I 

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 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, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Innovation Act’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Patent infringement actions. 


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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. 

1 SEC. 2. DEFINITIONS. 

2 In this Act: 

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

4 the Under Secretary of Commerce for Intellectual 

5 Property and Director of the United States Patent 

6 and Trademark Office. 

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

8 United States Patent and Trademark Office. 

9 SEC. 3. PATENT INFRINGEMENT ACTIONS. 

10 (a) PLEADING REQUIREMENTS.— 

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

12 United States Code, is amended by inserting after 

13 section 281 the following: 

14 ‘‘§ 281A. Pleading requirements for patent infringe15 ment actions 

16 ‘‘(a) PLEADING REQUIREMENTS.—Except as pro17 vided in subsection (b), in a civil action in which a party 

18 asserts a claim for relief arising under any Act of Con19 gress relating to patents, a party alleging infringement 

20 shall include in the initial complaint, counterclaim, or 

21 cross-claim for patent infringement, unless the informaVerDate Mar 15 2010 04:26 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 tion is not reasonably accessible to such party, the fol2 lowing: 

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

4 infringed. 

5 ‘‘(2) An identification of each claim of each pat6 ent identified under paragraph (1) that is allegedly 

7 infringed. 

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

9 (2), an identification of each accused apparatus, 

10 product, feature, device, method, system, process, 

11 function, act, service, or other instrumentality (re12 ferred to in this section as an ‘accused instrumen13 tality’) alleged to infringe the claim. 

14 ‘‘(4) For each accused instrumentality identi15 fied under paragraph (3), an identification with par16 ticularity, if known, of— 

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

18 accused instrumentality; or 

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

20 a description of each accused instrumentality 

21 that, when used, allegedly results in the prac22 tice of the claimed invention. 

23 ‘‘(5) For each accused instrumentality identi24 fied under paragraph (3), an explanation of— 


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

2 identified under paragraph (2) is found within 

3 the accused instrumentality; 

4 ‘‘(B) whether each such element is in5 fringed literally or under the doctrine of equiva6 lents; and 

7 ‘‘(C) with detailed specificity, how the 

8 terms in each claim identified under paragraph 

9 (2) correspond to the functionality of the ac10 cused instrumentality. 

11 ‘‘(6) For each claim that is alleged to have been 

12 infringed indirectly, a description of— 

13 ‘‘(A) the direct infringement; 

14 ‘‘(B) any person alleged to be a direct in15 fringer known to the party alleging infringe16 ment; and 

17 ‘‘(C) the acts of the alleged indirect in18 fringer that contribute to or are inducing the 

19 direct infringement. 

20 ‘‘(7) A description of the right of the party al21 leging infringement to assert each— 

22 ‘‘(A) patent identified under paragraph 

23 (1); and 

24 ‘‘(B) patent claim identified under para25 graph (2). 


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1 ‘‘(8) A description of the principal business of 

2 the party alleging infringement. 

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

4 party alleging infringement has knowledge, that as5 serts or asserted any of the patents identified under 

6 paragraph (1). 

7 ‘‘(10) For each patent identified under para8 graph (1), whether such patent has been specifically 

9 declared as essential, potentially essential, or having 

10 potential to become essential to any standard-setting 

11 body, and whether the United States Government or 

12 a foreign government has imposed specific licensing 

13 requirements with respect to such patent. 

14 ‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—A 

15 party required to disclose the information described under 

16 subsection (a) shall include with such disclosure a descrip17 tion of any information described under subsection (a) 

18 that is not disclosed, why such undisclosed information 

19 was not readily accessible, and the efforts made by such 

20 party to access such undisclosed information. 

21 ‘‘(c) CONFIDENTIAL INFORMATION.—For good cause 

22 shown by a party required to disclose the information de23 scribed under subsection (a), the court may allow certain 

24 information that the court determines to be confidential 

25 to be filed under seal. 


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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 of the nonprevailing party or parties was substan18 tially justified or that special circumstances make an 

19 award unjust. 

20 ‘‘(b) RECOVERY.—If a nonprevailing party is unable 

21 to pay reasonable fees and other expenses awarded by the 

22 court pursuant to subsection (a), the court may make the 

23 reasonable fees and other expenses recoverable against any 

24 interested party joined pursuant to section 299(d). 


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1 ‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac2 tion that asserts a claim for relief arising under any Act 

3 of Congress relating to patents against another party, and 

4 that subsequently unilaterally extends to such other party 

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

6 patent or patents at issue, shall be deemed to be a nonpre7 vailing party (and the other party the prevailing party) 

8 for purposes of this section, unless the party asserting 

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

10 covenant was extended, to voluntarily dismiss the action 

11 or claim without a court order under Rule 41 of the Fed12 eral Rules of Civil Procedure.’’. 

13 (2) CONFORMING AMENDMENT AND AMEND14 MENT.— 

15 (A) CONFORMING AMENDMENT.—The item 

16 relating to section 285 of the table of sections 

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

18 is amended to read as follows: 

‘‘285. Fees and other expenses.’’. 

19 (B) AMENDMENT.—Section 273 of title 

20 35, United States Code, is amended by striking 

21 subsections (f) and (g). 

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 action 

25 for which a complaint is filed on or after that date. 


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1 (c) JOINDER OF INTERESTED PARTIES.—Section 

2 299 of title 35, United States Code, is amended by adding 

3 at the end the following new subsection: 

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

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

6 any Act of Congress relating to patents, the court 

7 shall grant a motion by a party defending against an 

8 allegation of infringement of a patent claim to join 

9 an interested party if such defending party shows 

10 that the party alleging infringement has no substan11 tial interest in the patent or patents at issue other 

12 than asserting such patent claim in litigation. 

