IB 

Union Calendar No. 54 

112TH CONGRESS 

1ST SESSION H. R. 1249 

[Report No. 112–98, Part I] 

To amend title 35, United States Code, to provide for patent reform. 

IN THE HOUSE OF REPRESENTATIVES 

MARCH 30, 2011 

Mr. SMITH of Texas (for himself, Mr. GOODLATTE, and Mr. ISSA) introduced 

the following bill; which was referred to the Committee on the Judiciary, 

and in addition to the Committee on the Budget, for a period to be subsequently determined by the Speaker, in each case for consideration of such 

provisions as fall within the jurisdiction of the committee concerned 

JUNE 1, 2011 

Additional sponsors: Mr. CHABOT, Mr. GALLEGLY, and Mr. DUNCAN of 

Tennessee 

JUNE 1, 2011 

Reported from the Committee on the Judiciary with an amendment 

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

JUNE 1, 2011 

The Committee on the Budget discharged; committed to the Committee of the 

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

[For text of introduced bill, see copy of bill as introduced on March 30, 2011] 


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A BILL 

To amend title 35, United States Code, to provide for patent 

reform. 


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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 ‘‘America Invents 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. First inventor to file. 

Sec. 4. Inventor’s oath or declaration. 

Sec. 5. Defense to infringement based on earlier inventor. 

Sec. 6. Post-grant review proceedings. 

Sec. 7. Patent Trial and Appeal Board. 

Sec. 8. Preissuance submissions by third parties. 

Sec. 9. Venue. 

Sec. 10. Fee setting authority. 

Sec. 11. Fees for patent services. 

Sec. 12. Supplemental examination. 

Sec. 13. Funding agreements. 

Sec. 14. Tax strategies deemed within the prior art. 

Sec. 15. Best mode requirement. 

Sec. 16. Marking. 

Sec. 17. Advice of counsel. 

Sec. 18. Transitional program for covered business method patents. 

Sec. 19. Jurisdiction and procedural matters. 

Sec. 20. Technical amendments. 

Sec. 21. Travel expenses and payment of administrative judges. 

Sec. 22. Patent and Trademark Office funding. 

Sec. 23. Satellite offices. 

Sec. 24. Designation of Detroit satellite office. 

Sec. 25. Patent Ombudsman Program for small business concerns. 

Sec. 26. Priority examination for technologies important to American competitiveness. 

Sec. 27. Calculation of 60-day period for application of patent term extension. 

Sec. 28. Study on implementation. 

Sec. 29. Pro bono program. 

Sec. 30. Effective date. 

Sec. 31. Budgetary effects. 

8 SEC. 2. DEFINITIONS. 

9 In this Act: 


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

2 Under Secretary of Commerce for Intellectual Prop3 erty and Director of the United States Patent and 

4 Trademark Office. 

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

6 United States Patent and Trademark Office. 

7 (3) PATENT PUBLIC ADVISORY COMMITTEE.—The 

8 term ‘‘Patent Public Advisory Committee’’ means the 

9 Patent Public Advisory Committee established under 

10 section 5(a)(1) of title 35, United States Code. 

11 (4) TRADEMARK ACT OF 1946.—The term ‘‘Trade12 mark Act of 1946’’ means the Act entitled ‘‘An Act to 

13 provide for the registration and protection of trade14 marks used in commerce, to carry out the provisions 

15 of certain international conventions, and for other 

16 purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et 

17 seq.) (commonly referred to as the ‘‘Trademark Act of 

18 1946’’ or the ‘‘Lanham Act’’). 

19 (5) TRADEMARK PUBLIC ADVISORY COM20 MITTEE.—The term ‘‘Trademark Public Advisory 

21 Committee’’ means the Trademark Public Advisory 

22 Committee established under section 5(a)(1) of title 

23 35, United States Code. 


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1 SEC. 3. FIRST INVENTOR TO FILE. 

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

3 States Code, is amended— 

4 (1) in subsection (e), by striking ‘‘or inter partes 

5 reexamination under section 311’’; and 

6 (2) by adding at the end the following: 

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

8 a joint invention, the individuals collectively who invented 

9 or discovered the subject matter of the invention. 

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

11 any 1 of the individuals who invented or discovered the sub12 ject matter of a joint invention. 

13 ‘‘(h) The term ‘joint research agreement’ means a writ14 ten contract, grant, or cooperative agreement entered into 

15 by 2 or more persons or entities for the performance of ex16 perimental, developmental, or research work in the field of 

17 the claimed invention. 

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

19 invention in a patent or application for patent means— 

20 ‘‘(A) if subparagraph (B) does not apply, the ac21 tual filing date of the patent or the application for 

22 the patent containing a claim to the invention; or 

23 ‘‘(B) the filing date of the earliest application for 

24 which the patent or application is entitled, as to such 

25 invention, to a right of priority under section 119, 


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1 365(a), or 365(b) or to the benefit of an earlier filing 

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

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

4 in an application for reissue or reissued patent shall be de5 termined by deeming the claim to the invention to have been 

6 contained in the patent for which reissue was sought. 

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

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

9 for a patent.’’. 

10 (b) CONDITIONS FOR PATENTABILITY.— 

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

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

13 ‘‘§ 102. Conditions for patentability; novelty 

14 ‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled 

15 to a patent unless— 

16 ‘‘(1) the claimed invention was patented, de17 scribed in a printed publication, or in public use, on 

18 sale, or otherwise available to the public before the ef19 fective filing date of the claimed invention; or 

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

21 patent issued under section 151, or in an application 

22 for patent published or deemed published under sec23 tion 122(b), in which the patent or application, as 

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1 fectively filed before the effective filing date of the 

2 claimed invention. 

3 ‘‘(b) EXCEPTIONS.— 

4 ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE5 FORE THE EFFECTIVE FILING DATE OF THE CLAIMED

6 INVENTION.—A disclosure made 1 year or less before 

7 the effective filing date of a claimed invention shall 

8 not be prior art to the claimed invention under sub9 section (a)(1) if— 

10 ‘‘(A) the disclosure was made by the inven11 tor or joint inventor or by another who obtained 

12 the subject matter disclosed directly or indirectly 

13 from the inventor or a joint inventor; or 

14 ‘‘(B) the subject matter disclosed had, before 

15 such disclosure, been publicly disclosed by the in16 ventor or a joint inventor or another who ob17 tained the subject matter disclosed directly or in18 directly from the inventor or a joint inventor. 

19 ‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS

20 AND PATENTS.—A disclosure shall not be prior art to 

21 a claimed invention under subsection (a)(2) if— 

22 ‘‘(A) the subject matter disclosed was ob23 tained directly or indirectly from the inventor or 

24 a joint inventor; 


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1 ‘‘(B) the subject matter disclosed had, before 

2 such subject matter was effectively filed under 

3 subsection (a)(2), been publicly disclosed by the 

4 inventor or a joint inventor or another who ob5 tained the subject matter disclosed directly or in6 directly from the inventor or a joint inventor; or 

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

8 claimed invention, not later than the effective fil9 ing date of the claimed invention, were owned by 

10 the same person or subject to an obligation of as11 signment to the same person. 

12 ‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

13 AGREEMENTS.—Subject matter disclosed and a claimed in14 vention shall be deemed to have been owned by the same 

15 person or subject to an obligation of assignment to the same 

16 person in applying the provisions of subsection (b)(2)(C) 

17 if— 

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

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

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

21 that was in effect on or before the effective filing date 

22 of the claimed invention; 

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

24 of activities undertaken within the scope of the joint 

25 research agreement; and 


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

2 invention discloses or is amended to disclose the 

3 names of the parties to the joint research agreement. 

4 ‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EFFEC5 TIVE AS PRIOR ART.—For purposes of determining whether 

6 a patent or application for patent is prior art to a claimed 

7 invention under subsection (a)(2), such patent or applica8 tion shall be considered to have been effectively filed, with 

9 respect to any subject matter described in the patent or ap10 plication— 

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

12 actual filing date of the patent or the application for 

13 patent; or 

14 ‘‘(2) if the patent or application for patent is en15 titled to claim a right of priority under section 119, 

16 365(a), or 365(b), or to claim the benefit of an earlier 

17 filing date under section 120, 121, or 365(c), based 

18 upon 1 or more prior filed applications for patent, as 

19 of the filing date of the earliest such application that 

20 describes the subject matter.’’. 

21 (2) CONTINUITY OF INTENT UNDER THE CREATE

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

23 United States Code, under paragraph (1) of this sub24 section is done with the same intent to promote joint 

25 research activities that was expressed, including in 


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1 the legislative history, through the enactment of the 

2 Cooperative Research and Technology Enhancement 

3 Act of 2004 (Public Law 108–453; the ‘‘CREATE 

4 Act’’), the amendments of which are stricken by sub5 section (c) of this section. The United States Patent 

6 and Trademark Office shall administer section 102(c) 

7 of title 35, United States Code, in a manner con8 sistent with the legislative history of the CREATE 

9 Act that was relevant to its administration by the 

10 United States Patent and Trademark Office. 

11 (3) CONFORMING AMENDMENT.—The item relat12 ing to section 102 in the table of sections for chapter 

13 10 of title 35, United States Code, is amended to read 

14 as follows: 

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

15 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

16 SUBJECT MATTER.—Section 103 of title 35, United States 

17 Code, is amended to read as follows: 

18 ‘‘§ 103. Conditions for patentability; non-obvious sub19 ject matter 

20 ‘‘A patent for a claimed invention may not be ob21 tained, notwithstanding that the claimed invention is not 

22 identically disclosed as set forth in section 102, if the dif23 ferences between the claimed invention and the prior art 

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

25 been obvious before the effective filing date of the claimed 


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

2 which the claimed invention pertains. Patentability shall 

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

4 made.’’. 

5 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

7 Code, and the item relating to that section in the table of 

8 sections for chapter 10 of title 35, United States Code, are 

9 repealed. 

10 (e) REPEAL OF STATUTORY INVENTION REGISTRA11 TION.— 

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

13 United States Code, and the item relating to that sec14 tion in the table of sections for chapter 14 of title 35, 

15 United States Code, are repealed. 

16 (2) REMOVAL OF CROSS REFERENCES.—Section 

17 111(b)(8) of title 35, United States Code, is amended 

18 by striking ‘‘sections 115, 131, 135, and 157’’ and in19 serting ‘‘sections 131 and 135’’. 

20 (3) EFFECTIVE DATE.—The amendments made 

21 by this subsection shall take effect upon the expiration 

22 of the 18-month period beginning on the date of the 

23 enactment of this Act, and shall apply to any request 

24 for a statutory invention registration filed on or after 

25 that effective date. 


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1 (f) EARLIER FILING DATE FOR INVENTOR AND JOINT

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

3 amended by striking ‘‘which is filed by an inventor or in4 ventors named’’ and inserting ‘‘which names an inventor 

5 or joint inventor’’. 

6 (g) CONFORMING AMENDMENTS.— 

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

8 35, United States Code, is amended by striking ‘‘and 

9 the time specified in section 102(d)’’. 

10 (2) LIMITATION ON REMEDIES.—Section 

11 287(c)(4) of title 35, United States Code, is amended 

12 by striking ‘‘the earliest effective filing date of which 

13 is prior to’’ and inserting ‘‘which has an effective fil14 ing date before’’. 

15 (3) INTERNATIONAL APPLICATION DESIGNATING

16 THE UNITED STATES: EFFECT.—Section 363 of title 

17 35, United States Code, is amended by striking ‘‘ex18 cept as otherwise provided in section 102(e) of this 

19 title’’. 

20 (4) PUBLICATION OF INTERNATIONAL APPLICA21 TION: EFFECT.—Section 374 of title 35, United States 

22 Code, is amended by striking ‘‘sections 102(e) and 

23 154(d)’’ and inserting ‘‘section 154(d)’’. 

24 (5) PATENT ISSUED ON INTERNATIONAL APPLICA25 TION: EFFECT.—The second sentence of section 375(a) 


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1 of title 35, United States Code, is amended by strik2 ing ‘‘Subject to section 102(e) of this title, such’’ and 

3 inserting ‘‘Such’’. 

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

5 119(a) of title 35, United States Code, is amended by 

6 striking ‘‘; but no patent shall be granted’’ and all 

7 that follows through ‘‘one year prior to such filing’’. 

8 (7) INVENTIONS MADE WITH FEDERAL ASSIST9 ANCE.—Section 202(c) of title 35, United States Code, 

10 is amended— 

11 (A) in paragraph (2)— 

12 (i) by striking ‘‘publication, on sale, or 

13 public use,’’ and all that follows through 

14 ‘‘obtained in the United States’’ and insert15 ing ‘‘the 1-year period referred to in section 

16 102(b) would end before the end of that 2- 

17 year period’’; and 

18 (ii) by striking ‘‘prior to the end of the 

19 statutory’’ and inserting ‘‘before the end of 

20 that 1-year’’; and 

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

22 statutory bar date that may occur under this 

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

24 and inserting ‘‘the expiration of the 1-year pe25 riod referred to in section 102(b)’’. 


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1 (h) DERIVED PATENTS.— 

2 (1) IN GENERAL.—Section 291 of title 35, 

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

4 ‘‘§ 291. Derived Patents 

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

6 relief by civil action against the owner of another patent 

7 that claims the same invention and has an earlier effective 

8 filing date, if the invention claimed in such other patent 

9 was derived from the inventor of the invention claimed in 

10 the patent owned by the person seeking relief under this 

11 section. 

12 ‘‘(b) FILING LIMITATION.—An action under this sec13 tion may be filed only before the end of the 1-year period 

14 beginning on the date of the issuance of the first patent con15 taining a claim to the allegedly derived invention and nam16 ing an individual alleged to have derived such invention 

17 as the inventor or joint inventor.’’. 

18 (2) CONFORMING AMENDMENT.—The item relat19 ing to section 291 in the table of sections for chapter 

20 29 of title 35, United States Code, is amended to read 

21 as follows: 

‘‘291. Derived patents.’’. 

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

23 35, United States Code, is amended to read as follows: 


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1 ‘‘§ 135. Derivation proceedings 

2 ‘‘(a) INSTITUTION OF PROCEEDING.—An applicant for 

3 patent may file a petition to institute a derivation pro4 ceeding in the Office. The petition shall set forth with par5 ticularity the basis for finding that an inventor named in 

6 an earlier application derived the claimed invention from 

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

8 without authorization, the earlier application claiming 

9 such invention was filed. Any such petition may be filed 

10 only within the 1-year period beginning on the date of the 

11 first publication of a claim to an invention that is the same 

12 or substantially the same as the earlier application’s claim 

13 to the invention, shall be made under oath, and shall be 

14 supported by substantial evidence. Whenever the Director 

15 determines that a petition filed under this subsection dem16 onstrates that the standards for instituting a derivation 

17 proceeding are met, the Director may institute a derivation 

18 proceeding. The determination by the Director whether to 

19 institute a derivation proceeding shall be final and non20 appealable. 

21 ‘‘(b) DETERMINATION BY PATENT TRIAL AND APPEAL

22 BOARD.—In a derivation proceeding instituted under sub23 section (a), the Patent Trial and Appeal Board shall deter24 mine whether an inventor named in the earlier application 

25 derived the claimed invention from an inventor named in 

26 the petitioner’s application and, without authorization, the 


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1 earlier application claiming such invention was filed. The 

2 Director shall prescribe regulations setting forth standards 

3 for the conduct of derivation proceedings. 

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

5 Appeal Board may defer action on a petition for a deriva6 tion proceeding until the expiration of the 3-month period 

7 beginning on the date on which the Director issues a patent 

8 that includes the claimed invention that is the subject of 

9 the petition. The Patent Trial and Appeal Board also may 

10 defer action on a petition for a derivation proceeding, or 

11 stay the proceeding after it has been instituted, until the 

12 termination of a proceeding under chapter 30, 31, or 32 

13 involving the patent of the earlier applicant. 

14 ‘‘(d) EFFECT OF FINAL DECISION.—The final decision 

15 of the Patent Trial and Appeal Board, if adverse to claims 

16 in an application for patent, shall constitute the final re17 fusal by the Office on those claims. The final decision of 

18 the Patent Trial and Appeal Board, if adverse to claims 

19 in a patent, shall, if no appeal or other review of the deci20 sion has been or can be taken or had, constitute cancellation 

21 of those claims, and notice of such cancellation shall be en22 dorsed on copies of the patent distributed after such can23 cellation. 

24 ‘‘(e) SETTLEMENT.—Parties to a proceeding instituted 

25 under subsection (a) may terminate the proceeding by filing 


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1 a written statement reflecting the agreement of the parties 

2 as to the correct inventors of the claimed invention in dis3 pute. Unless the Patent Trial and Appeal Board finds the 

4 agreement to be inconsistent with the evidence of record, if 

5 any, it shall take action consistent with the agreement. Any 

6 written settlement or understanding of the parties shall be 

7 filed with the Director. At the request of a party to the pro8 ceeding, the agreement or understanding shall be treated as 

9 business confidential information, shall be kept separate 

10 from the file of the involved patents or applications, and 

11 shall be made available only to Government agencies on 

12 written request, or to any person on a showing of good 

13 cause. 

14 ‘‘(f) ARBITRATION.—Parties to a proceeding instituted 

15 under subsection (a) may, within such time as may be spec16 ified by the Director by regulation, determine such contest 

17 or any aspect thereof by arbitration. Such arbitration shall 

18 be governed by the provisions of title 9, to the extent such 

19 title is not inconsistent with this section. The parties shall 

20 give notice of any arbitration award to the Director, and 

21 such award shall, as between the parties to the arbitration, 

22 be dispositive of the issues to which it relates. The arbitra23 tion award shall be unenforceable until such notice is given. 

24 Nothing in this subsection shall preclude the Director from 


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1 determining the patentability of the claimed inventions in2 volved in the proceeding.’’. 

3 (j) ELIMINATION OF REFERENCES TO INTER4 FERENCES.—(1) Sections 134, 145, 146, 154, and 305 of 

5 title 35, United States Code, are each amended by striking 

6 ‘‘Board of Patent Appeals and Interferences’’ each place it 

7 appears and inserting ‘‘Patent Trial and Appeal Board’’. 

8 (2)(A) Section 146 of title 35, United States Code, is 

9 amended— 

10 (i) by striking ‘‘an interference’’ and insert11 ing ‘‘a derivation proceeding’’; and 

12 (ii) by striking ‘‘the interference’’ and in13 serting ‘‘the derivation proceeding’’. 

