I 

114TH CONGRESS 

1ST SESSION H. R. 9 

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 

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. 

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

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Innovation Act’’. 

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

7 this Act is as follows: 


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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. 

1 SEC. 2. DEFINITIONS. 

2 In this Act: 

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

4 the Under Secretary of Commerce for Intellectual 

5 Property and Director of the United States Patent 

6 and Trademark Office. 

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

8 United States Patent and Trademark Office. 

9 SEC. 3. PATENT INFRINGEMENT ACTIONS. 

10 (a) PLEADING REQUIREMENTS.— 

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

12 United States Code, is amended by inserting after 

13 section 281 the following: 

14 ‘‘§ 281A. Pleading requirements for patent infringe15 ment actions 

16 ‘‘(a) PLEADING REQUIREMENTS.—Except as pro17 vided in subsection (b), in a civil action in which a party 

18 asserts a claim for relief arising under any Act of Con19 gress relating to patents, a party alleging infringement 

20 shall include in the initial complaint, counterclaim, or 


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1 cross-claim for patent infringement, unless the informa2 tion is not reasonably accessible to such party, the fol3 lowing: 

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

5 infringed. 

6 ‘‘(2) An identification of each claim of each pat7 ent identified under paragraph (1) that is allegedly 

8 infringed. 

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

10 (2), an identification of each accused process, ma11 chine, manufacture, or composition of matter (re12 ferred to in this section as an ‘accused instrumen13 tality’) alleged to infringe the claim. 

14 ‘‘(4) For each accused instrumentality identi15 fied under paragraph (3), an identification with par16 ticularity, if known, of— 

17 ‘‘(A) the name or model number of each 

18 accused instrumentality; or 

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

20 a description of each accused instrumentality. 

21 ‘‘(5) For each accused instrumentality identi22 fied under paragraph (3), a clear and concise state23 ment of— 


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1 ‘‘(A) where each element of each claim 

2 identified under paragraph (2) is found within 

3 the accused instrumentality; and 

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

5 limitation of each claim identified under para6 graph (2) is met by the accused instrumen7 tality. 

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

9 description of the acts of the alleged indirect in10 fringer that contribute to or are inducing the direct 

11 infringement. 

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

13 alleging infringement to assert each patent identified 

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

15 court’s jurisdiction. 

16 ‘‘(8) A clear and concise description of the prin17 cipal business, if any, of the party alleging infringe18 ment. 

19 ‘‘(9) A list of each complaint filed, of which the 

20 party alleging infringement has knowledge, that as21 serts or asserted any of the patents identified under 

22 paragraph (1). 

23 ‘‘(10) For each patent identified under para24 graph (1), whether a standard-setting body has spe25 cifically declared such patent to be essential, potenVerDate Sep 11 2014 06:53 Feb 12, 2015 Jkt 049200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H9.IH H9

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1 tially essential, or having potential to become essen2 tial to that standard-setting body, and whether the 

3 United States Government or a foreign government 

4 has imposed specific licensing requirements with re5 spect to such patent. 

6 ‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—If 

7 information required to be disclosed under subsection (a) 

8 is not readily accessible to a party, that information may 

9 instead be generally described, along with an explanation 

10 of why such undisclosed information was not readily acces11 sible, and of any efforts made by such party to access such 

12 information. 

13 ‘‘(c) CONFIDENTIAL INFORMATION.—A party re14 quired to disclose information described under subsection 

15 (a) may file, under seal, information believed to be con16 fidential, with a motion setting forth good cause for such 

17 sealing. If such motion is denied by the court, the party 

18 may seek to file an amended complaint. 

19 ‘‘(d) EXEMPTION.—A civil action that includes a 

20 claim for relief arising under section 271(e)(2) shall not 

21 be subject to the requirements of subsection (a).’’. 

22 (2) CONFORMING AMENDMENT.—The table of 

23 sections for chapter 29 of title 35, United States 

24 Code, is amended by inserting after the item relating 

25 to section 281 the following new item: 

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


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1 (b) FEES AND OTHER EXPENSES.— 

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

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

4 ‘‘§ 285. Fees and other expenses 

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

6 party, reasonable fees and other expenses incurred by that 

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

8 asserts a claim for relief arising under any Act of Con9 gress relating to patents, unless the court finds that the 

10 position and conduct of the nonprevailing party or parties 

11 were reasonably justified in law and fact or that special 

12 circumstances (such as severe economic hardship to a 

13 named inventor) make an award unjust. 

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

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

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

17 party will be able to pay an award of fees and other ex18 penses if such an award is made under subsection (a). If 

19 a nonprevailing party is unable to pay an award that is 

20 made against it under subsection (a), the court may make 

21 a party that has been joined under section 299(d) with 

22 respect to such party liable for the unsatisfied portion of 

23 the award. 

24 ‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac25 tion that asserts a claim for relief arising under any Act 


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1 of Congress relating to patents against another party, and 

2 that subsequently unilaterally extends to such other party 

3 a covenant not to sue for infringement with respect to the 

4 patent or patents at issue, shall be deemed to be a nonpre5 vailing party (and the other party the prevailing party) 

6 for purposes of this section, unless the party asserting 

7 such claim would have been entitled, at the time that such 

8 covenant was extended, to voluntarily dismiss the action 

9 or claim without a court order under Rule 41 of the Fed10 eral Rules of Civil Procedure.’’. 

11 (2) CONFORMING AMENDMENT AND AMEND12 MENT.— 

13 (A) CONFORMING AMENDMENT.—The item 

14 relating to section 285 of the table of sections 

15 for chapter 29 of title 35, United States Code, 

16 is amended to read as follows: 

‘‘285. Fees and other expenses.’’. 

17 (B) AMENDMENT.—Section 273 of title 

18 35, United States Code, is amended by striking 

19 subsections (f) and (g). 

20 (3) EFFECTIVE DATE.—The amendments made 

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

22 enactment of this Act and shall apply to any action 

23 for which a complaint is filed on or after the first 

24 day of the 6-month period ending on that effective 

25 date. 


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1 (c) JOINDER OF INTERESTED PARTIES.—Section 

2 299 of title 35, United States Code, is amended by adding 

3 at the end the following new subsection: 

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

5 ‘‘(1) JOINDER.—In a civil action arising under 

6 any Act of Congress relating to patents in which 

7 fees and other expenses have been awarded under 

8 section 285 to a prevailing party defending against 

9 an allegation of infringement of a patent claim, and 

10 in which the nonprevailing party alleging infringe11 ment is unable to pay the award of fees and other 

12 expenses, the court shall grant a motion by the pre13 vailing party to join an interested party if such pre14 vailing party shows that the nonprevailing party has 

15 no substantial interest in the subject matter at issue 

16 other than asserting such patent claim in litigation. 

17 ‘‘(2) LIMITATION ON JOINDER.— 

18 ‘‘(A) DISCRETIONARY DENIAL OF MO19 TION.—The court may deny a motion to join an 

20 interested party under paragraph (1) if— 

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

22 to service of process; or 

23 ‘‘(ii) joinder under paragraph (1) 

24 would deprive the court of subject matter 

25 jurisdiction or make venue improper. 


