IB 

Union Calendar No. 177 

114TH CONGRESS 

1ST SESSION H. R. 9 

[Report No. 114–235] 

To amend title 35, United States Code, and the Leahy-Smith America Invents 

Act to make improvements and technical corrections, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

FEBRUARY 5, 2015 

Mr. GOODLATTE (for himself, Mr. DEFAZIO, Mr. ISSA, Mr. NADLER, Mr. 

SMITH of Texas, Ms. LOFGREN, Mr. CHABOT, Ms. ESHOO, Mr. FORBES, 

Mr. PIERLUISI, Mr. CHAFFETZ, Mr. JEFFRIES, Mr. MARINO, Mr. 

FARENTHOLD, Mr. HOLDING, Mr. JOHNSON of Ohio, Mr. HUFFMAN, Mr. 

HONDA, Mr. LARSEN of Washington, and Mr. THOMPSON of California) 

introduced the following bill; which was referred to the Committee on the 

Judiciary 

JULY 29, 2015 

Additional sponsors: Mr. SWALWELL of California, Mr. PEARCE, Mr. SESSIONS, Mr. FINCHER, Mr. AMODEI, Mr. HARDY, Mr. CLEAVER, and Mr. 

CULBERSON

JULY 29, 2015 

Reported with an amendment, committed to the Committee of the Whole 

House on the State of the Union, and ordered to be printed 

[Strike out all after the enacting clause and insert the part printed in italic] 

[For text of introduced bill, see copy of bill as introduced on February 5, 2015] 

mstockstill on DSK4VPTVN1PROD with BILLS

2 

•HR 9 RH

A BILL 

To amend title 35, United States Code, and the LeahySmith America Invents Act to make improvements and 

technical corrections, and for other purposes. 

mstockstill on DSK4VPTVN1PROD with BILLS

3 

•HR 9 RH

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 ‘‘In5 novation Act’’. 

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. Patent infringement actions. 

Sec. 4. Transparency of patent ownership. 

Sec. 5. Customer-suit exception. 

Sec. 6. Procedures and practices to implement recommendations of the Judicial 

Conference. 

Sec. 7. Small business education, outreach, and information access. 

Sec. 8. Studies on patent transactions, quality, and examination. 

Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act. 

Sec. 10. Effective date. 

8 SEC. 2. DEFINITIONS. 

9 In this Act: 

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

11 Under Secretary of Commerce for Intellectual Prop12 erty and Director of the United States Patent and 

13 Trademark Office. 

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

15 United States Patent and Trademark Office. 

16 SEC. 3. PATENT INFRINGEMENT ACTIONS. 

17 (a) PLEADING REQUIREMENTS.— 

18 (1) AMENDMENT.—Chapter 29 of title 35, United 

19 States Code, is amended by inserting after section 281 

20 the following: 

mstockstill on DSK4VPTVN1PROD with BILLS

4 

•HR 9 RH

1 ‘‘§ 281A. Pleading requirements for patent infringe2 ment actions 

3 ‘‘(a) PLEADING REQUIREMENTS.—Except as provided 

4 in subsection (b), in a civil action in which a party asserts 

5 a claim for relief arising under any Act of Congress relating 

6 to patents, a party alleging infringement shall include in 

7 the initial complaint, counterclaim, or cross-claim for pat8 ent infringement, unless the information is not reasonably 

9 accessible to such party, the following: 

10 ‘‘(1) An identification of each patent allegedly 

11 infringed. 

12 ‘‘(2) An identification of all claims necessary to 

13 produce the identification (under paragraph (3)) of 

14 each process, machine, manufacture, or composition of 

15 matter (referred to in this section as an ‘accused in16 strumentality’) that is alleged to infringe any claim 

17 of each patent that is identified under paragraph (1). 

18 ‘‘(3) For each claim identified under paragraph 

19 (2), an identification of each accused instrumentality 

20 alleged to infringe the claim. 

21 ‘‘(4) For each accused instrumentality identified 

22 under paragraph (3), an identification with particu23 larity, if known, of— 

24 ‘‘(A) the name or model number (or a rep25 resentative model number) of each accused in26 strumentality; or 

mstockstill on DSK4VPTVN1PROD with BILLS

5 

•HR 9 RH

1 ‘‘(B) if there is no name or model number, 

2 a description of each accused instrumentality. 

3 ‘‘(5) For each accused instrumentality identified 

4 under paragraph (3), a clear and concise statement 

5 of— 

6 ‘‘(A) where each element of each claim iden7 tified under paragraph (2) is found within the 

8 accused instrumentality; and 

9 ‘‘(B) with detailed specificity, how each 

10 limitation of each claim identified under para11 graph (2) is met by the accused instrumentality. 

12 ‘‘(6) For each claim of indirect infringement, a 

13 description of the acts of the alleged indirect infringer 

14 that contribute to or are inducing the direct infringe15 ment. 

16 ‘‘(7) A description of the authority of the party 

17 alleging infringement to assert each patent identified 

18 under paragraph (1) and of the grounds for the 

19 court’s jurisdiction. 

20 ‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—If in21 formation required to be disclosed under subsection (a) is 

22 not readily accessible to a party after an inquiry reasonable 

23 under the circumstances, as required by Rule 11 of the Fed24 eral Rules of Civil Procedure, that information may instead 

25 be generally described, along with an explanation of why 

mstockstill on DSK4VPTVN1PROD with BILLS

6 

•HR 9 RH

1 such undisclosed information was not readily accessible, 

2 and of any efforts made by such party to access such infor3 mation. 

4 ‘‘(c) AMENDMENT OF PLEADINGS.—Nothing in this 

5 section shall be construed to affect a party’s ability to 

6 amend pleadings as specified in the Federal Rules of Civil 

7 Procedure. Amendments permitted by the court are subject 

8 to the pleading requirements set forth in this section. 

9 ‘‘(d) CONFIDENTIAL INFORMATION.—A party required 

10 to disclose information described under subsection (a) may 

11 file, under seal, information believed to be confidential, with 

12 a motion setting forth good cause for such sealing. If such 

13 motion is denied by the court, the party may seek to file 

14 an amended complaint. 

15 ‘‘(e) EXEMPTION.—A civil action that includes a claim 

16 for relief arising under section 271(e)(2) shall not be subject 

17 to the requirements of subsection (a).’’. 

18 (2) CONFORMING AMENDMENT.—The table of sec19 tions for chapter 29 of title 35, United States Code, 

20 is amended by inserting after the item relating to sec21 tion 281 the following new item: 

‘‘281A. Pleading requirements for patent infringement actions.’’. 

22 (b) FEES AND OTHER EXPENSES.— 

23 (1) AMENDMENT.—Section 285 of title 35, 

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

mstockstill on DSK4VPTVN1PROD with BILLS

7 

•HR 9 RH

1 ‘‘§ 285. Fees and other expenses 

2 ‘‘(a) AWARD.—The court shall award, to a prevailing 

3 party, reasonable fees and other expenses incurred by that 

4 party in connection with a civil action in which any party 

5 asserts a claim for relief arising under any Act of Congress 

6 relating to patents, unless the court finds that the position 

7 and conduct of the nonprevailing party or parties were rea8 sonably justified in law and fact or that special cir9 cumstances (such as severe economic hardship to a named 

10 inventor) make an award unjust. 

11 ‘‘(b) CERTIFICATION AND RECOVERY.—Upon motion 

12 of any party to the action, the court shall require another 

13 party to the action to certify whether or not the other party 

14 will be able to pay an award of fees and other expenses 

15 if such an award is made under subsection (a). If a nonpre16 vailing party is unable to pay an award that is made 

17 against it under subsection (a), the court may make a party 

18 that has been joined under section 299(d) with respect to 

19 such party liable for the unsatisfied portion of the award. 

20 ‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac21 tion who asserts a claim for relief arising under any Act 

22 of Congress relating to patents against another party, and 

23 who subsequently unilaterally (i) seeks dismissal of the ac24 tion without consent of the other party and (ii) extends to 

25 such other party a covenant not to sue for infringement 

26 with respect to the patent or patents at issue, may be the 

mstockstill on DSK4VPTVN1PROD with BILLS

8 

•HR 9 RH

1 subject of a motion for attorneys fees under subsection (a) 

2 as if it were a non-prevailing party, unless the party assert3 ing such claim would have been entitled, at the time that 

4 such covenant was extended, to dismiss voluntarily the ac5 tion without a court order under Rule 41 of the Federal 

6 Rules of Civil Procedure, or the interests of justice require 

7 otherwise.’’. 

8 (2) CONFORMING AMENDMENT AND AMEND9 MENT.— 

10 (A) CONFORMING AMENDMENT.—The item 

11 relating to section 285 of the table of sections for 

12 chapter 29 of title 35, United States Code, is 

13 amended to read as follows: 

‘‘285. Fees and other expenses.’’. 

14 (B) AMENDMENT.—Section 273 of title 35, 

15 United States Code, is amended by striking sub16 section (f). 

17 (C) AMENDMENT.— 

18 (i) IN GENERAL.—Section 273 of title 

19 35, United States Code, as amended by sub20 paragraph (B), is further amended by strik21 ing subsection (g). 

22 (ii) EFFECTIVE DATE.—The amend23 ment made by this subparagraph shall be 

24 effective as if included in the amendment 

mstockstill on DSK4VPTVN1PROD with BILLS

9 

•HR 9 RH

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

2 America Invents Act (Public Law 112–29). 

3 (3) EFFECTIVE DATE.—Except as otherwise pro4 vided in this subsection, the amendments made by 

5 this subsection shall take effect on the date of the en6 actment of this Act and shall apply to any action for 

7 which a complaint is filed on or after the first day 

8 of the 6-month period ending on that effective date. 

9 (c) JOINDER OF INTERESTED PARTIES.—Section 299 

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

11 the end the following new subsection: 

12 ‘‘(d) JOINDER OF INTERESTED PARTIES.— 

13 ‘‘(1) JOINDER.—Except as otherwise provided 

14 under this subsection, in a civil action arising under 

15 any Act of Congress relating to patents in which fees 

16 and other expenses have been awarded under section 

17 285 to a prevailing party defending against an alle18 gation of infringement of a patent claim, and in 

19 which the nonprevailing party alleging infringement 

20 is unable to pay the award of fees and other expenses, 

21 the court shall grant a motion by the prevailing party 

22 to join an interested party if such prevailing party 

23 shows that the nonprevailing party has no substantial 

24 interest in the subject matter at issue other than as25 serting such patent claim in litigation. 

mstockstill on DSK4VPTVN1PROD with BILLS

10 

•HR 9 RH

1 ‘‘(2) LIMITATION ON JOINDER.— 

2 ‘‘(A) DISCRETIONARY DENIAL OF MOTION.— 

3 The court may deny a motion to join an inter4 ested party under paragraph (1) if— 

5 ‘‘(i) the interested party is not subject 

6 to service of process; or 

7 ‘‘(ii) joinder under paragraph (1) 

8 would deprive the court of subject matter ju9 risdiction or make venue improper. 

10 ‘‘(B) REQUIRED DENIAL OF MOTION.—The 

11 court shall deny a motion to join an interested 

12 party under paragraph (1) if— 

13 ‘‘(i) the interested party did not timely 

14 receive the notice required by paragraph 

15 (3); or 

16 ‘‘(ii) within 30 days after receiving the 

17 notice required by paragraph (3), the inter18 ested party renounces, in writing and with 

19 notice to the court and the parties to the ac20 tion, any ownership, right, or direct finan21 cial interest (as described in paragraph (4)) 

22 that the interested party has in the patent 

23 or patents at issue. 

