IIB 

113TH CONGRESS 

1ST SESSION H. R. 3309 

IN THE SENATE OF THE UNITED STATES 

DECEMBER 9, 2013 

Received; read twice and referred to the Committee on the Judiciary 

AN ACT 

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

technical corrections, and for other purposes. 

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


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1 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

3 ‘‘Innovation Act’’. 

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

5 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Patent infringement actions. 

Sec. 4. Transparency of patent ownership. 

Sec. 5. Customer-suit exception. 

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

Conference. 

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

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

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

Sec. 10. Effective date. 

6 SEC. 2. DEFINITIONS. 

7 In this Act: 

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

9 the Under Secretary of Commerce for Intellectual 

10 Property and Director of the United States Patent 

11 and Trademark Office. 

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

13 United States Patent and Trademark Office. 

14 SEC. 3. PATENT INFRINGEMENT ACTIONS. 

15 (a) PLEADING REQUIREMENTS.— 

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

17 United States Code, is amended by inserting after 

18 section 281 the following: 


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

3 ‘‘(a) PLEADING REQUIREMENTS.—Except as pro4 vided in subsection (b), in a civil action in which a party 

5 asserts a claim for relief arising under any Act of Con6 gress relating to patents, a party alleging infringement 

7 shall include in the initial complaint, counterclaim, or 

8 cross-claim for patent infringement, unless the informa9 tion is not reasonably accessible to such party, the fol10 lowing: 

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

12 infringed. 

13 ‘‘(2) An identification of each claim of each pat14 ent identified under paragraph (1) that is allegedly 

15 infringed. 

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

17 (2), an identification of each accused process, ma18 chine, manufacture, or composition of matter (re19 ferred to in this section as an ‘accused instrumen20 tality’) alleged to infringe the claim. 

21 ‘‘(4) For each accused instrumentality identi22 fied under paragraph (3), an identification with par23 ticularity, if known, of— 

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

25 accused instrumentality; or 


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

2 a description of each accused instrumentality. 

3 ‘‘(5) For each accused instrumentality identi4 fied under paragraph (3), a clear and concise state5 ment of— 

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

7 identified under paragraph (2) is found within 

8 the accused instrumentality; and 

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

10 limitation of each claim identified under para11 graph (2) is met by the accused instrumen12 tality. 

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

14 description of the acts of the alleged indirect in15 fringer that contribute to or are inducing the direct 

16 infringement. 

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

18 alleging infringement to assert each patent identified 

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

20 court’s jurisdiction. 

21 ‘‘(8) A clear and concise description of the prin22 cipal business, if any, of the party alleging infringe23 ment. 

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

25 party alleging infringement has knowledge, that asVerDate Mar 15 2010 04:08 Dec 10, 2013 Jkt 039200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.RFS H3309

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1 serts or asserted any of the patents identified under 

2 paragraph (1). 

3 ‘‘(10) For each patent identified under para4 graph (1), whether a standard-setting body has spe5 cifically declared such patent to be essential, poten6 tially essential, or having potential to become essen7 tial to that standard-setting body, and whether the 

8 United States Government or a foreign government 

9 has imposed specific licensing requirements with re10 spect to such patent. 

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

12 information required to be disclosed under subsection (a) 

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

14 instead be generally described, along with an explanation 

15 of why such undisclosed information was not readily acces16 sible, and of any efforts made by such party to access such 

17 information. 

18 ‘‘(c) CONFIDENTIAL INFORMATION.—A party re19 quired to disclose information described under subsection 

20 (a) may file, under seal, information believed to be con21 fidential, with a motion setting forth good cause for such 

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

23 may seek to file an amended complaint. 


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

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

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

4 (2) CONFORMING AMENDMENT.—The table of 

5 sections for chapter 29 of title 35, United States 

6 Code, is amended by inserting after the item relating 

7 to section 281 the following new item: 

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

8 (b) FEES AND OTHER EXPENSES.— 

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

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

11 ‘‘§ 285. Fees and other expenses 

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

13 party, reasonable fees and other expenses incurred by that 

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

15 asserts a claim for relief arising under any Act of Con16 gress relating to patents, unless the court finds that the 

17 position and conduct of the nonprevailing party or parties 

18 were reasonably justified in law and fact or that special 

19 circumstances (such as severe economic hardship to a 

20 named inventor) make an award unjust. 

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

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

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

24 party will be able to pay an award of fees and other ex25 penses if such an award is made under subsection (a). If 


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

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

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

4 respect to such party liable for the unsatisfied portion of 

5 the award. 

6 ‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac7 tion that asserts a claim for relief arising under any Act 

8 of Congress relating to patents against another party, and 

9 that subsequently unilaterally extends to such other party 

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

11 patent or patents at issue, shall be deemed to be a nonpre12 vailing party (and the other party the prevailing party) 

13 for purposes of this section, unless the party asserting 

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

15 covenant was extended, to voluntarily dismiss the action 

16 or claim without a court order under Rule 41 of the Fed17 eral Rules of Civil Procedure.’’. 

18 (2) CONFORMING AMENDMENT AND AMEND19 MENT.— 

20 (A) CONFORMING AMENDMENT.—The item 

21 relating to section 285 of the table of sections 

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

23 is amended to read as follows: 

‘‘285. Fees and other expenses.’’. 


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1 (B) AMENDMENT.—Section 273 of title 

2 35, United States Code, is amended by striking 

3 subsections (f) and (g). 

4 (3) EFFECTIVE DATE.—The amendments made 

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

6 enactment of this Act and shall apply to any action 

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

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

9 date. 

10 (c) JOINDER OF INTERESTED PARTIES.—Section 

11 299 of title 35, United States Code, is amended by adding 

12 at the end the following new subsection: 

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

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

15 any Act of Congress relating to patents in which 

16 fees and other expenses have been awarded under 

17 section 285 to a prevailing party defending against 

18 an allegation of infringement of a patent claim, and 

19 in which the nonprevailing party alleging infringe20 ment is unable to pay the award of fees and other 

21 expenses, the court shall grant a motion by the pre22 vailing party to join an interested party if such pre23 vailing party shows that the nonprevailing party has 

24 no substantial interest in the subject matter at issue 

25 other than asserting such patent claim in litigation. 


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1 ‘‘(2) LIMITATION ON JOINDER.— 

2 ‘‘(A) DISCRETIONARY DENIAL OF MO3 TION.—The court may deny a motion to join an 

4 interested party under paragraph (1) if— 

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

6 to service of process; or 

7 ‘‘(ii) joinder under paragraph (1) 

8 would deprive the court of subject matter 

9 jurisdiction or make venue improper. 

