventor’’. 

19 (C) EFFECTIVE DATE.—The amendments 

20 made by this paragraph shall take effect on the 

21 date of the enactment of this Act and shall 

22 apply to any patent application, and any patent 

23 issuing from such application, that is filed on or 

24 after September 16, 2012. 

25 (4) DERIVED PATENTS.— 


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1 (A) AMENDMENT.—Section 291(b) of title 

2 35, United States Code, is amended by striking 

3 ‘‘or joint inventor’’ and inserting ‘‘or a joint in4 ventor’’. 

5 (B) EFFECTIVE DATE.—The amendment 

6 made by subparagraph (A) shall be effective as 

7 if included in the amendment made by section 

8 3(h)(1) of the Leahy-Smith America Invents 

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

10 (5) SPECIFICATION.—Notwithstanding section 

11 4(e) of the Leahy-Smith America Invents Act (Pub12 lic Law 112–29; 125 Stat. 297), the amendments 

13 made by subsections (c) and (d) of section 4 of such 

14 Act shall apply to any proceeding or matter, that is 

15 pending on, or filed on or after, the date of the en16 actment of this Act. 

17 (6) PATENT OWNER RESPONSE.— 

18 (A) CONDUCT OF INTER PARTES RE19 VIEW.—Section 316(a)(8) of title 35, United 

20 States Code, is amended by striking ‘‘the peti21 tion under section 313’’ and inserting ‘‘the peti22 tion under section 311’’. 

23 (B) CONDUCT OF POST-GRANT REVIEW.— 

24 Section 326(a)(8) of title 35, United States 

25 Code, is amended by striking ‘‘the petition 


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

2 under section 321’’. 

3 (C) EFFECTIVE DATE.—The amendments 

4 made by this paragraph shall take effect on the 

5 date of the enactment of this Act. 

6 (7) TIME LIMIT FOR COMMENCING MISCONDUCT

7 PROCEEDINGS.— 

8 (A) AMENDMENT.—The fourth sentence of 

9 section 32 of title 35, United States Code, is 

10 amended by striking ‘‘1 year’’ and inserting ‘‘2 

11 years’’. 

12 (B) EFFECTIVE DATE.—The amendment 

13 made by this paragraph shall apply to any ac14 tion in which the Office files a complaint on or 

15 after the date of enactment of this Act. 

16 SEC. 11. REPORTS. 

17 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

18 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY

19 AND ETHICAL BUSINESS PRACTICES.— 

20 (1) STUDY REQUIRED.—The Director, in con21 sultation with the Secretary of Commerce, the Sec22 retary of the Treasury, the Chairman of the Securi23 ties and Exchange Commission, the heads of other 

24 relevant agencies, and interested parties, shall, using 

25 existing resources of the Office, conduct a study— 


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1 (A) to develop legislative recommendations 

2 to ensure greater transparency and account3 ability in patent transactions occurring on the 

4 secondary market; 

5 (B) to examine the economic impact that 

6 the patent secondary market has on the United 

7 States; 

8 (C) to examine licensing and other over9 sight requirements that may be placed on the 

10 patent secondary market, including on the par11 ticipants in such markets, to ensure that the 

12 market is a level playing field and that brokers 

13 in the market have the requisite expertise and 

14 adhere to ethical business practices; and 

15 (D) to examine the requirements placed on 

16 other markets. 

17 (2) SUBMISSION OF STUDY.—Not later than 1 

18 year after the date of the enactment of this Act, the 

19 Director shall submit a report to the Committee on 

20 the Judiciary of the House of Representatives and 

21 the Committee on the Judiciary of the Senate on the 

22 findings and recommendations of the Director from 

23 the study required under paragraph (1). 