24 ‘‘(3) NOTICE REQUIREMENT.—An interested 

25 party may not be joined under paragraph (1) unless 

mstockstill on DSK4VPTVN1PROD with BILLS

11 

•HR 9 RH

1 it has been provided actual notice, within 30 days 

2 after the expiration of the time period during which 

3 a certification under paragraph (4)(B) is required to 

4 be filed, that the interested party has been identified 

5 in the initial disclosure under section 290(b) and that 

6 such party may therefore be an interested party sub7 ject to joinder under this subsection. Such notice shall 

8 be provided by the party who subsequently moves to 

9 join the interested party under paragraph (1), and 

10 shall include language that— 

11 ‘‘(A) identifies the action, the parties there12 to, the patent or patents at issue, and the plead13 ing or other paper that identified the party 

14 under section 290(b); and 

15 ‘‘(B) informs the party that it may be 

16 joined in the action and made subject to paying 

17 an award of fees and other expenses under sec18 tion 285(b) if— 

19 ‘‘(i) fees and other expenses are award20 ed in the action against the party alleging 

21 infringement of the patent or patents at 

22 issue under section 285(a); 

23 ‘‘(ii) the party alleging infringement is 

24 unable to pay the award of fees and other 

25 expenses; 

mstockstill on DSK4VPTVN1PROD with BILLS

12 

•HR 9 RH

1 ‘‘(iii) the party receiving notice under 

2 this paragraph is determined by the court 

3 to be an interested party; and 

4 ‘‘(iv) the party receiving notice under 

5 this paragraph has not, within 30 days 

6 after receiving such notice, renounced in 

7 writing, and with notice to the court and 

8 the parties to the action, any ownership, 

9 right, or direct financial interest (as de10 scribed in paragraph (4)) that the interested 

11 party has in the patent or patents at issue. 

12 ‘‘(4) ADDITIONAL REQUIREMENTS FOR JOIN13 DER.— 

14 ‘‘(A) INITIAL STATEMENT.—This subsection 

15 shall not apply to an action unless a party de16 fending against an allegation of infringement of 

17 a patent claim files, not later than 14 days be18 fore the date on which a scheduling conference is 

19 held or the date on which a scheduling order is 

20 due under Rule 16(b) of the Federal Rules of 

21 Civil Procedure, a statement that such party 

22 holds a good faith belief, based on publicly avail23 able information and any other information 

24 known to such party, that the party alleging in25 fringement has no substantial interest in the submstockstill on DSK4VPTVN1PROD with BILLS

13 

•HR 9 RH

1 ject matter at issue other than asserting the pat2 ent in litigation. 

3 ‘‘(B) CERTIFICATION.—This subsection shall 

4 not apply to an action if the party alleging in5 fringement files, not later than 45 days after the 

6 date on which such party is served with the ini7 tial statement described under subparagraph (A), 

8 a certification that— 

9 ‘‘(i) establishes and certifies to the 

10 court, under oath, that such party will have 

11 sufficient funds available to satisfy any 

12 award of reasonable attorney’s fees and ex13 penses under section 285 if an award is as14 sessed; 

15 ‘‘(ii) demonstrates that such party has 

16 a substantial interest in the subject matter 

17 at issue other than asserting the patent in 

18 litigation; or 

19 ‘‘(iii) is made under oath that there 

20 are no other interested parties. 

21 ‘‘(5) EXCEPTION FOR UNIVERSITY TECHNOLOGY

22 TRANSFER ORGANIZATIONS.—This subsection shall not 

23 apply to a technology transfer organization whose 

24 primary purpose is to facilitate the commercializa25 tion of technologies developed by one or more institumstockstill on DSK4VPTVN1PROD with BILLS

14 

•HR 9 RH

1 tions of higher education (as defined in section 101(a) 

2 of the Higher Education Act of 1965 (20 U.S.C. 

3 1001(a))) if such technology transfer organization is 

4 alleging infringement on behalf of an entity that 

5 would not be subject to this subsection. 

6 ‘‘(6) INTERESTED PARTY DEFINED.—In this sub7 section, the term ‘interested party’ means a person, 

8 other than the party alleging infringement, that— 

9 ‘‘(A) is an assignee of the patent or patents 

10 at issue; 

11 ‘‘(B) has a right, including a contingent 

12 right, to enforce or sublicense the patent or pat13 ents at issue; or 

14 ‘‘(C) has a direct financial interest in the 

15 patent or patents at issue, including the right to 

16 any part of an award of damages or any part 

17 of licensing revenue, except that a person with a 

18 direct financial interest does not include— 

19 ‘‘(i) an employee of the party alleging 

20 infringement— 

21 ‘‘(I) whose principal source of in22 come or employment is employment 

23 with the party alleging infringement; 

24 or 

mstockstill on DSK4VPTVN1PROD with BILLS

15 

•HR 9 RH

1 ‘‘(II) whose sole financial interest 

2 in the patent or patents at issue is a 

3 salary or hourly wage paid by the 

4 party alleging infringement; 

5 ‘‘(ii) an attorney or law firm pro6 viding legal representation in the civil ac7 tion described in paragraph (1) if the sole 

8 basis for the financial interest of the attor9 ney or law firm in the patent or patents at 

10 issue arises from the attorney or law firm’s 

11 receipt of compensation reasonably related 

12 to the provision of the legal representation; 

13 or 

14 ‘‘(iii) a person whose sole financial in15 terest in the patent or patents at issue is 

16 ownership of an equity or security interest 

17 in the party alleging infringement, unless 

18 such person also has the right or ability to 

19 direct or control (membership on the board 

20 of directors alone is not sufficient to dem21 onstrate such right or ability) the civil ac22 tion. 

23 ‘‘(7) SUBSTANTIAL INTEREST.—In this sub24 section, the term ‘substantial interest’ includes an inmstockstill on DSK4VPTVN1PROD with BILLS

16 

•HR 9 RH

1 terest in the subject matter of a patent at issue if the 

2 party— 

3 ‘‘(A) invented the subject matter; or 

4 ‘‘(B) commercially practices or implements, 

5 made substantial preparations directed particu6 larly to commercially practicing or imple7 menting, or is engaged in research and develop8 ment in, technology in the field of the subject 

9 matter.’’. 

10 (d) DISCOVERY STAY.— 

11 (1) AMENDMENT.—Chapter 29 of title 35, United 

12 States Code, as amended by subsection (a), is further 

13 amended by inserting after section 281A (as added by 

14 such subsection) the following new section: 

15 ‘‘§ 281B. Stay of discovery pending a preliminary mo16 tion. 

17 ‘‘(a) IN GENERAL.—Except as provided in subsection 

18 (d), in an action for patent infringement under section 271 

19 or an action for a declaratory judgement that a patent is 

20 invalid or not infringed, discovery shall be stayed if— 

21 ‘‘(1) the defendant moves to— 

22 ‘‘(A) sever a claim or drop a party for 

23 misjoinder under Rule 21 of the Federal Rules of 

24 Civil Procedure; 

mstockstill on DSK4VPTVN1PROD with BILLS

17 

•HR 9 RH

1 ‘‘(B) transfer the action under section 

2 1404(a) of title 28; 

3 ‘‘(C) transfer or dismiss the action under 

4 section 1406(a) of title 28; or 

5 ‘‘(D) dismiss the action pursuant to Federal 

6 Rule of Civil Procedure 12(b); and 

7 ‘‘(2) such motion is filed within 90 days after 

8 service of the complaint and includes a declaration or 

9 other evidence in support of the motion. 

10 ‘‘(b) EXPIRATION OF STAY.—A stay entered under sub11 section (a) shall expire when all motions that are the basis 

12 for the stay are decided by the court. 

13 ‘‘(c) PRIORITY OF DECISION.—In an action described 

14 in subsection (a), the court shall decide a motion to sever 

15 a claim or drop a party for misjoinder under Rule 21 of 

16 the Federal Rules of Civil Procedure, to transfer under sec17 tion 1404(a) to title 28, to transfer or dismiss under 

18 1406(a) of title 28, or to dismiss the action pursuant to 

19 Federal Rule of Civil Procedure 12(b) before the earlier of 

20 the date on which the court— 

21 ‘‘(1) decides any other substantive motion, pro22 vided however that the court may decide a question 

23 of its own jurisdiction at any time; or 

24 ‘‘(2) issues a scheduling order under Rule 16(b) 

25 of the Federal Rules of Civil Procedure. 

mstockstill on DSK4VPTVN1PROD with BILLS

18 

•HR 9 RH

1 ‘‘(d) EXCEPTION.— 

2 ‘‘(1) DISCOVERY NECESSARY TO DECIDE MO3 TION.—Notwithstanding subsection (a), the court may 

4 allow such discovery as the court determines to be 

5 necessary to decide a motion to sever, drop a party, 

6 dismiss, or transfer. 

7 ‘‘(2) COMPETITIVE HARM.—Subsections (a) and 

8 (c) shall not apply to an action in which the patentee 

9 is granted a preliminary injunction to prevent harm 

10 arising from the manufacture, use, sale, offer for sale, 

11 or importation of an allegedly infringing product or 

12 process that competes with a product or process made, 

13 sold, or offered for sale by the patentee. 

14 ‘‘(3) CONSENT OF THE PARTIES.—The patentee 

15 and an opposing party shall be excluded, in whole or 

16 in part, from the limitations of subsections (a) and 

17 (c) upon such parties’ filing with the court a signed 

18 stipulation agreeing to such exclusion. 

19 ‘‘(4) FDA AND BIOLOGICAL PRODUCT APPLICA20 TION.—Subsections (a) and (c) shall not apply to an 

21 action that includes a cause of action described under 

22 section 271(e)(2).’’. 

23 (2) CONFORMING AMENDMENT.—The table of sec24 tions for chapter 29 of title 35, United States Code, 

25 is amended by inserting after the item relating to secmstockstill on DSK4VPTVN1PROD with BILLS

19 

•HR 9 RH

1 tion 281A, as added by subsection (a), the following 

2 new item: 

‘‘281B. Stay of discovery pending a preliminary motion.’’. 

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

4 that it is an abuse of the patent system and against public 

5 policy for a party to send out purposely evasive demand 

6 letters to end users alleging patent infringement. Demand 

7 letters sent should, at the least, include basic information 

8 about the patent in question, what is being infringed, and 

9 how it is being infringed. Any actions or litigation that 

10 stem from these types of purposely evasive demand letters 

11 to end users should be considered a fraudulent or deceptive 

12 practice and an exceptional circumstance when considering 

13 whether the litigation is abusive. 

14 (f) DEMAND LETTERS.—Section 284 of title 35, United 

15 States Code, is amended— 

16 (1) in the first undesignated paragraph, by 

17 striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN18 ERAL.—Upon finding’’; 

19 (2) in the second undesignated paragraph, by 

20 striking ‘‘When the damages’’ and inserting ‘‘(b) AS21 SESSMENT BY COURT; TREBLE DAMAGES.—When the 

22 damages’’; 

23 (3) by inserting after subsection (b), as des24 ignated by paragraph (2) of this subsection, the fol25 lowing: 

mstockstill on DSK4VPTVN1PROD with BILLS

20 

•HR 9 RH

1 ‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking to 

2 establish willful infringement may not rely on evidence of 

3 pre-suit notification of infringement unless that notifica4 tion identifies with particularity the asserted patent, iden5 tifies the product or process accused, identifies the ultimate 

6 parent entity of the claimant, and explains with particu7 larity, to the extent possible following a reasonable inves8 tigation or inquiry, how the product or process infringes 

9 one or more claims of the patent.’’; and 

10 (4) in the last undesignated paragraph, by strik11 ing ‘‘The court’’ and inserting ‘‘(d) EXPERT TESTI12 MONY.—The court’’. 

13 (g) VENUE.— 

14 (1) AMENDMENT.—Subsection (b) of section 1400 

15 of title 28, United States Code, is amended to read as 

16 follows: 

17 ‘‘(b) VENUE FOR ACTION RELATING TO PATENTS.— 

18 Notwithstanding subsections (b) and (c) of section 1391 of 

19 this title, any civil action for patent infringement or any 

20 action for a declaratory judgment that a patent is invalid 

21 or not infringed may be brought only in a judicial dis22 trict— 

23 ‘‘(1) where the defendant has its principal place 

24 of business or is incorporated; 

mstockstill on DSK4VPTVN1PROD with BILLS

21 

•HR 9 RH

1 ‘‘(2) where the defendant has committed an act 

2 of infringement of a patent in suit and has a regular 

3 and established physical facility that gives rise to the 

4 act of infringement; 

5 ‘‘(3) where the defendant has agreed or consented 

6 to be sued in the instant action; 

7 ‘‘(4) where an inventor named on the patent in 

8 suit conducted research or development that led to the 

9 application for the patent in suit; 

10 ‘‘(5) where a party has a regular and established 

11 physical facility that such party controls and oper12 ates, not primarily for the purpose of creating venue, 

13 and has— 

14 ‘‘(A) engaged in management of significant 

15 research and development of an invention 

16 claimed in a patent in suit prior to the effective 

17 filing date of the patent; 

18 ‘‘(B) manufactured a tangible product that 

19 is alleged to embody an invention claimed in a 

20 patent in suit; or 

21 ‘‘(C) implemented a manufacturing process 

22 for a tangible good in which the process is al23 leged to embody an invention claimed in a pat24 ent in suit; or 

mstockstill on DSK4VPTVN1PROD with BILLS

22 

•HR 9 RH

1 ‘‘(6) for foreign defendants that do not meet the 

2 requirements of paragraphs (1) or (2), according to 

3 section 1391(d) of this title.’’. 