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

2 court shall deny a motion to join an interested 

3 party under paragraph (1) if— 

4 ‘‘(i) the interested party did not time5 ly receive the notice required by paragraph 

6 (3); or 

7 ‘‘(ii) within 30 days after receiving 

8 the notice required by paragraph (3), the 

9 interested party renounces, in writing and 

10 with notice to the court and the parties to 

11 the action, any ownership, right, or direct 

12 financial interest (as described in para13 graph (4)) that the interested party has in 

14 the patent or patents at issue. 

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

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

17 it has been provided actual notice, within 30 days 

18 after the date on which it has been identified in the 

19 initial disclosure provided under section 290(b), that 

20 it has been so identified and that such party may 

21 therefore be an interested party subject to joinder 

22 under this subsection. Such notice shall be provided 

23 by the party who subsequently moves to join the in24 terested party under paragraph (1), and shall in25 clude language that— 


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1 ‘‘(A) identifies the action, the parties 

2 thereto, the patent or patents at issue, and the 

3 pleading or other paper that identified the 

4 party under section 290(b); and 

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

6 joined in the action and made subject to paying 

7 an award of fees and other expenses under sec8 tion 285(b) if— 

9 ‘‘(i) fees and other expenses are 

10 awarded in the action against the party al11 leging infringement of the patent or pat12 ents at issue under section 285(a); 

13 ‘‘(ii) the party alleging infringement is 

14 unable to pay the award of fees and other 

15 expenses; 

16 ‘‘(iii) the party receiving notice under 

17 this paragraph is determined by the court 

18 to be an interested party; and 

19 ‘‘(iv) the party receiving notice under 

20 this paragraph has not, within 30 days 

21 after receiving such notice, renounced in 

22 writing, and with notice to the court and 

23 the parties to the action, any ownership, 

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1 ested party has in the patent or patents at 

2 issue. 

3 ‘‘(4) INTERESTED PARTY DEFINED.—In this 

4 subsection, the term ‘interested party’ means a per5 son, other than the party alleging infringement, 

6 that— 

7 ‘‘(A) is an assignee of the patent or pat8 ents at issue; 

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

10 right, to enforce or sublicense the patent or pat11 ents at issue; or 

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

13 patent or patents at issue, including the right 

14 to any part of an award of damages or any part 

15 of licensing revenue, except that a person with 

16 a direct financial interest does not include— 

17 ‘‘(i) an attorney or law firm providing 

18 legal representation in the civil action de19 scribed in paragraph (1) if the sole basis 

20 for the financial interest of the attorney or 

21 law firm in the patent or patents at issue 

22 arises from the attorney or law firm’s re23 ceipt of compensation reasonably related to 

24 the provision of the legal representation; or 


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1 ‘‘(ii) a person whose sole financial in2 terest in the patent or patents at issue is 

3 ownership of an equity interest in the 

4 party alleging infringement, unless such 

5 person also has the right or ability to influ6 ence, direct, or control the civil action.’’. 

7 (d) DISCOVERY LIMITS.— 

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

9 United States Code, is amended by adding at the 

10 end the following new section: 

11 ‘‘§ 299A. Discovery in patent infringement action 

12 ‘‘(a) DISCOVERY IN PATENT INFRINGEMENT AC13 TION.—Except as provided in subsections (b) and (c), in 

14 a civil action arising under any Act of Congress relating 

15 to patents, if the court determines that a ruling relating 

16 to the construction of terms used in a patent claim as17 serted in the complaint is required, discovery shall be lim18 ited, until such ruling is issued, to information necessary 

19 for the court to determine the meaning of the terms used 

20 in the patent claim, including any interpretation of those 

21 terms used to support the claim of infringement. 

22 ‘‘(b) DISCRETION TO EXPAND SCOPE OF DIS23 COVERY.— 

24 ‘‘(1) TIMELY RESOLUTION OF ACTIONS.—In the 

25 case of an action under any provision of Federal law 


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1 (including an action that includes a claim for relief 

2 arising under section 271(e)), for which resolution 

3 within a specified period of time of a civil action 

4 arising under any Act of Congress relating to pat5 ents will necessarily affect the rights of a party with 

6 respect to the patent, the court shall permit dis7 covery, in addition to the discovery authorized under 

8 subsection (a), before the ruling described in sub9 section (a) is issued as necessary to ensure timely 

10 resolution of the action. 

11 ‘‘(2) RESOLUTION OF MOTIONS.—When nec12 essary to resolve a motion properly raised by a party 

13 before a ruling relating to the construction of terms 

14 described in subsection (a) is issued, the court may 

15 allow limited discovery in addition to the discovery 

16 authorized under subsection (a) as necessary to re17 solve the motion. 

18 ‘‘(3) SPECIAL CIRCUMSTANCES.—In special cir19 cumstances that would make denial of discovery a 

20 manifest injustice, the court may permit discovery, 

21 in addition to the discovery authorized under sub22 section (a), as necessary to prevent the manifest in23 justice. 

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1 vided under subsection (a) shall not apply to an ac2 tion seeking a preliminary injunction to redress 

3 harm arising from the use, sale, or offer for sale of 

4 any allegedly infringing instrumentality that com5 petes with a product sold or offered for sale, or a 

6 process used in manufacture, by a party alleging in7 fringement. 

8 ‘‘(c) EXCLUSION FROM DISCOVERY LIMITATION.— 

9 The parties may voluntarily consent to be excluded, in 

10 whole or in part, from the limitation on discovery provided 

11 under subsection (a) if at least one plaintiff and one de12 fendant enter into a signed stipulation, to be filed with 

13 and signed by the court. With regard to any discovery ex14 cluded from the requirements of subsection (a) under the 

15 signed stipulation, with respect to such parties, such dis16 covery shall proceed according to the Federal Rules of 

17 Civil Procedure.’’. 

18 (2) CONFORMING AMENDMENT.—The table of 

19 sections for chapter 29 of title 35, United States 

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

21 new item: 

‘‘299A. Discovery in patent infringement action.’’. 

22 (e) SENSE OF CONGRESS.—It is the sense of Con23 gress that it is an abuse of the patent system and against 

24 public policy for a party to send out purposely evasive de25 mand letters to end users alleging patent infringement. 


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1 Demand letters sent should, at the least, include basic in2 formation about the patent in question, what is being in3 fringed, and how it is being infringed. Any actions or liti4 gation that stem from these types of purposely evasive de5 mand letters to end users should be considered a fraudu6 lent or deceptive practice and an exceptional circumstance 

7 when considering whether the litigation is abusive. 

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

9 United States Code, is amended— 

10 (1) in the first undesignated paragraph, by 

11 striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN12 ERAL.—Upon finding’’; 

13 (2) in the second undesignated paragraph, by 

14 striking ‘‘When the damages’’ and inserting ‘‘(b) AS15 SESSMENT BY COURT; TREBLE DAMAGES.—When 

16 the damages’’; 

17 (3) by inserting after subsection (b), as des18 ignated by paragraph (2) of this subsection, the fol19 lowing: 

20 ‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking 

21 to establish willful infringement may not rely on evidence 

22 of pre-suit notification of infringement unless that notifi23 cation identifies with particularity the asserted patent, 

24 identifies the product or process accused, identifies the ul25 timate parent entity of the claimant, and explains with 


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1 particularity, to the extent possible following a reasonable 

2 investigation or inquiry, how the product or process in3 fringes one or more claims of the patent.’’; and 

4 (4) in the last undesignated paragraph, by 

5 striking ‘‘The court’’ and inserting ‘‘(d) EXPERT

6 TESTIMONY.—The court’’. 

7 (g) EFFECTIVE DATE.—Except as otherwise provided 

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

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

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

11 on or after that date. 

