I 

112TH CONGRESS 

1ST SESSION H. R. 1249 

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

IN THE HOUSE OF REPRESENTATIVES 

MARCH 30, 2011 

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

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

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

provisions as fall within the jurisdiction of the committee concerned 

A BILL 

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, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘America Invents Act’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. First inventor to file. 

Sec. 3. Inventor’s oath or declaration. 

Sec. 4. Defense to infringement based on earlier inventor. 

Sec. 5. Post-grant review proceedings. 


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Sec. 6. Patent Trial and Appeal Board. 

Sec. 7. Preissuance submissions by third parties. 

Sec. 8. Venue. 

Sec. 9. Fee setting authority. 

Sec. 10. Fees for patent services. 

Sec. 11. Supplemental examination. 

Sec. 12. Funding agreements. 

Sec. 13. Tax strategies deemed within the prior art. 

Sec. 14. Best mode requirement. 

Sec. 15. Marking. 

Sec. 16. Advice of counsel. 

Sec. 17. Ownership; assignment. 

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

Sec. 19. Clarification of jurisdiction. 

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. Patent Ombudsman Program for small business concerns. 

Sec. 25. Priority examination for technologies important to American competitiveness. 

Sec. 26. Designation of Detroit satellite office. 

Sec. 27. Effective date. 

Sec. 28. Budgetary effects. 

1 SEC. 2. FIRST INVENTOR TO FILE. 

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

3 States Code, is amended by adding at the end the fol4 lowing: 

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

6 a joint invention, the individuals collectively who invented 

7 or discovered the subject matter of the invention. 

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

9 any 1 of the individuals who invented or discovered the 

10 subject matter of a joint invention. 

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

12 written contract, grant, or cooperative agreement entered 

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


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1 of experimental, developmental, or research work in the 

2 field of the claimed invention. 

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

4 invention in a patent or application for patent means— 

5 ‘‘(A) if subparagraph (B) does not apply, the 

6 actual filing date of the patent or the application for 

7 the patent containing a claim to the invention; or 

8 ‘‘(B) the filing date of the earliest application 

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

10 such invention, to a right of priority under section 

11 119, 365(a), or 365(b) or to the benefit of an earlier 

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

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

14 in an application for reissue or reissued patent shall be 

15 determined by deeming the claim to the invention to have 

16 been contained in the patent for which reissue was sought. 

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

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

19 for a patent.’’. 

20 (b) CONDITIONS FOR PATENTABILITY.— 

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

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

23 ‘‘§ 102. Conditions for patentability; novelty 

24 ‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti25 tled to a patent unless— 


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1 ‘‘(1) the claimed invention was patented, de2 scribed in a printed publication, or in public use, on 

3 sale, or otherwise available to the public before the 

4 effective filing date of the claimed invention; or 

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

6 patent issued under section 151, or in an application 

7 for patent published or deemed published under sec8 tion 122(b), in which the patent or application, as 

9 the case may be, names another inventor and was 

10 effectively filed before the effective filing date of the 

11 claimed invention. 

12 ‘‘(b) EXCEPTIONS.— 

13 ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE14 FORE THE EFFECTIVE FILING DATE OF THE

15 CLAIMED INVENTION.—A disclosure made 1 year or 

16 less before the effective filing date of a claimed in17 vention shall not be prior art to the claimed inven18 tion under subsection (a)(1) if— 

19 ‘‘(A) the disclosure was made by the inven20 tor or joint inventor or by another who obtained 

21 the subject matter disclosed directly or indi22 rectly from the inventor or a joint inventor; or 

23 ‘‘(B) the subject matter disclosed had, be24 fore such disclosure, been publicly disclosed by 

25 the inventor or a joint inventor or another who 


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1 obtained the subject matter disclosed directly or 

2 indirectly from the inventor or a joint inventor. 

3 ‘‘(2) DISCLOSURES APPEARING IN APPLICA4 TIONS AND PATENTS.—A disclosure shall not be 

5 prior art to a claimed invention under subsection 

6 (a)(2) if— 

7 ‘‘(A) the subject matter disclosed was ob8 tained directly or indirectly from the inventor or 

9 a joint inventor; 

10 ‘‘(B) the subject matter disclosed had, be11 fore such subject matter was effectively filed 

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

13 by the inventor or a joint inventor or another 

14 who obtained the subject matter disclosed di15 rectly or indirectly from the inventor or a joint 

16 inventor; or 

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

18 claimed invention, not later than the effective 

19 filing date of the claimed invention, were owned 

20 by the same person or subject to an obligation 

21 of assignment to the same person. 

22 ‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

23 AGREEMENTS.—Subject matter disclosed and a claimed 

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

25 person or subject to an obligation of assignment to the 


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1 same person in applying the provisions of subsection 

2 (b)(2)(C) if— 

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

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

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

6 that was in effect on or before the effective filing 

7 date of the claimed invention; 

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

9 of activities undertaken within the scope of the joint 

10 research agreement; and 

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

12 invention discloses or is amended to disclose the 

13 names of the parties to the joint research agree14 ment. 

15 ‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF16 FECTIVE AS PRIOR ART.—For purposes of determining 

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

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

19 or application shall be considered to have been effectively 

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

21 patent or application— 

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

23 actual filing date of the patent or the application for 

24 patent; or 


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

2 entitled to claim a right of priority under section 

3 119, 365(a), or 365(b), or to claim the benefit of an 

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

5 based upon 1 or more prior filed applications for 

6 patent, as of the filing date of the earliest such ap7 plication that describes the subject matter.’’. 

8 (2) CONTINUITY OF INTENT UNDER THE CRE9 ATE ACT.—The enactment of section 102(c) of title 

10 35, United States Code, under paragraph (1) of this 

11 subsection is done with the same intent to promote 

12 joint research activities that was expressed, includ13 ing in the legislative history, through the enactment 

14 of the Cooperative Research and Technology En15 hancement Act of 2004 (Public Law 108–453; the 

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

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

18 States Patent and Trademark Office shall admin19 ister section 102(c) of title 35, United States Code, 

20 in a manner consistent with the legislative history of 

21 the CREATE Act that was relevant to its adminis22 tration by the United States Patent and Trademark 

23 Office. 

24 (3) CONFORMING AMENDMENT.—The item re25 lating to section 102 in the table of sections for 


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

2 amended to read as follows: 

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

3 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

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

5 States Code, is amended to read as follows: 

6 ‘‘§ 103. Conditions for patentability; nonobvious sub7 ject matter 

8 ‘‘A patent for a claimed invention may not be ob9 tained, notwithstanding that the claimed invention is not 

10 identically disclosed as set forth in section 102, if the dif11 ferences between the claimed invention and the prior art 

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

13 been obvious before the effective filing date of the claimed 

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

15 which the claimed invention pertains. Patentability shall 

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

17 made.’’. 

18 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

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

22 are repealed. 

23 (e) REPEAL OF STATUTORY INVENTION REGISTRA24 TION.— 


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

2 United States Code, and the item relating to that 

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

4 35, United States Code, are repealed. 

5 (2) REMOVAL OF CROSS REFERENCES.—Section 

6 111(b)(8) of title 35, United States Code, is amend7 ed by striking ‘‘sections 115, 131, 135, and 157’’ 

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

9 (3) EFFECTIVE DATE.—The amendments made 

10 by this subsection shall take effect upon the expira11 tion of the 18-month period beginning on the date 

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

13 request for a statutory invention registration filed on 

14 or after that effective date. 

15 (f) EARLIER FILING DATE FOR INVENTOR AND

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

17 Code, is amended by striking ‘‘which is filed by an inven18 tor or inventors named’’ and inserting ‘‘which names an 

19 inventor or joint inventor’’. 

20 (g) CONFORMING AMENDMENTS.— 

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

22 35, United States Code, is amended by striking 

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

24 (2) LIMITATION ON REMEDIES.—Section 

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1 ed by striking ‘‘the earliest effective filing date of 

2 which is prior to’’ and inserting ‘‘which has an effec3 tive filing date before’’. 

4 (3) INTERNATIONAL APPLICATION DESIG5 NATING THE UNITED STATES: EFFECT.—Section 

6 363 of title 35, United States Code, is amended by 

7 striking ‘‘except as otherwise provided in section 

8 102(e) of this title’’. 

9 (4) PUBLICATION OF INTERNATIONAL APPLICA10 TION: EFFECT.—Section 374 of title 35, United 

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

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

13 (5) PATENT ISSUED ON INTERNATIONAL APPLI14 CATION: EFFECT.—The second sentence of section 

15 375(a) of title 35, United States Code, is amended 

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

17 such’’ and inserting ‘‘Such’’. 

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

19 119(a) of title 35, United States Code, is amended 

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

21 all that follows through ‘‘one year prior to such fil22 ing’’. 

23 (7) INVENTIONS MADE WITH FEDERAL ASSIST24 ANCE.—Section 202(c) of title 35, United States 

25 Code, is amended— 


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1 (A) in paragraph (2)— 

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

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

4 ‘‘obtained in the United States’’ and in5 serting ‘‘the 1-year period referred to in 

6 section 102(b) would end before the end of 

7 that 2-year period’’; and 

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

9 the statutory’’ and inserting ‘‘before the 

10 end of that 1-year’’; and 

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

12 statutory bar date that may occur under this 

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

14 and inserting ‘‘the expiration of the 1-year pe15 riod referred to in section 102(b)’’. 

16 (h) DERIVED PATENTS.— 

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

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

19 ‘‘§ 291. Derived Patents 

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

21 relief by civil action against the owner of another patent 

22 that claims the same invention and has an earlier effective 

23 filing date if the invention claimed in such other patent 

24 was derived from the inventor of the invention claimed in 


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1 the patent owned by the person seeking relief under this 

2 section. 

3 ‘‘(b) FILING LIMITATION.—An action under this sec4 tion may be filed only before the end of the 1-year period 

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

6 containing a claim to the allegedly derived invention and 

7 naming an individual alleged to have derived such inven8 tion as the inventor or joint inventor.’’. 

9 (2) CONFORMING AMENDMENT.—The item re10 lating to section 291 in the table of sections for 

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

12 amended to read as follows: 

‘‘291. Derived patents.’’. 

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

14 35, United States Code, is amended to read as follows: 

15 ‘‘§ 135. Derivation proceedings 

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

17 for patent may file a petition to institute a derivation pro18 ceeding in the Office. The petition shall set forth with par19 ticularity the basis for finding that an inventor named in 

20 an earlier application derived the claimed invention from 

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

22 without authorization, the earlier application claiming 

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

24 only within the 1-year period beginning the date of the 

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


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

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

3 supported by substantial evidence. Whenever the Director 

4 determines that a petition filed under this subsection dem5 onstrates that the standards for instituting a derivation 

6 proceeding are met, the Director may institute a deriva7 tion proceeding. The determination by the Director wheth8 er to institute a derivation proceeding shall be final and 

9 nonappealable. 

10 ‘‘(b) DETERMINATION BY PATENT TRIAL AND AP11 PEAL BOARD.—In a derivation proceeding instituted 

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

13 shall determine whether an inventor named in the earlier 

14 application derived the claimed invention from an inventor 

15 named in the petitioner’s application and, without author16 ization, the earlier application claiming such invention was 

17 filed. The Director shall prescribe regulations setting forth 

18 standards for the conduct of derivation proceedings. 

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

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

21 derivation proceeding until the expiration of the 3-month 

22 period beginning on the date on which the Director issues 

23 a patent that includes the claimed invention that is the 

24 subject of the petition. The Patent Trial and Appeal 

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


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1 proceeding, or stay the proceeding after it has been insti2 tuted, until the termination of a proceeding under chapter 

3 30, 31, or 32 involving the patent of the earlier applicant. 

4 ‘‘(d) EFFECT OF FINAL DECISION.—The final deci5 sion of the Patent Trial and Appeal Board, if adverse to 

6 claims in an application for patent, shall constitute the 

7 final refusal by the Office on those claims. The final deci8 sion of the Patent Trial and Appeal Board, if adverse to 

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

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

11 cancellation of those claims, and notice of such cancella12 tion shall be endorsed on copies of the patent distributed 

13 after such cancellation. 

14 ‘‘(e) SETTLEMENT.—Parties to a proceeding insti15 tuted under subsection (a) may terminate the proceeding 

16 by filing a written statement reflecting the agreement of 

17 the parties as to the correct inventors of the claimed inven18 tion in dispute. Unless the Patent Trial and Appeal Board 

19 finds the agreement to be inconsistent with the evidence 

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

21 agreement. Any written settlement or understanding of 

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

23 of a party to the proceeding, the agreement or under24 standing shall be treated as business confidential informa25 tion, shall be kept separate from the file of the involved 


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1 patents or applications, and shall be made available only 

2 to Government agencies on written request, or to any per3 son on a showing of good cause. 

4 ‘‘(f) ARBITRATION.—Parties to a proceeding insti5 tuted under subsection (a) may, within such time as may 

6 be specified by the Director by regulation, determine such 

7 contest or any aspect thereof by arbitration. Such arbitra8 tion shall be governed by the provisions of title 9, to the 

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

10 parties shall give notice of any arbitration award to the 

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

12 the arbitration, be dispositive of the issues to which it re13 lates. The arbitration award shall be unenforceable until 

14 such notice is given. Nothing in this subsection shall pre15 clude the Director from determining the patentability of 

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

17 (j) ELIMINATION OF REFERENCES TO INTER18 FERENCES.—(1) Sections 134, 145, 146, 154, 305, and 

19 314 of title 35, United States Code, are each amended 

20 by striking ‘‘Board of Patent Appeals and Interferences’’ 

21 each place it appears and inserting ‘‘Patent Trial and Ap22 peal Board’’. 

23 (2)(A) Sections 146 and 157(a) of title 35, United 

24 States Code, are each amended— 


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1 (i) by striking ‘‘an interference’’ each place 

2 it appears and inserting ‘‘a derivation pro3 ceeding’’; and 

4 (ii) by striking ‘‘interference’’ each addi5 tional place it appears and inserting ‘‘derivation 

6 proceeding’’. 

7 (B) The subparagraph heading for section 

8 154(b)(1)(C) of title 35, United States Code, is 

9 amended to read as follows: 

10 ‘‘(C) GUARANTEE OF ADJUSTMENTS

11 FOR DELAYS DUE TO DERIVATION PRO12 CEEDINGS, SECRECY ORDERS, AND AP13 PEALS.—’’. 

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

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

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

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

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

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

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

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

22 States Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 


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

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

3 is amended to read as follows: 

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

4 (k) STATUTE OF LIMITATIONS.— 

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

6 United States Code, is amended by inserting be7 tween the third and fourth sentences the following: 

8 ‘‘A proceeding under this section shall be com9 menced not later than the earlier of either the date 

10 that is 10 years after the date on which the mis11 conduct forming the basis for the proceeding oc12 curred, or 1 year after the date on which the mis13 conduct forming the basis for the proceeding is 

14 made known to an officer or employee of the Office 

15 as prescribed in the regulations established under 

16 section 2(b)(2)(D).’’. 

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

18 provide on a biennial basis to the Judiciary Commit19 tees of the Senate and House of Representatives a 

20 report providing a short description of incidents 

21 made known to an officer or employee of the Office 

22 as prescribed in the regulations established under 

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

24 that reflect substantial evidence of misconduct be25 fore the Office but for which the Office was barred 


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1 from commencing a proceeding under section 32 of 

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

3 established by the fourth sentence of that section. 

4 (3) EFFECTIVE DATE.—The amendment made 

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

6 the time period for instituting a proceeding under 

7 section 32 of title 35, United State Code, had not 

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

9 (l) SMALL BUSINESS STUDY.— 

10 (1) DEFINITIONS.—In this subsection— 

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

12 Chief Counsel for Advocacy of the Small Busi13 ness Administration; 

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

15 General Counsel of the United States Patent 

16 and Trademark Office; and 

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

18 the meaning given that term under section 3 of 

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

20 (2) STUDY.— 

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

22 consultation with the General Counsel, shall 

23 conduct a study of the effects of eliminating the 

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1 er an applicant is entitled to a patent under 

2 title 35, United States Code. 