14 (B) The subparagraph heading for section 

15 154(b)(1)(C) of title 35, United States Code, is 

16 amended to read as follows: 

17 ‘‘(C) GUARANTEE OF ADJUSTMENTS

18 FOR DELAYS DUE TO DERIVATION PRO19 CEEDINGS, SECRECY ORDERS, AND AP20 PEALS.—’’. 

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

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

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

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

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


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

2 (5) The items relating to sections 134 and 135 in the 

3 table of sections for chapter 12 of title 35, United States 

4 Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 

5 (6) The item relating to section 146 in the table of 

6 sections for chapter 13 of title 35, United States Code, is 

7 amended to read as follows: 

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

8 (k) STATUTE OF LIMITATIONS.— 

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

10 States Code, is amended by inserting between the 

11 third and fourth sentences the following: ‘‘A pro12 ceeding under this section shall be commenced not 

13 later than the earlier of either the date that is 10 

14 years after the date on which the misconduct forming 

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

16 the date on which the misconduct forming the basis 

17 for the proceeding is made known to an officer or em18 ployee of the Office as prescribed in the regulations es19 tablished under section 2(b)(2)(D).’’. 

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

21 provide on a biennial basis to the Judiciary Commit22 tees of the Senate and House of Representatives a re23 port providing a short description of incidents made 


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1 known to an officer or employee of the Office as pre2 scribed in the regulations established under section 

3 2(b)(2)(D) of title 35, United States Code, that reflect 

4 substantial evidence of misconduct before the Office 

5 but for which the Office was barred from commencing 

6 a proceeding under section 32 of title 35, United 

7 States Code, by the time limitation established by the 

8 fourth sentence of that section. 

9 (3) EFFECTIVE DATE.—The amendment made by 

10 paragraph (1) shall apply in any case in which the 

11 time period for instituting a proceeding under section 

12 32 of title 35, United States Code, had not lapsed be13 fore the date of the enactment of this Act. 

14 (l) SMALL BUSINESS STUDY.— 

15 (1) DEFINITIONS.—In this subsection— 

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

17 Chief Counsel for Advocacy of the Small Busi18 ness Administration; 

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

20 General Counsel of the United States Patent and 

21 Trademark Office; and 

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

23 the meaning given that term under section 3 of 

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

25 (2) STUDY.— 


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

2 consultation with the General Counsel, shall con3 duct a study of the effects of eliminating the use 

4 of dates of invention in determining whether an 

5 applicant is entitled to a patent under title 35, 

6 United States Code. 

7 (B) AREAS OF STUDY.—The study con8 ducted under subparagraph (A) shall include ex9 amination of the effects of eliminating the use of 

10 invention dates, including examining— 

11 (i) how the change would affect the 

12 ability of small business concerns to obtain 

13 patents and their costs of obtaining patents; 

14 (ii) whether the change would create, 

15 mitigate, or exacerbate any disadvantages 

16 for applicants for patents that are small 

17 business concerns relative to applicants for 

18 patents that are not small business con19 cerns, and whether the change would create 

20 any advantages for applicants for patents 

21 that are small business concerns relative to 

22 applicants for patents that are not small 

23 business concerns; 


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1 (iii) the cost savings and other poten2 tial benefits to small business concerns of 

3 the change; and 

4 (iv) the feasibility and costs and bene5 fits to small business concerns of alternative 

6 means of determining whether an applicant 

7 is entitled to a patent under title 35, 

8 United States Code. 

9 (3) REPORT.—Not later than the date that is 1 

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

11 Chief Counsel shall submit to the Committee on Small 

12 Business and Entrepreneurship and the Committee on 

13 the Judiciary of the Senate and the Committee on 

14 Small Business and the Committee on the Judiciary 

15 of the House of Representatives a report on the results 

16 of the study under paragraph (2). 

17 (m) REPORT ON PRIOR USER RIGHTS.— 

18 (1) IN GENERAL.—Not later than the end of the 

19 4-month period beginning on the date of the enact20 ment of this Act, the Director shall report, to the 

21 Committee on the Judiciary of the Senate and the 

22 Committee on the Judiciary of the House of Rep23 resentatives, the findings and recommendations of the 

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1 lected countries in the industrialized world. The re2 port shall include the following: 

3 (A) A comparison between patent laws of 

4 the United States and the laws of other industri5 alized countries, including members of the Euro6 pean Union and Japan, Canada, and Australia. 

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

8 rights on innovation rates in the selected coun9 tries. 

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

11 between prior user rights and start-up enter12 prises and the ability to attract venture capital 

13 to start new companies. 

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

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

16 and individual inventors. 

17 (E) An analysis of legal and constitutional 

18 issues, if any, that arise from placing trade se19 cret law in patent law. 

20 (F) An analysis of whether the change to a 

21 first-to-file patent system creates a particular 

22 need for prior user rights. 

23 (2) CONSULTATION WITH OTHER AGENCIES.—In 

24 preparing the report required under paragraph (1), 

25 the Director shall consult with the United States 


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1 Trade Representative, the Secretary of State, and the 

2 Attorney General. 

3 (n) EFFECTIVE DATE.— 

4 (1) IN GENERAL.—Except as otherwise provided 

5 in this section, the amendments made by this section 

6 shall take effect upon the expiration of the 18-month 

7 period beginning on the date of the enactment of this 

8 Act, and shall apply to any application for patent, 

9 and to any patent issuing thereon, that contains or 

10 contained at any time— 

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

12 an effective filing date as defined in section 

13 100(i) of title 35, United States Code, that is on 

14 or after the effective date described in this para15 graph; or 

16 (B) a specific reference under section 120, 

17 121, or 365(c) of title 35, United States Code, to 

18 any patent or application that contains or con19 tained at any time such a claim. 

20 (2) INTERFERING PATENTS.—The provisions of 

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

22 States Code, as in effect on the day before the effective 

23 date set forth in paragraph (1) of this subsection, 

24 shall apply to each claim of an application for pat25 ent, and any patent issued thereon, for which the 


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1 amendments made by this section also apply, if such 

2 application or patent contains or contained at any 

3 time— 

4 (A) a claim to an invention having an ef5 fective filing date as defined in section 100(i) of 

6 title 35, United States Code, that occurs before 

7 the effective date set forth in paragraph (1) of 

8 this subsection; or 

9 (B) a specific reference under section 120, 

10 121, or 365(c) of title 35, United States Code, to 

11 any patent or application that contains or con12 tained at any time such a claim. 

13 (o) STUDY OF PATENT LITIGATION.— 

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

15 the United States shall conduct a study of the con16 sequences of litigation by non-practicing entities, or 

17 by patent assertion entities, related to patent claims 

18 made under title 35, United States Code, and regula19 tions authorized by that title. 

20 (2) CONTENTS OF STUDY.—The study conducted 

21 under this subsection shall include the following: 

22 (A) The annual volume of litigation de23 scribed in paragraph (1) over the 20-year period 

24 ending on the date of the enactment of this Act. 


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1 (B) The volume of cases comprising such 

2 litigation that are found to be without merit 

3 after judicial review. 

4 (C) The impacts of such litigation on the 

5 time required to resolve patent claims. 

6 (D) The estimated costs, including the esti7 mated cost of defense, associated with such litiga8 tion for patent holders, patent licensors, patent 

9 licensees, and inventors, and for users of alter10 nate or competing innovations. 

11 (E) The economic impact of such litigation 

12 on the economy of the United States, including 

13 the impact on inventors, job creation, employers, 

14 employees, and consumers. 

15 (F) The benefit to commerce, if any, sup16 plied by non-practicing entities or patent asser17 tion entities that prosecute such litigation. 

18 (3) REPORT TO CONGRESS.—The Comptroller 

19 General shall, not later than the date that is 1 year 

20 after the date of the enactment of this Act, submit to 

21 the Committee on the Judiciary of the House of Rep22 resentatives and the Committee on the Judiciary of 

23 the Senate a report on the results of the study re24 quired under this subsection, including recommenda25 tions for any changes to laws and regulations that 


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1 will minimize any negative impact of patent litiga2 tion that was the subject of such study. 

3 (p) SENSE OF CONGRESS.—It is the sense of the Con4 gress that converting the United States patent registration 

5 system from ‘‘first inventor to use’’ to a system of ‘‘first 

6 inventor to file’’ will promote the progress of science by se7 curing for limited times to inventors the exclusive rights 

8 to their discoveries and provide inventors with greater cer9 tainty regarding the scope of protection granted by the ex10 clusive rights to their discoveries. 

11 (q) SENSE OF CONGRESS.—It is the sense of the Con12 gress that converting the United States patent registration 

13 system from ‘‘first inventor to use’’ to a system of ‘‘first 

14 inventor to file’’ will harmonize the United States patent 

15 registration system with the patent registration systems 

16 commonly used in nearly all other countries throughout the 

17 world with whom the United States conducts trade and 

18 thereby promote a greater sense of international uniformity 

19 and certainty in the procedures used for securing the exclu20 sive rights of inventors to their discoveries. 

21 SEC. 4. INVENTOR’S OATH OR DECLARATION. 

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

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

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


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

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

3 DECLARATION.—An application for patent that is filed 

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

5 section 371 shall include, or be amended to include, the 

6 name of the inventor for any invention claimed in the ap7 plication. Except as otherwise provided in this section, each 

8 individual who is the inventor or a joint inventor of a 

9 claimed invention in an application for patent shall execute 

10 an oath or declaration in connection with the application. 

11 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara12 tion under subsection (a) shall contain statements that— 

13 ‘‘(1) the application was made or was authorized 

14 to be made by the affiant or declarant; and 

15 ‘‘(2) such individual believes himself or herself to 

16 be the original inventor or an original joint inventor 

17 of a claimed invention in the application. 

18 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may 

19 specify additional information relating to the inventor and 

20 the invention that is required to be included in an oath 

21 or declaration under subsection (a). 

22 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

25 patent may provide a substitute statement under the 

26 circumstances described in paragraph (2) and such 


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1 additional circumstances that the Director may speci2 fy by regulation. 

3 ‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute 

4 statement under paragraph (1) is permitted with re5 spect to any individual who— 

6 ‘‘(A) is unable to file the oath or declaration 

7 under subsection (a) because the individual— 

8 ‘‘(i) is deceased; 

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

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

11 diligent effort; or 

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

13 invention but has refused to make the oath or 

14 declaration required under subsection (a). 

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

16 this subsection shall— 

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

18 whom the statement applies; 

19 ‘‘(B) set forth the circumstances rep20 resenting the permitted basis for the filing of the 

21 substitute statement in lieu of the oath or dec22 laration under subsection (a); and 

23 ‘‘(C) contain any additional information, 

24 including any showing, required by the Director. 


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1 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT

2 OF RECORD.—An individual who is under an obligation 

3 of assignment of an application for patent may include the 

4 required statements under subsections (b) and (c) in the as5 signment executed by the individual, in lieu of filing such 

6 statements separately. 

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

8 section 151 may be provided to an applicant for patent only 

9 if the applicant for patent has filed each required oath or 

10 declaration under subsection (a) or has filed a substitute 

11 statement under subsection (d) or recorded an assignment 

12 meeting the requirements of subsection (e). 

13 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE14 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

15 ‘‘(1) EXCEPTION.—The requirements under this 

16 section shall not apply to an individual with respect 

17 to an application for patent in which the individual 

18 is named as the inventor or a joint inventor and who 

19 claims the benefit under section 120, 121, or 365(c) 

20 of the filing of an earlier-filed application, if— 

21 ‘‘(A) an oath or declaration meeting the re22 quirements of subsection (a) was executed by the 

23 individual and was filed in connection with the 

24 earlier-filed application; 


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1 ‘‘(B) a substitute statement meeting the re2 quirements of subsection (d) was filed in connec3 tion with the earlier filed application with re4 spect to the individual; or 

5 ‘‘(C) an assignment meeting the require6 ments of subsection (e) was executed with respect 

7 to the earlier-filed application by the individual 

8 and was recorded in connection with the earlier9 filed application. 

10 ‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE11 MENTS, OR ASSIGNMENTS.—Notwithstanding para12 graph (1), the Director may require that a copy of the 

13 executed oath or declaration, the substitute statement, 

14 or the assignment filed in connection with the earlier15 filed application be included in the later-filed appli16 cation. 

17 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; 

18 FILING ADDITIONAL STATEMENTS.— 

19 ‘‘(1) IN GENERAL.—Any person making a state20 ment required under this section may withdraw, re21 place, or otherwise correct the statement at any time. 

22 If a change is made in the naming of the inventor re23 quiring the filing of 1 or more additional statements 

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1 tions under which such additional statements may be 

2 filed. 

3 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE4 QUIRED.—If an individual has executed an oath or 

5 declaration meeting the requirements of subsection (a) 

6 or an assignment meeting the requirements of sub7 section (e) with respect to an application for patent, 

8 the Director may not thereafter require that indi9 vidual to make any additional oath, declaration, or 

10 other statement equivalent to those required by this 

11 section in connection with the application for patent 

12 or any patent issuing thereon. 

13 ‘‘(3) SAVINGS CLAUSE.—A patent shall not be 

14 invalid or unenforceable based upon the failure to 

15 comply with a requirement under this section if the 

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

17 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec18 laration or statement filed pursuant to this section shall 

19 contain an acknowledgment that any willful false statement 

20 made in such declaration or statement is punishable under 

21 section 1001 of title 18 by fine or imprisonment of not more 

22 than 5 years, or both.’’. 

23 (2) RELATIONSHIP TO DIVISIONAL APPLICA24 TIONS.—Section 121 of title 35, United States Code, 


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

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

3 (3) REQUIREMENTS FOR NONPROVISIONAL APPLI4 CATIONS.—Section 111(a) of title 35, United States 

5 Code, is amended— 

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

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

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

9 inserting ‘‘OR DECLARATION’’ after ‘‘AND OATH’’; 

10 and 

11 (C) by inserting ‘‘or declaration’’ after ‘‘and 

12 oath’’ each place it appears. 

13 (4) CONFORMING AMENDMENT.—The item relat14 ing to section 115 in the table of sections for chapter 

15 11 of title 35, United States Code, is amended to read 

16 as follows: 

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

17 (b) FILING BY OTHER THAN INVENTOR.— 

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

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

20 ‘‘§ 118. Filing by other than inventor 

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

22 under an obligation to assign the invention may make an 

23 application for patent. A person who otherwise shows suffi24 cient proprietary interest in the matter may make an ap25 plication for patent on behalf of and as agent for the invenVerDate Mar 15 2010 22:47 Jun 01, 2011 Jkt 099200 PO 00000 Frm 00033 Fmt 6652 Sfmt 6203 E:\BILLS\H1249.RH H1249

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1 tor on proof of the pertinent facts and a showing that such 

2 action is appropriate to preserve the rights of the parties. 

3 If the Director grants a patent on an application filed 

4 under this section by a person other than the inventor, the 

5 patent shall be granted to the real party in interest and 

6 upon such notice to the inventor as the Director considers 

7 to be sufficient.’’. 

8 (2) CONFORMING AMENDMENT.—Section 251 of 

9 title 35, United States Code, is amended in the third 

10 undesignated paragraph by inserting ‘‘or the applica11 tion for the original patent was filed by the assignee 

12 of the entire interest’’ after ‘‘claims of the original 

13 patent’’. 

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

15 States Code, is amended— 

16 (1) in the first undesignated paragraph— 

17 (A) by striking ‘‘The specification’’ and in18 serting ‘‘(a) IN GENERAL.—The specification’’; 

19 and 

20 (B) by striking ‘‘of carrying out his inven21 tion’’ and inserting ‘‘or joint inventor of car22 rying out the invention’’; 

23 (2) in the second undesignated paragraph— 


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1 (A) by striking ‘‘The specification’’ and in2 serting ‘‘(b) CONCLUSION.—The specification’’; 

3 and 

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

5 invention’’ and inserting ‘‘inventor or a joint in6 ventor regards as the invention’’; 

7 (3) in the third undesignated paragraph, by 

8 striking ‘‘A claim’’ and inserting ‘‘(c) FORM.—A 

9 claim’’; 

10 (4) in the fourth undesignated paragraph, by 

11 striking ‘‘Subject to the following paragraph,’’ and 

12 inserting ‘‘(d) REFERENCE IN DEPENDENT FORMS.— 

13 Subject to subsection (e),’’; 

14 (5) in the fifth undesignated paragraph, by 

15 striking ‘‘A claim’’ and inserting ‘‘(e) REFERENCE IN

16 MULTIPLE DEPENDENT FORM.—A claim’’; and 

17 (6) in the last undesignated paragraph, by strik18 ing ‘‘An element’’ and inserting ‘‘(f) ELEMENT IN

19 CLAIM FOR A COMBINATION.—An element’’. 

20 (d) CONFORMING AMENDMENTS.— 

21 (1) Sections 111(b)(1)(A) of title 35, United 

22 States Code, is amended by striking ‘‘the first para23 graph of section 112 of this title’’ and inserting ‘‘sec24 tion 112(a)’’. 


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1 (2) Section 111(b)(2) of title 35, United States 

2 Code, is amended by striking ‘‘the second through fifth 

3 paragraphs of section 112,’’ and inserting ‘‘sub4 sections (b) through (e) of section 112,’’. 

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

6 section shall take effect upon the expiration of the 1-year 

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

8 and shall apply to any patent application that is filed on 

9 or after that effective date. 

10 SEC. 5. DEFENSE TO INFRINGEMENT BASED ON EARLIER 

11 INVENTOR. 

12 Section 273 of title 35, United States Code, is amended 

13 as follows: 

14 (1) Subsection (a) is amended— 

15 (A) in paragraph (1)— 

16 (i) by striking ‘‘use of a method in’’ 

17 and inserting ‘‘use of the subject matter of 

18 a patent in’’; and 

19 (ii) by adding ‘‘and’’ after the semi20 colon; 

21 (B) in paragraph (2), by striking the semi22 colon at the end of subparagraph (B) and insert23 ing a period; and 

24 (C) by striking paragraphs (3) and (4). 

25 (2) Subsection (b) is amended— 


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1 (A) in paragraph (1)— 

2 (i) by striking ‘‘for a method’’; and 

3 (ii) by striking ‘‘at least 1 year’’ and 

4 all that follows through the end and insert5 ing ‘‘and commercially used the subject 

6 matter at least 1 year before the effective fil7 ing date of the claimed invention that is the 

8 subject matter of the patent.’’; 

9 (B) in paragraph (2), by striking ‘‘patented 

10 method’’ and inserting ‘‘patented process’’; 

11 (C) in paragraph (3)— 

12 (i) by striking subparagraph (A); 

13 (ii) by striking subparagraph (B) and 

14 inserting the following: 

15 ‘‘(A) DERIVATION AND PRIOR DISCLOSURE

16 TO THE PUBLIC.—A person may not assert the 

17 defense under this section if— 

18 ‘‘(i) the subject matter on which the de19 fense is based was derived from the patentee 

20 or persons in privity with the patentee; or 

21 ‘‘(ii) the claimed invention that is the 

22 subject of the defense was disclosed to the 

23 public in a manner that qualified for the 

24 exception from the prior art under section 

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1 lied upon under paragraph (1) of this sub2 section for establishing entitlement to the 

3 defense is less than 1 year before the date of 

4 such disclosure to the public;’’; 

5 (iii) by redesignating subparagraph 

6 (C) as subparagraph (B); and 

7 (iv) by adding at the end the following: 

8 ‘‘(C) FUNDING.— 

9 ‘‘(i) DEFENSE NOT AVAILABLE IN CER10 TAIN CASES.—A person may not assert the 

11 defense under this section if the subject mat12 ter of the patent on which the defense is 

13 based was developed pursuant to a funding 

14 agreement under chapter 18 or by a non15 profit institution of higher education, or a 

16 technology transfer organization affiliated 

17 with such an institution, that did not re18 ceive funding from a private business enter19 prise in support of that development. 