12 SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 

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

14 States Code, is amended— 

15 (1) in the heading, by striking ‘‘suits’’ and in16 serting ‘‘suits; disclosure of interests’’; 

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

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

19 (3) by adding at the end the following new sub20 sections: 

21 ‘‘(b) INITIAL DISCLOSURE.— 

22 ‘‘(1) IN GENERAL.—Except as provided in para23 graph (2), upon the filing of an initial complaint for 

24 patent infringement, the plaintiff shall disclose to 

25 the Patent and Trademark Office, the court, and 


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1 each adverse party the identity of each of the fol2 lowing: 

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

4 at issue. 

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

6 or enforce the patent or patents at issue. 

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

8 that the plaintiff knows to have a financial in9 terest in the patent or patents at issue or the 

10 plaintiff. 

11 ‘‘(D) The ultimate parent entity of any as12 signee identified under subparagraph (A) and 

13 any entity identified under subparagraph (B) or 

14 (C). 

15 ‘‘(2) EXEMPTION.—The requirements of para16 graph (1) shall not apply with respect to a civil ac17 tion filed under subsection (a) that includes a cause 

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

19 ‘‘(c) DISCLOSURE COMPLIANCE.— 

20 ‘‘(1) PUBLICLY TRADED.—For purposes of sub21 section (b)(1)(C), if the financial interest is held by 

22 a corporation traded on a public stock exchange, an 

23 identification of the name of the corporation and the 

24 public exchange listing shall satisfy the disclosure re25 quirement. 


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

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

3 held by a publicly traded corporation, the disclosure 

4 shall satisfy the disclosure requirement if the infor5 mation identifies— 

6 ‘‘(A) in the case of a partnership, the 

7 name of the partnership and the name and cor8 respondence address of each partner or other 

9 entity that holds more than a 5-percent share 

10 of that partnership; 

11 ‘‘(B) in the case of a corporation, the 

12 name of the corporation, the location of incor13 poration, the address of the principal place of 

14 business, and the name of each officer of the 

15 corporation; and 

16 ‘‘(C) for each individual, the name and 

17 correspondence address of that individual. 

18 ‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT19 ENT AND TRADEMARK OFFICE.— 

20 ‘‘(1) IN GENERAL.—A plaintiff required to sub21 mit information under subsection (b) or a subse22 quent owner of the patent or patents at issue shall, 

23 not later than 90 days after any change in the as24 signee of the patent or patents at issue or an entity 

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1 section (b)(1), submit to the Patent and Trademark 

2 Office the updated identification of such assignee or 

3 entity. 

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

5 patent for which the requirement of paragraph (1) 

6 has not been met— 

7 ‘‘(A) the plaintiff or subsequent owner 

8 shall not be entitled to recover reasonable fees 

9 and other expenses under section 285 or in10 creased damages under section 284 with respect 

11 to infringing activities taking place during any 

12 period of noncompliance with paragraph (1), 

13 unless the denial of such damages or fees would 

14 be manifestly unjust; and 

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

16 party accused of infringement reasonable fees 

17 and other expenses under section 285 that are 

18 incurred to discover the updated assignee or en19 tity described under paragraph (1), unless such 

20 sanctions would be unjust. 

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

22 ‘‘(1) FINANCIAL INTEREST.—The term ‘finan23 cial interest’— 

24 ‘‘(A) means— 


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1 ‘‘(i) with regard to a patent or pat2 ents, the right of a person to receive pro3 ceeds related to the assertion of the patent 

4 or patents, including a fixed or variable 

5 portion of such proceeds; and 

6 ‘‘(ii) with regard to the plaintiff, di7 rect or indirect ownership or control by a 

8 person of more than 5 percent of such 

9 plaintiff; and 

10 ‘‘(B) does not mean— 

11 ‘‘(i) ownership of shares or other in12 terests in a mutual or common investment 

13 fund, unless the owner of such interest 

14 participates in the management of such 

15 fund; or 

16 ‘‘(ii) the proprietary interest of a pol17 icyholder in a mutual insurance company 

18 or of a depositor in a mutual savings asso19 ciation, or a similar proprietary interest, 

20 unless the outcome of the proceeding could 

21 substantially affect the value of such inter22 est. 

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

24 means all stages of a civil action, including pretrial 

25 and trial proceedings and appellate review. 


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1 ‘‘(3) ULTIMATE PARENT ENTITY.— 

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

3 subparagraph (B), the term ‘ultimate parent 

4 entity’ has the meaning given such term in sec5 tion 801.1(a)(3) of title 16, Code of Federal 

6 Regulations, or any successor regulation. 

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

8 Director may modify the definition of ‘ultimate 

9 parent entity’ by regulation.’’. 

10 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

11 The item relating to section 290 in the table of sections 

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

13 to read as follows: 

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

14 (c) REGULATIONS.—The Director may promulgate 

15 such regulations as are necessary to establish a registra16 tion fee in an amount sufficient to recover the estimated 

17 costs of administering subsections (b) through (e) of sec18 tion 290 of title 35, United States Code, as added by sub19 section (a), to facilitate the collection and maintenance of 

20 the information required by such subsections, and to en21 sure the timely disclosure of such information to the pub22 lic. 

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

24 this section shall take effect upon the expiration of the 

25 6-month period beginning on the date of the enactment 


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1 of this Act and shall apply to any action for which a com2 plaint is filed on or after such effective date. 

3 SEC. 5. CUSTOMER-SUIT EXCEPTION. 

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

5 States Code, is amended to read as follows: 

6 ‘‘§ 296. Stay of action against customer 

7 ‘‘(a) STAY OF ACTION AGAINST CUSTOMER.—Except 

8 as provided in subsection (d), in any civil action arising 

9 under any Act of Congress relating to patents, the court 

10 shall grant a motion to stay at least the portion of the 

11 action against a covered customer related to infringement 

12 of a patent involving a covered product or process if the 

13 following requirements are met: 

14 ‘‘(1) The covered manufacturer and the covered 

15 customer consent in writing to the stay. 

16 ‘‘(2) The covered manufacturer is a party to 

17 the action or to a separate action involving the same 

18 patent or patents related to the same covered prod19 uct or process. 

20 ‘‘(3) The covered customer agrees to be bound 

21 by any issues that the covered customer has in com22 mon with the covered manufacturer and are finally 

23 decided as to the covered manufacturer in an action 

24 described in paragraph (2). 


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1 ‘‘(4) The motion is filed after the first pleading 

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

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

4 the first pleading in the action is served that 

5 specifically identifies the covered product or 

6 process as a basis for the covered customer’s al7 leged infringement of the patent and that spe8 cifically identifies how the covered product or 

9 process is alleged to infringe the patent; or 

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

11 order in the case is entered. 