3 (B) AREAS OF STUDY.—The study con4 ducted under subparagraph (A) shall include 

5 examination of the effects of eliminating the use 

6 of invention dates, including examining— 

7 (i) how the change would affect the 

8 ability of small business concerns to obtain 

9 patents and their costs of obtaining pat10 ents; 

11 (ii) whether the change would create, 

12 mitigate, or exacerbate any disadvantages 

13 for applicants for patents that are small 

14 business concerns relative to applicants for 

15 patents that are not small business con16 cerns, and whether the change would cre17 ate any advantages for applicants for pat18 ents that are small business concerns rel19 ative to applicants for patents that are not 

20 small business concerns; 

21 (iii) the cost savings and other poten22 tial benefits to small business concerns of 

23 the change; and 

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1 native means of determining whether an 

2 applicant is entitled to a patent under title 

3 35, United States Code. 

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

5 1 year after the date of the enactment of this Act, 

6 the Chief Counsel shall submit to the Committee on 

7 Small Business and Entrepreneurship and the Com8 mittee on the Judiciary of the Senate and the Com9 mittee on Small Business and the Committee on the 

10 Judiciary of the House of Representatives a report 

11 regarding the results of the study under paragraph 

12 (2). 

13 (m) REPORT ON PRIOR USER RIGHTS.— 

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

15 the 4-month period beginning on the date of the en16 actment of this Act, the Director shall report, to the 

17 Committee on the Judiciary of the Senate and the 

18 Committee on the Judiciary of the House of Rep19 resentatives, the findings and recommendations of 

20 the Director on the operation of prior user rights in 

21 selected countries in the industrialized world. The 

22 report shall include the following: 

23 (A) A comparison between patent laws of 

24 the United States and the laws of other indus25 trialized countries, including members of the 


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1 European Union and Japan, Canada, and Aus2 tralia. 

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

4 rights on innovation rates in the selected coun5 tries. 

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

7 between prior user rights and start-up enter8 prises and the ability to attract venture capital 

9 to start new companies. 

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

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

12 and individual inventors. 

13 (E) An analysis of legal and constitutional 

14 issues, if any, that arise from placing trade se15 cret law in patent law. 

16 (F) An analysis of whether the change to 

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

18 need for prior user rights. 

19 (2) CONSULTATION WITH OTHER AGENCIES.— 

20 In preparing the report required under paragraph 

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

22 States Trade Representative, the Secretary of State, 

23 and the Attorney General. 

24 (n) EFFECTIVE DATE.— 


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1 (1) IN GENERAL.—Except as otherwise pro2 vided in this section, the amendments made by this 

3 section shall take effect upon the expiration of the 

4 18-month period beginning on the date of the enact5 ment of this Act, and shall apply to any application 

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

7 contains or contained at any time— 

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

9 an effective filing date as defined in section 

10 100(i) of title 35, United States Code, that is 

11 on or after the effective date described in this 

12 paragraph; or 

13 (B) a specific reference under section 120, 

14 121, or 365(c) of title 35, United States Code, 

15 to any patent or application that contains or 

16 contained at any time such a claim. 

17 (2) INTERFERING PATENTS.—The provisions of 

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

19 States Code, as in effect on the day before the date 

20 of the enactment of this Act, shall apply to each 

21 claim of an application for patent, and any patent 

22 issued thereon, for which the amendments made by 

23 this section also apply, if such application or patent 

24 contains or contained at any time— 


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1 (A) a claim to an invention having an ef2 fective filing date as defined in section 100(i) of 

3 title 35, United States Code, that occurs before 

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

5 this subsection; or 

6 (B) a specific reference under section 120, 

7 121, or 365(c) of title 35, United States Code, 

8 to any patent or application that contains or 

9 contained at any time such a claim. 

10 SEC. 3. INVENTOR’S OATH OR DECLARATION. 

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

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

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

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

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

16 DECLARATION.—An application for patent that is filed 

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

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

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

20 application. Except as otherwise provided in this section, 

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

22 a claimed invention in an application for patent shall exe23 cute an oath or declaration in connection with the applica24 tion. 


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1 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara2 tion under subsection (a) shall contain statements that— 

3 ‘‘(1) the application was made or was author4 ized to be made by the affiant or declarant; and 

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

6 to be the original inventor or an original joint inven7 tor of a claimed invention in the application. 

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

9 may specify additional information relating to the inventor 

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

11 oath or declaration under subsection (a). 

12 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

15 patent may provide a substitute statement under the 

16 circumstances described in paragraph (2) and such 

17 additional circumstances that the Director may 

18 specify by regulation. 

19 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub20 stitute statement under paragraph (1) is permitted 

21 with respect to any individual who— 

22 ‘‘(A) is unable to file the oath or declara23 tion under subsection (a) because the indi24 vidual— 

25 ‘‘(i) is deceased; 


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

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

3 diligent effort; or 

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

5 invention but has refused to make the oath or 

6 declaration required under subsection (a). 

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

8 this subsection shall— 

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

10 whom the statement applies; 

11 ‘‘(B) set forth the circumstances rep12 resenting the permitted basis for the filing of 

13 the substitute statement in lieu of the oath or 

14 declaration under subsection (a); and 

15 ‘‘(C) contain any additional information, 

16 including any showing, required by the Direc17 tor. 

18 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN19 MENT OF RECORD.—An individual who is under an obliga20 tion of assignment of an application for patent may in21 clude the required statements under subsections (b) and 

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

23 of filing such statements separately. 

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

25 section 151 may be provided to an applicant for patent 


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1 only if the applicant for patent has filed each required 

2 oath or declaration under subsection (a) or has filed a sub3 stitute statement under subsection (d) or recorded an as4 signment meeting the requirements of subsection (e). 

5 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE6 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

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

8 this section shall not apply to an individual with re9 spect to an application for patent in which the indi10 vidual is named as the inventor or a joint inventor 

11 and who claims the benefit under section 120, 121, 

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

13 if— 

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

15 requirements of subsection (a) was executed by 

16 the individual and was filed in connection with 

17 the earlier-filed application; 

18 ‘‘(B) a substitute statement meeting the 

19 requirements of subsection (d) was filed in the 

20 earlier filed application with respect to the indi21 vidual; or 

22 ‘‘(C) an assignment meeting the require23 ments of subsection (e) was executed with re24 spect to the earlier-filed application by the indiVerDate Mar 15 2010 04:33 Mar 31, 2011 Jkt 099200 PO 00000 Frm 00026 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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1 vidual and was recorded in connection with the 

2 earlier-filed application. 

3 ‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE4 MENTS, OR ASSIGNMENTS.—Notwithstanding para5 graph (1), the Director may require that a copy of 

6 the executed oath or declaration, the substitute 

7 statement, or the assignment filed in the earlier-filed 

8 application be included in the later-filed application. 

9 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE10 MENTS; FILING ADDITIONAL STATEMENTS.— 

11 ‘‘(1) IN GENERAL.—Any person making a state12 ment required under this section may withdraw, re13 place, or otherwise correct the statement at any 

14 time. If a change is made in the naming of the in15 ventor requiring the filing of 1 or more additional 

16 statements under this section, the Director shall es17 tablish regulations under which such additional 

18 statements may be filed. 

19 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE20 QUIRED.—If an individual has executed an oath or 

21 declaration meeting the requirements of subsection 

22 (a) or an assignment meeting the requirements of 

23 subsection (e) with respect to an application for pat24 ent, the Director may not thereafter require that in25 dividual to make any additional oath, declaration, or 


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1 other statement equivalent to those required by this 

2 section in connection with the application for patent 

3 or any patent issuing thereon. 

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

5 invalid or unenforceable based upon the failure to 

6 comply with a requirement under this section if the 

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

8 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec9 laration or statement filed pursuant to this section shall 

10 contain an acknowledgment that any willful false state11 ment made in such declaration or statement is punishable 

12 under section 1001 of title 18 by fine or imprisonment 

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

14 (2) RELATIONSHIP TO DIVISIONAL APPLICA15 TIONS.—Section 121 of title 35, United States Code, 

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

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

18 (3) REQUIREMENTS FOR NONPROVISIONAL AP19 PLICATIONS.—Section 111(a) of title 35, United 

20 States Code, is amended— 

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

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

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

24 inserting ‘‘OR DECLARATION’’ after ‘‘AND

25 OATH’’; and 


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

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

3 (4) CONFORMING AMENDMENT.—The item re4 lating to section 115 in the table of sections for 

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

6 amended to read as follows: 

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

7 (b) FILING BY OTHER THAN INVENTOR.— 

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

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

10 ‘‘§ 118. Filing by other than inventor 

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

12 under an obligation to assign the invention may make an 

13 application for patent. A person who otherwise shows suf14 ficient proprietary interest in the matter may make an ap15 plication for patent on behalf of and as agent for the in16 ventor on proof of the pertinent facts and a showing that 

17 such action is appropriate to preserve the rights of the 

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

19 filed under this section by a person other than the inven20 tor, the patent shall be granted to the real party in inter21 est and upon such notice to the inventor as the Director 

22 considers to be sufficient.’’. 

23 (2) CONFORMING AMENDMENT.—Section 251 

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

25 third undesignated paragraph by inserting ‘‘or the 


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1 application for the original patent was filed by the 

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

3 original patent’’. 

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

5 States Code, is amended— 

6 (1) in the first undesignated paragraph— 

7 (A) by striking ‘‘The specification’’ and in8 serting ‘‘(a) IN GENERAL.—The specification’’; 

9 and 

10 (B) by striking ‘‘of carrying out his inven11 tion’’ and inserting ‘‘or joint inventor of car12 rying out the invention’’; 

13 (2) in the second undesignated paragraph— 

14 (A) by striking ‘‘The specification’’ and in15 serting ‘‘(b) CONCLUSION.—The specification’’; 

16 and 

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

18 invention’’ and inserting ‘‘inventor or a joint in19 ventor regards as the invention’’; 

20 (3) in the third undesignated paragraph, by 

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

22 claim’’; 

23 (4) in the fourth undesignated paragraph, by 

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


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1 inserting ‘‘(d) REFERENCE IN DEPENDENT

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

3 (5) in the fifth undesignated paragraph, by 

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

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

6 (6) in the last undesignated paragraph, by 

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

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

9 (d) CONFORMING AMENDMENTS.— 

10 (1) Sections 111(b)(1)(A) is amended by strik11 ing ‘‘the first paragraph of section 112 of this title’’ 

12 and inserting ‘‘section 112(a)’’. 

13 (2) Section 111(b)(2) is amended by striking 

14 ‘‘the second through fifth paragraphs of section 

15 112,’’ and inserting ‘‘subsections (b) through (e) of 

16 section 112,’’. 

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

18 this section shall take effect upon the expiration of the 

19 1-year period beginning on the date of the enactment of 

20 this Act and shall apply to any patent application that 

21 is filed on or after that effective date. 

22 SEC. 4. DEFENSE TO INFRINGEMENT BASED ON EARLIER 

23 INVENTOR. 

24 Section 273 of title 35, United States Code, is 

25 amended as follows: 


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1 (1) Subsection (a) is amended— 

2 (A) in paragraph (1), by striking ‘‘use of 

3 a method in’’ and inserting ‘‘use of the subject 

4 matter of a patent in or outside’’ ; 

5 (B) by striking paragraph (3); and 

6 (C) by redesignating paragraph (4) as 

7 paragraph (3). 

8 (2) Subsection (b) is amended— 

9 (A) in paragraph (1), by striking ‘‘for a 

10 method’’; 

11 (B) in paragraph (2), by striking ‘‘pat12 ented method’’ and inserting ‘‘patented proc13 ess’’; 

14 (C) in paragraph (3)— 

15 (i) by striking subparagraph (A); 

16 (ii) by redesignating subparagraphs 

17 (B) and (C) as subparagraph (A) and (C), 

18 respectively; and 

19 (iii) by adding at the end the fol20 lowing: 

21 ‘‘(D) FUNDING.— 

22 ‘‘(i) DEFENSE NOT AVAILABLE IN

23 CERTAIN CASES.—A person may not assert 

24 the defense under this section if the sub25 ject matter of the patent on which the deVerDate Mar 15 2010 04:33 Mar 31, 2011 Jkt 099200 PO 00000 Frm 00032 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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1 fense is based was developed pursuant to a 

2 funding agreement under chapter 18 of 

3 this title or by a nonprofit institution of 

4 higher education, or a technology transfer 

5 organization affiliated with such an institu6 tion, that did not receive funding from a 

7 private business enterprise in support of 

8 that development. 

9 ‘‘(ii) DEFINITIONS.—In this subpara10 graph— 

11 ‘‘(I) the term ‘institution of high12 er education’ has the meaning given 

13 that term in section 101(a) of the 

14 Higher Education Act of 1965 (20 

15 U.S.C. 1001(a)); and 

16 ‘‘(II) the term ‘technology trans17 fer organization’ means an organiza18 tion the primary purpose of which is 

19 to facilitate the commercialization of 

20 technologies developed by one or more 

21 institutions of higher education.’’; and 

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

23 follows: 

24 ‘‘(6) PERSONAL DEFENSE.— 


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1 ‘‘(A) IN GENERAL.—The defense under 

2 this section may be asserted only by the person 

3 who performed or caused the performance of 

4 the acts necessary to establish the defense, as 

5 well as any other entity that controls, is con6 trolled by, or is under common control with 

7 such person, and, except for any transfer to the 

8 patent owner, the right to assert the defense 

9 shall not be licensed or assigned or transferred 

10 to another person except as an ancillary and 

11 subordinate part of a good faith assignment or 

12 transfer for other reasons of the entire enter13 prise or line of business to which the defense 

14 relates. 

15 ‘‘(B) EXCEPTION.—Notwithstanding sub16 paragraph (A), any person may, on the person’s 

17 own behalf, assert a defense based on the ex18 haustion of rights provided under paragraph 

19 (2), including any necessary elements thereof.’’. 

20 SEC. 5. POST-GRANT REVIEW PROCEEDINGS. 

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

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

23 ‘‘CHAPTER 31—INTER PARTES REVIEW 

‘‘Sec. 

‘‘311. Inter partes review. 

‘‘312. Petitions. 

‘‘313. Preliminary response to petition. 

‘‘314. Institution of inter partes review. 


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‘‘315. Relation to other proceedings or actions. 

‘‘316. Conduct of inter partes review. 

‘‘317. Settlement. 

‘‘318. Decision of the Board. 

‘‘319. Appeal. 

‘‘320. Request for stay of certain proceedings. 

1 ‘‘§ 311. Inter partes 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 an inter partes 

5 review of the patent. The Director shall establish, by regu6 lation, 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 review. 

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

10 may request to cancel as unpatentable 1 or more claims 

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

12 section 102 or 103 and only on the basis of prior art con13 sisting of patents or printed publications. 

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

15 review shall be filed after the later of either— 

16 ‘‘(1) the date that is 12 months after the grant 

17 of a patent or issuance of a reissue of a patent; or 

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

19 chapter 32, the date of the termination of such post20 grant review. 


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1 ‘‘§ 312. Petitions 

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

3 under section 311 may be considered only if— 

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

5 the fee established by the Director under section 

6 311; 

7 ‘‘(2) the petition identifies all real parties in in8 terest; 

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

10 particularity, each claim challenged, the grounds on 

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

12 evidence that supports the grounds for the challenge 

13 to each claim, including— 

14 ‘‘(A) copies of patents and printed publica15 tions that the petitioner relies upon in support 

16 of the petition; and 

17 ‘‘(B) affidavits or declarations of sup18 porting evidence and opinions, if the petitioner 

19 relies on expert opinions; 

20 ‘‘(4) the petition provides such other informa21 tion as the Director may require by regulation; and 

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

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

24 (4) to the patent owner or, if applicable, the des25 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 311, the Direc3 tor shall make the petition available to the public. 

4 ‘‘§ 313. Preliminary response to petition 

5 ‘‘(a) PRELIMINARY RESPONSE.—If an inter partes 

6 review petition is filed under section 311, the patent owner 

7 shall have the right to file a preliminary response within 

8 a time period set by the Director. 