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

11 court shall deny a motion to join an interested 

12 party under paragraph (1) if— 

13 ‘‘(i) the interested party did not time14 ly receive the notice required by paragraph 

15 (3); or 

16 ‘‘(ii) within 30 days after receiving 

17 the notice required by paragraph (3), the 

18 interested party renounces, in writing and 

19 with notice to the court and the parties to 

20 the action, any ownership, right, or direct 

21 financial interest (as described in para22 graph (4)) that the interested party has in 

23 the patent or patents at issue. 

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

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


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1 it has been provided actual notice, within 30 days 

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

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

4 it has been so identified and that such party may 

5 therefore be an interested party subject to joinder 

6 under this subsection. Such notice shall be provided 

7 by the party who subsequently moves to join the in8 terested party under paragraph (1), and shall in9 clude language that— 

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

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

12 pleading or other paper that identified the 

13 party under section 290(b); and 

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

15 joined in the action and made subject to paying 

16 an award of fees and other expenses under sec17 tion 285(b) if— 

18 ‘‘(i) fees and other expenses are 

19 awarded in the action against the party al20 leging infringement of the patent or pat21 ents at issue under section 285(a); 

22 ‘‘(ii) the party alleging infringement is 

23 unable to pay the award of fees and other 

24 expenses; 


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1 ‘‘(iii) the party receiving notice under 

2 this paragraph is determined by the court 

3 to be an interested party; and 

4 ‘‘(iv) the party receiving notice under 

5 this paragraph has not, within 30 days 

6 after receiving such notice, renounced in 

7 writing, and with notice to the court and 

8 the parties to the action, any ownership, 

9 right, or direct financial interest (as de10 scribed in paragraph (4)) that the inter11 ested party has in the patent or patents at 

12 issue. 

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

14 subsection, the term ‘interested party’ means a per15 son, other than the party alleging infringement, 

16 that— 

17 ‘‘(A) is an assignee of the patent or pat18 ents at issue; 

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

20 right, to enforce or sublicense the patent or pat21 ents at issue; or 

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

23 patent or patents at issue, including the right 

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


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1 of licensing revenue, except that a person with 

2 a direct financial interest does not include— 

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

4 legal representation in the civil action de5 scribed in paragraph (1) if the sole basis 

6 for the financial interest of the attorney or 

7 law firm in the patent or patents at issue 

8 arises from the attorney or law firm’s re9 ceipt of compensation reasonably related to 

10 the provision of the legal representation; or 

11 ‘‘(ii) a person whose sole financial in12 terest in the patent or patents at issue is 

13 ownership of an equity interest in the 

14 party alleging infringement, unless such 

15 person also has the right or ability to influ16 ence, direct, or control the civil action.’’. 

17 (d) DISCOVERY LIMITS.— 

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

19 United States Code, is amended by adding at the 

20 end the following new section: 

21 ‘‘§ 299A. Discovery in patent infringement action 

22 ‘‘(a) DISCOVERY IN PATENT INFRINGEMENT AC23 TION.—Except as provided in subsections (b) and (c), in 

24 a civil action arising under any Act of Congress relating 

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


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1 to the construction of terms used in a patent claim as2 serted in the complaint is required, discovery shall be lim3 ited, until such ruling is issued, to information necessary 

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

5 in the patent claim, including any interpretation of those 

6 terms used to support the claim of infringement. 

7 ‘‘(b) DISCRETION TO EXPAND SCOPE OF DIS8 COVERY.— 

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

10 case of an action under any provision of Federal law 

11 (including an action that includes a claim for relief 

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

13 within a specified period of time of a civil action 

14 arising under any Act of Congress relating to pat15 ents will necessarily affect the rights of a party with 

16 respect to the patent, the court shall permit dis17 covery, in addition to the discovery authorized under 

18 subsection (a), before the ruling described in sub19 section (a) is issued as necessary to ensure timely 

20 resolution of the action. 

21 ‘‘(2) RESOLUTION OF MOTIONS.—When nec22 essary to resolve a motion properly raised by a party 

23 before a ruling relating to the construction of terms 

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

25 allow limited discovery in addition to the discovery 


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1 authorized under subsection (a) as necessary to re2 solve the motion. 

3 ‘‘(3) SPECIAL CIRCUMSTANCES.—In special cir4 cumstances that would make denial of discovery a 

5 manifest injustice, the court may permit discovery, 

6 in addition to the discovery authorized under sub7 section (a), as necessary to prevent the manifest in8 justice. 

9 ‘‘(4) ACTIONS SEEKING RELIEF BASED ON COM10 PETITIVE HARM.—The limitation on discovery pro11 vided under subsection (a) shall not apply to an ac12 tion seeking a preliminary injunction to redress 

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

14 any allegedly infringing instrumentality that com15 petes with a product sold or offered for sale, or a 

16 process used in manufacture, by a party alleging in17 fringement. 

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

19 The parties may voluntarily consent to be excluded, in 

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

21 under subsection (a) if at least one plaintiff and one de22 fendant enter into a signed stipulation, to be filed with 

23 and signed by the court. With regard to any discovery ex24 cluded from the requirements of subsection (a) under the 

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1 covery shall proceed according to the Federal Rules of 

2 Civil Procedure.’’. 

3 (2) CONFORMING AMENDMENT.—The table of 

4 sections for chapter 29 of title 35, United States 

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

6 new item: 

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

7 (e) SENSE OF CONGRESS.—It is the sense of Con8 gress that it is an abuse of the patent system and against 

9 public policy for a party to send out purposely evasive de10 mand letters to end users alleging patent infringement. 

11 Demand letters sent should, at the least, include basic in12 formation about the patent in question, what is being in13 fringed, and how it is being infringed. Any actions or liti14 gation that stem from these types of purposely evasive de15 mand letters to end users should be considered a fraudu16 lent or deceptive practice and an exceptional circumstance 

17 when considering whether the litigation is abusive. 

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

19 United States Code, is amended— 

20 (1) in the first undesignated paragraph, by 

21 striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN22 ERAL.—Upon finding’’; 

23 (2) in the second undesignated paragraph, by 

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1 SESSMENT BY COURT; TREBLE DAMAGES.—When 

2 the damages’’; 

3 (3) by inserting after subsection (b), as des4 ignated by paragraph (2) of this subsection, the fol5 lowing: 

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

7 to establish willful infringement may not rely on evidence 

8 of pre-suit notification of infringement unless that notifi9 cation identifies with particularity the asserted patent, 

10 identifies the product or process accused, identifies the ul11 timate parent entity of the claimant, and explains with 

12 particularity, to the extent possible following a reasonable 

13 investigation or inquiry, how the product or process in14 fringes one or more claims of the patent.’’; and 

15 (4) in the last undesignated paragraph, by 

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

17 TESTIMONY.—The court’’. 

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

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

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

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

22 on or after that date. 