4 (2) MANDAMUS RELIEF.—For the purpose of de5 termining whether relief may issue under section 

6 1651 of title 28, United States Code, a clearly and in7 disputably erroneous denial of a motion under section 

8 1406(a) of such title to dismiss or transfer a case on 

9 the basis of section 1400(b) of such title shall be 

10 deemed to cause irremediable interim harm. 

11 (3) RETAILERS NOT ELIGIBLE FOR CUSTOMER

12 STAY.—If a defendant does not meet the definition of 

13 a retailer under section 296(a)(6) of title 35, United 

14 States Code, as added by section 5, solely because the 

15 defendant manufacturers or causes the manufacture of 

16 the covered product or process in suit, the retail fa17 cilities of such defendant shall not constitute a reg18 ular and established physical facility for purposes of 

19 section 1400(b)(2) of title 28, United Code, as added 

20 by paragraph (1). 

21 (4) TELEWORKERS.—The dwelling or residence 

22 of an employee or contractor of a defendant who 

23 works at such dwelling or residence shall not con24 stitute a regular and established physical facility of 

mstockstill on DSK4VPTVN1PROD with BILLS

23 

•HR 9 RH

1 the defendant for purposes of section 1400(b)(2) of 

2 title 28, United Code, as added by paragraph (1). 

3 (h) EFFECTIVE DATE.—Except as otherwise provided 

4 in this section, the amendments made by this section shall 

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

6 apply to any action for which a complaint is filed on or 

7 after that date. 

8 SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 

9 (a) AMENDMENTS.—Section 290 of title 35, United 

10 States Code, is amended— 

11 (1) in the heading, by striking ‘‘suits’’ and in12 serting ‘‘suits; disclosure of interests’’; 

13 (2) by striking ‘‘The clerks’’ and inserting ‘‘(a) 

14 NOTICE OF PATENT SUITS.—The clerks’’; and 

15 (3) by adding at the end the following new sub16 sections: 

17 ‘‘(b) INITIAL DISCLOSURE.— 

18 ‘‘(1) IN GENERAL.—Except as provided in para19 graph (2), upon the filing of an initial complaint for 

20 patent infringement, the plaintiff shall disclose to the 

21 Patent and Trademark Office, the court, and each ad22 verse party the identity of each of the following: 

23 ‘‘(A) The assignee of the patent or patents 

24 at issue. 

mstockstill on DSK4VPTVN1PROD with BILLS

24 

•HR 9 RH

1 ‘‘(B) Any entity with a right to sublicense 

2 or enforce the patent or patents at issue. 

3 ‘‘(C) Any entity, other than the plaintiff, 

4 that the plaintiff knows to have a financial in5 terest in the patent or patents at issue or the 

6 plaintiff. 

7 ‘‘(D) The ultimate parent entity of any as8 signee identified under subparagraph (A) and 

9 any entity identified under subparagraph (B) or 

10 (C). 

11 ‘‘(E) A clear and concise description of the 

12 principal business, if any, of the party alleging 

13 infringement. 

14 ‘‘(F) A list of each complaint filed, of which 

15 the party alleging infringement has knowledge, 

16 that asserts or asserted any of the patents identi17 fied under subparagraph (A). 

18 ‘‘(G) For each patent identified under sub19 paragraph (A), whether a standard-setting body 

20 has specifically declared such patent to be essen21 tial, potentially essential, or having potential to 

22 become essential to that standard-setting body, 

23 and whether the United States Government or a 

24 foreign government has imposed specific licens25 ing requirements with respect to such patent. 

mstockstill on DSK4VPTVN1PROD with BILLS

25 

•HR 9 RH

1 ‘‘(2) EXEMPTION.—The requirements of para2 graph (1) shall not apply with respect to a civil ac3 tion filed under subsection (a) that includes a cause 

4 of action described under section 271(e)(2). 

5 ‘‘(c) DISCLOSURE COMPLIANCE.— 

6 ‘‘(1) PUBLICLY TRADED.—For purposes of sub7 section (b)(1)(C), if the financial interest is held by 

8 a corporation traded on a public stock exchange, an 

9 identification of the name of the corporation and the 

10 public exchange listing shall satisfy the disclosure re11 quirement. 

12 ‘‘(2) NOT PUBLICLY TRADED.—For purposes of 

13 subsection (b)(1)(C), if the financial interest is not 

14 held by a publicly traded corporation, the disclosure 

15 shall satisfy the disclosure requirement if the informa16 tion identifies— 

17 ‘‘(A) in the case of a partnership, the name 

18 of the partnership and the name and correspond19 ence address of each partner or other entity that 

20 holds more than a 5-percent share of that part21 nership; 

22 ‘‘(B) in the case of a corporation, the name 

23 of the corporation, the location of incorporation, 

24 the address of the principal place of business, 

mstockstill on DSK4VPTVN1PROD with BILLS

26 

•HR 9 RH

1 and the name of each officer of the corporation; 

2 and 

3 ‘‘(C) for each individual, the name and cor4 respondence address of that individual. 

5 ‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PATENT

6 AND TRADEMARK OFFICE.— 

7 ‘‘(1) IN GENERAL.—A plaintiff required to sub8 mit information under subsection (b) or a subsequent 

9 owner of the patent or patents at issue shall, not later 

10 than 90 days after any change in the assignee of the 

11 patent or patents at issue or an entity described 

12 under subparagraph (B) or (D) of subsection (b)(1), 

13 submit to the Patent and Trademark Office the up14 dated identification of such assignee or entity. 

15 ‘‘(2) FAILURE TO COMPLY.—With respect to a 

16 patent for which the requirement of paragraph (1) 

17 has not been met— 

18 ‘‘(A) the plaintiff or subsequent owner shall 

19 not be entitled to recover reasonable fees and 

20 other expenses under section 285 or increased 

21 damages under section 284 with respect to in22 fringing activities taking place during any pe23 riod of noncompliance with paragraph (1), un24 less the denial of such damages or fees would be 

25 manifestly unjust; and 

mstockstill on DSK4VPTVN1PROD with BILLS

27 

•HR 9 RH

1 ‘‘(B) the court shall award to a prevailing 

2 party accused of infringement reasonable fees 

3 and other expenses under section 285 that are in4 curred to discover the updated assignee or entity 

5 described under paragraph (1), unless such sanc6 tions would be unjust. 

7 ‘‘(e) DEFINITIONS.—In this section: 

8 ‘‘(1) FINANCIAL INTEREST.—The term ‘financial 

9 interest’— 

10 ‘‘(A) means— 

11 ‘‘(i) with regard to a patent or patents, 

12 the right of a person to receive proceeds re13 lated to the assertion of the patent or pat14 ents, including a fixed or variable portion 

15 of such proceeds; and 

16 ‘‘(ii) with regard to the plaintiff, direct 

17 or indirect ownership or control by a person 

18 of more than 5 percent of such plaintiff; 

19 and 

20 ‘‘(B) does not mean— 

21 ‘‘(i) ownership of shares or other inter22 ests in a mutual or common investment 

23 fund, unless the owner of such interest par24 ticipates in the management of such fund; 

25 or 

mstockstill on DSK4VPTVN1PROD with BILLS

28 

•HR 9 RH

1 ‘‘(ii) the proprietary interest of a pol2 icyholder in a mutual insurance company 

3 or of a depositor in a mutual savings asso4 ciation, or a similar proprietary interest, 

5 unless the outcome of the proceeding could 

6 substantially affect the value of such inter7 est. 

8 ‘‘(2) PROCEEDING.—The term ‘proceeding’ 

9 means all stages of a civil action, including pretrial 

10 and trial proceedings and appellate review. 

11 ‘‘(3) ULTIMATE PARENT ENTITY.— 

12 ‘‘(A) IN GENERAL.—Except as provided in 

13 subparagraph (B), the term ‘ultimate parent en14 tity’ has the meaning given such term in section 

15 801.1(a)(3) of title 16, Code of Federal Regula16 tions, or any successor regulation. 

17 ‘‘(B) MODIFICATION OF DEFINITION.—The 

18 Director may modify the definition of ‘ultimate 

19 parent entity’ by regulation.’’. 

20 (b) TECHNICAL AND CONFORMING AMENDMENT.—The 

21 item relating to section 290 in the table of sections for chap22 ter 29 of title 35, United States Code, is amended to read 

23 as follows: 

‘‘290. Notice of patent suits; disclosure of interests.’’. 

24 (c) REGULATIONS.—The Director may promulgate 

25 such regulations as are necessary to establish a registration 

mstockstill on DSK4VPTVN1PROD with BILLS

29 

•HR 9 RH

1 fee in an amount sufficient to recover the estimated costs 

2 of administering subsections (b) through (e) of section 290 

3 of title 35, United States Code, as added by subsection (a), 

4 to facilitate the collection and maintenance of the informa5 tion required by such subsections, and to ensure the timely 

6 disclosure of such information to the public. 

7 (d) EFFECTIVE DATE.—The amendments made by this 

8 section shall take effect upon the expiration of the 6-month 

9 period beginning on the date of the enactment of this Act 

10 and shall apply to any action for which a complaint is 

11 filed on or after such effective date. 

12 SEC. 5. CUSTOMER-SUIT EXCEPTION. 

13 (a) AMENDMENT.—Section 296 of title 35, United 

14 States Code, is amended to read as follows: 

15 ‘‘§ 296. Stay of action against customer 

16 ‘‘(a) DEFINITIONS.—In this section: 

17 ‘‘(1) COVERED CUSTOMER.—The term ‘covered 

18 customer’ means a retailer or end user that is accused 

19 of infringing a patent or patents in dispute based 

20 on— 

21 ‘‘(A) the sale, or offer for sale, of a covered 

22 product or covered process without material 

23 modification of the product or process in a man24 ner that is alleged to infringe a patent or patents 

25 in dispute; or 

mstockstill on DSK4VPTVN1PROD with BILLS

30 

•HR 9 RH

1 ‘‘(B) the use by such retailer, the retailer’s 

2 end user customer, or an end user of a covered 

3 product or covered process without material 

4 modification of the product or process in a man5 ner that is alleged to infringe a patent or patents 

6 in dispute. 

7 ‘‘(2) COVERED MANUFACTURER.—The term ‘cov8 ered manufacturer’ means a person that manufactures 

9 or supplies, or causes the manufacture or supply of, 

10 a covered product or covered process, or a relevant 

11 part thereof. 

12 ‘‘(3) COVERED PROCESS.—The term ‘covered 

13 process’ means a process, method, or a relevant part 

14 thereof, that is alleged to infringe a patent or patents 

15 in dispute where such process, method, or relevant 

16 part thereof is implemented by an apparatus, mate17 rial, system, software, or other instrumentality that is 

18 provided by the covered manufacturer. 

19 ‘‘(4) COVERED PRODUCT.—The term ‘covered 

20 product’ means a product, system, service, component, 

21 material, or apparatus, or relevant part thereof, 

22 that— 

23 ‘‘(A) is alleged to infringe a patent or pat24 ents in dispute; or 

mstockstill on DSK4VPTVN1PROD with BILLS

31 

•HR 9 RH

1 ‘‘(B) implements a process alleged to in2 fringe the patent or patents in dispute. 

3 ‘‘(5) END USER.—The term ‘end user’ includes 

4 an affiliate of an end user, but does not include an 

5 entity that manufacturers or causes the manufacture 

6 of a covered product or covered process, or a relevant 

7 part thereof. 