20 ‘‘(ii) DEFINITIONS.—In this subpara21 graph— 

22 ‘‘(I) the term ‘institution of higher 

23 education’ has the meaning given that 

24 term in section 101(a) of the Higher 


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1 Education Act of 1965 (20 U.S.C. 

2 1001(a)); and 

3 ‘‘(II) the term ‘technology transfer 

4 organization’ means an organization 

5 the primary purpose of which is to fa6 cilitate the commercialization of tech7 nologies developed by one or more in8 stitutions of higher education.’’; and 

9 (D) by amending paragraph (6) to read as 

10 follows: 

11 ‘‘(6) PERSONAL DEFENSE.— 

12 ‘‘(A) IN GENERAL.—The defense under this 

13 section may be asserted only by the person who 

14 performed or caused the performance of the acts 

15 necessary to establish the defense, as well as any 

16 other entity that controls, is controlled by, or is 

17 under common control with such person, and, ex18 cept for any transfer to the patent owner, the 

19 right to assert the defense shall not be licensed or 

20 assigned or transferred to another person except 

21 as an ancillary and subordinate part of a good 

22 faith assignment or transfer for other reasons of 

23 the entire enterprise or line of business to which 

24 the defense relates. 


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1 ‘‘(B) EXCEPTION.—Notwithstanding sub2 paragraph (A), any person may, on the person’s 

3 own behalf, assert a defense based on the exhaus4 tion of rights provided under paragraph (2), in5 cluding any necessary elements thereof.’’. 

6 SEC. 6. POST-GRANT REVIEW PROCEEDINGS. 

7 (a) INTER PARTES REVIEW.—Chapter 31 of title 35, 

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

9 ‘‘CHAPTER 31—INTER PARTES REVIEW 

‘‘Sec. 

‘‘311. Inter partes review. 

‘‘312. Petitions. 

‘‘313. Preliminary response to petition. 

‘‘314. Institution of inter partes review. 

‘‘315. Relation to other proceedings or actions. 

‘‘316. Conduct of inter partes review. 

‘‘317. Settlement. 

‘‘318. Decision of the Board. 

‘‘319. Appeal. 

10 ‘‘§ 311. Inter partes review 

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

12 chapter, a person who is not the owner of a patent may 

13 file with the Office a petition to institute an inter partes 

14 review of the patent. The Director shall establish, by regula15 tion, fees to be paid by the person requesting the review, 

16 in such amounts as the Director determines to be reason17 able, considering the aggregate costs of the review. 

18 ‘‘(b) SCOPE.—A petitioner in an inter partes review 

19 may request to cancel as unpatentable 1 or more claims 

20 of a patent only on a ground that could be raised under 


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1 section 102 or 103 and only on the basis of prior art con2 sisting of patents or printed publications. 

3 ‘‘(c) FILING DEADLINE.—A petition for inter partes 

4 review shall be filed after the later of either— 

5 ‘‘(1) the date that is 1 year after the grant of a 

6 patent or issuance of a reissue of a patent; or 

7 ‘‘(2) if a post-grant review is instituted under 

8 chapter 32, the date of the termination of such post9 grant review. 

10 ‘‘§ 312. Petitions 

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

12 under section 311 may be considered only if— 

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

14 the fee established by the Director under section 311; 

15 ‘‘(2) the petition identifies all real parties in in16 terest; 

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

18 particularity, each claim challenged, the grounds on 

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

20 evidence that supports the grounds for the challenge to 

21 each claim, including— 

22 ‘‘(A) copies of patents and printed publica23 tions that the petitioner relies upon in support 

24 of the petition; and 


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1 ‘‘(B) affidavits or declarations of sup2 porting evidence and opinions, if the petitioner 

3 relies on expert opinions; 

4 ‘‘(4) the petition provides such other information 

5 as the Director may require by regulation; and 

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

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

8 (4) to the patent owner or, if applicable, the des9 ignated representative of the patent owner. 

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

11 after the receipt of a petition under section 311, the Director 

12 shall make the petition available to the public. 

13 ‘‘§ 313. Preliminary response to petition 

14 ‘‘If an inter partes review petition is filed under sec15 tion 311, the patent owner shall have the right to file a 

16 preliminary response to the petition, within a time period 

17 set by the Director, that sets forth reasons why no inter 

18 partes review should be instituted based upon the failure 

19 of the petition to meet any requirement of this chapter. 

20 ‘‘§ 314. Institution of inter partes review 

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

22 an inter partes review to commence unless the Director de23 termines that the information presented in the petition filed 

24 under section 311 and any response filed under section 313 

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1 tioner would prevail with respect to at least 1 of the claims 

2 challenged in the petition. 

3 ‘‘(b) TIMING.—The Director shall determine whether to 

4 institute an inter partes review under this chapter pursu5 ant to a petition filed under section 311 within 3 months 

6 after— 

7 ‘‘(1) receiving a preliminary response to the pe8 tition under section 313; or 

9 ‘‘(2) if no such preliminary response is filed, the 

10 last date on which such response may be filed. 

11 ‘‘(c) NOTICE.—The Director shall notify the petitioner 

12 and patent owner, in writing, of the Director’s determina13 tion under subsection (a), and shall make such notice avail14 able to the public as soon as is practicable. Such notice shall 

15 include the date on which the review shall commence. 

16 ‘‘(d) NO APPEAL.—The determination by the Director 

17 whether to institute an inter partes review under this sec18 tion shall be final and nonappealable. 

19 ‘‘§ 315. Relation to other proceedings or actions 

20 ‘‘(a) INFRINGER’S CIVIL ACTION.— 

21 ‘‘(1) INTER PARTES REVIEW BARRED BY CIVIL

22 ACTION.—An inter partes review may not be insti23 tuted if, before the date on which the petition for such 

24 a review is filed, the petitioner, real party in interest, 


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1 or privy of the petitioner filed a civil action chal2 lenging the validity of a claim of the patent. 

3 ‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, 

4 real party in interest, or privy of the petitioner files 

5 a civil action challenging the validity of a claim of 

6 the patent on or after the date on which the petitioner 

7 files a petition for inter partes review of the patent, 

8 that civil action shall be automatically stayed until 

9 either— 

10 ‘‘(A) the patent owner moves the court to 

11 lift the stay; 

12 ‘‘(B) the patent owner files a civil action or 

13 counterclaim alleging that the petitioner, real 

14 party in interest, or privy of the petitioner has 

15 infringed the patent; or 

16 ‘‘(C) the petitioner, real party in interest, 

17 or privy of the petitioner moves the court to dis18 miss the civil action. 

19 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun20 terclaim challenging the validity of a claim of a pat21 ent does not constitute a civil action challenging the 

22 validity of a claim of a patent for purposes of this 

23 subsection. 

24 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re25 view may not be instituted if the petition requesting the 


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1 proceeding is filed more than 1 year after the date on which 

2 the petitioner, real party in interest, or privy of the peti3 tioner is served with a complaint alleging infringement of 

4 the patent. The time limitation set forth in the preceding 

5 sentence shall not apply to a request for joinder under sub6 section (c). 

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

8 partes review, the Director, in his or her discretion, may 

9 join as a party to that inter partes review any person who 

10 properly files a petition under section 311 that the Director, 

11 after receiving a preliminary response under section 313 

12 or the expiration of the time for filing such a response, de13 termines warrants the institution of an inter partes review 

14 under section 314. 

15 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sec16 tions 135(a), 251, and 252, and chapter 30, during the 

17 pendency of an inter partes review, if another proceeding 

18 or matter involving the patent is before the Office, the Di19 rector may determine the manner in which the inter partes 

20 review or other proceeding or matter may proceed, includ21 ing providing for stay, transfer, consolidation, or termi22 nation of any such matter or proceeding. 

23 ‘‘(e) ESTOPPEL.— 

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

25 petitioner in an inter partes review of a claim in a 


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1 patent under this chapter that results in a final writ2 ten decision under section 318(a), or the real party 

3 in interest or privy of the petitioner, may not request 

4 or maintain a proceeding before the Office with re5 spect to that claim on any ground that the petitioner 

6 raised or reasonably could have raised during that 

7 inter partes review. 

8 ‘‘(2) CIVIL ACTIONS AND OTHER PRO9 CEEDINGS.—The petitioner in an inter partes review 

10 of a claim in a patent under this chapter that results 

11 in a final written decision under section 318(a), or 

12 the real party in interest or privy of the petitioner, 

13 may not assert either in a civil action arising in 

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

15 a proceeding before the International Trade Commis16 sion under section 337 of the Tariff Act of 1930 that 

17 the claim is invalid on any ground that the petitioner 

18 raised or reasonably could have raised during that 

19 inter partes review. 

20 ‘‘§ 316. Conduct of inter partes review 

21 ‘‘(a) REGULATIONS.—The Director shall prescribe reg22 ulations— 

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

24 under this chapter shall be made available to the pub25 lic, except that any petition or document filed with 


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1 the intent that it be sealed shall, if accompanied by 

2 a motion to seal, be treated as sealed pending the out3 come of the ruling on the motion; 

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

5 of sufficient grounds to institute a review under sec6 tion 314(a); 

7 ‘‘(3) establishing procedures for the submission of 

8 supplemental information after the petition is filed; 

9 ‘‘(4) establishing and governing inter partes re10 view under this chapter and the relationship of such 

11 review to other proceedings under this title; 

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

13 discovery of relevant evidence, including that such 

14 discovery shall be limited to— 

15 ‘‘(A) the deposition of witnesses submitting 

16 affidavits or declarations; and 

17 ‘‘(B) what is otherwise necessary in the in18 terest of justice; 

19 ‘‘(6) prescribing sanctions for abuse of discovery, 

20 abuse of process, or any other improper use of the 

21 proceeding, such as to harass or to cause unnecessary 

22 delay or an unnecessary increase in the cost of the 

23 proceeding; 


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1 ‘‘(7) providing for protective orders governing 

2 the exchange and submission of confidential informa3 tion; 

4 ‘‘(8) providing for the filing by the patent owner 

5 of a response to the petition under section 313 after 

6 an inter partes review has been instituted, and re7 quiring that the patent owner file with such response, 

8 through affidavits or declarations, any additional fac9 tual evidence and expert opinions on which the patent 

10 owner relies in support of the response; 

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

12 allowing the patent owner to move to amend the pat13 ent under subsection (d) to cancel a challenged claim 

14 or propose a reasonable number of substitute claims, 

15 and ensuring that any information submitted by the 

16 patent owner in support of any amendment entered 

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

18 as part of the prosecution history of the patent; 

19 ‘‘(10) providing either party with the right to an 

20 oral hearing as part of the proceeding; 

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

22 an inter partes review be issued not later than 1 year 

23 after the date on which the Director notices the insti24 tution of a review under this chapter, except that the 

25 Director may, for good cause shown, extend the 1-year 


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1 period by not more than 6 months, and may adjust 

2 the time periods in this paragraph in the case of join3 der under section 315(c); 

4 ‘‘(12) setting a time period for requesting joinder 

5 under section 315(c); and 

6 ‘‘(13) providing the petitioner with at least 1 op7 portunity to file written comments within a time pe8 riod established by the Director. 

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

10 under this section, the Director shall consider the effect of 

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

12 patent system, the efficient administration of the Office, 

13 and the ability of the Office to timely complete proceedings 

14 instituted under this chapter. 

15 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent 

16 Trial and Appeal Board shall, in accordance with section 

17 6, conduct each inter partes review instituted under this 

18 chapter. 

19 ‘‘(d) AMENDMENT OF THE PATENT.— 

20 ‘‘(1) IN GENERAL.—During an inter partes re21 view instituted under this chapter, the patent owner 

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

23 of the following ways: 

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


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

2 reasonable number of substitute claims. 

3 ‘‘(2) ADDITIONAL MOTIONS.—Additional motions 

4 to amend may be permitted upon the joint request of 

5 the petitioner and the patent owner to materially ad6 vance the settlement of a proceeding under section 

7 317, or as permitted by regulations prescribed by the 

8 Director. 

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

10 this subsection may not enlarge the scope of the 

11 claims of the patent or introduce new matter. 

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

13 review instituted under this chapter, the petitioner shall 

14 have the burden of proving a proposition of unpatentability 

15 by a preponderance of the evidence. 

16 ‘‘§ 317. Settlement 

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

18 under this chapter shall be terminated with respect to any 

19 petitioner upon the joint request of the petitioner and the 

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

21 the proceeding before the request for termination is filed. 

22 If the inter partes review is terminated with respect to a 

23 petitioner under this section, no estoppel under section 

24 315(e) shall attach to the petitioner, or to the real party 

25 in interest or privy of the petitioner, on the basis of that 


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1 petitioner’s institution of that inter partes review. If no pe2 titioner remains in the inter partes review, the Office may 

3 terminate the review or proceed to a final written decision 

4 under section 318(a). 

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

6 understanding between the patent owner and a petitioner, 

7 including any collateral agreements referred to in such 

8 agreement or understanding, made in connection with, or 

9 in contemplation of, the termination of an inter partes re10 view under this section shall be in writing and a true copy 

11 of such agreement or understanding shall be filed in the 

12 Office before the termination of the inter partes review as 

13 between the parties. At the request of a party to the pro14 ceeding, the agreement or understanding shall be treated as 

15 business confidential information, shall be kept separate 

16 from the file of the involved patents, and shall be made 

17 available only to Federal Government agencies on written 

18 request, or to any person on a showing of good cause. 

19 ‘‘§ 318. Decision of the Board 

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

21 review is instituted and not dismissed under this chapter, 

22 the Patent Trial and Appeal Board shall issue a final writ23 ten decision with respect to the patentability of any patent 

24 claim challenged by the petitioner and any new claim 

25 added under section 316(d). 


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

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

3 and the time for appeal has expired or any appeal has ter4 minated, the Director shall issue and publish a certificate 

5 canceling any claim of the patent finally determined to be 

6 unpatentable, confirming any claim of the patent deter7 mined to be patentable, and incorporating in the patent 

8 by operation of the certificate any new or amended claim 

9 determined to be patentable. 

10 ‘‘(c) AMENDED OR NEW CLAIM.—Any proposed 

11 amended or new claim determined to be patentable and in12 corporated into a patent following an inter partes review 

13 under this chapter shall have the same effect as that speci14 fied in section 252 for reissued patents on the right of any 

15 person who made, purchased, or used within the United 

16 States, or imported into the United States, anything pat17 ented by such proposed amended or new claim, or who made 

18 substantial preparation therefor, before the issuance of a 

19 certificate under subsection (b). 

20 ‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall 

21 make available to the public data describing the length of 

22 time between the institution of, and the issuance of a final 

23 written decision under subsection (a) for, each inter partes 

24 review. 


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1 ‘‘§ 319. Appeal 

2 ‘‘A party dissatisfied with the final written decision 

3 of the Patent Trial and Appeal Board under section 318(a) 

4 may appeal the decision pursuant to sections 141 through 

5 144. Any party to the inter partes review shall have the 

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

7 (b) CONFORMING AMENDMENT.—The table of chapters 

8 for part III of title 35, United States Code, is amended by 

9 striking the item relating to chapter 31 and inserting the 

10 following: 

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

11 (c) REGULATIONS AND EFFECTIVE DATE.— 

12 (1) REGULATIONS.—The Director shall, not later 

13 than the date that is 1 year after the date of the en14 actment of this Act, issue regulations to carry out 

15 chapter 31 of title 35, United States Code, as amend16 ed by subsection (a) of this section. 

17 (2) APPLICABILITY.— 

18 (A) IN GENERAL.—The amendments made 

19 by subsection (a) shall take effect upon the expi20 ration of the 1-year period beginning on the date 

21 of the enactment of this Act and shall apply to 

22 any patent issued before, on, or after that effec23 tive date. 

24 (B) GRADUATED IMPLEMENTATION.—The 

25 Director may impose a limit on the number of 


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1 inter partes reviews that may be instituted 

2 under chapter 31 of title 35, United States Code, 

3 during each of the first 4 1-year periods in 

4 which the amendments made by subsection (a) 

5 are in effect, if such number in each year equals 

6 or exceeds the number of inter partes reexamina7 tions that are ordered under chapter 31 of title 

8 35, United States Code, in the last fiscal year 

9 ending before the effective date of the amend10 ments made by subsection (a). 

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

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

13 following: 

14 ‘‘CHAPTER 32—POST-GRANT REVIEW 

‘‘Sec. 

‘‘321. Post-grant review. 

‘‘322. Petitions. 

‘‘323. Preliminary response to petition. 

‘‘324. Institution of post-grant review. 

‘‘325. Relation to other proceedings or actions. 

‘‘326. Conduct of post-grant review. 

‘‘327. Settlement. 

‘‘328. Decision of the Board. 

‘‘329. Appeal. 

15 ‘‘§ 321. Post-grant review 

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

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

18 the Office a petition to institute a post-grant review of a 

19 patent. The Director shall establish, by regulation, fees to 

20 be paid by the person requesting the review, in such 


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1 amounts as the Director determines to be reasonable, consid2 ering the aggregate costs of the post-grant review. 

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

4 request to cancel as unpatentable 1 or more claims of a pat5 ent on any ground that could be raised under paragraph 

6 (2) or (3) of section 282(b) (relating to invalidity of the 

7 patent or any claim). 

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

9 review may only be filed not later than the date that is 

10 1 year after the date of the grant of the patent or of the 

11 issuance of a reissue patent (as the case may be). 

12 ‘‘§ 322. Petitions 

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

14 under section 321 may be considered only if— 

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

16 the fee established by the Director under section 321; 

17 ‘‘(2) the petition identifies all real parties in in18 terest; 

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

20 particularity, each claim challenged, the grounds on 

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

22 evidence that supports the grounds for the challenge to 

23 each claim, including— 


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

3 of the petition; and 

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

6 relies on other factual evidence or on expert 

7 opinions; 

8 ‘‘(4) the petition provides such other information 

9 as the Director may require by regulation; and 

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

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

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

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

15 after the receipt of a petition under section 321, the Director 

16 shall make the petition available to the public. 