23 SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 

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

25 States Code, is amended— 


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1 (1) in the heading, by striking ‘‘suits’’ and in2 serting ‘‘suits; disclosure of interests’’; 

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

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

5 (3) by adding at the end the following new sub6 sections: 

7 ‘‘(b) INITIAL DISCLOSURE.— 

8 ‘‘(1) IN GENERAL.—Except as provided in para9 graph (2), upon the filing of an initial complaint for 

10 patent infringement, the plaintiff shall disclose to 

11 the Patent and Trademark Office, the court, and 

12 each adverse party the identity of each of the fol13 lowing: 

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

15 at issue. 

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

17 or enforce the patent or patents at issue. 

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

19 that the plaintiff knows to have a financial in20 terest in the patent or patents at issue or the 

21 plaintiff. 

22 ‘‘(D) The ultimate parent entity of any as23 signee identified under subparagraph (A) and 

24 any entity identified under subparagraph (B) or 

25 (C). 


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

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

5 ‘‘(c) DISCLOSURE COMPLIANCE.— 

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

8 a corporation traded on a public stock exchange, an 

9 identification of the name of the corporation and the 

10 public exchange listing shall satisfy the disclosure re11 quirement. 

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

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

14 held by a publicly traded corporation, the disclosure 

15 shall satisfy the disclosure requirement if the infor16 mation identifies— 

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

18 name of the partnership and the name and cor19 respondence address of each partner or other 

20 entity that holds more than a 5-percent share 

21 of that partnership; 

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

23 name of the corporation, the location of incor24 poration, the address of the principal place of 


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1 business, and the name of each officer of the 

2 corporation; and 

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

4 correspondence address of that individual. 

5 ‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT6 ENT AND TRADEMARK OFFICE.— 

7 ‘‘(1) IN GENERAL.—A plaintiff required to sub8 mit information under subsection (b) or a subse9 quent owner of the patent or patents at issue shall, 

10 not later than 90 days after any change in the as11 signee of the patent or patents at issue or an entity 

12 described under subparagraph (B) or (D) of sub13 section (b)(1), submit to the Patent and Trademark 

14 Office the updated identification of such assignee or 

15 entity. 

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

17 patent for which the requirement of paragraph (1) 

18 has not been met— 

19 ‘‘(A) the plaintiff or subsequent owner 

20 shall not be entitled to recover reasonable fees 

21 and other expenses under section 285 or in22 creased damages under section 284 with respect 

23 to infringing activities taking place during any 

24 period of noncompliance with paragraph (1), 


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1 unless the denial of such damages or fees would 

2 be manifestly unjust; and 

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

4 party accused of infringement reasonable fees 

5 and other expenses under section 285 that are 

6 incurred to discover the updated assignee or en7 tity described under paragraph (1), unless such 

8 sanctions would be unjust. 

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

10 ‘‘(1) FINANCIAL INTEREST.—The term ‘finan11 cial interest’— 

12 ‘‘(A) means— 

13 ‘‘(i) with regard to a patent or pat14 ents, the right of a person to receive pro15 ceeds related to the assertion of the patent 

16 or patents, including a fixed or variable 

17 portion of such proceeds; and 

18 ‘‘(ii) with regard to the plaintiff, di19 rect or indirect ownership or control by a 

20 person of more than 5 percent of such 

21 plaintiff; and 

22 ‘‘(B) does not mean— 

23 ‘‘(i) ownership of shares or other in24 terests in a mutual or common investment 

25 fund, unless the owner of such interest 


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1 participates in the management of such 

2 fund; or 

3 ‘‘(ii) the proprietary interest of a pol4 icyholder in a mutual insurance company 

5 or of a depositor in a mutual savings asso6 ciation, or a similar proprietary interest, 

7 unless the outcome of the proceeding could 

8 substantially affect the value of such inter9 est. 

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

11 means all stages of a civil action, including pretrial 

12 and trial proceedings and appellate review. 

13 ‘‘(3) ULTIMATE PARENT ENTITY.— 

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

15 subparagraph (B), the term ‘ultimate parent 

16 entity’ has the meaning given such term in sec17 tion 801.1(a)(3) of title 16, Code of Federal 

18 Regulations, or any successor regulation. 

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

20 Director may modify the definition of ‘ultimate 

21 parent entity’ by regulation.’’. 

22 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

25 to read as follows: 

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


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1 (c) REGULATIONS.—The Director may promulgate 

2 such regulations as are necessary to establish a registra3 tion fee in an amount sufficient to recover the estimated 

4 costs of administering subsections (b) through (e) of sec5 tion 290 of title 35, United States Code, as added by sub6 section (a), to facilitate the collection and maintenance of 

7 the information required by such subsections, and to en8 sure the timely disclosure of such information to the pub9 lic. 

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

11 this section shall take effect upon the expiration of the 

12 6-month period beginning on the date of the enactment 

13 of this Act and shall apply to any action for which a com14 plaint is filed on or after such effective date. 

15 SEC. 5. CUSTOMER-SUIT EXCEPTION. 

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

17 States Code, is amended to read as follows: 

18 ‘‘§ 296. Stay of action against customer 

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

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

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

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

23 action against a covered customer related to infringement 

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

25 following requirements are met: 


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

2 customer consent in writing to the stay. 

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

4 the action or to a separate action involving the same 

5 patent or patents related to the same covered prod6 uct or process. 

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

8 by any issues that the covered customer has in com9 mon with the covered manufacturer and are finally 

10 decided as to the covered manufacturer in an action 

11 described in paragraph (2). 

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

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

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

15 the first pleading in the action is served that 

16 specifically identifies the covered product or 

17 process as a basis for the covered customer’s al18 leged infringement of the patent and that spe19 cifically identifies how the covered product or 

20 process is alleged to infringe the patent; or 

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

22 order in the case is entered. 

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

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


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1 systems, or components accused of infringement in the ac2 tion. 

3 ‘‘(c) LIFT OF STAY.— 

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

5 section may be lifted upon grant of a motion based 

6 on a showing that— 

7 ‘‘(A) the action involving the covered man8 ufacturer will not resolve a major issue in suit 

9 against the covered customer; or 

10 ‘‘(B) the stay unreasonably prejudices and 

11 would be manifestly unjust to the party seeking 

12 to lift the stay. 

13 ‘‘(2) SEPARATE MANUFACTURER ACTION IN14 VOLVED.—In the case of a stay entered based on the 

15 participation of the covered manufacturer in a sepa16 rate action involving the same patent or patents re17 lated to the same covered product or process, a mo18 tion under this subsection may only be made if the 

19 court in such separate action determines the show20 ing required under paragraph (1) has been met. 

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

22 action that includes a cause of action described under sec23 tion 271(e)(2). 