13 ‘‘(2) LIMITATION ON JOINDER.—The court may 

14 deny a motion to join an interested party under 

15 paragraph (1) if— 

16 ‘‘(A) the interested party is not subject to 

17 service of process; or 

18 ‘‘(B) joinder under paragraph (1) would 

19 deprive the court of subject matter jurisdiction 

20 or make venue improper. 

21 ‘‘(3) INTERESTED PARTY DEFINED.—In this 

22 subsection, the term ‘interested party’ means a per23 son, other than the party alleging infringement, 

24 that— 


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1 ‘‘(A) is an assignee of the patent or pat2 ents at issue; 

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

4 right, to enforce or sublicense the patent or pat5 ents at issue; or 

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

7 patent or patents at issue, including the right 

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

9 of licensing revenue, except that a person with 

10 a direct financial interest does not include— 

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

12 legal representation in the civil action de13 scribed in paragraph (1) if the sole basis 

14 for the financial interest of the attorney or 

15 law firm in the patent or patents at issue 

16 arises from the attorney or law firm’s re17 ceipt of compensation reasonably related to 

18 the provision of the legal representation; or 

19 ‘‘(ii) a person whose sole financial in20 terest in the patent or patents at issue is 

21 ownership of an equity interest in the 

22 party alleging infringement, unless such 

23 person also has the right or ability to influ24 ence, direct, or control the civil action.’’. 

25 (d) DISCOVERY LIMITS.— 


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

2 United States Code, is amended by adding at the 

3 end the following new section: 

4 ‘‘§ 299A. Discovery in patent infringement action 

5 ‘‘(a) DISCOVERY IN PATENT INFRINGEMENT AC6 TION.—Except as provided in subsection (b), in a civil ac7 tion arising under any Act of Congress relating to patents, 

8 if the court determines that a ruling relating to the con9 struction of terms used in a patent claim asserted in the 

10 complaint is required, discovery shall be limited, until such 

11 ruling is issued, to information necessary for the court to 

12 determine the meaning of the terms used in the patent 

13 claim, including any interpretation of those terms used to 

14 support the claim of infringement. 

15 ‘‘(b) DISCRETION TO EXPAND SCOPE OF DIS16 COVERY.— 

17 ‘‘(1) TIMELY RESOLUTION OF ACTIONS.—If, 

18 under any provision of Federal law (including the 

19 amendments made by the Drug Price Competition 

20 and Patent Term Restoration Act of 1984 (Public 

21 Law 98–417)), resolution within a specified period 

22 of time of a civil action arising under any Act of 

23 Congress relating to patents will necessarily affect 

24 the rights of a party with respect to the patent, the 

25 court may permit discovery, in addition to the disVerDate Mar 15 2010 04:26 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 covery authorized under subsection (a), before the 

2 ruling described in subsection (a) is issued as nec3 essary to ensure timely resolution of the action. 

4 ‘‘(2) RESOLUTION OF MOTIONS.—When nec5 essary to resolve a motion properly raised by a party 

6 before a ruling relating to the construction of terms 

7 described in subsection (a), the court may allow lim8 ited discovery in addition to the discovery authorized 

9 under subsection (a) as necessary to resolve the mo10 tion.’’. 

11 (2) CONFORMING AMENDMENT.—The table of 

12 sections for chapter 29 of title 35, United States 

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

14 new item: 

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

15 (e) EFFECTIVE DATE.—Except as otherwise provided 

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

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

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

19 on or after that date. 

20 SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 

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

22 States Code, is amended— 

23 (1) in the heading, by striking ‘‘suits’’ and in24 serting ‘‘suits; disclosure of interests’’; 


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

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

3 (3) by adding at the end the following new sub4 sections: 

5 ‘‘(b) INITIAL DISCLOSURE.— 

6 ‘‘(1) IN GENERAL.—Except as provided in para7 graph (2), upon the filing of an initial complaint for 

8 patent infringement, the plaintiff shall disclose to 

9 the Patent and Trademark Office, the court, and 

10 each adverse party the identity of each of the fol11 lowing: 

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

13 at issue. 

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

15 or enforce the patent or patents at issue. 

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

17 that the plaintiff knows to have a financial in18 terest in the patent or patents at issue or the 

19 plaintiff. 

20 ‘‘(D) The ultimate parent entity of any as21 signee identified under subparagraph (A) and 

22 any entity identified under subparagraphs (B) 

23 and (C). 

24 ‘‘(2) EXEMPTION.—The requirements of para25 graph (1) shall not apply with respect to a civil acVerDate Mar 15 2010 04:26 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00012 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 tion filed under subsection (a) that includes a cause 

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

3 ‘‘(c) DISCLOSURE COMPLIANCE.— 

4 ‘‘(1) PUBLICLY TRADED.—For purposes of sub5 section (b)(1)(C), if the financial interest is held by 

6 a corporation traded on a public stock exchange, an 

7 identification of the name of the corporation and the 

8 public exchange listing shall satisfy the disclosure re9 quirement. 

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

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

12 held by a publicly traded corporation, the disclosure 

13 shall satisfy the disclosure requirement if the infor14 mation identifies— 

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

16 name of the partnership and the name and cor17 respondence address of each partner or other 

18 entity that holds more than a 5-percent share 

19 of that partnership; 

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

21 name of the corporation, the location of incor22 poration, the address of the principal place of 

23 business, and the name of each officer of the 

24 corporation; and 


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

2 correspondence address of that individual. 