12 ‘‘(b) APPLICABILITY OF STAY.—A stay issued under 

13 subsection (a) shall apply only to the patents, products, 

14 systems, or components accused of infringement in the ac15 tion. 

16 ‘‘(c) LIFT OF STAY.— 

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

18 section may be lifted upon grant of a motion based 

19 on a showing that— 

20 ‘‘(A) the action involving the covered man21 ufacturer will not resolve a major issue in suit 

22 against the covered customer; or 

23 ‘‘(B) the stay unreasonably prejudices and 

24 would be manifestly unjust to the party seeking 

25 to lift the stay. 


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1 ‘‘(2) SEPARATE MANUFACTURER ACTION IN2 VOLVED.—In the case of a stay entered based on the 

3 participation of the covered manufacturer in a sepa4 rate action involving the same patent or patents re5 lated to the same covered product or process, a mo6 tion under this subsection may only be made if the 

7 court in such separate action determines the show8 ing required under paragraph (1) has been met. 

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

10 action that includes a cause of action described under sec11 tion 271(e)(2). 

12 ‘‘(e) CONSENT JUDGMENT.—If, following the grant 

13 of a motion to stay under this section, the covered manu14 facturer seeks or consents to entry of a consent judgment 

15 relating to one or more of the common issues that gave 

16 rise to the stay, or declines to prosecute through appeal 

17 a final decision as to one or more of the common issues 

18 that gave rise to the stay, the court may, upon grant of 

19 a motion, determine that such consent judgment or 

20 unappealed final decision shall not be binding on the cov21 ered customer with respect to one or more of such common 

22 issues based on a showing that such an outcome would 

23 unreasonably prejudice and be manifestly unjust to the 

24 covered customer in light of the circumstances of the case. 


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1 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec2 tion shall be construed to limit the ability of a court to 

3 grant any stay, expand any stay granted under this sec4 tion, or grant any motion to intervene, if otherwise per5 mitted by law. 

6 ‘‘(g) DEFINITIONS.—In this section: 

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

8 customer’ means a party accused of infringing a pat9 ent or patents in dispute based on a covered product 

10 or process. 

11 ‘‘(2) COVERED MANUFACTURER.—The term 

12 ‘covered manufacturer’ means a person that manu13 factures or supplies, or causes the manufacture or 

14 supply of, a covered product or process or a relevant 

15 part thereof. 

16 ‘‘(3) COVERED PRODUCT OR PROCESS.—The 

17 term ‘covered product or process’ means a product, 

18 process, system, service, component, material, or ap19 paratus, or relevant part thereof, that— 

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

21 patents in dispute; or 

22 ‘‘(B) implements a process alleged to in23 fringe the patent or patents in dispute.’’. 

24 (b) CONFORMING AMENDMENT.—The table of sec25 tions for chapter 29 of title 35, United States Code, is 


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1 amended by striking the item relating to section 296 and 

2 inserting the following: 

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

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

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

5 of this Act and shall apply to any action for which a com6 plaint is filed on or after the first day of the 30-day period 

7 that ends on that date. 

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

11 (a) JUDICIAL CONFERENCE RULES AND PROCE12 DURES ON DISCOVERY BURDENS AND COSTS.— 

13 (1) RULES AND PROCEDURES.—The Judicial 

14 Conference of the United States, using existing re15 sources, shall develop rules and procedures to imple16 ment the issues and proposals described in para17 graph (2) to address the asymmetries in discovery 

18 burdens and costs in any civil action arising under 

19 any Act of Congress relating to patents. Such rules 

20 and procedures shall include how and when payment 

21 for document discovery in addition to the discovery 

22 of core documentary evidence is to occur, and what 

23 information must be presented to demonstrate finan24 cial capacity before permitting document discovery 


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1 in addition to the discovery of core documentary evi2 dence. 

3 (2) RULES AND PROCEDURES TO BE CONSID4 ERED.—The rules and procedures required under 

5 paragraph (1) should address each of the following 

6 issues and proposals: 

7 (A) DISCOVERY OF CORE DOCUMENTARY

8 EVIDENCE.—Whether and to what extent each 

9 party to the action is entitled to receive core 

10 documentary evidence and shall be responsible 

11 for the costs of producing core documentary 

12 evidence within the possession or control of 

13 each such party, and whether and to what ex14 tent each party to the action may seek non15 documentary discovery as otherwise provided in 

16 the Federal Rules of Civil Procedure. 

17 (B) ELECTRONIC COMMUNICATION.—If the 

18 parties determine that the discovery of elec19 tronic communication is appropriate, whether 

20 such discovery shall occur after the parties have 

21 exchanged initial disclosures and core documen22 tary evidence and whether such discovery shall 

23 be in accordance with the following: 

24 (i) Any request for the production of 

25 electronic communication shall be specific 


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1 and may not be a general request for the 

2 production of information relating to a 

3 product or business. 

4 (ii) Each request shall identify the 

5 custodian of the information requested, the 

6 search terms, and a time frame. The par7 ties shall cooperate to identify the proper 

8 custodians, the proper search terms, and 

9 the proper time frame. 

10 (iii) A party may not submit produc11 tion requests to more than 5 custodians, 

12 unless the parties jointly agree to modify 

13 the number of production requests without 

14 leave of the court. 

15 (iv) The court may consider contested 

16 requests for up to 5 additional custodians 

17 per producing party, upon a showing of a 

18 distinct need based on the size, complexity, 

19 and issues of the case. 

20 (v) If a party requests the discovery 

21 of electronic communication for additional 

22 custodians beyond the limits agreed to by 

23 the parties or granted by the court, the re24 questing party shall bear all reasonable 

25 costs caused by such additional discovery. 


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1 (C) ADDITIONAL DOCUMENT DISCOVERY.— 

2 Whether the following should apply: 

3 (i) IN GENERAL.—Each party to the 

4 action may seek any additional document 

5 discovery otherwise permitted under the 

6 Federal Rules of Civil Procedure, if such 

7 party bears the reasonable costs, including 

8 reasonable attorney’s fees, of the additional 

9 document discovery. 

10 (ii) REQUIREMENTS FOR ADDITIONAL

11 DOCUMENT DISCOVERY.—Unless the par12 ties mutually agree otherwise, no party 

13 may be permitted additional document dis14 covery unless such a party posts a bond, or 

15 provides other security, in an amount suffi16 cient to cover the expected costs of such 

17 additional document discovery, or makes a 

18 showing to the court that such party has 

19 the financial capacity to pay the costs of 

20 such additional document discovery. 

21 (iii) LIMITS ON ADDITIONAL DOCU22 MENT DISCOVERY.—A court, upon motion, 

23 may determine that a request for addi24 tional document discovery is excessive, ir25 relevant, or otherwise abusive and may set 


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1 limits on such additional document dis2 covery. 