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

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1 facturer seeks or consents to entry of a consent judgment 

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

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

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

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

6 a motion, determine that such consent judgment or 

7 unappealed final decision shall not be binding on the cov8 ered customer with respect to one or more of such common 

9 issues based on a showing that such an outcome would 

10 unreasonably prejudice and be manifestly unjust to the 

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

12 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec13 tion shall be construed to limit the ability of a court to 

14 grant any stay, expand any stay granted under this sec15 tion, or grant any motion to intervene, if otherwise per16 mitted by law. 

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

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

19 customer’ means a party accused of infringing a pat20 ent or patents in dispute based on a covered product 

21 or process. 

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

23 ‘covered manufacturer’ means a person that manu24 factures or supplies, or causes the manufacture or 


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

2 part thereof. 

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

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

5 process, system, service, component, material, or ap6 paratus, or relevant part thereof, that— 

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

8 patents in dispute; or 

9 ‘‘(B) implements a process alleged to in10 fringe the patent or patents in dispute.’’. 

11 (b) CONFORMING AMENDMENT.—The table of sec12 tions for chapter 29 of title 35, United States Code, is 

13 amended by striking the item relating to section 296 and 

14 inserting the following: 

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

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

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

17 of this Act and shall apply to any action for which a com18 plaint is filed on or after the first day of the 30-day period 

19 that ends on that date. 

20 SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC21 OMMENDATIONS OF THE JUDICIAL CON22 FERENCE. 

23 (a) JUDICIAL CONFERENCE RULES AND PROCE24 DURES ON DISCOVERY BURDENS AND COSTS.— 


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1 (1) RULES AND PROCEDURES.—The Judicial 

2 Conference of the United States, using existing re3 sources, shall develop rules and procedures to imple4 ment the issues and proposals described in para5 graph (2) to address the asymmetries in discovery 

6 burdens and costs in any civil action arising under 

7 any Act of Congress relating to patents. Such rules 

8 and procedures shall include how and when payment 

9 for document discovery in addition to the discovery 

10 of core documentary evidence is to occur, and what 

11 information must be presented to demonstrate finan12 cial capacity before permitting document discovery 

13 in addition to the discovery of core documentary evi14 dence. 

15 (2) RULES AND PROCEDURES TO BE CONSID16 ERED.—The rules and procedures required under 

17 paragraph (1) should address each of the following 

18 issues and proposals: 

19 (A) DISCOVERY OF CORE DOCUMENTARY

20 EVIDENCE.—Whether and to what extent each 

21 party to the action is entitled to receive core 

22 documentary evidence and shall be responsible 

23 for the costs of producing core documentary 

24 evidence within the possession or control of 

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1 tent each party to the action may seek non2 documentary discovery as otherwise provided in 

3 the Federal Rules of Civil Procedure. 

4 (B) ELECTRONIC COMMUNICATION.—If the 

5 parties determine that the discovery of elec6 tronic communication is appropriate, whether 

7 such discovery shall occur after the parties have 

8 exchanged initial disclosures and core documen9 tary evidence and whether such discovery shall 

10 be in accordance with the following: 

11 (i) Any request for the production of 

12 electronic communication shall be specific 

13 and may not be a general request for the 

14 production of information relating to a 

15 product or business. 

16 (ii) Each request shall identify the 

17 custodian of the information requested, the 

18 search terms, and a time frame. The par19 ties shall cooperate to identify the proper 

20 custodians, the proper search terms, and 

21 the proper time frame. 

22 (iii) A party may not submit produc23 tion requests to more than 5 custodians, 

24 unless the parties jointly agree to modify 


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1 the number of production requests without 

2 leave of the court. 

3 (iv) The court may consider contested 

4 requests for up to 5 additional custodians 

5 per producing party, upon a showing of a 

6 distinct need based on the size, complexity, 

7 and issues of the case. 

8 (v) If a party requests the discovery 

9 of electronic communication for additional 

10 custodians beyond the limits agreed to by 

11 the parties or granted by the court, the re12 questing party shall bear all reasonable 

13 costs caused by such additional discovery. 

14 (C) ADDITIONAL DOCUMENT DISCOVERY.— 

15 Whether the following should apply: 

16 (i) IN GENERAL.—Each party to the 

17 action may seek any additional document 

18 discovery otherwise permitted under the 

19 Federal Rules of Civil Procedure, if such 

20 party bears the reasonable costs, including 

21 reasonable attorney’s fees, of the additional 

22 document discovery. 

23 (ii) REQUIREMENTS FOR ADDITIONAL

24 DOCUMENT DISCOVERY.—Unless the par25 ties mutually agree otherwise, no party 


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1 may be permitted additional document dis2 covery unless such a party posts a bond, or 

3 provides other security, in an amount suffi4 cient to cover the expected costs of such 

5 additional document discovery, or makes a 

6 showing to the court that such party has 

7 the financial capacity to pay the costs of 

8 such additional document discovery. 

9 (iii) LIMITS ON ADDITIONAL DOCU10 MENT DISCOVERY.—A court, upon motion, 

11 may determine that a request for addi12 tional document discovery is excessive, ir13 relevant, or otherwise abusive and may set 

14 limits on such additional document dis15 covery. 

16 (iv) GOOD CAUSE MODIFICATION.—A 

17 court, upon motion and for good cause 

18 shown, may modify the requirements of 

19 subparagraphs (A) and (B) and any defini20 tion under paragraph (3). Not later than 

21 30 days after the pretrial conference under 

22 Rule 16 of the Federal Rules of Civil Pro23 cedure, the parties shall jointly submit any 

24 proposed modifications of the requirements 

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1 inition under paragraph (3), unless the 

2 parties do not agree, in which case each 

3 party shall submit any proposed modifica4 tion of such party and a summary of the 

5 disagreement over the modification. 

6 (v) COMPUTER CODE.—A court, upon 

7 motion and for good cause shown, may de8 termine that computer code should be in9 cluded in the discovery of core documen10 tary evidence. The discovery of computer 

11 code shall occur after the parties have ex12 changed initial disclosures and other core 

13 documentary evidence. 

14 (D) DISCOVERY SEQUENCE AND SCOPE.— 

15 Whether the parties shall discuss and address 

16 in the written report filed pursuant to Rule 

17 26(f) of the Federal Rules of Civil Procedure 

18 the views and proposals of each party on the 

19 following: 

20 (i) When the discovery of core docu21 mentary evidence should be completed. 

22 (ii) Whether additional document dis23 covery will be sought under subparagraph 

24 (C). 


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1 (iii) Any issues about infringement, 

2 invalidity, or damages that, if resolved be3 fore the additional discovery described in 

4 subparagraph (C) commences, might sim5 plify or streamline the case, including the 

6 identification of any terms or phrases re7 lating to any patent claim at issue to be 

8 construed by the court and whether the 

9 early construction of any of those terms or 

10 phrases would be helpful. 