3 ‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT4 ENT AND TRADEMARK OFFICE.— 

5 ‘‘(1) IN GENERAL.—A plaintiff required to sub6 mit information under subsection (b) or a subse7 quent owner of the patent or patents at issue shall, 

8 not later than 90 days after any change in the as9 signee of the patent or patents at issue or an entity 

10 described under subparagraphs (B) and (D) of sub11 section (b)(1), submit to the Patent and Trademark 

12 Office the updated identification of such assignee or 

13 entity. 

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

15 patent for which the requirement of paragraph (1) 

16 has not been met— 

17 ‘‘(A) the plaintiff or subsequent owner 

18 shall not be entitled to recover reasonable fees 

19 and other expenses under section 285 or in20 creased damages under section 284 with respect 

21 to infringing activities taking place during any 

22 period of noncompliance with paragraph (1), 

23 unless the denial of such damages or fees would 

24 be manifestly unjust; and 


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

2 party accused of infringement reasonable fees 

3 and other expenses incurred to discover the up4 dated assignee or entity described under para5 graph (1), unless such sanctions would be un6 just. 

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

8 ‘‘(1) FINANCIAL INTEREST.—The term ‘finan9 cial interest’— 

10 ‘‘(A) means— 

11 ‘‘(i) with regard to a patent or pat12 ents, the right of a person to receive pro13 ceeds related to the assertion of the patent 

14 or patents, including a fixed or variable 

15 portion of such proceeds; and 

16 ‘‘(ii) with regard to the plaintiff, di17 rect or indirect ownership or control by a 

18 person of more than 5 percent of such 

19 plaintiff; and 

20 ‘‘(B) does not mean— 

21 ‘‘(i) ownership of shares or other in22 terests in a mutual or common investment 

23 fund, unless the owner of such interest 

24 participates in the management of such 

25 fund; or 


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1 ‘‘(ii) the proprietary interest of a pol2 icyholder in a mutual insurance company, 

3 of a depositor in a mutual savings associa4 tion, or a similar proprietary interest, un5 less the outcome of the proceeding could 

6 substantially affect the value of such inter7 est. 

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

9 means all stages of a civil action, including pretrial 

10 and trial proceedings and appellate review. 

11 ‘‘(3) ULTIMATE PARENT ENTITY.— 

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

13 subparagraph (B), the term ‘ultimate parent 

14 entity’ has the meaning given such term in sec15 tion 801.1(a)(3) of title 16, Code of Federal 

16 Regulations, or any successor regulation. 

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

18 Director may modify the definition of ‘ultimate 

19 parent entity’ by regulation.’’. 

20 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

23 to read as follows: 

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

24 (c) REGULATIONS.—The Director may promulgate 

25 such regulations as are necessary to establish a registraVerDate Mar 15 2010 22:16 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00016 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 tion fee in an amount sufficient to recover the estimated 

2 costs of administering subsections (b) through (e) of sec3 tion 290 of title 35, United States Code, as added by sub4 section (a), to facilitate the collection and maintenance of 

5 the information required by such subsections, and to en6 sure the timely disclosure of such information to the pub7 lic. 

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

9 this section shall take effect upon the expiration of the 

10 6-month period beginning on the date of the enactment 

11 of this Act and shall apply to any action for which a com12 plaint is filed on or after such effective date. 

13 SEC. 5. CUSTOMER-SUIT EXCEPTION. 

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

15 States Code, is amended to read as follows: 

16 ‘‘§ 296. Stay of action against customer 

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

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

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

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

21 action against a covered customer related to infringement 

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

23 following requirements are met: 

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

25 customer consent in writing to the stay. 


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

2 the action or to a separate action involving the same 

3 patent or patents related to the same covered prod4 uct or process. 

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

6 by any judgment entered against the covered manu7 facturer to the same extent that the covered manu8 facturer may be bound with respect to issues that 

9 the covered manufacturer and the covered customer 

10 have in common. 

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

12 in the action and not later than 120 days after serv13 ice of the first pleading in the action that specifically 

14 identifies— 

15 ‘‘(A) the covered product or process as a 

16 basis for the alleged infringement of the patent 

17 by the covered customer; and 

18 ‘‘(B) how the covered product or process is 

19 alleged to infringe the patent. 

20 ‘‘(b) APPLICABILITY OF STAY.—A stay issued pursu21 ant to subsection (a) shall apply only to the patents, prod22 ucts, systems, or components accused of infringement in 

23 the action. 

24 ‘‘(c) LIFT OF STAY.— 


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1 ‘‘(1) IN GENERAL.—A stay entered pursuant to 

2 this section may be lifted upon grant of a motion 

3 based on a showing that— 

4 ‘‘(A) the action involving the covered man5 ufacturer will not resolve a major issue in suit 

6 against the covered customer; or 

7 ‘‘(B) the stay unreasonably prejudices and 

8 would be manifestly unjust to the party seeking 

9 to lift the stay. 

10 ‘‘(2) SEPARATE MANUFACTURER ACTION IN11 VOLVED.—In the case of a stay entered based on the 

12 participation of the covered manufacturer in a sepa13 rate action involving the same patent or patents re14 lated to the same covered product or process, a mo15 tion under this subsection may only be made if the 

16 court in such separate action determines the show17 ing required under paragraph (1) has been met. 

