112TH CONGRESS 

1ST SESSION H. R. 1249 

AN ACT 

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

reform. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 
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1 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

3 ‘‘Leahy-Smith America Invents Act’’. 

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

5 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 prior commercial use. 

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. Priority examination for important technologies. 

Sec. 26. Study on implementation. 

Sec. 27. Study on genetic testing. 

Sec. 28. Patent Ombudsman Program for small business concerns. 

Sec. 29. Establishment of methods for studying the diversity of applicants. 

Sec. 30. Sense of Congress. 

Sec. 31. USPTO study on international patent protections for small businesses. 

Sec. 32. Pro bono program. 

Sec. 33. Limitation on issuance of patents. 

Sec. 34. Study of patent litigation. 

Sec. 35. Effective date. 

Sec. 36. Budgetary effects. 

Sec. 37. Calculation of 60-day period for application of patent term extension. 

6 SEC. 2. DEFINITIONS. 

7 In this Act: 
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1 (1) DIRECTOR.—The term ‘‘Director’’ means 

2 the Under Secretary of Commerce for Intellectual 

3 Property and Director of the United States Patent 

4 and Trademark Office. 

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

6 United States Patent and Trademark Office. 

7 (3) PATENT PUBLIC ADVISORY COMMITTEE.— 

8 The term ‘‘Patent Public Advisory Committee’’ 

9 means the Patent Public Advisory Committee estab10 lished under section 5(a) of title 35, United States 

11 Code. 

12 (4) TRADEMARK ACT OF 1946.—The term 

13 ‘‘Trademark Act of 1946’’ means the Act entitled 

14 ‘‘An Act to provide for the registration and protec15 tion of trademarks used in commerce, to carry out 

16 the provisions of certain international conventions, 

17 and for other purposes’’, approved July 5, 1946 (15 

18 U.S.C. 1051 et seq.) (commonly referred to as the 

19 ‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 

20 (5) TRADEMARK PUBLIC ADVISORY COM21 MITTEE.—The term ‘‘Trademark Public Advisory 

22 Committee’’ means the Trademark Public Advisory 

23 Committee established under section 5(a) of title 35, 

24 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 

5 partes 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 

12 subject matter of a joint invention. 

13 ‘‘(h) The term ‘joint research agreement’ means a 

14 written contract, grant, or cooperative agreement entered 

15 into by 2 or more persons or entities for the performance 

16 of experimental, developmental, or research work in the 

17 field of 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 

21 actual 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 

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

25 such invention, to a right of priority under section 
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1 119, 365(a), or 365(b) or to the benefit of an earlier 

2 filing 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 

5 determined by deeming the claim to the invention to have 

6 been 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 enti15 tled 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 

19 effective 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 

24 the case may be, names another inventor and was 
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1 effectively 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

6 CLAIMED INVENTION.—A disclosure made 1 year or 

7 less before the effective filing date of a claimed in8 vention shall not be prior art to the claimed inven9 tion under subsection (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 indi13 rectly from the inventor or a joint inventor; or 

14 ‘‘(B) the subject matter disclosed had, be15 fore such disclosure, been publicly disclosed by 

16 the inventor or a joint inventor or another who 

17 obtained the subject matter disclosed directly or 

18 indirectly from the inventor or a joint inventor. 

19 ‘‘(2) DISCLOSURES APPEARING IN APPLICA20 TIONS AND PATENTS.—A disclosure shall not be 

21 prior art to a claimed invention under subsection 

22 (a)(2) if— 

23 ‘‘(A) the subject matter disclosed was ob24 tained directly or indirectly from the inventor or 

25 a joint inventor; 
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1 ‘‘(B) the subject matter disclosed had, be2 fore such subject matter was effectively filed 

3 under subsection (a)(2), been publicly disclosed 

4 by the inventor or a joint inventor or another 

5 who obtained the subject matter disclosed di6 rectly or indirectly from the inventor or a joint 

7 inventor; or 

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

9 claimed invention, not later than the effective 

10 filing date of the claimed invention, were owned 

11 by the same person or subject to an obligation 

12 of assignment to the same person. 

13 ‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

14 AGREEMENTS.—Subject matter disclosed and a claimed 

15 invention shall be deemed to have been owned by the same 

16 person or subject to an obligation of assignment to the 

17 same person in applying the provisions of subsection 

18 (b)(2)(C) if— 

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

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

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

22 that was in effect on or before the effective filing 

23 date of the claimed invention; 
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1 ‘‘(2) the claimed invention was made as a result 

2 of activities undertaken within the scope of the joint 

3 research agreement; and 

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

5 invention discloses or is amended to disclose the 

6 names of the parties to the joint research agree7 ment. 

8 ‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF9 FECTIVE AS PRIOR ART.—For purposes of determining 

10 whether a patent or application for patent is prior art to 

11 a claimed invention under subsection (a)(2), such patent 

12 or application shall be considered to have been effectively 

13 filed, with respect to any subject matter described in the 

14 patent or application— 

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

16 actual filing date of the patent or the application for 

17 patent; or 

18 ‘‘(2) if the patent or application for patent is 

19 entitled to claim a right of priority under section 

20 119, 365(a), or 365(b), or to claim the benefit of an 

21 earlier filing date under section 120, 121, or 365(c), 

22 based upon 1 or more prior filed applications for 

23 patent, as of the filing date of the earliest such ap24 plication that describes the subject matter.’’. 
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1 (2) CONTINUITY OF INTENT UNDER THE CRE2 ATE ACT.—The enactment of section 102(c) of title 

3 35, United States Code, under paragraph (1) of this 

4 subsection is done with the same intent to promote 

5 joint research activities that was expressed, includ6 ing in the legislative history, through the enactment 

7 of the Cooperative Research and Technology En8 hancement Act of 2004 (Public Law 108–453; the 

9 ‘‘CREATE Act’’), the amendments of which are 

10 stricken by subsection (c) of this section. The United 

11 States Patent and Trademark Office shall admin12 ister section 102(c) of title 35, United States Code, 

13 in a manner consistent with the legislative history of 

14 the CREATE Act that was relevant to its adminis15 tration by the United States Patent and Trademark 

16 Office. 

17 (3) CONFORMING AMENDMENT.—The item re18 lating to section 102 in the table of sections for 

19 chapter 10 of title 35, United States Code, is 

20 amended to read as follows: 

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

21 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

22 SUBJECT MATTER.—Section 103 of title 35, United 

23 States Code, is amended to read as follows: 
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1 ‘‘§ 103. Conditions for patentability; non-obvious sub2 ject matter 

3 ‘‘A patent for a claimed invention may not be ob4 tained, notwithstanding that the claimed invention is not 

5 identically disclosed as set forth in section 102, if the dif6 ferences between the claimed invention and the prior art 

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

8 been obvious before the effective filing date of the claimed 

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

10 which the claimed invention pertains. Patentability shall 

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

12 made.’’. 

13 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

15 Code, and the item relating to that section in the table 

16 of sections for chapter 10 of title 35, United States Code, 

17 are repealed. 

18 (e) REPEAL OF STATUTORY INVENTION REGISTRA19 TION.— 

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

21 United States Code, and the item relating to that 

22 section in the table of sections for chapter 14 of title 

23 35, United States Code, are repealed. 

24 (2) REMOVAL OF CROSS REFERENCES.—Section 

25 111(b)(8) of title 35, United States Code, is amend-
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1 ed by striking ‘‘sections 115, 131, 135, and 157’’ 

2 and inserting ‘‘sections 131 and 135’’. 

3 (3) EFFECTIVE DATE.—The amendments made 

4 by this subsection shall take effect upon the expira5 tion of the 18-month period beginning on the date 

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

7 request for a statutory invention registration filed on 

8 or after that effective date. 

9 (f) EARLIER FILING DATE FOR INVENTOR AND

10 JOINT INVENTOR.—Section 120 of title 35, United States 

11 Code, is amended by striking ‘‘which is filed by an inven12 tor or inventors named’’ and inserting ‘‘which names an 

13 inventor or joint inventor’’. 

14 (g) CONFORMING AMENDMENTS.— 

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

16 35, United States Code, is amended by striking 

17 ‘‘and the time specified in section 102(d)’’. 

18 (2) LIMITATION ON REMEDIES.—Section 

19 287(c)(4) of title 35, United States Code, is amend20 ed by striking ‘‘the earliest effective filing date of 

21 which is prior to’’ and inserting ‘‘which has an effec22 tive filing date before’’. 

23 (3) INTERNATIONAL APPLICATION DESIG24 NATING THE UNITED STATES: EFFECT.—Section 

25 363 of title 35, United States Code, is amended by 
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1 striking ‘‘except as otherwise provided in section 

2 102(e) of this title’’. 

3 (4) PUBLICATION OF INTERNATIONAL APPLICA4 TION: EFFECT.—Section 374 of title 35, United 

5 States Code, is amended by striking ‘‘sections 102(e) 

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

7 (5) PATENT ISSUED ON INTERNATIONAL APPLI8 CATION: EFFECT.—The second sentence of section 

9 375(a) of title 35, United States Code, is amended 

10 by striking ‘‘Subject to section 102(e) of this title, 

11 such’’ and inserting ‘‘Such’’. 

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

13 119(a) of title 35, United States Code, is amended 

14 by striking ‘‘; but no patent shall be granted’’ and 

15 all that follows through ‘‘one year prior to such fil16 ing’’. 

17 (7) INVENTIONS MADE WITH FEDERAL ASSIST18 ANCE.—Section 202(c) of title 35, United States 

19 Code, is amended— 

20 (A) in paragraph (2)— 

21 (i) by striking ‘‘publication, on sale, 

22 or public use,’’ and all that follows through 

23 ‘‘obtained in the United States’’ and in24 serting ‘‘the 1-year period referred to in 
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1 section 102(b) would end before the end of 

2 that 2-year period’’; and 

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

4 the statutory’’ and inserting ‘‘before the 

5 end of that 1-year’’; and 

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

7 statutory bar date that may occur under this 

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

9 and inserting ‘‘the expiration of the 1-year pe10 riod referred to in section 102(b)’’. 

11 (h) DERIVED PATENTS.— 

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

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

14 ‘‘§ 291. Derived Patents 

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

16 relief by civil action against the owner of another patent 

17 that claims the same invention and has an earlier effective 

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

19 was derived from the inventor of the invention claimed in 

20 the patent owned by the person seeking relief under this 

21 section. 

22 ‘‘(b) FILING LIMITATION.—An action under this sec23 tion may be filed only before the end of the 1-year period 

24 beginning on the date of the issuance of the first patent 

25 containing a claim to the allegedly derived invention and 
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1 naming an individual alleged to have derived such inven2 tion as the inventor or joint inventor.’’. 

3 (2) CONFORMING AMENDMENT.—The item re4 lating to section 291 in the table of sections for 

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

6 amended to read as follows: 

‘‘291. Derived patents.’’. 

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

8 35, United States Code, is amended to read as follows: 

9 ‘‘§ 135. Derivation proceedings 

10 ‘‘(a) INSTITUTION OF PROCEEDING.—An applicant 

11 for patent may file a petition to institute a derivation pro12 ceeding in the Office. The petition shall set forth with par13 ticularity the basis for finding that an inventor named in 

14 an earlier application derived the claimed invention from 

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

16 without authorization, the earlier application claiming 

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

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

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

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

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

22 supported by substantial evidence. Whenever the Director 

23 determines that a petition filed under this subsection dem24 onstrates that the standards for instituting a derivation 

25 proceeding are met, the Director may institute a deriva-
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1 tion proceeding. The determination by the Director wheth2 er to institute a derivation proceeding shall be final and 

3 nonappealable. 

4 ‘‘(b) DETERMINATION BY PATENT TRIAL AND AP5 PEAL BOARD.—In a derivation proceeding instituted 

6 under subsection (a), the Patent Trial and Appeal Board 

7 shall determine whether an inventor named in the earlier 

8 application derived the claimed invention from an inventor 

9 named in the petitioner’s application and, without author10 ization, the earlier application claiming such invention was 

11 filed. In appropriate circumstances, the Patent Trial and 

12 Appeal Board may correct the naming of the inventor in 

13 any application or patent at issue. The Director shall pre14 scribe regulations setting forth standards for the conduct 

15 of derivation proceedings, including requiring parties to 

16 provide sufficient evidence to prove and rebut a claim of 

17 derivation. 

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

19 and Appeal Board may defer action on a petition for a 

20 derivation proceeding until the expiration of the 3-month 

21 period beginning on the date on which the Director issues 

22 a patent that includes the claimed invention that is the 

23 subject of the petition. The Patent Trial and Appeal 

24 Board also may defer action on a petition for a derivation 

25 proceeding, or stay the proceeding after it has been insti-
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1 tuted, until the termination of a proceeding under chapter 

2 30, 31, or 32 involving the patent of the earlier applicant. 

3 ‘‘(d) EFFECT OF FINAL DECISION.—The final deci4 sion of the Patent Trial and Appeal Board, if adverse to 

5 claims in an application for patent, shall constitute the 

6 final refusal by the Office on those claims. The final deci7 sion of the Patent Trial and Appeal Board, if adverse to 

8 claims in a patent, shall, if no appeal or other review of 

9 the decision has been or can be taken or had, constitute 

10 cancellation of those claims, and notice of such cancella11 tion shall be endorsed on copies of the patent distributed 

12 after such cancellation. 

13 ‘‘(e) SETTLEMENT.—Parties to a proceeding insti14 tuted under subsection (a) may terminate the proceeding 

15 by filing a written statement reflecting the agreement of 

16 the parties as to the correct inventors of the claimed inven17 tion in dispute. Unless the Patent Trial and Appeal Board 

18 finds the agreement to be inconsistent with the evidence 

19 of record, if any, it shall take action consistent with the 

20 agreement. Any written settlement or understanding of 

21 the parties shall be filed with the Director. At the request 

22 of a party to the proceeding, the agreement or under23 standing shall be treated as business confidential informa24 tion, shall be kept separate from the file of the involved 

25 patents or applications, and shall be made available only 
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1 to Government agencies on written request, or to any per2 son on a showing of good cause. 

3 ‘‘(f) ARBITRATION.—Parties to a proceeding insti4 tuted under subsection (a) may, within such time as may 

5 be specified by the Director by regulation, determine such 

6 contest or any aspect thereof by arbitration. Such arbitra7 tion shall be governed by the provisions of title 9, to the 

8 extent such title is not inconsistent with this section. The 

9 parties shall give notice of any arbitration award to the 

10 Director, and such award shall, as between the parties to 

11 the arbitration, be dispositive of the issues to which it re12 lates. The arbitration award shall be unenforceable until 

13 such notice is given. Nothing in this subsection shall pre14 clude the Director from determining the patentability of 

15 the claimed inventions involved in the proceeding.’’. 

16 (j) ELIMINATION OF REFERENCES TO INTER17 FERENCES.—(1) Sections 134, 145, 146, 154, and 305 

18 of title 35, United States Code, are each amended by strik19 ing ‘‘Board of Patent Appeals and Interferences’’ each 

20 place it appears and inserting ‘‘Patent Trial and Appeal 

21 Board’’. 

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

23 is amended— 

24 (i) by striking ‘‘an interference’’ and in25 serting ‘‘a derivation proceeding’’; and 
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1 (ii) by striking ‘‘the interference’’ and in2 serting ‘‘the derivation proceeding’’. 

3 (B) The subparagraph heading for section 

4 154(b)(1)(C) of title 35, United States Code, is 

5 amended to read as follows: 

6 ‘‘(C) GUARANTEE OF ADJUSTMENTS

7 FOR DELAYS DUE TO DERIVATION PRO8 CEEDINGS, SECRECY ORDERS, AND AP9 PEALS.—’’. 

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

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

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

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

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

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

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

17 the table of sections for chapter 12 of title 35, United 

18 States Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

20 sections for chapter 13 of title 35, United States Code, 

21 is amended to read as follows: 

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

22 (k) STATUTE OF LIMITATIONS.— 
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1 (1) IN GENERAL.—Section 32 of title 35, 

2 United States Code, is amended by inserting be3 tween the third and fourth sentences the following: 

4 ‘‘A proceeding under this section shall be com5 menced not later than the earlier of either the date 

6 that is 10 years after the date on which the mis7 conduct forming the basis for the proceeding oc8 curred, or 1 year after the date on which the mis9 conduct forming the basis for the proceeding is 

10 made known to an officer or employee of the Office 

11 as prescribed in the regulations established under 

12 section 2(b)(2)(D).’’. 

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

14 provide on a biennial basis to the Judiciary Commit15 tees of the Senate and House of Representatives a 

16 report providing a short description of incidents 

17 made known to an officer or employee of the Office 

18 as prescribed in the regulations established under 

19 section 2(b)(2)(D) of title 35, United States Code, 

20 that reflect substantial evidence of misconduct be21 fore the Office but for which the Office was barred 

22 from commencing a proceeding under section 32 of 

23 title 35, United States Code, by the time limitation 

24 established by the fourth sentence of that section. 
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1 (3) EFFECTIVE DATE.—The amendment made 

2 by paragraph (1) shall apply in any case in which 

3 the time period for instituting a proceeding under 

4 section 32 of title 35, United States Code, had not 

5 lapsed before the date of the enactment of this Act. 

6 (l) SMALL BUSINESS STUDY.— 

7 (1) DEFINITIONS.—In this subsection— 

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

9 Chief Counsel for Advocacy of the Small Busi10 ness Administration; 

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

12 General Counsel of the United States Patent 

13 and Trademark Office; and 

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

15 the meaning given that term under section 3 of 

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

17 (2) STUDY.— 

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

19 consultation with the General Counsel, shall 

20 conduct a study of the effects of eliminating the 

21 use of dates of invention in determining wheth22 er an applicant is entitled to a patent under 

23 title 35, United States Code. 

24 (B) AREAS OF STUDY.—The study con25 ducted under subparagraph (A) shall include 
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1 examination of the effects of eliminating the use 

2 of invention dates, including examining— 

3 (i) how the change would affect the 

4 ability of small business concerns to obtain 

5 patents and their costs of obtaining pat6 ents; 

7 (ii) whether the change would create, 

8 mitigate, or exacerbate any disadvantages 

9 for applicants for patents that are small 

10 business concerns relative to applicants for 

11 patents that are not small business con12 cerns, and whether the change would cre13 ate any advantages for applicants for pat14 ents that are small business concerns rel15 ative to applicants for patents that are not 

16 small business concerns; 

17 (iii) the cost savings and other poten18 tial benefits to small business concerns of 

19 the change; and 

20 (iv) the feasibility and costs and bene21 fits to small business concerns of alter22 native means of determining whether an 

23 applicant is entitled to a patent under title 

24 35, United States Code. 
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1 (3) REPORT.—Not later than the date that is 

2 1 year after the date of the enactment of this Act, 

3 the Chief Counsel shall submit to the Committee on 

4 Small Business and Entrepreneurship and the Com5 mittee on the Judiciary of the Senate and the Com6 mittee on Small Business and the Committee on the 

7 Judiciary of the House of Representatives a report 

8 on the results of the study under paragraph (2). 