11 (3) DEFINITIONS.—In this subsection: 

12 (A) CORE DOCUMENTARY EVIDENCE.—The 

13 term ‘‘core documentary evidence’’— 

14 (i) includes— 

15 (I) documents relating to the 

16 conception of, reduction to practice of, 

17 and application for, the patent or pat18 ents at issue; 

19 (II) documents sufficient to show 

20 the technical operation of the product 

21 or process identified in the complaint 

22 as infringing the patent or patents at 

23 issue; 

24 (III) documents relating to po25 tentially invalidating prior art; 


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1 (IV) documents relating to any 

2 licensing of, or other transfer of rights 

3 to, the patent or patents at issue be4 fore the date on which the complaint 

5 is filed; 

6 (V) documents sufficient to show 

7 profit attributable to the claimed in8 vention of the patent or patents at 

9 issue; 

10 (VI) documents relating to any 

11 knowledge by the accused infringer of 

12 the patent or patents at issue before 

13 the date on which the complaint is 

14 filed; 

15 (VII) documents relating to any 

16 knowledge by the patentee of infringe17 ment of the patent or patents at issue 

18 before the date on which the com19 plaint is filed; 

20 (VIII) documents relating to any 

21 licensing term or pricing commitment 

22 to which the patent or patents may be 

23 subject through any agency or stand24 ard-setting body; and 


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1 (IX) documents sufficient to 

2 show any marking or other notice pro3 vided of the patent or patents at 

4 issue; and 

5 (ii) does not include computer code, 

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

7 (B) ELECTRONIC COMMUNICATION.—The 

8 term ‘‘electronic communication’’ means any 

9 form of electronic communication, including 

10 email, text message, or instant message. 

11 (4) IMPLEMENTATION BY THE DISTRICT

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

13 which the Judicial Conference has developed the 

14 rules and procedures required by this subsection, 

15 each United States district court and the United 

16 States Court of Federal Claims shall revise the ap17 plicable local rules for such court to implement such 

18 rules and procedures. 

19 (5) AUTHORITY FOR JUDICIAL CONFERENCE TO

20 REVIEW AND MODIFY.— 

21 (A) STUDY OF EFFICACY OF RULES AND

22 PROCEDURES.—The Judicial Conference shall 

23 study the efficacy of the rules and procedures 

24 required by this subsection during the 4-year 

25 period beginning on the date on which such 


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1 rules and procedures by the district courts and 

2 the United States Court of Federal Claims are 

3 first implemented. The Judicial Conference may 

4 modify such rules and procedures following 

5 such 4-year period. 

6 (B) INITIAL MODIFICATIONS.—Before the 

7 expiration of the 4-year period described in sub8 paragraph (A), the Judicial Conference may 

9 modify the requirements under this sub10 section— 

11 (i) by designating categories of ‘‘core 

12 documentary evidence’’, in addition to 

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

14 as the Judicial Conference determines to 

15 be appropriate and necessary; and 

16 (ii) as otherwise necessary to prevent 

17 a manifest injustice, the imposition of a re18 quirement the costs of which clearly out19 weigh its benefits, or a result that could 

20 not reasonably have been intended by the 

21 Congress. 

22 (b) JUDICIAL CONFERENCE PATENT CASE MANAGE23 MENT.—The Judicial Conference of the United States, 

24 using existing resources, shall develop case management 

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1 trict courts and the United States Court of Federal Claims 

2 for any civil action arising under any Act of Congress re3 lating to patents, including initial disclosure and early case 

4 management conference practices that— 

5 (1) will identify any potential dispositive issues 

6 of the case; and 

7 (2) focus on early summary judgment motions 

8 when resolution of issues may lead to expedited dis9 position of the case. 

10 (c) REVISION OF FORM FOR PATENT INFRINGE11 MENT.— 

12 (1) ELIMINATION OF FORM.—The Supreme 

13 Court, using existing resources, shall eliminate Form 

14 18 in the Appendix to the Federal Rules of Civil 

15 Procedure (relating to Complaint for Patent In16 fringement), effective on the date of the enactment 

17 of this Act. 

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

19 prescribe a new form or forms setting out model al20 legations of patent infringement that, at a minimum, 

21 notify accused infringers of the asserted claim or 

22 claims, the products or services accused of infringe23 ment, and the plaintiff’s theory for how each ac24 cused product or service meets each limitation of 

25 each asserted claim. The Judicial Conference should 


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1 exercise the authority under section 2073 of title 28, 

2 United States Code, to make recommendations with 

3 respect to such new form or forms. 

4 (d) PROTECTION OF INTELLECTUAL-PROPERTY LI5 CENSES IN BANKRUPTCY.— 

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

7 United States Code, is amended by adding at the 

8 end the following: 

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

10 chapter. If the foreign representative rejects or repudiates 

11 a contract under which the debtor is a licensor of intellec12 tual property, the licensee under such contract shall be 

13 entitled to make the election and exercise the rights de14 scribed in section 365(n).’’. 

15 (2) TRADEMARKS.— 

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

17 title 11, United States Code, is amended— 

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

19 ‘‘or’’; 

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

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

22 (iii) by adding after subparagraph (F) 

23 the following new subparagraph: 

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

25 name, as those terms are defined in section 45 


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

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

3 1127);’’. 

4 (B) CONFORMING AMENDMENT.—Section 

5 365(n)(2) of title 11, United States Code, is 

6 amended— 

7 (i) in subparagraph (B)— 

8 (I) by striking ‘‘royalty pay9 ments’’ and inserting ‘‘royalty or 

10 other payments’’; and 

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

12 semicolon; 

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

14 the period at the end of clause (ii) and in15 serting ‘‘; and’’; and 

16 (iii) by adding at the end the fol17 lowing new subparagraph: 

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

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

20 a contractual obligation to monitor and control the 

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

22 (3) EFFECTIVE DATE.—The amendments made 

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

24 enactment of this Act and shall apply to any case 


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1 that is pending on, or for which a petition or com2 plaint is filed on or after, such date of enactment. 

3 SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND IN4 FORMATION ACCESS. 

5 (a) SMALL BUSINESS EDUCATION AND OUT6 REACH.— 

7 (1) RESOURCES FOR SMALL BUSINESS.—Using 

8 existing resources, the Director shall develop edu9 cational resources for small businesses to address 

10 concerns arising from patent infringement. 

11 (2) SMALL BUSINESS PATENT OUTREACH.—The 

12 existing small business patent outreach programs of 

13 the Office, and the relevant offices at the Small 

14 Business Administration and the Minority Business 

15 Development Agency, shall provide education and 

16 awareness on abusive patent litigation practices. The 

17 Director may give special consideration to the 

18 unique needs of small firms owned by disabled vet19 erans, service-disabled veterans, women, and minor20 ity entrepreneurs in planning and executing the out21 reach efforts by the Office. 