17 ‘‘§ 323. Preliminary response to petition 

18 ‘‘If a post-grant review petition is filed under section 

19 321, the patent owner shall have the right to file a prelimi20 nary response to the petition, within a time period set by 

21 the Director, that sets forth reasons why no post-grant re22 view should be instituted based upon the failure of the peti23 tion to meet any requirement of this chapter. 


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

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

3 post-grant review to commence unless the Director deter4 mines that the information presented in the petition filed 

5 under section 321, if such information is not rebutted, 

6 would demonstrate that it is more likely than not that at 

7 least 1 of the claims challenged in the petition is 

8 unpatentable. 

9 ‘‘(b) ADDITIONAL GROUNDS.—The determination re10 quired under subsection (a) may also be satisfied by a show11 ing that the petition raises a novel or unsettled legal ques12 tion that is important to other patents or patent applica13 tions. 

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

15 institute a post-grant review under this chapter pursuant 

16 to a petition filed under section 321 within 3 months 

17 after— 

18 ‘‘(1) receiving a preliminary response to the pe19 tition under section 323; or 

20 ‘‘(2) if no such preliminary response is filed, the 

21 last date on which such response may be filed. 

22 ‘‘(d) NOTICE.—The Director shall notify the petitioner 

23 and patent owner, in writing, of the Director’s determina24 tion under subsection (a) or (b), and shall make such notice 

25 available to the public as soon as is practicable. The Direc26 tor shall make each notice of the institution of a post-grant 


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1 review available to the public. Such notice shall include the 

2 date on which the review shall commence. 

3 ‘‘(e) NO APPEAL.—The determination by the Director 

4 whether to institute a post-grant review under this section 

5 shall be final and nonappealable. 

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

7 ‘‘(a) INFRINGER’S CIVIL ACTION.— 

8 ‘‘(1) POST-GRANT REVIEW BARRED BY CIVIL AC9 TION.—A post-grant review may not be instituted 

10 under this chapter if, before the date on which the pe11 tition for such a review is filed, the petitioner, real 

12 party in interest, or privy of the petitioner filed a 

13 civil action challenging the validity of a claim of the 

14 patent. 

15 ‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, 

16 real party in interest, or privy of the petitioner files 

17 a civil action challenging the validity of a claim of 

18 the patent on or after the date on which the petitioner 

19 files a petition for post-grant review of the patent, 

20 that civil action shall be automatically stayed until 

21 either— 

22 ‘‘(A) the patent owner moves the court to 

23 lift the stay; 

24 ‘‘(B) the patent owner files a civil action or 

25 counterclaim alleging that the petitioner, real 


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1 party in interest, or privy of the petitioner has 

2 infringed the patent; or 

3 ‘‘(C) the petitioner, real party in interest, 

4 or privy of the petitioner moves the court to dis5 miss the civil action. 

6 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun7 terclaim challenging the validity of a claim of a pat8 ent does not constitute a civil action challenging the 

9 validity of a claim of a patent for purposes of this 

10 subsection. 

11 ‘‘(b) PRELIMINARY INJUNCTIONS.—If a civil action al12 leging infringement of a patent is filed within 3 months 

13 after the date on which the patent is granted, the court may 

14 not stay its consideration of the patent owner’s motion for 

15 a preliminary injunction against infringement of the pat16 ent on the basis that a petition for post-grant review has 

17 been filed under this chapter or that such a post-grant re18 view has been instituted under this chapter. 

19 ‘‘(c) JOINDER.—If more than 1 petition for a post20 grant review under this chapter is properly filed against 

21 the same patent and the Director determines that more than 

22 1 of these petitions warrants the institution of a post-grant 

23 review under section 324, the Director may consolidate such 

24 reviews into a single post-grant review. 


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1 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sec2 tions 135(a), 251, and 252, and chapter 30, during the 

3 pendency of any post-grant review under this chapter, if 

4 another proceeding or matter involving the patent is before 

5 the Office, the Director may determine the manner in which 

6 the post-grant review or other proceeding or matter may 

7 proceed, including providing for the stay, transfer, consoli8 dation, or termination of any such matter or proceeding. 

9 In determining whether to institute or order a proceeding 

10 under this chapter, chapter 30, or chapter 31, the Director 

11 may take into account whether, and reject the petition or 

12 request because, the same or substantially the same prior 

13 art or arguments previously were presented to the Office. 

14 ‘‘(e) ESTOPPEL.— 

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

16 petitioner in a post-grant review of a claim in a pat17 ent under this chapter that results in a final written 

18 decision under section 328(a), or the real party in in19 terest or privy of the petitioner, may not request or 

20 maintain a proceeding before the Office with respect 

21 to that claim on any ground that the petitioner raised 

22 or reasonably could have raised during that post23 grant review. 

24 ‘‘(2) CIVIL ACTIONS AND OTHER PRO25 CEEDINGS.—The petitioner in a post-grant review of 


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1 a claim in a patent under this chapter that results 

2 in a final written decision under section 328(a), or 

3 the real party in interest or privy of the petitioner, 

4 may not assert either in a civil action arising in 

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

6 a proceeding before the International Trade Commis7 sion under section 337 of the Tariff Act of 1930 that 

8 the claim is invalid on any ground that the petitioner 

9 raised or reasonably could have raised during that 

10 post-grant review. 

11 ‘‘(f) REISSUE PATENTS.—A post-grant review may not 

12 be instituted under this chapter if the petition requests can13 cellation of a claim in a reissue patent that is identical 

14 to or narrower than a claim in the original patent from 

15 which the reissue patent was issued, and the time limita16 tions in section 321(c) would bar filing a petition for a 

17 post-grant review for such original patent. 

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

19 ‘‘(a) REGULATIONS.—The Director shall prescribe reg20 ulations— 

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

22 under this chapter shall be made available to the pub23 lic, except that any petition or document filed with 

24 the intent that it be sealed shall, if accompanied by 


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1 a motion to seal, be treated as sealed pending the out2 come of the ruling on the motion; 

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

4 of sufficient grounds to institute a review under sub5 sections (a) and (b) of section 324; 

6 ‘‘(3) establishing procedures for the submission of 

7 supplemental information after the petition is filed; 

8 ‘‘(4) establishing and governing a post-grant re9 view under this chapter and the relationship of such 

10 review to other proceedings under this title; 

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

12 discovery of relevant evidence, including that such 

13 discovery shall be limited to evidence directly related 

14 to factual assertions advanced by either party in the 

15 proceeding; 

16 ‘‘(6) prescribing sanctions for abuse of discovery, 

17 abuse of process, or any other improper use of the 

18 proceeding, such as to harass or to cause unnecessary 

19 delay or an unnecessary increase in the cost of the 

20 proceeding; 

21 ‘‘(7) providing for protective orders governing 

22 the exchange and submission of confidential informa23 tion; 

24 ‘‘(8) providing for the filing by the patent owner 

25 of a response to the petition under section 323 after 


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1 a post-grant review has been instituted, and requiring 

2 that the patent owner file with such response, through 

3 affidavits or declarations, any additional factual evi4 dence and expert opinions on which the patent owner 

5 relies in support of the response; 

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

7 allowing the patent owner to move to amend the pat8 ent under subsection (d) to cancel a challenged claim 

9 or propose a reasonable number of substitute claims, 

10 and ensuring that any information submitted by the 

11 patent owner in support of any amendment entered 

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

13 as part of the prosecution history of the patent; 

14 ‘‘(10) providing either party with the right to an 

15 oral hearing as part of the proceeding; and 

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

17 any post-grant review be issued not later than 1 year 

18 after the date on which the Director notices the insti19 tution of a proceeding under this chapter, except that 

20 the Director may, for good cause shown, extend the 1- 

21 year period by not more than 6 months, and may ad22 just the time periods in this paragraph in the case of 

23 joinder under section 325(c). 

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

25 under this section, the Director shall consider the effect of 


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

2 patent system, the efficient administration of the Office, 

3 and the ability of the Office to timely complete proceedings 

4 instituted under this chapter. 

5 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent 

6 Trial and Appeal Board shall, in accordance with section 

7 6, conduct each post-grant review instituted under this 

8 chapter. 

9 ‘‘(d) AMENDMENT OF THE PATENT.— 

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

11 instituted under this chapter, the patent owner may 

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

13 following ways: 

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

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

16 reasonable number of substitute claims. 

17 ‘‘(2) ADDITIONAL MOTIONS.—Additional motions 

18 to amend may be permitted upon the joint request of 

19 the petitioner and the patent owner to materially ad20 vance the settlement of a proceeding under section 

21 327, or upon the request of the patent owner for good 

22 cause shown. 

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

24 this subsection may not enlarge the scope of the 

25 claims of the patent or introduce new matter. 


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1 ‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re2 view instituted under this chapter, the petitioner shall have 

3 the burden of proving a proposition of unpatentability by 

4 a preponderance of the evidence. 

5 ‘‘§ 327. Settlement 

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

7 under this chapter shall be terminated with respect to any 

8 petitioner upon the joint request of the petitioner and the 

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

10 the proceeding before the request for termination is filed. 

11 If the post-grant review is terminated with respect to a peti12 tioner under this section, no estoppel under section 325(e) 

13 shall attach to the petitioner, or to the real party in interest 

14 or privy of the petitioner, on the basis of that petitioner’s 

15 institution of that post-grant review. If no petitioner re16 mains in the post-grant review, the Office may terminate 

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

18 under section 328(a). 

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

20 understanding between the patent owner and a petitioner, 

21 including any collateral agreements referred to in such 

22 agreement or understanding, made in connection with, or 

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

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

25 such agreement or understanding shall be filed in the Office 


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1 before the termination of the post-grant review as between 

2 the parties. At the request of a party to the proceeding, the 

3 agreement or understanding shall be treated as business 

4 confidential information, shall be kept separate from the file 

5 of the involved patents, and shall be made available only 

6 to Federal Government agencies on written request, or to 

7 any person on a showing of good cause. 

8 ‘‘§ 328. Decision of the Board 

9 ‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re10 view is instituted and not dismissed under this chapter, the 

11 Patent Trial and Appeal Board shall issue a final written 

12 decision with respect to the patentability of any patent 

13 claim challenged by the petitioner and any new claim 

14 added under section 326(d). 

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

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

17 and the time for appeal has expired or any appeal has ter18 minated, the Director shall issue and publish a certificate 

19 canceling any claim of the patent finally determined to be 

20 unpatentable, confirming any claim of the patent deter21 mined to be patentable, and incorporating in the patent 

22 by operation of the certificate any new or amended claim 

23 determined to be patentable. 

24 ‘‘(c) AMENDED OR NEW CLAIM.—Any proposed 

25 amended or new claim determined to be patentable and inVerDate Mar 15 2010 22:47 Jun 01, 2011 Jkt 099200 PO 00000 Frm 00066 Fmt 6652 Sfmt 6203 E:\BILLS\H1249.RH H1249

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1 corporated into a patent following a post-grant review 

2 under this chapter shall have the same effect as that speci3 fied in section 252 of this title for reissued patents on the 

4 right of any person who made, purchased, or used within 

5 the United States, or imported into the United States, any6 thing patented by such proposed amended or new claim, 

7 or who made substantial preparation therefor, before the 

8 issuance of a certificate under subsection (b). 

9 ‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall 

10 make available to the public data describing the length of 

11 time between the institution of, and the issuance of a final 

12 written decision under subsection (a) for, each post-grant 

13 review. 

14 ‘‘§ 329. Appeal 

15 ‘‘A party dissatisfied with the final written decision 

16 of the Patent Trial and Appeal Board under section 328(a) 

17 may appeal the decision pursuant to sections 141 through 

18 144. Any party to the post-grant review shall have the right 

19 to be a party to the appeal.’’. 

20 (e) CONFORMING AMENDMENT.—The table of chapters 

21 for part III of title 35, United States Code, is amended by 

22 adding at the end the following: 

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

23 (f) REGULATIONS AND EFFECTIVE DATE.— 

24 (1) REGULATIONS.—The Director shall, not later 

25 than the date that is 1 year after the date of the enVerDate Mar 15 2010 22:47 Jun 01, 2011 Jkt 099200 PO 00000 Frm 00067 Fmt 6652 Sfmt 6203 E:\BILLS\H1249.RH H1249

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1 actment of this Act, issue regulations to carry out 

2 chapter 32 of title 35, United States Code, as added 

3 by subsection (d) of this section. 

4 (2) APPLICABILITY.— 

5 (A) IN GENERAL.—The amendments made 

6 by subsection (d) shall take effect upon the expi7 ration of the 1-year period beginning on the date 

8 of the enactment of this Act and, except as pro9 vided in section 18 and in paragraph (3), shall 

10 apply to any patent that is described in section 

11 3(n)(1). 

12 (B) LIMITATION.—The Director may impose 

13 a limit on the number of post-grant reviews that 

14 may be instituted under chapter 32 of title 35, 

15 United States Code, during each of the first 4 1- 

16 year periods in which the amendments made by 

17 subsection (d) are in effect. 

18 (3) PENDING INTERFERENCES.— 

19 (A) PROCEDURES IN GENERAL.—The Direc20 tor shall determine, and include in the regula21 tions issued under paragraph (1), the procedures 

22 under which an interference commenced before 

23 the effective date set forth in paragraph (2)(A) is 

24 to proceed, including whether such interference— 


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1 (i) is to be dismissed without prejudice 

2 to the filing of a petition for a post-grant 

3 review under chapter 32 of title 35, United 

4 States Code; or 

5 (ii) is to proceed as if this Act had not 

6 been enacted. 

7 (B) PROCEEDINGS BY PATENT TRIAL AND

8 APPEAL BOARD.—For purposes of an interference 

9 that is commenced before the effective date set 

10 forth in paragraph (2)(A), the Director may 

11 deem the Patent Trial and Appeal Board to be 

12 the Board of Patent Appeals and Interferences, 

13 and may allow the Patent Trial and Appeal 

14 Board to conduct any further proceedings in that 

15 interference. 

16 (C) APPEALS.—The authorization to appeal 

17 or have remedy from derivation proceedings in 

18 sections 141(d) and 146 of title 35, United States 

19 Code, as amended by this Act, and the jurisdic20 tion to entertain appeals from derivation pro21 ceedings in section 1295(a)(4)(A) of title 28, 

22 United States Code, as amended by this Act, 

23 shall be deemed to extend to any final decision 

24 in an interference that is commenced before the 

25 effective date set forth in paragraph (2)(A) of 


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1 this subsection and that is not dismissed pursu2 ant to this paragraph. 

3 (g) CITATION OF PRIOR ART AND WRITTEN STATE4 MENTS.— 

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

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

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

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

9 to the Office in writing— 

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

11 publications which that person believes to have a 

12 bearing on the patentability of any claim of a par13 ticular patent; or 

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

15 proceeding before a Federal court or the Office in 

16 which the patent owner took a position on the scope 

17 of any claim of a particular patent. 

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

19 or written statements pursuant to subsection (a) explains 

20 in writing the pertinence and manner of applying the prior 

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

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

23 explanation thereof shall become a part of the official file 

24 of the patent. 


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1 ‘‘(c) ADDITIONAL INFORMATION.—A party that sub2 mits a written statement pursuant to subsection (a)(2) shall 

3 include any other documents, pleadings, or evidence from 

4 the proceeding in which the statement was filed that ad5 dresses the written statement. 

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

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

8 submitted pursuant to subsection (c), shall not be considered 

9 by the Office for any purpose other than to determine the 

10 proper meaning of a patent claim in a proceeding that is 

11 ordered or instituted pursuant to section 304, 314, or 324. 

12 If any such written statement or additional information is 

13 subject to an applicable protective order, such statement or 

14 information shall be redacted to exclude information that 

15 is subject to that order. 

16 ‘‘(e) CONFIDENTIALITY.—Upon the written request of 

17 the person citing prior art or written statements pursuant 

18 to subsection (a), that person’s identity shall be excluded 

19 from the patent file and kept confidential.’’. 

20 (2) CONFORMING AMENDMENT.—The item relat21 ing to section 301 in the table of sections for chapter 

22 30 of title 35, United States Code, is amended to read 

23 as follows: 

‘‘301. Citation of prior art and written statements.’’. 

24 (3) EFFECTIVE DATE.—The amendments made 

25 by this subsection shall take effect upon the expiration 


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1 of the 1-year period beginning on the date of the en2 actment of this Act and shall apply to any patent 

3 issued before, on, or after that effective date. 

4 (h) REEXAMINATION.— 

5 (1) DETERMINATION BY DIRECTOR.— 

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

7 35, United States Code, is amended by striking 

8 ‘‘section 301 of this title’’ and inserting ‘‘section 

9 301 or 302’’. 

10 (B) EFFECTIVE DATE.—The amendment 

11 made by this paragraph shall take effect upon 

12 the expiration of the 1-year period beginning on 

13 the date of the enactment of this Act and shall 

14 apply to any patent issued before, on, or after 

15 that effective date. 

16 (2) APPEAL.— 

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

18 United States Code, is amended by striking 

19 ‘‘145’’ and inserting ‘‘144’’. 

20 (B) EFFECTIVE DATE.—The amendment 

21 made by this paragraph shall take effect on the 

22 date of the enactment of this Act and shall apply 

23 to any appeal of a reexamination before the 

24 Board of Patent Appeals and Interferences or the 

25 Patent Trial and Appeal Board that is pending 


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1 on, or brought on or after, the date of the enact2 ment of this Act. 

3 SEC. 7. PATENT TRIAL AND APPEAL BOARD. 

4 (a) COMPOSITION AND DUTIES.— 

5 (1) IN GENERAL.—Section 6 of title 35, United 

6 States Code, is amended to read as follows: 

7 ‘‘§ 6. Patent Trial and Appeal Board 

8 ‘‘(a) IN GENERAL.—There shall be in the Office a Pat9 ent Trial and Appeal Board. The Director, the Deputy Di10 rector, the Commissioner for Patents, the Commissioner for 

11 Trademarks, and the administrative patent judges shall 

12 constitute the Patent Trial and Appeal Board. The admin13 istrative patent judges shall be persons of competent legal 

14 knowledge and scientific ability who are appointed by the 

15 Secretary, in consultation with the Director. Any reference 

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

17 delegation of authority, or any document of or pertaining 

18 to the Board of Patent Appeals and Interferences is deemed 

19 to refer to the Patent Trial and Appeal Board. 

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

21 shall— 

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

23 adverse decisions of examiners upon applications for 

24 patents pursuant to section 134(a); 


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1 ‘‘(2) review appeals of reexaminations pursuant 

2 to section 134(b); 

3 ‘‘(3) conduct derivation proceedings pursuant to 

4 section 135; and 

5 ‘‘(4) conduct inter partes reviews and post-grant 

6 reviews pursuant to chapters 31 and 32. 