3 (iv) GOOD CAUSE MODIFICATION.—A 

4 court, upon motion and for good cause 

5 shown, may modify the requirements of 

6 subparagraphs (A) and (B) and any defini7 tion under paragraph (3). Not later than 

8 30 days after the pretrial conference under 

9 Rule 16 of the Federal Rules of Civil Pro10 cedure, the parties shall jointly submit any 

11 proposed modifications of the requirements 

12 of subparagraphs (A) and (B) and any def13 inition under paragraph (3), unless the 

14 parties do not agree, in which case each 

15 party shall submit any proposed modifica16 tion of such party and a summary of the 

17 disagreement over the modification. 

18 (v) COMPUTER CODE.—A court, upon 

19 motion and for good cause shown, may de20 termine that computer code should be in21 cluded in the discovery of core documen22 tary evidence. The discovery of computer 

23 code shall occur after the parties have ex24 changed initial disclosures and other core 

25 documentary evidence. 


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1 (D) DISCOVERY SEQUENCE AND SCOPE.— 

2 Whether the parties shall discuss and address 

3 in the written report filed pursuant to Rule 

4 26(f) of the Federal Rules of Civil Procedure 

5 the views and proposals of each party on the 

6 following: 

7 (i) When the discovery of core docu8 mentary evidence should be completed. 

9 (ii) Whether additional document dis10 covery will be sought under subparagraph 

11 (C). 

12 (iii) Any issues about infringement, 

13 invalidity, or damages that, if resolved be14 fore the additional discovery described in 

15 subparagraph (C) commences, might sim16 plify or streamline the case, including the 

17 identification of any terms or phrases re18 lating to any patent claim at issue to be 

19 construed by the court and whether the 

20 early construction of any of those terms or 

21 phrases would be helpful. 

22 (3) DEFINITIONS.—In this subsection: 

23 (A) CORE DOCUMENTARY EVIDENCE.—The 

24 term ‘‘core documentary evidence’’— 

25 (i) includes— 


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1 (I) documents relating to the 

2 conception of, reduction to practice of, 

3 and application for, the patent or pat4 ents at issue; 

5 (II) documents sufficient to show 

6 the technical operation of the product 

7 or process identified in the complaint 

8 as infringing the patent or patents at 

9 issue; 

10 (III) documents relating to po11 tentially invalidating prior art; 

12 (IV) documents relating to any 

13 licensing of, or other transfer of rights 

14 to, the patent or patents at issue be15 fore the date on which the complaint 

16 is filed; 

17 (V) documents sufficient to show 

18 profit attributable to the claimed in19 vention of the patent or patents at 

20 issue; 

21 (VI) documents relating to any 

22 knowledge by the accused infringer of 

23 the patent or patents at issue before 

24 the date on which the complaint is 

25 filed; 


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1 (VII) documents relating to any 

2 knowledge by the patentee of infringe3 ment of the patent or patents at issue 

4 before the date on which the com5 plaint is filed; 

6 (VIII) documents relating to any 

7 licensing term or pricing commitment 

8 to which the patent or patents may be 

9 subject through any agency or stand10 ard-setting body; and 

11 (IX) documents sufficient to 

12 show any marking or other notice pro13 vided of the patent or patents at 

14 issue; and 

15 (ii) does not include computer code, 

16 except as specified in paragraph (2)(C)(v). 

17 (B) ELECTRONIC COMMUNICATION.—The 

18 term ‘‘electronic communication’’ means any 

19 form of electronic communication, including 

20 email, text message, or instant message. 

21 (4) IMPLEMENTATION BY THE DISTRICT

22 COURTS.—Not later than 6 months after the date on 

23 which the Judicial Conference has developed the 

24 rules and procedures required by this subsection, 

25 each United States district court and the United 


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1 States Court of Federal Claims shall revise the ap2 plicable local rules for such court to implement such 

3 rules and procedures. 

4 (5) AUTHORITY FOR JUDICIAL CONFERENCE TO

5 REVIEW AND MODIFY.— 

6 (A) STUDY OF EFFICACY OF RULES AND

7 PROCEDURES.—The Judicial Conference shall 

8 study the efficacy of the rules and procedures 

9 required by this subsection during the 4-year 

10 period beginning on the date on which such 

11 rules and procedures by the district courts and 

12 the United States Court of Federal Claims are 

13 first implemented. The Judicial Conference may 

14 modify such rules and procedures following 

15 such 4-year period. 

16 (B) INITIAL MODIFICATIONS.—Before the 

17 expiration of the 4-year period described in sub18 paragraph (A), the Judicial Conference may 

19 modify the requirements under this sub20 section— 

21 (i) by designating categories of ‘‘core 

22 documentary evidence’’, in addition to 

23 those designated under paragraph (3)(A), 

24 as the Judicial Conference determines to 

25 be appropriate and necessary; and 


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1 (ii) as otherwise necessary to prevent 

2 a manifest injustice, the imposition of a re3 quirement the costs of which clearly out4 weigh its benefits, or a result that could 

5 not reasonably have been intended by the 

6 Congress. 

7 (b) JUDICIAL CONFERENCE PATENT CASE MANAGE8 MENT.—The Judicial Conference of the United States, 

9 using existing resources, shall develop case management 

10 procedures to be implemented by the United States dis11 trict courts and the United States Court of Federal Claims 

12 for any civil action arising under any Act of Congress re13 lating to patents, including initial disclosure and early case 

14 management conference practices that— 

15 (1) will identify any potential dispositive issues 

16 of the case; and 

17 (2) focus on early summary judgment motions 

18 when resolution of issues may lead to expedited dis19 position of the case. 

20 (c) REVISION OF FORM FOR PATENT INFRINGE21 MENT.— 

22 (1) ELIMINATION OF FORM.—The Supreme 

23 Court, using existing resources, shall eliminate Form 

24 18 in the Appendix to the Federal Rules of Civil 

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1 fringement), effective on the date of the enactment 

2 of this Act. 

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

4 prescribe a new form or forms setting out model al5 legations of patent infringement that, at a minimum, 

6 notify accused infringers of the asserted claim or 

7 claims, the products or services accused of infringe8 ment, and the plaintiff’s theory for how each ac9 cused product or service meets each limitation of 

10 each asserted claim. The Judicial Conference should 

11 exercise the authority under section 2073 of title 28, 

12 United States Code, to make recommendations with 

13 respect to such new form or forms. 

14 (d) PROTECTION OF INTELLECTUAL-PROPERTY LI15 CENSES IN BANKRUPTCY.— 

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

17 United States Code, is amended by adding at the 

18 end the following: 

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

20 chapter. If the foreign representative rejects or repudiates 

21 a contract under which the debtor is a licensor of intellec22 tual property, the licensee under such contract shall be 

23 entitled to make the election and exercise the rights de24 scribed in section 365(n).’’. 

25 (2) TRADEMARKS.— 


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1 (A) IN GENERAL.—Section 101(35A) of 

2 title 11, United States Code, is amended— 

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

4 ‘‘or’’; 

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

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

7 (iii) by adding after subparagraph (F) 

8 the following new subparagraph: 

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

10 name, as those terms are defined in section 45 

11 of the Act of July 5, 1946 (commonly referred 

12 to as the ‘Trademark Act of 1946’) (15 U.S.C. 

13 1127);’’. 