9 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re10 sponse to a petition for inter partes review shall set forth 

11 reasons why no inter partes review should be instituted 

12 based upon the failure of the petition to meet any require13 ment of this chapter. 

14 ‘‘§ 314. Institution of inter partes review 

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

16 an inter partes review to commence unless the Director 

17 determines that the information presented in the petition 

18 filed under section 311 and any response filed under sec19 tion 313 shows that a substantial new question of patent20 ability exists. 

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

22 to institute an inter partes review under this chapter pur23 suant to a petition filed under section 311 within 3 months 

24 after— 


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1 ‘‘(1) receiving a preliminary response to the pe2 tition under section 313; or 

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

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

5 ‘‘(c) NOTICE.—The Director shall notify the peti6 tioner and patent owner, in writing, of the Director’s de7 termination under subsection (a), and shall make such no8 tice available to the public as soon as is practicable. Such 

9 notice shall include the date on which the review shall 

10 commence. 

11 ‘‘(d) NO APPEAL.—The determination by the Direc12 tor whether to institute an inter partes review under this 

13 section shall be final and nonappealable. 

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

15 ‘‘(a) INFRINGER’S CIVIL ACTION.— 

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

17 ACTION.—An inter partes review may not be insti18 tuted if, before the date on which the petition for 

19 such a review is filed, the petitioner, real party in 

20 interest, or privy of the petitioner filed a civil action 

21 challenging the validity of a claim of the patent. 

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

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

24 a civil action challenging the validity of a claim of 

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1 tioner files a petition for inter partes review of the 

2 patent, that civil action shall be automatically stayed 

3 until either— 

4 ‘‘(A) the patent owner requests to lift the 

5 stay; 

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

7 counterclaim alleging that the petitioner, real 

8 party in interest, or privy of the petitioner has 

9 infringed the patent; or 

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

11 or privy of the petitioner requests to dismiss the 

12 civil action. 

13 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun14 terclaim challenging the validity of a claim of a pat15 ent does not constitute a civil action challenging the 

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

17 subsection. 

18 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re19 view may not be instituted if the petition requesting the 

20 proceeding is filed more than 9 months after the date on 

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

22 petitioner is served with a complaint alleging infringement 

23 of the patent. The time limitation set forth in the pre24 ceding sentence shall not apply to a request for joinder 

25 under subsection (c). 


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

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

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

4 properly files a petition under section 311 that the Direc5 tor, after receiving a preliminary response under section 

6 313 or the expiration of the time for filing such a re7 sponse, determines warrants the institution of an inter 

8 partes review under section 314. 

9 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

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

11 pendency of an inter partes review, if another proceeding 

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

13 Director may determine the manner in which the inter 

14 partes review or other proceeding or matter may proceed, 

15 including providing for stay, transfer, consolidation, or 

16 termination of any such matter or proceeding. 

17 ‘‘(e) ESTOPPEL.— 

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

19 petitioner in an inter partes review under this chap20 ter, or the real party in interest or privy of the peti21 tioner, may not request or maintain a proceeding be22 fore the Office with respect to a claim on any 

23 ground that the petitioner raised or reasonably could 

24 have raised during an inter partes review of the 


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1 claim that resulted in a final written decision under 

2 section 318(a). 

3 ‘‘(2) CIVIL ACTIONS AND OTHER PRO4 CEEDINGS.—The petitioner in an inter partes review 

5 under this chapter, or the real party in interest or 

6 privy of the petitioner, may not assert either in a 

7 civil action arising in whole or in part under section 

8 1338 of title 28 or in a proceeding before the Inter9 national Trade Commission under section 337 of the 

10 Tariff Act of 1930 that a claim in a patent is invalid 

11 on any ground that the petitioner raised or reason12 ably could have raised during an inter partes review 

13 of the claim that resulted in a final written decision 

14 under section 318(a). 

15 ‘‘§ 316. Conduct of inter partes review 

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

17 regulations— 

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

19 under this chapter shall be made available to the 

20 public, except that any petition or document filed 

21 with the intent that it be sealed shall, if accom22 panied by a motion to seal, be treated as sealed 

23 pending the outcome of the ruling on the motion; 


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

2 of sufficient grounds to institute a review under sec3 tion 314(a); 

4 ‘‘(3) establishing procedures for the submission 

5 of supplemental information after the petition is 

6 filed; 

7 ‘‘(4) in accordance with section 2(b)(2), estab8 lishing and governing inter partes review under this 

9 chapter and the relationship of such review to other 

10 proceedings under this title; 

11 ‘‘(5) setting a time period for requesting joinder 

12 under section 315(c); 

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

14 discovery of relevant evidence, including that such 

15 discovery shall be limited to— 

16 ‘‘(A) the deposition of witnesses submitting 

17 affidavits or declarations; and 

18 ‘‘(B) what is otherwise necessary in the in19 terest of justice; 

20 ‘‘(7) prescribing sanctions for abuse of dis21 covery, abuse of process, or any other improper use 

22 of the proceeding, such as to harass or to cause un23 necessary delay or an unnecessary increase in the 

24 cost of the proceeding; 


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1 ‘‘(8) providing for protective orders governing 

2 the exchange and submission of confidential infor3 mation; 

4 ‘‘(9) providing for the filing by the patent 

5 owner of a response to the petition under section 

6 313 after an inter partes review has been instituted, 

7 and requiring that the patent owner file with such 

8 response, through affidavits or declarations, any ad9 ditional factual evidence and expert opinions on 

10 which the patent owner relies in support of the re11 sponse; 

12 ‘‘(10) setting forth standards and procedures 

13 for allowing the patent owner to move to amend the 

14 patent under subsection (d) to cancel a challenged 

15 claim or propose a reasonable number of substitute 

16 claims, and ensuring that any information submitted 

17 by the patent owner in support of any amendment 

18 entered under subsection (d) is made available to the 

19 public as part of the prosecution history of the pat20 ent; 

21 ‘‘(11) providing either party with the right to 

22 an oral hearing as part of the proceeding; and 

23 ‘‘(12) requiring that the final determination in 

24 an inter partes review be issued not later than 1 

25 year after the date on which the Director notices the 


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1 institution of a review under this chapter, except 

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

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

4 may adjust the time periods in this paragraph in the 

5 case of joinder under section 315(c). 

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

7 under this section, the Director shall consider the effect 

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

9 the patent system, the efficient administration of the Of10 fice, and the ability of the Office to timely complete pro11 ceedings instituted under this chapter. 

12 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat13 ent Trial and Appeal Board shall, in accordance with sec14 tion 6, conduct each proceeding authorized by the Direc15 tor. 

16 ‘‘(d) AMENDMENT OF THE PATENT.— 

17 ‘‘(1) IN GENERAL.—During an inter partes re18 view instituted under this chapter, the patent owner 

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

20 of the following ways: 

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

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

23 reasonable number of substitute claims. 

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1 quest of the petitioner and the patent owner to ma2 terially advance the settlement of a proceeding under 

3 section 317, or as permitted by regulations pre4 scribed by the Director. 

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

6 this subsection may not enlarge the scope of the 

7 claims of the patent or introduce new matter. 

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

9 review instituted under this chapter, the petitioner shall 

10 have the burden of proving a proposition of 

11 unpatentability by a preponderance of the evidence. 

12 ‘‘§ 317. Settlement 

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

14 under this chapter shall be terminated with respect to any 

15 petitioner upon the joint request of the petitioner and the 

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

17 the proceeding before the request for termination is filed. 

18 If the inter partes review is terminated with respect to 

19 a petitioner under this section, no estoppel under section 

20 315(e) shall apply to that petitioner. If no petitioner re21 mains in the inter partes review, the Office may terminate 

22 the review or proceed to a final written decision under sec23 tion 318(a). 

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

25 understanding between the patent owner and a petitioner, 


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1 including any collateral agreements referred to in such 

2 agreement or understanding, made in connection with, or 

3 in contemplation of, the termination of an inter partes re4 view under this section shall be in writing and a true copy 

5 of such agreement or understanding shall be filed in the 

6 Office before the termination of the inter partes review 

7 as between the parties. If any party filing such agreement 

8 or understanding so requests, the copy shall be kept sepa9 rate from the file of the inter partes review, and shall be 

10 made available only to Federal Government agencies upon 

11 written request, or to any other person on a showing of 

12 good cause. 

13 ‘‘§ 318. Decision of the Board 

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

15 review is instituted and not dismissed under this chapter, 

16 the Patent Trial and Appeal Board shall issue a final writ17 ten decision with respect to the patentability of any patent 

18 claim challenged by the petitioner and any new claim 

19 added under section 316(d). 

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

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

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

23 terminated, the Director shall issue and publish a certifi24 cate canceling any claim of the patent finally determined 

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1 termined to be patentable, and incorporating in the patent 

2 by operation of the certificate any new or amended claim 

3 determined to be patentable. 

4 ‘‘(c) DATA ON LENGTH OF REVIEW.—The Office 

5 shall make available to the public data describing the 

6 length of time between the institution of, and the issuance 

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

8 inter partes review. 

9 ‘‘§ 319. Appeal 

10 ‘‘A party dissatisfied with the final written decision 

11 of the Patent Trial and Appeal Board under section 

12 318(a) may appeal the decision pursuant to sections 141 

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

14 have the right to be a party to the appeal. 

15 ‘‘§ 320. Request for stay of certain proceedings 

16 ‘‘If a party seeks a stay of a civil action alleging in17 fringement of a patent under section 281, or a proceeding 

18 before the International Trade Commission under section 

19 337 of the Tariff Act of 1930, relating to an inter partes 

20 review under this chapter, the court shall decide whether 

21 to enter a stay based on— 

22 ‘‘(1) whether a stay, or the denial thereof, will 

23 simplify the issues in question and streamline the 

24 trial; 


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1 ‘‘(2) whether discovery is complete and whether 

2 a trial date has been set; 

3 ‘‘(3) whether a stay, or the denial thereof, 

4 would unduly prejudice the nonmoving party or 

5 present a clear tactical advantage for the moving 

6 party; and 

7 ‘‘(4) whether a stay, or the denial thereof, will 

8 reduce the burden of litigation on the parties and on 

9 the court.’’. 

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 such inter 

11 partes reexaminations that are ordered in the 

12 last fiscal year ending before the effective date 

13 of the amendments made by subsection (a). 

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

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

16 following: 

17 ‘‘CHAPTER 32—POST-GRANT REVIEW 

‘‘Sec. 

‘‘321. Post-grant review. 

‘‘322. Petitions. 

‘‘323. Preliminary response to petition. 

‘‘324. Institution of post-grant review. 

‘‘325. Relation to other proceedings or actions. 

‘‘326. Conduct of post-grant review. 

‘‘327. Settlement. 

‘‘328. Decision of the Board. 

‘‘329. Appeal. 

‘‘330. Request for stay of certain proceedings. 

18 ‘‘§ 321. Post-grant review 

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

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


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1 with the Office a petition to institute a post-grant review 

2 of a patent. The Director shall establish, by regulation, 

3 fees to be paid by the person requesting the review, in 

4 such amounts as the Director determines to be reasonable, 

5 considering the aggregate costs of the post-grant review. 

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

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

8 patent on any ground that could be raised under para9 graph (2) or (3) of section 282(b) (relating to invalidity 

10 of the patent or any claim). 

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

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

13 12 months after the date of the grant of the patent or 

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

15 ‘‘§ 322. Petitions 

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

17 under section 321 may be considered only if— 

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

19 the fee established by the Director under section 

20 321; 

21 ‘‘(2) the petition identifies all real parties in in22 terest; 

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

24 particularity, each claim challenged, the grounds on 

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


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1 evidence that supports the grounds for the challenge 

2 to each claim, including— 

3 ‘‘(A) copies of patents and printed publica4 tions that the petitioner relies upon in support 

5 of the petition; and 

6 ‘‘(B) affidavits or declarations of sup7 porting evidence and opinions, if the petitioner 

8 relies on other factual evidence or on expert 

9 opinions; 

10 ‘‘(4) the petition provides such other informa11 tion as the Director may require by regulation; and 

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

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

14 (4) to the patent owner or, if applicable, the des15 ignated representative of the patent owner. 

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

17 after the receipt of a petition under section 321, the Direc18 tor shall make the petition available to the public. 

19 ‘‘§ 323. Preliminary response to petition 

20 ‘‘(a) PRELIMINARY RESPONSE.—If a post-grant re21 view petition is filed under section 321, the patent owner 

22 shall have the right to file a preliminary response to the 

23 petition within 2 months after the date on which the peti24 tion is filed. 


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1 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re2 sponse to a petition for post-grant review shall set forth 

3 reasons why no post-grant review should be instituted 

4 based upon the failure of the petition to meet any require5 ment of this chapter. 

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

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

8 a post-grant review to commence unless the Director de9 termines that the information presented in the petition 

10 filed under section 321, if such information is not rebut11 ted, would demonstrate that it is more likely than not that 

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

13 unpatentable. 

14 ‘‘(b) ADDITIONAL GROUNDS.—The determination re15 quired under subsection (a) may also be satisfied by a 

16 showing that the petition raises a novel or unsettled legal 

17 question that is important to other patents or patent ap18 plications. 

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

20 to institute a post-grant review under this chapter pursu21 ant to a petition filed under section 321 within 3 months 

22 after— 

23 ‘‘(1) receiving a preliminary response to the pe24 tition under section 323; or 


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

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

3 ‘‘(d) NOTICE.—The Director shall notify the peti4 tioner and patent owner, in writing, of the Director’s de5 termination under subsection (a) or (b), and shall make 

6 such notice available to the public as soon as is prac7 ticable. The Director shall make each notice of the institu8 tion of a post-grant review available to the public. Such 

9 notice shall include the date on which the review shall 

10 commence. 

11 ‘‘(e) NO APPEAL.—The determination by the Direc12 tor whether to institute a post-grant review under this sec13 tion shall be final and nonappealable. 

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

15 ‘‘(a) INFRINGER’S CIVIL ACTION.— 

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

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

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

19 petition for such a review is filed, the petitioner, real 

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

21 civil action challenging the validity of a claim of the 

22 patent. 

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

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

25 a civil action challenging the validity of a claim of 


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1 the patent on or after the date on which the peti2 tioner files a petition for post-grant review of the 

3 patent, that civil action shall be automatically stayed 

4 until either— 

5 ‘‘(A) the patent owner requests to lift the 

6 stay; 

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

8 counterclaim alleging that the petitioner, real 

9 party in interest, or privy of the petitioner has 

10 infringed the patent; or 

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

12 or privy of the petitioner requests to dismiss his 

13 civil action. 

14 ‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun15 terclaim challenging the validity of a claim of a pat16 ent does not constitute a civil action challenging the 

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

18 subsection. 

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

20 alleging infringement of a patent is filed within 3 months 

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

22 may not stay its consideration of the patent owner’s mo23 tion for a preliminary injunction against infringement of 

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1 view has been filed under this chapter or that such a post2 grant review has been instituted under this chapter. 

3 ‘‘(c) JOINDER.—If more than 1 petition for a post4 grant review under this chapter is properly filed against 

5 the same patent and the Director determines that more 

6 than 1 of these petitions warrants the institution of a post7 grant review under section 324, the Director may consoli8 date such reviews into a single post-grant review. 

9 ‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding 

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

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

12 another proceeding or matter involving the patent is be13 fore the Office, the Director may determine the manner 

14 in which the post-grant review or other proceeding or mat15 ter may proceed, including providing for the stay, transfer, 

16 consolidation, or termination of any such matter or pro17 ceeding. In determining whether to institute or order a 

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

19 the Director may take into account whether, and reject 

20 the petition or request because, the same or substantially 

21 the same prior art or arguments previously were presented 

22 to the Office. 