7 ‘‘(c) 3-MEMBER PANELS.—Each appeal, derivation 

8 proceeding, post-grant review, and inter partes review shall 

9 be heard by at least 3 members of the Patent Trial and 

10 Appeal Board, who shall be designated by the Director. 

11 Only the Patent Trial and Appeal Board may grant re12 hearings. 

13 ‘‘(d) TREATMENT OF PRIOR APPOINTMENTS.—The 

14 Secretary of Commerce may, in the Secretary’s discretion, 

15 deem the appointment of an administrative patent judge 

16 who, before the date of the enactment of this subsection, held 

17 office pursuant to an appointment by the Director to take 

18 effect on the date on which the Director initially appointed 

19 the administrative patent judge. It shall be a defense to a 

20 challenge to the appointment of an administrative patent 

21 judge on the basis of the judge’s having been originally ap22 pointed by the Director that the administrative patent 

23 judge so appointed was acting as a de facto officer.’’. 

24 (2) CONFORMING AMENDMENT.—The item relat25 ing to section 6 in the table of sections for chapter 1 


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1 of title 35, United States Code, is amended to read as 

2 follows: 

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

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

4 35, United States Code, is amended— 

5 (1) in subsection (b), by striking ‘‘any reexam6 ination proceeding’’ and inserting ‘‘a reexamination’’; 

7 and 

8 (2) by striking subsection (c). 

9 (c) CIRCUIT APPEALS.— 

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

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

12 ‘‘§ 141. Appeal to Court of Appeals for the Federal Cir13 cuit 

14 ‘‘(a) EXAMINATIONS.—An applicant who is dissatis15 fied with the final decision in an appeal to the Patent Trial 

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

17 Board’s decision to the United States Court of Appeals for 

18 the Federal Circuit. By filing such an appeal, the applicant 

19 waives his or her right to proceed under section 145. 

20 ‘‘(b) REEXAMINATIONS.—A patent owner who is dis21 satisfied with the final decision in an appeal of a reexam22 ination to the Patent Trial and Appeal Board under section 

23 134(b) may appeal the Board’s decision only to the United 

24 States Court of Appeals for the Federal Circuit. 


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

2 party to an inter partes review or a post-grant review who 

3 is dissatisfied with the final written decision of the Patent 

4 Trial and Appeal Board under section 318(a) or 328(a) (as 

5 the case may be) may appeal the Board’s decision only to 

6 the United States Court of Appeals for the Federal Circuit. 

7 ‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri8 vation proceeding who is dissatisfied with the final decision 

9 of the Patent Trial and Appeal Board in the proceeding 

10 may appeal the decision to the United States Court of Ap11 peals for the Federal Circuit, but such appeal shall be dis12 missed if any adverse party to such derivation proceeding, 

13 within 20 days after the appellant has filed notice of appeal 

14 in accordance with section 142, files notice with the Direc15 tor that the party elects to have all further proceedings con16 ducted as provided in section 146. If the appellant does not, 

17 within 30 days after the filing of such notice by the adverse 

18 party, file a civil action under section 146, the Board’s deci19 sion shall govern the further proceedings in the case.’’. 

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

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

22 follows: 

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

24 the United States Patent and Trademark Office 

25 with respect to a patent application, derivation 


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1 proceeding, reexamination, post-grant review, or 

2 inter partes review under title 35, at the in3 stance of a party who exercised that party’s right 

4 to participate in the applicable proceeding before 

5 or appeal to the Board, except that an applicant 

6 or a party to a derivation proceeding may also 

7 have remedy by civil action pursuant to section 

8 145 or 146 of title 35; an appeal under this sub9 paragraph of a decision of the Board with re10 spect to an application or derivation proceeding 

11 shall waive the right of such applicant or party 

12 to proceed under section 145 or 146 of title 35;’’. 

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

14 title 35, United States Code, is amended— 

15 (A) by striking the third sentence and in16 serting the following: ‘‘In an ex parte case, the 

17 Director shall submit to the court in writing the 

18 grounds for the decision of the Patent and 

19 Trademark Office, addressing all of the issues 

20 raised in the appeal. The Director shall have the 

21 right to intervene in an appeal from a decision 

22 entered by the Patent Trial and Appeal Board 

23 in a derivation proceeding under section 135 or 

24 in an inter partes or post-grant review under 

25 chapter 31 or 32.’’; and 


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1 (B) by striking the last sentence. 

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

3 section shall take effect upon the expiration of the 1-year 

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

5 and shall apply to proceedings commenced on or after that 

6 effective date, except that— 

7 (1) the extension of jurisdiction to the United 

8 States Court of Appeals for the Federal Circuit to en9 tertain appeals of decisions of the Patent Trial and 

10 Appeal Board in reexaminations under the amend11 ment made by subsection (c)(2) shall be deemed to 

12 take effect on the date of the enactment of this Act 

13 and shall extend to any decision of the Board of Pat14 ent Appeals and Interferences with respect to a reex15 amination that is entered before, on, or after the date 

16 of the enactment of this Act; 

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

18 title 35, United States Code, as in effect on the day 

19 before the effective date of the amendments made by 

20 this section shall continue to apply to inter partes re21 examinations that are requested under section 311 of 

22 such title before such effective date; 

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

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1 aminations that are requested under section 311 of 

2 title 35, United States Code, before the effective date 

3 of the amendments made by this section; and 

4 (4) the Director’s right under the fourth sentence 

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

6 amended by subsection (c)(3) of this section, to inter7 vene in an appeal from a decision entered by the Pat8 ent Trial and Appeal Board shall be deemed to extend 

9 to inter partes reexaminations that are requested 

10 under section 311 of such title before the effective date 

11 of the amendments made by this section. 

12 SEC. 8. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

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

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

15 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR16 TIES.— 

17 ‘‘(1) IN GENERAL.—Any third party may submit 

18 for consideration and inclusion in the record of a pat19 ent application, any patent, published patent appli20 cation, or other printed publication of potential rel21 evance to the examination of the application, if such 

22 submission is made in writing before the earlier of— 

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

24 section 151 is given or mailed in the application 

25 for patent; or 


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1 ‘‘(B) the later of— 

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

3 the application for patent is first published 

4 under section 122 by the Office, or 

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

6 under section 132 of any claim by the ex7 aminer during the examination of the ap8 plication for patent. 

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

10 under paragraph (1) shall— 

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

12 asserted relevance of each submitted document; 

13 ‘‘(B) be accompanied by such fee as the Di14 rector may prescribe; and 

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

16 making such submission affirming that the sub17 mission was made in compliance with this sec18 tion.’’. 

19 (b) EFFECTIVE DATE.—The amendments made by this 

20 section shall take effect upon the expiration of the 1-year 

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

22 and shall apply to any patent application filed before, on, 

23 or after that effective date. 


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1 SEC. 9. VENUE. 

2 (a) TECHNICAL AMENDMENTS RELATING TO VENUE.— 

3 Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, 

4 United States Code, and section 21(b)(4) of the Trademark 

5 Act of 1946 (15 U.S.C. 1071(b)(4)), are each amended by 

6 striking ‘‘United States District Court for the District of 

7 Columbia’’ each place that term appears and inserting 

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

9 Virginia’’. 

10 (b) EFFECTIVE DATE.—The amendments made by this 

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

12 Act and shall apply to any civil action commenced on or 

13 after that date. 

14 SEC. 10. FEE SETTING AUTHORITY. 

15 (a) FEE SETTING.— 

16 (1) IN GENERAL.—The Director may set or ad17 just by rule any fee established, authorized, or charged 

18 under title 35, United States Code, or the Trademark 

19 Act of 1946 (15 U.S.C. 1051 et seq.), for any services 

20 performed by or materials furnished by, the Office, 

21 subject to paragraph (2). 

22 (2) FEES TO RECOVER COSTS.—Fees may be set 

23 or adjusted under paragraph (1) only to recover the 

24 aggregate estimated costs to the Office for processing, 

25 activities, services, and materials relating to patents 

26 (in the case of patent fees) and trademarks (in the 


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1 case of trademark fees), including administrative 

2 costs of the Office with respect to such patent or 

3 trademark fees (as the case may be). 

4 (b) SMALL AND MICRO ENTITIES.—The fees set or ad5 justed under subsection (a) for filing, searching, examining, 

6 issuing, appealing, and maintaining patent applications 

7 and patents shall be reduced by 50 percent with respect to 

8 the application of such fees to any small entity that quali9 fies for reduced fees under section 41(h)(1) of title 35, 

10 United States Code, and shall be reduced by 75 percent with 

11 respect to the application of such fees to any micro entity 

12 as defined in section 123 of that title (as added by sub13 section (g) of this section). 

14 (c) REDUCTION OF FEES IN CERTAIN FISCAL

15 YEARS.—In each fiscal year, the Director— 

16 (1) shall consult with the Patent Public Advisory 

17 Committee and the Trademark Public Advisory Com18 mittee on the advisability of reducing any fees de19 scribed in subsection (a); and 

20 (2) after the consultation required under para21 graph (1), may reduce such fees. 

22 (d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.— 

23 The Director shall— 

24 (1) not less than 45 days before publishing any 

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1 ister, submit the proposed fee to the Patent Public Ad2 visory Committee or the Trademark Public Advisory 

3 Committee, or both, as appropriate; 

4 (2)(A) provide the relevant advisory committee 

5 described in paragraph (1) a 30-day period following 

6 the submission of any proposed fee, in which to delib7 erate, consider, and comment on such proposal; 

8 (B) require that, during that 30-day period, the 

9 relevant advisory committee hold a public hearing re10 lating to such proposal; and 

11 (C) assist the relevant advisory committee in 

12 carrying out that public hearing, including by offer13 ing the use of the resources of the Office to notify and 

14 promote the hearing to the public and interested 

15 stakeholders; 

16 (3) require the relevant advisory committee to 

17 make available to the public a written report setting 

18 forth in detail the comments, advice, and rec19 ommendations of the committee regarding the pro20 posed fee; and 

21 (4) consider and analyze any comments, advice, 

22 or recommendations received from the relevant advi23 sory committee before setting or adjusting (as the case 

24 may be) the fee. 

25 (e) PUBLICATION IN THE FEDERAL REGISTER.— 


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1 (1) PUBLICATION AND RATIONALE.—The Direc2 tor shall— 

3 (A) publish any proposed fee change under 

4 this section in the Federal Register; 

5 (B) include, in such publication, the specific 

6 rationale and purpose for the proposal, including 

7 the possible expectations or benefits resulting 

8 from the proposed change; and 

9 (C) notify, through the Chair and Ranking 

10 Member of the Committees on the Judiciary of 

11 the Senate and the House of Representatives, the 

12 Congress of the proposed change not later than 

13 the date on which the proposed change is pub14 lished under subparagraph (A). 

15 (2) PUBLIC COMMENT PERIOD.—The Director 

16 shall, in the publication under paragraph (1), provide 

17 the public a period of not less than 45 days in which 

18 to submit comments on the proposed change in fees. 

19 (3) PUBLICATION OF FINAL RULE.—The final 

20 rule setting or adjusting a fee under this section shall 

21 be published in the Federal Register and in the Offi22 cial Gazette of the Patent and Trademark Office. 

23 (4) CONGRESSIONAL COMMENT PERIOD.—A fee 

24 set or adjusted under subsection (a) may not become 

25 effective— 


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1 (A) before the end of the 45-day period be2 ginning on the day after the date on which the 

3 Director publishes the final rule adjusting or set4 ting the fee under paragraph (3); or 

5 (B) if a law is enacted disapproving such 

6 fee. 

7 (5) RULE OF CONSTRUCTION.—Rules prescribed 

8 under this section shall not diminish— 

9 (A) the rights of an applicant for a patent 

10 under title 35, United States Code, or for a mark 

11 under the Trademark Act of 1946; or 

12 (B) any rights under a ratified treaty. 

13 (f) RETENTION OF AUTHORITY.—The Director retains 

14 the authority under subsection (a) to set or adjust fees only 

15 during such period as the Patent and Trademark Office re16 mains an agency within the Department of Commerce. 

17 (g) MICRO ENTITY DEFINED.— 

18 (1) IN GENERAL.—Chapter 11 of title 35, United 

19 States Code, is amended by adding at the end the fol20 lowing new section: 

21 ‘‘§ 123. Micro entity defined 

22 ‘‘(a) IN GENERAL.—For purposes of this title, the term 

23 ‘micro entity’ means an applicant who makes a certifi24 cation that the applicant— 


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1 ‘‘(1) qualifies as a small entity, as defined in 

2 regulations issued by the Director; 

3 ‘‘(2) has not been named as an inventor on more 

4 than 4 previously filed patent applications, other 

5 than applications filed in another country, provi6 sional applications under section 111(b), or inter7 national applications filed under the treaty defined 

8 in section 351(a) for which the basic national fee 

9 under section 41(a) was not paid; 

10 ‘‘(3) did not, in the calendar year preceding the 

11 calendar year in which the examination fee for the 

12 application is being paid, have a gross income, as de13 fined in section 61(a) of the Internal Revenue Code 

14 of 1986, exceeding 3 times the median household in15 come for that preceding calendar year, as reported by 

16 the Bureau of the Census; and 

17 ‘‘(4) has not assigned, granted, or conveyed, and 

18 is not under an obligation by contract or law to as19 sign, grant, or convey, a license or other ownership 

20 interest in the application concerned to an entity 

21 that, in the calendar year preceding the calendar year 

22 in which the examination fee for the application is 

23 being paid, had a gross income, as defined in section 

24 61(a) of the Internal Revenue Code of 1986, exceeding 

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1 ceding calendar year, as reported by the Bureau of 

2 the Census. 

3 ‘‘(b) APPLICATIONS RESULTING FROM PRIOR EMPLOY4 MENT.—An applicant is not considered to be named on a 

5 previously filed application for purposes of subsection 

6 (a)(2) if the applicant has assigned, or is under an obliga7 tion by contract or law to assign, all ownership rights in 

8 the application as the result of the applicant’s previous em9 ployment. 

10 ‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an 

11 applicant’s or entity’s gross income in the preceding cal12 endar year is not in United States dollars, the average cur13 rency exchange rate, as reported by the Internal Revenue 

14 Service, during that calendar year shall be used to deter15 mine whether the applicant’s or entity’s gross income ex16 ceeds the threshold specified in paragraphs (3) or (4) of sub17 section (a). 

18 ‘‘(d) PUBLIC INSTITUTIONS OF HIGHER EDU19 CATION.— 

20 ‘‘(1) IN GENERAL.—For purposes of this section, 

21 a micro entity shall include an applicant who cer22 tifies that— 

23 ‘‘(A) the applicant’s employer, from which 

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1 cation, as defined in section 101 of the Higher 

2 Education Act of 1965 (20 U.S.C. 1001), that is 

3 a public institution; or 

4 ‘‘(B) the applicant has assigned, granted, 

5 conveyed, or is under an obligation by contract 

6 or law to assign, grant, or convey, a license or 

7 other ownership interest in the particular appli8 cation to such public institution. 

9 ‘‘(2) DIRECTOR’S AUTHORITY.—The Director 

10 may, in the Director’s discretion, impose income lim11 its, annual filing limits, or other limits on who may 

12 qualify as a micro entity pursuant to this subsection 

13 if the Director determines that such additional limits 

14 are reasonably necessary to avoid an undue impact 

15 on other patent applicants or owners or are otherwise 

16 reasonably necessary and appropriate. At least 3 

17 months before any limits proposed to be imposed pur18 suant to this paragraph take effect, the Director shall 

19 inform the Committee on the Judiciary of the House 

20 of Representatives and the Committee on the Judici21 ary of the Senate of any such proposed limits.’’. 

22 (2) CONFORMING AMENDMENT.—Chapter 11 of 

23 title 35, United States Code, is amended by adding 

24 at the end the following new item: 

‘‘123. Micro entity defined.’’. 

25 (h) ELECTRONIC FILING INCENTIVE.— 


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1 (1) IN GENERAL.—Notwithstanding any other 

2 provision of this section, a fee of $400 shall be estab3 lished for each application for an original patent, ex4 cept for a design, plant, or provisional application, 

5 that is not filed by electronic means as prescribed by 

6 the Director. The fee established by this subsection 

7 shall be reduced by 50 percent for small entities that 

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

9 35, United States Code. All fees paid under this sub10 section shall be deposited in the Treasury as an offset11 ting receipt that shall not be available for obligation 

12 or expenditure. 

13 (2) EFFECTIVE DATE.—This subsection shall take 

14 effect upon the expiration of the 60-day period begin15 ning on the date of the enactment of this Act. 

16 (i) EFFECTIVE DATE; SUNSET.— 

17 (1) EFFECTIVE DATE.—This section and the 

18 amendments made by this section shall take effect on 

19 the date of the enactment of this Act. 

20 (2) SUNSET.—The authority of the Director to 

21 set or adjust any fee under subsection (a) shall termi22 nate upon the expiration of the 6-year period begin23 ning on the date of the enactment of this Act. 


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1 SEC. 11. FEES FOR PATENT SERVICES. 

2 (a) GENERAL PATENT SERVICES.—Subsections (a) 

3 and (b) of section 41 of title 35, United States Code, are 

4 amended to read as follows: 

5 ‘‘(a) GENERAL FEES.—The Director shall charge the 

6 following fees: 

7 ‘‘(1) FILING AND BASIC NATIONAL FEES.— 

8 ‘‘(A) On filing each application for an 

9 original patent, except for design, plant, or pro10 visional applications, $330. 

11 ‘‘(B) On filing each application for an 

12 original design patent, $220. 

13 ‘‘(C) On filing each application for an 

14 original plant patent, $220. 

15 ‘‘(D) On filing each provisional application 

16 for an original patent, $220. 

17 ‘‘(E) On filing each application for the re18 issue of a patent, $330. 

19 ‘‘(F) The basic national fee for each inter20 national application filed under the treaty de21 fined in section 351(a) entering the national 

22 stage under section 371, $330. 

23 ‘‘(G) In addition, excluding any sequence 

24 listing or computer program listing filed in an 

25 electronic medium as prescribed by the Director, 

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1 ings of which exceed 100 sheets of paper (or 

2 equivalent as prescribed by the Director if filed 

3 in an electronic medium), $270 for each addi4 tional 50 sheets of paper (or equivalent as pre5 scribed by the Director if filed in an electronic 

6 medium) or fraction thereof. 

7 ‘‘(2) EXCESS CLAIMS FEES.— 

8 ‘‘(A) IN GENERAL.—In addition to the fee 

9 specified in paragraph (1)— 

10 ‘‘(i) on filing or on presentation at 

11 any other time, $220 for each claim in 

12 independent form in excess of 3; 

13 ‘‘(ii) on filing or on presentation at 

14 any other time, $52 for each claim (whether 

15 dependent or independent) in excess of 20; 

16 and 

17 ‘‘(iii) for each application containing 

18 a multiple dependent claim, $390. 