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

19 action that includes a cause of action described under sec20 tion 271(e). 

21 ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec22 tion shall be construed to limit the ability of a court to 

23 grant any stay, or expand any stay granted pursuant to 

24 this section, if otherwise permitted by law. 

25 ‘‘(f) DEFINITIONS.—In this section: 


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

2 customer’ means a party accused of infringing a pat3 ent or patents in dispute based on a covered product 

4 or process. 

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

6 ‘covered manufacturer’ means a person that manu7 factures or supplies, or causes the manufacture or 

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

9 part of such product or process. 

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

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

12 process, system, service, component, material, or ap13 paratus, or relevant part thereof, that— 

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

15 patents in dispute; or 

16 ‘‘(B) implements a process alleged to in17 fringe the patent or patents in dispute.’’. 

18 (b) CONFORMING AMENDMENT.—The table of sec19 tions for chapter 29 of title 35, United States Code, is 

20 amended by striking the item relating to section 296 and 

21 inserting the following: 

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

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

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

24 of this Act and shall apply to any action for which a com25 plaint is filed on or after that date. 


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1 SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT AND 

2 RECOMMENDATIONS TO THE JUDICIAL CON3 FERENCE. 

4 (a) JUDICIAL CONFERENCE RULES AND PROCE5 DURES ON DISCOVERY BURDENS AND COSTS.— 

6 (1) RULES AND PROCEDURES.—The Judicial 

7 Conference of the United States, using existing re8 sources, shall develop rules and procedures to imple9 ment the requirements described in paragraph (2) to 

10 address the asymmetries in discovery burdens and 

11 costs in any civil action arising under any Act of 

12 Congress relating to patents. Such rules and proce13 dures shall include how and when payment for docu14 ment discovery in addition to the discovery of core 

15 documentary evidence is to occur, and what informa16 tion must be presented to demonstrate financial ca17 pacity before permitting document discovery in addi18 tion to the discovery of core documentary evidence. 

19 (2) RULES AND PROCEDURES TO BE CONSID20 ERED.—The rules and procedures required under 

21 paragraph (1) shall include each of the following re22 quirements: 

23 (A) DISCOVERY OF CORE DOCUMENTARY

24 EVIDENCE.—Each party to the action is enti25 tled to receive core documentary evidence and 

26 shall be responsible for the costs of producing 


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1 core documentary evidence within the posses2 sion or control of each such party. Each party 

3 to the action may seek nondocumentary dis4 covery as otherwise provided in the Federal 

5 Rules of Civil Procedure. 

6 (B) ELECTRONIC COMMUNICATION.—If the 

7 parties determine that the discovery of elec8 tronic communication is necessary, such dis9 covery shall occur after the parties have ex10 changed initial disclosures and core documen11 tary evidence and shall be in accordance with 

12 the following: 

13 (i) Any request for the production of 

14 electronic communication shall be specific 

15 and may not be a general request for the 

16 production of information relating to a 

17 product or business. 

18 (ii) Each request shall identify the 

19 custodian of the information requested, the 

20 search terms, and a time frame. The par21 ties shall cooperate to identify the proper 

22 custodians, the proper search terms, and 

23 the proper time frame. 

24 (iii) A party may not submit produc25 tion requests to more than 5 custodians, 


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1 unless the parties jointly agree to modify 

2 the number of production requests without 

3 leave of the court. 

4 (iv) The court may consider contested 

5 requests for up to 5 additional custodians 

6 per producing party, upon a showing of a 

7 distinct need based on the size, complexity, 

8 and issues of the case. 

9 (v) If a party requests the discovery 

10 of electronic communication for additional 

11 custodians beyond the limits agreed to by 

12 the parties or granted by the court, the re13 questing party shall bear all reasonable 

14 costs caused by such additional discovery. 

15 (C) ADDITIONAL DOCUMENT DISCOVERY.— 

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 The parties shall discuss and address in the 

16 written report filed pursuant to Rule 26(f) of 

17 the Federal Rules of Civil Procedure the views 

18 and proposals of each party on the following: 

19 (i) When the discovery of core docu20 mentary evidence should be completed. 

21 (ii) Whether additional document dis22 covery will be sought under subparagraph 

23 (C). 

24 (iii) Any issues about infringement, 

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1 fore the additional discovery described in 

2 subparagraph (C) commences, might sim3 plify or streamline the case, including the 

4 identification of any terms or phrases re5 lating to any patent claim at issue to be 

6 construed by the court and whether the 

7 early construction of any of those terms or 

8 phrases would be helpful. 

9 (3) DEFINITIONS.—In this subsection: 

10 (A) CORE DOCUMENTARY EVIDENCE.—In 

11 this subsection, the term ‘‘core documentary 

12 evidence’’— 

13 (i) includes— 

14 (I) documents relating to the 

15 conception of, reduction to practice of, 

16 and application for, the patent or pat17 ents at issue; 

18 (II) documents sufficient to show 

19 the technical operation of the product 

20 or process identified in the complaint 

21 as infringing the patent or patents at 

22 issue; 

23 (III) documents relating to po24 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.—The Judicial Conference 

21 shall study the efficacy of the rules and procedures 

22 required by this subsection during the first 4 years 

23 following the implementation of such rules and pro24 cedures by the district courts and the United States 

25 Court of Federal Claims. The Judicial Conference 


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1 may modify such rules and procedures following 

2 such 4-year period. 