24 (b) STUDY ON PATENTS OWNED BY THE UNITED

25 STATES GOVERNMENT.— 


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1 (1) STUDY REQUIRED.—The Director, in con2 sultation with the heads of relevant agencies and in3 terested parties, shall, using existing resources of the 

4 Office, conduct a study on patents owned by the 

5 United States Government that— 

6 (A) examines how such patents are li7 censed and sold, with reference to any litigation 

8 relating to the licensing or sale of such patents; 

9 (B) provides legislative and administrative 

10 recommendations on whether there should be 

11 restrictions placed on patents acquired from the 

12 United States Government; 

13 (C) examines whether or not each relevant 

14 agency maintains adequate records on the pat15 ents owned by such agency, specifically whether 

16 such agency addresses licensing, assignment, 

17 and Government grants for technology related 

18 to such patents; and 

19 (D) provides recommendations to ensure 

20 that each relevant agency has an adequate 

21 point of contact that is responsible for man22 aging the patent portfolio of the agency. 

23 (2) REPORT ON STUDY.—Not later than 6 

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

25 the Director shall submit to the Committee on the 


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1 Judiciary of the House of Representatives and the 

2 Committee on the Judiciary of the Senate a report 

3 on the findings and recommendations of the Director 

4 from the study required under paragraph (1). 

5 (c) STUDY ON PATENT QUALITY AND ACCESS TO

6 THE BEST INFORMATION DURING EXAMINATION.— 

7 (1) GAO STUDY.—The Comptroller General of 

8 the United States shall conduct a study on patent 

9 examination at the Office and the technologies avail10 able to improve examination and improve patent 

11 quality. 

12 (2) CONTENTS OF THE STUDY.—The study re13 quired under paragraph (1) shall include the fol14 lowing: 

15 (A) An examination of patent quality at 

16 the Office. 

17 (B) An examination of ways to improve 

18 quality, specifically through technology, that 

19 shall include examining best practices at foreign 

20 patent offices and the use of existing off-the21 shelf technologies to improve patent examina22 tion. 

23 (C) A description of how patents are clas24 sified. 


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1 (D) An examination of procedures in place 

2 to prevent double patenting through filing by 

3 applicants in multiple art areas. 

4 (E) An examination of the types of off-the5 shelf prior art databases and search software 

6 used by foreign patent offices and governments, 

7 particularly in Europe and Asia, and whether 

8 those databases and search tools could be used 

9 by the Office to improve patent examination. 

10 (F) An examination of any other areas the 

11 Comptroller General determines to be relevant. 

12 (3) REPORT TO CONGRESS.—Not later than 6 

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

14 the Comptroller General shall submit to the Com15 mittee on the Judiciary of the House of Representa16 tives and the Committee on the Judiciary of the 

17 Senate a report on the findings and recommenda18 tions from the study required by this subsection, in19 cluding recommendations for any changes to laws 

20 and regulations that will improve the examination of 

21 patent applications and patent quality. 

22 (d) STUDY ON PATENT SMALL CLAIMS COURT.— 

23 (1) STUDY REQUIRED.— 

24 (A) IN GENERAL.—The Director of the 

25 Administrative Office of the United States 


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1 Courts, in consultation with the Director of the 

2 Federal Judicial Center, shall, using existing 

3 resources, conduct a study to examine the idea 

4 of developing a pilot program for patent small 

5 claims courts in certain judicial districts within 

6 the existing patent pilot program mandated by 

7 Public Law 111–349 (28 U.S.C. 137 note). 

8 (B) CONTENTS OF STUDY.—The study 

9 conducted under subparagraph (A) shall exam10 ine— 

11 (i) the number and qualifications for 

12 judges that could serve on the courts de13 scribed in subparagraph (A); 

14 (ii) how the courts described in sub15 paragraph (A) would be designated and 

16 the necessary criteria; 

17 (iii) the costs that would be incurred 

18 for establishing, maintaining and operating 

19 the pilot program described in subpara20 graph (A); and 

21 (iv) the steps that would be taken to 

22 ensure that the pilot small claims courts 

23 are not misused for abusive patent litiga24 tion. 


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

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

3 the Administrative Office of the United States 

4 Courts shall submit a report to the Committee on 

5 the Judiciary of the House of Representatives and 

6 the Committee on the Judiciary of the Senate on the 

7 findings and recommendations from the study re8 quired under paragraph (1). 

9 SEC. 12. EFFECTIVE DATE. 

10 Except as otherwise provided in this Act, the provi11 sions of this Act shall take effect on the date of the enact12 ment of this Act, and shall apply to any patent issued, 

13 or any action filed, on or after that date. 

Æ 


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