19 ‘‘(B) MULTIPLE DEPENDENT CLAIMS.—For 

20 the purpose of computing fees under subpara21 graph (A), a multiple dependent claim referred 

22 to in section 112 or any claim depending there23 from shall be considered as separate dependent 

24 claims in accordance with the number of claims 

25 to which reference is made. 


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1 ‘‘(C) REFUNDS; ERRORS IN PAYMENT.—The 

2 Director may by regulation provide for a refund 

3 of any part of the fee specified in subparagraph 

4 (A) for any claim that is canceled before an ex5 amination on the merits, as prescribed by the 

6 Director, has been made of the application under 

7 section 131. Errors in payment of the additional 

8 fees under this paragraph may be rectified in ac9 cordance with regulations prescribed by the Di10 rector. 

11 ‘‘(3) EXAMINATION FEES.— 

12 ‘‘(A) IN GENERAL.— 

13 ‘‘(i) For examination of each applica14 tion for an original patent, except for de15 sign, plant, provisional, or international 

16 applications, $220. 

17 ‘‘(ii) For examination of each applica18 tion for an original design patent, $140. 

19 ‘‘(iii) For examination of each appli20 cation for an original plant patent, $170. 

21 ‘‘(iv) For examination of the national 

22 stage of each international application, 

23 $220. 

24 ‘‘(v) For examination of each applica25 tion for the reissue of a patent, $650. 


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1 ‘‘(B) APPLICABILITY OF OTHER FEE PROVI2 SIONS.—The provisions of paragraphs (3) and 

3 (4) of section 111(a) relating to the payment of 

4 the fee for filing the application shall apply to 

5 the payment of the fee specified in subparagraph 

6 (A) with respect to an application filed under 

7 section 111(a). The provisions of section 371(d) 

8 relating to the payment of the national fee shall 

9 apply to the payment of the fee specified in sub10 paragraph (A) with respect to an international 

11 application. 

12 ‘‘(4) ISSUE FEES.— 

13 ‘‘(A) For issuing each original patent, ex14 cept for design or plant patents, $1,510. 

15 ‘‘(B) For issuing each original design pat16 ent, $860. 

17 ‘‘(C) For issuing each original plant patent, 

18 $1,190. 

19 ‘‘(D) For issuing each reissue patent, 

20 $1,510. 

21 ‘‘(5) DISCLAIMER FEE.—On filing each dis22 claimer, $140. 

23 ‘‘(6) APPEAL FEES.— 

24 ‘‘(A) On filing an appeal from the examiner 

25 to the Patent Trial and Appeal Board, $540. 


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1 ‘‘(B) In addition, on filing a brief in sup2 port of the appeal, $540, and on requesting an 

3 oral hearing in the appeal before the Patent 

4 Trial and Appeal Board, $1,080. 

5 ‘‘(7) REVIVAL FEES.—On filing each petition for 

6 the revival of an unintentionally abandoned applica7 tion for a patent, for the unintentionally delayed 

8 payment of the fee for issuing each patent, or for an 

9 unintentionally delayed response by the patent owner 

10 in any reexamination proceeding, $1,620, unless the 

11 petition is filed under section 133 or 151, in which 

12 case the fee shall be $540. 

13 ‘‘(8) EXTENSION FEES.—For petitions for 1- 

14 month extensions of time to take actions required by 

15 the Director in an application— 

16 ‘‘(A) on filing a first petition, $130; 

17 ‘‘(B) on filing a second petition, $360; and 

18 ‘‘(C) on filing a third or subsequent peti19 tion, $620. 

20 ‘‘(b) MAINTENANCE FEES.— 

21 ‘‘(1) IN GENERAL.—The Director shall charge the 

22 following fees for maintaining in force all patents 

23 based on applications filed on or after December 12, 

24 1980: 


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1 ‘‘(A) Three years and 6 months after grant, 

2 $980. 

3 ‘‘(B) Seven years and 6 months after grant, 

4 $2,480. 

5 ‘‘(C) Eleven years and 6 months after 

6 grant, $4,110. 

7 ‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay8 ment of the applicable maintenance fee under para9 graph (1) is received in the Office on or before the 

10 date the fee is due or within a grace period of 6 

11 months thereafter, the patent shall expire as of the 

12 end of such grace period. The Director may require 

13 the payment of a surcharge as a condition of accept14 ing within such 6-month grace period the payment of 

15 an applicable maintenance fee. 

16 ‘‘(3) NO MAINTENANCE FEE FOR DESIGN OR

17 PLANT PATENT.—No fee may be established for main18 taining a design or plant patent in force.’’. 

19 (b) DELAYS IN PAYMENT.—Subsection (c) of section 41 

20 of title 35, United States Code, is amended— 

21 (1) by striking ‘‘(c)(1) The Director’’ and insert22 ing: 

23 ‘‘(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.— 

24 ‘‘(1) ACCEPTANCE.—The Director’’; and 

25 (2) by striking ‘‘(2) A patent’’ and inserting: 


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1 ‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A pat2 ent’’. 

3 (c) PATENT SEARCH FEES.—Subsection (d) of section 

4 41 of title 35, United States Code, is amended to read as 

5 follows: 

6 ‘‘(d) PATENT SEARCH AND OTHER FEES.— 

7 ‘‘(1) PATENT SEARCH FEES.— 

8 ‘‘(A) IN GENERAL.—The Director shall 

9 charge the fees specified under subparagraph (B) 

10 for the search of each application for a patent, 

11 except for provisional applications. The Director 

12 shall adjust the fees charged under this para13 graph to ensure that the fees recover an amount 

14 not to exceed the estimated average cost to the 

15 Office of searching applications for patent either 

16 by acquiring a search report from a qualified 

17 search authority, or by causing a search by Of18 fice personnel to be made, of each application for 

19 patent. 

20 ‘‘(B) SPECIFIC FEES.—The fees referred to 

21 in subparagraph (A) are— 

22 ‘‘(i) $540 for each application for an 

23 original patent, except for design, plant, 

24 provisional, or international applications; 


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1 ‘‘(ii) $100 for each application for an 

2 original design patent; 

3 ‘‘(iii) $330 for each application for an 

4 original plant patent; 

5 ‘‘(iv) $540 for the national stage of 

6 each international application; and 

7 ‘‘(v) $540 for each application for the 

8 reissue of a patent. 

9 ‘‘(C) APPLICABILITY OF OTHER PROVI10 SIONS.—The provisions of paragraphs (3) and 

11 (4) of section 111(a) relating to the payment of 

12 the fee for filing the application shall apply to 

13 the payment of the fee specified in this para14 graph with respect to an application filed under 

15 section 111(a). The provisions of section 371(d) 

16 relating to the payment of the national fee shall 

17 apply to the payment of the fee specified in this 

18 paragraph with respect to an international ap19 plication. 

20 ‘‘(D) REFUNDS.—The Director may by reg21 ulation provide for a refund of any part of the 

22 fee specified in this paragraph for any applicant 

23 who files a written declaration of express aban24 donment as prescribed by the Director before an 


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1 examination has been made of the application 

2 under section 131. 

3 ‘‘(E) APPLICATIONS SUBJECT TO SECRECY

4 ORDER.—A search of an application that is the 

5 subject of a secrecy order under section 181 or 

6 otherwise involves classified information may be 

7 conducted only by Office personnel. 

8 ‘‘(F) CONFLICTS OF INTEREST.—A qualified 

9 search authority that is a commercial entity 

10 may not conduct a search of a patent applica11 tion if the entity has any direct or indirect fi12 nancial interest in any patent or in any pend13 ing or imminent application for patent filed or 

14 to be filed in the Office. 

15 ‘‘(2) OTHER FEES.— 

16 ‘‘(A) IN GENERAL.—The Director shall es17 tablish fees for all other processing, services, or 

18 materials relating to patents not specified in this 

19 section to recover the estimated average cost to 

20 the Office of such processing, services, or mate21 rials, except that the Director shall charge the 

22 following fees for the following services: 

23 ‘‘(i) For recording a document affect24 ing title, $40 per property. 


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1 ‘‘(ii) For each photocopy, $.25 per 

2 page. 

3 ‘‘(iii) For each black and white copy of 

4 a patent, $3. 

5 ‘‘(B) COPIES FOR LIBRARIES.—The yearly 

6 fee for providing a library specified in section 12 

7 with uncertified printed copies of the specifica8 tions and drawings for all patents in that year 

9 shall be $50.’’. 

10 (d) FEES FOR SMALL ENTITIES.—Subsection (h) of 

11 section 41 of title 35, United States Code, is amended to 

12 read as follows: 

13 ‘‘(h) FEES FOR SMALL ENTITIES.— 

14 ‘‘(1) REDUCTIONS IN FEES.—Subject to para15 graph (3), fees charged under subsections (a), (b), and 

16 (d)(1) shall be reduced by 50 percent with respect to 

17 their application to any small business concern as de18 fined under section 3 of the Small Business Act, and 

19 to any independent inventor or nonprofit organiza20 tion as defined in regulations issued by the Director. 

21 ‘‘(2) SURCHARGES AND OTHER FEES.—With re22 spect to its application to any entity described in 

23 paragraph (1), any surcharge or fee charged under 

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1 charge or fee required of any other entity under the 

2 same or substantially similar circumstances. 

3 ‘‘(3) REDUCTION FOR ELECTRONIC FILING.—The 

4 fee charged under subsection (a)(1)(A) shall be re5 duced by 75 percent with respect to its application to 

6 any entity to which paragraph (1) applies, if the ap7 plication is filed by electronic means as prescribed by 

8 the Director.’’. 

9 (e) TECHNICAL AMENDMENTS.—Section 41 of title 35, 

10 United States Code, is amended— 

11 (1) in subsection (e), in the first sentence, by 

12 striking ‘‘The Director’’ and inserting ‘‘WAIVER OF

13 FEES; COPIES REGARDING NOTICE.—The Director’’; 

14 (2) in subsection (f), by striking ‘‘The fees’’ and 

15 inserting ‘‘ADJUSTMENT OF FEES.—The fees’’; 

16 (3) by repealing subsection (g); and 

17 (4) in subsection (i)— 

18 (A) by striking ‘‘(i)(1) The Director’’ and 

19 inserting the following: 

20 ‘‘(i) ELECTRONIC PATENT AND TRADEMARK DATA.— 

21 ‘‘(1) MAINTENANCE OF COLLECTIONS.—The Di22 rector’’; 

23 (B) by striking ‘‘(2) The Director’’ and in24 serting the following: 


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1 ‘‘(2) AVAILABILITY OF AUTOMATED SEARCH SYS2 TEMS.—The Director’’; 

3 (C) by striking ‘‘(3) The Director’’ and in4 serting the following: 

5 ‘‘(3) ACCESS FEES.—The Director’’; and 

6 (D) by striking ‘‘(4) The Director’’ and in7 serting the following: 

8 ‘‘(4) ANNUAL REPORT TO CONGRESS.—The Di9 rector’’. 

10 (f) ADJUSTMENT OF TRADEMARK FEES.—Section 

11 802(a) of division B of the Consolidated Appropriations 

12 Act, 2005 (Public Law 108–447) is amended— 

13 (1) in the first sentence, by striking ‘‘During fis14 cal years 2005, 2006, and 2007,’’, and inserting 

15 ‘‘Until such time as the Director sets or adjusts the 

16 fees otherwise,’’; and 

17 (2) in the second sentence, by striking ‘‘During 

18 fiscal years 2005, 2006, and 2007, the’’ and inserting 

19 ‘‘The’’. 

20 (g) EFFECTIVE DATE, APPLICABILITY, AND TRANSI21 TION PROVISIONS.—Section 803(a) of division B of the 

22 Consolidated Appropriations Act, 2005 (Public Law 108– 

23 447) is amended by striking ‘‘and shall apply only with 

24 respect to the remaining portion of fiscal year 2005 and 

25 fiscal year 2006’’. 


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1 (h) REDUCTION IN FEES FOR SMALL ENTITY PAT2 ENTS.—The Director shall reduce fees for providing 

3 prioritized examination of utility and plant patent appli4 cations by 50 percent for small entities that qualify for re5 duced fees under section 41(h)(1) of title 35, United States 

6 Code, so long as the fees of the prioritized examination pro7 gram are set to recover the estimated cost of the program. 

8 (i) EFFECTIVE DATE.—Except as provided in sub9 section (h), this section and the amendments made by this 

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

11 Act. 

12 SEC. 12. SUPPLEMENTAL EXAMINATION. 

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

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

15 ‘‘§ 257. Supplemental examinations to consider, recon16 sider, or correct information 

17 ‘‘(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.— 

18 A patent owner may request supplemental examination of 

19 a patent in the Office to consider, reconsider, or correct in20 formation believed to be relevant to the patent, in accord21 ance with such requirements as the Director may establish. 

22 Within 3 months after the date a request for supplemental 

23 examination meeting the requirements of this section is re24 ceived, the Director shall conduct the supplemental exam25 ination and shall conclude such examination by issuing a 


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1 certificate indicating whether the information presented in 

2 the request raises a substantial new question of patent3 ability. 

4 ‘‘(b) REEXAMINATION ORDERED.—If the certificate 

5 issued under subsection (a) indicates that a substantial new 

6 question of patentability is raised by 1 or more items of 

7 information in the request, the Director shall order reexam8 ination of the patent. The reexamination shall be conducted 

9 according to procedures established by chapter 30, except 

10 that the patent owner shall not have the right to file a state11 ment pursuant to section 304. During the reexamination, 

12 the Director shall address each substantial new question of 

13 patentability identified during the supplemental examina14 tion, notwithstanding the limitations in chapter 30 relating 

15 to patents and printed publication or any other provision 

16 of such chapter. 

17 ‘‘(c) EFFECT.— 

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

19 unenforceable on the basis of conduct relating to in20 formation that had not been considered, was inad21 equately considered, or was incorrect in a prior exam22 ination of the patent if the information was consid23 ered, reconsidered, or corrected during a supplemental 

24 examination of the patent. The making of a request 

25 under subsection (a), or the absence thereof, shall not 


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1 be relevant to enforceability of the patent under sec2 tion 282. 

3 ‘‘(2) EXCEPTIONS.— 

4 ‘‘(A) PRIOR ALLEGATIONS.—Paragraph (1) 

5 shall not apply to an allegation pled with par6 ticularity in a civil action, or set forth with par7 ticularity in a notice received by the patent 

8 owner under section 505(j)(2)(B)(iv)(II) of the 

9 Federal Food, Drug, and Cosmetic Act (21 

10 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a 

11 supplemental examination request under sub12 section (a) to consider, reconsider, or correct in13 formation forming the basis for the allegation. 

14 ‘‘(B) PATENT ENFORCEMENT ACTIONS.—In 

15 an action brought under section 337(a) of the 

16 Tariff Act of 1930 (19 U.S.C. 1337(a)), or sec17 tion 281 of this title, paragraph (1) shall not 

18 apply to any defense raised in the action that is 

19 based upon information that was considered, re20 considered, or corrected pursuant to a supple21 mental examination request under subsection (a), 

22 unless the supplemental examination, and any 

23 reexamination ordered pursuant to the request, 

24 are concluded before the date on which the action 

25 is brought. 


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1 ‘‘(C) FRAUD.—No supplemental examina2 tion may be commenced by the Director on, and 

3 any pending supplemental examination shall be 

4 immediately terminated regarding, an applica5 tion or patent in connection with which fraud on 

6 the Office was practiced or attempted. If the Di7 rector determines that such a fraud on the Office 

8 was practiced or attempted, the Director shall 

9 also refer the matter to the Attorney General for 

10 such action as the Attorney General may deem 

11 appropriate. 

12 ‘‘(d) FEES AND REGULATIONS.— 

13 ‘‘(1) FEES.—The Director shall, by regulation, 

14 establish fees for the submission of a request for sup15 plemental examination of a patent, and to consider 

16 each item of information submitted in the request. If 

17 reexamination is ordered under subsection (b), fees es18 tablished and applicable to ex parte reexamination 

19 proceedings under chapter 30 shall be paid, in addi20 tion to fees applicable to supplemental examination. 

21 ‘‘(2) REGULATIONS.—The Director shall issue 

22 regulations governing the form, content, and other re23 quirements of requests for supplemental examination, 

24 and establishing procedures for reviewing information 

25 submitted in such requests. 


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1 ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec2 tion shall be construed— 

3 ‘‘(1) to preclude the imposition of sanctions 

4 based upon criminal or antitrust laws (including sec5 tion 1001(a) of title 18, the first section of the Clay6 ton Act, and section 5 of the Federal Trade Commis7 sion Act to the extent that section relates to unfair 

8 methods of competition); 

9 ‘‘(2) to limit the authority of the Director to in10 vestigate issues of possible misconduct and impose 

11 sanctions for misconduct in connection with matters 

12 or proceedings before the Office; or 

13 ‘‘(3) to limit the authority of the Director to 

14 issue regulations under chapter 3 relating to sanc15 tions for misconduct by representatives practicing be16 fore the Office.’’. 

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

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

19 by adding at the end the following new item: 

‘‘257. Supplemental examinations to consider, reconsider, or correct information.’’. 

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

21 section shall take effect upon the expiration of the 1-year 

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

23 and shall apply to any patent issued before, on, or after 

24 that effective date. 


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1 SEC. 13. FUNDING AGREEMENTS. 

2 (a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 35, 

3 United States Code, is amended— 

4 (1) by striking ‘‘75 percent’’ and inserting ‘‘15 

5 percent’’; 

6 (2) by striking ‘‘25 percent’’ and inserting ‘‘85 

7 percent’’; and 

8 (3) by striking ‘‘as described above in this clause 

9 (D);’’ and inserting ‘‘described above in this clause;’’. 

10 (b) EFFECTIVE DATE.—The amendments made by this 

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

12 Act and shall apply to any patent issued before, on, or after 

13 that date. 

14 SEC. 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR ART. 

15 (a) IN GENERAL.—For purposes of evaluating an in16 vention under section 102 or 103 of title 35, United States 

17 Code, any strategy for reducing, avoiding, or deferring tax 

18 liability, whether known or unknown at the time of the in19 vention or application for patent, shall be deemed insuffi20 cient to differentiate a claimed invention from the prior art. 

21 (b) DEFINITION.—For purposes of this section, the 

22 term ‘‘tax liability’’ refers to any liability for a tax under 

23 any Federal, State, or local law, or the law of any foreign 

24 jurisdiction, including any statute, rule, regulation, or or25 dinance that levies, imposes, or assesses such tax liability. 