23 ‘‘(e) ESTOPPEL.— 

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

25 petitioner in a post-grant review under this chapter, 


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1 or the real party in interest or privy of the peti2 tioner, may not request or maintain a proceeding be3 fore the Office with respect to a claim on any 

4 ground that the petitioner raised or reasonably could 

5 have raised during a post-grant review of the claim 

6 that resulted in a final written decision under sec7 tion 328(a). 

8 ‘‘(2) CIVIL ACTIONS AND OTHER PRO9 CEEDINGS.—The petitioner in a post-grant review 

10 under this chapter, or the real party in interest or 

11 privy of the petitioner, may not assert either in a 

12 civil action arising in whole or in part under section 

13 1338 of title 28 or in a proceeding before the Inter14 national Trade Commission under section 337 of the 

15 Tariff Act of 1930 that a claim in a patent is invalid 

16 on any ground that the petitioner raised during a 

17 post-grant review of the claim that resulted in a 

18 final written decision under section 328(a). 

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

20 not be instituted under this chapter if the petition requests 

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

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

23 which the reissue patent was issued, and the time limita24 tions in section 321(c) would bar filing a petition for a 

25 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) in accordance with section 2(b)(2), estab17 lishing and governing a post-grant review under this 

18 chapter and the relationship of such review to other 

19 proceedings under this title; 

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

21 discovery of relevant evidence, including that such 

22 discovery shall be limited to evidence directly related 

23 to factual assertions advanced by either party in the 

24 proceeding; 

25 ‘‘(6) prescribing sanctions for abuse of dis26 covery, abuse of process, or any other improper use 


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1 of the proceeding, such as to harass or to cause un2 necessary delay or an unnecessary increase in the 

3 cost of the proceeding; 

4 ‘‘(7) providing for protective orders governing 

5 the exchange and submission of confidential infor6 mation; 

7 ‘‘(8) allowing the patent owner to file a re8 sponse to the petition after a post-grant review has 

9 been instituted, and requiring that the patent owner 

10 file with such response, through affidavits or dec11 larations, any additional factual evidence and expert 

12 opinions on which the patent owner relies in support 

13 of the response; 

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; and 

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). 

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

8 under this section, the Director shall consider the effect 

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

10 the patent system, the efficient administration of the Of11 fice, and the ability of the Office to timely complete pro12 ceedings instituted under this chapter. 

13 ‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat14 ent Trial and Appeal Board shall, in accordance with sec15 tion 6, conduct each proceeding authorized by the Direc16 tor. 

17 ‘‘(d) AMENDMENT OF THE PATENT.— 

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

19 instituted under this chapter, the patent owner may 

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

21 the following ways: 

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

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

24 reasonable number of substitute claims. 


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1 ‘‘(2) ADDITIONAL MOTIONS.—Additional mo2 tions to amend may be permitted upon the joint re3 quest of the petitioner and the patent owner to ma4 terially advance the settlement of a proceeding under 

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

6 for good cause shown. 

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

8 this subsection may not enlarge the scope of the 

9 claims of the patent or introduce new matter. 

10 ‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re11 view instituted under this chapter, the petitioner shall 

12 have the burden of proving a proposition of 

13 unpatentability by a preponderance of the evidence. 

14 ‘‘§ 327. Settlement 

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

16 under this chapter shall be terminated with respect to any 

17 petitioner upon the joint request of the petitioner and the 

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

19 the proceeding before the request for termination is filed. 

20 If the post-grant review is terminated with respect to a 

21 petitioner under this section, no estoppel under section 

22 325(e) shall apply to that petitioner. If no petitioner re23 mains in the post-grant review, the Office may terminate 

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

25 under section 328(a). 


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

2 understanding between the patent owner and a petitioner, 

3 including any collateral agreements referred to in such 

4 agreement or understanding, made in connection with, or 

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

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

7 such agreement or understanding shall be filed in the Of8 fice before the termination of the post-grant review as be9 tween the parties. If any party filing such agreement or 

10 understanding so requests, the copy shall be kept separate 

11 from the file of the post-grant review, and shall be made 

12 available only to Federal Government agencies upon writ13 ten request, or to any other person on a showing of good 

14 cause. 

15 ‘‘§ 328. Decision of the Board 

16 ‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re17 view is instituted and not dismissed under this chapter, 

18 the Patent Trial and Appeal Board shall issue a final writ19 ten decision with respect to the patentability of any patent 

20 claim challenged by the petitioner and any new claim 

21 added under section 326(d). 

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

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

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

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1 cate canceling any claim of the patent finally determined 

2 to be unpatentable, confirming any claim of the patent de3 termined to be patentable, and incorporating in the patent 

4 by operation of the certificate any new or amended claim 

5 determined to be patentable. 

6 ‘‘(c) DATA ON LENGTH OF REVIEW.—The Office 

7 shall make available to the public data describing the 

8 length of time between the institution of, and the issuance 

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

10 post-grant review. 

11 ‘‘§ 329. Appeal 

12 ‘‘A party dissatisfied with the final written decision 

13 of the Patent Trial and Appeal Board under section 

14 328(a) may appeal the decision pursuant to sections 141 

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

16 the right to be a party to the appeal. 

17 ‘‘§ 330. Request for stay of certain proceedings 

18 ‘‘If a party seeks a stay of a civil action alleging in19 fringement of a patent under section 281, or a proceeding 

20 before the International Trade Commission under section 

21 337 of the Tariff Act of 1930, relating to a post-grant 

22 review under this chapter, the court shall decide whether 

23 to enter a stay based on— 


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1 ‘‘(1) whether a stay, or the denial thereof, will 

2 simplify the issues in question and streamline the 

3 trial; 

4 ‘‘(2) whether discovery is complete and whether 

5 a trial date has been set; 

6 ‘‘(3) whether a stay, or the denial thereof, 

7 would unduly prejudice the nonmoving party or 

8 present a clear tactical advantage for the moving 

9 party; and 

10 ‘‘(4) whether a stay, or the denial thereof, will 

11 reduce the burden of litigation on the parties and on 

12 the court.’’. 

13 (e) CONFORMING AMENDMENT.—The table of chap14 ters for part III of title 35, United States Code, is amend15 ed by adding at the end the following: 

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

16 (f) REGULATIONS AND EFFECTIVE DATE.— 

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

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

19 the enactment of this Act, issue regulations to carry 

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

21 added by subsection (d) of this section. 

22 (2) APPLICABILITY.— 

23 (A) IN GENERAL.—The amendments made 

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1 piration of the 1-year period beginning on the 

2 date of the enactment of this Act and, except 

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

4 shall apply to any patent that is described in 

5 section 2(n)(1). 

6 (B) LIMITATION.—The Director may im7 pose a limit on the number of post-grant re8 views that may be instituted under chapter 32 

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

10 the 4 years following the effective date set forth 

11 in subparagraph (A). 

12 (3) PENDING INTERFERENCES.— 

13 (A) PROCEDURES IN GENERAL.—The Di14 rector shall determine, and include in the regu15 lations issued under paragraph (1), the proce16 dures under which an interference commenced 

17 before the effective date set forth in paragraph 

18 (2) is to proceed, including whether such inter19 ference— 

20 (i) is to be dismissed without preju21 dice to the filing of a petition for a post22 grant review under chapter 32 of title 35, 

23 United States Code; or 

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

25 been enacted. 


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1 (B) PROCEEDINGS BY PATENT TRIAL AND

2 APPEAL BOARD.—For purposes of an inter3 ference that is commenced before the effective 

4 date set forth in paragraph (2), the Director 

5 may deem the Patent Trial and Appeal Board 

6 to be the Board of Patent Appeals and Inter7 ferences, and may allow the Patent Trial and 

8 Appeal Board to conduct any further pro9 ceedings in that interference. 

10 (C) APPEALS.—The authorization to ap11 peal or have remedy from derivation pro12 ceedings in sections 141(d) and 146 of title 35, 

13 United States Code, and the jurisdiction to en14 tertain appeals from derivation proceedings in 

15 section 1295(a)(4)(A) of title 28, United States 

16 Code, shall be deemed to extend to any final de17 cision in an interference that is commenced be18 fore the effective date set forth in paragraph 

19 (2) of this subsection and that is not dismissed 

20 pursuant to this paragraph. 

21 (g) CITATION OF PRIOR ART AND WRITTEN STATE22 MENTS.— 

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

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


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

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

3 to the Office in writing— 

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

5 publications which that person believes to have a 

6 bearing on the patentability of any claim of a par7 ticular patent; or 

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

9 proceeding before a Federal court or the Office in 

10 which the patent owner took a position on the scope 

11 of any claim of a particular patent. 

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

13 or written statements pursuant to subsection (a) explains 

14 in writing the pertinence and manner of applying the prior 

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

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

17 explanation thereof shall become a part of the official file 

18 of the patent. 

19 ‘‘(c) ADDITIONAL INFORMATION.—A party that sub20 mits a written statement pursuant to subsection (a)(2) 

21 shall include any other documents, pleadings, or evidence 

22 from the proceeding in which the statement was filed that 

23 addresses the written statement. 

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

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

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1 ered by the Office for any purpose other than to determine 

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

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

4 324. If any such written statement or additional informa5 tion is subject to an applicable protective order, it shall 

6 be redacted to exclude information that is subject to that 

7 order. 

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

9 of the person citing prior art or written statements pursu10 ant to subsection (a), that person’s identity shall be ex11 cluded from the patent file and kept confidential.’’. 

12 (2) CONFORMING AMENDMENT.—The item re13 lating to section 301 in the table of sections for 

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

15 amended to read as follows: 

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

16 (3) EFFECTIVE DATE.—The amendments made 

17 by this subsection shall take effect upon the expira18 tion of the 1-year period beginning on the date of 

19 the enactment of this Act and shall apply to any 

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

21 (h) REEXAMINATION.— 

22 (1) DETERMINATION BY DIRECTOR.— 

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

24 35, United States Code, is amended by striking 


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1 ‘‘section 301 of this title’’ and inserting ‘‘sec2 tion 301 or 302’’. 

3 (B) EFFECTIVE DATE.—The amendment 

4 made by this paragraph shall take effect upon 

5 the expiration of the 1-year period beginning on 

6 the date of the enactment of this Act and shall 

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

8 that effective date. 

9 (2) APPEAL.— 

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

11 United States Code, is amended by striking 

12 ‘‘145’’ and inserting ‘‘144’’. 

13 (B) EFFECTIVE DATE.—The amendment 

14 made by this paragraph shall take effect on the 

15 date of the enactment of this Act and shall 

16 apply to any appeal of a reexamination that is 

17 pending before the Board of Patent Appeals 

18 and Interferences or the Patent Trial and Ap19 peal Board on or after the date of the enact20 ment of this Act. 

21 SEC. 6. PATENT TRIAL AND APPEAL BOARD. 

22 (a) COMPOSITION AND DUTIES.— 

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

24 States Code, is amended to read as follows: 


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1 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

4 Director, the Commissioner for Patents, the Commissioner 

5 for Trademarks, and the administrative patent judges 

6 shall constitute the Patent Trial and Appeal Board. The 

7 administrative patent judges shall be persons of competent 

8 legal knowledge and scientific ability who are appointed 

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

10 reference in any Federal law, Executive order, rule, regu11 lation, or delegation of authority, or any document of or 

12 pertaining to the Board of Patent Appeals and Inter13 ferences is deemed to refer to the Patent Trial and Appeal 

14 Board. 

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

16 shall— 

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

18 adverse decisions of examiners upon applications for 

19 patents pursuant to section 134(a); 

20 ‘‘(2) review appeals of reexaminations pursuant 

21 to section 134(b); 

22 ‘‘(3) conduct derivation proceedings pursuant to 

23 section 135; and 

24 ‘‘(4) conduct inter partes reviews and post25 grant reviews pursuant to chapters 31 and 32. 


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

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

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

4 and Appeal Board, who shall be designated by the Direc5 tor. Only the Patent Trial and Appeal Board may grant 

6 rehearings. 

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

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

9 deem the appointment of an administrative patent judge 

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

11 held office pursuant to an appointment by the Director 

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

13 appointed the administrative patent judge. It shall be a 

14 defense to a challenge to the appointment of an adminis15 trative patent judge on the basis of the judge’s having 

16 been originally appointed by the Director that the admin17 istrative patent judge so appointed was acting as a de 

18 facto officer.’’. 

19 (2) CONFORMING AMENDMENT.—The item re20 lating to section 6 in the table of sections for chap21 ter 1 of title 35, United States Code, is amended to 

22 read as follows: 

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

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

24 35, United States Code, is amended— 


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1 (1) in subsection (b), by striking ‘‘any reexam2 ination proceeding’’ and inserting ‘‘a reexamina3 tion’’; and 

4 (2) by striking subsection (c). 

5 (c) CIRCUIT APPEALS.— 

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

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

8 ‘‘§ 141. Appeal to the Court of Appeals for the Federal 

9 Circuit 

10 ‘‘(a) EXAMINATIONS.—An applicant who is dissatis11 fied with the final decision in an appeal to the Patent Trial 

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

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

14 for the Federal Circuit. By filing such an appeal, the ap15 plicant waives his or her right to proceed under section 

16 145. 

17 ‘‘(b) REEXAMINATIONS.—A patent owner who is dis18 satisfied with the final decision in an appeal of a reexam19 ination to the Patent Trial and Appeal Board under sec20 tion 134(b) may appeal the Board’s decision only to the 

21 United States Court of Appeals for the Federal Circuit. 

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

23 A party to a post-grant or inter partes review who is dis24 satisfied with the final written decision of the Patent Trial 

25 and Appeal Board under section 318(a) or 328(a) may 


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1 appeal the Board’s decision only to the United States 

2 Court of Appeals for the Federal Circuit. 

3 ‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri4 vation proceeding who is dissatisfied with the final deci5 sion of the Patent Trial and Appeal Board in the pro6 ceeding may appeal the decision to the United States 

7 Court of Appeals for the Federal Circuit, but such appeal 

8 shall be dismissed if any adverse party to such derivation 

9 proceeding, within 20 days after the appellant has filed 

10 notice of appeal in accordance with section 142, files no11 tice with the Director that the party elects to have all fur12 ther proceedings conducted as provided in section 146. If 

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

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

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

16 proceedings in the case.’’. 

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

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

19 follows: 

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

21 the United States Patent and Trademark Office 

22 with respect to a patent application, derivation 

23 proceeding, reexamination, post-grant review, or 

24 inter partes review at the instance of a party 

25 who exercised that party’s right to participate 


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1 in the applicable proceeding before or appeal to 

2 the Board, except that an applicant or a party 

3 to a derivation proceeding may also have rem4 edy by civil action pursuant to section 145 or 

5 146 of title 35; an appeal under this subpara6 graph of a decision of the Board with respect 

7 to an application or derivation proceeding shall 

8 waive the right of such applicant or party to 

9 proceed under section 145 or 146 of title 35;’’. 

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

11 title 35, United States Code, is amended— 

12 (A) by striking the third sentence and in13 serting the following: ‘‘In an ex parte case, the 

14 Director shall submit to the court in writing the 

15 grounds for the decision of the Patent and 

16 Trademark Office, addressing all of the issues 

17 raised in the appeal. The Director shall have 

18 the right to intervene in an appeal from a deci19 sion entered by the Patent Trial and Appeal 

20 Board in a derivation proceeding under section 

21 135 or in an inter partes or post-grant review 

22 under chapter 31 or 32.’’; and 

23 (B) by striking the last sentence. 

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

25 this section shall take effect upon the expiration of the 


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

2 this Act and shall apply to proceedings commenced on or 

3 after that effective date, except that— 

4 (1) the extension of jurisdiction to the United 

5 States Court of Appeals for the Federal Circuit to 

6 entertain appeals of decisions of the Patent Trial 

7 and Appeal Board in reexaminations under the 

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

9 deemed to take effect on the date of enactment of 

10 this Act and shall extend to any decision of the 

11 Board of Patent Appeals and Interferences with re12 spect to a reexamination that is entered before, on, 

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

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

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

16 day before the date of the enactment of this Act 

17 shall continue to apply to inter partes reexamina18 tions that are requested under section 311 of such 

19 title before the effective date of the amendments 

20 made by this section; 

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

22 deemed to be the Board of Patent Appeals and 

23 Interferences for purposes of appeals of inter partes 

24 reexaminations that are requested under section 311 


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

2 date of the amendments made by this section; and 

3 (4) the Director’s right under the fourth sen4 tence of section 143 of title 35, United States Code, 

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

6 intervene in an appeal from a decision entered by 

7 the Patent Trial and Appeal Board shall be deemed 

8 to extend to inter partes reexaminations that are re9 quested under section 311 of such title before the ef10 fective date of the amendments made by this section. 