9 (m) REPORT ON PRIOR USER RIGHTS.— 

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

11 the 4-month period beginning on the date of the en12 actment of this Act, the Director shall report, to the 

13 Committee on the Judiciary of the Senate and the 

14 Committee on the Judiciary of the House of Rep15 resentatives, the findings and recommendations of 

16 the Director on the operation of prior user rights in 

17 selected countries in the industrialized world. The 

18 report shall include the following: 

19 (A) A comparison between patent laws of 

20 the United States and the laws of other indus21 trialized countries, including members of the 

22 European Union and Japan, Canada, and Aus23 tralia. 
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1 (B) An analysis of the effect of prior user 

2 rights on innovation rates in the selected coun3 tries. 

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

5 between prior user rights and start-up enter6 prises and the ability to attract venture capital 

7 to start new companies. 

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

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

10 and individual inventors. 

11 (E) An analysis of legal and constitutional 

12 issues, if any, that arise from placing trade se13 cret law in patent law. 

14 (F) An analysis of whether the change to 

15 a first-to-file patent system creates a particular 

16 need for prior user rights. 

17 (2) CONSULTATION WITH OTHER AGENCIES.— 

18 In preparing the report required under paragraph 

19 (1), the Director shall consult with the United 

20 States Trade Representative, the Secretary of State, 

21 and the Attorney General. 

22 (n) EFFECTIVE DATE.— 

23 (1) IN GENERAL.—Except as otherwise pro24 vided in this section, the amendments made by this 

25 section shall take effect upon the expiration of the 
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1 18-month period beginning on the date of the enact2 ment of this Act, and shall apply to any application 

3 for patent, and to any patent issuing thereon, that 

4 contains or contained at any time— 

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

6 an effective filing date as defined in section 

7 100(i) of title 35, United States Code, that is 

8 on or after the effective date described in this 

9 paragraph; or 

10 (B) a specific reference under section 120, 

11 121, or 365(c) of title 35, United States Code, 

12 to any patent or application that contains or 

13 contained at any time such a claim. 

14 (2) INTERFERING PATENTS.—The provisions of 

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

16 States Code, as in effect on the day before the effec17 tive date set forth in paragraph (1) of this sub18 section, shall apply to each claim of an application 

19 for patent, and any patent issued thereon, for which 

20 the amendments made by this section also apply, if 

21 such application or patent contains or contained at 

22 any time— 

23 (A) a claim to an invention having an ef24 fective filing date as defined in section 100(i) of 

25 title 35, United States Code, that occurs before 
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1 the effective date set forth in paragraph (1) of 

2 this subsection; or 

3 (B) a specific reference under section 120, 

4 121, or 365(c) of title 35, United States Code, 

5 to any patent or application that contains or 

6 contained at any time such a claim. 

7 (o) SENSE OF CONGRESS.—It is the sense of the Con8 gress that converting the United States patent system 

9 from ‘‘first to invent’’ to a system of ‘‘first inventor to 

10 file’’ will promote the progress of science and the useful 

11 arts by securing for limited times to inventors the exclu12 sive rights to their discoveries and provide inventors with 

13 greater certainty regarding the scope of protection pro14 vided by the grant of exclusive rights to their discoveries. 

15 (p) SENSE OF CONGRESS.—It is the sense of the 

16 Congress that converting the United States patent system 

17 from ‘‘first to invent’’ to a system of ‘‘first inventor to 

18 file’’ will improve the United States patent system and 

19 promote harmonization of the United States patent system 

20 with the patent systems commonly used in nearly all other 

21 countries throughout the world with whom the United 

22 States conducts trade and thereby promote greater inter23 national uniformity and certainty in the procedures used 

24 for securing the exclusive rights of inventors to their dis25 coveries. 
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1 SEC. 4. INVENTOR’S OATH OR DECLARATION. 

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

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

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

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

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

7 DECLARATION.—An application for patent that is filed 

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

9 under section 371 shall include, or be amended to include, 

10 the name of the inventor for any invention claimed in the 

11 application. Except as otherwise provided in this section, 

12 each individual who is the inventor or a joint inventor of 

13 a claimed invention in an application for patent shall exe14 cute an oath or declaration in connection with the applica15 tion. 

16 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara17 tion under subsection (a) shall contain statements that— 

18 ‘‘(1) the application was made or was author19 ized to be made by the affiant or declarant; and 

20 ‘‘(2) such individual believes himself or herself 

21 to be the original inventor or an original joint inven22 tor of a claimed invention in the application. 

23 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director 

24 may specify additional information relating to the inventor 

25 and the invention that is required to be included in an 

26 oath or declaration under subsection (a). 
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1 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

4 patent may provide a substitute statement under the 

5 circumstances described in paragraph (2) and such 

6 additional circumstances that the Director may 

7 specify by regulation. 

8 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub9 stitute statement under paragraph (1) is permitted 

10 with respect to any individual who— 

11 ‘‘(A) is unable to file the oath or declara12 tion under subsection (a) because the indi13 vidual— 

14 ‘‘(i) is deceased; 

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

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

17 diligent effort; or 

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

19 invention but has refused to make the oath or 

20 declaration required under subsection (a). 

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

22 this subsection shall— 

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

24 whom the statement applies; 
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1 ‘‘(B) set forth the circumstances rep2 resenting the permitted basis for the filing of 

3 the substitute statement in lieu of the oath or 

4 declaration under subsection (a); and 

5 ‘‘(C) contain any additional information, 

6 including any showing, required by the Direc7 tor. 

8 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN9 MENT OF RECORD.—An individual who is under an obliga10 tion of assignment of an application for patent may in11 clude the required statements under subsections (b) and 

12 (c) in the assignment executed by the individual, in lieu 

13 of filing such statements separately. 

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

15 section 151 may be provided to an applicant for patent 

16 only if the applicant for patent has filed each required 

17 oath or declaration under subsection (a) or has filed a sub18 stitute statement under subsection (d) or recorded an as19 signment meeting the requirements of subsection (e). 

20 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE21 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

22 ‘‘(1) EXCEPTION.—The requirements under 

23 this section shall not apply to an individual with re24 spect to an application for patent in which the indi25 vidual is named as the inventor or a joint inventor 
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1 and who claims the benefit under section 120, 121, 

2 or 365(c) of the filing of an earlier-filed application, 

3 if— 

4 ‘‘(A) an oath or declaration meeting the 

5 requirements of subsection (a) was executed by 

6 the individual and was filed in connection with 

7 the earlier-filed application; 

8 ‘‘(B) a substitute statement meeting the 

9 requirements of subsection (d) was filed in con10 nection with the earlier filed application with 

11 respect to the individual; or 

12 ‘‘(C) an assignment meeting the require13 ments of subsection (e) was executed with re14 spect to the earlier-filed application by the indi15 vidual and was recorded in connection with the 

16 earlier-filed application. 

17 ‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE18 MENTS, OR ASSIGNMENTS.—Notwithstanding para19 graph (1), the Director may require that a copy of 

20 the executed oath or declaration, the substitute 

21 statement, or the assignment filed in connection 

22 with the earlier-filed application be included in the 

23 later-filed application. 

24 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE25 MENTS; FILING ADDITIONAL STATEMENTS.— 
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1 ‘‘(1) IN GENERAL.—Any person making a state2 ment required under this section may withdraw, re3 place, or otherwise correct the statement at any 

4 time. If a change is made in the naming of the in5 ventor requiring the filing of 1 or more additional 

6 statements under this section, the Director shall es7 tablish regulations under which such additional 

8 statements may be filed. 

9 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE10 QUIRED.—If an individual has executed an oath or 

11 declaration meeting the requirements of subsection 

12 (a) or an assignment meeting the requirements of 

13 subsection (e) with respect to an application for pat14 ent, the Director may not thereafter require that in15 dividual to make any additional oath, declaration, or 

16 other statement equivalent to those required by this 

17 section in connection with the application for patent 

18 or any patent issuing thereon. 

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

20 invalid or unenforceable based upon the failure to 

21 comply with a requirement under this section if the 

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

23 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec24 laration or statement filed pursuant to this section shall 

25 contain an acknowledgment that any willful false state-
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1 ment made in such declaration or statement is punishable 

2 under section 1001 of title 18 by fine or imprisonment 

3 of not more than 5 years, or both.’’. 

4 (2) RELATIONSHIP TO DIVISIONAL APPLICA5 TIONS.—Section 121 of title 35, United States Code, 

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

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

8 (3) REQUIREMENTS FOR NONPROVISIONAL AP9 PLICATIONS.—Section 111(a) of title 35, United 

10 States Code, is amended— 

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

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

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

14 inserting ‘‘OR DECLARATION’’ after ‘‘AND

15 OATH’’; and 

16 (C) by inserting ‘‘or declaration’’ after 

17 ‘‘and oath’’ each place it appears. 

18 (4) CONFORMING AMENDMENT.—The item re19 lating to section 115 in the table of sections for 

20 chapter 11 of title 35, United States Code, is 

21 amended to read as follows: 

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

22 (b) FILING BY OTHER THAN INVENTOR.— 

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

24 United States Code, is amended to read as follows: 
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1 ‘‘§ 118. Filing by other than inventor 

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

3 under an obligation to assign the invention may make an 

4 application for patent. A person who otherwise shows suf5 ficient proprietary interest in the matter may make an ap6 plication for patent on behalf of and as agent for the in7 ventor on proof of the pertinent facts and a showing that 

8 such action is appropriate to preserve the rights of the 

9 parties. If the Director grants a patent on an application 

10 filed under this section by a person other than the inven11 tor, the patent shall be granted to the real party in inter12 est and upon such notice to the inventor as the Director 

13 considers to be sufficient.’’. 

14 (2) CONFORMING AMENDMENT.—Section 251 

15 of title 35, United States Code, is amended in the 

16 third undesignated paragraph by inserting ‘‘or the 

17 application for the original patent was filed by the 

18 assignee of the entire interest’’ after ‘‘claims of the 

19 original patent’’. 

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

21 States Code, is amended— 

22 (1) in the first undesignated paragraph— 

23 (A) by striking ‘‘The specification’’ and in24 serting ‘‘(a) IN GENERAL.—The specification’’; 

25 and 
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1 (B) by striking ‘‘of carrying out his inven2 tion’’ and inserting ‘‘or joint inventor of car3 rying out the invention’’; 

4 (2) in the second undesignated paragraph— 

5 (A) by striking ‘‘The specification’’ and in6 serting ‘‘(b) CONCLUSION.—The specification’’; 

7 and 

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

9 invention’’ and inserting ‘‘inventor or a joint in10 ventor regards as the invention’’; 

11 (3) in the third undesignated paragraph, by 

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

13 claim’’; 

14 (4) in the fourth undesignated paragraph, by 

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

16 inserting ‘‘(d) REFERENCE IN DEPENDENT

17 FORMS.—Subject to subsection (e),’’; 

18 (5) in the fifth undesignated paragraph, by 

19 striking ‘‘A claim’’ and inserting ‘‘(e) REFERENCE

20 IN MULTIPLE DEPENDENT FORM.—A claim’’; and 

21 (6) in the last undesignated paragraph, by 

22 striking ‘‘An element’’ and inserting ‘‘(f) ELEMENT

23 IN CLAIM FOR A COMBINATION.—An element’’. 

24 (d) CONFORMING AMENDMENTS.— 
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1 (1) Sections 111(b)(1)(A) of title 35, United 

2 States Code, is amended by striking ‘‘the first para3 graph of section 112 of this title’’ and inserting 

4 ‘‘section 112(a)’’. 

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

6 Code, is amended by striking ‘‘the second through 

7 fifth paragraphs of section 112,’’ and inserting 

8 ‘‘subsections (b) through (e) of section 112,’’. 

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

10 this section shall take effect upon the expiration of the 

11 1-year period beginning on the date of the enactment of 

12 this Act and shall apply to any patent application that 

13 is filed on or after that effective date. 

14 SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR 

15 COMMERCIAL USE. 

16 (a) IN GENERAL.—Section 273 of title 35, United 

17 States Code, is amended to read as follows: 

18 ‘‘§ 273. Defense to infringement based on prior com19 mercial use 

20 ‘‘(a) IN GENERAL.—A person shall be entitled to a 

21 defense under section 282(b) with respect to subject mat22 ter consisting of a process, or consisting of a machine, 

23 manufacture, or composition of matter used in a manufac24 turing or other commercial process, that would otherwise 
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1 infringe a claimed invention being asserted against the 

2 person if— 

3 ‘‘(1) such person, acting in good faith, commer4 cially used the subject matter in the United States, 

5 either in connection with an internal commercial use 

6 or an actual arm’s length sale or other arm’s length 

7 commercial transfer of a useful end result of such 

8 commercial use; and 

9 ‘‘(2) such commercial use occurred at least 1 

10 year before the earlier of either— 

11 ‘‘(A) the effective filing date of the claimed 

12 invention; or 

13 ‘‘(B) the date on which the claimed inven14 tion was disclosed to the public in a manner 

15 that qualified for the exception from prior art 

16 under section 102(b). 

17 ‘‘(b) BURDEN OF PROOF.—A person asserting a de18 fense under this section shall have the burden of estab19 lishing the defense by clear and convincing evidence. 

20 ‘‘(c) ADDITIONAL COMMERCIAL USES.— 

21 ‘‘(1) PREMARKETING REGULATORY REVIEW.— 

22 Subject matter for which commercial marketing or 

23 use is subject to a premarketing regulatory review 

24 period during which the safety or efficacy of the sub25 ject matter is established, including any period speci-
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1 fied in section 156(g), shall be deemed to be com2 mercially used for purposes of subsection (a)(1) dur3 ing such regulatory review period. 

4 ‘‘(2) NONPROFIT LABORATORY USE.—A use of 

5 subject matter by a nonprofit research laboratory or 

6 other nonprofit entity, such as a university or hos7 pital, for which the public is the intended bene8 ficiary, shall be deemed to be a commercial use for 

9 purposes of subsection (a)(1), except that a defense 

10 under this section may be asserted pursuant to this 

11 paragraph only for continued and noncommercial 

12 use by and in the laboratory or other nonprofit enti13 ty. 

14 ‘‘(d) EXHAUSTION OF RIGHTS.—Notwithstanding 

15 subsection (e)(1), the sale or other disposition of a useful 

16 end result by a person entitled to assert a defense under 

17 this section in connection with a patent with respect to 

18 that useful end result shall exhaust the patent owner’s 

19 rights under the patent to the extent that such rights 

20 would have been exhausted had such sale or other disposi21 tion been made by the patent owner. 

22 ‘‘(e) LIMITATIONS AND EXCEPTIONS.— 

23 ‘‘(1) PERSONAL DEFENSE.— 

24 ‘‘(A) IN GENERAL.—A defense under this 

25 section may be asserted only by the person who 
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1 performed or directed the performance of the 

2 commercial use described in subsection (a), or 

3 by an entity that controls, is controlled by, or 

4 is under common control with such person. 

5 ‘‘(B) TRANSFER OF RIGHT.—Except for 

6 any transfer to the patent owner, the right to 

7 assert a defense under this section shall not be 

8 licensed or assigned or transferred to another 

9 person except as an ancillary and subordinate 

10 part of a good-faith assignment or transfer for 

11 other reasons of the entire enterprise or line of 

12 business to which the defense relates. 

13 ‘‘(C) RESTRICTION ON SITES.—A defense 

14 under this section, when acquired by a person 

15 as part of an assignment or transfer described 

16 in subparagraph (B), may only be asserted for 

17 uses at sites where the subject matter that 

18 would otherwise infringe a claimed invention is 

19 in use before the later of the effective filing 

20 date of the claimed invention or the date of the 

21 assignment or transfer of such enterprise or 

22 line of business. 

23 ‘‘(2) DERIVATION.—A person may not assert a 

24 defense under this section if the subject matter on 
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1 which the defense is based was derived from the pat2 entee or persons in privity with the patentee. 

3 ‘‘(3) NOT A GENERAL LICENSE.—The defense 

4 asserted by a person under this section is not a gen5 eral license under all claims of the patent at issue, 

6 but extends only to the specific subject matter for 

7 which it has been established that a commercial use 

8 that qualifies under this section occurred, except 

9 that the defense shall also extend to variations in 

10 the quantity or volume of use of the claimed subject 

11 matter, and to improvements in the claimed subject 

12 matter that do not infringe additional specifically 

13 claimed subject matter of the patent. 

14 ‘‘(4) ABANDONMENT OF USE.—A person who 

15 has abandoned commercial use (that qualifies under 

16 this section) of subject matter may not rely on ac17 tivities performed before the date of such abandon18 ment in establishing a defense under this section 

19 with respect to actions taken on or after the date of 

20 such abandonment. 

21 ‘‘(5) UNIVERSITY EXCEPTION.— 

22 ‘‘(A) IN GENERAL.—A person commer23 cially using subject matter to which subsection 

24 (a) applies may not assert a defense under this 

25 section if the claimed invention with respect to 
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1 which the defense is asserted was, at the time 

2 the invention was made, owned or subject to an 

3 obligation of assignment to either an institution 

4 of higher education (as defined in section 

5 101(a) of the Higher Education Act of 1965 

6 (20 U.S.C. 1001(a)), or a technology transfer 

7 organization whose primary purpose is to facili8 tate the commercialization of technologies devel9 oped by one or more such institutions of higher 

10 education. 

11 ‘‘(B) EXCEPTION.—Subparagraph (A) 

12 shall not apply if any of the activities required 

13 to reduce to practice the subject matter of the 

14 claimed invention could not have been under15 taken using funds provided by the Federal Gov16 ernment. 

17 ‘‘(f) UNREASONABLE ASSERTION OF DEFENSE.—If 

18 the defense under this section is pleaded by a person who 

19 is found to infringe the patent and who subsequently fails 

20 to demonstrate a reasonable basis for asserting the de21 fense, the court shall find the case exceptional for the pur22 pose of awarding attorney fees under section 285. 

23 ‘‘(g) INVALIDITY.—A patent shall not be deemed to 

24 be invalid under section 102 or 103 solely because a de25 fense is raised or established under this section.’’. 
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1 (b) CONFORMING AMENDMENT.—The item relating 

2 to section 273 in the table of sections for chapter 28 of 

3 title 35, United States Code, is amended to read as fol4 lows: 

‘‘273. Defense to infringement based on prior commercial use.’’. 

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

6 this section shall apply to any patent issued on or after 

7 the date of the enactment of this Act. 

8 SEC. 6. POST-GRANT REVIEW PROCEEDINGS. 

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

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

11 ‘‘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. 

12 ‘‘§ 311. Inter partes review 

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

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

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

16 review of the patent. The Director shall establish, by regu17 lation, fees to be paid by the person requesting the review, 

18 in such amounts as the Director determines to be reason19 able, considering the aggregate costs of the review. 
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1 ‘‘(b) SCOPE.—A petitioner in an inter partes review 

2 may request to cancel as unpatentable 1 or more claims 

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

4 section 102 or 103 and only on the basis of prior art con5 sisting of patents or printed publications. 

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

7 review shall be filed after the later of either— 

8 ‘‘(1) the date that is 9 months after the grant 

9 of a patent or issuance of a reissue of a patent; or 

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

11 chapter 32, the date of the termination of such post12 grant review. 

13 ‘‘§ 312. Petitions 

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

15 under section 311 may be considered only if— 

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

17 the fee established by the Director under section 

18 311; 

19 ‘‘(2) the petition identifies all real parties in in20 terest; 

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

22 particularity, each claim challenged, the grounds on 

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

24 evidence that supports the grounds for the challenge 

25 to 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 expert opinions; 

7 ‘‘(4) the petition provides such other informa8 tion as the Director may require by regulation; and 

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

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

11 (4) to the patent owner or, if applicable, the des12 ignated representative of the patent owner. 