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1 (c) EXCLUSIONS.—This section does not apply to that 

2 part of an invention that— 

3 (1) is a method, apparatus, technology, computer 

4 program product, or system, that is used solely for 

5 preparing a tax or information return or other tax 

6 filing, including one that records, transmits, trans7 fers, or organizes data related to such filing; or 

8 (2) is a method, apparatus, technology, computer 

9 program product, or system used solely for financial 

10 management, to the extent that it is severable from 

11 any tax strategy or does not limit the use of any tax 

12 strategy by any taxpayer or tax advisor. 

13 (d) RULE OF CONSTRUCTION.—Nothing in this section 

14 shall be construed to imply that other business methods are 

15 patentable or that other business method patents are valid. 

16 (e) EFFECTIVE DATE; APPLICABILITY.—This section 

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

18 and shall apply to any patent application that is pending 

19 on, or filed on or after, that date, and to any patent that 

20 is issued on or after that date. 

21 SEC. 15. BEST MODE REQUIREMENT. 

22 (a) IN GENERAL.—Section 282 of title 35, United 

23 States Code, is amended in the second undesignated para24 graph by striking paragraph (3) and inserting the fol25 lowing: 


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1 ‘‘(3) Invalidity of the patent or any claim in 

2 suit for failure to comply with— 

3 ‘‘(A) any requirement of section 112, except 

4 that the failure to disclose the best mode shall not 

5 be a basis on which any claim of a patent may 

6 be canceled or held invalid or otherwise unen7 forceable; or 

8 ‘‘(B) any requirement of section 251.’’. 

9 (b) CONFORMING AMENDMENT.—Sections 119(e)(1) 

10 and 120 of title 35, United States Code, are each amended 

11 by striking ‘‘the first paragraph of section 112 of this title’’ 

12 and inserting ‘‘section 112(a) (other than the requirement 

13 to disclose the best mode)’’. 

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

15 section shall take effect upon the date of the enactment of 

16 this Act and shall apply to proceedings commenced on or 

17 after that date. 

18 SEC. 16. MARKING. 

19 (a) VIRTUAL MARKING.— 

20 (1) IN GENERAL.—Section 287(a) of title 35, 

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

22 when,’’ and inserting ‘‘or by fixing thereon the word 

23 ‘patent’ or the abbreviation ‘pat.’ together with an ad24 dress of a posting on the Internet, accessible to the 

25 public without charge for accessing the address, that 


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1 associates the patented article with the number of the 

2 patent, or when,’’. 

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

4 this subsection shall apply to any case that is pend5 ing on, or commenced on or after, the date of the en6 actment of this Act. 

7 (3) REPORT.—Not later than the date that is 3 

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

9 Director shall submit a report to Congress that pro10 vides— 

11 (A) an analysis of the effectiveness of ‘‘vir12 tual marking’’, as provided in the amendment 

13 made by paragraph (1) of this subsection, as an 

14 alternative to the physical marking of articles; 

15 (B) an analysis of whether such virtual 

16 marking has limited or improved the ability of 

17 the general public to access information about 

18 patents; 

19 (C) an analysis of the legal issues, if any, 

20 that arise from such virtual marking; and 

21 (D) an analysis of the deficiencies, if any, 

22 of such virtual marking. 

23 (b) FALSE MARKING.— 

24 (1) CIVIL PENALTY.—Section 292(a) of title 35, 

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


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1 the following: ‘‘Only the United States may sue for 

2 the penalty authorized by this subsection.’’. 

3 (2) CIVIL ACTION FOR DAMAGES.—Subsection (b) 

4 of section 292 of title 35, United States Code, is 

5 amended to read as follows: 

6 ‘‘(b) A person who has suffered a competitive injury 

7 as a result of a violation of this section may file a civil 

8 action in a district court of the United States for recovery 

9 of damages adequate to compensate for the injury.’’. 

10 (3) EXPIRED PATENTS.—Section 292 of title 35, 

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

12 the following: 

13 ‘‘(c) Whoever engages in an activity under subsection 

14 (a) for which liability would otherwise be imposed shall not 

15 be liable for such activity— 

16 ‘‘(1) that is engaged in during the 3-year period 

17 beginning on the date on which the patent at issue ex18 pires; or 

19 ‘‘(2) that is engaged in after the end of that 3- 

20 year period if the word ‘expired’ is placed before the 

21 word ‘patent’, ‘patented’, the abbreviation ‘pat’, or the 

22 patent number, either on the article or through a 

23 posting on the Internet, as provided in section 

24 287(a).’’. 


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1 (4) EFFECTIVE DATE.—The amendments made 

2 by this subsection shall apply to any case that is 

3 pending on, or commenced on or after, the date of the 

4 enactment of this Act. 

5 SEC. 17. ADVICE OF COUNSEL. 

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

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

8 ‘‘§ 298. Advice of counsel 

9 ‘‘The failure of an infringer to obtain the advice of 

10 counsel with respect to any allegedly infringed patent, or 

11 the failure of the infringer to present such advice to the 

12 court or jury, may not be used to prove that the accused 

13 infringer willfully infringed the patent or that the infringer 

14 intended to induce infringement of the patent.’’. 

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

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

17 by adding at the end the following: 

‘‘298. Advice of counsel.’’. 

18 SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSINESS 

19 METHOD PATENTS. 

20 (a) TRANSITIONAL PROGRAM.— 

21 (1) ESTABLISHMENT.—Not later than the date 

22 that is 1 year after the date of the enactment of this 

23 Act, the Director shall issue regulations establishing 

24 and implementing a transitional post-grant review 

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1 ness method patents. The transitional proceeding im2 plemented pursuant to this subsection shall be re3 garded as, and shall employ the standards and proce4 dures of, a post-grant review under chapter 32 of title 

5 35, United States Code, subject to the following: 

6 (A) Section 321(c) of title 35, United States 

7 Code, and subsections (b), (e)(2), and (f) of sec8 tion 325 of such title shall not apply to a transi9 tional proceeding. 

10 (B) A person may not file a petition for a 

11 transitional proceeding with respect to a covered 

12 business method patent unless the person or the 

13 person’s real party in interest has been sued for 

14 infringement of the patent or has been charged 

15 with infringement under that patent. 

16 (C) A petitioner in a transitional pro17 ceeding who challenges the validity of 1 or more 

18 claims in a covered business method patent on a 

19 ground raised under section 102 or 103 of title 

20 35, United States Code, as in effect on the day 

21 before the effective date set forth in section 

22 3(n)(1), may support such ground only on the 

23 basis of— 

24 (i) prior art that is described by sec25 tion 102(a) of such title of such title (as in 


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1 effect on the day before such effective date); 

2 or 

3 (ii) prior art that— 

4 (I) discloses the invention more 

5 than 1 year before the date of the ap6 plication for patent in the United 

7 States; and 

8 (II) would be described by section 

9 102(a) of such title (as in effect on the 

10 day before the effective date set forth in 

11 section 3(n)(1)) if the disclosure had 

12 been made by another before the inven13 tion thereof by the applicant for pat14 ent. 

15 (D) The petitioner in a transitional pro16 ceeding, or the petitioner’s real party in interest, 

17 may not assert, either in a civil action arising 

18 in whole or in part under section 1338 of title 

19 28, United States Code, or in a proceeding before 

20 the International Trade Commission under sec21 tion 337 of the Tariff Act of 1930 (19 U.S.C. 

22 1337), that a claim in a patent is invalid on 

23 any ground that the petitioner raised during a 

24 transitional proceeding that resulted in a final 

25 written decision. 


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1 (E) The Director may institute a transi2 tional proceeding only for a patent that is a cov3 ered business method patent. 

4 (2) EFFECTIVE DATE.—The regulations issued 

5 under paragraph (1) shall take effect upon the expira6 tion of the 1-year period beginning on the date of the 

7 enactment of this Act and shall apply to any covered 

8 business method patent issued before, on, or after that 

9 effective date, except that the regulations shall not 

10 apply to a patent described in section 6(f)(2)(A) of 

11 this Act during the period in which a petition for 

12 post-grant review of that patent would satisfy the re13 quirements of section 321(c) of title 35, United States 

14 Code. 

15 (3) SUNSET.— 

16 (A) IN GENERAL.—This subsection, and the 

17 regulations issued under this subsection, are re18 pealed effective upon the expiration of the 10- 

19 year period beginning on the date that the regu20 lations issued under to paragraph (1) take effect. 

21 (B) APPLICABILITY.—Notwithstanding sub22 paragraph (A), this subsection and the regula23 tions issued under this subsection shall continue 

24 to apply, after the date of the repeal under sub25 paragraph (A), to any petition for a transitional 


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1 proceeding that is filed before the date of such re2 peal. 

3 (b) REQUEST FOR STAY.— 

4 (1) IN GENERAL.—If a party seeks a stay of a 

5 civil action alleging infringement of a patent under 

6 section 281 of title 35, United States Code, relating 

7 to a transitional proceeding for that patent, the court 

8 shall decide whether to enter a stay based on— 

9 (A) whether a stay, or the denial thereof, 

10 will simplify the issues in question and stream11 line the trial; 

12 (B) whether discovery is complete and 

13 whether a trial date has been set; 

14 (C) whether a stay, or the denial thereof, 

15 would unduly prejudice the nonmoving party or 

16 present a clear tactical advantage for the moving 

17 party; and 

18 (D) whether a stay, or the denial thereof, 

19 will reduce the burden of litigation on the par20 ties and on the court. 

21 (2) REVIEW.—A party may take an immediate 

22 interlocutory appeal from a district court’s decision 

23 under paragraph (1). The United States Court of Ap24 peals for the Federal Circuit shall review the district 


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1 court’s decision to ensure consistent application of es2 tablished precedent, and such review may be de novo. 

3 (c) ATM EXEMPTION FOR VENUE PURPOSES.—In an 

4 action for infringement under section 281 of title 35, United 

5 States Code, of a covered business method patent, an auto6 mated teller machine shall not be deemed to be a regular 

7 and established place of business for purposes of section 

8 1400(b) of title 28, United States Code. 

9 (d) DEFINITION.— 

10 (1) IN GENERAL.—For purposes of this section, 

11 the term ‘‘covered business method patent’’ means a 

12 patent that claims a method or corresponding appa13 ratus for performing data processing or other oper14 ations used in the practice, administration, or man15 agement of a financial product or service, except that 

16 the term does not include patents for technological in17 ventions. 

18 (2) REGULATIONS.—To assist in implementing 

19 the transitional proceeding authorized by this sub20 section, the Director shall issue regulations for deter21 mining whether a patent is for a technological inven22 tion. 

23 (e) RULE OF CONSTRUCTION.—Nothing in this section 

24 shall be construed as amending or interpreting categories 


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1 of patent-eligible subject matter set forth under section 101 

2 of title 35, United States Code. 

3 SEC. 19. JURISDICTION AND PROCEDURAL MATTERS. 

4 (a) STATE COURT JURISDICTION.—Section 1338(a) of 

5 title 28, United States Code, is amended by striking the 

6 second sentence and inserting the following: ‘‘No State court 

7 shall have jurisdiction over any claim for relief arising 

8 under any Act of Congress relating to patents, plant variety 

9 protection, or copyrights. For purposes of this subsection, 

10 the term ‘State’ includes any State of the United States, 

11 the District of Columbia, the Commonwealth of Puerto Rico, 

12 the United States Virgin Islands, American Samoa, Guam, 

13 and the Northern Mariana Islands.’’. 

14 (b) COURT OF APPEALS FOR THE FEDERAL CIR15 CUIT.—Section 1295(a)(1) of title 28, United States Code, 

16 is amended to read as follows: 

17 ‘‘(1) of an appeal from a final decision of a dis18 trict court of the United States, the District Court of 

19 Guam, the District Court of the Virgin Islands, or the 

20 District Court of the Northern Mariana Islands, in 

21 any civil action arising under, or in any civil action 

22 in which a party has asserted a compulsory counter23 claim arising under, any Act of Congress relating to 

24 patents or plant variety protection;’’. 

25 (c) REMOVAL.— 


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1 (1) IN GENERAL.—Chapter 89 of title 28, United 

2 States Code, is amended by adding at the end the fol3 lowing new section: 

4 ‘‘§ 1454. Patent, plant variety protection, and copy5 right cases 

6 ‘‘(a) IN GENERAL.—A civil action in which any party 

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

8 relating to patents, plant variety protection, or copyrights 

9 may be removed to the district court of the United States 

10 for the district and division embracing the place where the 

11 action is pending. 

12 ‘‘(b) SPECIAL RULES.—The removal of an action 

13 under this section shall be made in accordance with section 

14 1446, except that if the removal is based solely on this sec15 tion— 

16 ‘‘(1) the action may be removed by any party; 

17 and 

18 ‘‘(2) the time limitations contained in section 

19 1446(b) may be extended at any time for cause 

20 shown. 

21 ‘‘(c) CLARIFICATION OF JURISDICTION IN CERTAIN

22 CASES.—The court to which a civil action is removed under 

23 this section is not precluded from hearing and determining 

24 any claim in the civil action because the State court from 


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1 which the civil action is removed did not have jurisdiction 

2 over that claim. 

3 ‘‘(d) REMAND.—If a civil action is removed solely 

4 under this section, the district court— 

5 ‘‘(1) shall remand all claims that are neither a 

6 basis for removal under subsection (a) nor within the 

7 original or supplemental jurisdiction of the district 

8 court under any Act of Congress; and 

9 ‘‘(2) may, under the circumstances specified in 

10 section 1367(c), remand any claims within the sup11 plemental jurisdiction of the district court under sec12 tion 1367.’’. 

13 (2) CONFORMING AMENDMENT.—The table of sec14 tions for chapter 89 of title 28, United States Code, 

15 is amended by adding at the end the following new 

16 item: 

‘‘1454. Patent, plant variety protection, and copyright cases.’’. 

17 (d) TRANSFER BY COURT OF APPEALS FOR THE FED18 ERAL CIRCUIT.— 

19 (1) IN GENERAL.—Chapter 99 of title 28, United 

20 States Code, is amended by adding at the end the fol21 lowing new section: 

22 ‘‘§ 1632. Transfer by the Court of Appeals for the Fed23 eral Circuit 

24 ‘‘When a case is appealed to the Court of Appeals for 

25 the Federal Circuit under section 1295(a)(1), and no claim 


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1 for relief arising under any Act of Congress relating to pat2 ents or plant variety protection is the subject of the appeal 

3 by any party, the Court of Appeals for the Federal Circuit 

4 shall transfer the appeal to the court of appeals for the re5 gional circuit embracing the district from which the appeal 

6 has been taken.’’. 

7 (2) CONFORMING AMENDMENT.—The table of sec8 tions for chapter 99 of title 28, United States Code, 

9 is amended by adding at the end the following new 

10 item: 

‘‘1632. Transfer by the Court of Appeals for the Federal Circuit.’’. 

11 (e) PROCEDURAL MATTERS IN PATENT CASES.— 

12 (1) JOINDER OF PARTIES AND STAY OF AC13 TIONS.—Chapter 29 of title 35, United States Code, 

14 as amended by this Act, is further amended by add15 ing at the end the following new section: 

16 ‘‘§ 299. Joinder of parties 

17 ‘‘(a) JOINDER OF ACCUSED INFRINGERS.—In any 

18 civil action arising under any Act of Congress relating to 

19 patents, other than an action or trial in which an act of 

20 infringement under section 271(e)(2) has been pled, parties 

21 that are accused infringers may be joined in one action as 

22 defendants or counterclaim defendants only if— 

23 ‘‘(1) any right to relief is asserted against the 

24 parties jointly, severally, or in the alternative with 

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1 currence, or series of transactions or occurrences re2 lating to the making, using, importing into the 

3 United States, offering for sale, or selling of the same 

4 accused product or process; and 

5 ‘‘(2) questions of fact common to all defendants 

6 or counterclaim defendants will arise in the action. 

7 ‘‘(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—For 

8 purposes of this subsection, accused infringers may not be 

9 joined in one action or trial as defendants or counterclaim 

10 defendants based solely on allegations that they each have 

11 infringed the patent or patents in suit.’’. 

12 (2) CONFORMING AMENDMENT.—The table of sec13 tions for chapter 29 of title 35, United States Code, 

14 as amended by this Act, is further amended by add15 ing at the end the following new item: 

‘‘299. Joinder of parties.’’. 

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

17 section shall apply to any civil action commenced on or 

18 after the date of the enactment of this Act. 

19 SEC. 20. TECHNICAL AMENDMENTS. 

20 (a) JOINT INVENTIONS.—Section 116 of title 35, 

21 United States Code, is amended— 

22 (1) in the first undesignated paragraph, by 

23 striking ‘‘When’’ and inserting ‘‘(a) JOINT IN24 VENTIONS.—When’’; 


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1 (2) in the second undesignated paragraph, 

2 by striking ‘‘If a joint inventor’’ and inserting 

3 ‘‘(b) OMITTED INVENTOR.—If a joint inventor’’; 

4 and 

5 (3) in the third undesignated paragraph— 

6 (A) by striking ‘‘Whenever’’ and insert7 ing ‘‘(c) CORRECTION OF ERRORS IN APPLI8 CATION.—Whenever’’; and 

9 (B) by striking ‘‘and such error arose 

10 without any deceptive intention on his 

11 part,’’. 

12 (b) FILING OF APPLICATION IN FOREIGN COUNTRY.— 

13 Section 184 of title 35, United States Code, is amended— 

14 (1) in the first undesignated paragraph— 

15 (A) by striking ‘‘Except when’’ and insert16 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Except 

17 when’’; and 

18 (B) by striking ‘‘and without deceptive in19 tent’’; 

20 (2) in the second undesignated paragraph, by 

21 striking ‘‘The term’’ and inserting ‘‘(b) APPLICA22 TION.—The term’’; and 

23 (3) in the third undesignated paragraph, by 

24 striking ‘‘The scope’’ and inserting ‘‘(c) SUBSEQUENT


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1 MODIFICATIONS, AMENDMENTS, AND SUPPLE2 MENTS.—The scope’’. 

3 (c) FILING WITHOUT A LICENSE.—Section 185 of title 

4 35, United States Code, is amended by striking ‘‘and with5 out deceptive intent’’. 

6 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

7 of title 35, United States Code, is amended— 

8 (1) in the first undesignated paragraph— 

9 (A) by striking ‘‘Whenever’’ and inserting 

10 ‘‘(a) IN GENERAL.—Whenever’’; and 

11 (B) by striking ‘‘without any deceptive in12 tention’’; 

13 (2) in the second undesignated paragraph, by 

14 striking ‘‘The Director’’ and inserting ‘‘(b) MULTIPLE

15 REISSUED PATENTS.—The Director’’; 

16 (3) in the third undesignated paragraph, by 

17 striking ‘‘The provisions’’ and inserting ‘‘(c) APPLI18 CABILITY OF THIS TITLE.—The provisions’’; and 

19 (4) in the last undesignated paragraph, by strik20 ing ‘‘No reissued patent’’ and inserting ‘‘(d) REISSUE

21 PATENT ENLARGING SCOPE OF CLAIMS.—No reissued 

22 patent’’. 