11 SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 

12 (a) IN GENERAL.—Section 122 of title 35, United 

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

15 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR16 TIES.— 

17 ‘‘(1) IN GENERAL.—Any third party may sub18 mit for consideration and inclusion in the record of 

19 a patent application, any patent, published patent 

20 application, or other printed publication of potential 

21 relevance to the examination of the application, if 

22 such submission is made in writing before the earlier 

23 of— 


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1 ‘‘(A) the date a notice of allowance under 

2 section 151 is given or mailed in the application 

3 for patent; or 

4 ‘‘(B) the later of— 

5 ‘‘(i) 6 months after the date on which 

6 the application for patent is first published 

7 under section 122 by the Office, or 

8 ‘‘(ii) the date of the first rejection 

9 under section 132 of any claim by the ex10 aminer during the examination of the ap11 plication for patent. 

12 ‘‘(2) OTHER REQUIREMENTS.—Any submission 

13 under paragraph (1) shall— 

14 ‘‘(A) set forth a concise description of the 

15 asserted relevance of each submitted document; 

16 ‘‘(B) be accompanied by such fee as the 

17 Director may prescribe; and 

18 ‘‘(C) include a statement by the person 

19 making such submission affirming that the sub20 mission was made in compliance with this sec21 tion.’’. 

22 (b) EFFECTIVE DATE.—The amendments made by 

23 this section shall take effect upon the expiration of the 

24 1-year period beginning on the date of the enactment of 


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1 this Act and shall apply to any patent application filed 

2 before, on, or after that effective date. 

3 SEC. 8. VENUE. 

4 (a) TECHNICAL AMENDMENTS RELATING TO

5 VENUE.—Sections 32, 145, 146, 154(b)(4)(A), and 293 

6 of title 35, United States Code, and section 21(b)(4) of 

7 the Trademark Act of 1946 (15 U.S.C. 1071(b)(4)), are 

8 each amended by striking ‘‘United States District Court 

9 for the District of Columbia’’ each place that term appears 

10 and inserting ‘‘United States District Court for the East11 ern District of Virginia’’. 

12 (b) EFFECTIVE DATE.—The amendments made by 

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

14 of this Act and shall apply to any civil action commenced 

15 on or after that date. 

16 SEC. 9. FEE SETTING AUTHORITY. 

17 (a) FEE SETTING.— 

18 (1) IN GENERAL.—The Director may set or ad19 just by rule any fee established, authorized, or 

20 charged under title 35, United States Code, or the 

21 Trademark Act of 1946 (15 U.S.C. 1051 et seq.), 

22 for any services performed by or materials furnished 

23 by, the Office, subject to paragraph (2). 

24 (2) FEES TO RECOVER COSTS.—Fees may be 

25 set or adjusted under paragraph (1) only to recover 


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1 the aggregate estimated costs to the Office for proc2 essing, activities, services, and materials relating to 

3 patents (in the case of patent fees) and trademarks 

4 (in the case of trademark fees), including adminis5 trative costs of the Office with respect to such pat6 ent or trademark fees (as the case may be). 

7 (b) SMALL AND MICRO ENTITIES.—The fees set or 

8 adjusted under subsection (a) for filing, searching, exam9 ining, issuing, appealing, and maintaining patent applica10 tions and patents shall be reduced by 50 percent with re11 spect to the application of such fees to any small entity 

12 that qualifies for reduced fees under section 41(h)(1) of 

13 title 35, United States Code, and shall be reduced by 75 

14 percent with respect to the application of such fees to any 

15 micro entity as defined in section 123 of that title (as 

16 added by subsection (f) of this section). 

17 (c) REDUCTION OF FEES IN CERTAIN FISCAL

18 YEARS.—In each fiscal year, the Director— 

19 (1) shall consult with the Patent Public Advi20 sory Committee and the Trademark Public Advisory 

21 Committee on the advisability of reducing any fees 

22 described in subsection (a); and 

23 (2) after the consultation required under para24 graph (1), may reduce such fees. 


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1 (d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.— 

2 The Director shall— 

3 (1) not less than 45 days before publishing any 

4 proposed fee under subsection (a) in the Federal 

5 Register, submit the proposed fee to the Patent Pub6 lic Advisory Committee or the Trademark Public 

7 Advisory Committee, or both, as appropriate; 

8 (2)(A) provide the relevant advisory committee 

9 described in paragraph (1) a 30-day period following 

10 the submission of any proposed fee, in which to de11 liberate, consider, and comment on such proposal; 

12 (B) require that, during that 30-day period, the 

13 relevant advisory committee hold a public hearing 

14 relating to such proposal; and 

15 (C) assist the relevant advisory committee in 

16 carrying out that public hearing, including by offer17 ing the use of the resources of the Office to notify 

18 and promote the hearing to the public and interested 

19 stakeholders; 

20 (3) require the relevant advisory committee to 

21 make available to the public a written report setting 

22 forth in detail the comments, advice, and rec23 ommendations of the committee regarding the pro24 posed fee; and 


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1 (4) consider and analyze any comments, advice, 

2 or recommendations received from the relevant advi3 sory committee before setting or adjusting (as the 

4 case may be) the fee. 

5 (e) PUBLICATION IN THE FEDERAL REGISTER.— 

6 (1) PUBLICATION AND RATIONALE.—The Di7 rector shall— 

8 (A) publish any proposed fee change under 

9 this section in the Federal Register; 

10 (B) include, in such publication, the spe11 cific rationale and purpose for the proposal, in12 cluding the possible expectations or benefits re13 sulting from the proposed change; and 

14 (C) notify, through the Chair and Ranking 

15 Member of the Committees on the Judiciary of 

16 the Senate and the House of Representatives, 

17 the Congress of the proposed change not later 

18 than the date on which the proposed change is 

19 published under subparagraph (A). 

20 (2) PUBLIC COMMENT PERIOD.—The Director 

21 shall, in the publication under paragraph (1), pro22 vide the public a period of not less than 45 days in 

23 which to submit comments on the proposed change 

24 in fees. 


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1 (3) PUBLICATION OF FINAL RULE.—The final 

2 rule setting or adjusting a fee under this section 

3 shall be published in the Federal Register and in the 

4 Official Gazette of the Patent and Trademark Of5 fice. 

6 (4) CONGRESSIONAL COMMENT PERIOD.—A fee 

7 set or adjusted under subsection (a) may not become 

8 effective— 

9 (A) before the end of the 45-day period be10 ginning on the day after the date on which the 

11 Director publishes the final rule adjusting or 

12 setting the fee under paragraph (3); or 

13 (B) if a law is enacted disapproving such 

14 fee. 

15 (5) RULE OF CONSTRUCTION.—Rules pre16 scribed under this section shall not diminish— 

17 (A) the rights of an applicant for a patent 

18 under title 35, United States Code, or for a 

19 trademark under the Trademark Act of 1946; 

20 or 

21 (B) any rights under a ratified treaty. 

22 (f) RETENTION OF AUTHORITY.—The Director re23 tains the authority under subsection (a) to set or adjust 

24 fees only during such period as the Patent and Trademark 


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1 Office remains an agency within the Department of Com2 merce. 

3 (g) MICRO ENTITY DEFINED.— 

4 (1) IN GENERAL.—Chapter 11 of title 35, 

5 United States Code, is amended by adding at the 

6 end the following new section: 

7 ‘‘§ 123. Micro entity defined. 

8 ‘‘(a) IN GENERAL.—For purposes of this title, the 

9 term ‘micro entity’ means an applicant who makes a cer10 tification that the applicant— 

11 ‘‘(1) qualifies as a small entity, as defined in 

12 regulations issued by the Director; 

13 ‘‘(2) has not been named as an inventor on 

14 more than 4 previously filed patent applications, 

15 other than applications filed in another country, pro16 visional applications under section 111(b), or inter17 national applications filed under the treaty defined 

18 in section 351(a) for which the basic national fee 

19 under section 41(a) was not paid; 

20 ‘‘(3) did not, in the calendar year preceding the 

21 calendar year in which the examination fee for the 

22 application is being paid, have a gross income, as de23 fined in section 61(a) of the Internal Revenue Code 

24 of 1986, exceeding 3 times the median household inVerDate Mar 15 2010 04:33 Mar 31, 2011 Jkt 099200 PO 00000 Frm 00082 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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1 come for that preceding calendar year, as reported 

2 by the Bureau of the Census; and 

3 ‘‘(4) has not assigned, granted, or conveyed, 

4 and is not under an obligation by contract or law to 

5 assign, grant, or convey, a license or other ownership 

6 interest in the application concerned to an entity 

7 that, in the calendar year preceding the calendar 

8 year in which the examination fee for the application 

9 is being paid, had a gross income, as defined in sec10 tion 61(a) of the Internal Revenue Code of 1986, ex11 ceeding 3 times the median household income for 

12 that preceding calendar year, as most recently re13 ported by the Bureau of the Census. 

14 ‘‘(b) APPLICATIONS RESULTING FROM PRIOR EM15 PLOYMENT.—An applicant is not considered to be named 

16 on a previously filed application for purposes of subsection 

17 (a)(2) if the applicant has assigned, or is under an obliga18 tion by contract or law to assign, all ownership rights in 

19 the application as the result of the applicant’s previous 

20 employment. 

21 ‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an 

22 applicant’s or entity’s gross income in the preceding year 

23 is not in United States dollars, the average currency ex24 change rate, as reported by the Internal Revenue Service, 

25 during the preceding year shall be used to determine 


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1 whether the applicant’s or entity’s gross income exceeds 

2 the threshold specified in paragraphs (3) or (4) of sub3 section (a). 

4 ‘‘(d) PUBLIC INSTITUTIONS OF HIGHER EDU5 CATION.— 

6 ‘‘(1) IN GENERAL.—For purposes of this sec7 tion, a micro entity shall include an applicant who 

8 certifies that— 

9 ‘‘(A) the applicant’s employer, from which 

10 the applicant obtains the majority of the appli11 cant’s income, is an institution of higher edu12 cation, as defined in section 101 of the Higher 

13 Education Act of 1965 (20 U.S.C. 1001), that 

14 is a public institution; or 

15 ‘‘(B) the applicant has assigned, granted, 

16 conveyed, or is under an obligation by contract 

17 or law to assign, grant, or convey, a license or 

18 other ownership interest in the particular appli19 cation to such State public institution. 

20 ‘‘(2) DIRECTOR’S AUTHORITY.—The Director 

21 may, in the Director’s discretion, impose income lim22 its, annual filing limits, or other limits on who may 

23 qualify as a micro entity pursuant to this subsection 

24 if the Director determines that such additional limits 

25 are reasonably necessary to avoid an undue impact 


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1 on other patent applicants or owners or are other2 wise reasonably necessary and appropriate. At least 

3 3 months before any limits proposed to be imposed 

4 pursuant to this paragraph shall take effect, the Di5 rector shall inform the Committee on the Judiciary 

6 of the House of Representatives and the Committee 

7 on the Judiciary of the Senate of any such proposed 

8 limits.’’. 

9 (2) CONFORMING AMENDMENT.—Chapter 11 of 

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

11 at the end the following new item: 

‘‘123. Micro entity defined.’’. 

12 (h) ELECTRONIC FILING INCENTIVE.— 

13 (1) IN GENERAL.—Notwithstanding any other 

14 provision of this section, a fee of $400 shall be es15 tablished for each application for an original patent, 

16 except for a design, plant, or provisional application, 

17 that is not filed by electronic means as prescribed by 

18 the Director. The fee established by this subsection 

19 shall be reduced by 50 percent for small entities that 

20 qualify for reduced fees under section 41(h)(1) of 

21 title 35, United States Code. All fees paid under this 

22 subsection shall be deposited in the Treasury as an 

23 offsetting receipt that shall not be available for obli24 gation or expenditure. 


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1 (2) EFFECTIVE DATE.—This subsection shall 

2 take effect upon the expiration of the 60-day period 

3 beginning on the date of the enactment of this Act. 

4 (i) EFFECTIVE DATE.—This section and the amend5 ments made by this section shall take effect on the date 

6 of the enactment of this Act. 

7 SEC. 10. FEES FOR PATENT SERVICES. 

8 (a) GENERAL PATENT SERVICES.—Subsections (a) 

9 and (b) of section 41 of title 35, United States Code, are 

10 amended to read as follows: 

11 ‘‘(a) GENERAL FEES.—The Director shall charge the 

12 following fees: 

13 ‘‘(1) FILING AND BASIC NATIONAL FEES.— 

14 ‘‘(A) On filing each application for an 

15 original patent, except for design, plant, or pro16 visional applications, $330. 

17 ‘‘(B) On filing each application for an 

18 original design patent, $220. 

19 ‘‘(C) On filing each application for an 

20 original plant patent, $220. 

21 ‘‘(D) On filing each provisional application 

22 for an original patent, $220. 

23 ‘‘(E) On filing each application for the re24 issue of a patent, $330. 


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1 ‘‘(F) The basic national fee for each inter2 national application filed under the treaty de3 fined in section 351(a) entering the national 

4 stage under section 371, $330. 

5 ‘‘(G) In addition, excluding any sequence 

6 listing or computer program listing filed in an 

7 electronic medium as prescribed by the Direc8 tor, for any application the specification and 

9 drawings of which exceed 100 sheets of paper 

10 (or equivalent as prescribed by the Director if 

11 filed in an electronic medium), $270 for each 

12 additional 50 sheets of paper (or equivalent as 

13 prescribed by the Director if filed in an elec14 tronic medium) or fraction thereof. 

15 ‘‘(2) EXCESS CLAIMS FEES.— 

16 ‘‘(A) IN GENERAL.—In addition to the fee 

17 specified in paragraph (1)— 

18 ‘‘(i) on filing or on presentation at 

19 any other time, $220 for each claim in 

20 independent form in excess of 3; 

21 ‘‘(ii) on filing or on presentation at 

22 any other time, $52 for each claim (wheth23 er dependent or independent) in excess of 

24 20; and 


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1 ‘‘(iii) for each application containing a 

2 multiple dependent claim, $390. 

3 ‘‘(B) MULTIPLE DEPENDENT CLAIMS.— 

4 For the purpose of computing fees under sub5 paragraph (A), a multiple dependent claim re6 ferred to in section 112 or any claim depending 

7 therefrom shall be considered as separate de8 pendent claims in accordance with the number 

9 of claims to which reference is made. 

10 ‘‘(C) REFUNDS; ERRORS IN PAYMENT.— 

11 The Director may by regulation provide for a 

12 refund of any part of the fee specified in sub13 paragraph (A) for any claim that is canceled 

14 before an examination on the merits, as pre15 scribed by the Director, has been made of the 

16 application under section 131. Errors in pay17 ment of the additional fees under this para18 graph may be rectified in accordance with regu19 lations prescribed by the Director. 

20 ‘‘(3) EXAMINATION FEES.— 

21 ‘‘(A) IN GENERAL.— 

22 ‘‘(i) For examination of each applica23 tion for an original patent, except for de24 sign, plant, provisional, or international 

25 applications, $220. 


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1 ‘‘(ii) For examination of each applica2 tion for an original design patent, $140. 

3 ‘‘(iii) For examination of each applica4 tion for an original plant patent, $170. 

5 ‘‘(iv) For examination of the national 

6 stage of each international application, 

7 $220. 

8 ‘‘(v) For examination of each applica9 tion for the reissue of a patent, $650. 

