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[Congressional Bills 113th Congress]
[From the U.S. Government Publishing Office]
[H.R. 3309 Introduced in House (IH)]

113th CONGRESS
  1st Session
                                H. R. 3309

  To amend title 35, United States Code, and the Leahy-Smith America 
  Invents Act to make improvements and technical corrections, and for 
                            other purposes.

_______________________________________________________________________

                    IN THE HOUSE OF REPRESENTATIVES

                            October 23, 2013

 Mr. Goodlatte (for himself, Mr. DeFazio, Mr. Coble, Ms. Lofgren, Mr. 
 Smith of Texas, Ms. Eshoo, Mr. Chaffetz, Mr. Bachus, Mr. Marino, Mr. 
 Farenthold, and Mr. Holding) introduced the following bill; which was 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL

 
  To amend title 35, United States Code, and the Leahy-Smith America 
  Invents Act to make improvements and technical corrections, and for 
                            other purposes.

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

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

    (a) Short Title.--This Act may be cited as the ``Innovation Act''.
    (b) Table of Contents.--The table of contents for 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 and recommendations to 
                            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.

SEC. 2. DEFINITIONS.

    In this Act:
            (1) Director.--The term ``Director'' means the Under 
        Secretary of Commerce for Intellectual Property and Director of 
        the United States Patent and Trademark Office.
            (2) Office.--The term ``Office'' means the United States 
        Patent and Trademark Office.

SEC. 3. PATENT INFRINGEMENT ACTIONS.

    (a) Pleading Requirements.--
            (1) Amendment.--Chapter 29 of title 35, United States Code, 
        is amended by inserting after section 281 the following:
``Sec. 281A. Pleading requirements for patent infringement actions
    ``(a) Pleading Requirements.--Except as provided in subsection (b), 
in a civil action in which a party asserts a claim for relief arising 
under any Act of Congress relating to patents, a party alleging 
infringement shall include in the initial complaint, counterclaim, or 
cross-claim for patent infringement, unless the information is not 
reasonably accessible to such party, the following:
            ``(1) An identification of each patent allegedly infringed.
            ``(2) An identification of each claim of each patent 
        identified under paragraph (1) that is allegedly infringed.
            ``(3) For each claim identified under paragraph (2), an 
        identification of each accused apparatus, product, feature, 
        device, method, system, process, function, act, service, or 
        other instrumentality (referred to in this section as an 
        `accused instrumentality') alleged to infringe the claim.
            ``(4) For each accused instrumentality identified under 
        paragraph (3), an identification with particularity, if known, 
        of--
                    ``(A) the name or model number of each accused 
                instrumentality; or
                    ``(B) if there is no name or model number, a 
                description of each accused instrumentality that, when 
                used, allegedly results in the practice of the claimed 
                invention.
            ``(5) For each accused instrumentality identified under 
        paragraph (3), an explanation of--
                    ``(A) where each element of each claim identified 
                under paragraph (2) is found within the accused 
                instrumentality;
                    ``(B) whether each such element is infringed 
                literally or under the doctrine of equivalents; and
                    ``(C) with detailed specificity, how the terms in 
                each claim identified under paragraph (2) correspond to 
                the functionality of the accused instrumentality.
            ``(6) For each claim that is alleged to have been infringed 
        indirectly, a description of--
                    ``(A) the direct infringement;
                    ``(B) any person alleged to be a direct infringer 
                known to the party alleging infringement; and
                    ``(C) the acts of the alleged indirect infringer 
                that contribute to or are inducing the direct 
                infringement.
            ``(7) A description of the right of the party alleging 
        infringement to assert each--
                    ``(A) patent identified under paragraph (1); and
                    ``(B) patent claim identified under paragraph (2).
            ``(8) A description of the principal business of the party 
        alleging infringement.
            ``(9) A list of each complaint filed, of which the party 
        alleging infringement has knowledge, that asserts or asserted 
        any of the patents identified under paragraph (1).
            ``(10) For each patent identified under paragraph (1), 
        whether such patent has been specifically declared as 
        essential, potentially essential, or having potential to become 
        essential to any standard-setting body, and whether the United 
        States Government or a foreign government has imposed specific 
        licensing requirements with respect to such patent.
    ``(b) Information Not Readily Accessible.--A party required to 
disclose the information described under subsection (a) shall include 
with such disclosure a description of any information described under 
subsection (a) that is not disclosed, why such undisclosed information 
was not readily accessible, and the efforts made by such party to 
access such undisclosed information.
    ``(c) Confidential Information.--For good cause shown by a party 
required to disclose the information described under subsection (a), 
the court may allow certain information that the court determines to be 
confidential to be filed under seal.
    ``(d) Exemption.--A civil action that includes a claim for relief 
arising under section 271(e)(2) shall not be subject to the 
requirements of subsection (a).''.
            (2) Conforming amendment.--The table of sections for 
        chapter 29 of title 35, United States Code, is amended by 
        inserting after the item relating to section 281 the following 
        new item:

        ``281A. Pleading requirements for patent infringement 
                            actions.''.
    (b) Fees and Other Expenses.--
            (1) Amendment.--Section 285 of title 35, United States 
        Code, is amended to read as follows:
``Sec. 285. Fees and other expenses
    ``(a) Award.--The court shall award, to a prevailing party, 
reasonable fees and other expenses incurred by that party in connection 
with a civil action in which any party asserts a claim for relief 
arising under any Act of Congress relating to patents, unless the court 
finds that the position of the nonprevailing party or parties was 
substantially justified or that special circumstances make an award 
unjust.
    ``(b) Recovery.--If a nonprevailing party is unable to pay 
reasonable fees and other expenses awarded by the court pursuant to 
subsection (a), the court may make the reasonable fees and other 
expenses recoverable against any interested party joined pursuant to 
section 299(d).
    ``(c) Covenant Not To Sue.--A party to a civil action that asserts 
a claim for relief arising under any Act of Congress relating to 
patents against another party, and that subsequently unilaterally 
extends to such other party a covenant not to sue for infringement with 
respect to the patent or patents at issue, shall be deemed to be a 
nonprevailing party (and the other party the prevailing party) for 
purposes of this section, unless the party asserting such claim would 
have been entitled, at the time that such covenant was extended, to 
voluntarily dismiss the action or claim without a court order under 
Rule 41 of the Federal Rules of Civil Procedure.''.
            (2) Conforming amendment and amendment.--
                    (A) Conforming amendment.--The item relating to 
                section 285 of the table of sections for chapter 29 of 
                title 35, United States Code, is amended to read as 
                follows:

        ``285. Fees and other expenses.''.
                    (B) Amendment.--Section 273 of title 35, United 
                States Code, is amended by striking subsections (f) and 
                (g).
            (3) Effective date.--The amendments made by this subsection 
        shall take effect on the date of the enactment of this Act and 
        shall apply to any action for which a complaint is filed on or 
        after that date.
    (c) Joinder of Interested Parties.--Section 299 of title 35, United 
States Code, is amended by adding at the end the following new 
subsection:
    ``(d) Joinder of Interested Parties.--
            ``(1) Joinder.--In a civil action arising under any Act of 
        Congress relating to patents, the court shall grant a motion by 
        a party defending against an allegation of infringement of a 
        patent claim to join an interested party if such defending 
        party shows that the party alleging infringement has no 
        substantial interest in the patent or patents at issue other 
        than asserting such patent claim in litigation.
            ``(2) Limitation on joinder.--The court may deny a motion 
        to join an interested party under paragraph (1) if--
                    ``(A) the interested party is not subject to 
                service of process; or
                    ``(B) joinder under paragraph (1) would deprive the 
                court of subject matter jurisdiction or make venue 
                improper.
            ``(3) Interested party defined.--In this subsection, the 
        term `interested party' means a person, other than the party 
        alleging infringement, that--
                    ``(A) is an assignee of the patent or patents at 
                issue;
                    ``(B) has a right, including a contingent right, to 
                enforce or sublicense the patent or patents at issue; 
                or
                    ``(C) has a direct financial interest in the patent 
                or patents at issue, including the right to any part of 
                an award of damages or any part of licensing revenue, 
                except that a person with a direct financial interest 
                does not include--
                            ``(i) an attorney or law firm providing 
                        legal representation in the civil action 
                        described in paragraph (1) if the sole basis 
                        for the financial interest of the attorney or 
                        law firm in the patent or patents at issue 
                        arises from the attorney or law firm's receipt 
                        of compensation reasonably related to the 
                        provision of the legal representation; or
                            ``(ii) a person whose sole financial 
                        interest in the patent or patents at issue is 
                        ownership of an equity interest in the party 
                        alleging infringement, unless such person also 
                        has the right or ability to influence, direct, 
                        or control the civil action.''.
    (d) Discovery Limits.--
            (1) Amendment.--Chapter 29 of title 35, United States Code, 
        is amended by adding at the end the following new section:
``Sec. 299A. Discovery in patent infringement action
    ``(a) Discovery in Patent Infringement Action.--Except as provided 
in subsection (b), in a civil action arising under any Act of Congress 
relating to patents, if the court determines that a ruling relating to 
the construction of terms used in a patent claim asserted in the 
complaint is required, discovery shall be limited, until such ruling is 
issued, to information necessary for the court to determine the meaning 
of the terms used in the patent claim, including any interpretation of 
those terms used to support the claim of infringement.
    ``(b) Discretion To Expand Scope of Discovery.--
            ``(1) Timely resolution of actions.--If, under any 
        provision of Federal law (including the amendments made by the 
        Drug Price Competition and Patent Term Restoration Act of 1984 
        (Public Law 98-417)), resolution within a specified period of 
        time of a civil action arising under any Act of Congress 
        relating to patents will necessarily affect the rights of a 
        party with respect to the patent, the court may permit 
        discovery, in addition to the discovery authorized under 
        subsection (a), before the ruling described in subsection (a) 
        is issued as necessary to ensure timely resolution of the 
        action.
            ``(2) Resolution of motions.--When necessary to resolve a 
        motion properly raised by a party before a ruling relating to 
        the construction of terms described in subsection (a), the 
        court may allow limited discovery in addition to the discovery 
        authorized under subsection (a) as necessary to resolve the 
        motion.''.
            (2) Conforming amendment.--The table of sections for 
        chapter 29 of title 35, United States Code, is amended by 
        adding at the end the following new item:

        ``299A. Discovery in patent infringement action.''.
    (e) Effective Date.--Except as otherwise provided in this section, 
the amendments made by this section shall take effect on the date of 
the enactment of this Act and shall apply to any action for which a 
complaint is filed on or after that date.

SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP.