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

14 after the receipt of a petition under section 311, the Direc15 tor shall make the petition available to the public. 

16 ‘‘§ 313. Preliminary response to petition 

17 ‘‘If an inter partes review petition is filed under sec18 tion 311, the patent owner shall have the right to file a 

19 preliminary response to the petition, within a time period 

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

21 partes review should be instituted based upon the failure 

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

23 ‘‘§ 314. Institution of inter partes review 

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

25 an inter partes review to be instituted unless the Director 
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1 determines that the information presented in the petition 

2 filed under section 311 and any response filed under sec3 tion 313 shows that there is a reasonable likelihood that 

4 the petitioner would prevail with respect to at least 1 of 

5 the claims challenged in the petition. 

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

7 to institute an inter partes review under this chapter pur8 suant to a petition filed under section 311 within 3 months 

9 after— 

10 ‘‘(1) receiving a preliminary response to the pe11 tition under section 313; or 

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

13 the last date on which such response may be filed. 

14 ‘‘(c) NOTICE.—The Director shall notify the peti15 tioner and patent owner, in writing, of the Director’s de16 termination under subsection (a), and shall make such no17 tice available to the public as soon as is practicable. Such 

18 notice shall include the date on which the review shall 

19 commence. 

20 ‘‘(d) NO APPEAL.—The determination by the Direc21 tor whether to institute an inter partes review under this 

22 section shall be final and nonappealable. 

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

24 ‘‘(a) INFRINGER’S CIVIL ACTION.— 
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1 ‘‘(1) INTER PARTES REVIEW BARRED BY CIVIL

2 ACTION.—An inter partes review may not be insti3 tuted if, before the date on which the petition for 

4 such a review is filed, the petitioner or real party in 

5 interest filed a civil action challenging the validity of 

6 a claim of the patent. 

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

8 or real party in interest files a civil action chal9 lenging the validity of a claim of the patent on or 

10 after the date on which the petitioner files a petition 

11 for inter partes review of the patent, that civil action 

12 shall be automatically stayed until either— 

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

14 lift the stay; 

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

16 counterclaim alleging that the petitioner or real 

17 party in interest has infringed the patent; or 

18 ‘‘(C) the petitioner or real party in interest 

19 moves the court to dismiss the civil action. 

20 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun21 terclaim challenging the validity of a claim of a pat22 ent does not constitute a civil action challenging the 

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

24 subsection. 
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1 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re2 view may not be instituted if the petition requesting the 

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

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

5 petitioner is served with a complaint alleging infringement 

6 of the patent. The time limitation set forth in the pre7 ceding sentence shall not apply to a request for joinder 

8 under subsection (c). 

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

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

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

12 properly files a petition under section 311 that the Direc13 tor, after receiving a preliminary response under section 

14 313 or the expiration of the time for filing such a re15 sponse, determines warrants the institution of an inter 

16 partes review under section 314. 

17 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

18 sections 135(a), 251, and 252, and chapter 30, during the 

19 pendency of an inter partes review, if another proceeding 

20 or matter involving the patent is before the Office, the 

21 Director may determine the manner in which the inter 

22 partes review or other proceeding or matter may proceed, 

23 including providing for stay, transfer, consolidation, or 

24 termination of any such matter or proceeding. 

25 ‘‘(e) ESTOPPEL.— 
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1 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 

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

3 patent under this chapter that results in a final 

4 written decision under section 318(a), or the real 

5 party in interest or privy of the petitioner, may not 

6 request or maintain a proceeding before the Office 

7 with respect to that claim on any ground that the 

8 petitioner raised or reasonably could have raised 

9 during that inter partes review. 

10 ‘‘(2) CIVIL ACTIONS AND OTHER PRO11 CEEDINGS.—The petitioner in an inter partes review 

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

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

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

15 may not assert either in a civil action arising in 

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

17 in a proceeding before the International Trade Com18 mission under section 337 of the Tariff Act of 1930 

19 that the claim is invalid on any ground that the peti20 tioner raised or reasonably could have raised during 

21 that inter partes review. 

22 ‘‘§ 316. Conduct of inter partes review 

23 ‘‘(a) REGULATIONS.—The Director shall prescribe 

24 regulations— 
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1 ‘‘(1) providing that the file of any proceeding 

2 under this chapter shall be made available to the 

3 public, except that any petition or document filed 

4 with the intent that it be sealed shall, if accom5 panied by a motion to seal, be treated as sealed 

6 pending the outcome of the ruling on the motion; 

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

8 of sufficient grounds to institute a review under sec9 tion 314(a); 

10 ‘‘(3) establishing procedures for the submission 

11 of supplemental information after the petition is 

12 filed; 

13 ‘‘(4) establishing and governing inter partes re14 view under this chapter and the relationship of such 

15 review to other proceedings under this title; 

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

17 discovery of relevant evidence, including that such 

18 discovery shall be limited to— 

19 ‘‘(A) the deposition of witnesses submitting 

20 affidavits or declarations; and 

21 ‘‘(B) what is otherwise necessary in the in22 terest of justice; 

23 ‘‘(6) prescribing sanctions for abuse of dis24 covery, abuse of process, or any other improper use 

25 of the proceeding, such as to harass or to cause un-
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1 necessary delay or an unnecessary increase in the 

2 cost of the proceeding; 

3 ‘‘(7) providing for protective orders governing 

4 the exchange and submission of confidential infor5 mation; 

6 ‘‘(8) providing for the filing by the patent 

7 owner of a response to the petition under section 

8 313 after an inter partes review has been instituted, 

9 and requiring that the patent owner file with such 

10 response, through affidavits or declarations, any ad11 ditional factual evidence and expert opinions on 

12 which the patent owner relies in support of the re13 sponse; 

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

15 allowing the patent owner to move to amend the pat16 ent under subsection (d) to cancel a challenged claim 

17 or propose a reasonable number of substitute claims, 

18 and ensuring that any information submitted by the 

19 patent owner in support of any amendment entered 

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

21 as part of the prosecution history of the patent; 

22 ‘‘(10) providing either party with the right to 

23 an oral hearing as part of the proceeding; 

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

25 an inter partes review be issued not later than 1 
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1 year after the date on which the Director notices the 

2 institution of a review under this chapter, except 

3 that the Director may, for good cause shown, extend 

4 the 1-year period by not more than 6 months, and 

5 may adjust the time periods in this paragraph in the 

6 case of joinder under section 315(c); 

7 ‘‘(12) setting a time period for requesting join8 der under section 315(c); and 

9 ‘‘(13) providing the petitioner with at least 1 

10 opportunity to file written comments within a time 

11 period established by the Director. 

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

13 under this section, the Director shall consider the effect 

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

15 the patent system, the efficient administration of the Of16 fice, and the ability of the Office to timely complete pro17 ceedings instituted under this chapter. 

18 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat19 ent Trial and Appeal Board shall, in accordance with sec20 tion 6, conduct each inter partes review instituted under 

21 this chapter. 

22 ‘‘(d) AMENDMENT OF THE PATENT.— 

23 ‘‘(1) IN GENERAL.—During an inter partes re24 view instituted under this chapter, the patent owner 
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1 may file 1 motion to amend the patent in 1 or more 

2 of the following ways: 

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

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

5 reasonable number of substitute claims. 

6 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo7 tions to amend may be permitted upon the joint re8 quest of the petitioner and the patent owner to ma9 terially advance the settlement of a proceeding under 

10 section 317, or as permitted by regulations pre11 scribed by the Director. 

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

13 this subsection may not enlarge the scope of the 

14 claims of the patent or introduce new matter. 

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

16 review instituted under this chapter, the petitioner shall 

17 have the burden of proving a proposition of 

18 unpatentability by a preponderance of the evidence. 

19 ‘‘§ 317. Settlement 

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

21 under this chapter shall be terminated with respect to any 

22 petitioner upon the joint request of the petitioner and the 

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

24 the proceeding before the request for termination is filed. 

25 If the inter partes review is terminated with respect to 
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1 a petitioner under this section, no estoppel under section 

2 315(e) shall attach to the petitioner, or to the real party 

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

4 petitioner’s institution of that inter partes review. If no 

5 petitioner remains in the inter partes review, the Office 

6 may terminate the review or proceed to a final written de7 cision under section 318(a). 

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

9 understanding between the patent owner and a petitioner, 

10 including any collateral agreements referred to in such 

11 agreement or understanding, made in connection with, or 

12 in contemplation of, the termination of an inter partes re13 view under this section shall be in writing and a true copy 

14 of such agreement or understanding shall be filed in the 

15 Office before the termination of the inter partes review 

16 as between the parties. At the request of a party to the 

17 proceeding, the agreement or understanding shall be treat18 ed as business confidential information, shall be kept sepa19 rate from the file of the involved patents, and shall be 

20 made available only to Federal Government agencies on 

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

22 cause. 

23 ‘‘§ 318. Decision of the Board 

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

25 review is instituted and not dismissed under this chapter, 
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1 the Patent Trial and Appeal Board shall issue a final writ2 ten decision with respect to the patentability of any patent 

3 claim challenged by the petitioner and any new claim 

4 added under section 316(d). 

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

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

7 and the time for appeal has expired or any appeal has 

8 terminated, the Director shall issue and publish a certifi9 cate canceling any claim of the patent finally determined 

10 to be unpatentable, confirming any claim of the patent de11 termined to be patentable, and incorporating in the patent 

12 by operation of the certificate any new or amended claim 

13 determined to be patentable. 

14 ‘‘(c) INTERVENING RIGHTS.—Any proposed amended 

15 or new claim determined to be patentable and incorporated 

16 into a patent following an inter partes review under this 

17 chapter shall have the same effect as that specified in sec18 tion 252 for reissued patents on the right of any person 

19 who made, purchased, or used within the United States, 

20 or imported into the United States, anything patented by 

21 such proposed amended or new claim, or who made sub22 stantial preparation therefor, before the issuance of a cer23 tificate under subsection (b). 

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

25 shall make available to the public data describing the 
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1 length of time between the institution of, and the issuance 

2 of a final written decision under subsection (a) for, each 

3 inter partes review. 

4 ‘‘§ 319. Appeal 

5 ‘‘A party dissatisfied with the final written decision 

6 of the Patent Trial and Appeal Board under section 

7 318(a) may appeal the decision pursuant to sections 141 

8 through 144. Any party to the inter partes review shall 

9 have the right to be a party to the appeal.’’. 

10 (b) CONFORMING AMENDMENT.—The table of chap11 ters for part III of title 35, United States Code, is amend12 ed by striking the item relating to chapter 31 and insert13 ing the following: 

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

14 (c) REGULATIONS AND EFFECTIVE DATE.— 

15 (1) REGULATIONS.—The Director shall, not 

16 later than the date that is 1 year after the date of 

17 the enactment of this Act, issue regulations to carry 

18 out chapter 31 of title 35, United States Code, as 

19 amended by subsection (a) of this section. 

20 (2) APPLICABILITY.— 

21 (A) IN GENERAL.—The amendments made 

22 by subsection (a) shall take effect upon the ex23 piration of the 1-year period beginning on the 

24 date of the enactment of this Act and shall 
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1 apply to any patent issued before, on, or after 

2 that effective date. 

3 (B) GRADUATED IMPLEMENTATION.—The 

4 Director may impose a limit on the number of 

5 inter partes reviews that may be instituted 

6 under chapter 31 of title 35, United States 

7 Code, during each of the first 4 1-year periods 

8 in which the amendments made by subsection 

9 (a) are in effect, if such number in each year 

10 equals or exceeds the number of inter partes re11 examinations that are ordered under chapter 31 

12 of title 35, United States Code, in the last fiscal 

13 year ending before the effective date of the 

14 amendments made by subsection (a). 

15 (3) TRANSITION.— 

16 (A) IN GENERAL.—Chapter 31 of title 35, 

17 United States Code, is amended— 

18 (i) in section 312— 

19 (I) in subsection (a)— 

20 (aa) in the first sentence, by 

21 striking ‘‘a substantial new ques22 tion of patentability affecting any 

23 claim of the patent concerned is 

24 raised by the request,’’ and in25 serting ‘‘the information pre-
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1 sented in the request shows that 

2 there is a reasonable likelihood 

3 that the requester would prevail 

4 with respect to at least 1 of the 

5 claims challenged in the re6 quest,’’; and 

7 (bb) in the second sentence, 

8 by striking ‘‘The existence of a 

9 substantial new question of pat10 entability’’ and inserting ‘‘A 

11 showing that there is a reason12 able likelihood that the requester 

13 would prevail with respect to at 

14 least 1 of the claims challenged 

15 in the request’’; and 

16 (II) in subsection (c), in the sec17 ond sentence, by striking ‘‘no substan18 tial new question of patentability has 

19 been raised,’’ and inserting ‘‘the show20 ing required by subsection (a) has not 

21 been made,’’; and 

22 (ii) in section 313, by striking ‘‘a sub23 stantial new question of patentability af24 fecting a claim of the patent is raised’’ and 

25 inserting ‘‘it has been shown that there is 
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1 a reasonable likelihood that the requester 

2 would prevail with respect to at least 1 of 

3 the claims challenged in the request’’. 

4 (B) APPLICATION.—The amendments 

5 made by this paragraph— 

6 (i) shall take effect on the date of the 

7 enactment of this Act; and 

8 (ii) shall apply to requests for inter 

9 partes reexamination that are filed on or 

10 after such date of enactment, but before 

11 the effective date set forth in paragraph 

12 (2)(A) of this subsection. 

13 (C) CONTINUED APPLICABILITY OF PRIOR

14 PROVISIONS.—The provisions of chapter 31 of 

15 title 35, United States Code, as amended by 

16 this paragraph, shall continue to apply to re17 quests for inter partes reexamination that are 

18 filed before the effective date set forth in para19 graph (2)(A) as if subsection (a) had not been 

20 enacted. 

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

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

23 following: 

24 ‘‘CHAPTER 32—POST-GRANT REVIEW 

‘‘Sec. 

‘‘321. Post-grant review. 

‘‘322. Petitions. 
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‘‘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. 

1 ‘‘§ 321. Post-grant review 

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

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

4 file with the Office a petition to institute a post-grant re5 view of the patent. The Director shall establish, by regula6 tion, fees to be paid by the person requesting the review, 

7 in such amounts as the Director determines to be reason8 able, considering the aggregate costs of the post-grant re9 view. 

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

11 request to cancel as unpatentable 1 or more claims of a 

12 patent on any ground that could be raised under para13 graph (2) or (3) of section 282(b) (relating to invalidity 

14 of the patent or any claim). 

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

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

17 9 months after the date of the grant of the patent or of 

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

19 ‘‘§ 322. Petitions 

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

21 under section 321 may be considered only if— 
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1 ‘‘(1) the petition is accompanied by payment of 

2 the fee established by the Director under section 

3 321; 

4 ‘‘(2) the petition identifies all real parties in in5 terest; 

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

7 particularity, each claim challenged, the grounds on 

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

9 evidence that supports the grounds for the challenge 

10 to each claim, including— 

11 ‘‘(A) copies of patents and printed publica12 tions that the petitioner relies upon in support 

13 of the petition; and 

14 ‘‘(B) affidavits or declarations of sup15 porting evidence and opinions, if the petitioner 

16 relies on other factual evidence or on expert 

17 opinions; 

18 ‘‘(4) the petition provides such other informa19 tion as the Director may require by regulation; and 

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

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

22 (4) to the patent owner or, if applicable, the des23 ignated representative of the patent owner. 
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1 ‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 

2 after the receipt of a petition under section 321, the Direc3 tor shall make the petition available to the public. 

4 ‘‘§ 323. Preliminary response to petition 

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

6 321, the patent owner shall have the right to file a prelimi7 nary response to the petition, within a time period set by 

8 the Director, that sets forth reasons why no post-grant 

9 review should be instituted based upon the failure of the 

10 petition to meet any requirement of this chapter. 

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

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

13 a post-grant review to be instituted unless the Director 

14 determines that the information presented in the petition 

15 filed under section 321, if such information is not rebut16 ted, would demonstrate that it is more likely than not that 

17 at least 1 of the claims challenged in the petition is 

18 unpatentable. 

19 ‘‘(b) ADDITIONAL GROUNDS.—The determination re20 quired under subsection (a) may also be satisfied by a 

21 showing that the petition raises a novel or unsettled legal 

22 question that is important to other patents or patent ap23 plications. 

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

25 to institute a post-grant review under this chapter pursu-
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1 ant to a petition filed under section 321 within 3 months 

2 after— 

3 ‘‘(1) receiving a preliminary response to the pe4 tition under section 323; or 

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

6 the last date on which such response may be filed. 

7 ‘‘(d) NOTICE.—The Director shall notify the peti8 tioner and patent owner, in writing, of the Director’s de9 termination under subsection (a) or (b), and shall make 

10 such notice available to the public as soon as is prac11 ticable. Such notice shall include the date on which the 

12 review shall commence. 

13 ‘‘(e) NO APPEAL.—The determination by the Direc14 tor whether to institute a post-grant review under this sec15 tion shall be final and nonappealable. 

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

17 ‘‘(a) INFRINGER’S CIVIL ACTION.— 

18 ‘‘(1) POST-GRANT REVIEW BARRED BY CIVIL

19 ACTION.—A post-grant review may not be instituted 

20 under this chapter if, before the date on which the 

21 petition for such a review is filed, the petitioner or 

22 real party in interest filed a civil action challenging 

23 the validity of a claim of the patent. 

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

25 or real party in interest files a civil action chal-
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1 lenging the validity of a claim of the patent on or 

2 after the date on which the petitioner files a petition 

3 for post-grant review of the patent, that civil action 

4 shall be automatically stayed until either— 

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

6 lift the stay; 

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

8 counterclaim alleging that the petitioner or real 

9 party in interest has infringed the patent; or 

10 ‘‘(C) the petitioner or real party in interest 

11 moves the court to dismiss the civil action. 

12 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun13 terclaim challenging the validity of a claim of a pat14 ent does not constitute a civil action challenging the 

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

16 subsection. 

17 ‘‘(b) PRELIMINARY INJUNCTIONS.—If a civil action 

18 alleging infringement of a patent is filed within 3 months 

19 after the date on which the patent is granted, the court 

20 may not stay its consideration of the patent owner’s mo21 tion for a preliminary injunction against infringement of 

22 the patent on the basis that a petition for post-grant re23 view has been filed under this chapter or that such a post24 grant review has been instituted under this chapter. 
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1 ‘‘(c) JOINDER.—If more than 1 petition for a post2 grant review under this chapter is properly filed against 

3 the same patent and the Director determines that more 

4 than 1 of these petitions warrants the institution of a post5 grant review under section 324, the Director may consoli6 date such reviews into a single post-grant review. 

7 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

8 sections 135(a), 251, and 252, and chapter 30, during the 

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

10 another proceeding or matter involving the patent is be11 fore the Office, the Director may determine the manner 

12 in which the post-grant review or other proceeding or mat13 ter may proceed, including providing for the stay, transfer, 

14 consolidation, or termination of any such matter or pro15 ceeding. In determining whether to institute or order a 

16 proceeding under this chapter, chapter 30, or chapter 31, 

17 the Director may take into account whether, and reject 

18 the petition or request because, the same or substantially 

19 the same prior art or arguments previously were presented 

20 to the Office. 