22 (b) IMPROVING INFORMATION TRANSPARENCY FOR

23 SMALL BUSINESS AND THE UNITED STATES PATENT AND

24 TRADEMARK OFFICE USERS.— 


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

2 Director shall create a user-friendly section on the 

3 official Web site of the Office to notify the public 

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

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

6 Director shall include— 

7 (A) information disclosed under sub8 sections (b) and (d) of section 290 of title 35, 

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

10 this Act; and 

11 (B) any other information the Director de12 termines to be relevant. 

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

14 for the public, the information described in para15 graph (1) shall be searchable by patent number, pat16 ent art area, and entity. 

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

18 AND EXAMINATION. 

19 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

20 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY

21 AND ETHICAL BUSINESS PRACTICES.— 

22 (1) STUDY REQUIRED.—The Director, in con23 sultation with the Secretary of Commerce, the Sec24 retary of the Treasury, the Chairman of the Securi25 ties and Exchange Commission, the heads of other 


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1 relevant agencies, and interested parties, shall, using 

2 existing resources of the Office, conduct a study— 

3 (A) to develop legislative recommendations 

4 to ensure greater transparency and account5 ability in patent transactions occurring on the 

6 secondary market; 

7 (B) to examine the economic impact that 

8 the patent secondary market has on the United 

9 States; 

10 (C) to examine licensing and other over11 sight requirements that may be placed on the 

12 patent secondary market, including on the par13 ticipants in such markets, to ensure that the 

14 market is a level playing field and that brokers 

15 in the market have the requisite expertise and 

16 adhere to ethical business practices; and 

17 (D) to examine the requirements placed on 

18 other markets. 

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

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

21 the Director shall submit a report to the Committee 

22 on the Judiciary of the House of Representatives 

23 and the Committee on the Judiciary of the Senate 

24 on the findings and recommendations of the Director 

25 from the study required under paragraph (1). 


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1 (b) STUDY ON PATENTS OWNED BY THE UNITED

2 STATES GOVERNMENT.— 

3 (1) STUDY REQUIRED.—The Director, in con4 sultation with the heads of relevant agencies and in5 terested parties, shall, using existing resources of the 

6 Office, conduct a study on patents owned by the 

7 United States Government that— 

8 (A) examines how such patents are li9 censed and sold, and any litigation relating to 

10 the licensing or sale of such patents; 

11 (B) provides legislative and administrative 

12 recommendations on whether there should be 

13 restrictions placed on patents acquired from the 

14 United States Government; 

15 (C) examines whether or not each relevant 

16 agency maintains adequate records on the pat17 ents owned by such agency, specifically whether 

18 such agency addresses licensing, assignment, 

19 and Government grants for technology related 

20 to such patents; and 

21 (D) provides recommendations to ensure 

22 that each relevant agency has an adequate 

23 point of contact that is responsible for man24 aging the patent portfolio of the agency. 


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

2 after the date of the enactment of this Act, the Di3 rector shall submit to the Committee on the Judici4 ary of the House of Representatives and the Com5 mittee on the Judiciary of the Senate a report on 

6 the findings and recommendations of the Director 

7 from the study required under paragraph (1). 

8 (c) STUDY ON PATENT QUALITY AND ACCESS TO

9 THE BEST INFORMATION DURING EXAMINATION.— 

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

11 the United States shall, using existing resources, 

12 conduct a study on patent examination at the Office 

13 and the technologies available to improve examina14 tion and improve patent quality. 

15 (2) CONTENTS OF THE STUDY.—The study re16 quired under paragraph (1) shall include the fol17 lowing: 

18 (A) An examination of patent quality at 

19 the Office. 

20 (B) An examination of ways to improve 

21 patent quality, specifically through technology, 

22 that shall include examining best practices at 

23 foreign patent offices and the use of existing 

24 off-the-shelf technologies to improve patent ex25 amination. 


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1 (C) A description of how patents are clas2 sified. 

3 (D) An examination of procedures in place 

4 to prevent double patenting through filing by 

5 applicants in multiple art areas. 

6 (E) An examination of the types of off-the7 shelf prior art databases and search software 

8 used by foreign patent offices and governments, 

9 particularly in Europe and Asia, and whether 

10 those databases and search tools could be used 

11 by the Office to improve patent examination. 

12 (F) An examination of any other areas the 

13 Comptroller General determines to be relevant. 

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

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

16 Comptroller General shall submit to the Committee 

17 on the Judiciary of the House of Representatives 

18 and the Committee on the Judiciary of the Senate 

19 a report on the findings and recommendations from 

20 the study required by this subsection, including rec21 ommendations for any changes to laws and regula22 tions that will improve the examination of patent ap23 plications and patent quality. 

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

25 (1) STUDY REQUIRED.— 


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

2 Administrative Office of the United States 

3 Courts, in consultation with the Director of the 

4 Federal Judicial Center and the United States 

5 Patent and Trademark Office, shall, using ex6 isting resources, conduct a study to examine the 

7 idea of developing a pilot program for patent 

8 small claims procedures in certain judicial dis9 tricts within the existing patent pilot program 

10 mandated by Public Law 111–349. 

11 (B) CONTENTS OF STUDY.—The study 

12 under subparagraph (A) shall examine— 

13 (i) the necessary criteria for using 

14 small claims procedures; 

15 (ii) the costs that would be incurred 

16 for establishing, maintaining, and oper17 ating such a pilot program; and 

18 (iii) the steps that would be taken to 

19 ensure that the procedures used in the 

20 pilot program are not misused for abusive 

21 patent litigation. 

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

23 after the date of the enactment of this Act, the Di24 rector of the Administrative Office of the United 

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1 mittee on the Judiciary of the House of Representa2 tives and the Committee on the Judiciary of the 

3 Senate on the findings and recommendations of the 

4 Director of the Administrative Office from the study 

5 required under paragraph (1). 

6 (e) STUDY ON DEMAND LETTERS.— 

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

8 the heads of other appropriate agencies, shall, using 

9 existing resources, conduct a study of the prevalence 

10 of the practice of sending patent demand letters in 

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

12 through fraudulent or deceptive practices, impose a 

13 negative impact on the marketplace. 

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

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

16 Director shall submit a report to the Committee on 

17 the Judiciary of the House of Representatives and 

18 the Committee on the Judiciary of the Senate on the 

19 findings and recommendations of the Director from 

20 the study required under paragraph (1). 

21 (3) PATENT DEMAND LETTER DEFINED.—In 

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

23 means a written communication relating to a patent 

24 that states or indicates, directly or indirectly, that 


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1 the recipient or anyone affiliated with the recipient 

2 is or may be infringing the patent. 