3 (b) JUDICIAL CONFERENCE PATENT CASE MANAGE4 MENT.—The Judicial Conference of the United States, 

5 using existing resources, shall develop case management 

6 procedures to be implemented by the United States dis7 trict courts and the United States Court of Federal Claims 

8 for any civil action arising under any Act of Congress re9 lating to patents, including initial disclosure and early case 

10 management conference practices that— 

11 (1) will identify any potential dispositive issues 

12 of the case; and 

13 (2) focus on early summary judgment motions 

14 when resolution of issues may lead to expedited dis15 position of the case. 

16 (c) REVISION OF FORM FOR PATENT INFRINGE17 MENT.— 

18 (1) ELIMINATION OF FORM.—The Supreme 

19 Court, using existing resources, shall eliminate Form 

20 18 in the Appendix to the Federal Rules of Civil 

21 Procedure (relating to Complaint for Patent In22 fringement), effective on the date of the enactment 

23 of this Act. 

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

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1 legations of patent infringement that, at a minimum, 

2 notify accused infringers of the asserted claim or 

3 claims, the products or services accused of infringe4 ment, and the plaintiff’s theory for how each ac5 cused product or service meets each limitation of 

6 each asserted claim. The Judicial Conference should 

7 exercise the authority under section 2073 of title 28, 

8 United States Code, to make recommendations with 

9 respect to such new form or forms. 

10 (d) PROTECTION OF INTELLECTUAL-PROPERTY LI11 CENSES IN BANKRUPTCY.— 

12 (1) IN GENERAL.—Section 1520(a) of title 11, 

13 United States Code, is amended— 

14 (A) in paragraph (3), by striking ‘‘; and’’ 

15 and inserting a semicolon; 

16 (B) in paragraph (4), by striking the pe17 riod at the end and inserting ‘‘; and’’; and 

18 (C) by inserting at the end the following 

19 new paragraph: 

20 ‘‘(5) section 365(n) applies to intellectual prop21 erty of which the debtor is a licensor or which the 

22 debtor has transferred.’’. 

23 (2) EFFECTIVE DATE.—The amendments made 

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

25 enactment of this Act and shall apply to any action 


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1 for which a complaint is pending on, or filed on or 

2 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 OMBUDSMAN.— 

12 The Patent Ombudsman Program established under 

13 section 28 of the Leahy-Smith America Invents Act 

14 (Public Law 112–29; 125 Stat. 339; 35 U.S.C. 2 

15 note) shall coordinate with the existing small busi16 ness outreach programs of the Office to provide edu17 cation and awareness on abusive patent litigation 

18 practices. 

19 (b) IMPROVING INFORMATION TRANSPARENCY FOR

20 SMALL BUSINESS AND THE UNITED STATES PATENT AND

21 TRADEMARK OFFICE USERS.— 

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

23 Director shall create a user-friendly section on the 

24 official Web site of the Office to notify the public 

25 when a patent case is brought in Federal court and 


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

2 Director shall include— 

3 (A) information disclosed pursuant to sub4 sections (b) and (d) of section 290 of title 35, 

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

6 this Act; and 

7 (B) any other information the Director de8 termines to be relevant. 

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

10 for the public, the information described in para11 graph (1) shall be searchable by patent number, pat12 ent art area, and entity. 

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

14 AND EXAMINATION. 

15 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

16 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY

17 AND ETHICAL BUSINESS PRACTICES.— 

18 (1) STUDY REQUIRED.—The Director, in con19 sultation with the Secretary of Commerce, the Sec20 retary of the Treasury, the Chairman of the Securi21 ties and Exchange Commission, the heads of other 

22 relevant agencies, and interested parties, shall, using 

23 existing resources of the Office, conduct a study— 

24 (A) to develop legislative recommendations 

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1 ability in patent transactions occurring on the 

2 secondary market; 

3 (B) to examine the economic impact that 

4 the patent secondary market has on the United 

5 States; 

6 (C) to examine licensing and other over7 sight requirements that may be placed on the 

8 patent secondary market, including on the par9 ticipants in such markets, to ensure that the 

10 market is a level playing field and that brokers 

11 in the market have the requisite expertise and 

12 adhere to ethical business practices; and 

13 (D) to examine the requirements placed on 

14 other markets. 

15 (2) SUBMISSION OF STUDY.—Not later than 1 

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

17 Director shall submit a report to the Committee on 

18 the Judiciary of the House of Representatives and 

19 the Committee on the Judiciary of the Senate on the 

20 findings and recommendations of the Director from 

21 the study required under paragraph (1). 

22 (b) STUDY ON PATENTS OWNED BY THE UNITED

23 STATES GOVERNMENT.— 

24 (1) STUDY REQUIRED.—The Director, in con25 sultation with the heads of relevant agencies and inVerDate Mar 15 2010 04:26 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00033 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 terested parties, shall, using existing resources of the 

2 Office, conduct a study on patents owned by the 

3 United States Government that— 

4 (A) examines how such patents are li5 censed and sold, and any litigation relating to 

6 the licensing or sale of such patents; 

7 (B) provides legislative and administrative 

8 recommendations on whether there should be 

9 restrictions placed on patents acquired from the 

10 United States Government; 

11 (C) examines whether or not each relevant 

12 agency maintains adequate records on the pat13 ents owned by such agency, specifically whether 

14 such agency addresses licensing, assignment, 

15 and Government grants for technology related 

16 to such patents; and 

17 (D) provides recommendations to ensure 

18 that each relevant agency has an adequate 

19 point of contact that is responsible for man20 aging the patent portfolio of the agency. 