8 ‘‘(6) RETAILER.—The term ‘retailer’ means an 

9 entity that generates revenues predominately through 

10 the sale to the public of consumer goods or services, 

11 or an affiliate of such entity, but does not include an 

12 entity that manufacturers or causes the manufacturer 

13 of a covered product or covered process, or a relevant 

14 part thereof. 

15 ‘‘(b) STAY OF ACTION AGAINST CUSTOMER.—Except 

16 as provided in subsection (d), in any civil action in which 

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

18 of Congress relating to patents, the court shall grant a mo19 tion to stay at least the portion of the action against a cov20 ered customer related to infringement of a patent involving 

21 a covered product or covered process if the following require22 ments are met: 

23 ‘‘(1) PARTY TO THE ACTION.—The covered man24 ufacturer is a party to the action or to a separate ac25 tion (in which a party asserts a claim for relief arismstockstill on DSK4VPTVN1PROD with BILLS

32 

•HR 9 RH

1 ing under any Act of Congress relating to patents) in2 volving the same patent or patents related to the same 

3 covered product or covered process. 

4 ‘‘(2) AGREEMENT TO BE BOUND BY ISSUES DE5 TERMINED.—The covered customer agrees to be bound 

6 as to issues determined in an action described in 

7 paragraph (1) without a full and fair opportunity to 

8 separately litigate any such issue, but only as to those 

9 issues for which all other elements of the common law 

10 doctrine of issue preclusion are met. 

11 ‘‘(3) DEADLINE TO FILE MOTION.—The motion is 

12 filed after the first pleading in the action but not 

13 later than the later of— 

14 ‘‘(A) the 120th day after the date on which 

15 the first pleading or paper in the action is served 

16 that specifically identifies the covered product or 

17 covered process as a basis for the covered cus18 tomer’s alleged infringement of the patent and 

19 that specifically identifies how the covered prod20 uct or covered process is alleged to infringe the 

21 patent; or 

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

23 order in the case is entered. 

24 ‘‘(4) MANUFACTURER CONSENT IN CERTAIN

25 CASES.—In a case in which the covered manufacturer 

mstockstill on DSK4VPTVN1PROD with BILLS

33 

•HR 9 RH

1 has been made a party to the action on motion by the 

2 covered customer, the covered manufacturer and the 

3 covered customer consent in writing to the stay. 

4 ‘‘(c) LIFT OF STAY.— 

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

6 section may be lifted upon grant of a motion based 

7 on a showing that— 

8 ‘‘(A) the action involving the covered manu9 facturer will not resolve a major issue in the suit 

10 against the covered customer (such as a covered 

11 product or covered process identified in the mo12 tion to lift the stay is not a material part of the 

13 claimed invention or inventions in the patent or 

14 patents in dispute); or 

15 ‘‘(B) the stay unreasonably prejudices or 

16 would be manifestly unjust to the party seeking 

17 to lift the stay. 

18 ‘‘(2) SEPARATE MANUFACTURER ACTION IN19 VOLVED.—In the case of a stay entered under this sec20 tion based on the participation of the covered manu21 facturer in a separate action described in subsection 

22 (b)(1), a motion under paragraph (1) may only be 

23 granted if the court in such separate action deter24 mines that the showing required under paragraph (1) 

25 has been made. 

mstockstill on DSK4VPTVN1PROD with BILLS

34 

•HR 9 RH

1 ‘‘(d) EXEMPTION.—This section shall not apply to an 

2 action that includes a cause of action described under sec3 tion 271(e)(2). 

4 ‘‘(e) WAIVER OF ESTOPPEL EFFECT.—The court may, 

5 upon motion, determine that a consent judgment or an 

6 unappealed final order shall not be binding on the covered 

7 customer with respect to one or more of the issues that gave 

8 rise to the stay based on a showing that such consent judg9 ment or unappealed final order would unreasonably preju10 dice or be manifestly unjust to the covered customer in light 

11 of the circumstances of the case if, following the grant of 

12 a motion to stay under this section, the covered manufac13 turer described in subsection (b)(1)— 

14 ‘‘(1) obtains or consents to entry of a consent 

15 judgment relating to such issue that gave rise to the 

16 stay; or 

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

18 judgment such issue that gave rise to the stay. 

19 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec20 tion shall be construed to limit the ability of a court to 

21 grant any stay, expand any stay granted under this section, 

22 or grant any motion to intervene, if otherwise permitted 

23 by law.’’. 

24 (b) CONFORMING AMENDMENT.—The table of sections 

25 for chapter 29 of title 35, United States Code, is amended 

mstockstill on DSK4VPTVN1PROD with BILLS

35 

•HR 9 RH

1 by striking the item relating to section 296 and inserting 

2 the following: 

‘‘296. Stay of action against customer.’’. 

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

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

5 Act and shall apply to any action for which a complaint 

6 is filed on or after the first day of the 30-day period that 

7 ends on that date. 

8 SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC9 OMMENDATIONS OF THE JUDICIAL CON10 FERENCE. 

11 (a) PILOT PROGRAM FOR RULES AND PROCEDURES ON

12 DISCOVERY BURDENS AND COSTS AND CASE MANAGE13 MENT.— 

14 (1) DEFINITIONS.—In this subsection, the term 

15 ‘‘electronic communication’’ means any form of elec16 tronic communication, including email, text message, 

17 and instant message. 

18 (2) DEVELOPMENT OF RULES AND PROCE19 DURES.—Not later than 3 months after the date of the 

20 enactment of this Act, the Director of the Administra21 tive Office of the United States Courts shall designate 

22 not fewer than 6 of the district courts of the United 

23 States that are participating in the patent cases pilot 

24 program established under section 1 of Public Law 

25 111–349 (28 U.S.C.137 note) to develop rules and 

mstockstill on DSK4VPTVN1PROD with BILLS

36 

•HR 9 RH

1 procedures to implement the proposals described in 

2 paragraphs (3) through (5) to address the 

3 asymmetries in discovery burdens and costs, and to 

4 establish case management procedures, in any civil 

5 action arising under any Act of Congress relating to 

6 patents. 

7 (3) TYPES OF DISCOVERY RULES AND PROCE8 DURES TO BE CONSIDERED.—The discovery rules and 

9 procedures required under paragraph (2) shall ad10 dress each of the following: 

11 (A) DISCOVERY OF CORE DOCUMENTARY

12 EVIDENCE.—Whether and to what extent each 

13 party to the action is entitled to receive core doc14 umentary evidence and should be responsible for 

15 the costs of producing core documentary evidence 

16 within the possession or control of each such 

17 party, and whether and to what extent each 

18 party may seek non-core documentary discovery 

19 as otherwise provided in the Federal Rules of 

20 Civil Procedure. 

21 (B) ELECTRONIC COMMUNICATION.—If the 

22 parties request discovery of electronic commu23 nication, how such discovery should be phased to 

24 occur relative to the exchange of initial disclomstockstill on DSK4VPTVN1PROD with BILLS

37 

•HR 9 RH

1 sures and core documentary evidence, and ap2 propriate limitations to apply to such discovery. 

3 (C) SCOPE OF DOCUMENTARY EVIDENCE.— 

4 The kinds of evidence that should constitute ‘‘core 

5 documentary evidence’’. 

6 (4) SPECIFIC DISCOVERY RULES AND PROCE7 DURES TO BE CONSIDERED FOR ADDITIONAL DOCU8 MENT DISCOVERY.—The discovery rules and proce9 dures required under paragraph (2) shall address 

10 whether the following provisions, or variations on the 

11 following provisions, should apply: 

12 (A) IN GENERAL.—Whether each party to 

13 the action may seek any additional document 

14 discovery otherwise permitted under the Federal 

15 Rules of Civil Procedure beyond core documen16 tary evidence, if such party bears the reasonable 

17 costs, including reasonable attorney’s fees, of the 

18 additional document discovery. 

19 (B) REQUIREMENTS FOR ADDITIONAL DOC20 UMENT DISCOVERY.—Whether, unless the parties 

21 mutually agree otherwise, no party may be per22 mitted additional document discovery unless 

23 such a party posts a bond, or provides other se24 curity, in an amount sufficient to cover the ex25 pected costs of such additional document dismstockstill on DSK4VPTVN1PROD with BILLS

38 

•HR 9 RH

1 covery, or makes a showing to the court that such 

2 party has the financial capacity to pay the costs 

3 of such additional document discovery. 

4 (C) GOOD CAUSE MODIFICATION.—Whether 

5 a court, upon motion and for good cause shown, 

6 may modify the requirements of subparagraphs 

7 (A) and (B) and any definition of core documen8 tary evidence. 

9 (D) COMPUTER CODE.—Whether a court, 

10 upon motion and for good cause shown, may de11 termine that computer code should be included in 

12 the discovery of core documentary evidence, and 

13 whether the discovery of computer code shall 

14 occur after the parties have exchanged initial 

15 disclosures and other core documentary evidence. 

16 (E) DISCOVERY SEQUENCE AND SCOPE.— 

17 Whether the parties shall discuss and address in 

18 the written report filed pursuant to rule 26(f) of 

19 the Federal Rules of Civil Procedure the views 

20 and proposals of each party on the following: 

21 (i) When the discovery of core docu22 mentary evidence should be completed. 

23 (ii) Whether additional document dis24 covery described in subparagraphs (A) and 

25 (B) will be sought. 

mstockstill on DSK4VPTVN1PROD with BILLS

39 

•HR 9 RH

1 (iii) Any issues about infringement, 

2 invalidity, or damages that, if resolved be3 fore the additional document discovery de4 scribed in subparagraphs (A) and (B) com5 mences, might simplify or streamline the 

6 case. 

7 (5) CASE MANAGEMENT RULES AND PROCEDURES

8 TO BE CONSIDERED.—The rules and procedures re9 quired under paragraph (2) shall also address case 

10 management procedures for any civil action arising 

11 under any Act of Congress relating to patents, includ12 ing initial disclosure and early case management con13 ference practices that— 

14 (A) will identify any potential dispositive 

15 issues of the case; and 

16 (B) focus on early summary judgment mo17 tions when resolution of issues may lead to expe18 dited disposition of the case. 

19 (b) IMPLEMENTATION OF RULES AND PROCEDURES.— 

20 Within 18 months after the designation by the Director of 

21 the Administrative Office of the 6 district courts to develop 

22 the rules and procedures pursuant to subsection (a), the 6 

23 district courts shall complete the development of the rules 

24 and procedures, and begin to implement them. 

mstockstill on DSK4VPTVN1PROD with BILLS

40 

•HR 9 RH

1 (c) EXPANSION OF PILOT PROGRAM FOR RULES AND

2 PROCEDURES ON DISCOVERY BURDENS AND COSTS AND

3 CASE MANAGEMENT.—After the rules and procedures devel4 oped by the pilot program pursuant to subsection (a) have 

5 been in effect for at least 2 years, the Judicial Conference 

6 of the United States, using existing resources, may expand 

7 the application of some or all of those rules and procedures 

8 to be implemented by all the district courts, and the United 

9 States Court of Federal Claims, for any civil action arising 

10 under any Act of Congress relating to patents. 

11 (d) REVISION OF FORM FOR PATENT INFRINGE12 MENT.— 

13 (1) ELIMINATION OF FORM.—The Supreme 

14 Court, using existing resources, shall eliminate Form 

15 18 in the Appendix to the Federal Rules of Civil Pro16 cedure (relating to Complaint for Patent Infringe17 ment), effective on the date of the enactment of this 

18 Act. 

19 (2) REVISED FORM.—The Supreme Court may 

20 prescribe a new form or forms setting out model alle21 gations of patent infringement that, at a minimum, 

22 notify accused infringers of the asserted claim or 

23 claims, the products or services accused of infringe24 ment, and the plaintiff’s theory for how each accused 

25 product or service meets each limitation of each asmstockstill on DSK4VPTVN1PROD with BILLS

41 

•HR 9 RH

1 serted claim. The Judicial Conference should exercise 

2 the authority under section 2073 of title 28, United 

3 States Code, to make recommendations with respect to 

4 such new form or forms. 