3 (f) STUDY ON BUSINESS METHOD PATENT QUAL4 ITY.— 

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

6 the United States shall, using existing resources, 

7 conduct a study on the volume and nature of litiga8 tion involving business method patents. 

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

10 under paragraph (1) shall focus on examining the 

11 quality of business method patents asserted in suits 

12 alleging patent infringement, and may include an ex13 amination of any other areas that the Comptroller 

14 General determines to be relevant. 

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

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

17 Comptroller General shall submit to the Committee 

18 on the Judiciary of the House of Representatives 

19 and the Committee on the Judiciary of the Senate 

20 a report on the findings and recommendations from 

21 the study required by this subsection, including rec22 ommendations for any changes to laws or regula23 tions that the Comptroller General considers appro24 priate on the basis of the study. 


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1 (g) STUDY ON IMPACT OF LEGISLATION ON ABILITY

2 OF INDIVIDUALS AND SMALL BUSINESSES TO PROTECT

3 EXCLUSIVE RIGHTS TO INVENTIONS AND DISCOV4 ERIES.— 

5 (1) STUDY REQUIRED.—The Director, in con6 sultation with the Secretary of Commerce, the Direc7 tor of the Administrative Office of the United States 

8 Courts, the Director of the Federal Judicial Center, 

9 the heads of other relevant agencies, and interested 

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

11 conduct a study to examine the economic impact of 

12 sections 3, 4, and 5 of this Act, and any amend13 ments made by such sections, on the ability of indi14 viduals and small businesses owned by women, vet15 erans, and minorities to assert, secure, and vindicate 

16 the constitutionally guaranteed exclusive right to in17 ventions and discoveries by such individuals and 

18 small business. 

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

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

21 Director shall submit to the Committee on the Judi22 ciary of the House of Representatives and the Com23 mittee on the Judiciary of the Senate a report on 

24 the findings and recommendations of the Director 

25 from the study required under paragraph (1). 


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1 SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 

2 THE LEAHY-SMITH AMERICA INVENTS ACT. 

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

4 325(e)(2) of title 35, United States Code is amended by 

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

6 (b) USE OF DISTRICT-COURT CLAIM CONSTRUCTION

7 IN POST-GRANT AND INTER PARTES REVIEWS.— 

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

9 title 35, United States Code, is amended— 

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

11 and inserting a semicolon; 

12 (B) in paragraph (13), by striking the pe13 riod at the end and inserting ‘‘; and’’; and 

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

15 paragraph: 

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

17 chapter— 

18 ‘‘(A) each claim of a patent shall be con19 strued as such claim would be in a civil action 

20 to invalidate a patent under section 282(b), in21 cluding construing each claim of the patent in 

22 accordance with the ordinary and customary 

23 meaning of such claim as understood by one of 

24 ordinary skill in the art and the prosecution 

25 history pertaining to the patent; and 


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

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

3 which the patent owner was a party, the Office 

4 shall consider such claim construction.’’. 

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

6 title 35, United States Code, is amended— 

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

8 and inserting a semicolon; 

9 (B) in paragraph (12), by striking the pe10 riod at the end and inserting ‘‘; and’’; and 

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

12 paragraph: 

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

14 chapter— 

15 ‘‘(A) each claim of a patent shall be con16 strued as such claim would be in a civil action 

17 to invalidate a patent under section 282(b), in18 cluding construing each claim of the patent in 

19 accordance with the ordinary and customary 

20 meaning of such claim as understood by one of 

21 ordinary skill in the art and the prosecution 

22 history pertaining to the patent; and 

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

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


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1 which the patent owner was a party, the Office 

2 shall consider such claim construction.’’. 

3 (3) TECHNICAL AND CONFORMING AMEND4 MENT.—Section 18(a)(1)(A) of the Leahy-Smith 

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

6 329; 35 U.S.C. 321 note) is amended by striking 

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

8 326(a)(13)’’. 

9 (4) EFFECTIVE DATE.—The amendments made 

10 by this subsection shall take effect upon the expira11 tion of the 90-day period beginning on the date of 

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

13 proceeding under chapter 31 or 32 of title 35, 

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

15 the petition for review is filed on or after such effec16 tive date. 

17 (c) CODIFICATION OF THE DOUBLE-PATENTING

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

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

20 United States Code, is amended by adding at the 

21 end the following new section: 

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

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

24 151 (referred to as the ‘first patent’) that is not prior art 

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


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

2 claimed invention of the second patent for the purpose of 

3 determining the nonobviousness of the claimed invention 

4 of the second patent under section 103 if— 

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

6 was effectively filed under section 102(d) on or be7 fore the effective filing date of the claimed invention 

8 of the second patent; 

9 ‘‘(2) either— 

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

11 name the same individual or individuals as the 

12 inventor; or 

13 ‘‘(B) the claimed invention of the first pat14 ent would constitute prior art to the claimed in15 vention of the second patent under section 

16 102(a)(2) if an exception under section 

17 102(b)(2) were deemed to be inapplicable and 

18 the claimed invention of the first patent was, or 

19 were deemed to be, effectively filed under sec20 tion 102(d) before the effective filing date of 

21 the claimed invention of the second patent; and 

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

23 disclaimed the rights to enforce the second patent 

24 independently from, and beyond the statutory term 

25 of, the first patent.’’. 


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1 (2) REGULATIONS.—The Director shall promul2 gate regulations setting forth the form and content 

3 of any disclaimer required for a patent to be issued 

4 in compliance with section 106 of title 35, United 

5 States Code, as added by paragraph (1). Such regu6 lations shall apply to any disclaimer filed after a 

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

8 considered for the purpose of determining the valid9 ity of the patent under section 106 of title 35, 

10 United States Code. 

11 (3) CONFORMING AMENDMENT.—The table of 

12 sections for chapter 10 of title 35, United States 

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

14 new item: 

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

15 (4) EXCLUSIVE RULE.—A patent subject to sec16 tion 106 of title 35, United States Code, as added 

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

18 nonstatutory, double-patenting ground based on a 

19 patent described in section 3(n)(1) of the Leahy20 Smith America Invents Act (35 U.S.C. 100 note). 

21 (5) EFFECTIVE DATE.—The amendments made 

22 by this subsection shall take effect upon the expira23 tion of the 1-year period beginning on the date of 

24 the enactment of this Act and shall apply to a pat25 ent or patent application only if both the first and 


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1 second patents described in section 106 of title 35, 

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

3 patents or patent applications that are described in 

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

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

6 (d) PTO PATENT REVIEWS.— 

7 (1) CLARIFICATION.— 

8 (A) SCOPE OF PRIOR ART.—Section 

9 18(a)(1)(C)(i) of the Leahy-Smith America In10 vents Act (35 U.S.C. 321 note) is amended by 

11 striking ‘‘section 102(a)’’ and inserting ‘‘sub12 section (a) or (e) of section 102’’. 