10 ‘‘(B) APPLICABILITY OF OTHER FEE PRO11 VISIONS.—The provisions of paragraphs (3) and 

12 (4) of section 111(a) relating to the payment of 

13 the fee for filing the application shall apply to 

14 the payment of the fee specified in subpara15 graph (A) with respect to an application filed 

16 under section 111(a). The provisions of section 

17 371(d) relating to the payment of the national 

18 fee shall apply to the payment of the fee speci19 fied in subparagraph (A) with respect to an 

20 international application. 

21 ‘‘(4) ISSUE FEES.— 

22 ‘‘(A) For issuing each original patent, ex23 cept for design or plant patents, $1,510. 

24 ‘‘(B) For issuing each original design pat25 ent, $860. 


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1 ‘‘(C) For issuing each original plant pat2 ent, $1,190. 

3 ‘‘(D) For issuing each reissue patent, 

4 $1,510. 

5 ‘‘(5) DISCLAIMER FEE.—On filing each dis6 claimer, $140. 

7 ‘‘(6) APPEAL FEES.— 

8 ‘‘(A) On filing an appeal from the exam9 iner to the Patent Trial and Appeal Board, 

10 $540. 

11 ‘‘(B) In addition, on filing a brief in sup12 port of the appeal, $540, and on requesting an 

13 oral hearing in the appeal before the Patent 

14 Trial and Appeal Board, $1,080. 

15 ‘‘(7) REVIVAL FEES.—On filing each petition 

16 for the revival of an unintentionally abandoned ap17 plication for a patent, for the unintentionally delayed 

18 payment of the fee for issuing each patent, or for an 

19 unintentionally delayed response by the patent owner 

20 in any reexamination proceeding, $1,620, unless the 

21 petition is filed under section 133 or 151, in which 

22 case the fee shall be $540. 

23 ‘‘(8) EXTENSION FEES.—For petitions for 1- 

24 month extensions of time to take actions required by 

25 the Director in an application— 


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1 ‘‘(A) on filing a first petition, $130; 

2 ‘‘(B) on filing a second petition, $360; and 

3 ‘‘(C) on filing a third or subsequent peti4 tion, $620. 

5 ‘‘(b) MAINTENANCE FEES.— 

6 ‘‘(1) IN GENERAL.—The Director shall charge 

7 the following fees for maintaining in force all pat8 ents based on applications filed on or after Decem9 ber 12, 1980: 

10 ‘‘(A) Three years and 6 months after 

11 grant, $980. 

12 ‘‘(B) Seven years and 6 months after 

13 grant, $2,480. 

14 ‘‘(C) Eleven years and 6 months after 

15 grant, $4,110. 

16 ‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay17 ment of the applicable maintenance fee under para18 graph (1) is received in the Office on or before the 

19 date the fee is due or within a grace period of 6 

20 months thereafter, the patent shall expire as of the 

21 end of such grace period. The Director may require 

22 the payment of a surcharge as a condition of accept23 ing within such 6-month grace period the payment 

24 of an applicable maintenance fee. 


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1 ‘‘(3) NO MAINTENANCE FEE FOR DESIGN OR

2 PLANT PATENT.—No fee may be established for 

3 maintaining a design or plant patent in force.’’. 

4 (b) DELAYS IN PAYMENT.—Subsection (c) of section 

5 41 of title 35, United States Code, is amended— 

6 (1) by striking ‘‘(c)(1) The Director’’ and in7 serting: 

8 ‘‘(c) DELAYS IN PAYMENT OF MAINTENANCE

9 FEES.— 

10 ‘‘(1) ACCEPTANCE.—The Director’’; and 

11 (2) by striking ‘‘(2) A patent’’ and inserting 

12 ‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A patent’’. 

13 (c) PATENT SEARCH FEES.—Subsection (d) of sec14 tion 41 of title 35, United States Code, is amended to 

15 read as follows: 

16 ‘‘(d) PATENT SEARCH AND OTHER FEES.— 

17 ‘‘(1) PATENT SEARCH FEES.— 

18 ‘‘(A) IN GENERAL.—The Director shall 

19 charge the fees specified under subparagraph 

20 (B) for the search of each application for a pat21 ent, except for provisional applications. The Di22 rector shall adjust the fees charged under this 

23 paragraph to ensure that the fees recover an 

24 amount not to exceed the estimated average 

25 cost to the Office of searching applications for 


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1 patent either by acquiring a search report from 

2 a qualified search authority, or by causing a 

3 search by Office personnel to be made, of each 

4 application for patent. 

5 ‘‘(B) SPECIFIC FEES.—The fees referred 

6 to in subparagraph (A) are— 

7 ‘‘(i) $540 for each application for an 

8 original patent, except for design, plant, 

9 provisional, or international applications; 

10 ‘‘(ii) $100 for each application for an 

11 original design patent; 

12 ‘‘(iii) $330 for each application for an 

13 original plant patent; 

14 ‘‘(iv) $540 for the national stage of 

15 each international application; and 

16 ‘‘(v) $540 for each application for the 

17 reissue of a patent. 

18 ‘‘(C) APPLICABILITY OF OTHER PROVI19 SIONS.—The provisions of paragraphs (3) and 

20 (4) of section 111(a) relating to the payment of 

21 the fee for filing the application shall apply to 

22 the payment of the fee specified in this para23 graph with respect to an application filed under 

24 section 111(a). The provisions of section 371(d) 

25 relating to the payment of the national fee shall 


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1 apply to the payment of the fee specified in this 

2 paragraph with respect to an international ap3 plication. 

4 ‘‘(D) REFUNDS.—The Director may by 

5 regulation provide for a refund of any part of 

6 the fee specified in this paragraph for any ap7 plicant who files a written declaration of ex8 press abandonment as prescribed by the Direc9 tor before an examination has been made of the 

10 application under section 131. 

11 ‘‘(E) APPLICATIONS SUBJECT TO SECRECY

12 ORDER.—A search of an application that is the 

13 subject of a secrecy order under section 181 or 

14 otherwise involves classified information may be 

15 conducted only by Office personnel. 

16 ‘‘(F) CONFLICTS OF INTEREST.—A quali17 fied search authority that is a commercial enti18 ty may not conduct a search of a patent appli19 cation if the entity has any direct or indirect fi20 nancial interest in any patent or in any pending 

21 or imminent application for patent filed or to be 

22 filed in the Office. 

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 conVerDate Mar 15 2010 04:33 Mar 31, 2011 Jkt 099200 PO 00000 Frm 00095 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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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) Division B of Public Law 108–447 is amended by 

8 striking ‘‘and shall apply only with respect to the remain9 ing portion of fiscal year 2005 and fiscal year 2006’’. 

10 (h) ELECTRONIC FILING INCENTIVE.— 

11 (1) IN GENERAL.—Notwithstanding any other 

12 provision of this section, a fee of $400 shall be es13 tablished for each application for an original patent, 

14 except for a design, plant, or provisional application, 

15 that is not filed by electronic means as prescribed by 

16 the Director. The fee established by this subsection 

17 shall be reduced by 50 percent for small entities that 

18 qualify for reduced fees under section 41(h)(1) of 

19 title 35, United States Code. All fees paid under this 

20 subsection shall be deposited in the Treasury as an 

21 offsetting receipt that shall not be available for obli22 gation or expenditure. 

23 (2) EFFECTIVE DATE.—This subsection shall 

24 take effect upon the expiration of the 60-day period 

25 beginning on the date of the enactment of this Act. 


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1 (i) REDUCTION IN FEES FOR SMALL ENTITY PAT2 ENTS.—The Director shall reduce fees for providing 

3 prioritized examination of utility and plant patent applica4 tions by 50 percent for small entities that qualify for re5 duced fees under section 41(h)(1) of title 35, United 

6 States Code, so long as the fees of the prioritized examina7 tion program are set to recover the estimated cost of the 

8 program. 

9 (j) EFFECTIVE DATE.—Except as provided in sub10 section (h), this section and the amendments made by this 

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

12 this Act. 

13 SEC. 11. SUPPLEMENTAL EXAMINATION. 

14 (a) IN GENERAL.—Chapter 25 of title 35, United 

15 States Code, is amended by adding at the end the fol16 lowing: 

17 ‘‘§ 257. Supplemental examinations to consider, re18 consider, or correct information 

19 ‘‘(a) REQUEST FOR SUPPLEMENTAL EXAMINA20 TION.—A patent owner may request supplemental exam21 ination of a patent in the Office to consider, reconsider, 

22 or correct information believed to be relevant to the pat23 ent, in accordance with such requirements as the Director 

24 may establish. Within 3 months after the date a request 

25 for supplemental examination meeting the requirements of 


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1 this section is received, the Director shall conduct the sup2 plemental examination and shall conclude such examina3 tion by issuing a certificate indicating whether the infor4 mation presented in the request raises a substantial new 

5 question of patentability. 

6 ‘‘(b) REEXAMINATION ORDERED.—If the certificate 

7 issued under subsection (a) indicates that a substantial 

8 new question of patentability is raised by 1 or more items 

9 of information in the request, the Director shall order re10 examination of the patent. The reexamination shall be 

11 conducted according to procedures established by chapter 

12 30, except that the patent owner shall not have the right 

13 to file a statement pursuant to section 304. During the 

14 reexamination, the Director shall address each substantial 

15 new question of patentability identified during the supple16 mental examination, notwithstanding the limitations in 

17 chapter 30 relating to patents and printed publication or 

18 any other provision of such chapter. 

19 ‘‘(c) EFFECT.— 

20 ‘‘(1) IN GENERAL.—A patent shall not be held 

21 unenforceable on the basis of conduct relating to in22 formation that had not been considered, was inad23 equately considered, or was incorrect in a prior ex24 amination of the patent if the information was con25 sidered, reconsidered, or corrected during a suppleVerDate Mar 15 2010 04:33 Mar 31, 2011 Jkt 099200 PO 00000 Frm 00100 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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1 mental examination of the patent. The making of a 

2 request under subsection (a), or the absence thereof, 

3 shall not be relevant to enforceability of the patent 

4 under section 282. 

5 ‘‘(2) EXCEPTIONS.— 

6 ‘‘(A) PRIOR ALLEGATIONS.—Paragraph 

7 (1) shall not apply to an allegation pled with 

8 particularity, or set forth with particularity in 

9 a notice received by the patent owner under sec10 tion 505(j)(2)(B)(iv)(II) of the Federal Food, 

11 Drug, and Cosmetic Act (21 U.S.C. 

12 355(j)(2)(B)(iv)(II)), before the date of a sup13 plemental examination request under subsection 

14 (a) to consider, reconsider, or correct informa15 tion forming the basis for the allegation. 

16 ‘‘(B) PATENT ENFORCEMENT ACTIONS.— 

17 In an action brought under section 337(a) of 

18 the Tariff Act of 1930 (19 U.S.C. 1337(a)), or 

19 section 281 of this title, paragraph (1) shall not 

20 apply to any defense raised in the action that 

21 is based upon information that was considered, 

22 reconsidered, or corrected pursuant to a supple23 mental examination request under subsection 

24 (a), unless the supplemental examination, and 

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1 quest, are concluded before the date on which 

2 the action is brought. 

3 ‘‘(d) FEES AND REGULATIONS.— 

4 ‘‘(1) FEES.—The Director shall, by regulation, 

5 establish fees for the submission of a request for 

6 supplemental examination of a patent, and to con7 sider each item of information submitted in the re8 quest. If reexamination is ordered under subsection 

9 (b), fees established and applicable to ex parte reex10 amination proceedings under chapter 30 shall be 

11 paid, in addition to fees applicable to supplemental 

12 examination. 

13 ‘‘(2) REGULATIONS.—The Director shall issue 

14 regulations governing the form, content, and other 

15 requirements of requests for supplemental examina16 tion, and establishing procedures for reviewing infor17 mation submitted in such requests. 

18 ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec19 tion shall be construed— 

20 ‘‘(1) to preclude the imposition of sanctions 

21 based upon criminal or antitrust laws (including sec22 tion 1001(a) of title 18, the first section of the Clay23 ton Act, and section 5 of the Federal Trade Com24 mission Act to the extent that section relates to un25 fair methods of competition); 


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1 ‘‘(2) to limit the authority of the Director to in2 vestigate issues of possible misconduct and impose 

3 sanctions for misconduct in connection with matters 

4 or proceedings before the Office; or 

5 ‘‘(3) to limit the authority of the Director to 

6 issue regulations under chapter 3 relating to sanc7 tions for misconduct by representatives practicing 

8 before the Office.’’. 

9 (b) CONFORMING AMENDMENT.—The table of sec10 tions for chapter 25 of title 35, United States Code, is 

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

‘‘257. Supplemental examinations to consider, reconsider, or correct information.’’. 

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

13 this section shall take effect upon the expiration of the 

14 1-year period beginning on the date of the enactment of 

15 this Act and shall apply to any patent issued before, on, 

16 or after that effective date. 

17 SEC. 12. FUNDING AGREEMENTS. 

18 (a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 

19 35, United States Code, is amended— 

20 (1) by striking ‘‘75 percent’’ and inserting ‘‘15 

21 percent’’; and 

22 (2) by striking ‘‘25 percent’’ and inserting ‘‘85 

23 percent’’. 


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1 (b) EFFECTIVE DATE.—The amendments made by 

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

3 this Act and shall apply to any patent issued before, on, 

4 or after that date. 

5 SEC. 13. TAX STRATEGIES DEEMED WITHIN THE PRIOR 

6 ART. 

7 (a) IN GENERAL.—For purposes of evaluating an in8 vention under section 102 or 103 of title 35, United States 

9 Code, any strategy for reducing, avoiding, or deferring tax 

10 liability, whether known or unknown at the time of the 

11 invention or application for patent, shall be deemed insuf12 ficient to differentiate a claimed invention from the prior 

13 art. 

14 (b) DEFINITION.—For purposes of this section, the 

15 term ‘‘tax liability’’ refers to any liability for a tax under 

16 any Federal, State, or local law, or the law of any foreign 

17 jurisdiction, including any statute, rule, regulation, or or18 dinance that levies, imposes, or assesses such tax liability. 

19 (c) EXCLUSIONS.—This section does not apply to 

20 that part of an invention that— 

21 (1) is a method, apparatus, technology, com22 puter program product, or system, that is used sole23 ly for preparing a tax or information return or other 

24 tax filing, including one that records, transmits, 

25 transfers, or organizes data related to such filing; or 


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1 (2) is a method, apparatus, technology, com2 puter program product, or system used solely for fi3 nancial management, to the extent that it is sever4 able from any tax strategy or does not limit the use 

5 of any tax strategy by any taxpayer or tax advisor. 

6 (d) RULE OF CONSTRUCTION.—Nothing in this sec7 tion shall be construed to imply that other business meth8 ods are patentable or that other business-method patents 

9 are valid. 

10 (e) EFFECTIVE DATE; APPLICABILITY.—This section 

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

12 shall apply to any patent application pending, and any 

13 patent issued, on or after that date. 

14 SEC. 14. BEST MODE REQUIREMENT. 

15 (a) IN GENERAL.—Section 282 of title 35, United 

16 State Code, is amended in its second undesignated para17 graph by striking paragraph (3) and inserting the fol18 lowing: 

19 ‘‘(3) Invalidity of the patent or any claim in 

20 suit for failure to comply with— 

21 ‘‘(A) any requirement of section 112, ex22 cept that the failure to disclose the best mode 

23 shall not be a basis on which any claim of a 

24 patent may be canceled or held invalid or other25 wise unenforceable; or 


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1 ‘‘(B) any requirement of section 251.’’. 

2 (b) CONFORMING AMENDMENT.—Sections 119(e)(1) 

3 and 120 of title 35, United States Code, are each amended 

4 by striking ‘‘the first paragraph of section 112 of this 

5 title’’ and inserting ‘‘section 112(a) (other than the re6 quirement to disclose the best mode)’’. 

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

8 this section shall take effect upon the date of the enact9 ment of this Act and shall apply to proceedings com10 menced on or after that date. 