21 ‘‘(e) ESTOPPEL.— 

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

23 petitioner in a post-grant review of a claim in a pat24 ent under this chapter that results in a final written 

25 decision under section 328(a), or the real party in 
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1 interest or privy of the petitioner, may not request 

2 or maintain a proceeding before the Office with re3 spect to that claim on any ground that the petitioner 

4 raised or reasonably could have raised during that 

5 post-grant review. 

6 ‘‘(2) CIVIL ACTIONS AND OTHER PRO7 CEEDINGS.—The petitioner in a post-grant review of 

8 a claim in a patent under this chapter that results 

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

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

11 may not assert either in a civil action arising in 

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

13 in a proceeding before the International Trade Com14 mission under section 337 of the Tariff Act of 1930 

15 that the claim is invalid on any ground that the peti16 tioner raised or reasonably could have raised during 

17 that post-grant review. 

18 ‘‘(f) REISSUE PATENTS.—A post-grant review may 

19 not be instituted under this chapter if the petition requests 

20 cancellation of a claim in a reissue patent that is identical 

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

22 which the reissue patent was issued, and the time limita23 tions in section 321(c) would bar filing a petition for a 

24 post-grant review for such original patent. 
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1 ‘‘§ 326. Conduct of post-grant review 

2 ‘‘(a) REGULATIONS.—The Director shall prescribe 

3 regulations— 

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

5 under this chapter shall be made available to the 

6 public, except that any petition or document filed 

7 with the intent that it be sealed shall, if accom8 panied by a motion to seal, be treated as sealed 

9 pending the outcome of the ruling on the motion; 

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

11 of sufficient grounds to institute a review under sub12 sections (a) and (b) of section 324; 

13 ‘‘(3) establishing procedures for the submission 

14 of supplemental information after the petition is 

15 filed; 

16 ‘‘(4) establishing and governing a post-grant re17 view under this chapter and the relationship of such 

18 review to other proceedings under this title; 

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

20 discovery of relevant evidence, including that such 

21 discovery shall be limited to evidence directly related 

22 to factual assertions advanced by either party in the 

23 proceeding; 

24 ‘‘(6) prescribing sanctions for abuse of dis25 covery, abuse of process, or any other improper use 

26 of the proceeding, such as to harass or to cause un-
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1 necessary delay or an unnecessary increase in the 

2 cost of the proceeding; 

3 ‘‘(7) providing for protective orders governing 

4 the exchange and submission of confidential infor5 mation; 

6 ‘‘(8) providing for the filing by the patent 

7 owner of a response to the petition under section 

8 323 after a post-grant review has been instituted, 

9 and requiring that the patent owner file with such 

10 response, through affidavits or declarations, any ad11 ditional factual evidence and expert opinions on 

12 which the patent owner relies in support of the re13 sponse; 

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

15 allowing the patent owner to move to amend the pat16 ent under subsection (d) to cancel a challenged claim 

17 or propose a reasonable number of substitute claims, 

18 and ensuring that any information submitted by the 

19 patent owner in support of any amendment entered 

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

21 as part of the prosecution history of the patent; 

22 ‘‘(10) providing either party with the right to 

23 an oral hearing as part of the proceeding; 

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

25 any post-grant review be issued not later than 1 
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1 year after the date on which the Director notices the 

2 institution of a proceeding under this chapter, except 

3 that the Director may, for good cause shown, extend 

4 the 1-year period by not more than 6 months, and 

5 may adjust the time periods in this paragraph in the 

6 case of joinder under section 325(c); and 

7 ‘‘(12) providing the petitioner with at least 1 

8 opportunity to file written comments within a time 

9 period established by the Director. 

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

11 under this section, the Director shall consider the effect 

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

13 the patent system, the efficient administration of the Of14 fice, and the ability of the Office to timely complete pro15 ceedings instituted under this chapter. 

16 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat17 ent Trial and Appeal Board shall, in accordance with sec18 tion 6, conduct each post-grant review instituted under 

19 this chapter. 

20 ‘‘(d) AMENDMENT OF THE PATENT.— 

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

22 instituted under this chapter, the patent owner may 

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

24 the following ways: 

25 ‘‘(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 mo4 tions to amend may be permitted upon the joint re5 quest of the petitioner and the patent owner to ma6 terially advance the settlement of a proceeding under 

7 section 327, or upon the request of the patent owner 

8 for good cause shown. 

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 a post-grant re13 view instituted under this chapter, the petitioner shall 

14 have the burden of proving a proposition of 

15 unpatentability by a preponderance of the evidence. 

16 ‘‘§ 327. Settlement 

17 ‘‘(a) IN GENERAL.—A post-grant 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 post-grant review is terminated with respect to a 

23 petitioner under this section, no estoppel under section 

24 325(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 post-grant review. If no pe2 titioner remains in the post-grant review, the Office may 

3 terminate the post-grant review or proceed to a final writ4 ten decision under section 328(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 a post-grant review 

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

11 such agreement or understanding shall be filed in the Of12 fice before the termination of the post-grant review as be13 tween the parties. At the request of a party to the pro14 ceeding, the agreement or understanding shall be treated 

15 as business confidential information, shall be kept sepa16 rate from the file of the involved patents, and shall be 

17 made available only to Federal Government agencies on 

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

19 cause. 

20 ‘‘§ 328. Decision of the Board 

21 ‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re22 view is instituted and not dismissed under this chapter, 

23 the Patent Trial and Appeal Board shall issue a final writ24 ten decision with respect to the patentability of any patent 
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1 claim challenged by the petitioner and any new claim 

2 added under section 326(d). 

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

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

5 and the time for appeal has expired or any appeal has 

6 terminated, the Director shall issue and publish a certifi7 cate canceling any claim of the patent finally determined 

8 to be unpatentable, confirming any claim of the patent de9 termined to be patentable, and incorporating in the patent 

10 by operation of the certificate any new or amended claim 

11 determined to be patentable. 

12 ‘‘(c) INTERVENING RIGHTS.—Any proposed amended 

13 or new claim determined to be patentable and incorporated 

14 into a patent following a post-grant review under this 

15 chapter shall have the same effect as that specified in sec16 tion 252 of this title for reissued patents on the right of 

17 any person who made, purchased, or used within the 

18 United States, or imported into the United States, any19 thing patented by such proposed amended or new claim, 

20 or who made substantial preparation therefor, before the 

21 issuance of a certificate under subsection (b). 

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

23 shall make available to the public data describing the 

24 length of time between the institution of, and the issuance 
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1 of a final written decision under subsection (a) for, each 

2 post-grant review. 

3 ‘‘§ 329. Appeal 

4 ‘‘A party dissatisfied with the final written decision 

5 of the Patent Trial and Appeal Board under section 

6 328(a) may appeal the decision pursuant to sections 141 

7 through 144. Any party to the post-grant review shall have 

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

9 (e) CONFORMING AMENDMENT.—The table of chap10 ters for part III of title 35, United States Code, is amend11 ed by adding at the end the following: 

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

12 (f) REGULATIONS AND EFFECTIVE DATE.— 

13 (1) REGULATIONS.—The Director shall, not 

14 later than the date that is 1 year after the date of 

15 the enactment of this Act, issue regulations to carry 

16 out chapter 32 of title 35, United States Code, as 

17 added by subsection (d) of this section. 

18 (2) APPLICABILITY.— 

19 (A) IN GENERAL.—The amendments made 

20 by subsection (d) shall take effect upon the ex21 piration of the 1-year period beginning on the 

22 date of the enactment of this Act and, except 

23 as provided in section 18 and in paragraph (3), 

24 shall apply only to patents described in section 

25 3(n)(1). 
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1 (B) LIMITATION.—The Director may im2 pose a limit on the number of post-grant re3 views that may be instituted under chapter 32 

4 of title 35, United States Code, during each of 

5 the first 4 1-year periods in which the amend6 ments made by subsection (d) are in effect. 

7 (3) PENDING INTERFERENCES.— 

8 (A) PROCEDURES IN GENERAL.—The Di9 rector shall determine, and include in the regu10 lations issued under paragraph (1), the proce11 dures under which an interference commenced 

12 before the effective date set forth in paragraph 

13 (2)(A) is to proceed, including whether such in14 terference— 

15 (i) is to be dismissed without preju16 dice to the filing of a petition for a post17 grant review under chapter 32 of title 35, 

18 United States Code; or 

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

20 been enacted. 

21 (B) PROCEEDINGS BY PATENT TRIAL AND

22 APPEAL BOARD.—For purposes of an inter23 ference that is commenced before the effective 

24 date set forth in paragraph (2)(A), the Director 

25 may deem the Patent Trial and Appeal Board 
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1 to be the Board of Patent Appeals and Inter2 ferences, and may allow the Patent Trial and 

3 Appeal Board to conduct any further pro4 ceedings in that interference. 

5 (C) APPEALS.—The authorization to ap6 peal or have remedy from derivation pro7 ceedings in sections 141(d) and 146 of title 35, 

8 United States Code, as amended by this Act, 

9 and the jurisdiction to entertain appeals from 

10 derivation proceedings in section 1295(a)(4)(A) 

11 of title 28, United States Code, as amended by 

12 this Act, shall be deemed to extend to any final 

13 decision in an interference that is commenced 

14 before the effective date set forth in paragraph 

15 (2)(A) of this subsection and that is not dis16 missed pursuant to this paragraph. 

17 (g) CITATION OF PRIOR ART AND WRITTEN STATE18 MENTS.— 

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

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

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

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

23 to the Office in writing— 

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

25 publications which that person believes to have a 
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1 bearing on the patentability of any claim of a par2 ticular patent; or 

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

4 proceeding before a Federal court or the Office in 

5 which the patent owner took a position on the scope 

6 of any claim of a particular patent. 

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

8 or written statements pursuant to subsection (a) explains 

9 in writing the pertinence and manner of applying the prior 

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

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

12 explanation thereof shall become a part of the official file 

13 of the patent. 

14 ‘‘(c) ADDITIONAL INFORMATION.—A party that sub15 mits a written statement pursuant to subsection (a)(2) 

16 shall include any other documents, pleadings, or evidence 

17 from the proceeding in which the statement was filed that 

18 addresses the written statement. 

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

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

21 submitted pursuant to subsection (c), shall not be consid22 ered by the Office for any purpose other than to determine 

23 the proper meaning of a patent claim in a proceeding that 

24 is ordered or instituted pursuant to section 304, 314, or 

25 324. If any such written statement or additional informa-
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1 tion is subject to an applicable protective order, such 

2 statement or information shall be redacted to exclude in3 formation that is subject to that order. 

4 ‘‘(e) CONFIDENTIALITY.—Upon the written request 

5 of the person citing prior art or written statements pursu6 ant to subsection (a), that person’s identity shall be ex7 cluded from the patent file and kept confidential.’’. 

8 (2) CONFORMING AMENDMENT.—The item re9 lating to section 301 in the table of sections for 

10 chapter 30 of title 35, United States Code, is 

11 amended to read as follows: 

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

12 (3) EFFECTIVE DATE.—The amendments made 

13 by this subsection shall take effect upon the expira14 tion of the 1-year period beginning on the date of 

15 the enactment of this Act and shall apply to any 

16 patent issued before, on, or after that effective date. 

17 (h) REEXAMINATION.— 

18 (1) DETERMINATION BY DIRECTOR.— 

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

20 35, United States Code, is amended by striking 

21 ‘‘section 301 of this title’’ and inserting ‘‘sec22 tion 301 or 302’’. 

23 (B) EFFECTIVE DATE.—The amendment 

24 made by this paragraph shall take effect upon 

25 the expiration of the 1-year period beginning on 
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1 the date of the enactment of this Act and shall 

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

3 that effective date. 

4 (2) APPEAL.— 

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

6 United States Code, is amended by striking 

7 ‘‘145’’ and inserting ‘‘144’’. 

8 (B) EFFECTIVE DATE.—The amendment 

9 made by this paragraph shall take effect on the 

10 date of the enactment of this Act and shall 

11 apply to any appeal of a reexamination before 

12 the Board of Patent Appeals and Interferences 

13 or the Patent Trial and Appeal Board that is 

14 pending on, or brought on or after, the date of 

15 the enactment of this Act. 

16 SEC. 7. PATENT TRIAL AND APPEAL BOARD. 

17 (a) COMPOSITION AND DUTIES.— 

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

19 States Code, is amended to read as follows: 

20 ‘‘§ 6. Patent Trial and Appeal Board 

21 ‘‘(a) IN GENERAL.—There shall be in the Office a 

22 Patent Trial and Appeal Board. The Director, the Deputy 

23 Director, the Commissioner for Patents, the Commissioner 

24 for Trademarks, and the administrative patent judges 

25 shall constitute the Patent Trial and Appeal Board. The 
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1 administrative patent judges shall be persons of competent 

2 legal knowledge and scientific ability who are appointed 

3 by the Secretary, in consultation with the Director. Any 

4 reference in any Federal law, Executive order, rule, regu5 lation, or delegation of authority, or any document of or 

6 pertaining to the Board of Patent Appeals and Inter7 ferences is deemed to refer to the Patent Trial and Appeal 

8 Board. 

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

10 shall— 

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

12 adverse decisions of examiners upon applications for 

13 patents pursuant to section 134(a); 

14 ‘‘(2) review appeals of reexaminations pursuant 

15 to section 134(b); 

16 ‘‘(3) conduct derivation proceedings pursuant to 

17 section 135; and 

18 ‘‘(4) conduct inter partes reviews and post19 grant reviews pursuant to chapters 31 and 32. 

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

21 proceeding, post-grant review, and inter partes review 

22 shall be heard by at least 3 members of the Patent Trial 

23 and Appeal Board, who shall be designated by the Direc24 tor. Only the Patent Trial and Appeal Board may grant 

25 rehearings. 
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1 ‘‘(d) TREATMENT OF PRIOR APPOINTMENTS.—The 

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

3 deem the appointment of an administrative patent judge 

4 who, before the date of the enactment of this subsection, 

5 held office pursuant to an appointment by the Director 

6 to take effect on the date on which the Director initially 

7 appointed the administrative patent judge. It shall be a 

8 defense to a challenge to the appointment of an adminis9 trative patent judge on the basis of the judge’s having 

10 been originally appointed by the Director that the admin11 istrative patent judge so appointed was acting as a de 

12 facto officer.’’. 

13 (2) CONFORMING AMENDMENT.—The item re14 lating to section 6 in the table of sections for chap15 ter 1 of title 35, United States Code, is amended to 

16 read as follows: 

‘‘6. Patent Trial and Appeal Board.’’. 

17 (b) ADMINISTRATIVE APPEALS.—Section 134 of title 

18 35, United States Code, is amended— 

19 (1) in subsection (b), by striking ‘‘any reexam20 ination proceeding’’ and inserting ‘‘a reexamina21 tion’’; and 

22 (2) by striking subsection (c). 

23 (c) CIRCUIT APPEALS.— 

24 (1) IN GENERAL.—Section 141 of title 35, 

25 United States Code, is amended to read as follows: 
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1 ‘‘§ 141. Appeal to Court of Appeals for the Federal 

2 Circuit 

3 ‘‘(a) EXAMINATIONS.—An applicant who is dissatis4 fied with the final decision in an appeal to the Patent Trial 

5 and Appeal Board under section 134(a) may appeal the 

6 Board’s decision to the United States Court of Appeals 

7 for the Federal Circuit. By filing such an appeal, the ap8 plicant waives his or her right to proceed under section 

9 145. 

10 ‘‘(b) REEXAMINATIONS.—A patent owner who is dis11 satisfied with the final decision in an appeal of a reexam12 ination to the Patent Trial and Appeal Board under sec13 tion 134(b) may appeal the Board’s decision only to the 

14 United States Court of Appeals for the Federal Circuit. 

15 ‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.— 

16 A party to an inter partes review or a post-grant review 

17 who is dissatisfied with the final written decision of the 

18 Patent Trial and Appeal Board under section 318(a) or 

19 328(a) (as the case may be) may appeal the Board’s deci20 sion only to the United States Court of Appeals for the 

21 Federal Circuit. 

22 ‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri23 vation proceeding who is dissatisfied with the final deci24 sion of the Patent Trial and Appeal Board in the pro25 ceeding may appeal the decision to the United States 

26 Court of Appeals for the Federal Circuit, but such appeal 
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1 shall be dismissed if any adverse party to such derivation 

2 proceeding, within 20 days after the appellant has filed 

3 notice of appeal in accordance with section 142, files no4 tice with the Director that the party elects to have all fur5 ther proceedings conducted as provided in section 146. If 

6 the appellant does not, within 30 days after the filing of 

7 such notice by the adverse party, file a civil action under 

8 section 146, the Board’s decision shall govern the further 

9 proceedings in the case.’’. 

10 (2) JURISDICTION.—Section 1295(a)(4)(A) of 

11 title 28, United States Code, is amended to read as 

12 follows: 

13 ‘‘(A) the Patent Trial and Appeal Board of 

14 the United States Patent and Trademark Office 

15 with respect to a patent application, derivation 

16 proceeding, reexamination, post-grant review, or 

17 inter partes review under title 35, at the in18 stance of a party who exercised that party’s 

19 right to participate in the applicable proceeding 

20 before or appeal to the Board, except that an 

21 applicant or a party to a derivation proceeding 

22 may also have remedy by civil action pursuant 

23 to section 145 or 146 of title 35; an appeal 

24 under this subparagraph of a decision of the 

25 Board with respect to an application or deriva-
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1 tion proceeding shall waive the right of such ap2 plicant or party to proceed under section 145 or 

3 146 of title 35;’’. 

4 (3) PROCEEDINGS ON APPEAL.—Section 143 of 

5 title 35, United States Code, is amended— 

6 (A) by striking the third sentence and in7 serting the following: ‘‘In an ex parte case, the 

8 Director shall submit to the court in writing the 

9 grounds for the decision of the Patent and 

10 Trademark Office, addressing all of the issues 

11 raised in the appeal. The Director shall have 

12 the right to intervene in an appeal from a deci13 sion entered by the Patent Trial and Appeal 

14 Board in a derivation proceeding under section 

15 135 or in an inter partes or post-grant review 

16 under chapter 31 or 32.’’; and 

17 (B) by striking the last sentence. 

18 (d) CONFORMING AMENDMENTS.— 

19 (1) ATOMIC ENERGY ACT OF 1954.—Section 

20 152 of the Atomic Energy Act of 1954 (42 U.S.C. 

21 2182) is amended in the third undesignated para22 graph— 

23 (A) by striking ‘‘Board of Patent Appeals 

24 and Interferences’’ each place it appears and 
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1 inserting ‘‘Patent Trial and Appeal Board’’; 

2 and 

3 (B) by inserting ‘‘and derivation’’ after 

4 ‘‘established for interference’’. 

5 (2) TITLE 51.—Section 20135 of title 51, 

6 United States Code, is amended— 

7 (A) in subsections (e) and (f), by striking 

8 ‘‘Board of Patent Appeals and Interferences’’ 

9 each place it appears and inserting ‘‘Patent 

10 Trial and Appeal Board’’; and 

11 (B) in subsection (e), by inserting ‘‘and 

12 derivation’’ after ‘‘established for interference’’. 