13 (B) EFFECTIVE DATE.—The amendment 

14 made by subparagraph (A) shall take effect on 

15 the date of the enactment of this Act and shall 

16 apply to any proceeding pending on, or filed on 

17 or after, such date of enactment. 

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

19 available resources, the Director may waive payment 

20 of a filing fee for a transitional proceeding described 

21 under section 18(a) of the Leahy-Smith America In22 vents Act (35 U.S.C. 321 note). 

23 (e) CLARIFICATION OF LIMITS ON PATENT TERM

24 ADJUSTMENT.— 


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

2 title 35, United States Code, is amended— 

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

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

5 term of the patent shall be extended 1 day for 

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

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

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

9 continued examination of the application re10 quested by the applicant’’ and inserting ‘‘con11 sumed after continued examination of the appli12 cation is requested by the applicant’’; 

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

14 at the end and inserting a period; and 

15 (D) by striking the matter following clause 

16 (iii). 

17 (2) EFFECTIVE DATE.—The amendments made 

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

19 enactment of this Act and apply to any patent appli20 cation that is pending on, or filed on or after, such 

21 date of enactment. 

22 (f) CLARIFICATION OF JURISDICTION.— 

23 (1) IN GENERAL.—The Federal interest in pre24 venting inconsistent final judicial determinations as 

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


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1 presents a substantial Federal issue that is impor2 tant to the Federal system as a whole. 

3 (2) APPLICABILITY.—Paragraph (1)— 

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

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

6 of this Act; and 

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

8 Federal court has issued a ruling on whether 

9 the case or a claim arises under any Act of 

10 Congress relating to patents or plant variety 

11 protection before the date of the enactment of 

12 this Act. 

13 (g) PATENT PILOT PROGRAM IN CERTAIN DISTRICT

14 COURTS DURATION.— 

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

16 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is 

17 amended to read as follows: 

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

19 subsection (a) shall be maintained using existing re20 sources, and shall terminate 20 years after the end of the 

21 6-month period described in subsection (b).’’. 

22 (2) EFFECTIVE DATE.—The amendment made 

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

24 enactment of this Act. 

25 (h) TECHNICAL CORRECTIONS.— 


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1 (1) NOVELTY.— 

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

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

4 striking ‘‘the inventor or joint inventor or by 

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

6 inventor or another’’. 

7 (B) EFFECTIVE DATE.—The amendment 

8 made by subparagraph (A) shall be effective as 

9 if included in the amendment made by section 

10 3(b)(1) of the Leahy-Smith America Invents 

11 Act (Public Law 112–29). 

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

13 (A) AMENDMENT.—The second sentence of 

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

15 is amended by striking ‘‘shall execute’’ and in16 serting ‘‘may be required to execute’’. 

17 (B) EFFECTIVE DATE.—The amendment 

18 made by subparagraph (A) shall be effective as 

19 if included in the amendment made by section 

20 4(a)(1) of the Leahy-Smith America Invents 

21 Act (Public Law 112–29). 

22 (3) ASSIGNEE FILERS.— 

23 (A) BENEFIT OF EARLIER FILING DATE; 

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

25 35, United States Code, is amended, in the first 


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1 sentence, by striking ‘‘by an inventor or inven2 tors named’’ and inserting ‘‘that names the in3 ventor or a joint inventor’’. 

4 (B) BENEFIT OF EARLIER FILING DATE IN

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

6 United States Code, is amended, in the first 

7 sentence, by striking ‘‘names an inventor or 

8 joint inventor’’ and inserting ‘‘names the inven9 tor or a joint inventor’’. 

10 (C) EFFECTIVE DATE.—The amendments 

11 made by this paragraph shall take effect on the 

12 date of the enactment of this Act and shall 

13 apply to any patent application, and any patent 

14 issuing from such application, that is filed on or 

15 after September 16, 2012. 

16 (4) DERIVED PATENTS.— 

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

18 35, United States Code, is amended by striking 

19 ‘‘or joint inventor’’ and inserting ‘‘or a joint in20 ventor’’. 

21 (B) EFFECTIVE DATE.—The amendment 

22 made by subparagraph (A) shall be effective as 

23 if included in the amendment made by section 

24 3(h)(1) of the Leahy-Smith America Invents 

25 Act (Public Law 112–29). 


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1 (5) SPECIFICATION.—Notwithstanding section 

2 4(e) of the Leahy-Smith America Invents Act (Pub3 lic Law 112–29; 125 Stat. 297), the amendments 

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

5 Act shall apply to any proceeding or matter that is 

6 pending on, or filed on or after, the date of the en7 actment of this Act. 

8 (6) TIME LIMIT FOR COMMENCING MISCONDUCT

9 PROCEEDINGS.— 

10 (A) AMENDMENT.—The fourth sentence of 

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

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

13 ‘‘18 months’’. 

14 (B) EFFECTIVE DATE.—The amendment 

15 made by this paragraph shall take effect on the 

16 date of the enactment of this Act and shall 

17 apply to any action in which the Office files a 

18 complaint on or after such date of enactment. 

19 (7) PATENT OWNER RESPONSE.— 

20 (A) CONDUCT OF INTER PARTES RE21 VIEW.—Paragraph (8) of section 316(a) of title 

22 35, United States Code, is amended by striking 

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

24 ‘‘the petition under section 311’’. 


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1 (B) CONDUCT OF POST-GRANT REVIEW.— 

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

3 United States Code, is amended by striking 

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

5 ‘‘the petition under section 321’’. 

6 (C) EFFECTIVE DATE.—The amendments 

7 made by this paragraph shall take effect on the 

8 date of the enactment of this Act. 

9 (8) INTERNATIONAL APPLICATIONS.— 

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

11 Patent Law Treaties Implementation Act of 

12 2012 (Public Law 112–211; 126 Stat. 1536) is 

13 amended— 

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

15 (ii) by redesignating paragraphs (8) 

16 and (9) as paragraphs (7) and (8), respec17 tively. 

18 (B) EFFECTIVE DATE.—The amendments 

19 made by subparagraph (A) shall be effective as 

20 if included in title II of the Patent Law Trea21 ties Implementation Act of 2012 (Public Law 

22 112–21). 

23 SEC. 10. EFFECTIVE DATE. 

24 Except as otherwise provided in this Act, the provi25 sions of this Act shall take effect on the date of the enactVerDate Mar 15 2010 04:08 Dec 10, 2013 Jkt 039200 PO 00000 Frm 00060 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.RFS H3309

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1 ment of this Act, and shall apply to any patent issued, 

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

Passed the House of Representatives December 5, 

2013. 

Attest: KAREN L. HAAS, 

Clerk. 


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