11 SEC. 15. MARKING. 

12 (a) VIRTUAL MARKING.— 

13 (1) IN GENERAL.—Section 287(a) of title 35, 

14 United States Code, is amended by striking ‘‘or 

15 when,’’ and inserting ‘‘or by fixing thereon the word 

16 ‘patent’ or the abbreviation ‘pat.’ together with an 

17 address of a posting on the Internet, accessible to 

18 the public without charge for accessing the address, 

19 that associates the patented article with the number 

20 of the patent, or when,’’. 

21 (2) EFFECTIVE DATE.—The amendment made 

22 by this subsection shall apply to any case that is 

23 pending on, or commenced on or after, the date of 

24 the enactment of this Act. 

25 (b) FALSE MARKING.— 


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1 (1) CIVIL PENALTY.—Section 292(a) of title 

2 35, United States, Code, is amended by adding at 

3 the end the following: ‘‘Only the United States may 

4 sue for the penalty authorized by this subsection.’’. 

5 (2) CIVIL ACTION FOR DAMAGES.—Subsection 

6 (b) of section 292 of title 35, United States Code, 

7 is amended to read as follows: 

8 ‘‘(b) A person who has suffered a competitive injury 

9 as a result of a violation of this section may file a civil 

10 action in a district court of the United States for recovery 

11 of damages adequate to compensate for the injury.’’. 

12 (3) EFFECTIVE DATE.—The amendments made 

13 by this subsection shall apply to any case that is 

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

15 the enactment of this Act. 

16 SEC. 16. ADVICE OF COUNSEL. 

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

18 States Code, is amended by adding at the end the fol19 lowing: 

20 ‘‘§ 298. Advice of counsel 

21 ‘‘The failure of an infringer to obtain the advice of 

22 counsel with respect to any allegedly infringed patent, or 

23 the failure of the infringer to present such advice to the 

24 court or jury, may not be used to prove that the accused 


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1 infringer willfully infringed the patent or that the in2 fringer intended to induce infringement of the patent.’’. 

3 (b) CONFORMING AMENDMENT.—The table of sec4 tions for chapter 29 of title 35, United States Code, is 

5 amended by adding at the end the following: 

‘‘298. Advice of counsel.’’. 

6 SEC. 17. OWNERSHIP; ASSIGNMENT. 

7 The fourth undesignated paragraph of section 261 of 

8 title 35, United States Code, is amended by inserting be9 fore the period the following: ‘‘and identifies all real par10 ties in interest and those entities that control, directly or 

11 indirectly, such real parties in interest’’. 

12 SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSI13 NESS METHOD PATENTS. 

14 (a) REFERENCES.—Except as otherwise expressly 

15 provided, wherever in this section language is expressed 

16 in terms of a section or chapter, the reference shall be 

17 considered to be made to that section or chapter in title 

18 35, United States Code. 

19 (b) TRANSITIONAL PROGRAM.— 

20 (1) ESTABLISHMENT.—Not later than the date 

21 that is 1 year after the date of the enactment of this 

22 Act, the Director shall issue regulations establishing 

23 and implementing a transitional post-grant review 

24 proceeding for review of the validity of covered busi25 ness method patents. The transitional proceeding 


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1 implemented pursuant to this subsection shall be re2 garded as, and shall employ the standards and pro3 cedures of, a post-grant review under chapter 32, 

4 subject to the following: 

5 (A) Section 321(c) and subsections (b), 

6 (e)(2), and (f) of section 325 shall not apply to 

7 a transitional proceeding. 

8 (B) A person may not file a petition for a 

9 transitional proceeding with respect to a cov10 ered business method patent unless the person 

11 or the person’s real party in interest has been 

12 sued for infringement of the patent or has been 

13 charged with infringement under that patent. 

14 (C) A petitioner in a transitional pro15 ceeding who challenges the validity of 1 or more 

16 claims in a covered business method patent on 

17 a ground raised under section 102 or 103, as 

18 in effect on the day before the date of the en19 actment of this Act, may support such ground 

20 only on the basis of— 

21 (i) prior art that is described by sec22 tion 102(a) (as in effect on the day before 

23 the date of the enactment of this Act); or 

24 (ii) prior art that— 


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1 (I) discloses the invention more 

2 than 1 year before the date of the ap3 plication for patent in the United 

4 States; and 

5 (II) would be described by section 

6 102(a) (as in effect on the day before 

7 the date of the enactment of this Act) 

8 if the disclosure had been made by an9 other before the invention thereof by 

10 the applicant for patent. 

11 (D) The petitioner in a transitional pro12 ceeding, or the petitioner’s real party in inter13 est, may not assert, either in a civil action aris14 ing in whole or in part under section 1338 of 

15 title 28, United States Code, or in a proceeding 

16 before the International Trade Commission, 

17 that a claim in a patent is invalid on any 

18 ground that the petitioner raised during a tran19 sitional proceeding that resulted in a final writ20 ten decision. 

21 (E) The Director may institute a transi22 tional proceeding only for a patent that is a 

23 covered business method patent. 

24 (2) EFFECTIVE DATE.—The regulations issued 

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1 ration of the 1-year period beginning on the date of 

2 the enactment of this Act and shall apply to any 

3 covered business method patent issued before, on, or 

4 after such effective date, except that the regulations 

5 shall not apply to a patent described in the first sen6 tence of section 5(f)(2) of this Act during the period 

7 that a petition for post-grant review of that patent 

8 would satisfy the requirements of section 321(c). 

9 (3) SUNSET.— 

10 (A) IN GENERAL.—This subsection, and 

11 the regulations issued under this subsection, are 

12 repealed effective upon the expiration of the 4- 

13 year period beginning on the date that the reg14 ulations issued under to paragraph (1) take ef15 fect. 

16 (B) APPLICABILITY.—Notwithstanding 

17 subparagraph (A), this subsection and the regu18 lations issued under this subsection shall con19 tinue to apply, after the date of the repeal 

20 under subparagraph (A), to any petition for a 

21 transitional proceeding that is filed before the 

22 date of such repeal. 

23 (c) REQUEST FOR STAY.— 

24 (1) IN GENERAL.—If a party seeks a stay of a 

25 civil action alleging infringement of a patent under 


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1 section 281 relating to a transitional proceeding for 

2 that patent, the court shall decide whether to enter 

3 a stay based on— 

4 (A) whether a stay, or the denial thereof, 

5 will simplify the issues in question and stream6 line the trial; 

7 (B) whether discovery is complete and 

8 whether a trial date has been set; 

9 (C) whether a stay, or the denial thereof, 

10 would unduly prejudice the nonmoving party or 

11 present a clear tactical advantage for the mov12 ing party; and 

13 (D) whether a stay, or the denial thereof, 

14 will reduce the burden of litigation on the par15 ties and on the court. 

16 (2) REVIEW.—A party may take an immediate 

17 interlocutory appeal from a district court’s decision 

18 under paragraph (1). The United States Court of 

19 Appeals for the Federal Circuit shall review de novo 

20 the district court’s decision to ensure consistent ap21 plication of established precedent. 

22 (d) VENUE OF INFRINGEMENT ACTIONS.—Notwith23 standing section 1400(b) of title 28, United States Code, 

24 an action for infringement under section 281 of title 35, 


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1 United States Code, of a covered business method patent 

2 may be brought only in a judicial district— 

3 (1) where the defendant has its principal place 

4 of business or is incorporated; 

5 (2) where the defendant has committed acts of 

6 infringement and has a regular and established place 

7 of business; 

8 (3) where the defendant has agreed or con9 sented to be sued; or 

10 (4) for foreign defendants that do not meet the 

11 requirements of paragraphs (1) or (2), in accordance 

12 with section 1391(d) of title 28, United States Code. 

13 (e) ATTORNEY’S FEES AND COSTS.—In an action for 

14 infringement under section 281 of title 35, United States 

15 Code, of a covered business method patent, the prevailing 

16 party shall be entitled to reasonable attorney’s fees and 

17 costs. 

18 (f) ATM EXEMPTION FOR VENUE PURPOSES.—In an 

19 action for infringement under section 281 of title 35, 

20 United States Code, of a covered business method patent, 

21 an automated teller machine shall not be deemed to be 

22 a physical facility for purposes of section 1400(b)(2) of 

23 title 28, United States Code. 

24 (g) DEFINITION.— 


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1 (1) IN GENERAL.—For purposes of this section, 

2 the term ‘‘covered business method patent’’ means a 

3 patent that claims a method or corresponding appa4 ratus for performing data processing or other oper5 ations used in the practice, administration, or man6 agement of a financial product or service, except 

7 that the term does not include patents for techno8 logical inventions. 

9 (2) REGULATIONS.—To assist in implementing 

10 the transitional proceeding authorized by this sub11 section, the Director shall issue regulations for de12 termining whether a patent is for a technological in13 vention. 

14 (h) RULE OF CONSTRUCTION.—Nothing in this sec15 tion shall be construed as amending or interpreting cat16 egories of patent-eligible subject matter set forth under 

17 section 101. 

18 SEC. 19. CLARIFICATION OF JURISDICTION. 

19 (a) STATE COURT JURISDICTION.—Section 1338(a) 

20 of title 28, United States Code, is amended by striking 

21 the second sentence and inserting the following: ‘‘No State 

22 court shall have jurisdiction over any claim for relief aris23 ing under any Act of Congress relating to patents, plant 

24 variety protection, or copyrights.’’. 


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1 (b) COURT OF APPEALS FOR THE FEDERAL CIR2 CUIT.—Section 1295(a)(1) of title 28, United States Code, 

3 is amended to read as follows: 

4 ‘‘(1) of an appeal from a final decision of a dis5 trict court of the United States, the District Court 

6 of Guam, the District Court of the Virgin Islands, 

7 or the District Court of the Northern Mariana Is8 lands, in any civil action arising under, or in any 

9 civil action in which a party has asserted a compul10 sory counterclaim arising under, any Act of Con11 gress relating to patents or plant variety protec12 tion;’’. 

13 (c) REMOVAL.— 

14 (1) IN GENERAL.—Chapter 89 of title 28, 

15 United States Code, is amended by adding at the 

16 end the following new section: 

17 ‘‘§ 1454. Patent, plant variety protection, and copy18 right cases 

19 ‘‘(a) IN GENERAL.—A civil action in which any party 

20 asserts a claim for relief arising under any Act of Con21 gress relating to patents, plant variety protection, or copy22 rights may be removed to the district court of the United 

23 States for the district and division embracing the place 

24 where the action is pending. 


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1 ‘‘(b) SPECIAL RULES.—The removal of an action 

2 under this section shall be made in accordance with sec3 tion 1446 of this chapter, except that if the removal is 

4 based solely on this section— 

5 ‘‘(1) the action may be removed by any party; 

6 and 

7 ‘‘(2) the time limitations contained in section 

8 1446(b) may be extended at any time for cause 

9 shown. 

10 ‘‘(c) CLARIFICATION OF JURISDICTION IN CERTAIN

11 CASES.—The court to which a civil action is removed 

12 under this section is not precluded from hearing and de13 termining any claim in the civil action because the State 

14 court from which the civil action is removed did not have 

15 jurisdiction over that claim. 

16 ‘‘(d) REMAND.—If a civil action is removed solely 

17 under this section, the district court— 

18 ‘‘(1) shall remand all claims that are neither a 

19 basis for removal under subsection (a) nor within 

20 the original or supplemental jurisdiction of the dis21 trict court under any Act of Congress; and 

22 ‘‘(2) may, under the circumstances specified in 

23 section 1367(c), remand any claims within the sup24 plemental jurisdiction of the district court under sec25 tion 1367.’’. 


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1 (2) CONFORMING AMENDMENT.—The table of 

2 sections for chapter 89 of title 28, United States 

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

4 new item: 

‘‘1454. Patent, plant variety protection, and copyright cases.’’. 

5 (d) TRANSFER BY COURT OF APPEALS FOR THE

6 FEDERAL CIRCUIT.— 

7 (1) IN GENERAL.—Chapter 99 of title 28, 

8 United States Code, is amended by adding at the 

9 end the following new section: 

10 ‘‘§ 1632. Transfer by the Court of Appeals for the Fed11 eral Circuit 

12 ‘‘When a case is appealed to the Court of Appeals 

13 for the Federal Circuit under section 1295(a)(1), and no 

14 claim for relief arising under any Act of Congress relating 

15 to patents or plant variety protection is the subject of the 

16 appeal by any party, the Court of Appeals for the Federal 

17 Circuit shall transfer the appeal to the court of appeals 

18 for the regional circuit embracing the district from which 

19 the appeal has been taken.’’. 

20 (2) CONFORMING AMENDMENT.—The table of 

21 sections for chapter 99 of title 28, United States 

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

23 new item: 

‘‘1632. Transfer by the Court of Appeals for the Federal Circuit.’’. 


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

2 this section shall apply to any civil action commenced on 

3 or after the date of the enactment of this Act. 

4 SEC. 20. TECHNICAL AMENDMENTS. 

5 (a) JOINT INVENTIONS.—Section 116 of title 35, 

6 United States Code, is amended— 

7 (1) in the first undesignated paragraph, by 

8 striking ‘‘When’’ and inserting ‘‘(a) JOINT IN9 VENTIONS.—When’’; 

10 (2) in the second undesignated paragraph, 

11 by striking ‘‘If a joint inventor’’ and inserting 

12 ‘‘(b) OMITTED INVENTOR.—If a joint inven13 tor’’; and 

14 (3) in the third undesignated paragraph— 

15 (A) by striking ‘‘Whenever’’ and in16 serting ‘‘(c) CORRECTION OF ERRORS IN

17 APPLICATION.—Whenever’’; and 

18 (B) by striking ‘‘and such error arose 

19 without any deceptive intent on his part,’’. 

20 (b) FILING OF APPLICATION IN FOREIGN COUN21 TRY.—Section 184 of title 35, United States Code, is 

22 amended— 

23 (1) in the first undesignated paragraph— 


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1 (A) by striking ‘‘Except when’’ and insert2 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Ex3 cept when’’; and 

4 (B) by striking ‘‘and without deceptive in5 tent’’; 

6 (2) in the second undesignated paragraph, by 

7 striking ‘‘The term’’ and inserting ‘‘(b) APPLICA8 TION.—The term’’; and 

9 (3) in the third undesignated paragraph, by 

10 striking ‘‘The scope’’ and inserting ‘‘(c) SUBSE11 QUENT MODIFICATIONS, AMENDMENTS, AND SUP12 PLEMENTS.—The scope’’. 

13 (c) FILING WITHOUT A LICENSE.—Section 185 of 

14 title 35, United States Code, is amended by striking ‘‘and 

15 without deceptive intent’’. 

16 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

17 of title 35, United States Code, is amended— 

18 (1) in the first undesignated paragraph— 

19 (A) by striking ‘‘Whenever’’ and inserting 

20 ‘‘(a) IN GENERAL.—Whenever’’; and 

21 (B) by striking ‘‘without any deceptive in22 tention’’; 

23 (2) in the second undesignated paragraph, by 

24 striking ‘‘The Director’’ and inserting ‘‘(b) MUL25 TIPLE REISSUED PATENTS.—The Director’’; 


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1 (3) in the third undesignated paragraph, by 

2 striking ‘‘The provisions’’ and inserting ‘‘(c) APPLI3 CABILITY OF THIS TITLE.—The provisions’’; and 

4 (4) in the last undesignated paragraph, by 

5 striking ‘‘No reissued patent’’ and inserting ‘‘(d) 

6 REISSUE PATENT ENLARGING SCOPE OF CLAIMS.— 

7 No reissued patent’’. 

8 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

9 United States Code, is amended— 

10 (1) in the first undesignated paragraph, by 

11 striking ‘‘Whenever, without any deceptive inten12 tion,’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

13 and 

14 (2) in the second undesignated paragraph, by 

15 striking ‘‘In like manner’’ and inserting ‘‘(b) ADDI16 TIONAL DISCLAIMER OR DEDICATION.—In the man17 ner set forth in subsection (a),’’. 