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

14 this section shall take effect upon the expiration of the 

15 1-year period beginning on the date of the enactment of 

16 this Act and shall apply to proceedings commenced on or 

17 after that effective date, except that— 

18 (1) the extension of jurisdiction to the United 

19 States Court of Appeals for the Federal Circuit to 

20 entertain appeals of decisions of the Patent Trial 

21 and Appeal Board in reexaminations under the 

22 amendment made by subsection (c)(2) shall be 

23 deemed to take effect on the date of the enactment 

24 of this Act and shall extend to any decision of the 

25 Board of Patent Appeals and Interferences with re-
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1 spect to a reexamination that is entered before, on, 

2 or after the date of the enactment of this Act; 

3 (2) the provisions of sections 6, 134, and 141 

4 of title 35, United States Code, as in effect on the 

5 day before the effective date of the amendments 

6 made by this section shall continue to apply to inter 

7 partes reexaminations that are requested under sec8 tion 311 of such title before such effective date; 

9 (3) the Patent Trial and Appeal Board may be 

10 deemed to be the Board of Patent Appeals and 

11 Interferences for purposes of appeals of inter partes 

12 reexaminations that are requested under section 311 

13 of title 35, United States Code, before the effective 

14 date of the amendments made by this section; and 

15 (4) the Director’s right under the fourth sen16 tence of section 143 of title 35, United States Code, 

17 as amended by subsection (c)(3) of this section, to 

18 intervene in an appeal from a decision entered by 

19 the Patent Trial and Appeal Board shall be deemed 

20 to extend to inter partes reexaminations that are re21 quested under section 311 of such title before the ef22 fective date of the amendments made by this section. 
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1 SEC. 8. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

2 (a) IN GENERAL.—Section 122 of title 35, United 

3 States Code, is amended by adding at the end the fol4 lowing: 

5 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR6 TIES.— 

7 ‘‘(1) IN GENERAL.—Any third party may sub8 mit for consideration and inclusion in the record of 

9 a patent application, any patent, published patent 

10 application, or other printed publication of potential 

11 relevance to the examination of the application, if 

12 such submission is made in writing before the earlier 

13 of— 

14 ‘‘(A) the date a notice of allowance under 

15 section 151 is given or mailed in the application 

16 for patent; or 

17 ‘‘(B) the later of— 

18 ‘‘(i) 6 months after the date on which 

19 the application for patent is first published 

20 under section 122 by the Office, or 

21 ‘‘(ii) the date of the first rejection 

22 under section 132 of any claim by the ex23 aminer during the examination of the ap24 plication for patent. 

25 ‘‘(2) OTHER REQUIREMENTS.—Any submission 

26 under paragraph (1) shall— 
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1 ‘‘(A) set forth a concise description of the 

2 asserted relevance of each submitted document; 

3 ‘‘(B) be accompanied by such fee as the 

4 Director may prescribe; and 

5 ‘‘(C) include a statement by the person 

6 making such submission affirming that the sub7 mission was made in compliance with this sec8 tion.’’. 

9 (b) EFFECTIVE DATE.—The amendments made by 

10 this section shall take effect upon the expiration of the 

11 1-year period beginning on the date of the enactment of 

12 this Act and shall apply to any patent application filed 

13 before, on, or after that effective date. 

14 SEC. 9. VENUE. 

15 (a) TECHNICAL AMENDMENTS RELATING TO

16 VENUE.—Sections 32, 145, 146, 154(b)(4)(A), and 293 

17 of title 35, United States Code, and section 21(b)(4) of 

18 the Trademark Act of 1946 (15 U.S.C. 1071(b)(4)), are 

19 each amended by striking ‘‘United States District Court 

20 for the District of Columbia’’ each place that term appears 

21 and inserting ‘‘United States District Court for the East22 ern District of Virginia’’. 

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

24 this section shall take effect on the date of the enactment 
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1 of this Act and shall apply to any civil action commenced 

2 on or after that date. 

3 SEC. 10. FEE SETTING AUTHORITY. 

4 (a) FEE SETTING.— 

5 (1) IN GENERAL.—The Director may set or ad6 just by rule any fee established, authorized, or 

7 charged under title 35, United States Code, or the 

8 Trademark Act of 1946 (15 U.S.C. 1051 et seq.), 

9 for any services performed by or materials furnished 

10 by, the Office, subject to paragraph (2). 

11 (2) FEES TO RECOVER COSTS.—Fees may be 

12 set or adjusted under paragraph (1) only to recover 

13 the aggregate estimated costs to the Office for proc14 essing, activities, services, and materials relating to 

15 patents (in the case of patent fees) and trademarks 

16 (in the case of trademark fees), including adminis17 trative costs of the Office with respect to such pat18 ent or trademark fees (as the case may be). 

19 (b) SMALL AND MICRO ENTITIES.—The fees set or 

20 adjusted under subsection (a) for filing, searching, exam21 ining, issuing, appealing, and maintaining patent applica22 tions and patents shall be reduced by 50 percent with re23 spect to the application of such fees to any small entity 

24 that qualifies for reduced fees under section 41(h)(1) of 

25 title 35, United States Code, and shall be reduced by 75 
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1 percent with respect to the application of such fees to any 

2 micro entity as defined in section 123 of that title (as 

3 added by subsection (g) of this section). 

4 (c) REDUCTION OF FEES IN CERTAIN FISCAL

5 YEARS.—In each fiscal year, the Director— 

6 (1) shall consult with the Patent Public Advi7 sory Committee and the Trademark Public Advisory 

8 Committee on the advisability of reducing any fees 

9 described in subsection (a); and 

10 (2) after the consultation required under para11 graph (1), may reduce such fees. 

12 (d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.— 

13 The Director shall— 

14 (1) not less than 45 days before publishing any 

15 proposed fee under subsection (a) in the Federal 

16 Register, submit the proposed fee to the Patent Pub17 lic Advisory Committee or the Trademark Public 

18 Advisory Committee, or both, as appropriate; 

19 (2)(A) provide the relevant advisory committee 

20 described in paragraph (1) a 30-day period following 

21 the submission of any proposed fee, in which to de22 liberate, consider, and comment on such proposal; 

23 (B) require that, during that 30-day period, the 

24 relevant advisory committee hold a public hearing 

25 relating to such proposal; and 
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1 (C) assist the relevant advisory committee in 

2 carrying out that public hearing, including by offer3 ing the use of the resources of the Office to notify 

4 and promote the hearing to the public and interested 

5 stakeholders; 

6 (3) require the relevant advisory committee to 

7 make available to the public a written report setting 

8 forth in detail the comments, advice, and rec9 ommendations of the committee regarding the pro10 posed fee; and 

11 (4) consider and analyze any comments, advice, 

12 or recommendations received from the relevant advi13 sory committee before setting or adjusting (as the 

14 case may be) the fee. 

15 (e) PUBLICATION IN THE FEDERAL REGISTER.— 

16 (1) PUBLICATION AND RATIONALE.—The Di17 rector shall— 

18 (A) publish any proposed fee change under 

19 this section in the Federal Register; 

20 (B) include, in such publication, the spe21 cific rationale and purpose for the proposal, in22 cluding the possible expectations or benefits re23 sulting from the proposed change; and 

24 (C) notify, through the Chair and Ranking 

25 Member of the Committees on the Judiciary of 
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1 the Senate and the House of Representatives, 

2 the Congress of the proposed change not later 

3 than the date on which the proposed change is 

4 published under subparagraph (A). 

5 (2) PUBLIC COMMENT PERIOD.—The Director 

6 shall, in the publication under paragraph (1), pro7 vide the public a period of not less than 45 days in 

8 which to submit comments on the proposed change 

9 in fees. 

10 (3) PUBLICATION OF FINAL RULE.—The final 

11 rule setting or adjusting a fee under this section 

12 shall be published in the Federal Register and in the 

13 Official Gazette of the Patent and Trademark Of14 fice. 

15 (4) CONGRESSIONAL COMMENT PERIOD.—A fee 

16 set or adjusted under subsection (a) may not become 

17 effective— 

18 (A) before the end of the 45-day period be19 ginning on the day after the date on which the 

20 Director publishes the final rule adjusting or 

21 setting the fee under paragraph (3); or 

22 (B) if a law is enacted disapproving such 

23 fee. 

24 (5) RULE OF CONSTRUCTION.—Rules pre25 scribed under this section shall not diminish— 
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1 (A) the rights of an applicant for a patent 

2 under title 35, United States Code, or for a 

3 mark under the Trademark Act of 1946; or 

4 (B) any rights under a ratified treaty. 

5 (f) RETENTION OF AUTHORITY.—The Director re6 tains the authority under subsection (a) to set or adjust 

7 fees only during such period as the Patent and Trademark 

8 Office remains an agency within the Department of Com9 merce. 

10 (g) MICRO ENTITY DEFINED.— 

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

12 United States Code, is amended by adding at the 

13 end the following new section: 

14 ‘‘§ 123. Micro entity defined 

15 ‘‘(a) IN GENERAL.—For purposes of this title, the 

16 term ‘micro entity’ means an applicant who makes a cer17 tification that the applicant— 

18 ‘‘(1) qualifies as a small entity, as defined in 

19 regulations issued by the Director; 

20 ‘‘(2) has not been named as an inventor on 

21 more than 4 previously filed patent applications, 

22 other than applications filed in another country, pro23 visional applications under section 111(b), or inter24 national applications filed under the treaty defined 
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1 in section 351(a) for which the basic national fee 

2 under section 41(a) was not paid; 

3 ‘‘(3) did not, in the calendar year preceding the 

4 calendar year in which the applicable fee is being 

5 paid, have a gross income, as defined in section 

6 61(a) of the Internal Revenue Code of 1986, exceed7 ing 3 times the median household income for that 

8 preceding calendar year, as most recently reported 

9 by the Bureau of the Census; and 

10 ‘‘(4) has not assigned, granted, or conveyed, 

11 and is not under an obligation by contract or law to 

12 assign, grant, or convey, a license or other ownership 

13 interest in the application concerned to an entity 

14 that, in the calendar year preceding the calendar 

15 year in which the applicable fee is being paid, had 

16 a gross income, as defined in section 61(a) of the In17 ternal Revenue Code of 1986, exceeding 3 times the 

18 median household income for that preceding cal19 endar year, as most recently reported by the Bureau 

20 of the Census. 

21 ‘‘(b) APPLICATIONS RESULTING FROM PRIOR EM22 PLOYMENT.—An applicant is not considered to be named 

23 on a previously filed application for purposes of subsection 

24 (a)(2) if the applicant has assigned, or is under an obliga25 tion by contract or law to assign, all ownership rights in 
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1 the application as the result of the applicant’s previous 

2 employment. 

3 ‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an 

4 applicant’s or entity’s gross income in the preceding cal5 endar year is not in United States dollars, the average 

6 currency exchange rate, as reported by the Internal Rev7 enue Service, during that calendar year shall be used to 

8 determine whether the applicant’s or entity’s gross income 

9 exceeds the threshold specified in paragraphs (3) or (4) 

10 of subsection (a). 

11 ‘‘(d) INSTITUTIONS OF HIGHER EDUCATION.—For 

12 purposes of this section, a micro entity shall include an 

13 applicant who certifies that— 

14 ‘‘(1) the applicant’s employer, from which the 

15 applicant obtains the majority of the applicant’s in16 come, is an institution of higher education as de17 fined in section 101(a) of the Higher Education Act 

18 of 1965 (20 U.S.C. 1001(a)); or 

19 ‘‘(2) the applicant has assigned, granted, con20 veyed, or is under an obligation by contract or law, 

21 to assign, grant, or convey, a license or other owner22 ship interest in the particular applications to such 

23 an institution of higher education. 

24 ‘‘(e) DIRECTOR’S AUTHORITY.—In addition to the 

25 limits imposed by this section, the Director may, in the 
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1 Director’s discretion, impose income limits, annual filing 

2 limits, or other limits on who may qualify as a micro entity 

3 pursuant to this section if the Director determines that 

4 such additional limits are reasonably necessary to avoid 

5 an undue impact on other patent applicants or owners or 

6 are otherwise reasonably necessary and appropriate. At 

7 least 3 months before any limits proposed to be imposed 

8 pursuant to this subsection take effect, the Director shall 

9 inform the Committee on the Judiciary of the House of 

10 Representatives and the Committee on the Judiciary of 

11 the Senate of any such proposed limits.’’. 

12 (2) CONFORMING AMENDMENT.—Chapter 11 of 

13 title 35, United States Code, is amended by adding 

14 at the end the following new item: 

‘‘123. Micro entity defined.’’. 

15 (h) ELECTRONIC FILING INCENTIVE.— 

16 (1) IN GENERAL.—Notwithstanding any other 

17 provision of this section, an additional fee of $400 

18 shall be established for each application for an origi19 nal patent, except for a design, plant, or provisional 

20 application, that is not filed by electronic means as 

21 prescribed by the Director. The fee established by 

22 this subsection shall be reduced by 50 percent for 

23 small entities that qualify for reduced fees under 

24 section 41(h)(1) of title 35, United States Code. All 

25 fees paid under this subsection shall be deposited in 
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1 the Treasury as an offsetting receipt that shall not 

2 be available for obligation or expenditure. 

3 (2) EFFECTIVE DATE.—This subsection shall 

4 take effect upon the expiration of the 60-day period 

5 beginning on the date of the enactment of this Act. 

6 (i) EFFECTIVE DATE; SUNSET.— 

7 (1) EFFECTIVE DATE.—Except as provided in 

8 subsection (h), this section and the amendments 

9 made by this section shall take effect on the date of 

10 the enactment of this Act. 

11 (2) SUNSET.—The authority of the Director to 

12 set or adjust any fee under subsection (a) shall ter13 minate upon the expiration of the 7-year period be14 ginning on the date of the enactment of this Act. 

15 (3) PRIOR REGULATIONS NOT AFFECTED.—The 

16 termination of authority under this subsection shall 

17 not affect any regulations issued under this section 

18 before the effective date of such termination or any 

19 rulemaking proceeding for the issuance of regula20 tions under this section that is pending on such 

21 date. 

22 SEC. 11. FEES FOR PATENT SERVICES. 

23 (a) GENERAL PATENT SERVICES.—Subsections (a) 

24 and (b) of section 41 of title 35, United States Code, are 

25 amended to read as follows: 
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1 ‘‘(a) GENERAL FEES.—The Director shall charge the 

2 following fees: 

3 ‘‘(1) FILING AND BASIC NATIONAL FEES.— 

4 ‘‘(A) On filing each application for an 

5 original patent, except for design, plant, or pro6 visional applications, $330. 

7 ‘‘(B) On filing each application for an 

8 original design patent, $220. 

9 ‘‘(C) On filing each application for an 

10 original plant patent, $220. 

11 ‘‘(D) On filing each provisional application 

12 for an original patent, $220. 

13 ‘‘(E) On filing each application for the re14 issue of a patent, $330. 

15 ‘‘(F) The basic national fee for each inter16 national application filed under the treaty de17 fined in section 351(a) entering the national 

18 stage under section 371, $330. 

19 ‘‘(G) In addition, excluding any sequence 

20 listing or computer program listing filed in an 

21 electronic medium as prescribed by the Direc22 tor, for any application the specification and 

23 drawings of which exceed 100 sheets of paper 

24 (or equivalent as prescribed by the Director if 

25 filed in an electronic medium), $270 for each 
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1 additional 50 sheets of paper (or equivalent as 

2 prescribed by the Director if filed in an elec3 tronic medium) or fraction thereof. 

4 ‘‘(2) EXCESS CLAIMS FEES.— 

5 ‘‘(A) IN GENERAL.—In addition to the fee 

6 specified in paragraph (1)— 

7 ‘‘(i) on filing or on presentation at 

8 any other time, $220 for each claim in 

9 independent form in excess of 3; 

10 ‘‘(ii) on filing or on presentation at 

11 any other time, $52 for each claim (wheth12 er dependent or independent) in excess of 

13 20; and 

14 ‘‘(iii) for each application containing a 

15 multiple dependent claim, $390. 

16 ‘‘(B) MULTIPLE DEPENDENT CLAIMS.— 

17 For the purpose of computing fees under sub18 paragraph (A), a multiple dependent claim re19 ferred to in section 112 or any claim depending 

20 therefrom shall be considered as separate de21 pendent claims in accordance with the number 

22 of claims to which reference is made. 

23 ‘‘(C) REFUNDS; ERRORS IN PAYMENT.— 

24 The Director may by regulation provide for a 

25 refund of any part of the fee specified in sub-
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1 paragraph (A) for any claim that is canceled 

2 before an examination on the merits, as pre3 scribed by the Director, has been made of the 

4 application under section 131. Errors in pay5 ment of the additional fees under this para6 graph may be rectified in accordance with regu7 lations prescribed by the Director. 

8 ‘‘(3) EXAMINATION FEES.— 

9 ‘‘(A) IN GENERAL.— 

10 ‘‘(i) For examination of each applica11 tion for an original patent, except for de12 sign, plant, provisional, or international 

13 applications, $220. 

14 ‘‘(ii) For examination of each applica15 tion for an original design patent, $140. 

16 ‘‘(iii) For examination of each applica17 tion for an original plant patent, $170. 

18 ‘‘(iv) For examination of the national 

19 stage of each international application, 

20 $220. 

21 ‘‘(v) For examination of each applica22 tion for the reissue of a patent, $650. 

23 ‘‘(B) APPLICABILITY OF OTHER FEE PRO24 VISIONS.—The provisions of paragraphs (3) and 

25 (4) of section 111(a) relating to the payment of 
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1 the fee for filing the application shall apply to 

2 the payment of the fee specified in subpara3 graph (A) with respect to an application filed 

4 under section 111(a). The provisions of section 

5 371(d) relating to the payment of the national 

6 fee shall apply to the payment of the fee speci7 fied in subparagraph (A) with respect to an 

8 international application. 

9 ‘‘(4) ISSUE FEES.— 

10 ‘‘(A) For issuing each original patent, ex11 cept for design or plant patents, $1,510. 

12 ‘‘(B) For issuing each original design pat13 ent, $860. 

14 ‘‘(C) For issuing each original plant pat15 ent, $1,190. 

16 ‘‘(D) For issuing each reissue patent, 

17 $1,510. 

18 ‘‘(5) DISCLAIMER FEE.—On filing each dis19 claimer, $140. 

20 ‘‘(6) APPEAL FEES.— 

21 ‘‘(A) On filing an appeal from the exam22 iner to the Patent Trial and Appeal Board, 

23 $540. 

24 ‘‘(B) In addition, on filing a brief in sup25 port of the appeal, $540, and on requesting an 
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1 oral hearing in the appeal before the Patent 

2 Trial and Appeal Board, $1,080. 

3 ‘‘(7) REVIVAL FEES.—On filing each petition 

4 for the revival of an unintentionally abandoned ap5 plication for a patent, for the unintentionally delayed 

6 payment of the fee for issuing each patent, or for an 

7 unintentionally delayed response by the patent owner 

8 in any reexamination proceeding, $1,620, unless the 

9 petition is filed under section 133 or 151, in which 

10 case the fee shall be $540. 

11 ‘‘(8) EXTENSION FEES.—For petitions for 1- 

12 month extensions of time to take actions required by 

13 the Director in an application— 

14 ‘‘(A) on filing a first petition, $130; 

15 ‘‘(B) on filing a second petition, $360; and 

16 ‘‘(C) on filing a third or subsequent peti17 tion, $620. 