21 (2) REPORT ON STUDY.—Not later than 6 

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

23 the Director shall submit to the Committee on the 

24 Judiciary of the House of Representatives and the 

25 Committee on the Judiciary of the Senate a report 


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1 on the findings and recommendations of the Director 

2 from the study required under paragraph (1). 

3 (c) STUDY ON PATENT QUALITY AND ACCESS TO

4 THE BEST INFORMATION DURING EXAMINATION.— 

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

6 the United States shall conduct a study on patent 

7 examination at the Office and the technologies avail8 able to improve examination and improve patent 

9 quality. 

10 (2) CONTENTS OF THE STUDY.—The study re11 quired under paragraph (1) shall include the fol12 lowing: 

13 (A) An examination of patent quality at 

14 the Office. 

15 (B) An examination of ways to improve 

16 quality, specifically through technology, that 

17 shall include examining best practices at foreign 

18 patent offices and the use of existing off-the19 shelf technologies to improve patent examina20 tion. 

21 (C) A description of how patents are clas22 sified. 

23 (D) An examination of procedures in place 

24 to prevent double patenting through filing by 

25 applicants in multiple art areas. 


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1 (E) An examination of the types of off-the2 shelf prior art databases and search software 

3 used by foreign patent offices and governments, 

4 particularly in Europe and Asia, and whether 

5 those databases and search tools could be used 

6 by the Office to improve patent examination. 

7 (F) An examination of any other areas the 

8 Comptroller General determines to be relevant. 

9 (3) REPORT TO CONGRESS.—Not later than 6 

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

11 the Comptroller General shall submit to the Com12 mittee on the Judiciary of the House of Representa13 tives and the Committee on the Judiciary of the 

14 Senate a report on the findings and recommenda15 tions from the study required by this subsection, in16 cluding recommendations for any changes to laws 

17 and regulations that will improve the examination of 

18 patent applications and patent quality. 

19 SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 

20 THE LEAHY-SMITH AMERICA INVENTS ACT. 

21 (a) REPEAL OF CIVIL ACTION TO OBTAIN A PAT22 ENT.— 

23 (1) REPEAL.—Section 145 of title 35, United 

24 States Code, is repealed. 

25 (2) CONFORMING AMENDMENTS.— 


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1 (A) FEDERAL CIRCUIT JURISDICTION.— 

2 Section 1295(a)(4) of title 28, United States 

3 Code, is amended— 

4 (i) in subparagraph (A), by striking 

5 ‘‘except that an applicant or a party’’ and 

6 all that follows through the end of the sub7 paragraph and inserting the following: ‘‘ex8 cept that a party to a derivation pro9 ceeding may also have remedy by civil ac10 tion pursuant to section 146 of title 35; an 

11 appeal under this subparagraph of a deci12 sion of the Board with respect to a deriva13 tion proceeding shall waive the right of 

14 such party to proceed under section 146 of 

15 title 35;’’; and 

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

17 ‘‘section 145, 146, or’’ and inserting ‘‘sec18 tion 146 or’’. 

19 (B) FEDERAL CIRCUIT APPEAL.—Section 

20 141(a) of title 35, United States Code, is 

21 amended— 

22 (i) by striking ‘‘may appeal the 

23 Board’s decision to’’ and inserting ‘‘may 

24 appeal the Board’s decision only to’’; and 

25 (ii) by striking the second sentence. 


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1 (C) ADJUSTMENT OF PATENT TERM.—Sec2 tion 154(b)(1)(A)(iii) of title 35, United States 

3 Code, is amended by striking ‘‘section 141, 145, 

4 or 146’’ and inserting ‘‘section 141 or 146’’. 

5 (D) CLERICAL AMENDMENT.—The table of 

6 sections for chapter 13 of title 35, United 

7 States Code, is amended by repealing the item 

8 relating to section 145. 

9 (3) EFFECTIVE DATE.—The amendments made 

10 by this subsection shall apply to any proceeding in 

11 which a decision is made by the Patent Trial and 

12 Appeal Board on or after the date of the enactment 

13 of this Act. 

14 (b) POST-GRANT REVIEW AMENDMENT.—Section 

15 325(e)(2) of title 35, United States Code is amended by 

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

17 (c) USE OF DISTRICT-COURT CLAIM CONSTRUCTION

18 IN POST-GRANT AND INTER PARTES REVIEWS.— 

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

20 title 35, United States Code, is amended— 

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

22 and inserting a semicolon; 

23 (B) in paragraph (13), by striking the pe24 riod at the end and inserting ‘‘; and’’; and 


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

2 paragraph: 

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

4 chapter— 

5 ‘‘(A) each claim of a patent shall be con6 strued as such claim would be in a civil action 

7 to invalidate a patent under section 282(b), in8 cluding construing each claim of the patent in 

9 accordance with the ordinary and customary 

10 meaning of such claim as understood by one of 

11 ordinary skill in the art and the prosecution 

12 history pertaining to the patent; and 

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

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

15 which the patent owner was a party, the Office 

16 shall consider such claim construction.’’. 

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

18 title 35, United States Code, is amended— 

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

20 and inserting a semicolon; 

21 (B) in paragraph (12), by striking the pe22 riod at the end and inserting ‘‘; and’’; and 

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

24 paragraph: 


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

2 chapter— 

3 ‘‘(A) each claim of a patent shall be con4 strued as such claim would be in a civil action 

5 to invalidate a patent under section 282(b), in6 cluding construing each claim of the patent in 

7 accordance with the ordinary and customary 

8 meaning of such claim as understood by one of 

9 ordinary skill in the art and the prosecution 

10 history pertaining to the patent; and 

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

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

13 which the patent owner was a party, the Office 

14 shall consider such claim construction.’’. 