    (a) Amendments.--Section 290 of title 35, United States Code, is 
amended--
            (1) in the heading, by striking ``suits'' and inserting 
        ``suits; disclosure of interests'';
            (2) by striking ``The clerks'' and inserting ``(a) Notice 
        of Patent Suits.--The clerks''; and
            (3) by adding at the end the following new subsections:
    ``(b) Initial Disclosure.--
            ``(1) In general.--Except as provided in paragraph (2), 
        upon the filing of an initial complaint for patent 
        infringement, the plaintiff shall disclose to the Patent and 
        Trademark Office, the court, and each adverse party the 
        identity of each of the following:
                    ``(A) The assignee of the patent or patents at 
                issue.
                    ``(B) Any entity with a right to sublicense or 
                enforce the patent or patents at issue.
                    ``(C) Any entity, other than the plaintiff, that 
                the plaintiff knows to have a financial interest in the 
                patent or patents at issue or the plaintiff.
                    ``(D) The ultimate parent entity of any assignee 
                identified under subparagraph (A) and any entity 
                identified under subparagraphs (B) and (C).
            ``(2) Exemption.--The requirements of paragraph (1) shall 
        not apply with respect to a civil action filed under subsection 
        (a) that includes a cause of action described under section 
        271(e)(2).
    ``(c) Disclosure Compliance.--
            ``(1) Publicly traded.--For purposes of subsection 
        (b)(1)(C), if the financial interest is held by a corporation 
        traded on a public stock exchange, an identification of the 
        name of the corporation and the public exchange listing shall 
        satisfy the disclosure requirement.
            ``(2) Not publicly traded.--For purposes of subsection 
        (b)(1)(C), if the financial interest is not held by a publicly 
        traded corporation, the disclosure shall satisfy the disclosure 
        requirement if the information identifies--
                    ``(A) in the case of a partnership, the name of the 
                partnership and the name and correspondence address of 
                each partner or other entity that holds more than a 5-
                percent share of that partnership;
                    ``(B) in the case of a corporation, the name of the 
                corporation, the location of incorporation, the address 
                of the principal place of business, and the name of 
                each officer of the corporation; and
                    ``(C) for each individual, the name and 
                correspondence address of that individual.
    ``(d) Ongoing Duty of Disclosure to the Patent and Trademark 
Office.--
            ``(1) In general.--A plaintiff required to submit 
        information under subsection (b) or a subsequent owner of the 
        patent or patents at issue shall, not later than 90 days after 
        any change in the assignee of the patent or patents at issue or 
        an entity described under subparagraphs (B) and (D) of 
        subsection (b)(1), submit to the Patent and Trademark Office 
        the updated identification of such assignee or entity.
            ``(2) Failure to comply.--With respect to a patent for 
        which the requirement of paragraph (1) has not been met--
                    ``(A) the plaintiff or subsequent owner shall not 
                be entitled to recover reasonable fees and other 
                expenses under section 285 or increased damages under 
                section 284 with respect to infringing activities 
                taking place during any period of noncompliance with 
                paragraph (1), unless the denial of such damages or 
                fees would be manifestly unjust; and
                    ``(B) the court shall award to a prevailing party 
                accused of infringement reasonable fees and other 
                expenses incurred to discover the updated assignee or 
                entity described under paragraph (1), unless such 
                sanctions would be unjust.
    ``(e) Definitions.--In this section:
            ``(1) Financial interest.--The term `financial interest'--
                    ``(A) means--
                            ``(i) with regard to a patent or patents, 
                        the right of a person to receive proceeds 
                        related to the assertion of the patent or 
                        patents, including a fixed or variable portion 
                        of such proceeds; and
                            ``(ii) with regard to the plaintiff, direct 
                        or indirect ownership or control by a person of 
                        more than 5 percent of such plaintiff; and
                    ``(B) does not mean--
                            ``(i) ownership of shares or other 
                        interests in a mutual or common investment 
                        fund, unless the owner of such interest 
                        participates in the management of such fund; or
                            ``(ii) the proprietary interest of a 
                        policyholder in a mutual insurance company, of 
                        a depositor in a mutual savings association, or 
                        a similar proprietary interest, unless the 
                        outcome of the proceeding could substantially 
                        affect the value of such interest.
            ``(2) Proceeding.--The term `proceeding' means all stages 
        of a civil action, including pretrial and trial proceedings and 
        appellate review.
            ``(3) Ultimate parent entity.--
                    ``(A) In general.--Except as provided in 
                subparagraph (B), the term `ultimate parent entity' has 
                the meaning given such term in section 801.1(a)(3) of 
                title 16, Code of Federal Regulations, or any successor 
                regulation.
                    ``(B) Modification of definition.--The Director may 
                modify the definition of `ultimate parent entity' by 
                regulation.''.
    (b) Technical and Conforming Amendment.--The item relating to 
section 290 in the table of sections for chapter 29 of title 35, United 
States Code, is amended to read as follows:

        ``290. Notice of patent suits; disclosure of interests.''.
    (c) Regulations.--The Director may promulgate such regulations as 
are necessary to establish a registration fee in an amount sufficient 
to recover the estimated costs of administering subsections (b) through 
(e) of section 290 of title 35, United States Code, as added by 
subsection (a), to facilitate the collection and maintenance of the 
information required by such subsections, and to ensure the timely 
disclosure of such information to the public.
    (d) Effective Date.--The amendments made by this section shall take 
effect upon the expiration of the 6-month period beginning on the date 
of the enactment of this Act and shall apply to any action for which a 
complaint is filed on or after such effective date.

SEC. 5. CUSTOMER-SUIT EXCEPTION.

    (a) Amendment.--Section 296 of title 35, United States Code, is 
amended to read as follows:
``Sec. 296. Stay of action against customer
    ``(a) Stay of Action Against Customer.--Except as provided in 
subsection (d), in any civil action arising under any Act of Congress 
relating to patents, the court shall grant a motion to stay at least 
the portion of the action against a covered customer related to 
infringement of a patent involving a covered product or process if the 
following requirements are met:
            ``(1) The covered manufacturer and the covered customer 
        consent in writing to the stay.
            ``(2) The covered manufacturer is a party to the action or 
        to a separate action involving the same patent or patents 
        related to the same covered product or process.
            ``(3) The covered customer agrees to be bound by any 
        judgment entered against the covered manufacturer to the same 
        extent that the covered manufacturer may be bound with respect 
        to issues that the covered manufacturer and the covered 
        customer have in common.
            ``(4) The motion is filed after the first pleading in the 
        action and not later than 120 days after service of the first 
        pleading in the action that specifically identifies--
                    ``(A) the covered product or process as a basis for 
                the alleged infringement of the patent by the covered 
                customer; and
                    ``(B) how the covered product or process is alleged 
                to infringe the patent.
    ``(b) Applicability of Stay.--A stay issued pursuant to subsection 
(a) shall apply only to the patents, products, systems, or components 
accused of infringement in the action.
    ``(c) Lift of Stay.--
            ``(1) In general.--A stay entered pursuant to this section 
        may be lifted upon grant of a motion based on a showing that--
                    ``(A) the action involving the covered manufacturer 
                will not resolve a major issue in suit against the 
                covered customer; or
                    ``(B) the stay unreasonably prejudices and would be 
                manifestly unjust to the party seeking to lift the 
                stay.
            ``(2) Separate manufacturer action involved.--In the case 
        of a stay entered based on the participation of the covered 
        manufacturer in a separate action involving the same patent or 
        patents related to the same covered product or process, a 
        motion under this subsection may only be made if the court in 
        such separate action determines the showing required under 
        paragraph (1) has been met.
    ``(d) Exemption.--This section shall not apply to an action that 
includes a cause of action described under section 271(e).
    ``(e) Rule of Construction.--Nothing in this section shall be 
construed to limit the ability of a court to grant any stay, or expand 
any stay granted pursuant to this section, if otherwise permitted by 
law.
    ``(f) Definitions.--In this section:
            ``(1) Covered customer.--The term `covered customer' means 
        a party accused of infringing a patent or patents in dispute 
        based on a covered product or process.
            ``(2) Covered manufacturer.--The term `covered 
        manufacturer' means a person that manufactures or supplies, or 
        causes the manufacture or supply of, a covered product or 
        process or a relevant part of such product or process.
            ``(3) Covered product or process.--The term `covered 
        product or process' means a product, process, system, service, 
        component, material, or apparatus, or relevant part thereof, 
        that--
                    ``(A) is alleged to infringe the patent or patents 
                in dispute; or
                    ``(B) implements a process alleged to infringe the 
                patent or patents in dispute.''.
    (b) Conforming Amendment.--The table of sections for chapter 29 of 
title 35, United States Code, is amended by striking the item relating 
to section 296 and inserting the following:

        ``296. Stay of action against customer.''.
    (c) Effective Date.--The amendments made by this section shall take 
effect on the date of the enactment of this Act and shall apply to any 
action for which a complaint is filed on or after that date.

SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT AND RECOMMENDATIONS TO 
              THE JUDICIAL CONFERENCE.

    (a) Judicial Conference Rules and Procedures on Discovery Burdens 
and Costs.--
            (1) Rules and procedures.--The Judicial Conference of the 
        United States, using existing resources, shall develop rules 
        and procedures to implement the requirements described in 
        paragraph (2) to address the asymmetries in discovery burdens 
        and costs in any civil action arising under any Act of Congress 
        relating to patents. Such rules and procedures shall include 
        how and when payment for document discovery in addition to the 
        discovery of core documentary evidence is to occur, and what 
        information must be presented to demonstrate financial capacity 
        before permitting document discovery in addition to the 
        discovery of core documentary evidence.
            (2) Rules and procedures to be considered.--The rules and 
        procedures required under paragraph (1) shall include each of 
        the following requirements:
                    (A) Discovery of core documentary evidence.--Each 
                party to the action is entitled to receive core 
                documentary evidence and shall be responsible for the 
                costs of producing core documentary evidence within the 
                possession or control of each such party. Each party to 
                the action may seek nondocumentary discovery as 
                otherwise provided in the Federal Rules of Civil 
                Procedure.
                    (B) Electronic communication.--If the parties 
                determine that the discovery of electronic 
                communication is necessary, such discovery shall occur 
                after the parties have exchanged initial disclosures 
                and core documentary evidence and shall be in 
                accordance with the following:
                            (i) Any request for the production of 
                        electronic communication shall be specific and 
                        may not be a general request for the production 
                        of information relating to a product or 
                        business.
                            (ii) Each request shall identify the 
                        custodian of the information requested, the 
                        search terms, and a time frame. The parties 
                        shall cooperate to identify the proper 
                        custodians, the proper search terms, and the 
                        proper time frame.
                            (iii) A party may not submit production 
                        requests to more than 5 custodians, unless the 
                        parties jointly agree to modify the number of 
                        production requests without leave of the court.
                            (iv) The court may consider contested 
                        requests for up to 5 additional custodians per 
                        producing party, upon a showing of a distinct 
                        need based on the size, complexity, and issues 
                        of the case.
                            (v) If a party requests the discovery of 
                        electronic communication for additional 
                        custodians beyond the limits agreed to by the 
                        parties or granted by the court, the requesting 
                        party shall bear all reasonable costs caused by 
                        such additional discovery.
                    (C) Additional document discovery.--
                            (i) In general.--Each party to the action 
                        may seek any additional document discovery 
                        otherwise permitted under the Federal Rules of 
                        Civil Procedure, if such party bears the 
                        reasonable costs, including reasonable 
                        attorney's fees, of the additional document 
                        discovery.
                            (ii) Requirements for additional document 
                        discovery.--Unless the parties mutually agree 
                        otherwise, no party may be permitted additional 
                        document discovery unless such a party posts a 
                        bond, or provides other security, in an amount 
                        sufficient to cover the expected costs of such 
                        additional document discovery, or makes a 
                        showing to the court that such party has the 
                        financial capacity to pay the costs of such 
                        additional document discovery.
                            (iii) Limits on additional document 
                        discovery.--A court, upon motion, may determine 
                        that a request for additional document 
                        discovery is excessive, irrelevant, or 
                        otherwise abusive and may set limits on such 
                        additional document discovery.
                            (iv) Good cause modification.--A court, 
                        upon motion and for good cause shown, may 
                        modify the requirements of subparagraphs (A) 
                        and (B) and any definition under paragraph (3). 
                        Not later than 30 days after the pretrial 
                        conference under Rule 16 of the Federal Rules 
                        of Civil Procedure, the parties shall jointly 
                        submit any proposed modifications of the 
                        requirements of subparagraphs (A) and (B) and 
                        any definition under paragraph (3), unless the 
                        parties do not agree, in which case each party 
                        shall submit any proposed modification of such 
                        party and a summary of the disagreement over 
                        the modification.
                            (v) Computer code.--A court, upon motion 
                        and for good cause shown, may determine that 
                        computer code should be included in the 
                        discovery of core documentary evidence. The 
                        discovery of computer code shall occur after 
                        the parties have exchanged initial disclosures 
                        and other core documentary evidence.
                    (D) Discovery sequence and scope.--The parties 
                shall discuss and address in the written report filed 
                pursuant to Rule 26(f) of the Federal Rules of Civil 
                Procedure the views and proposals of each party on the 
                following:
                            (i) When the discovery of core documentary 
                        evidence should be completed.
                            (ii) Whether additional document discovery 
                        will be sought under subparagraph (C).
                            (iii) Any issues about infringement, 
                        invalidity, or damages that, if resolved before 
                        the additional discovery described in 
                        subparagraph (C) commences, might simplify or 
                        streamline the case, including the 
                        identification of any terms or phrases relating 
                        to any patent claim at issue to be construed by 
                        the court and whether the early construction of 
                        any of those terms or phrases would be helpful.