18 ‘‘(b) MAINTENANCE FEES.— 

19 ‘‘(1) IN GENERAL.—The Director shall charge 

20 the following fees for maintaining in force all pat21 ents based on applications filed on or after Decem22 ber 12, 1980: 

23 ‘‘(A) Three years and 6 months after 

24 grant, $980. 
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1 ‘‘(B) Seven years and 6 months after 

2 grant, $2,480. 

3 ‘‘(C) Eleven years and 6 months after 

4 grant, $4,110. 

5 ‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay6 ment of the applicable maintenance fee under para7 graph (1) is received in the Office on or before the 

8 date the fee is due or within a grace period of 6 

9 months thereafter, the patent shall expire as of the 

10 end of such grace period. The Director may require 

11 the payment of a surcharge as a condition of accept12 ing within such 6-month grace period the payment 

13 of an applicable maintenance fee. 

14 ‘‘(3) NO MAINTENANCE FEE FOR DESIGN OR

15 PLANT PATENT.—No fee may be established for 

16 maintaining a design or plant patent in force.’’. 

17 (b) DELAYS IN PAYMENT.—Subsection (c) of section 

18 41 of title 35, United States Code, is amended— 

19 (1) by striking ‘‘(c)(1) The Director’’ and in20 serting: 

21 ‘‘(c) DELAYS IN PAYMENT OF MAINTENANCE

22 FEES.— 

23 ‘‘(1) ACCEPTANCE.—The Director’’; and 

24 (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 sec4 tion 41 of title 35, United States Code, is amended to 

5 read as 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 

10 (B) for the search of each application for a pat11 ent, except for provisional applications. The Di12 rector shall adjust the fees charged under this 

13 paragraph to ensure that the fees recover an 

14 amount not to exceed the estimated average 

15 cost to the Office of searching applications for 

16 patent by Office personnel. 

17 ‘‘(B) SPECIFIC FEES.—The fees referred 

18 to in subparagraph (A) are— 

19 ‘‘(i) $540 for each application for an 

20 original patent, except for design, plant, 

21 provisional, or international applications; 

22 ‘‘(ii) $100 for each application for an 

23 original design patent; 

24 ‘‘(iii) $330 for each application for an 

25 original plant patent; 
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1 ‘‘(iv) $540 for the national stage of 

2 each international application; and 

3 ‘‘(v) $540 for each application for the 

4 reissue of a patent. 

5 ‘‘(C) APPLICABILITY OF OTHER PROVI6 SIONS.—The provisions of paragraphs (3) and 

7 (4) of section 111(a) relating to the payment of 

8 the fee for filing the application shall apply to 

9 the payment of the fee specified in this para10 graph with respect to an application filed under 

11 section 111(a). The provisions of section 371(d) 

12 relating to the payment of the national fee shall 

13 apply to the payment of the fee specified in this 

14 paragraph with respect to an international ap15 plication. 

16 ‘‘(D) REFUNDS.—The Director may by 

17 regulation provide for a refund of any part of 

18 the fee specified in this paragraph for any ap19 plicant who files a written declaration of ex20 press abandonment as prescribed by the Direc21 tor before an examination has been made of the 

22 application under section 131. 

23 ‘‘(2) OTHER FEES.— 

24 ‘‘(A) IN GENERAL.—The Director shall es25 tablish fees for all other processing, services, or 
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1 materials relating to patents not specified in 

2 this section to recover the estimated average 

3 cost to the Office of such processing, services, 

4 or materials, except that the Director shall 

5 charge the following fees for the following serv6 ices: 

7 ‘‘(i) For recording a document affect8 ing title, $40 per property. 

9 ‘‘(ii) For each photocopy, $.25 per 

10 page. 

11 ‘‘(iii) For each black and white copy 

12 of a patent, $3. 

13 ‘‘(B) COPIES FOR LIBRARIES.—The yearly 

14 fee for providing a library specified in section 

15 12 with uncertified printed copies of the speci16 fications and drawings for all patents in that 

17 year shall be $50.’’. 

18 (d) FEES FOR SMALL ENTITIES.—Subsection (h) of 

19 section 41 of title 35, United States Code, is amended to 

20 read as follows: 

21 ‘‘(h) FEES FOR SMALL ENTITIES.— 

22 ‘‘(1) REDUCTIONS IN FEES.—Subject to para23 graph (3), fees charged under subsections (a), (b), 

24 and (d)(1) shall be reduced by 50 percent with re25 spect to their application to any small business con-
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1 cern as defined under section 3 of the Small Busi2 ness Act, and to any independent inventor or non3 profit organization as defined in regulations issued 

4 by the Director. 

5 ‘‘(2) SURCHARGES AND OTHER FEES.—With re6 spect to its application to any entity described in 

7 paragraph (1), any surcharge or fee charged under 

8 subsection (c) or (d) shall not be higher than the 

9 surcharge or fee required of any other entity under 

10 the same or substantially similar circumstances. 

11 ‘‘(3) REDUCTION FOR ELECTRONIC FILING.— 

12 The fee charged under subsection (a)(1)(A) shall be 

13 reduced by 75 percent with respect to its application 

14 to any entity to which paragraph (1) applies, if the 

15 application is filed by electronic means as prescribed 

16 by the Director.’’. 

17 (e) TECHNICAL AMENDMENTS.—Section 41 of title 

18 35, United States Code, is amended— 

19 (1) in subsection (e), in the first sentence, by 

20 striking ‘‘The Director’’ and inserting ‘‘WAIVER OF

21 FEES; COPIES REGARDING NOTICE.—The Direc22 tor’’; 

23 (2) in subsection (f), by striking ‘‘The fees’’ 

24 and inserting ‘‘ADJUSTMENT OF FEES.—The fees’’; 

25 (3) by repealing subsection (g); and 
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1 (4) in subsection (i)— 

2 (A) by striking ‘‘(i)(1) The Director’’ and 

3 inserting the following: 

4 ‘‘(i) ELECTRONIC PATENT AND TRADEMARK

5 DATA.— 

6 ‘‘(1) MAINTENANCE OF COLLECTIONS.—The 

7 Director’’; 

8 (B) by striking ‘‘(2) The Director’’ and in9 serting the following: 

10 ‘‘(2) AVAILABILITY OF AUTOMATED SEARCH

11 SYSTEMS.—The Director’’; 

12 (C) by striking ‘‘(3) The Director’’ and in13 serting the following: 

14 ‘‘(3) ACCESS FEES.—The Director’’; and 

15 (D) by striking ‘‘(4) The Director’’ and in16 serting the following: 

17 ‘‘(4) ANNUAL REPORT TO CONGRESS.—The Di18 rector’’. 

19 (f) ADJUSTMENT OF TRADEMARK FEES.—Section 

20 802(a) of division B of the Consolidated Appropriations 

21 Act, 2005 (Public Law 108–447) is amended— 

22 (1) in the first sentence, by striking ‘‘During 

23 fiscal years 2005, 2006, and 2007,’’, and inserting 

24 ‘‘Until such time as the Director sets or adjusts the 

25 fees otherwise,’’; and 
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1 (2) in the second sentence, by striking ‘‘During 

2 fiscal years 2005, 2006, and 2007, the’’ and insert3 ing ‘‘The’’. 

4 (g) EFFECTIVE DATE, APPLICABILITY, AND TRANSI5 TION PROVISIONS.—Section 803(a) of division B of the 

6 Consolidated Appropriations Act, 2005 (Public Law 108– 

7 447) is amended by striking ‘‘and shall apply only with 

8 respect to the remaining portion of fiscal year 2005 and 

9 fiscal year 2006’’. 

10 (h) PRIORITIZED EXAMINATION FEE.— 

11 (1) IN GENERAL.— 

12 (A) FEE.— 

13 (i) PRIORITIZED EXAMINATION

14 FEE.—A fee of $4,800 shall be established 

15 for filing a request, pursuant to section 

16 2(b)(2)(G) of title 35, United States Code, 

17 for prioritized examination of a nonprovi18 sional application for an original utility or 

19 plant patent. 

20 (ii) ADDITIONAL FEES.—In addition 

21 to the prioritized examination fee under 

22 clause (i), the fees due on an application 

23 for which prioritized examination is being 

24 sought are the filing, search, and examina25 tion fees (including any applicable excess 
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1 claims and application size fees), proc2 essing fee, and publication fee for that ap3 plication. 

4 (B) REGULATIONS; LIMITATIONS.— 

5 (i) REGULATIONS.—The Director may 

6 by regulation prescribe conditions for ac7 ceptance of a request under subparagraph 

8 (A) and a limit on the number of filings 

9 for prioritized examination that may be ac10 cepted. 

11 (ii) LIMITATION ON CLAIMS.— Until 

12 regulations are prescribed under clause (i), 

13 no application for which prioritized exam14 ination is requested may contain or be 

15 amended to contain more than 4 inde16 pendent claims or more than 30 total 

17 claims. 

18 (iii) LIMITATION ON TOTAL NUMBER

19 OF REQUESTS.—The Director may not ac20 cept in any fiscal year more than 10,000 

21 requests for prioritization until regulations 

22 are prescribed under this subparagraph 

23 setting another limit. 

24 (2) REDUCTION IN FEES FOR SMALL ENTI25 TIES.—The Director shall reduce fees for providing 
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1 prioritized examination of nonprovisional applica2 tions for original utility and plant patents by 50 per3 cent for small entities that qualify for reduced fees 

4 under section 41(h)(1) of title 35, United States 

5 Code. 

6 (3) DEPOSIT OF FEES.—All fees paid under 

7 this subsection shall be credited to the United States 

8 Patent and Trademark Office Appropriation Ac9 count, shall remain available until expended, and 

10 may be used only for the purposes specified in sec11 tion 42(c)(3)(A) of title 35, United States Code. 

12 (4) EFFECTIVE DATE AND TERMINATION.— 

13 (A) EFFECTIVE DATE.—This subsection 

14 shall take effect on the date that is 10 days 

15 after the date of the enactment of this Act. 

16 (B) TERMINATION.—The fee imposed 

17 under paragraph (1)(A)(i), and the reduced fee 

18 under paragraph (2), shall terminate on the ef19 fective date of the setting or adjustment of the 

20 fee under paragraph (1)(A)(i) pursuant to the 

21 exercise of the authority under section 10 for 

22 the first time with respect to that fee. 

23 (i) APPROPRIATION ACCOUNT TRANSITION FEES.— 

24 (1) SURCHARGE.— 
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1 (A) IN GENERAL.—There shall be a sur2 charge of 15 percent, rounded by standard 

3 arithmetic rules, on all fees charged or author4 ized by subsections (a), (b), and (d)(1) of sec5 tion 41, and section 132(b), of title 35, United 

6 States Code. Any surcharge imposed under this 

7 subsection is, and shall be construed to be, sep8 arate from and in addition to any other sur9 charge imposed under this Act or any other 

10 provision of law. 

11 (B) DEPOSIT OF AMOUNTS.—Amounts col12 lected pursuant to the surcharge imposed under 

13 subparagraph (A) shall be credited to the 

14 United States Patent and Trademark Appro15 priation Account, shall remain available until 

16 expended, and may be used only for the pur17 poses specified in section 42(c)(3)(A) of title 

18 35, United States Code. 

19 (2) EFFECTIVE DATE AND TERMINATION OF

20 SURCHARGE.—The surcharge provided for in para21 graph (1)— 

22 (A) shall take effect on the date that is 10 

23 days after the date of the enactment of this 

24 Act; and 
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1 (B) shall terminate, with respect to a fee 

2 to which paragraph (1)(A) applies, on the effec3 tive date of the setting or adjustment of that 

4 fee pursuant to the exercise of the authority 

5 under section 10 for the first time with respect 

6 to that fee. 

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

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

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

10 of this Act. 

11 SEC. 12. SUPPLEMENTAL EXAMINATION. 

12 (a) IN GENERAL.—Chapter 25 of title 35, United 

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

15 ‘‘§ 257. Supplemental examinations to consider, re16 consider, or correct information 

17 ‘‘(a) REQUEST FOR SUPPLEMENTAL EXAMINA18 TION.—A patent owner may request supplemental exam19 ination of a patent in the Office to consider, reconsider, 

20 or correct information believed to be relevant to the pat21 ent, in accordance with such requirements as the Director 

22 may establish. Within 3 months after the date a request 

23 for supplemental examination meeting the requirements of 

24 this section is received, the Director shall conduct the sup25 plemental examination and shall conclude such examina-
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1 tion by issuing a certificate indicating whether the infor2 mation presented in the request raises a substantial new 

3 question of patentability. 

4 ‘‘(b) REEXAMINATION ORDERED.—If the certificate 

5 issued under subsection (a) indicates that a substantial 

6 new question of patentability is raised by 1 or more items 

7 of information in the request, the Director shall order re8 examination of the patent. The reexamination shall be 

9 conducted according to procedures established by chapter 

10 30, except that the patent owner shall not have the right 

11 to file a statement pursuant to section 304. During the 

12 reexamination, the Director shall address each substantial 

13 new question of patentability identified during the supple14 mental examination, notwithstanding the limitations in 

15 chapter 30 relating to patents and printed publication or 

16 any other provision 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 ex22 amination of the patent if the information was con23 sidered, reconsidered, or corrected during a supple24 mental examination of the patent. The making of a 

25 request under subsection (a), or the absence thereof, 
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1 shall not be relevant to enforceability of the patent 

2 under section 282. 

3 ‘‘(2) EXCEPTIONS.— 

4 ‘‘(A) PRIOR ALLEGATIONS.—Paragraph 

5 (1) shall not apply to an allegation pled with 

6 particularity in a civil action, or set forth with 

7 particularity 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 

11 a 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.— 

15 In an action brought under section 337(a) of 

16 the Tariff Act of 1930 (19 U.S.C. 1337(a)), or 

17 section 281 of this title, paragraph (1) shall not 

18 apply to any defense raised in the action that 

19 is based upon information that was considered, 

20 reconsidered, or corrected pursuant to a supple21 mental examination request under subsection 

22 (a), unless the supplemental examination, and 

23 any reexamination ordered pursuant to the re24 quest, are concluded before the date on which 

25 the action is brought. 
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1 ‘‘(d) FEES AND REGULATIONS.— 

2 ‘‘(1) FEES.—The Director shall, by regulation, 

3 establish fees for the submission of a request for 

4 supplemental examination of a patent, and to con5 sider each item of information submitted in the re6 quest. If reexamination is ordered under subsection 

7 (b), fees established and applicable to ex parte reex8 amination proceedings under chapter 30 shall be 

9 paid, in addition to fees applicable to supplemental 

10 examination. 

11 ‘‘(2) REGULATIONS.—The Director shall issue 

12 regulations governing the form, content, and other 

13 requirements of requests for supplemental examina14 tion, and establishing procedures for reviewing infor15 mation submitted in such requests. 

16 ‘‘(e) FRAUD.—If the Director becomes aware, during 

17 the course of a supplemental examination or reexamina18 tion proceeding ordered under this section, that a material 

19 fraud on the Office may have been committed in connec20 tion with the patent that is the subject of the supplemental 

21 examination, then in addition to any other actions the Di22 rector is authorized to take, including the cancellation of 

23 any claims found to be invalid under section 307 as a re24 sult of a reexamination ordered under this section, the Di25 rector shall also refer the matter to the Attorney General 
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1 for such further action as the Attorney General may deem 

2 appropriate. Any such referral shall be treated as con3 fidential, shall not be included in the file of the patent, 

4 and shall not be disclosed to the public unless the United 

5 States charges a person with a criminal offense in connec6 tion with such referral. 

7 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec8 tion shall be construed— 

9 ‘‘(1) to preclude the imposition of sanctions 

10 based upon criminal or antitrust laws (including sec11 tion 1001(a) of title 18, the first section of the Clay12 ton Act, and section 5 of the Federal Trade Com13 mission Act to the extent that section relates to un14 fair methods of competition); 

15 ‘‘(2) to limit the authority of the Director to in16 vestigate issues of possible misconduct and impose 

17 sanctions for misconduct in connection with matters 

18 or proceedings before the Office; or 

19 ‘‘(3) to limit the authority of the Director to 

20 issue regulations under chapter 3 relating to sanc21 tions for misconduct by representatives practicing 

22 before the Office.’’. 

23 (b) CONFORMING AMENDMENT.—The table of sec24 tions for chapter 25 of title 35, United States Code, is 

25 amended by adding at the end the following new item: 
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‘‘257. Supplemental examinations to consider, reconsider, or correct information.’’. 

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

2 this section shall take effect upon the expiration of the 

3 1-year period beginning on the date of the enactment of 

4 this Act and shall apply to any patent issued before, on, 

5 or after that effective date. 

6 SEC. 13. FUNDING AGREEMENTS. 

7 (a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 

8 35, United States Code, is amended— 

9 (1) by striking ‘‘75 percent’’ and inserting ‘‘15 

10 percent’’; 

11 (2) by striking ‘‘25 percent’’ and inserting ‘‘85 

12 percent’’; and 

13 (3) by striking ‘‘as described above in this 

14 clause (D);’’ and inserting ‘‘described above in this 

15 clause;’’. 

16 (b) EFFECTIVE DATE.—The amendments made by 

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

18 of this Act and shall apply to any patent issued before, 

19 on, or after that date. 

20 SEC. 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR 

21 ART. 

22 (a) IN GENERAL.—For purposes of evaluating an in23 vention under section 102 or 103 of title 35, United States 

24 Code, any strategy for reducing, avoiding, or deferring tax 
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1 liability, whether known or unknown at the time of the 

2 invention or application for patent, shall be deemed insuf3 ficient to differentiate a claimed invention from the prior 

4 art. 

5 (b) DEFINITION.—For purposes of this section, the 

6 term ‘‘tax liability’’ refers to any liability for a tax under 

7 any Federal, State, or local law, or the law of any foreign 

8 jurisdiction, including any statute, rule, regulation, or or9 dinance that levies, imposes, or assesses such tax liability. 

10 (c) EXCLUSIONS.—This section does not apply to 

11 that part of an invention that— 

12 (1) is a method, apparatus, technology, com13 puter program product, or system, that is used sole14 ly for preparing a tax or information return or other 

15 tax filing, including one that records, transmits, 

16 transfers, or organizes data related to such filing; or 

17 (2) is a method, apparatus, technology, com18 puter program product, or system used solely for fi19 nancial management, to the extent that it is sever20 able from any tax strategy or does not limit the use 

21 of any tax strategy by any taxpayer or tax advisor. 

22 (d) RULE OF CONSTRUCTION.—Nothing in this sec23 tion shall be construed to imply that other business meth24 ods are patentable or that other business method patents 

25 are valid. 
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1 (e) EFFECTIVE DATE; APPLICABILITY.—This section 

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

3 and shall apply to any patent application that is pending 

4 on, or filed on or after, that date, and to any patent that 

5 is issued on or after that date. 

6 SEC. 15. BEST MODE REQUIREMENT. 

7 (a) IN GENERAL.—Section 282 of title 35, United 

8 States Code, is amended in the second undesignated para9 graph by striking paragraph (3) and inserting the fol10 lowing: 

11 ‘‘(3) Invalidity of the patent or any claim in 

12 suit for failure to comply with— 

13 ‘‘(A) any requirement of section 112, ex14 cept that the failure to disclose the best mode 

15 shall not be a basis on which any claim of a 

16 patent may be canceled or held invalid or other17 wise unenforceable; or 

18 ‘‘(B) any requirement of section 251.’’. 