15 (3) TECHNICAL AND CONFORMING AMEND16 MENT.—Section 18(a)(1)(A) of the Leahy-Smith 

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

18 329) is amended by striking ‘‘Section 321(c)’’ and 

19 inserting ‘‘Sections 321(c) and 326(a)(13)’’. 

20 (4) EFFECTIVE DATE.—The amendments made 

21 by this subsection shall take effect upon the expira22 tion of the 90-day period beginning on the date of 

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

24 proceeding under chapter 31 or 32 of title 35, 


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1 United States Code, for which the petition for review 

2 is filed on or after such effective date. 

3 (d) CODIFICATION OF THE DOUBLE-PATENTING

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

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

6 United States Code, is amended by adding at the 

7 end the following new section: 

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

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

10 151 (referred to as the ‘first patent’) that is not prior art 

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

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

13 claimed invention of the second patent for the purpose of 

14 determining the nonobviousness of the claimed invention 

15 of the second patent under section 103 if— 

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

17 was effectively filed under section 102(d) on or be18 fore the effective filing date of the claimed invention 

19 of the second patent; 

20 ‘‘(2) either— 

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

22 name the same inventor; or 

23 ‘‘(B) the claimed invention of the first pat24 ent would constitute prior art to the claimed in25 vention of the second patent under section 


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1 102(a)(2) if an exception under section 

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

3 the claimed invention of the first patent was, or 

4 were deemed to be, effectively filed under sec5 tion 102(d) before the effective filing date of 

6 the claimed invention of the second patent; and 

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

8 disclaimed the rights to enforce the second patent 

9 independently from, and beyond the statutory term 

10 of, the first patent.’’. 

11 (2) REGULATIONS.—The Director shall promul12 gate regulations setting forth the form and content 

13 of any disclaimer required for a patent to be issued 

14 in compliance with section 106 of title 35, United 

15 States Code, as added by paragraph (1). Such regu16 lations shall apply to any disclaimer filed after a 

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

18 considered for the purpose of determining the valid19 ity of the patent under section 106 of title 35, 

20 United States Code. 

21 (3) CONFORMING AMENDMENT.—The table of 

22 sections for chapter 10 of title 35, United States 

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

24 new item: 

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


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1 (4) EXCLUSIVE RULE.—A patent subject to sec2 tion 106 of title 35, United States Code, as added 

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

4 nonstatutory, double-patenting ground. 

5 (5) EFFECTIVE DATE.—The amendments made 

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

7 enactment of this Act and shall apply to a patent or 

8 patent application only if both the first and second 

9 patents described in section 106 of title 35, United 

10 States Code, as added by paragraph (1), are patents 

11 or patent applications that are described in section 

12 3(n)(1) of the Leahy-Smith America Invents Act (35 

13 U.S.C. 100 note). 

14 (e) COVERED BUSINESS METHOD PATENT RE15 VIEWS.— 

16 (1) LIMITATION; REPEAL.— 

17 (A) LIMITATION TO FIRST-TO-INVENT PAT18 ENTS.—Section 18(a)(2) of the Leahy-Smith 

19 America Invents Act is amended by striking 

20 ‘‘shall not apply to a patent described in section 

21 6(f)(2)(A) of this Act during the period in 

22 which a petition for post-grant review of that 

23 patent would satisfy the requirements of section 

24 321(c) of title 35, United States Code’’ and in25 serting ‘‘shall not apply to a patent that is deVerDate Mar 15 2010 04:26 Oct 24, 2013 Jkt 039200 PO 00000 Frm 00043 Fmt 6652 Sfmt 6201 E:\BILLS\H3309.IH H3309

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1 scribed in section 3(n)(1) of this Act (but is not 

2 described in section 3(n)(2) of this Act)’’. 

3 (B) REPEAL OF SUNSET.—Section 18(a) 

4 of the Leahy-Smith America Invents Act (35 

5 U.S.C. 321 note) is amended by striking para6 graph (3). 

7 (C) EFFECTIVE DATE.—The amendments 

8 made by subparagraphs (A) and (B) shall take 

9 effect on the date of the enactment of this Act. 

10 (2) DEFINITION; CLARIFICATION.— 

11 (A) DEFINITION.—For purposes of section 

12 18(d) of the Leahy-Smith America Invents Act, 

13 the words ‘‘used in the practice, administration, 

14 or management of a financial product or serv15 ice’’ shall be construed consistently with the in16 stitution decision of the Patent Trial and Ap17 peal Board of the United States Patent and 

18 Trademark Office in SAP America, Inc. v. 

19 Versata Dev. Group, Inc., CBM2012–00001, 

20 Paper 36 (January 9, 2013). 

21 (B) SCOPE OF PRIOR ART.—Section 

22 18(a)(1)(C)(i) of the Leahy-Smith America In23 vents Act is amended by striking ‘‘section 

24 102(a)’’ and inserting ‘‘subsection (a), (d), or 

25 (e) of section 102’’. 


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1 (C) EFFECTIVE DATE.—Subparagraph (A) 

2 and the amendment made by subparagraph (B) 

3 shall take effect on the date of the enactment 

4 of this Act and shall apply to any proceeding 

5 pending on, or filed on or after, such date of 

6 enactment. 