14 (B) CONFORMING AMENDMENT.—Section 

15 365(n)(2) of title 11, United States Code, is 

16 amended— 

17 (i) in subparagraph (B)— 

18 (I) by striking ‘‘royalty pay19 ments’’ and inserting ‘‘royalty or 

20 other payments’’; and 

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

22 semicolon; 

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

24 the period at the end of clause (ii) and in25 serting ‘‘; and’’; and 


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1 (iii) by adding at the end the fol2 lowing new subparagraph: 

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

4 or trade name, the trustee shall not be relieved of 

5 a contractual obligation to monitor and control the 

6 quality of a licensed product or service.’’. 

7 (3) EFFECTIVE DATE.—The amendments made 

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

9 enactment of this Act and shall apply to any case 

10 that is pending on, or for which a petition or com11 plaint is filed on or after, such date of enactment. 

12 SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND IN13 FORMATION ACCESS. 

14 (a) SMALL BUSINESS EDUCATION AND OUT15 REACH.— 

16 (1) RESOURCES FOR SMALL BUSINESS.—Using 

17 existing resources, the Director shall develop edu18 cational resources for small businesses to address 

19 concerns arising from patent infringement. 

20 (2) SMALL BUSINESS PATENT OUTREACH.—The 

21 existing small business patent outreach programs of 

22 the Office, and the relevant offices at the Small 

23 Business Administration and the Minority Business 

24 Development Agency, shall provide education and 

25 awareness on abusive patent litigation practices. The 


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1 Director may give special consideration to the 

2 unique needs of small firms owned by disabled vet3 erans, service-disabled veterans, women, and minor4 ity entrepreneurs in planning and executing the out5 reach efforts by the Office. 

6 (b) IMPROVING INFORMATION TRANSPARENCY FOR

7 SMALL BUSINESS AND THE UNITED STATES PATENT AND

8 TRADEMARK OFFICE USERS.— 

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

10 Director shall create a user-friendly section on the 

11 official Web site of the Office to notify the public 

12 when a patent case is brought in Federal court and, 

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

14 Director shall include— 

15 (A) information disclosed under sub16 sections (b) and (d) of section 290 of title 35, 

17 United States Code, as added by section 4(a) of 

18 this Act; and 

19 (B) any other information the Director de20 termines to be relevant. 

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

22 for the public, the information described in para23 graph (1) shall be searchable by patent number, pat24 ent art area, and entity. 


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1 SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, 

2 AND EXAMINATION. 

3 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

4 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY

5 AND ETHICAL BUSINESS PRACTICES.— 

6 (1) STUDY REQUIRED.—The Director, in con7 sultation with the Secretary of Commerce, the Sec8 retary of the Treasury, the Chairman of the Securi9 ties and Exchange Commission, the heads of other 

10 relevant agencies, and interested parties, shall, using 

11 existing resources of the Office, conduct a study— 

12 (A) to develop legislative recommendations 

13 to ensure greater transparency and account14 ability in patent transactions occurring on the 

15 secondary market; 

16 (B) to examine the economic impact that 

17 the patent secondary market has on the United 

18 States; 

19 (C) to examine licensing and other over20 sight requirements that may be placed on the 

21 patent secondary market, including on the par22 ticipants in such markets, to ensure that the 

23 market is a level playing field and that brokers 

24 in the market have the requisite expertise and 

25 adhere to ethical business practices; and 


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1 (D) to examine the requirements placed on 

2 other markets. 

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

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

5 the Director shall submit a report to the Committee 

6 on the Judiciary of the House of Representatives 

7 and the Committee on the Judiciary of the Senate 

8 on the findings and recommendations of the Director 

9 from the study required under paragraph (1). 

10 (b) STUDY ON PATENTS OWNED BY THE UNITED

11 STATES GOVERNMENT.— 

12 (1) STUDY REQUIRED.—The Director, in con13 sultation with the heads of relevant agencies and in14 terested parties, shall, using existing resources of the 

15 Office, conduct a study on patents owned by the 

16 United States Government that— 

17 (A) examines how such patents are li18 censed and sold, and any litigation relating to 

19 the licensing or sale of such patents; 

20 (B) provides legislative and administrative 

21 recommendations on whether there should be 

22 restrictions placed on patents acquired from the 

23 United States Government; 

24 (C) examines whether or not each relevant 

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1 ents owned by such agency, specifically whether 

2 such agency addresses licensing, assignment, 

3 and Government grants for technology related 

4 to such patents; and 

5 (D) provides recommendations to ensure 

6 that each relevant agency has an adequate 

7 point of contact that is responsible for man8 aging the patent portfolio of the agency. 

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

10 after the date of the enactment of this Act, the Di11 rector shall submit to the Committee on the Judici12 ary of the House of Representatives and the Com13 mittee on the Judiciary of the Senate a report on 

14 the findings and recommendations of the Director 

15 from the study required under paragraph (1). 

16 (c) STUDY ON PATENT QUALITY AND ACCESS TO

17 THE BEST INFORMATION DURING EXAMINATION.— 

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

19 the United States shall, using existing resources, 

20 conduct a study on patent examination at the Office 

21 and the technologies available to improve examina22 tion and improve patent quality. 

23 (2) CONTENTS OF THE STUDY.—The study re24 quired under paragraph (1) shall include the fol25 lowing: 


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1 (A) An examination of patent quality at 

2 the Office. 

3 (B) An examination of ways to improve 

4 patent quality, specifically through technology, 

5 that shall include examining best practices at 

6 foreign patent offices and the use of existing 

7 off-the-shelf technologies to improve patent ex8 amination. 

9 (C) A description of how patents are clas10 sified. 

11 (D) An examination of procedures in place 

12 to prevent double patenting through filing by 

13 applicants in multiple art areas. 

14 (E) An examination of the types of off-the15 shelf prior art databases and search software 

16 used by foreign patent offices and governments, 

17 particularly in Europe and Asia, and whether 

18 those databases and search tools could be used 

19 by the Office to improve patent examination. 

20 (F) An examination of any other areas the 

21 Comptroller General determines to be relevant. 

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

23 after the date of the enactment of this Act, the 

24 Comptroller General shall submit to the Committee 

25 on the Judiciary of the House of Representatives 


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1 and the Committee on the Judiciary of the Senate 

2 a report on the findings and recommendations from 

3 the study required by this subsection, including rec4 ommendations for any changes to laws and regula5 tions that will improve the examination of patent ap6 plications and patent quality. 

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

8 (1) STUDY REQUIRED.— 

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

10 Administrative Office of the United States 

11 Courts, in consultation with the Director of the 

12 Federal Judicial Center and the United States 

13 Patent and Trademark Office, shall, using ex14 isting resources, conduct a study to examine the 

15 idea of developing a pilot program for patent 

16 small claims procedures in certain judicial dis17 tricts within the existing patent pilot program 

18 mandated by Public Law 111–349. 

19 (B) CONTENTS OF STUDY.—The study 

20 under subparagraph (A) shall examine— 

21 (i) the necessary criteria for using 

22 small claims procedures; 

23 (ii) the costs that would be incurred 

24 for establishing, maintaining, and oper25 ating such a pilot program; and 


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1 (iii) the steps that would be taken to 

2 ensure that the procedures used in the 

3 pilot program are not misused for abusive 

4 patent litigation. 