            (3) Definitions.--In this subsection:
                    (A) Core documentary evidence.--In this subsection, 
                the term ``core documentary evidence''--
                            (i) includes--
                                    (I) documents relating to the 
                                conception of, reduction to practice 
                                of, and application for, the patent or 
                                patents at issue;
                                    (II) documents sufficient to show 
                                the technical operation of the product 
                                or process identified in the complaint 
                                as infringing the patent or patents at 
                                issue;
                                    (III) documents relating to 
                                potentially invalidating prior art;
                                    (IV) documents relating to any 
                                licensing of, or other transfer of 
                                rights to, the patent or patents at 
                                issue before the date on which the 
                                complaint is filed;
                                    (V) documents sufficient to show 
                                profit attributable to the claimed 
                                invention of the patent or patents at 
                                issue;
                                    (VI) documents relating to any 
                                knowledge by the accused infringer of 
                                the patent or patents at issue before 
                                the date on which the complaint is 
                                filed;
                                    (VII) documents relating to any 
                                knowledge by the patentee of 
                                infringement of the patent or patents 
                                at issue before the date on which the 
                                complaint is filed;
                                    (VIII) documents relating to any 
                                licensing term or pricing commitment to 
                                which the patent or patents may be 
                                subject through any agency or standard-
                                setting body; and
                                    (IX) documents sufficient to show 
                                any marking or other notice provided of 
                                the patent or patents at issue; and
                            (ii) does not include computer code, except 
                        as specified in paragraph (2)(C)(v).
                    (B) Electronic communication.--The term 
                ``electronic communication'' means any form of 
                electronic communication, including email, text 
                message, or instant message.
            (4) Implementation by the district courts.--Not later than 
        6 months after the date on which the Judicial Conference has 
        developed the rules and procedures required by this subsection, 
        each United States district court and the United States Court 
        of Federal Claims shall revise the applicable local rules for 
        such court to implement such rules and procedures.
            (5) Authority for judicial conference to review and 
        modify.--The Judicial Conference shall study the efficacy of 
        the rules and procedures required by this subsection during the 
        first 4 years following the implementation of such rules and 
        procedures by the district courts and the United States Court 
        of Federal Claims. The Judicial Conference may modify such 
        rules and procedures following such 4-year period.
    (b) Judicial Conference Patent Case Management.--The Judicial 
Conference of the United States, using existing resources, shall 
develop case management procedures to be implemented by the United 
States district courts and the United States Court of Federal Claims 
for any civil action arising under any Act of Congress relating to 
patents, including initial disclosure and early case management 
conference practices that--
            (1) will identify any potential dispositive issues of the 
        case; and
            (2) focus on early summary judgment motions when resolution 
        of issues may lead to expedited disposition of the case.
    (c) Revision of Form for Patent Infringement.--
            (1) Elimination of form.--The Supreme Court, using existing 
        resources, shall eliminate Form 18 in the Appendix to the 
        Federal Rules of Civil Procedure (relating to Complaint for 
        Patent Infringement), effective on the date of the enactment of 
        this Act.
            (2) Revised form.--The Supreme Court may prescribe a new 
        form or forms setting out model allegations of patent 
        infringement that, at a minimum, notify accused infringers of 
        the asserted claim or claims, the products or services accused 
        of infringement, and the plaintiff's theory for how each 
        accused product or service meets each limitation of each 
        asserted claim. The Judicial Conference should exercise the 
        authority under section 2073 of title 28, United States Code, 
        to make recommendations with respect to such new form or forms.
    (d) Protection of Intellectual-Property Licenses in Bankruptcy.--
            (1) In general.--Section 1520(a) of title 11, United States 
        Code, is amended--
                    (A) in paragraph (3), by striking ``; and'' and 
                inserting a semicolon;
                    (B) in paragraph (4), by striking the period at the 
                end and inserting ``; and''; and
                    (C) by inserting at the end the following new 
                paragraph:
            ``(5) section 365(n) applies to intellectual property of 
        which the debtor is a licensor or which the debtor has 
        transferred.''.
            (2) Effective date.--The amendments made by this subsection 
        shall take effect on the date of the enactment of this Act and 
        shall apply to any action for which a complaint is pending on, 
        or filed on or after, such date of enactment.

SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND INFORMATION ACCESS.

    (a) Small Business Education and Outreach.--
            (1) Resources for small business.--Using existing 
        resources, the Director shall develop educational resources for 
        small businesses to address concerns arising from patent 
        infringement.
            (2) Small business patent ombudsman.--The Patent Ombudsman 
        Program established under section 28 of the Leahy-Smith America 
        Invents Act (Public Law 112-29; 125 Stat. 339; 35 U.S.C. 2 
        note) shall coordinate with the existing small business 
        outreach programs of the Office to provide education and 
        awareness on abusive patent litigation practices.
    (b) Improving Information Transparency for Small Business and the 
United States Patent and Trademark Office Users.--
            (1) Web site.--Using existing resources, the Director shall 
        create a user-friendly section on the official Web site of the 
        Office to notify the public when a patent case is brought in 
        Federal court and with respect to each patent at issue in such 
        case, the Director shall include--
                    (A) information disclosed pursuant to subsections 
                (b) and (d) of section 290 of title 35, United States 
                Code, as added by section 4(a) of this Act; and
                    (B) any other information the Director determines 
                to be relevant.
            (2) Format.--In order to promote accessibility for the 
        public, the information described in paragraph (1) shall be 
        searchable by patent number, patent art area, and entity.

SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, AND EXAMINATION.

    (a) Study on Secondary Market Oversight for Patent Transactions To 
Promote Transparency and Ethical Business Practices.--
            (1) Study required.--The Director, in consultation with the 
        Secretary of Commerce, the Secretary of the Treasury, the 
        Chairman of the Securities and Exchange Commission, the heads 
        of other relevant agencies, and interested parties, shall, 
        using existing resources of the Office, conduct a study--
                    (A) to develop legislative recommendations to 
                ensure greater transparency and accountability in 
                patent transactions occurring on the secondary market;
                    (B) to examine the economic impact that the patent 
                secondary market has on the United States;
                    (C) to examine licensing and other oversight 
                requirements that may be placed on the patent secondary 
                market, including on the participants in such markets, 
                to ensure that the market is a level playing field and 
                that brokers in the market have the requisite expertise 
                and adhere to ethical business practices; and
                    (D) to examine the requirements placed on other 
                markets.
            (2) Submission of study.--Not later than 1 year after the 
        date of the enactment of this Act, the Director shall submit a 
        report to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate on the findings and recommendations of the Director from 
        the study required under paragraph (1).
    (b) Study on Patents Owned by the United States Government.--
            (1) Study required.--The Director, in consultation with the 
        heads of relevant agencies and interested parties, shall, using 
        existing resources of the Office, conduct a study on patents 
        owned by the United States Government that--
                    (A) examines how such patents are licensed and 
                sold, and any litigation relating to the licensing or 
                sale of such patents;
                    (B) provides legislative and administrative 
                recommendations on whether there should be restrictions 
                placed on patents acquired from the United States 
                Government;
                    (C) examines whether or not each relevant agency 
                maintains adequate records on the patents owned by such 
                agency, specifically whether such agency addresses 
                licensing, assignment, and Government grants for 
                technology related to such patents; and
                    (D) provides recommendations to ensure that each 
                relevant agency has an adequate point of contact that 
                is responsible for managing the patent portfolio of the 
                agency.
            (2) Report on study.--Not later than 6 months after the 
        date of the enactment of this Act, the Director shall submit to 
        the Committee on the Judiciary of the House of Representatives 
        and the Committee on the Judiciary of the Senate a report on 
        the findings and recommendations of the Director from the study 
        required under paragraph (1).
    (c) Study on Patent Quality and Access to the Best Information 
During Examination.--
            (1) GAO study.--The Comptroller General of the United 
        States shall conduct a study on patent examination at the 
        Office and the technologies available to improve examination 
        and improve patent quality.
            (2) Contents of the study.--The study required under 
        paragraph (1) shall include the following:
                    (A) An examination of patent quality at the Office.
                    (B) An examination of ways to improve quality, 
                specifically through technology, that shall include 
                examining best practices at foreign patent offices and 
                the use of existing off-the-shelf technologies to 
                improve patent examination.
                    (C) A description of how patents are classified.
                    (D) An examination of procedures in place to 
                prevent double patenting through filing by applicants 
                in multiple art areas.
                    (E) An examination of the types of off-the-shelf 
                prior art databases and search software used by foreign 
                patent offices and governments, particularly in Europe 
                and Asia, and whether those databases and search tools 
                could be used by the Office to improve patent 
                examination.
                    (F) An examination of any other areas the 
                Comptroller General determines to be relevant.
            (3) Report to congress.--Not later than 6 months after the 
        date of the enactment of this Act, the Comptroller General 
        shall submit to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate a report on the findings and recommendations from the 
        study required by this subsection, including recommendations 
        for any changes to laws and regulations that will improve the 
        examination of patent applications and patent quality.

SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO THE LEAHY-SMITH 
              AMERICA INVENTS ACT.