18 (f) CORRECTION OF NAMED INVENTOR.—Section 

19 256 of title 35, United States Code, is amended— 

20 (1) in the first undesignated paragraph— 

21 (A) by striking ‘‘Whenever’’ and inserting 

22 ‘‘(a) CORRECTION.—Whenever’’; and 

23 (B) by striking ‘‘and such error arose with24 out any deceptive intention on his part’’; and 


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1 (2) in the second undesignated paragraph, by 

2 striking ‘‘The error’’ and inserting ‘‘(b) PATENT

3 VALID IF ERROR CORRECTED.—The error’’. 

4 (g) OWNERSHIP; ASSIGNMENT.—The fourth undesig5 nated paragraph of section 261 of title 35, United States 

6 Code, is amended by inserting before the period the fol7 lowing: ‘‘and identifies all real parties in interest’’. 

8 (h) PRESUMPTION OF VALIDITY.—Section 282 of 

9 title 35, United States Code, is amended— 

10 (1) in the first undesignated paragraph— 

11 (A) by striking ‘‘A patent’’ and inserting 

12 ‘‘(a) IN GENERAL.—A patent’’; and 

13 (B) by striking the third sentence; 

14 (2) in the second undesignated paragraph, by 

15 striking ‘‘The following’’ and inserting ‘‘(b) DE16 FENSES.—The following’’; and 

17 (3) in the third undesignated paragraph— 

18 (A) by striking ‘‘In actions involving the 

19 validity or infringement of a patent’’ and insert20 ing ‘‘(c) NOTICE OF ACTIONS; ACTIONS DUR21 ING EXTENSION OF PATENT TERM.—In an ac22 tion involving the validity or infringement of 

23 patent, the party asserting infringement shall 

24 identify, in the pleadings or otherwise in writing 


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1 to the adverse party, all of its real parties in in2 terest, and’’; and 

3 (B) by striking ‘‘Claims Court’’ and insert4 ing ‘‘Court of Federal Claims’’. 

5 (i) ACTION FOR INFRINGEMENT.—Section 288 of 

6 title 35, United States Code, is amended by striking ‘‘, 

7 without deceptive intention,’’. 

8 (j) REVISER’S NOTES.— 

9 (1) Section 3(e)(2) of title 35, United States 

10 Code, is amended by striking ‘‘this Act,’’ and insert11 ing ‘‘that Act,’’. 

12 (2) Section 202 of title 35, United States Code, 

13 is amended— 

14 (A) in subsection (b)(3), by striking ‘‘the 

15 section 203(b)’’ and inserting ‘‘section 203(b)’’; 

16 and 

17 (B) in subsection (c)(7)— 

18 (i) in subparagraph (D), by striking 

19 ‘‘except where it proves’’ and all that fol20 lows through ‘‘small business firms; and’’ 

21 and inserting: ‘‘except where it is deter22 mined to be infeasible following a reason23 able inquiry, a preference in the licensing 

24 of subject inventions shall be given to 

25 small business firms; and’’; and 


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1 (ii) in subparagraph (E)(i), by strik2 ing ‘‘as described above in this clause 

3 (D);’’ and inserting ‘‘described above in 

4 this clause;’’. 

5 (3) Section 209(d)(1) of title 35, United States 

6 Code, is amended by striking ‘‘nontransferrable’’ 

7 and inserting ‘‘nontransferable’’. 

8 (4) Section 287(c)(2)(G) of title 35, United 

9 States Code, is amended by striking ‘‘any state’’ and 

10 inserting ‘‘any State’’. 

11 (5) Section 371(b) of title 35, United States 

12 Code, is amended by striking ‘‘of the treaty’’ and in13 serting ‘‘of the treaty.’’. 

14 (k) UNNECESSARY REFERENCES.— 

15 (1) IN GENERAL.—Title 35, United States 

16 Code, is amended by striking ‘‘of this title’’ each 

17 place that term appears. 

18 (2) EXCEPTION.—The amendment made by 

19 paragraph (1) shall not apply to the use of such 

20 term in the following sections of title 35, United 

21 States Code: 

22 (A) Section 1(c). 

23 (B) Section 100. 

24 (C) Section 101. 

25 (D) Subsections (a) and (b) of section 105. 


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1 (E) The first instance of the use of such 

2 term in section 111(b)(8). 

3 (F) Section 157(a), in the matter pre4 ceding paragraph (1). 

5 (G) Section 161. 

6 (H) Section 164. 

7 (I) Section 171. 

8 (J) Section 251(c), as so designated by 

9 this section. 

10 (K) Section 261. 

11 (L) Subsections (a), (g), and (h) of section 

12 271. 

13 (M) Section 287(b)(1). 

14 (N) Section 289. 

15 (O) The first instance of the use of such 

16 term in section 375(a). 

17 (l) EFFECTIVE DATE.—The amendments made by 

18 this section shall take effect upon the expiration of the 

19 1-year period beginning on the date of the enactment of 

20 this Act and shall apply to proceedings commenced on or 

21 after that effective date. 

22 SEC. 21. TRAVEL EXPENSES AND PAYMENT OF ADMINIS23 TRATIVE JUDGES. 

24 (a) AUTHORITY TO COVER CERTAIN TRAVEL RE25 LATED EXPENSES.—Section 2(b)(11) of title 35, United 


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1 States Code, is amended by inserting ‘‘, and the Office 

2 is authorized to expend funds to cover the subsistence ex3 penses and travel-related expenses, including per diem, 

4 lodging costs, and transportation costs, of non-federal em5 ployees attending such programs’’ after ‘‘world’’. 

6 (b) PAYMENT OF ADMINISTRATIVE JUDGES.—Sec7 tion 3(b) of title 35, United States Code, is amended by 

8 adding at the end the following: 

9 ‘‘(6) ADMINISTRATIVE PATENT JUDGES AND

10 ADMINISTRATIVE TRADEMARK JUDGES.—The Direc11 tor has the authority to fix the rate of basic pay for 

12 the administrative patent judges appointed pursuant 

13 to section 6 of this title and the administrative 

14 trademark judges appointed pursuant to section 17 

15 of the Trademark Act of 1946 (15 U.S.C. 1067) at 

16 not greater than the rate of basic pay payable for 

17 Level III of the Executive Schedule. The payment of 

18 a rate of basic pay under this paragraph shall not 

19 be subject to the pay limitation of section 5306(e) 

20 or 5373 of title 5.’’. 

21 SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING. 

22 (a) DEFINITION.—In this section, the term ‘‘Fund’’ 

23 means the United States Patent and Trademark Office 

24 Public Enterprise Fund established under subsection (c). 

25 (b) FUNDING.— 


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1 (1) IN GENERAL.—Section 42 of title 35, 

2 United States Code, is amended— 

3 (A) in subsection (b), by striking ‘‘Patent 

4 and Trademark Office Appropriation Account’’ 

5 and inserting ‘‘United States Patent and 

6 Trademark Office Public Enterprise Fund’’; 

7 and 

8 (B) in subsection (c), in the first sen9 tence— 

10 (i) by striking ‘‘To the extent’’ and all 

11 that follows through ‘‘fees’’ and inserting 

12 ‘‘Fees’’; and 

13 (ii) by striking ‘‘shall be collected by 

14 and shall be available to the Director’’ and 

15 inserting ‘‘shall be collected by the Direc16 tor and shall be available until expended’’. 

17 (2) EFFECTIVE DATE.—The amendments made 

18 by paragraph (1) shall take effect on the later of— 

19 (A) October 1, 2011; or 

20 (B) the first day of the first fiscal year 

21 that begins after the date of the enactment of 

22 this Act. 

23 (c) USPTO REVOLVING FUND.— 

24 (1) ESTABLISHMENT.—There is established in 

25 the Treasury of the United States a revolving fund 


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1 to be known as the ‘‘United States Patent and 

2 Trademark Office Public Enterprise Fund’’. 

3 Amounts shall be deposited in the Fund as an off4 setting receipt and shall be available for use by the 

5 Director without fiscal year limitation. 

6 (2) DERIVATION OF RESOURCES.—There shall 

7 be deposited into the Fund, on and after the effec8 tive date set forth in subsection (b)(2)— 

9 (A) any fees collected under sections 41, 

10 42, and 376 of title 35, United States Code, ex11 cept that— 

12 (i) notwithstanding any other provi13 sion of law, if such fees are collected by, 

14 and payable to, the Director, the Director 

15 shall transfer such amounts to the Fund; 

16 and 

17 (ii) no funds collected pursuant to sec18 tion 9(h) of this Act or section 1(a)(2) of 

19 Public Law 111–45 shall be deposited in 

20 the Fund; and 

21 (B) any fees collected under section 31 of 

22 the Trademark Act of 1946 (15 U.S.C. 1113). 

23 (3) EXPENSES.—Amounts deposited into the 

24 Fund under paragraph (2) shall be available, with25 out fiscal year limitation, to cover— 


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1 (A) all expenses to the extent consistent 

2 with the limitation on the use of fees set forth 

3 in section 42(c) of title 35, United States Code, 

4 including all administrative and operating ex5 penses, determined in the discretion of the Di6 rector to be ordinary and reasonable, incurred 

7 by the Director for the continued operation of 

8 all services, programs, activities, and duties of 

9 the Office relating to patents and trademarks, 

10 as such services, programs, activities, and du11 ties are described under— 

12 (i) title 35, United States Code; and 

13 (ii) the Trademark Act of 1946; and 

14 (B) all expenses incurred pursuant to any 

15 obligation, representation, or other commitment 

16 of the Office. 

17 (d) ANNUAL REPORT.—Not later than 60 days after 

18 the end of each fiscal year, the Director shall submit a 

19 report to Congress which shall— 

20 (1) summarize the operations of the Office for 

21 the preceding fiscal year, including financial details 

22 and staff levels broken down by each major activity 

23 of the Office; 


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1 (2) detail the operating plan of the Office, in2 cluding specific expense and staff needs for the up3 coming fiscal year; 

4 (3) describe the long-term modernization plans 

5 of the Office; 

6 (4) set forth details of any progress towards 

7 such modernization plans made in the previous fiscal 

8 year; and 

9 (5) include the results of the most recent audit 

10 carried out under subsection (f). 

11 (e) ANNUAL SPENDING PLAN.— 

12 (1) IN GENERAL.—Not later than 30 days after 

13 the beginning of each fiscal year, the Director shall 

14 notify the Committees on Appropriations of both 

15 Houses of Congress of the plan for the obligation 

16 and expenditure of the total amount of the funds for 

17 that fiscal year in accordance with section 605 of the 

18 Science, State, Justice, Commerce, and Related 

19 Agencies Appropriations Act, 2006 (Public Law 

20 109–108; 119 Stat. 2334). 

21 (2) CONTENTS.—Each plan under paragraph 

22 (1) shall— 

23 (A) summarize the operations of the Office 

24 for the current fiscal year, including financial 


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1 details and staff levels with respect to major ac2 tivities; and 

3 (B) detail the operating plan of the Office, 

4 including specific expense and staff needs, for 

5 the current fiscal year. 

6 (f) AUDIT.—The Director shall, on an annual basis, 

7 provide for an independent audit of the financial state8 ments of the Office. Such audit shall be conducted in ac9 cordance with generally acceptable accounting procedures. 

10 (g) BUDGET.—The Fund shall prepare and submit 

11 each year to the President a business-type budget in a 

12 manner, and before a date, as the President prescribes by 

13 regulation for the budget program. 

14 SEC. 23. SATELLITE OFFICES. 

15 (a) ESTABLISHMENT.—Subject to available re16 sources, the Director shall, by not later than the date that 

17 is 3 years after the date of the enactment of this Act es18 tablish 3 or more satellite offices in the United States to 

19 carry out the responsibilities of the Patent and Trademark 

20 Office. 

21 (b) PURPOSE.—The purpose of the satellite offices 

22 established under subsection (a) are to— 

23 (1) increase outreach activities to better connect 

24 patent filers and innovators with the Patent and 

25 Trademark Office; 


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1 (2) enhance patent examiner retention; 

2 (3) improve recruitment of patent examiners; 

3 and 

4 (4) decrease the number of patent applications 

5 waiting for examination and improve the quality of 

6 patent examination. 

7 (c) REQUIRED CONSIDERATIONS.— 

8 (1) IN GENERAL.—In selecting the location of 

9 each satellite office to be established under sub10 section (a), the Director— 

11 (A) shall ensure geographic diversity 

12 among the offices, including by ensuring that 

13 such offices are established in different States 

14 and regions throughout the Nation; 

15 (B) may rely upon any previous evalua16 tions by the Patent and Trademark Office of 

17 potential locales for satellite offices, including 

18 any evaluations prepared as part of the Office’s 

19 Nationwide Workforce Program that resulted in 

20 the 2010 selection of Detroit, Michigan, as the 

21 first ever satellite office of the Office. 

22 (2) OPEN SELECTION PROCESS.—Nothing in 

23 paragraph (1) shall constrain the Patent and Trade24 mark Office to only consider its evaluations in se25 lecting the Detroit, Michigan, satellite office. 


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1 (d) REPORT TO CONGRESS.—Not later than the end 

2 of the first 3 fiscal years that begin after the date of the 

3 enactment of this Act, the Director shall submit a report 

4 to Congress on— 

5 (1) the rationale of the Director in selecting the 

6 location of any satellite office required under sub7 section (a); 

8 (2) the progress of the Director in establishing 

9 all such satellite offices; and 

10 (3) whether the operation of existing satellite 

11 offices is achieving the purposes required under sub12 section (b). 

13 SEC. 24. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSI14 NESS CONCERNS. 

15 Subject to available resources, the Director may es16 tablish in the Office a Patent Ombudsman Program. The 

17 duties of the Program’s staff shall include providing sup18 port and services relating to patent filings to small busi19 ness concerns. 

20 SEC. 25. PRIORITY EXAMINATION FOR TECHNOLOGIES IM21 PORTANT TO AMERICAN COMPETITIVENESS. 

22 Section 2(b)(2) of title 35, United States Code, is 

23 amended— 

24 (1) in subparagraph (E), by striking ‘‘and’’ 

25 after the semicolon; 


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1 (2) in subparagraph (F), by inserting ‘‘and’’ 

2 after the semicolon; and 

3 (3) by adding at the end the following: 

4 ‘‘(G) may, subject to any conditions pre5 scribed by the Director and at the request of 

6 the patent applicant, provide for prioritization 

7 of examination of applications for products, 

8 processes, or technologies that are important to 

9 the national economy or national competitive10 ness without recovering the aggregate extra cost 

11 of providing such prioritization, notwith12 standing section 41 or any other provision of 

13 law;’’. 

14 SEC. 26. DESIGNATION OF DETROIT SATELLITE OFFICE. 

15 (a) DESIGNATION.—The satellite office of the United 

16 States Patent and Trademark Office to be located in De17 troit, Michigan, shall be known and designated as the 

18 ‘‘Elijah J. McCoy United States Patent and Trademark 

19 Office’’. 

20 (b) REFERENCES.—Any reference in a law, map, reg21 ulation, document, paper, or other record of the United 

22 States to the satellite office of the United States Patent 

23 and Trademark Office to be located in Detroit, Michigan, 

24 referred to in subsection (a) shall be deemed to be a refVerDate Mar 15 2010 22:47 Apr 01, 2011 Jkt 099200 PO 00000 Frm 00133 Fmt 6652 Sfmt 6201 E:\BILLS\H1249.IH H1249

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1 erence to the ‘‘Elijah J. McCoy United States Patent and 

2 Trademark Office’’. 

3 SEC. 27. EFFECTIVE DATE. 

4 Except as otherwise provided in this Act, the provi5 sions of this Act shall take effect 1 year after the date 

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

7 issued on or after that effective date. 

8 SEC. 28. BUDGETARY EFFECTS. 

9 The budgetary effects of this Act, for the purpose of 

10 complying with the Statutory Pay-As-You-Go Act of 2010, 

11 shall be determined by reference to the latest statement 

12 titled ‘‘Budgetary Effects of PAYGO Legislation’’ for this 

13 Act, submitted for printing in the Congressional Record 

14 by the Chairman of the House Budget Committee, pro15 vided that such statement has been submitted prior to the 

16 vote on passage. 

Æ 


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