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

6 after the date of the enactment of this Act, the Di7 rector of the Administrative Office of the United 

8 States Courts shall submit a report to the Com9 mittee on the Judiciary of the House of Representa10 tives and the Committee on the Judiciary of the 

11 Senate on the findings and recommendations of the 

12 Director of the Administrative Office from the study 

13 required under paragraph (1). 

14 (e) STUDY ON DEMAND LETTERS.— 

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

16 the heads of other appropriate agencies, shall, using 

17 existing resources, conduct a study of the prevalence 

18 of the practice of sending patent demand letters in 

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

20 through fraudulent or deceptive practices, impose a 

21 negative impact on the marketplace. 

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

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

24 Director shall submit a report to the Committee on 

25 the Judiciary of the House of Representatives and 


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1 the Committee on the Judiciary of the Senate on the 

2 findings and recommendations of the Director from 

3 the study required under paragraph (1). 

4 (3) PATENT DEMAND LETTER DEFINED.—In 

5 this subsection, the term ‘‘patent demand letter’’ 

6 means a written communication relating to a patent 

7 that states or indicates, directly or indirectly, that 

8 the recipient or anyone affiliated with the recipient 

9 is or may be infringing the patent. 

10 (f) STUDY ON BUSINESS METHOD PATENT QUAL11 ITY.— 

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

13 the United States shall, using existing resources, 

14 conduct a study on the volume and nature of litiga15 tion involving business method patents. 

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

17 under paragraph (1) shall focus on examining the 

18 quality of business method patents asserted in suits 

19 alleging patent infringement, and may include an ex20 amination of any other areas that the Comptroller 

21 General determines to be relevant. 

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

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

24 Comptroller General shall submit to the Committee 

25 on the Judiciary of the House of Representatives 


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1 and the Committee on the Judiciary of the Senate 

2 a report on the findings and recommendations from 

3 the study required by this subsection, including rec4 ommendations for any changes to laws or regula5 tions that the Comptroller General considers appro6 priate on the basis of the study. 

7 (g) STUDY ON IMPACT OF LEGISLATION ON ABILITY

8 OF INDIVIDUALS AND SMALL BUSINESSES TO PROTECT

9 EXCLUSIVE RIGHTS TO INVENTIONS AND DISCOV10 ERIES.— 

11 (1) STUDY REQUIRED.—The Director, in con12 sultation with the Secretary of Commerce, the Direc13 tor of the Administrative Office of the United States 

14 Courts, the Director of the Federal Judicial Center, 

15 the heads of other relevant agencies, and interested 

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

17 conduct a study to examine the economic impact of 

18 sections 3, 4, and 5 of this Act, and any amend19 ments made by such sections, on the ability of indi20 viduals and small businesses owned by women, vet21 erans, and minorities to assert, secure, and vindicate 

22 the constitutionally guaranteed exclusive right to in23 ventions and discoveries by such individuals and 

24 small business. 


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

2 years after the date of the enactment of this Act, the 

3 Director shall submit to the Committee on the Judi4 ciary of the House of Representatives and the Com5 mittee on the Judiciary of the Senate a report on 

6 the findings and recommendations of the Director 

7 from the study required under paragraph (1). 

8 SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 

9 THE LEAHY-SMITH AMERICA INVENTS ACT. 

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

11 325(e)(2) of title 35, United States Code is amended by 

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

13 (b) USE OF DISTRICT-COURT CLAIM CONSTRUCTION

14 IN POST-GRANT AND INTER PARTES REVIEWS.— 

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

16 title 35, United States Code, is amended— 

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

18 and inserting a semicolon; 

19 (B) in paragraph (13), by striking the pe20 riod at the end and inserting ‘‘; and’’; and 

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

22 paragraph: 

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

24 chapter— 


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1 ‘‘(A) each claim of a patent shall be con2 strued as such claim would be in a civil action 

3 to invalidate a patent under section 282(b), in4 cluding construing each claim of the patent in 

5 accordance with the ordinary and customary 

6 meaning of such claim as understood by one of 

7 ordinary skill in the art and the prosecution 

8 history pertaining to the patent; and 

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

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

11 which the patent owner was a party, the Office 

12 shall consider such claim construction.’’. 

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

14 title 35, United States Code, is amended— 

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

16 and inserting a semicolon; 

17 (B) in paragraph (12), by striking the pe18 riod at the end and inserting ‘‘; and’’; and 

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

20 paragraph: 

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

22 chapter— 

23 ‘‘(A) each claim of a patent shall be con24 strued as such claim would be in a civil action 

25 to invalidate a patent under section 282(b), inVerDate Sep 11 2014 06:53 Feb 12, 2015 Jkt 049200 PO 00000 Frm 00049 Fmt 6652 Sfmt 6201 E:\BILLS\H9.IH H9

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1 cluding construing each claim of the patent in 

2 accordance with the ordinary and customary 

3 meaning of such claim as understood by one of 

4 ordinary skill in the art and the prosecution 

5 history pertaining to the patent; and 

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

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

8 which the patent owner was a party, the Office 

9 shall consider such claim construction.’’. 

10 (3) TECHNICAL AND CONFORMING AMEND11 MENT.—Section 18(a)(1)(A) of the Leahy-Smith 

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

13 329; 35 U.S.C. 321 note) is amended by striking 

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

15 326(a)(13)’’. 

16 (4) EFFECTIVE DATE.—The amendments made 

17 by this subsection shall take effect upon the expira18 tion of the 90-day period beginning on the date of 

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

20 proceeding under chapter 31 or 32 of title 35, 

21 United States Code, as the case may be, for which 

22 the petition for review is filed on or after such effec23 tive date. 

24 (c) CODIFICATION OF THE DOUBLE-PATENTING

25 DOCTRINE FOR FIRST-INVENTOR-TO-FILE PATENTS.— 


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1 (1) AMENDMENT.—Chapter 10 of title 35, 

2 United States Code, is amended by adding at the 

3 end the following new section: 

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

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

6 151 (referred to as the ‘first patent’) that is not prior art 

7 to a claimed invention of another patent (referred to as 

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

9 claimed invention of the second patent for the purpose of 

10 determining the nonobviousness of the claimed invention 

11 of the second patent under section 103 if— 

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

13 was effectively filed under section 102(d) on or be14 fore the effective filing date of the claimed invention 

15 of the second patent; 

16 ‘‘(2) either— 

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

18 name the same individual or individuals as the 

19 inventor; or 

20 ‘‘(B) the claimed invention of the first pat21 ent would constitute prior art to the claimed in22 vention of the second patent under section 

23 102(a)(2) if an exception under section 

24 102(b)(2) were deemed to be inapplicable and 

25 the claimed invention of the first patent was, or 


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1 were deemed to be, effectively filed under sec2 tion 102(d) before the effective filing date of 

3 the claimed invention of the second patent; and 

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

5 disclaimed the rights to enforce the second patent 

6 independently from, and beyond the statutory term 

7 of, the first patent.’’. 