5 (e) PROTECTION OF INTELLECTUAL-PROPERTY LI6 CENSES IN BANKRUPTCY.— 

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

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

9 the following: 

10 ‘‘(e) Section 365(n) shall apply to cases under this 

11 chapter. If the foreign representative rejects or repudiates 

12 a contract under which the debtor is a licensor of intellec13 tual property, the licensee under such contract shall be enti14 tled to make the election and exercise the rights described 

15 in section 365(n).’’. 

16 (2) TRADEMARKS.— 

17 (A) IN GENERAL.—Section 101(35A) of title 

18 11, United States Code, is amended— 

19 (i) in subparagraph (E), by striking 

20 ‘‘or’’; 

21 (ii) in subparagraph (F), by striking 

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

23 (iii) by adding after subparagraph (F) 

24 the following new subparagraph: 

mstockstill on DSK4VPTVN1PROD with BILLS

42 

•HR 9 RH

1 ‘‘(G) a trademark, service mark, or trade 

2 name, as those terms are defined in section 45 of 

3 the Act of July 5, 1946 (commonly referred to as 

4 the ‘Trademark Act of 1946’) (15 U.S.C. 1127);’’. 

5 (B) CONFORMING AMENDMENT.—Section 

6 365(n)(2) of title 11, United States Code, is 

7 amended— 

8 (i) in subparagraph (B)— 

9 (I) by striking ‘‘royalty pay10 ments’’ and inserting ‘‘royalty or other 

11 payments’’; and 

12 (II) by striking ‘‘and’’ after the 

13 semicolon; 

14 (ii) in subparagraph (C), by striking 

15 the period at the end of clause (ii) and in16 serting ‘‘; and’’; and 

17 (iii) by adding at the end the following 

18 new subparagraph: 

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

20 mark, or trade name, the licensee shall not be re21 lieved of any of its obligations to maintain the 

22 quality of the products and services offered under 

23 or in connection with the licensed trademark, 

24 service mark, or trade name, and the trustee 

25 shall retain the right to oversee and enforce qualmstockstill on DSK4VPTVN1PROD with BILLS

43 

•HR 9 RH

1 ity control for such products or services, or 

2 both.’’. 

3 (3) EFFECTIVE DATE.—The amendments made 

4 by this subsection shall take effect on the date of the 

5 enactment of this Act and shall apply to any case 

6 that is pending on, or for which a petition or com7 plaint is filed on or after, such date of enactment. 

8 (f) IN GENERAL.—Not later than 12 months after the 

9 date of the enactment of this Act, the Judicial Conference 

10 of the United States, with the assistance of the Director of 

11 the Federal Judicial Center and the Director of the Admin12 istrative Office of the United States Courts, shall prepare 

13 and transmit to the Committees on the Judiciary of the 

14 Senate and the House of Representatives a report on dis15 covery proceedings in cases pertaining to litigation involv16 ing patent laws of the United States. The report shall con17 tain, after looking at data compiled for the previous two 

18 years before the date of the enactment of this Act, the fol19 lowing: 

20 (1) The percentage of courts that have distinct 

21 phases of discovery in the court rules. 

22 (2) A description of at least two of the defini23 tions of such phases. 

mstockstill on DSK4VPTVN1PROD with BILLS

44 

•HR 9 RH

1 (3) Identify by name any court that does not 

2 have such distinct phases and a description of why 

3 such courts have not implemented such phases. 

4 (4) With regard to proceedings in courts that 

5 have phases, in the case of a discovery proceeding that 

6 extends beyond the core documents phase, a descrip7 tion of— 

8 (A) what additional discovery was requested 

9 and any consistent pattern or trend in the rea10 sons or justifications for the request; 

11 (B) how much longer, on average, the pro12 ceedings lasted than those settled within the first 

13 phase; and 

14 (C) any patterns for the courts that repeat15 edly have extended requests. 

16 (5) Looking at proceedings in the courts that do 

17 not have phase rules, a description of— 

18 (A) how long, on average, the discovery pro19 ceedings last; and 

20 (B) the scope of the requests. 

21 SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND IN22 FORMATION ACCESS. 

23 (a) SMALL BUSINESS EDUCATION AND OUTREACH.— 

24 (1) RESOURCES FOR SMALL BUSINESS.—Using 

25 existing resources, the Director shall develop edumstockstill on DSK4VPTVN1PROD with BILLS

45 

•HR 9 RH

1 cational resources for small businesses to address con2 cerns arising from patent infringement. 

3 (2) SMALL BUSINESS PATENT OUTREACH.—The 

4 existing small business patent outreach programs of 

5 the Office, and the relevant offices at the Small Busi6 ness Administration and the Minority Business De7 velopment Agency, shall provide education and 

8 awareness on abusive patent litigation practices. The 

9 Director may give special consideration to the unique 

10 needs of small firms owned by disabled veterans, serv11 ice-disabled veterans, women, and minority entre12 preneurs in planning and executing the outreach ef13 forts by the Office. 

14 (b) IMPROVING INFORMATION TRANSPARENCY FOR

15 SMALL BUSINESS AND THE UNITED STATES PATENT AND

16 TRADEMARK OFFICE USERS.— 

17 (1) WEB SITE.—Using existing resources, the Di18 rector shall create a user-friendly section on the offi19 cial Web site of the Office to notify the public when 

20 a patent case is brought in Federal court and, with 

21 respect to each patent at issue in such case, the Direc22 tor shall include— 

23 (A) information disclosed under subsections 

24 (b) and (d) of section 290 of title 35, United 

mstockstill on DSK4VPTVN1PROD with BILLS

46 

•HR 9 RH

1 States Code, as added by section 4(a) of this Act; 

2 and 

3 (B) any other information the Director de4 termines to be relevant. 

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

6 for the public, the information described in paragraph 

7 (1) shall be searchable by patent number, patent art 

8 area, and entity. 

9 SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, AND 

10 EXAMINATION. 

11 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

12 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY AND

13 ETHICAL BUSINESS PRACTICES.— 

14 (1) STUDY REQUIRED.—The Director, in con15 sultation with the Secretary of Commerce, the Sec16 retary of the Treasury, the Chairman of the Securities 

17 and Exchange Commission, the heads of other rel18 evant agencies, and interested parties, shall, using ex19 isting resources of the Office, conduct a study— 

20 (A) to develop legislative recommendations 

21 to ensure greater transparency and account22 ability in patent transactions occurring on the 

23 secondary market; 

mstockstill on DSK4VPTVN1PROD with BILLS

47 

•HR 9 RH

1 (B) to examine the economic impact that 

2 the patent secondary market has on the United 

3 States; 

4 (C) to examine licensing and other oversight 

5 requirements that may be placed on the patent 

6 secondary market, including on the participants 

7 in such markets, to ensure that the market is a 

8 level playing field and that brokers in the market 

9 have the requisite expertise and adhere to ethical 

10 business practices; and 

11 (D) to examine the requirements placed on 

12 other markets. 

13 (2) REPORT ON STUDY.—Not later than 18 

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

15 Director shall submit a report to the Committee on 

16 the Judiciary of the House of Representatives and the 

17 Committee on the Judiciary of the Senate on the find18 ings and recommendations of the Director from the 

19 study required under paragraph (1). 

20 (b) STUDY ON PATENTS OWNED BY THE UNITED

21 STATES GOVERNMENT.— 

22 (1) STUDY REQUIRED.—The Director, in con23 sultation with the heads of relevant agencies and in24 terested parties, shall, using existing resources of the 

mstockstill on DSK4VPTVN1PROD with BILLS

48 

•HR 9 RH

1 Office, conduct a study on patents owned by the 

2 United States Government that— 

3 (A) examines how such patents are licensed 

4 and sold, and any litigation relating to the li5 censing or sale of such patents; 

6 (B) provides legislative and administrative 

7 recommendations on whether there should be re8 strictions placed on patents acquired from the 

9 United States Government; 

10 (C) examines whether or not each relevant 

11 agency maintains adequate records on the pat12 ents owned by such agency, specifically whether 

13 such agency addresses licensing, assignment, and 

14 Government grants for technology related to such 

15 patents; and 

16 (D) provides recommendations to ensure 

17 that each relevant agency has an adequate point 

18 of contact that is responsible for managing the 

19 patent portfolio of the agency. 

20 (2) REPORT ON STUDY.—Not later than 1 year 

21 after the date of the enactment of this Act, the Direc22 tor shall submit to the Committee on the Judiciary of 

23 the House of Representatives and the Committee on 

24 the Judiciary of the Senate a report on the findings 

mstockstill on DSK4VPTVN1PROD with BILLS

49 

•HR 9 RH

1 and recommendations of the Director from the study 

2 required under paragraph (1). 

3 (c) STUDY ON PATENT QUALITY AND ACCESS TO THE

4 BEST INFORMATION DURING EXAMINATION.— 

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

6 the United States shall, using existing resources, con7 duct a study on patent examination at the Office and 

8 the technologies available to improve examination and 

9 improve patent quality. 

10 (2) CONTENTS OF THE STUDY.—The study re11 quired under paragraph (1) shall include the fol12 lowing: 

13 (A) An examination of patent quality at the 

14 Office. 

15 (B) An examination of ways to improve 

16 patent quality, specifically through technology, 

17 that shall include examining best practices at 

18 foreign patent offices and the use of existing off19 the-shelf technologies to improve patent examina20 tion. 

21 (C) A description of how patents are classi22 fied. 

23 (D) An examination of procedures in place 

24 to prevent double patenting through filing by ap25 plicants in multiple art areas. 

mstockstill on DSK4VPTVN1PROD with BILLS

50 

•HR 9 RH

1 (E) An examination of the types of off-the2 shelf prior art databases and search software 

3 used by foreign patent offices and governments, 

4 particularly in Europe and Asia, and whether 

5 those databases and search tools could be used by 

6 the Office to improve patent examination. 

7 (F) An examination of any other areas the 

8 Comptroller General determines to be relevant. 

9 (3) REPORT ON STUDY.—Not later than 1 year 

10 after the date of the enactment of this Act, the Comp11 troller General shall submit to the Committee on the 

12 Judiciary of the House of Representatives and the 

13 Committee on the Judiciary of the Senate a report on 

14 the findings and recommendations from the study re15 quired by this subsection, including recommendations 

16 for any changes to laws and regulations that will im17 prove the examination of patent applications and 

18 patent quality. 

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

20 (1) STUDY REQUIRED.— 

21 (A) IN GENERAL.—The Director of the Ad22 ministrative Office of the United States Courts, 

23 in consultation with the Director of the Federal 

24 Judicial Center and the United States Patent 

25 and Trademark Office, shall, using existing remstockstill on DSK4VPTVN1PROD with BILLS

51 

•HR 9 RH

1 sources, conduct a study to examine the idea of 

2 developing a pilot program for patent small 

3 claims procedures in certain judicial districts 

4 within the existing patent pilot program man5 dated by Public Law 111–349. 

6 (B) CONTENTS OF STUDY.—The study 

7 under subparagraph (A) shall examine— 

8 (i) the necessary criteria for using 

9 small claims procedures; 

10 (ii) the costs that would be incurred for 

11 establishing, maintaining, and operating 

12 such a pilot program; and 

13 (iii) the steps that would be taken to 

14 ensure that the procedures used in the pilot 

15 program are not misused for abusive patent 

16 litigation. 

17 (2) REPORT ON STUDY.—Not later than 1 year 

18 after the date of the enactment of this Act, the Direc19 tor of the Administrative Office of the United States 

20 Courts shall submit a report to the Committee on the 

21 Judiciary of the House of Representatives and the 

22 Committee on the Judiciary of the Senate on the find23 ings and recommendations of the Director of the Ad24 ministrative Office from the study required under 

25 paragraph (1). 

mstockstill on DSK4VPTVN1PROD with BILLS

52 

•HR 9 RH

1 (e) STUDY ON DEMAND LETTERS.— 

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

3 the heads of other appropriate agencies, shall, using 

4 existing resources, conduct a study of the prevalence 

5 of the practice of sending patent demand letters in 

6 bad faith and the extent to which that practice may, 

7 through fraudulent or deceptive practices, impose a 

8 negative impact on the marketplace. 