    (a) Repeal of Civil Action To Obtain a Patent.--
            (1) Repeal.--Section 145 of title 35, United States Code, 
        is repealed.
            (2) Conforming amendments.--
                    (A) Federal circuit jurisdiction.--Section 
                1295(a)(4) of title 28, United States Code, is 
                amended--
                            (i) in subparagraph (A), by striking 
                        ``except that an applicant or a party'' and all 
                        that follows through the end of the 
                        subparagraph and inserting the following: 
                        ``except that a party to a derivation 
                        proceeding may also have remedy by civil action 
                        pursuant to section 146 of title 35; an appeal 
                        under this subparagraph of a decision of the 
                        Board with respect to a derivation proceeding 
                        shall waive the right of such party to proceed 
                        under section 146 of title 35;''; and
                            (ii) in subparagraph (C), by striking 
                        ``section 145, 146, or'' and inserting 
                        ``section 146 or''.
                    (B) Federal circuit appeal.--Section 141(a) of 
                title 35, United States Code, is amended--
                            (i) by striking ``may appeal the Board's 
                        decision to'' and inserting ``may appeal the 
                        Board's decision only to''; and
                            (ii) by striking the second sentence.
                    (C) Adjustment of patent term.--Section 
                154(b)(1)(A)(iii) of title 35, United States Code, is 
                amended by striking ``section 141, 145, or 146'' and 
                inserting ``section 141 or 146''.
                    (D) Clerical amendment.--The table of sections for 
                chapter 13 of title 35, United States Code, is amended 
                by repealing the item relating to section 145.
            (3) Effective date.--The amendments made by this subsection 
        shall apply to any proceeding in which a decision is made by 
        the Patent Trial and Appeal Board on or after the date of the 
        enactment of this Act.
    (b) Post-Grant Review Amendment.--Section 325(e)(2) of title 35, 
United States Code is amended by striking ``or reasonably could have 
raised''.
    (c) Use of District-Court Claim Construction in Post-Grant and 
Inter Partes Reviews.--
            (1) Inter partes review.--Section 316(a) of title 35, 
        United States Code, is amended--
                    (A) in paragraph (12), by striking ``; and'' and 
                inserting a semicolon;
                    (B) in paragraph (13), by striking the period at 
                the end and inserting ``; and''; and
                    (C) by adding at the end the following new 
                paragraph:
            ``(14) providing that for all purposes under this chapter--
                    ``(A) each claim of a patent shall be construed as 
                such claim would be in a civil action to invalidate a 
                patent under section 282(b), including construing each 
                claim of the patent in accordance with the ordinary and 
                customary meaning of such claim as understood by one of 
                ordinary skill in the art and the prosecution history 
                pertaining to the patent; and
                    ``(B) if a court has previously construed the claim 
                or a claim term in a civil action in which the patent 
                owner was a party, the Office shall consider such claim 
                construction.''.
            (2) Post-grant review.--Section 326(a) of title 35, United 
        States Code, is amended--
                    (A) in paragraph (11), by striking ``; and'' and 
                inserting a semicolon;
                    (B) in paragraph (12), by striking the period at 
                the end and inserting ``; and''; and
                    (C) by adding at the end the following new 
                paragraph:
            ``(13) providing that for all purposes under this chapter--
                    ``(A) each claim of a patent shall be construed as 
                such claim would be in a civil action to invalidate a 
                patent under section 282(b), including construing each 
                claim of the patent in accordance with the ordinary and 
                customary meaning of such claim as understood by one of 
                ordinary skill in the art and the prosecution history 
                pertaining to the patent; and
                    ``(B) if a court has previously construed the claim 
                or a claim term in a civil action in which the patent 
                owner was a party, the Office shall consider such claim 
                construction.''.
            (3) Technical and conforming amendment.--Section 
        18(a)(1)(A) of the Leahy-Smith America Invents Act (Public Law 
        112-29; 126 Stat. 329) is amended by striking ``Section 
        321(c)'' and inserting ``Sections 321(c) and 326(a)(13)''.
            (4) Effective date.--The amendments made by this subsection 
        shall take effect upon the expiration of the 90-day period 
        beginning on the date of the enactment of this Act, and shall 
        apply to any proceeding under chapter 31 or 32 of title 35, 
        United States Code, for which the petition for review is filed 
        on or after such effective date.
    (d) Codification of the Double-Patenting Doctrine for First-
Inventor-To-File Patents.--
            (1) Amendment.--Chapter 10 of title 35, United States Code, 
        is amended by adding at the end the following new section:
``Sec. 106. Prior art in cases of double patenting
    ``A claimed invention of a patent issued under section 151 
(referred to as the `first patent') that is not prior art to a claimed 
invention of another patent (referred to as the `second patent') shall 
be considered prior art to the claimed invention of the second patent 
for the purpose of determining the nonobviousness of the claimed 
invention of the second patent under section 103 if--
            ``(1) the claimed invention of the first patent was 
        effectively filed under section 102(d) on or before the 
        effective filing date of the claimed invention of the second 
        patent;
            ``(2) either--
                    ``(A) the first patent and second patent name the 
                same inventor; or
                    ``(B) the claimed invention of the first patent 
                would constitute prior art to the claimed invention of 
                the second patent under section 102(a)(2) if an 
                exception under section 102(b)(2) were deemed to be 
                inapplicable and the claimed invention of the first 
                patent was, or were deemed to be, effectively filed 
                under section 102(d) before the effective filing date 
                of the claimed invention of the second patent; and
            ``(3) the patentee of the second patent has not disclaimed 
        the rights to enforce the second patent independently from, and 
        beyond the statutory term of, the first patent.''.
            (2) Regulations.--The Director shall promulgate regulations 
        setting forth the form and content of any disclaimer required 
        for a patent to be issued in compliance with section 106 of 
        title 35, United States Code, as added by paragraph (1). Such 
        regulations shall apply to any disclaimer filed after a patent 
        has issued. A disclaimer, when filed, shall be considered for 
        the purpose of determining the validity of the patent under 
        section 106 of title 35, United States Code.
            (3) Conforming amendment.--The table of sections for 
        chapter 10 of title 35, United States Code, is amended by 
        adding at the end the following new item:

        ``106. Prior art in cases of double patenting.''.
            (4) Exclusive rule.--A patent subject to section 106 of 
        title 35, United States Code, as added by paragraph (1), shall 
        not be held invalid on any nonstatutory, double-patenting 
        ground.
            (5) Effective date.--The amendments made by this subsection 
        shall take effect on the date of the enactment of this Act and 
        shall apply to a patent or patent application only if both the 
        first and second patents described in section 106 of title 35, 
        United States Code, as added by paragraph (1), are patents or 
        patent applications that are described in section 3(n)(1) of 
        the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
    (e) Covered Business Method Patent Reviews.--
            (1) Limitation; repeal.--
                    (A) Limitation to first-to-invent patents.--Section 
                18(a)(2) of the Leahy-Smith America Invents Act is 
                amended by striking ``shall not apply to a patent 
                described in section 6(f)(2)(A) of this Act during the 
                period in which a petition for post-grant review of 
                that patent would satisfy the requirements of section 
                321(c) of title 35, United States Code'' and inserting 
                ``shall not apply to a patent that is described in 
                section 3(n)(1) of this Act (but is not described in 
                section 3(n)(2) of this Act)''.
                    (B) Repeal of sunset.--Section 18(a) of the Leahy-
                Smith America Invents Act (35 U.S.C. 321 note) is 
                amended by striking paragraph (3).
                    (C) Effective date.--The amendments made by 
                subparagraphs (A) and (B) shall take effect on the date 
                of the enactment of this Act.
            (2) Definition; clarification.--
                    (A) Definition.--For purposes of section 18(d) of 
                the Leahy-Smith America Invents Act, the words ``used 
                in the practice, administration, or management of a 
                financial product or service'' shall be construed 
                consistently with the institution decision of the 
                Patent Trial and Appeal Board of the United States 
                Patent and Trademark Office in SAP America, Inc. v. 
                Versata Dev. Group, Inc., CBM2012-00001, Paper 36 
                (January 9, 2013).
                    (B) Scope of prior art.--Section 18(a)(1)(C)(i) of 
                the Leahy-Smith America Invents Act is amended by 
                striking ``section 102(a)'' and inserting ``subsection 
                (a), (d), or (e) of section 102''.
                    (C) Effective date.--Subparagraph (A) and the 
                amendment made by subparagraph (B) shall take effect on 
                the date of the enactment of this Act and shall apply 
                to any proceeding pending on, or filed on or after, 
                such date of enactment.
            (3) Authority to waive fee.--Subject to available 
        resources, the Director may waive payment of a filing fee for a 
        transitional proceeding described under section 18(a) of the 
        Leahy-Smith America Invents Act (35 U.S.C. 321 note).
    (f) Clarification of Limits on Patent Term Adjustment.--
            (1) Amendments.--Section 154(b)(1)(B) of title 35, United 
        States Code, is amended--
                    (A) in the matter preceding clause (i), by striking 
                ``not including--'' and inserting ``the term of the 
                patent shall be extended 1 day for each day after the 
                end of that 3-year period until the patent is issued, 
                not including--'';
                    (B) in clause (i), by striking ``consumed by 
                continued examination of the application requested by 
                the applicant'' and inserting ``consumed after 
                continued examination of the application is requested 
                by the applicant'';
                    (C) in clause (iii), by striking the comma at the 
                end and inserting a period; and
                    (D) by striking the matter following clause (iii).
            (2) Effective date.--The amendments made by this subsection 
        shall apply to any patent application or patent that is pending 
        on, or filed on or after, the date of the enactment of this 
        Act.
    (g) Clarification of Jurisdiction.--
            (1) In general.--The Federal interest in preventing 
        inconsistent final judicial determinations as to the legal 
        force or effect of the claims in a patent presents a 
        substantial Federal issue that is important to the Federal 
        system as a whole.
            (2) Applicability.--Paragraph (1)--
                    (A) shall apply to all cases filed on, after, or 
                pending on, the date of the enactment of this Act; and
                    (B) shall not apply to a case in which a Federal 
                court has issued a ruling on whether the case or a 
                claim arises under any Act of Congress relating to 
                patents or plant variety protection before the date of 
                the enactment of this Act.
    (h) Technical Corrections.--
            (1) Novelty.--
                    (A) Amendment.--Section 102(b)(1)(A) of title 35, 
                United States Code, is amended by striking ``the 
                inventor or joint inventor or by another'' and 
                inserting ``the inventor or a joint inventor or 
                another''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 3(b)(1) of the Leahy-
                Smith America Invents Act (Public Law No. 112-29).
            (2) Inventor's oath or declaration.--
                    (A) Amendment.--Subsection (g)(1) of section 115 of 
                title 35, United States Code, is amended--
                            (i) by striking ``claims the benefit'' and 
                        inserting ``is entitled, as to each invention 
                        claimed in the application, to the benefit''; 
                        and
                            (ii) in subparagraph (A), by striking 
                        ``meeting the requirements of subsection (a) 
                        was executed by the individual and was filed in 
                        connection with the earlier-filed application'' 
                        and inserting the following: ``executed by or 
                        on behalf of the individual was filed in 
                        connection with the earlier-filed application 
                        and meets the requirements of this section as 
                        effective on the date such oath or declaration 
                        was filed''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 4(a)(1) of the Leahy-
                Smith America Invents Act (Public Law No. 112-29).
            (3) Assignee filers.--
                    (A) Benefit of earlier filing date; right of 
                priority.--Section 119(e)(1) of title 35, United States 
                Code, is amended, in the first sentence, by striking 
                ``by an inventor or inventors named'' and inserting 
                ``that names the inventor or a joint inventor''.
                    (B) Benefit of earlier filing date in the united 
                states.--Section 120 of title 35, United States Code, 
                is amended, in the first sentence, by striking ``names 
                an inventor or joint inventor'' and inserting ``names 
                the inventor or a joint inventor''.
                    (C) Effective date.--The amendments made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act and shall apply to any patent 
                application, and any patent issuing from such 
                application, that is filed on or after September 16, 
                2012.
            (4) Derived patents.--
                    (A) Amendment.--Section 291(b) of title 35, United 
                States Code, is amended by striking ``or joint 
                inventor'' and inserting ``or a joint inventor''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 3(h)(1) of the Leahy-
                Smith America Invents Act (Public Law No. 112-29).
            (5) Specification.--Notwithstanding section 4(e) of the 
        Leahy-Smith America Invents Act (Public Law 112-29; 125 Stat. 
        297), the amendments made by subsections (c) and (d) of section 
        4 of such Act shall apply to any proceeding or matter, that is 
        pending on, or filed on or after, the date of the enactment of 
        this Act.
            (6) Patent owner response.--
                    (A) Conduct of inter partes review.--Paragraph (8) 
                of section 316(a) of title 35, United States Code, is 
                amended by striking ``the petition under section 313'' 
                and inserting ``the petition under section 311''.
                    (B) Conduct of post-grant review.--Paragraph (8) of 
                section 326(a) of title 35, United States Code, is 
                amended by striking ``the petition under section 323'' 
                and inserting ``the petition under section 321''.
                    (C) Effective date.--The amendments made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act.
            (7) International applications.--
                    (A) Amendments.--Section 202(b) of the Patent Law 
                Treaties Implementation Act of 2012 (Public Law 112-
                211; 126 Stat. 1536) is amended--
                            (i) by striking paragraph (7); and
                            (ii) by redesignating paragraphs (8) and 
                        (9) as paragraphs (7) and (8).
                    (B) Effective date.--The amendments made by 
                subparagraph (A) shall be effective as if included in 
                title II of the Patent Law Treaties Implementation Act 
                of 2012 (Public Law 112-21).

SEC. 10. EFFECTIVE DATE.

    Except as otherwise provided in this Act, the provisions of this 
Act shall take effect on the date of the enactment of this Act, and 
shall apply to any patent issued, or any action filed, on or after that 
date.
                                 <all>
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