8 (2) REGULATIONS.—The Director shall promul9 gate regulations setting forth the form and content 

10 of any disclaimer required for a patent to be issued 

11 in compliance with section 106 of title 35, United 

12 States Code, as added by paragraph (1). Such regu13 lations shall apply to any disclaimer filed after a 

14 patent has issued. A disclaimer, when filed, shall be 

15 considered for the purpose of determining the valid16 ity of the patent under section 106 of title 35, 

17 United States Code. 

18 (3) CONFORMING AMENDMENT.—The table of 

19 sections for chapter 10 of title 35, United States 

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

21 new item: 

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

22 (4) EXCLUSIVE RULE.—A patent subject to sec23 tion 106 of title 35, United States Code, as added 

24 by paragraph (1), shall not be held invalid on any 

25 nonstatutory, double-patenting ground based on a 


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1 patent described in section 3(n)(1) of the Leahy2 Smith America Invents Act (35 U.S.C. 100 note). 

3 (5) EFFECTIVE DATE.—The amendments made 

4 by this subsection shall take effect upon the expira5 tion of the 1-year period beginning on the date of 

6 the enactment of this Act and shall apply to a pat7 ent or patent application only if both the first and 

8 second patents described in section 106 of title 35, 

9 United States Code, as added by paragraph (1), are 

10 patents or patent applications that are described in 

11 section 3(n)(1) of the Leahy-Smith America Invents 

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

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. 


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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 (e) CLARIFICATION OF LIMITS ON PATENT TERM

7 ADJUSTMENT.— 

8 (1) AMENDMENTS.—Section 154(b)(1)(B) of 

9 title 35, United States Code, is amended— 

10 (A) in the matter preceding clause (i), by 

11 striking ‘‘not including—’’ and inserting ‘‘the 

12 term of the patent shall be extended 1 day for 

13 each day after the end of that 3-year period 

14 until the patent is issued, not including—’’; 

15 (B) in clause (i), by striking ‘‘consumed by 

16 continued examination of the application re17 quested by the applicant’’ and inserting ‘‘con18 sumed after continued examination of the appli19 cation is requested by the applicant’’; 

20 (C) in clause (iii), by striking the comma 

21 at the end and inserting a period; and 

22 (D) by striking the matter following clause 

23 (iii). 

24 (2) EFFECTIVE DATE.—The amendments made 

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


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1 enactment of this Act and apply to any patent appli2 cation that is pending on, or filed on or after, such 

3 date of enactment. 

4 (f) CLARIFICATION OF JURISDICTION.— 

5 (1) IN GENERAL.—The Federal interest in pre6 venting inconsistent final judicial determinations as 

7 to the legal force or effect of the claims in a patent 

8 presents a substantial Federal issue that is impor9 tant to the Federal system as a whole. 

10 (2) APPLICABILITY.—Paragraph (1)— 

11 (A) shall apply to all cases filed on or 

12 after, or pending on, the date of the enactment 

13 of this Act; and 

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

15 Federal court has issued a ruling on whether 

16 the case or a claim arises under any Act of 

17 Congress relating to patents or plant variety 

18 protection before the date of the enactment of 

19 this Act. 

20 (g) PATENT PILOT PROGRAM IN CERTAIN DISTRICT

21 COURTS DURATION.— 

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

23 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is 

24 amended to read as follows: 


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1 ‘‘(c) DURATION.—The program established under 

2 subsection (a) shall be maintained using existing re3 sources, and shall terminate 20 years after the end of the 

4 6-month period described in subsection (b).’’. 

5 (2) EFFECTIVE DATE.—The amendment made 

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

7 enactment of this Act. 

8 (h) TECHNICAL CORRECTIONS.— 

9 (1) NOVELTY.— 

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

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

12 striking ‘‘the inventor or joint inventor or by 

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

14 inventor or another’’. 

15 (B) EFFECTIVE DATE.—The amendment 

16 made by subparagraph (A) shall be effective as 

17 if included in the amendment made by section 

18 3(b)(1) of the Leahy-Smith America Invents 

19 Act (Public Law 112–29). 

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

21 (A) AMENDMENT.—The second sentence of 

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

23 is amended by striking ‘‘shall execute’’ and in24 serting ‘‘may be required to execute’’. 


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1 (B) EFFECTIVE DATE.—The amendment 

2 made by subparagraph (A) shall be effective as 

3 if included in the amendment made by section 

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

5 Act (Public Law 112–29). 

6 (3) ASSIGNEE FILERS.— 

7 (A) BENEFIT OF EARLIER FILING DATE; 

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

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

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

13 (B) BENEFIT OF EARLIER FILING DATE IN

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

15 United States Code, is amended, in the first 

16 sentence, by striking ‘‘names an inventor or 

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

19 (C) EFFECTIVE DATE.—The amendments 

20 made by this paragraph shall take effect on the 

21 date of the enactment of this Act and shall 

22 apply to any patent application, and any patent 

23 issuing from such application, that is filed on or 

24 after September 16, 2012. 

25 (4) DERIVED PATENTS.— 


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

2 35, United States Code, is amended by striking 

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

5 (B) EFFECTIVE DATE.—The amendment 

6 made by subparagraph (A) shall be effective as 

7 if included in the amendment made by section 

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

9 Act (Public Law 112–29). 

10 (5) SPECIFICATION.—Notwithstanding section 

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

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

14 Act shall apply to any proceeding or matter that is 

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

17 (6) TIME LIMIT FOR COMMENCING MISCONDUCT

18 PROCEEDINGS.— 

19 (A) AMENDMENT.—The fourth sentence of 

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

21 amended by striking ‘‘1 year’’ and inserting 

22 ‘‘18 months’’. 

23 (B) EFFECTIVE DATE.—The amendment 

24 made by this paragraph shall take effect on the 

25 date of the enactment of this Act and shall 


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1 apply to any action in which the Office files a 

2 complaint on or after such date of enactment. 

3 (7) PATENT OWNER RESPONSE.— 

4 (A) CONDUCT OF INTER PARTES RE5 VIEW.—Paragraph (8) of section 316(a) of title 

6 35, United States Code, is amended by striking 

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

8 ‘‘the petition under section 311’’. 

9 (B) CONDUCT OF POST-GRANT REVIEW.— 

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

11 United States Code, is amended by striking 

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

13 ‘‘the petition under section 321’’. 

14 (C) EFFECTIVE DATE.—The amendments 

15 made by this paragraph shall take effect on the 

16 date of the enactment of this Act. 

17 (8) INTERNATIONAL APPLICATIONS.— 

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

19 Patent Law Treaties Implementation Act of 

20 2012 (Public Law 112–211; 126 Stat. 1536) is 

21 amended— 

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

23 (ii) by redesignating paragraphs (8) 

24 and (9) as paragraphs (7) and (8), respec25 tively. 


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1 (B) EFFECTIVE DATE.—The amendments 

2 made by subparagraph (A) shall be effective as 

3 if included in title II of the Patent Law Trea4 ties Implementation Act of 2012 (Public Law 

5 112–21). 

6 SEC. 10. EFFECTIVE DATE. 

7 Except as otherwise provided in this Act, the provi8 sions of this Act shall take effect on the date of the enact9 ment of this Act, and shall apply to any patent issued, 

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

Æ 


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