9 (2) REPORT TO CONGRESS.—Not later than 1 

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

11 Director shall submit a report to the Committee on 

12 the Judiciary of the House of Representatives and the 

13 Committee on the Judiciary of the Senate on the find14 ings and recommendations of the Director from the 

15 study required under paragraph (1). 

16 (3) PATENT DEMAND LETTER DEFINED.—In this 

17 subsection, the term ‘‘patent demand letter’’ means a 

18 written communication relating to a patent that 

19 states or indicates, directly or indirectly, that the re20 cipient or anyone affiliated with the recipient is or 

21 may be infringing the patent. 

22 (f) STUDY ON BUSINESS METHOD PATENT QUALITY.— 

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

24 the United States shall, using existing resources, conmstockstill on DSK4VPTVN1PROD with BILLS

53 

•HR 9 RH

1 duct a study on the volume and nature of litigation 

2 involving business method patents. 

3 (2) CONTENTS OF STUDY.—The study required 

4 under paragraph (1) shall focus on examining the 

5 quality of business method patents asserted in suits 

6 alleging patent infringement, and may include an ex7 amination of any other areas that the Comptroller 

8 General determines to be relevant. 

9 (3) REPORT TO CONGRESS.—Not later than 1 

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

11 Comptroller General shall submit to the Committee on 

12 the Judiciary of the House of Representatives and the 

13 Committee on the Judiciary of the Senate a report on 

14 the findings and recommendations from the study re15 quired by this subsection, including recommendations 

16 for any changes to laws or regulations that the Comp17 troller General considers appropriate on the basis of 

18 the study. 

19 (g) STUDY ON IMPACT OF LEGISLATION ON ABILITY

20 OF INDIVIDUALS AND SMALL BUSINESSES TO PROTECT EX21 CLUSIVE RIGHTS TO INVENTIONS AND DISCOVERIES.— 

22 (1) STUDY REQUIRED.—The Director, in con23 sultation with the Secretary of Commerce, the Direc24 tor of the Administrative Office of the United States 

25 Courts, the Director of the Federal Judicial Center, 

mstockstill on DSK4VPTVN1PROD with BILLS

54 

•HR 9 RH

1 the heads of other relevant agencies, and interested 

2 parties, shall, using existing resources of the Office, 

3 conduct a study to examine the economic impact of 

4 sections 3, 4, and 5 of this Act, and any amendments 

5 made by such sections, on the ability of individuals 

6 and small businesses owned by women, veterans, and 

7 minorities to assert, secure, and vindicate the con8 stitutionally guaranteed exclusive right to inventions 

9 and discoveries by such individuals and small busi10 ness. 

11 (2) REPORT ON STUDY.—Not later than 2 years 

12 after the date of the enactment of this Act, the Direc13 tor shall submit to the Committee on the Judiciary of 

14 the House of Representatives and the Committee on 

15 the Judiciary of the Senate a report on the findings 

16 and recommendations of the Director from the study 

17 required under paragraph (1). 

18 SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 

19 THE LEAHY-SMITH AMERICA INVENTS ACT. 

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

21 325(e)(2) of title 35, United States Code is amended by 

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

23 (b) REFORM OF PATENT TRIAL AND APPEAL BOARD

24 PROCEEDINGS.— 

mstockstill on DSK4VPTVN1PROD with BILLS

55 

•HR 9 RH

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

2 title 35, United States Code, is amended— 

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

4 and inserting a semicolon; 

5 (B) in paragraph (13), by striking the pe6 riod at the end and inserting a semicolon; and 

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

8 paragraphs: 

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

10 chapter— 

11 ‘‘(A) each claim of a patent shall be con12 strued as such claim would be in a civil action 

13 to invalidate a patent under section 282(b), in14 cluding construing each claim of the patent in 

15 accordance with the ordinary and customary 

16 meaning of such claim as understood by one of 

17 ordinary skill in the art and the prosecution his18 tory pertaining to the patent; and 

19 ‘‘(B) if a court has previously construed the 

20 claim or a claim term in a civil action in which 

21 the patent owner was a party, the Office shall 

22 consider such claim construction; and 

23 ‘‘(15) providing that a review may not be insti24 tuted unless the petitioner certifies that the petitioner 

25 and the real parties in interest of the petitioner— 

mstockstill on DSK4VPTVN1PROD with BILLS

56 

•HR 9 RH

1 ‘‘(A) do not own and will not acquire a fi2 nancial instrument (including a prepaid vari3 able forward contract, equity swap, collar, or ex4 change fund) that is designed to hedge or offset 

5 any decrease in the market value of an equity se6 curity of the patent owner or an affiliate of the 

7 patent owner, during a period following the fil8 ing of the petition to be determined by the Direc9 tor; and 

10 ‘‘(B) have not demanded payment, mone11 tary or otherwise, from the patent owner or an 

12 affiliate of the patent owner in exchange for a 

13 commitment not to file a petition under section 

14 311 with respect to the patent that is the subject 

15 of the petition, unless the petitioner or the real 

16 party in interest of the petitioner has been sued 

17 for or charged with infringement of the patent, 

18 during a period to be determined by the Direc19 tor.’’. 

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

21 title 35, United States Code, is amended— 

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

23 and inserting a semicolon; 

24 (B) in paragraph (12), by striking the pe25 riod at the end and inserting a semicolon; and 

mstockstill on DSK4VPTVN1PROD with BILLS

57 

•HR 9 RH

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

2 paragraphs: 

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

4 chapter— 

5 ‘‘(A) each claim of a patent shall be con6 strued as such claim would be in a civil action 

7 to invalidate a patent under section 282(b), in8 cluding construing each claim of the patent in 

9 accordance with the ordinary and customary 

10 meaning of such claim as understood by one of 

11 ordinary skill in the art and the prosecution his12 tory pertaining to the patent; and 

13 ‘‘(B) if a court has previously construed the 

14 claim or a claim term in a civil action in which 

15 the patent owner was a party, the Office shall 

16 consider such claim construction; and 

17 ‘‘(14) providing that a review may not be insti18 tuted unless the petitioner certifies that the petitioner 

19 and the real parties in interest of the petitioner— 

20 ‘‘(A) do not own and will not acquire a fi21 nancial instrument (including a prepaid vari22 able forward contract, equity swap, collar, or ex23 change fund) that is designed to hedge or offset 

24 any decrease in the market value of an equity se25 curity of the patent owner or an affiliate of the 

mstockstill on DSK4VPTVN1PROD with BILLS

58 

•HR 9 RH

1 patent owner, during a period following the fil2 ing of the petition to be determined by the Direc3 tor; and 

4 ‘‘(B) have not demanded payment, mone5 tary or otherwise, from the patent owner or an 

6 affiliate of the patent owner in exchange for a 

7 commitment not to file a petition under section 

8 311 with respect to the patent that is the subject 

9 of the petition, unless the petitioner or the real 

10 party in interest of the petitioner has been sued 

11 for or charged with infringement of the patent, 

12 during a period to be determined by the Direc13 tor.’’. 

14 (3) TECHNICAL AND CONFORMING AMEND15 MENT.—Section 18(a)(1)(A) of the Leahy-Smith 

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

17 329; 35 U.S.C. 321 note) is amended by striking 

18 ‘‘Section 321(c)’’ and inserting ‘‘Sections 321(c) and 

19 326(a)(13)’’. 

20 (4) DECLARATION EVIDENCE.— 

21 (A) PRELIMINARY RESPONSE TO PETITION

22 FOR INTER PARTES REVIEW.—Section 313 of 

23 title 35, United States Code, is amended by 

24 striking the period at the end and inserting ‘‘, 

mstockstill on DSK4VPTVN1PROD with BILLS

59 

•HR 9 RH

1 including affidavits or declarations of sup2 porting evidence and opinions.’’. 

3 (B) PRELIMINARY RESPONSE TO PETITION

4 FOR POST-GRANT REVIEW.—Section 323 of title 

5 35, United States Code, is amended by striking 

6 the period at the end and inserting ‘‘, including 

7 affidavits or declarations of supporting evidence 

8 and opinions.’’. 

9 (5) RIGHT OF DUE PROCESS.— 

10 (A) INTER PARTES REVIEW.—Section 

11 316(b) of title 35, United States Code, is amend12 ed by striking ‘‘and the ability’’ and inserting 

13 ‘‘the rights to due process of the patent owner 

14 and the petitioner, and the ability’’. 

15 (B) POST-GRANT REVIEW.—Section 326(b) 

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

17 striking ‘‘and the ability’’ and inserting ‘‘the 

18 rights to due process of the patent owner and the 

19 petitioner, and the ability’’. 

20 (6) SERIAL OR REDUNDANT PETITIONS.—The 

21 Director shall designate as precedential (and may 

22 change the designation as the Director determines to 

23 be appropriate), with respect to the application of 

24 subsections (d) and (e) of section 325 of title 35, 

mstockstill on DSK4VPTVN1PROD with BILLS

60 

•HR 9 RH

1 United States Code, the decisions of the Patent Trial 

2 and Appeal Board in each of the following decisions: 

3 (A) Dell Inc. v. Electronics and Telecomms. 

4 Research Inst., IPR2015–00549, Paper 10 

5 (PTAB Mar. 26, 2015). 

6 (B) Zimmer Holdings, Inc. v. Bonutti Skel7 etal Innovations LLC, IPR2014–01080, Paper 

8 17 (PTAB Oct. 31, 2014). 

9 (C) Prism Pharma Co., Ltd. v. Choongwae 

10 Pharma Corp., IPR2014–00315, Paper 14 

11 (PTAB July 8, 2014). 

12 (D) Unilever, Inc. v. The Procter & Gamble 

13 Co., IPR2014–00506, Paper 17 (PTAB July 7, 

14 2014). 

15 (7) PRELIMINARY RESPONSE TO INTER PARTES

16 REVIEW AMENDMENT.— 

17 (A) AMENDMENT.—Section 313 of title 35, 

18 United States Code, is amended by adding at the 

19 end the following new sentence: ‘‘The Director 

20 may accept a reply by the petitioner to new 

21 issues raised in the preliminary response, upon 

22 request by the petitioner to file such reply, with23 in a time period set by the Director.’’ 

mstockstill on DSK4VPTVN1PROD with BILLS

61 

•HR 9 RH

1 (B) CONFORMING AMENDMENTS.—Section 

2 314 of title 35, United States Code, is amend3 ed— 

4 (i) in subsection (a), by striking ‘‘any 

5 response’’ and inserting ‘‘any response or 

6 reply’’; and 

7 (ii) in subsection (b)— 

8 (I) in paragraph (1), by striking 

9 ‘‘receiving a preliminary response to 

10 the petition’’ and inserting ‘‘receiving 

11 the later of a preliminary response to 

12 the petition or a reply to such prelimi13 nary response’’; and 

14 (II) by amending paragraph (2) 

15 to read as follows: 

16 ‘‘(2) if— 

17 ‘‘(A) no such preliminary response is filed, 

18 the last date on which such response may be 

19 filed; and 

20 ‘‘(B) such preliminary response is filed and 

21 no such reply is requested, the last day on which 

22 such reply may be requested.’’. 

23 (8) EFFECTIVE DATE, REGULATIONS, AND TRAN24 SITION FOR SHORT SALES.— 

mstockstill on DSK4VPTVN1PROD with BILLS

62 

•HR 9 RH

1 (A) EFFECTIVE DATE.—Sections 316(a)(15) 

2 and 326(a)(14) of title 35, United States Code, 

3 as added by paragraphs (1) and (2) shall take 

4 effect on the date of the enactment of this Act. 

5 (B) REGULATIONS REQUIRED.—Not later 

6 than one year after the date of the enactment of 

7 this Act, the Director shall issue regulations to 

8 carry out sections 316(a)(15) and 326(a)(14) of 

9 title 35, United States Code, as added by para10 graphs (1) and (2). 