7 (3) AUTHORITY TO WAIVE FEE.—Subject to 

8 available resources, the Director may waive payment 

9 of a filing fee for a transitional proceeding described 

10 under section 18(a) of the Leahy-Smith America In11 vents Act (35 U.S.C. 321 note). 

12 (f) CLARIFICATION OF LIMITS ON PATENT TERM AD13 JUSTMENT.— 

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

15 title 35, United States Code, is amended— 

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

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

18 term of the patent shall be extended 1 day for 

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

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

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

22 continued examination of the application re23 quested by the applicant’’ and inserting ‘‘con24 sumed after continued examination of the appli25 cation is requested by the applicant’’; 


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

2 at the end and inserting a period; and 

3 (D) by striking the matter following clause 

4 (iii). 

5 (2) EFFECTIVE DATE.—The amendments made 

6 by this subsection shall apply to any patent applica7 tion or patent that is pending on, or filed on or 

8 after, the date of the enactment of this Act. 

9 (g) CLARIFICATION OF JURISDICTION.— 

10 (1) IN GENERAL.—The Federal interest in pre11 venting inconsistent final judicial determinations as 

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

13 presents a substantial Federal issue that is impor14 tant to the Federal system as a whole. 

15 (2) APPLICABILITY.—Paragraph (1)— 

16 (A) shall apply to all cases filed on, after, 

17 or pending on, the date of the enactment of this 

18 Act; and 

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

20 Federal court has issued a ruling on whether 

21 the case or a claim arises under any Act of 

22 Congress relating to patents or plant variety 

23 protection before the date of the enactment of 

24 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 No. 112–29). 

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

13 (A) AMENDMENT.—Subsection (g)(1) of 

14 section 115 of title 35, United States Code, is 

15 amended— 

16 (i) by striking ‘‘claims the benefit’’ 

17 and inserting ‘‘is entitled, as to each inven18 tion claimed in the application, to the ben19 efit’’; and 

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

21 ‘‘meeting the requirements of subsection 

22 (a) was executed by the individual and was 

23 filed in connection with the earlier-filed ap24 plication’’ and inserting the following: ‘‘ex25 ecuted by or on behalf of the individual 


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1 was filed in connection with the earlier2 filed application and meets the require3 ments of this section as effective on the 

4 date such oath or declaration was filed’’. 

5 (B) EFFECTIVE DATE.—The amendment 

6 made by subparagraph (A) shall be effective as 

7 if included in the amendment made by section 

8 4(a)(1) of the Leahy-Smith America Invents 

9 Act (Public Law No. 112–29). 

10 (3) ASSIGNEE FILERS.— 

11 (A) BENEFIT OF EARLIER FILING DATE; 

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

13 35, United States Code, is amended, in the first 

14 sentence, by striking ‘‘by an inventor or inven15 tors named’’ and inserting ‘‘that names the in16 ventor or a joint inventor’’. 

17 (B) BENEFIT OF EARLIER FILING DATE IN

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

19 United States Code, is amended, in the first 

20 sentence, by striking ‘‘names an inventor or 

21 joint inventor’’ and inserting ‘‘names the inven22 tor or a joint inventor’’. 

23 (C) EFFECTIVE DATE.—The amendments 

24 made by this paragraph shall take effect on the 

25 date of the enactment of this Act and shall 


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1 apply to any patent application, and any patent 

2 issuing from such application, that is filed on or 

3 after September 16, 2012. 

4 (4) DERIVED PATENTS.— 

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

6 35, United States Code, is amended by striking 

7 ‘‘or joint inventor’’ and inserting ‘‘or a joint in8 ventor’’. 

9 (B) EFFECTIVE DATE.—The amendment 

10 made by subparagraph (A) shall be effective as 

11 if included in the amendment made by section 

12 3(h)(1) of the Leahy-Smith America Invents 

13 Act (Public Law No. 112–29). 

14 (5) SPECIFICATION.—Notwithstanding section 

15 4(e) of the Leahy-Smith America Invents Act (Pub16 lic Law 112–29; 125 Stat. 297), the amendments 

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

18 Act shall apply to any proceeding or matter, that is 

19 pending on, or filed on or after, the date of the en20 actment of this Act. 

21 (6) PATENT OWNER RESPONSE.— 

22 (A) CONDUCT OF INTER PARTES RE23 VIEW.—Paragraph (8) of section 316(a) of title 

24 35, United States Code, is amended by striking 


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

2 ‘‘the petition under section 311’’. 

3 (B) CONDUCT OF POST-GRANT REVIEW.— 

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

5 United States Code, is amended by striking 

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

7 ‘‘the petition under section 321’’. 

8 (C) EFFECTIVE DATE.—The amendments 

9 made by this paragraph shall take effect on the 

10 date of the enactment of this Act. 

11 (7) INTERNATIONAL APPLICATIONS.— 

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

13 Patent Law Treaties Implementation Act of 

14 2012 (Public Law 112–211; 126 Stat. 1536) is 

15 amended— 

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

17 (ii) by redesignating paragraphs (8) 

18 and (9) as paragraphs (7) and (8). 

19 (B) EFFECTIVE DATE.—The amendments 

20 made by subparagraph (A) shall be effective as 

21 if included in title II of the Patent Law Trea22 ties Implementation Act of 2012 (Public Law 

23 112–21). 


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1 SEC. 10. EFFECTIVE DATE. 

2 Except as otherwise provided in this Act, the provi3 sions of this Act shall take effect on the date of the enact4 ment of this Act, and shall apply to any patent issued, 

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

Æ 


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