19 (b) CONFORMING AMENDMENT.—Sections 119(e)(1) 

20 and 120 of title 35, United States Code, are each amended 

21 by striking ‘‘the first paragraph of section 112 of this 

22 title’’ and inserting ‘‘section 112(a) (other than the re23 quirement to disclose the best mode)’’. 

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

25 this section shall take effect upon the date of the enact-
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1 ment of this Act and shall apply to proceedings com2 menced on or after that date. 

3 SEC. 16. MARKING. 

4 (a) VIRTUAL MARKING.— 

5 (1) IN GENERAL.—Section 287(a) of title 35, 

6 United States Code, is amended by striking ‘‘or 

7 when,’’ and inserting ‘‘or by fixing thereon the word 

8 ‘patent’ or the abbreviation ‘pat.’ together with an 

9 address of a posting on the Internet, accessible to 

10 the public without charge for accessing the address, 

11 that associates the patented article with the number 

12 of the patent, or when,’’. 

13 (2) EFFECTIVE DATE.—The amendment made 

14 by this subsection shall apply to any case that is 

15 pending on, or commenced on or after, the date of 

16 the enactment of this Act. 

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

18 3 years after the date of the enactment of this Act, 

19 the Director shall submit a report to Congress that 

20 provides— 

21 (A) an analysis of the effectiveness of ‘‘vir22 tual marking’’, as provided in the amendment 

23 made by paragraph (1) of this subsection, as an 

24 alternative to the physical marking of articles; 
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1 (B) an analysis of whether such virtual 

2 marking has limited or improved the ability of 

3 the general public to access information about 

4 patents; 

5 (C) an analysis of the legal issues, if any, 

6 that arise from such virtual marking; and 

7 (D) an analysis of the deficiencies, if any, 

8 of such virtual marking. 

9 (b) FALSE MARKING.— 

10 (1) CIVIL PENALTY.—Section 292(a) of title 

11 35, United States, Code, is amended by adding at 

12 the end the following: ‘‘Only the United States may 

13 sue for the penalty authorized by this subsection.’’. 

14 (2) CIVIL ACTION FOR DAMAGES.—Subsection 

15 (b) of section 292 of title 35, United States Code, 

16 is amended to read as follows: 

17 ‘‘(b) A person who has suffered a competitive injury 

18 as a result of a violation of this section may file a civil 

19 action in a district court of the United States for recovery 

20 of damages adequate to compensate for the injury.’’. 

21 (3) EXPIRED PATENTS.—Section 292 of title 

22 35, United States Code, is amended by adding at 

23 the end the following: 

24 ‘‘(c) The marking of a product, in a manner described 

25 in subsection (a), with matter relating to a patent that 
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1 covered that product but has expired is not a violation of 

2 this section.’’. 

3 (4) EFFECTIVE DATE.—The amendments made 

4 by this subsection shall apply to all cases, without 

5 exception, that are pending on, or commenced on or 

6 after, the date of the enactment of this Act. 

7 SEC. 17. ADVICE OF COUNSEL. 

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

9 States Code, is amended by adding at the end the fol10 lowing: 

11 ‘‘§ 298. Advice of counsel 

12 ‘‘The failure of an infringer to obtain the advice of 

13 counsel with respect to any allegedly infringed patent, or 

14 the failure of the infringer to present such advice to the 

15 court or jury, may not be used to prove that the accused 

16 infringer willfully infringed the patent or that the in17 fringer intended to induce infringement of the patent.’’. 

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

20 amended by adding at the end the following: 

‘‘298. Advice of counsel.’’. 

21 SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSI22 NESS METHOD PATENTS. 

23 (a) TRANSITIONAL PROGRAM.— 

24 (1) ESTABLISHMENT.—Not later than the date 

25 that is 1 year after the date of the enactment of this 
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1 Act, the Director shall issue regulations establishing 

2 and implementing a transitional post-grant review 

3 proceeding for review of the validity of covered busi4 ness method patents. The transitional proceeding 

5 implemented pursuant to this subsection shall be re6 garded as, and shall employ the standards and pro7 cedures of, a post-grant review under chapter 32 of 

8 title 35, United States Code, subject to the fol9 lowing: 

10 (A) Section 321(c) of title 35, United 

11 States Code, and subsections (b), (e)(2), and (f) 

12 of section 325 of such title shall not apply to 

13 a transitional proceeding. 

14 (B) A person may not file a petition for a 

15 transitional proceeding with respect to a cov16 ered business method patent unless the person 

17 or the person’s real party in interest or privy 

18 has been sued for infringement of the patent or 

19 has been charged with infringement under that 

20 patent. 

21 (C) A petitioner in a transitional pro22 ceeding who challenges the validity of 1 or more 

23 claims in a covered business method patent on 

24 a ground raised under section 102 or 103 of 

25 title 35, United States Code, as in effect on the 
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1 day before the effective date set forth in section 

2 3(n)(1), may support such ground only on the 

3 basis of— 

4 (i) prior art that is described by sec5 tion 102(a) of such title of such title (as 

6 in effect on the day before such effective 

7 date); or 

8 (ii) prior art that— 

9 (I) discloses the invention more 

10 than 1 year before the date of the ap11 plication for patent in the United 

12 States; and 

13 (II) would be described by section 

14 102(a) of such title (as in effect on 

15 the day before the effective date set 

16 forth in section 3(n)(1)) if the disclo17 sure had been made by another before 

18 the invention thereof by the applicant 

19 for patent. 

20 (D) The petitioner in a transitional pro21 ceeding that results in a final written decision 

22 under section 328(a) of title 35, United States 

23 Code, with respect to a claim in a covered busi24 ness method patent, or the petitioner’s real 

25 party in interest, may not assert, either in a 
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1 civil action arising in whole or in part under 

2 section 1338 of title 28, United States Code, or 

3 in a proceeding before the International Trade 

4 Commission under section 337 of the Tariff Act 

5 of 1930 (19 U.S.C. 1337), that the claim is in6 valid on any ground that the petitioner raised 

7 during that transitional proceeding. 

8 (E) The Director may institute a transi9 tional proceeding only for a patent that is a 

10 covered business method patent. 

11 (2) EFFECTIVE DATE.—The regulations issued 

12 under paragraph (1) shall take effect upon the expi13 ration of the 1-year period beginning on the date of 

14 the enactment of this Act and shall apply to any 

15 covered business method patent issued before, on, or 

16 after that effective date, except that the regulations 

17 shall not apply to a patent described in section 

18 6(f)(2)(A) of this Act during the period in which a 

19 petition for post-grant review of that patent would 

20 satisfy the requirements of section 321(c) of title 35, 

21 United States Code. 

22 (3) SUNSET.— 

23 (A) IN GENERAL.—This subsection, and 

24 the regulations issued under this subsection, are 

25 repealed effective upon the expiration of the 8- 
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1 year period beginning on the date that the reg2 ulations issued under to paragraph (1) take ef3 fect. 

4 (B) APPLICABILITY.—Notwithstanding 

5 subparagraph (A), this subsection and the regu6 lations issued under this subsection shall con7 tinue to apply, after the date of the repeal 

8 under subparagraph (A), to any petition for a 

9 transitional proceeding that is filed before the 

10 date of such repeal. 

11 (b) REQUEST FOR STAY.— 

12 (1) IN GENERAL.—If a party seeks a stay of a 

13 civil action alleging infringement of a patent under 

14 section 281 of title 35, United States Code, relating 

15 to a transitional proceeding for that patent, the 

16 court shall decide whether to enter a stay based 

17 on— 

18 (A) whether a stay, or the denial thereof, 

19 will simplify the issues in question and stream20 line the trial; 

21 (B) whether discovery is complete and 

22 whether a trial date has been set; 

23 (C) whether a stay, or the denial thereof, 

24 would unduly prejudice the nonmoving party or 
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1 present a clear tactical advantage for the mov2 ing party; and 

3 (D) whether a stay, or the denial thereof, 

4 will reduce the burden of litigation on the par5 ties and on the court. 

6 (2) REVIEW.—A party may take an immediate 

7 interlocutory appeal from a district court’s decision 

8 under paragraph (1). The United States Court of 

9 Appeals for the Federal Circuit shall review the dis10 trict court’s decision to ensure consistent application 

11 of established precedent, and such review may be de 

12 novo. 

13 (c) ATM EXEMPTION FOR VENUE PURPOSES.—In 

14 an action for infringement under section 281 of title 35, 

15 United States Code, of a covered business method patent, 

16 an automated teller machine shall not be deemed to be 

17 a regular and established place of business for purposes 

18 of section 1400(b) of title 28, United States Code. 

19 (d) DEFINITION.— 

20 (1) IN GENERAL.—For purposes of this section, 

21 the term ‘‘covered business method patent’’ means a 

22 patent that claims a method or corresponding appa23 ratus for performing data processing or other oper24 ations used in the practice, administration, or man25 agement of a financial product or service, except 
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1 that the term does not include patents for techno2 logical inventions. 

3 (2) REGULATIONS.—To assist in implementing 

4 the transitional proceeding authorized by this sub5 section, the Director shall issue regulations for de6 termining whether a patent is for a technological in7 vention. 

8 (e) RULE OF CONSTRUCTION.—Nothing in this sec9 tion shall be construed as amending or interpreting cat10 egories of patent-eligible subject matter set forth under 

11 section 101 of title 35, United States Code. 

12 SEC. 19. JURISDICTION AND PROCEDURAL MATTERS. 

13 (a) STATE COURT JURISDICTION.—Section 1338(a) 

14 of title 28, United States Code, is amended by striking 

15 the second sentence and inserting the following: ‘‘No State 

16 court shall have jurisdiction over any claim for relief aris17 ing under any Act of Congress relating to patents, plant 

18 variety protection, or copyrights. For purposes of this sub19 section, the term ‘State’ includes any State of the United 

20 States, the District of Columbia, the Commonwealth of 

21 Puerto Rico, the United States Virgin Islands, American 

22 Samoa, Guam, and the Northern Mariana Islands.’’. 

23 (b) COURT OF APPEALS FOR THE FEDERAL CIR24 CUIT.—Section 1295(a)(1) of title 28, United States Code, 

25 is amended to read as follows: 
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1 ‘‘(1) of an appeal from a final decision of a dis2 trict court of the United States, the District Court 

3 of Guam, the District Court of the Virgin Islands, 

4 or the District Court of the Northern Mariana Is5 lands, in any civil action arising under, or in any 

6 civil action in which a party has asserted a compul7 sory counterclaim arising under, any Act of Con8 gress relating to patents or plant variety protec9 tion;’’. 

10 (c) REMOVAL.— 

11 (1) IN GENERAL.—Chapter 89 of title 28, 

12 United States Code, is amended by adding at the 

13 end the following new section: 

14 ‘‘§ 1454. Patent, plant variety protection, and copy15 right cases 

16 ‘‘(a) IN GENERAL.—A civil action in which any party 

17 asserts a claim for relief arising under any Act of Con18 gress relating to patents, plant variety protection, or copy19 rights may be removed to the district court of the United 

20 States for the district and division embracing the place 

21 where the action is pending. 

22 ‘‘(b) SPECIAL RULES.—The removal of an action 

23 under this section shall be made in accordance with sec24 tion 1446, except that if the removal is based solely on 

25 this section— 
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1 ‘‘(1) the action may be removed by any party; 

2 and 

3 ‘‘(2) the time limitations contained in section 

4 1446(b) may be extended at any time for cause 

5 shown. 

6 ‘‘(c) CLARIFICATION OF JURISDICTION IN CERTAIN

7 CASES.—The court to which a civil action is removed 

8 under this section is not precluded from hearing and de9 termining any claim in the civil action because the State 

10 court from which the civil action is removed did not have 

11 jurisdiction over that claim. 

12 ‘‘(d) REMAND.—If a civil action is removed solely 

13 under this section, the district court— 

14 ‘‘(1) shall remand all claims that are neither a 

15 basis for removal under subsection (a) nor within 

16 the original or supplemental jurisdiction of the dis17 trict court under any Act of Congress; and 

18 ‘‘(2) may, under the circumstances specified in 

19 section 1367(c), remand any claims within the sup20 plemental jurisdiction of the district court under sec21 tion 1367.’’. 

22 (2) CONFORMING AMENDMENT.—The table of 

23 sections for chapter 89 of title 28, United States 

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

25 new item: 

‘‘1454. Patent, plant variety protection, and copyright cases.’’. 
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1 (d) PROCEDURAL MATTERS IN PATENT CASES.— 

2 (1) JOINDER OF PARTIES AND STAY OF AC3 TIONS.—Chapter 29 of title 35, United States Code, 

4 as amended by this Act, is further amended by add5 ing at the end the following new section: 

6 ‘‘§ 299. Joinder of parties 

7 ‘‘(a) JOINDER OF ACCUSED INFRINGERS.—With re8 spect to any civil action arising under any Act of Congress 

9 relating to patents, other than an action or trial in which 

10 an act of infringement under section 271(e)(2) has been 

11 pled, parties that are accused infringers may be joined in 

12 one action as defendants or counterclaim defendants, or 

13 have their actions consolidated for trial, or counterclaim 

14 defendants only if— 

15 ‘‘(1) any right to relief is asserted against the 

16 parties jointly, severally, or in the alternative with 

17 respect to or arising out of the same transaction, oc18 currence, or series of transactions or occurrences re19 lating to the making, using, importing into the 

20 United States, offering for sale, or selling of the 

21 same accused product or process; and 

22 ‘‘(2) questions of fact common to all defendants 

23 or counterclaim defendants will arise in the action. 

24 ‘‘(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— 

25 For purposes of this subsection, accused infringers may 
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1 not be joined in one action as defendants or counterclaim 

2 defendants, or have their actions consolidated for trial, 

3 based solely on allegations that they each have infringed 

4 the patent or patents in suit. 

5 ‘‘(c) WAIVER.—A party that is an accused infringer 

6 may waive the limitations set forth in this section with 

7 respect to that party.’’. 

8 (2) CONFORMING AMENDMENT.—The table of 

9 sections for chapter 29 of title 35, United States 

10 Code, as amended by this Act, is further amended 

11 by adding at the end the following new item: 

‘‘299. Joinder of parties.’’. 

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

13 this section shall apply to any civil action commenced on 

14 or after the date of the enactment of this Act. 

15 SEC. 20. TECHNICAL AMENDMENTS. 

16 (a) JOINT INVENTIONS.—Section 116 of title 35, 

17 United States Code, is amended— 

18 (1) in the first undesignated paragraph, by 

19 striking ‘‘When’’ and inserting ‘‘(a) JOINT IN20 VENTIONS.—When’’; 

21 (2) in the second undesignated paragraph, 

22 by striking ‘‘If a joint inventor’’ and inserting 

23 ‘‘(b) OMITTED INVENTOR.—If a joint inven24 tor’’; and 

25 (3) in the third undesignated paragraph— 
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1 (A) by striking ‘‘Whenever’’ and in2 serting ‘‘(c) CORRECTION OF ERRORS IN

3 APPLICATION.—Whenever’’; and 

4 (B) by striking ‘‘and such error arose 

5 without any deceptive intention on his 

6 part,’’. 

7 (b) FILING OF APPLICATION IN FOREIGN COUN8 TRY.—Section 184 of title 35, United States Code, is 

9 amended— 

10 (1) in the first undesignated paragraph— 

11 (A) by striking ‘‘Except when’’ and insert12 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Ex13 cept when’’; and 

14 (B) by striking ‘‘and without deceptive in15 tent’’; 

16 (2) in the second undesignated paragraph, by 

17 striking ‘‘The term’’ and inserting ‘‘(b) APPLICA18 TION.—The term’’; and 

19 (3) in the third undesignated paragraph, by 

20 striking ‘‘The scope’’ and inserting ‘‘(c) SUBSE21 QUENT MODIFICATIONS, AMENDMENTS, AND SUP22 PLEMENTS.—The scope’’. 

23 (c) FILING WITHOUT A LICENSE.—Section 185 of 

24 title 35, United States Code, is amended by striking ‘‘and 

25 without deceptive intent’’. 
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1 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

2 of title 35, United States Code, is amended— 

3 (1) in the first undesignated paragraph— 

4 (A) by striking ‘‘Whenever’’ and inserting 

5 ‘‘(a) IN GENERAL.—Whenever’’; and 

6 (B) by striking ‘‘without any deceptive in7 tention’’; 

8 (2) in the second undesignated paragraph, by 

9 striking ‘‘The Director’’ and inserting ‘‘(b) MUL10 TIPLE REISSUED PATENTS.—The Director’’; 

11 (3) in the third undesignated paragraph, by 

12 striking ‘‘The provisions’’ and inserting ‘‘(c) APPLI13 CABILITY OF THIS TITLE.—The provisions’’; and 

14 (4) in the last undesignated paragraph, by 

15 striking ‘‘No reissued patent’’ and inserting ‘‘(d) 

16 REISSUE PATENT ENLARGING SCOPE OF CLAIMS.— 

17 No reissued patent’’. 

18 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

19 United States Code, is amended— 

20 (1) in the first undesignated paragraph, by 

21 striking ‘‘Whenever, without any deceptive inten22 tion,’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

23 and 

24 (2) in the second undesignated paragraph, by 

25 striking ‘‘In like manner’’ and inserting ‘‘(b) ADDI-
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1 TIONAL DISCLAIMER OR DEDICATION.—In the man2 ner set forth in subsection (a),’’. 

3 (f) CORRECTION OF NAMED INVENTOR.—Section 

4 256 of title 35, United States Code, is amended— 

5 (1) in the first undesignated paragraph— 

6 (A) by striking ‘‘Whenever’’ and inserting 

7 ‘‘(a) CORRECTION.—Whenever’’; and 

8 (B) by striking ‘‘and such error arose with9 out any deceptive intention on his part’’; and 

10 (2) in the second undesignated paragraph, by 

11 striking ‘‘The error’’ and inserting ‘‘(b) PATENT

12 VALID IF ERROR CORRECTED.—The error’’. 

13 (g) PRESUMPTION OF VALIDITY.—Section 282 of 

14 title 35, United States Code, is amended— 

15 (1) in the first undesignated paragraph— 

16 (A) by striking ‘‘A patent’’ and inserting 

17 ‘‘(a) IN GENERAL.—A patent’’; and 

18 (B) by striking the third sentence; 

19 (2) in the second undesignated paragraph— 

20 (A) by striking ‘‘The following’’ and insert21 ing ‘‘(b) DEFENSES.—The following’’; 

22 (B) in paragraph (1), by striking 

23 ‘‘uneforceability,’’ and inserting ‘‘unenforce24 ability.’’; and 
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1 (C) in paragraph (2), by striking ‘‘patent2 ability,’’ and inserting ‘‘patentability.’’ ; and 

3 (3) in the third undesignated paragraph— 

4 (A) by striking ‘‘In actions involving the 

5 validity or infringement of a patent’’ and insert6 ing ‘‘(c) NOTICE OF ACTIONS; ACTIONS DUR7 ING EXTENSION OF PATENT TERM.—In an ac8 tion involving the validity or infringement of a 

9 patent’’; and 

10 (B) by striking ‘‘Claims Court’’ and insert11 ing ‘‘Court of Federal Claims’’. 

12 (h) ACTION FOR INFRINGEMENT.—Section 288 of 

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

14 without deceptive intention,’’. 