11 (C) TRANSITION.—During the period that 

12 begins on the date of the enactment of this Act 

13 and ends on the date of the issuance of the regu14 lations required pursuant to subparagraph (B), 

15 a petition filed under chapter 31 or 32 of title 

16 35, United States Code, on or after the date of 

17 the enactment of this Act may not be instituted 

18 unless the petitioner certifies that the petitioner 

19 and the real parties in interest of such peti20 tioner— 

21 (i) do not own a financial instrument 

22 described in sections 316(a)(15) and 

23 326(a)(14) of title 35, United States Code, 

24 as added by paragraphs (1) and (2), during 

mstockstill on DSK4VPTVN1PROD with BILLS

63 

•HR 9 RH

1 the one-week period following the date on 

2 which the petition is filed; and 

3 (ii) have not demanded anything of 

4 value from the patent owner or an affiliate 

5 of the patent owner during the period be6 tween September 16, 2012, and the date of 

7 the filing of the petition. 

8 (9) EFFECTIVE DATE.—Except as otherwise pro9 vided, the amendments made by this subsection shall 

10 take effect upon the expiration of the 90-day period 

11 beginning on the date of the enactment of this Act, 

12 and shall apply to any proceeding under chapter 31 

13 or 32 of title 35, United States Code, as the case may 

14 be, for which the petition for review is filed on or 

15 after such effective date. 

16 (c) CODIFICATION OF THE DOUBLE-PATENTING DOC17 TRINE.— 

18 (1) AMENDMENTS.— 

19 (A) CONDITIONS FOR PATENTABILITY; NOV20 ELTY.—Section 102 of title 35, United States 

21 Code, is amended by inserting at the end the fol22 lowing new subsection: 

23 ‘‘(e) DOUBLE-PATENTING PRIOR ART.—If a first 

24 claimed invention in a first patent was effectively filed on 

25 or before the effective filing date of a second claimed invenmstockstill on DSK4VPTVN1PROD with BILLS

64 

•HR 9 RH

1 tion in a second patent or in the application on which the 

2 second patent issues, and the first claimed invention is not 

3 otherwise prior art to the second claimed invention under 

4 this section, then the first claimed invention shall, notwith5 standing the other subsections of this section, constitute 

6 prior art to the second claimed invention under this sub7 section unless— 

8 ‘‘(1) the second claimed invention is consonant 

9 with a requirement for restriction under the first sen10 tence of section 121 with respect to the claims issued 

11 in the first patent; or 

12 ‘‘(2) an election has been recorded in the Office 

13 by the owner of the second patent or the application 

14 on which the second patent issues disclaiming the 

15 right to bring or maintain a civil action under sec16 tion 281 to enforce the second patent, except that such 

17 disclaimer shall not apply if— 

18 ‘‘(A) the relief being sought in the civil ac19 tion would not constitute a cause of action 

20 barred by res judicata had the asserted claims of 

21 the second patent been issued in the first patent; 

22 and 

23 ‘‘(B) the owner of the first patent or the ap24 plication on which the first patent issues has re25 corded an election limiting the enforcement of the 

mstockstill on DSK4VPTVN1PROD with BILLS

65 

•HR 9 RH

1 first patent relative to the second patent in the 

2 manner described in this paragraph, the owner 

3 of the first patent is a party to the civil action, 

4 or a separate action under section 281 to enforce 

5 the first patent can no longer be brought or 

6 maintained.’’. 

7 (B) DIVISIONAL APPLICATIONS.—Section 

8 121 of title 35, United States Code, is amended 

9 by striking the third sentence. 

10 (C) LIMITATIONS.—Paragraph (2) of sec11 tion 154(b) of title 35, United States Code, is 

12 amended by inserting at the end the following 

13 new subparagraph: 

14 ‘‘(D) PATENTS SUBJECT TO ELECTION.—If 

15 a patent is subject to an election as described in 

16 section 102(e)(2) with respect to one or more 

17 other patents, the adjusted term of the patent 

18 under this subsection may not exceed a period of 

19 17 years from the date of issuance of any of such 

20 other patents and the portion of any adjustment 

21 of the term of the patent under this subsection 

22 that extends beyond the expiration of such 17- 

23 year period years shall be void.’’. 

24 (2) EFFECTIVE DATE, IMPLEMENTATION, AND

25 OTHER TRANSITION PROVISIONS.— 

mstockstill on DSK4VPTVN1PROD with BILLS

66 

•HR 9 RH

1 (A) IN GENERAL.—The amendments made 

2 by paragraph (1) shall be effective as if included 

3 in the amendment made by section 3(b)(1) of the 

4 Leahy-Smith America Invents Act (Public Law 

5 112–29). 

6 (B) SAVINGS CLAUSE.—If a second claimed 

7 invention in a second patent issued before the 

8 date of the enactment of this Act is subject to the 

9 amendments made by paragraph (1) and would 

10 not have been invalid had the amendments made 

11 by paragraph (1) and the provisions of this 

12 paragraph not been enacted, then, notwith13 standing section 102(e) of title 35, United States 

14 Code, as added by paragraph (1), prior art 

15 under such section 102(e) may not be considered 

16 in determining the validity of such second 

17 claimed invention. 

18 (C) PROVISIONAL REJECTIONS TO CON19 TINUE.—If a first claimed invention in a first 

20 application for patent subject to the amendments 

21 under paragraph (1) would, if issued as a pat22 ent, constitute prior art under section 102(e) of 

23 title 35, United States Code, as added by para24 graph (1), with respect to a second claimed in25 vention in a second application, the first claimed 

mstockstill on DSK4VPTVN1PROD with BILLS

67 

•HR 9 RH

1 invention may be provisionally cited by the Of2 fice as prior art in a notice under section 132 

3 of title 35, United States Code, in connection 

4 with the examination of the second claimed in5 vention. 

6 (D) PATENT TERM; RULE OF CONSTRUC7 TION.— 

8 (i) IN GENERAL.—If the term of a pat9 ent is based upon the amendments made to 

10 subsection (a) of section 154, title 35, 

11 United States Code, by the Uruguay Round 

12 Agreements Act (Public Law 103–465; 108 

13 Stat. 4809)— 

14 (I) the patent term as provided 

15 under subsection (a) of such section 

16 154, any adjustment to said term as 

17 provided under subsection (b) of such 

18 section 154, and any extension of such 

19 term as provided under section 156 of 

20 title 35, United States Code, shall not 

21 constitute, nor be deemed by the Office 

22 or the courts to constitute, an unjusti23 fied period of protection under the pat24 ent or an unjustified extension of the 

mstockstill on DSK4VPTVN1PROD with BILLS

68 

•HR 9 RH

1 right to exclude under the patent rel2 ative to an earlier-expiring patent; 

3 (II) the Office shall not condition 

4 the issuance of such a patent on a dis5 claimer of any portion of the term of 

6 the patent; and 

7 (III) the Office may condition the 

8 issuance of such a patent on the mak9 ing of an election as described in sec10 tion 102(e)(2) of title 35, United States 

11 Code, as added by paragraph (1) in 

12 lieu of the filing of a disclaimer with 

13 respect to the ownership or separate 

14 enforcement of the patent that would 

15 otherwise be required by the Office in 

16 cases of non-statutory double pat17 enting. 

18 (ii) DISCLAIMERS IN PENDING APPLI19 CATIONS.—A terminal disclaimer made in 

20 connection with an application for patent 

21 with respect to one or more other applica22 tions or patents shall be given no effect and 

23 shall be treated as having never been made 

24 if— 

mstockstill on DSK4VPTVN1PROD with BILLS

69 

•HR 9 RH

1 (I) within one year after the date 

2 of the enactment of this Act, an elec3 tion as described in section 102(e)(2) of 

4 title 35, United State Code, as added 

5 by paragraph (1), has been made in 

6 connection with the application or any 

7 patent issuing thereon and has effect 

8 with respect to each such other appli9 cation or patent with respect to which 

10 the disclaimer was made; 

11 (II) the application was pending 

12 before the Office on or after July 1, 

13 2015; and 

14 (III) the term of a patent issued 

15 on the application would be based 

16 upon the amendments made to sub17 section (a) of section 154 of title 35, 

18 United States Code, by the Uruguay 

19 Round Agreements Act. 

20 (iii) DISCLAIMERS OTHERWISE UNAF21 FECTED.—Except as provided in clause (ii), 

22 nothing in this subsection shall be construed 

23 to negate the effect of a terminal disclaimer 

24 limiting the enforcement of a patent issued 

mstockstill on DSK4VPTVN1PROD with BILLS

70 

•HR 9 RH

1 on or before the date of the enactment of this 

2 Act. 

3 (iv) TERMINAL DISCLAIMER DE4 FINED.—In this subparagraph, the term 

5 ‘‘terminal disclaimer’’ has the meaning as 

6 such term is described in section 1.321 of 

7 title 37, Code of Federal Regulations. 

8 (E) EXCLUSIVE RULES.— 

9 (i) FIRST-INVENTOR-TO-FILE PAT10 ENTS.—A claimed invention of a patent de11 scribed in section 3(n)(1) of the Leahy12 Smith America Invents Act (35 U.S.C. 100 

13 note) and issued before, on, or after the date 

14 of the enactment of this Act may not be held 

15 invalid on any nonstatutory double-pat16 enting ground. 

17 (ii) FIRST-TO-INVENT PATENTS.—A 

18 claimed invention of a patent not described 

19 in section 3(n)(1) of the Leahy-Smith 

20 America Invents Act and issued before, on, 

21 or after the date of the enactment of this Act 

22 may not be held invalid with respect to a 

23 claimed invention of another patent based 

24 on any nonstatutory double patenting 

25 ground if one of the claimed inventions is 

mstockstill on DSK4VPTVN1PROD with BILLS

71 

•HR 9 RH

1 prior art to the other claimed invention 

2 under section 102 of title 35, United States 

3 Code, as in effect on the day prior to the ef4 fective date of the amendments made by sec5 tion 3(b)(1) of the Leahy-Smith America 

6 Invents Act. 

7 (F) EFFECT OF RULE OF CONSTRUCTION

8 AND EXCLUSIVE RULES.—Subparagraphs (D) 

9 and (E) shall take effect on the date of the enact10 ment of this Act, except that they shall not apply 

11 to any defense raised in a civil action brought 

12 before such date. 

13 (d) PTO PATENT REVIEWS.— 

14 (1) CLARIFICATION.— 

15 (A) SCOPE OF PRIOR ART.—Section 

16 18(a)(1)(C)(i) of the Leahy-Smith America In17 vents Act (35 U.S.C. 321 note) is amended by 

18 striking ‘‘section 102(a)’’ and inserting ‘‘sub19 section (a) or (e) of section 102’’. 

20 (B) EFFECTIVE DATE.—The amendment 

21 made by subparagraph (A) shall take effect on 

22 the date of the enactment of this Act and shall 

23 apply to any proceeding pending on, or filed on 

24 or after, such date of enactment. 

mstockstill on DSK4VPTVN1PROD with BILLS

72 

•HR 9 RH

1 (2) AUTHORITY TO WAIVE FEE.—Subject to 

2 available resources, the Director may waive payment 

3 of a filing fee for a transitional proceeding described 

4 under section 18(a) of the Leahy-Smith America In5 vents Act (35 U.S.C. 321 note). 

6 (3) PROCEEDING CONSOLIDATION CLARIFICA7 TION.—Section 315(c) of title 35, United States Code, 

8 is amended to read as follows: 

9 ‘‘(c) JOINDER.— 

10 ‘‘(1) JOINDER OF PARTY.—If the Director insti11 tutes an inter partes review, the Director, in his or 

12 her discretion, may join as a party to that inter 

13 partes review any person who meets the requirement 

14 of properly filing a petition under section 311 that 

15 the Director, after receiving a preliminary response 

16 under section 313 or the expiration of the time for fil17 ing such a response, determines warrants the institu18 tion of an inter partes review under section 314. 

19 ‘‘(2) JOINDER OF LATER FILED PETITION.—For 

20 good cause shown, the Director may allow a party 

21 who files a petition that meets the requirement de22 scribed in paragraph (1) and concerns the patent of 

23 a pending inter partes review to join the petition to 

24 the pending review.’’. 

25 (e) CLARIFICATION OF JURISDICTION.— 

mstockstill on DSK4VPTVN1PROD with BILLS

73 

•HR 9 RH

1 (1) IN GENERAL.—An action or claim arises 

2 under an Act of Congress relating to patents if such 

3 action or claim— 

4 (A) necessarily requires resolution of a dis5 puted question as to the validity of a patent or 

6 the scope of a patent claim; or 

7 (B) is an action or claim for legal mal8 practice that arises from an attorney’s conduct 

9 in relation to an action or claim arising under 

10 an Act of Congress relating to patents (including 

11 as described in paragraph (1)). 