23 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

24 United States Code, is amended— 


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1 (1) in the first undesignated paragraph, by 

2 striking ‘‘Whenever, without any deceptive intention,’’ 

3 and inserting ‘‘(a) IN GENERAL.—Whenever’’; and 

4 (2) in the second undesignated paragraph, by 

5 striking ‘‘In like manner’’ and inserting ‘‘(b) ADDI6 TIONAL DISCLAIMER OR DEDICATION.—In the man7 ner set forth in subsection (a),’’. 

8 (f) CORRECTION OF NAMED INVENTOR.—Section 256 

9 of title 35, United States Code, is amended— 

10 (1) in the first undesignated paragraph— 

11 (A) by striking ‘‘Whenever’’ and inserting 

12 ‘‘(a) CORRECTION.—Whenever’’; and 

13 (B) by striking ‘‘and such error arose with14 out any deceptive intention on his part’’; and 

15 (2) in the second undesignated paragraph, by 

16 striking ‘‘The error’’ and inserting ‘‘(b) PATENT

17 VALID IF ERROR CORRECTED.—The error’’. 

18 (g) PRESUMPTION OF VALIDITY.—Section 282 of title 

19 35, United States Code, is amended— 

20 (1) in the first undesignated paragraph— 

21 (A) by striking ‘‘A patent’’ and inserting 

22 ‘‘(a) IN GENERAL.—A patent’’; and 

23 (B) by striking the third sentence; 

24 (2) in the second undesignated paragraph— 


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1 (A) by striking ‘‘The following’’ and insert2 ing ‘‘(b) DEFENSES.—The following’’; 

3 (B) in paragraph (1), by striking 

4 ‘‘uneforceability,’’ and inserting ‘‘unenforce5 ability.’’; and 

6 (C) in paragraph (2), by striking ‘‘patent7 ability,’’ and inserting ‘‘patentability.’’ ; and 

8 (3) in the third undesignated paragraph— 

9 (A) by striking ‘‘In actions involving the 

10 validity or infringement of a patent’’ and insert11 ing ‘‘(c) NOTICE OF ACTIONS; ACTIONS DURING

12 EXTENSION OF PATENT TERM.—In an action 

13 involving the validity or infringement of patent, 

14 the party asserting infringement shall identify, 

15 in the pleadings or otherwise in writing to the 

16 adverse party, all of its real parties in interest, 

17 and’’; and 

18 (B) by striking ‘‘Claims Court’’ and insert19 ing ‘‘Court of Federal Claims’’. 

20 (h) ACTION FOR INFRINGEMENT.—Section 288 of title 

21 35, United States Code, is amended by striking ‘‘, without 

22 deceptive intention,’’. 

23 (i) REVISER’S NOTES.— 


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1 (1) Section 3(e)(2) of title 35, United States 

2 Code, is amended by striking ‘‘this Act,’’ and insert3 ing ‘‘that Act,’’. 

4 (2) Section 202 of title 35, United States Code, 

5 is amended— 

6 (A) in subsection (b)(3), by striking ‘‘the 

7 section 203(b)’’ and inserting ‘‘section 203(b)’’; 

8 and 

9 (B) in subsection (c)(7)(D), by striking ‘‘ex10 cept where it proves’’ and all that follows 

11 through ‘‘small business firms; and’’ and insert12 ing: ‘‘except where it is determined to be infeasi13 ble following a reasonable inquiry, a preference 

14 in the licensing of subject inventions shall be 

15 given to small business firms; and’’. 

16 (3) Section 209(d)(1) of title 35, United States 

17 Code, is amended by striking ‘‘nontransferrable’’ and 

18 inserting ‘‘nontransferable’’. 

19 (4) Section 287(c)(2)(G) of title 35, United 

20 States Code, is amended by striking ‘‘any state’’ and 

21 inserting ‘‘any State’’. 

22 (5) Section 371(b) of title 35, United States 

23 Code, is amended by striking ‘‘of the treaty’’ and in24 serting ‘‘of the treaty.’’. 

25 (j) UNNECESSARY REFERENCES.— 


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1 (1) IN GENERAL.—Title 35, United States Code, 

2 is amended by striking ‘‘of this title’’ each place that 

3 term appears. 

4 (2) EXCEPTION.—The amendment made by 

5 paragraph (1) shall not apply to the use of such term 

6 in the following sections of title 35, United States 

7 Code: 

8 (A) Section 1(c). 

9 (B) Section 101. 

10 (C) Subsections (a) and (b) of section 105. 

11 (D) The first instance of the use of such 

12 term in section 111(b)(8). 

13 (E) Section 161. 

14 (F) Section 164. 

15 (G) Section 171. 

16 (H) Section 251(c), as so designated by this 

17 section. 

18 (I) Section 261. 

19 (J) Subsections (g) and (h) of section 271. 

20 (K) Section 287(b)(1). 

21 (L) Section 289. 

22 (M) The first instance of the use of such 

23 term in section 375(a). 

24 (k) EFFECTIVE DATE.—The amendments made by this 

25 section shall take effect upon the expiration of the 1-year 


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

2 and shall apply to proceedings commenced on or after that 

3 effective date. 

4 SEC. 21. TRAVEL EXPENSES AND PAYMENT OF ADMINISTRA5 TIVE JUDGES. 

6 (a) AUTHORITY TO COVER CERTAIN TRAVEL RELATED

7 EXPENSES.—Section 2(b)(11) of title 35, United States 

8 Code, is amended by inserting ‘‘, and the Office is author9 ized to expend funds to cover the subsistence expenses and 

10 travel-related expenses, including per diem, lodging costs, 

11 and transportation costs, of persons attending such pro12 grams who are not Federal employees’’ after ‘‘world’’. 

13 (b) PAYMENT OF ADMINISTRATIVE JUDGES.—Section 

14 3(b) of title 35, United States Code, is amended by adding 

15 at the end the following: 

16 ‘‘(6) ADMINISTRATIVE PATENT JUDGES AND AD17 MINISTRATIVE TRADEMARK JUDGES.—The Director 

18 may fix the rate of basic pay for the administrative 

19 patent judges appointed pursuant to section 6 and the 

20 administrative trademark judges appointed pursuant 

21 to section 17 of the Trademark Act of 1946 (15 U.S.C. 

22 1067) at not greater than the rate of basic pay pay23 able for level III of the Executive Schedule under sec24 tion 5314 of title 5. The payment of a rate of basic 

25 pay under this paragraph shall not be subject to the 


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1 pay limitation under section 5306(e) or 5373 of title 

2 5.’’. 

3 SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING. 

4 (a) DEFINITION.—In this section, the term ‘‘Fund’’ 

5 means the United States Patent and Trademark Office Pub6 lic Enterprise Fund established under subsection (c). 

7 (b) FUNDING.— 

8 (1) IN GENERAL.—Section 42 of title 35, United 

9 States Code, is amended— 

10 (A) in subsection (b), by striking ‘‘Patent 

11 and Trademark Office Appropriation Account’’ 

12 and inserting ‘‘United States Patent and Trade13 mark Office Public Enterprise Fund’’; and 

14 (B) in subsection (c), in the first sentence— 

15 (i) by striking ‘‘To the extent’’ and all 

16 that follows through ‘‘fees’’ and inserting 

17 ‘‘Fees’’; and 

18 (ii) by striking ‘‘shall be collected by 

19 and shall be available to the Director’’ and 

20 inserting ‘‘shall be collected by the Director 

21 and shall be available until expended’’. 

22 (2) EFFECTIVE DATE.—The amendments made 

23 by paragraph (1) shall take effect on the later of— 

24 (A) October 1, 2011; or 


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1 (B) the first day of the first fiscal year that 

2 begins after the date of the enactment of this Act. 

3 (c) USPTO REVOLVING FUND.— 

4 (1) ESTABLISHMENT.—There is established in 

5 the Treasury of the United States a revolving fund to 

6 be known as the ‘‘United States Patent and Trade7 mark Office Public Enterprise Fund’’. Any amounts 

8 in the Fund shall be available for use by the Director 

9 without fiscal year limitation. 

10 (2) DERIVATION OF RESOURCES.—There shall be 

11 deposited into the Fund and recorded as offsetting re12 ceipts, on and after the effective date set forth in sub13 section (b)(2)— 

14 (A) any fees collected under sections 41, 42, 

15 and 376 of title 35, United States Code, except 

16 that— 

17 (i) notwithstanding any other provi18 sion of law, if such fees are collected by, and 

19 payable to, the Director, the Director shall 

20 transfer such amounts to the Fund; and 

21 (ii) no funds collected pursuant to sec22 tion 10(h) of this Act or section 1(a)(2) of 

23 Public Law 111–45 shall be deposited in the 

24 Fund; and 


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1 (B) any fees collected under section 31 of 

2 the Trademark Act of 1946 (15 U.S.C. 1113). 

3 (3) EXPENSES.—Amounts deposited into the 

4 Fund under paragraph (2) shall be available, without 

5 fiscal year limitation, to cover— 

6 (A) all expenses to the extent consistent with 

7 the limitation on the use of fees set forth in sec8 tion 42(c) of title 35, United States Code, includ9 ing all administrative and operating expenses, 

10 determined in the discretion of the Director to be 

11 ordinary and reasonable, incurred by the Direc12 tor for the continued operation of all services, 

13 programs, activities, and duties of the Office re14 lating to patents and trademarks, as such serv15 ices, programs, activities, and duties are de16 scribed under— 

17 (i) title 35, United States Code; and 

18 (ii) the Trademark Act of 1946; and 

19 (B) all expenses incurred pursuant to any 

20 obligation, representation, or other commitment 

21 of the Office. 

22 (d) ANNUAL REPORT.—Not later than 60 days after 

23 the end of each fiscal year, the Director shall submit a re24 port to Congress which shall— 


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1 (1) summarize the operations of the Office for the 

2 preceding fiscal year, including financial details and 

3 staff levels broken down by each major activity of the 

4 Office; 

5 (2) detail the operating plan of the Office, in6 cluding specific expense and staff needs for the up7 coming fiscal year; 

8 (3) describe the long-term modernization plans of 

9 the Office; 

10 (4) set forth details of any progress towards such 

11 modernization plans made in the previous fiscal year; 

12 and 

13 (5) include the results of the most recent audit 

14 carried out under subsection (f). 

15 (e) ANNUAL SPENDING PLAN.— 

16 (1) IN GENERAL.—Not later than 30 days after 

17 the beginning of each fiscal year, the Director shall 

18 notify the Committees on Appropriations of both 

19 Houses of Congress of the plan for the obligation and 

20 expenditure of the total amount of the funds for that 

21 fiscal year in accordance with section 605 of the 

22 Science, State, Justice, Commerce, and Related Agen23 cies Appropriations Act, 2006 (Public Law 109–108; 

24 119 Stat. 2334). 


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1 (2) CONTENTS.—Each plan under paragraph (1) 

2 shall— 

3 (A) summarize the operations of the Office 

4 for the current fiscal year, including financial 

5 details and staff levels with respect to major ac6 tivities; and 

7 (B) detail the operating plan of the Office, 

8 including specific expense and staff needs, for the 

9 current fiscal year. 

10 (f) AUDIT.—The Director shall, on an annual basis, 

11 provide for an independent audit of the financial state12 ments of the Office. Such audit shall be conducted in accord13 ance with generally acceptable accounting procedures. 

14 (g) BUDGET.—The Director shall prepare and submit 

15 each year to the President a business-type budget for the 

16 Fund in a manner, and before a date, as the President pre17 scribes by regulation for the Federal budget. 

18 SEC. 23. SATELLITE OFFICES. 

19 (a) ESTABLISHMENT.—Subject to available resources, 

20 the Director shall, by not later than the date that is 3 years 

21 after the date of the enactment of this Act, establish 3 or 

22 more satellite offices in the United States to carry out the 

23 responsibilities of the Office. 

24 (b) PURPOSES.—The purposes of the satellite offices es25 tablished under subsection (a) are to— 


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1 (1) increase outreach activities to better connect 

2 patent filers and innovators with the Office; 

3 (2) enhance patent examiner retention; 

4 (3) improve recruitment of patent examiners; 

5 (4) decrease the number of patent applications 

6 waiting for examination; and 

7 (5) improve the quality of patent examination. 

8 (c) REQUIRED CONSIDERATIONS.— 

9 (1) IN GENERAL.—In selecting the location of 

10 each satellite office to be established under subsection 

11 (a), the Director— 

12 (A) shall ensure geographic diversity among 

13 the offices, including by ensuring that such of14 fices are established in different States and re15 gions throughout the Nation; 

16 (B) may rely upon any previous evalua17 tions by the Office of potential locales for sat18 ellite offices, including any evaluations prepared 

19 as part of the Office’s Nationwide Workforce Pro20 gram that resulted in the 2010 selection of De21 troit, Michigan, as the first satellite office of the 

22 Office. 

23 (2) OPEN SELECTION PROCESS.—Nothing in 

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1 sider its evaluations in selecting the Detroit, Michi2 gan, satellite office. 

3 (d) REPORT TO CONGRESS.—Not later than the end 

4 of the third fiscal year that begins after the date of the en5 actment of this Act, the Director shall submit a report to 

6 Congress on— 

7 (1) the rationale of the Director in selecting the 

8 location of any satellite office required under sub9 section (a); 

10 (2) the progress of the Director in establishing 

11 all such satellite offices; and 

12 (3) whether the operation of existing satellite of13 fices is achieving the purposes under subsection (b). 

14 SEC. 24. DESIGNATION OF DETROIT SATELLITE OFFICE. 

15 (a) DESIGNATION.—The satellite office of the United 

16 States Patent and Trademark Office to be located in De17 troit, Michigan, shall be known and designated as the ‘‘Eli18 jah J. McCoy United States Patent and Trademark Office’’. 

19 (b) REFERENCES.—Any reference in a law, map, regu20 lation, document, paper, or other record of the United 

21 States to the satellite office of the United States Patent and 

22 Trademark Office to be located in Detroit, Michigan, re23 ferred to in subsection (a) shall be deemed to be a reference 

24 to the ‘‘Elijah J. McCoy United States Patent and Trade25 mark Office’’. 


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1 SEC. 25. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSI2 NESS CONCERNS. 

3 Using available resources, the Director shall establish 

4 and maintain in the Office a Patent Ombudsman Program. 

5 The duties of the Program’s staff shall include providing 

6 support and services relating to patent filings to small busi7 ness concerns. 

8 SEC. 26. PRIORITY EXAMINATION FOR TECHNOLOGIES IM9 PORTANT TO AMERICAN COMPETITIVENESS. 

10 Section 2(b)(2) of title 35, United States Code, is 

11 amended— 

12 (1) in subparagraph (E), by striking ‘‘and’’ after 

13 the semicolon; 

14 (2) in subparagraph (F), by inserting ‘‘and’’ 

15 after the semicolon; and 

16 (3) by adding at the end the following: 

17 ‘‘(G) may, subject to any conditions pre18 scribed by the Director and at the request of the 

19 patent applicant, provide for prioritization of 

20 examination of applications for products, proc21 esses, or technologies that are important to the 

22 national economy or national competitiveness 

23 without recovering the aggregate extra cost of 

24 providing such prioritization, notwithstanding 

25 section 41 or any other provision of law;’’. 


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1 SEC. 27. CALCULATION OF 60-DAY PERIOD FOR APPLICA2 TION OF PATENT TERM EXTENSION. 

3 (a) IN GENERAL.—Section 156(d)(1) of title 35, 

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

5 following flush sentence: 

6 ‘‘For purposes of determining the date on which a product 

7 receives permission under the second sentence of this para8 graph, if such permission is transmitted after 4:30 P.M., 

9 Eastern Time, on a business day, or is transmitted on a 

10 day that is not a business day, the product shall be deemed 

11 to receive such permission on the next business day. For 

12 purposes of the preceding sentence, the term ‘business day’ 

13 means any Monday, Tuesday, Wednesday, Thursday, or 

14 Friday, excluding any legal holiday under section 6103 of 

15 title 5.’’. 

16 (b) APPLICABILITY.—The amendment made by sub17 section (a) shall apply to any application for extension of 

18 a patent term under section 156 of title 35, United States 

19 Code, that is pending on, that is filed after, or as to which 

20 a decision regarding the application is subject to judicial 

21 review on, the date of the enactment of this Act. 

22 SEC. 28. STUDY ON IMPLEMENTATION. 

23 (a) PTO STUDY.—The Director shall conduct a study 

24 on the manner in which this Act and the amendments made 

25 by this Act are being implemented by the Office, and on 

26 such other aspects of the patent policies and practices of 


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1 the Federal Government with respect to patent rights, inno2 vation in the United States, competitiveness of United 

3 States markets, access by small businesses to capital for in4 vestment, and such other issues, as the Director considers 

5 appropriate. 

6 (b) REPORT TO CONGRESS.—The Director shall, not 

7 later than the date that is 4 years after the date of the enact8 ment of this Act, submit to the Committees on the Judiciary 

9 of the House of Representatives and the Senate a report on 

10 the results of the study conducted under subsection (a), in11 cluding recommendations for any changes to laws and regu12 lations that the Director considers appropriate. 

13 SEC. 29. PRO BONO PROGRAM. 

14 (a) IN GENERAL.—The Director shall work with and 

15 support intellectual property law associations across the 

16 country in the establishment of pro bono programs designed 

17 to assist financially under-resourced independent inventors 

18 and small businesses. 

19 (b) EFFECTIVE DATE.—This section shall take effect 

20 on the date of the enactment of this Act. 

21 SEC. 30. EFFECTIVE DATE. 

22 Except as otherwise provided in this Act, the provi23 sions of this Act shall take effect upon the expiration of the 

24 1-year period beginning on the date of the enactment of this 


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1 Act and shall apply to any patent issued on or after that 

2 effective date. 

3 SEC. 31. BUDGETARY EFFECTS. 

4 The budgetary effects of this Act, for the purpose of 

5 complying with the Statutory Pay-As-You-Go Act of 2010, 

6 shall be determined by reference to the latest statement titled 

7 ‘‘Budgetary Effects of PAYGO Legislation’’ for this Act, 

8 submitted for printing in the Congressional Record by the 

9 Chairman of the House Budget Committee, provided that 

10 such statement has been submitted prior to the vote on pas11 sage. 


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Union Calendar No. 54 

112TH CONGRESS 

1ST SESSION H. R. 1249 

[Report No. 112–98, Part I] 

A BILL 

To amend title 35, United States Code, to provide 

for patent reform. 

JUNE 1, 2011 

Reported from the Committee on the Judiciary with an 

amendment 

JUNE 1, 2011 

The Committee on the Budget discharged; committed to 

Union and ordered to be printed the Committee of the Whole House on the State of the 


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