15 (i) REVISER’S NOTES.— 

16 (1) Section 3(e)(2) of title 35, United States 

17 Code, is amended by striking ‘‘this Act,’’ and insert18 ing ‘‘that Act,’’. 

19 (2) Section 202 of title 35, United States Code, 

20 is amended— 

21 (A) in subsection (b)(3), by striking ‘‘the 

22 section 203(b)’’ and inserting ‘‘section 203(b)’’; 

23 and 

24 (B) in subsection (c)(7)(D), by striking 

25 ‘‘except where it proves’’ and all that follows 
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1 through ‘‘small business firms; and’’ and insert2 ing: ‘‘except where it is determined to be infea3 sible following a reasonable inquiry, a pref4 erence in the licensing of subject inventions 

5 shall be given to small business firms; and’’. 

6 (3) Section 209(d)(1) of title 35, United States 

7 Code, is amended by striking ‘‘nontransferrable’’ 

8 and inserting ‘‘nontransferable’’. 

9 (4) Section 287(c)(2)(G) of title 35, United 

10 States Code, is amended by striking ‘‘any state’’ and 

11 inserting ‘‘any State’’. 

12 (5) Section 371(b) of title 35, United States 

13 Code, is amended by striking ‘‘of the treaty’’ and in14 serting ‘‘of the treaty.’’. 

15 (j) UNNECESSARY REFERENCES.— 

16 (1) IN GENERAL.—Title 35, United States 

17 Code, is amended by striking ‘‘of this title’’ each 

18 place that term appears. 

19 (2) EXCEPTION.—The amendment made by 

20 paragraph (1) shall not apply to the use of such 

21 term in the following sections of title 35, United 

22 States Code: 

23 (A) Section 1(c). 

24 (B) Section 101. 

25 (C) Subsections (a) and (b) of section 105. 
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1 (D) The first instance of the use of such 

2 term in section 111(b)(8). 

3 (E) Section 161. 

4 (F) Section 164. 

5 (G) Section 171. 

6 (H) Section 251(c), as so designated by 

7 this section. 

8 (I) Section 261. 

9 (J) Subsections (g) and (h) of section 271. 

10 (K) Section 287(b)(1). 

11 (L) Section 289. 

12 (M) The first instance of the use of such 

13 term in section 375(a). 

14 (k) ADDITIONAL TECHNICAL AMENDMENTS.—Sec15 tions 155 and 155A of title 35, United States Code, and 

16 the items relating to those sections in the table of sections 

17 for chapter 14 of such title, are repealed. 

18 (l) EFFECTIVE DATE.—The amendments made by 

19 this section shall take effect upon the expiration of the 

20 1-year period beginning on the date of the enactment of 

21 this Act and shall apply to proceedings commenced on or 

22 after that effective date. 
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1 SEC. 21. TRAVEL EXPENSES AND PAYMENT OF ADMINIS2 TRATIVE JUDGES. 

3 (a) AUTHORITY TO COVER CERTAIN TRAVEL RE4 LATED EXPENSES.—Section 2(b)(11) of title 35, United 

5 States Code, is amended by inserting ‘‘, and the Office 

6 is authorized to expend funds to cover the subsistence ex7 penses and travel-related expenses, including per diem, 

8 lodging costs, and transportation costs, of persons attend9 ing such programs who are not Federal employees’’ after 

10 ‘‘world’’. 

11 (b) PAYMENT OF ADMINISTRATIVE JUDGES.—Sec12 tion 3(b) of title 35, United States Code, is amended by 

13 adding at the end the following: 

14 ‘‘(6) ADMINISTRATIVE PATENT JUDGES AND

15 ADMINISTRATIVE TRADEMARK JUDGES.—The Direc16 tor may fix the rate of basic pay for the administra17 tive patent judges appointed pursuant to section 6 

18 and the administrative trademark judges appointed 

19 pursuant to section 17 of the Trademark Act of 

20 1946 (15 U.S.C. 1067) at not greater than the rate 

21 of basic pay payable for level III of the Executive 

22 Schedule under section 5314 of title 5. The payment 

23 of a rate of basic pay under this paragraph shall not 

24 be subject to the pay limitation under section 

25 5306(e) or 5373 of title 5.’’. 
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1 SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING. 

2 (a) IN GENERAL.—Section 42(c) of title 35, United 

3 States Code, is amended— 

4 (1) by striking ‘‘(c)’’ and inserting ‘‘(c)(1)’’; 

5 (2) in the first sentence, by striking ‘‘shall be 

6 available’’ and inserting ‘‘shall, subject to paragraph 

7 (3), be available’’; 

8 (3) by striking the second sentence; and 

9 (4) by adding at the end the following: 

10 ‘‘(2) There is established in the Treasury a Patent 

11 and Trademark Fee Reserve Fund. If fee collections by 

12 the Patent and Trademark Office for a fiscal year exceed 

13 the amount appropriated to the Office for that fiscal year, 

14 fees collected in excess of the appropriated amount shall 

15 be deposited in the Patent and Trademark Fee Reserve 

16 Fund. To the extent and in the amounts provided in ap17 propriations Acts, amounts in the Fund shall be made 

18 available until expended only for obligation and expendi19 ture by the Office in accordance with paragraph (3). 

20 ‘‘(3)(A) Any fees that are collected under sections 41, 

21 42, and 376, and any surcharges on such fees, may only 

22 be used for expenses of the Office relating to the proc23 essing of patent applications and for other activities, serv24 ices, and materials relating to patents and to cover a share 

25 of the administrative costs of the Office relating to pat26 ents. 
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1 ‘‘(B) Any fees that are collected under section 31 of 

2 the Trademark Act of 1946, and any surcharges on such 

3 fees, may only be used for expenses of the Office relating 

4 to the processing of trademark registrations and for other 

5 activities, services, and materials relating to trademarks 

6 and to cover a share of the administrative costs of the 

7 Office relating to trademarks.’’. 

8 (b) EFFECTIVE DATE.—The amendments made by 

9 this section shall take effect on October 1, 2011. 

10 SEC. 23. SATELLITE OFFICES. 

11 (a) ESTABLISHMENT.—Subject to available re12 sources, the Director shall, by not later than the date that 

13 is 3 years after the date of the enactment of this Act, 

14 establish 3 or more satellite offices in the United States 

15 to carry out the responsibilities of the Office. 

16 (b) PURPOSES.—The purposes of the satellite offices 

17 established under subsection (a) are to— 

18 (1) increase outreach activities to better connect 

19 patent filers and innovators with the Office; 

20 (2) enhance patent examiner retention; 

21 (3) improve recruitment of patent examiners; 

22 (4) decrease the number of patent applications 

23 waiting for examination; and 

24 (5) improve the quality of patent examination. 

25 (c) REQUIRED CONSIDERATIONS.— 
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1 (1) IN GENERAL.—In selecting the location of 

2 each satellite office to be established under sub3 section (a), the Director— 

4 (A) shall ensure geographic diversity 

5 among the offices, including by ensuring that 

6 such offices are established in different States 

7 and regions throughout the Nation; 

8 (B) may rely upon any previous evalua9 tions by the Office of potential locales for sat10 ellite offices, including any evaluations prepared 

11 as part of the Office’s Nationwide Workforce 

12 Program that resulted in the 2010 selection of 

13 Detroit, Michigan, as the first satellite office of 

14 the Office; 

15 (C) shall evaluate and consider the extent 

16 to which the purposes of satellite offices listed 

17 under subsection (b) will be achieved; 

18 (D) shall consider the availability of sci19 entific and technically knowledgeable personnel 

20 in the region from which to draw new patent 

21 examiners at minimal recruitment cost; and 

22 (E) shall consider the economic impact to 

23 the region. 

24 (2) OPEN SELECTION PROCESS.—Nothing in 

25 paragraph (1) shall constrain the Office to only con-
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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 

5 enactment of this Act, the Director shall submit a report 

6 to Congress on— 

7 (1) the rationale of the Director in selecting the 

8 location of any satellite office required under sub9 section (a), including an explanation of how the se10 lected location will achieve the purposes of satellite 

11 offices listed under subsection (b) and how the re12 quired considerations listed under subsection (c) 

13 were met; 

14 (2) the progress of the Director in establishing 

15 all such satellite offices; and 

16 (3) whether the operation of existing satellite 

17 offices is achieving the purposes under subsection 

18 (b). 

19 SEC. 24. DESIGNATION OF DETROIT SATELLITE OFFICE. 

20 (a) DESIGNATION.—The satellite office of the United 

21 States Patent and Trademark Office to be located in De22 troit, Michigan, shall be known and designated as the 

23 ‘‘Elijah J. McCoy United States Patent and Trademark 

24 Office’’. 
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1 (b) REFERENCES.—Any reference in a law, map, reg2 ulation, document, paper, or other record of the United 

3 States to the satellite office of the United States Patent 

4 and Trademark Office to be located in Detroit, Michigan, 

5 referred to in subsection (a) shall be deemed to be a ref6 erence to the ‘‘Elijah J. McCoy United States Patent and 

7 Trademark Office’’. 

8 SEC. 25. PRIORITY EXAMINATION FOR IMPORTANT TECH9 NOLOGIES. 

10 Section 2(b)(2) of title 35, United States Code, is 

11 amended— 

12 (1) in subparagraph (E), by striking ‘‘and’’ 

13 after 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 

19 the patent applicant, provide for prioritization 

20 of examination of applications for products, 

21 processes, or technologies that are important to 

22 the national economy or national competitive23 ness without recovering the aggregate extra cost 

24 of providing such prioritization, notwith-
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1 standing section 41 or any other provision of 

2 law;’’. 

3 SEC. 26. STUDY ON IMPLEMENTATION. 

4 (a) PTO STUDY.—The Director shall conduct a study 

5 on the manner in which this Act and the amendments 

6 made by this Act are being implemented by the Office, 

7 and on such other aspects of the patent policies and prac8 tices of the Federal Government with respect to patent 

9 rights, innovation in the United States, competitiveness of 

10 United States markets, access by small businesses to cap11 ital for investment, and such other issues, as the Director 

12 considers appropriate. 

13 (b) REPORT TO CONGRESS.—The Director shall, not 

14 later than the date that is 4 years after the date of the 

15 enactment of this Act, submit to the Committees on the 

16 Judiciary of the House of Representatives and the Senate 

17 a report on the results of the study conducted under sub18 section (a), including recommendations for any changes to 

19 laws and regulations that the Director considers appro20 priate. 

21 SEC. 27. STUDY ON GENETIC TESTING. 

22 (a) IN GENERAL.—The Director shall conduct a 

23 study on effective ways to provide independent, confirming 

24 genetic diagnostic test activity where gene patents and ex25 clusive licensing for primary genetic diagnostic tests exist. 
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1 (b) ITEMS INCLUDED IN STUDY.—The study shall in2 clude an examination of at least the following: 

3 (1) The impact that the current lack of inde4 pendent second opinion testing has had on the abil5 ity to provide the highest level of medical care to pa6 tients and recipients of genetic diagnostic testing, 

7 and on inhibiting innovation to existing testing and 

8 diagnoses. 

9 (2) The effect that providing independent sec10 ond opinion genetic diagnostic testing would have on 

11 the existing patent and license holders of an exclu12 sive genetic test. 

13 (3) The impact that current exclusive licensing 

14 and patents on genetic testing activity has on the 

15 practice of medicine, including but not limited to: 

16 the interpretation of testing results and performance 

17 of testing procedures. 

18 (4) The role that cost and insurance coverage 

19 have on access to and provision of genetic diagnostic 

20 tests. 

21 (c) CONFIRMING GENETIC DIAGNOSTIC TEST ACTIV22 ITY DEFINED.—For purposes of this section, the term 

23 ‘‘confirming genetic diagnostic test activity’’ means the 

24 performance of a genetic diagnostic test, by a genetic diag25 nostic test provider, on an individual solely for the purpose 
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1 of providing the individual with an independent confirma2 tion of results obtained from another test provider’s prior 

3 performance of the test on the individual. 

4 (d) REPORT.—Not later than 9 months after the date 

5 of enactment of this Act, the Director shall report to the 

6 Committee on the Judiciary of the Senate and the Com7 mittee on the Judiciary of the House of Representatives 

8 on the findings of the study and provide recommendations 

9 for establishing the availability of such independent con10 firming genetic diagnostic test activity. 

11 SEC. 28. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSI12 NESS CONCERNS. 

13 Using available resources, the Director shall establish 

14 and maintain in the Office a Patent Ombudsman Pro15 gram. The duties of the Program’s staff shall include pro16 viding support and services relating to patent filings to 

17 small business concerns and independent inventors. 

18 SEC. 29. ESTABLISHMENT OF METHODS FOR STUDYING 

19 THE DIVERSITY OF APPLICANTS. 

20 The Director shall, not later than the end of the 6- 

21 month period beginning on the date of the enactment of 

22 this Act, establish methods for studying the diversity of 

23 patent applicants, including those applicants who are mi24 norities, women, or veterans. The Director shall not use 
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1 the results of such study to provide any preferential treat2 ment to patent applicants. 

3 SEC. 30. SENSE OF CONGRESS. 

4 It is the sense of Congress that the patent system 

5 should promote industries to continue to develop new tech6 nologies that spur growth and create jobs across the coun7 try which includes protecting the rights of small busi8 nesses and inventors from predatory behavior that could 

9 result in the cutting off of innovation. 

10 SEC. 31. USPTO STUDY ON INTERNATIONAL PATENT PRO11 TECTIONS FOR SMALL BUSINESSES. 

12 (a) STUDY REQUIRED.—The Director, in consulta13 tion with the Secretary of Commerce and the Adminis14 trator of the Small Business Administration, shall, using 

15 the existing resources of the Office, carry out a study— 

16 (1) to determine how the Office, in coordination 

17 with other Federal departments and agencies, can 

18 best help small businesses with international patent 

19 protection; and 

20 (2) whether, in order to help small businesses 

21 pay for the costs of filing, maintaining, and enforc22 ing international patent applications, there should be 

23 established either— 

24 (A) a revolving fund loan program to make 

25 loans to small businesses to defray the costs of 
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1 such applications, maintenance, and enforce2 ment and related technical assistance; or 

3 (B) a grant program to defray the costs of 

4 such applications, maintenance, and enforce5 ment and related technical assistance. 

6 (b) REPORT.—Not later than 120 days after the date 

7 of the enactment of this Act, the Director shall issue a 

8 report to the Congress containing— 

9 (1) all findings and determinations made in car10 rying out the study required under subsection (a); 

11 (2) a statement of whether the determination 

12 was made that— 

13 (A) a revolving fund loan program de14 scribed under subsection (a)(2)(A) should be es15 tablished; 

16 (B) a grant program described under sub17 section (a)(2)(B) should be established; or 

18 (C) neither such program should be estab19 lished; and 

20 (3) any legislative recommendations the Direc21 tor may have developed in carrying out such study. 

22 SEC. 32. PRO BONO PROGRAM. 

23 (a) IN GENERAL.—The Director shall work with and 

24 support intellectual property law associations across the 

25 country in the establishment of pro bono programs de-
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1 signed to assist financially under-resourced independent 

2 inventors and small businesses. 

3 (b) EFFECTIVE DATE.—This section shall take effect 

4 on the date of the enactment of this Act. 

5 SEC. 33. LIMITATION ON ISSUANCE OF PATENTS. 

6 (a) LIMITATION.—Notwithstanding any other provi7 sion of law, no patent may issue on a claim directed to 

8 or encompassing a human organism. 

9 (b) EFFECTIVE DATE.— 

10 (1) IN GENERAL.—Subsection (a) shall apply to 

11 any application for patent that is pending on, or 

12 filed on or after, the date of the enactment of this 

13 Act. 

14 (2) PRIOR APPLICATIONS.—Subsection (a) shall 

15 not affect the validity of any patent issued on an ap16 plication to which paragraph (1) does not apply. 

17 SEC. 34. STUDY OF PATENT LITIGATION. 

18 (a) GAO STUDY.—The Comptroller General of the 

19 United States shall conduct a study of the consequences 

20 of litigation by non-practicing entities, or by patent asser21 tion entities, related to patent claims made under title 35, 

22 United States Code, and regulations authorized by that 

23 title. 

24 (b) CONTENTS OF STUDY.—The study conducted 

25 under this section shall include the following: 
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1 (1) The annual volume of litigation described in 

2 subsection (a) over the 20-year period ending on the 

3 date of the enactment of this Act. 

4 (2) The volume of cases comprising such litiga5 tion that are found to be without merit after judicial 

6 review. 

7 (3) The impacts of such litigation on the time 

8 required to resolve patent claims. 

9 (4) The estimated costs, including the esti10 mated cost of defense, associated with such litigation 

11 for patent holders, patent licensors, patent licensees, 

12 and inventors, and for users of alternate or com13 peting innovations. 

14 (5) The economic impact of such litigation on 

15 the economy of the United States, including the im16 pact on inventors, job creation, employers, employ17 ees, and consumers. 

18 (6) The benefit to commerce, if any, supplied 

19 by non-practicing entities or patent assertion entities 

20 that prosecute such litigation. 

21 (c) REPORT TO CONGRESS.—The Comptroller Gen22 eral shall, not later than the date that is 1 year after the 

23 date of the enactment of this Act, submit to the Com24 mittee on the Judiciary of the House of Representatives 

25 and the Committee on the Judiciary of the Senate a report 
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1 on the results of the study required under this section, 

2 including recommendations for any changes to laws and 

3 regulations that will minimize any negative impact of pat4 ent litigation that was the subject of such study. 

5 SEC. 35. EFFECTIVE DATE. 

6 Except as otherwise provided in this Act, the provi7 sions of this Act shall take effect upon the expiration of 

8 the 1-year period beginning on the date of the enactment 

9 of this Act and shall apply to any patent issued on or after 

10 that effective date. 

11 SEC. 36. BUDGETARY EFFECTS. 

12 The budgetary effects of this Act, for the purpose of 

13 complying with the Statutory Pay-As-You-Go Act of 2010, 

14 shall be determined by reference to the latest statement 

15 titled ‘‘Budgetary Effects of PAYGO Legislation’’ for this 

16 Act, submitted for printing in the Congressional Record 

17 by the Chairman of the House Budget Committee, pro18 vided that such statement has been submitted prior to the 

19 vote on passage. 

20 SEC. 37. CALCULATION OF 60-DAY PERIOD FOR APPLICA21 TION OF PATENT TERM EXTENSION. 

22 (a) IN GENERAL.—Section 156(d)(1) of title 35, 

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

24 following flush sentence: 
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1 ‘‘For purposes of determining the date on which a product 

2 receives permission under the second sentence of this 

3 paragraph, if such permission is transmitted after 4:30 

4 P.M., Eastern Time, on a business day, or is transmitted 

5 on a day that is not a business day, the product shall be 

6 deemed to receive such permission on the next business 

7 day. For purposes of the preceding sentence, the term 

8 ‘business day’ means any Monday, Tuesday, Wednesday, 

9 Thursday, or Friday, excluding any legal holiday under 

10 section 6103 of title 5.’’. 

11 (b) APPLICABILITY.—The amendment made by sub12 section (a) shall apply to any application for extension of 

13 a patent term under section 156 of title 35, United States 

14 Code, that is pending on, that is filed after, or as to which 

15 a decision regarding the application is subject to judicial 

16 review on, the date of the enactment of this Act. 

Passed the House of Representatives June 23, 2011. 

Attest: 

Clerk. 

112TH CONGRESS 

1ST SESSION H. R. 1249 

AN ACT 

To amend title 35, United States Code, to provide 

for patent reform.