12 (2) APPLICABILITY.—Paragraph (1)— 

13 (A) shall apply to all cases filed on or after, 

14 or pending on, the date of the enactment of this 

15 Act; and 

16 (B) shall not apply to a case in which a 

17 Federal court has issued a ruling on whether the 

18 case or a claim arises under any Act of Congress 

19 relating to patents or plant variety protection 

20 before the date of the enactment of this Act. 

21 (f) PATENT PILOT PROGRAM IN CERTAIN DISTRICT

22 COURTS DURATION.— 

23 (1) DURATION.—Section 1(c) of Public Law 

24 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is 

25 amended to read as follows: 

mstockstill on DSK4VPTVN1PROD with BILLS

74 

•HR 9 RH

1 ‘‘(c) DURATION.—The program established under sub2 section (a) shall be maintained using existing resources, 

3 and shall terminate 20 years after the end of the 6-month 

4 period described in subsection (b).’’. 

5 (2) EFFECTIVE DATE.—The amendment made by 

6 paragraph (1) shall take effect on the date of the en7 actment of this Act. 

8 (g) MANAGEMENT OF THE UNITED STATES PATENT

9 AND TRADEMARK OFFICE.— 

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

11 United States Code, is amended in the first sen12 tence— 

13 (A) by striking ‘‘be vested with the author14 ity to act in the capacity of the’’ and inserting 

15 ‘‘serve as Acting,’’; and 

16 (B) by inserting before the period ‘‘or in the 

17 event of a vacancy in the office of the Director’’. 

18 (2) EFFECTIVE DATE.—The amendments made 

19 by paragraph (1) shall take effect on the date of the 

20 enactment of this Act and shall apply with respect to 

21 appointments and vacancies occurring before, on, or 

22 after the date of the enactment of this Act. 

23 (h) TECHNICAL CORRECTIONS.— 

24 (1) NOVELTY.— 

mstockstill on DSK4VPTVN1PROD with BILLS

75 

•HR 9 RH

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

2 title 35, United States Code, is amended by 

3 striking ‘‘the inventor or joint inventor or by an4 other’’ and inserting ‘‘the inventor or a joint in5 ventor or another’’. 

6 (B) EFFECTIVE DATE.—The amendment 

7 made by subparagraph (A) shall be effective as 

8 if included in the amendment made by section 

9 3(b)(1) of the Leahy-Smith America Invents Act 

10 (Public Law 112–29). 

11 (2) INVENTOR’S OATH OR DECLARATION.— 

12 (A) AMENDMENT.—The second sentence of 

13 section 115(a) of title 35, United States Code, is 

14 amended by striking ‘‘shall execute’’ and insert15 ing ‘‘may be required to execute’’. 

16 (B) EFFECTIVE DATE.—The amendment 

17 made by subparagraph (A) shall be effective as 

18 if included in the amendment made by section 

19 4(a)(1) of the Leahy-Smith America Invents Act 

20 (Public Law 112–29). 

21 (3) ASSIGNEE FILERS.— 

22 (A) BENEFIT OF EARLIER FILING DATE; 

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

24 35, United States Code, is amended, in the first 

25 sentence, by striking ‘‘by an inventor or invenmstockstill on DSK4VPTVN1PROD with BILLS

76 

•HR 9 RH

1 tors named’’ and inserting ‘‘that names the in2 ventor or a joint inventor’’. 

3 (B) BENEFIT OF EARLIER FILING DATE IN

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

5 United States Code, is amended, in the first sen6 tence, by striking ‘‘names an inventor or joint 

7 inventor’’ and inserting ‘‘names the inventor or 

8 a joint inventor’’. 

9 (C) EFFECTIVE DATE.—The amendments 

10 made by this paragraph shall take effect on the 

11 date of the enactment of this Act and shall apply 

12 to any patent application, and any patent 

13 issuing from such application, that is filed on or 

14 after September 16, 2012. 

15 (4) DERIVED PATENTS.— 

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

17 35, United States Code, is amended by striking 

18 ‘‘or joint inventor’’ and inserting ‘‘or a joint in19 ventor’’. 

20 (B) EFFECTIVE DATE.—The amendment 

21 made by subparagraph (A) shall be effective as 

22 if included in the amendment made by section 

23 3(h)(1) of the Leahy-Smith America Invents Act 

24 (Public Law 112–29). 

mstockstill on DSK4VPTVN1PROD with BILLS

77 

•HR 9 RH

1 (5) SPECIFICATION.—Notwithstanding section 

2 4(e) of the Leahy-Smith America Invents Act (Public 

3 Law 112–29; 125 Stat. 297), the amendments made 

4 by subsections (c) and (d) of section 4 of such Act 

5 shall apply to any proceeding or matter that is pend6 ing on, or filed on or after, the date of the enactment 

7 of this Act. 

8 (6) TIME LIMIT FOR COMMENCING MISCONDUCT

9 PROCEEDINGS.— 

10 (A) AMENDMENT.—Section 32 of title 35, 

11 United States Code, is amended by striking the 

12 fourth sentence and inserting the following new 

13 sentences: ‘‘A proceeding under this section shall 

14 be commenced not later than the earlier of either 

15 the date that is 10 years after the date on which 

16 the misconduct forming the basis for the pro17 ceeding occurred, or 18 months after the date on 

18 which the Director of the Office of Enrollment 

19 and Discipline received a written grievance (as 

20 prescribed in the regulations established under 

21 section 2(b)(2)(D)) about a specified individual 

22 that describes the misconduct forming the basis 

23 for the proceeding. If the misconduct that forms 

24 the basis for the proceeding under this section is 

25 at issue in a court or administrative-agency promstockstill on DSK4VPTVN1PROD with BILLS

78 

•HR 9 RH

1 ceeding, the 18-month period for commencing the 

2 proceeding under this section shall be tolled until 

3 the court or agency’s decision regarding the mis4 conduct becomes final and non-appealable. The 

5 18-month period for commencing a proceeding 

6 under this section also may be tolled by agree7 ment between the parties.’’ 

8 (B) EFFECTIVE DATE.—The amendment 

9 made by this paragraph shall take effect on the 

10 date of the enactment of this Act and shall apply 

11 to any action in which the Office files a com12 plaint on or after such date of enactment. 

13 (7) PATENT OWNER RESPONSE.— 

14 (A) CONDUCT OF INTER PARTES REVIEW.— 

15 Paragraph (8) of section 316(a) of title 35, 

16 United States Code, is amended by striking ‘‘the 

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

18 petition under section 311’’. 

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

20 Paragraph (8) of section 326(a) of title 35, 

21 United States Code, is amended by striking ‘‘the 

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

23 petition under section 321’’. 

mstockstill on DSK4VPTVN1PROD with BILLS

79 

•HR 9 RH

1 (C) EFFECTIVE DATE.—The amendments 

2 made by this paragraph shall take effect on the 

3 date of the enactment of this Act. 

4 (8) INTERNATIONAL APPLICATIONS.— 

5 (A) AMENDMENTS.—Section 202(b) of the 

6 Patent Law Treaties Implementation Act of 

7 2012 (Public Law 112–211; 126 Stat. 1536) is 

8 amended— 

9 (i) by striking paragraph (7); and 

10 (ii) by redesignating paragraphs (8) 

11 and (9) as paragraphs (7) and (8), respec12 tively. 

13 (B) EFFECTIVE DATE.—The amendments 

14 made by subparagraph (A) shall be effective as 

15 if included in title II of the Patent Law Treaties 

16 Implementation Act of 2012 (Public Law 112– 

17 21). 

18 (9) GLOBAL WORKSHARING.— 

19 (A) AMENDMENT.—Section 122 of title 35, 

20 United States Code, is amended by adding at the 

21 end the following new subsection: 

22 ‘‘(f) FOREIGN OR INTERNATIONAL FILING.— 

23 ‘‘(1) PROVISION OF INFORMATION.—The Director 

24 may provide information concerning an application 

25 for patent to a foreign or international intellectual 

mstockstill on DSK4VPTVN1PROD with BILLS

80 

•HR 9 RH

1 property office if a corresponding application is filed 

2 with such foreign or international intellectual prop3 erty office. If the corresponding application is an 

4 international application, such information may also 

5 be provided to an International Searching Authority, 

6 an International Preliminary Examining Authority, 

7 or the International Bureau. 

8 ‘‘(2) DEFINITIONS.—For purposes of this sub9 section, the terms ‘international application’, ‘Inter10 national Searching Authority’, ‘International Pre11 liminary Examining Authority’, and ‘International 

12 Bureau’ have the same meaning given those terms 

13 under section 351.’’. 

14 (B) CONFORMING AMENDMENT.—Section 

15 122(a) of title 35, United States Code, is amend16 ed by striking ‘‘subsection (b)’’ and inserting 

17 ‘‘subsections (b) and (f)’’. 

18 (C) EFFECTIVE DATE.—The amendments 

19 made by this paragraph shall take effect on the 

20 date of the enactment of this Act and shall apply 

21 to applications for patent that are pending on, 

22 or filed on or after, such effective date. 

23 (10) JURISDICTION FOR APPEALS OF TRADE24 MARK CASES.— 

mstockstill on DSK4VPTVN1PROD with BILLS

81 

•HR 9 RH

1 (A) COURT OF APPEALS.—Section 

2 1295(a)(4)(C) of title 28, United States Code, is 

3 amended by striking ‘‘title 35’’ and inserting 

4 ‘‘title 35 or section 21(b) of the Act of July 5, 

5 1946 (commonly referred to as the ‘Trademark 

6 Act of 1946’) (15 U.S.C. 1071(b))’’; 

7 (B) CONFORMING AMENDMENT.—Section 

8 39(a) of the Act of July 5, 1946 (commonly re9 ferred to as the ‘‘Trademark Act of 1946’’) (15 

10 U.S.C. 1121(a)) is amended by striking ‘‘under 

11 this Act’’ and inserting ‘‘under this Act (except 

12 as provided in section 1295(a)(4) of title 28, 

13 United States Code)’’. 

14 (C) EFFECTIVE DATE.—The amendment 

15 made by subparagraph (A) shall apply in any 

16 case in which a final judgment is entered by the 

17 district court on or after the date of enactment 

18 of this Act. 

19 (11) OFFICERS AND EMPLOYEES AMENDMENT.— 

20 (A) AMENDMENT.—Section 3(b)(3)(A) of 

21 title 35, United States Code, is amended by 

22 striking ‘‘appoint’’ and inserting ‘‘appoint, or 

23 nominate for appointment by the Secretary of 

24 Commerce,’’. 

mstockstill on DSK4VPTVN1PROD with BILLS

82 

•HR 9 RH

1 (B) APPLICABILITY.—Section 3(b)(3)(B) of 

2 title 35, United States Code, as added by sub3 paragraph (A) shall apply to all officers nomi4 nated for appointment by the Secretary of Com5 merce before, on, or after the date of the enact6 ment of this Act. 

7 (i) EXTENSION OF FEE-SETTING AUTHORITY.—Sec8 tion 10(i)(2) of the Leahy-Smith America Invents Act (Pub9 lic Law 112–29; 125 Stat. 319; 35 U.S.C. 41 note) is 

10 amended by striking ‘‘7-year’’ and inserting ‘‘17-year’’. 

11 SEC. 10. EFFECTIVE DATE. 

12 Except as otherwise provided in this Act, the provi13 sions of this Act shall take effect on the date of the enact14 ment of this Act, and shall apply to any patent issued, or 

15 any action filed, on or after that date. 

mstockstill on DSK4VPTVN1PROD with BILLS

mstockstill on DSK4VPTVN1PROD with BILLS

Union Calendar No. 177 

114TH CONGRESS 

1ST SESSION H. R. 9 

[Report No. 114–235] 

A BILL 

To amend title 35, United States Code, and the 

other purposes. provements and technical corrections, and for Leahy-Smith America Invents Act to make imJULY 29, 2015 

Reported with an amendment, committed to the Comand ordered to be printed mittee of the Whole House on the State of the Union, 

mstockstill on DSK4VPTVN1PROD with BILLS