II 

Calendar No. 203 

114TH CONGRESS 

1ST SESSION S. 1137 

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 SENATE OF THE UNITED STATES 

APRIL 29, 2015 

Mr. GRASSLEY (for himself, Mr. LEAHY, Mr. CORNYN, Mr. SCHUMER, Mr. 

LEE, Mr. HATCH, and Ms. KLOBUCHAR) introduced the following bill; 

which was read twice and referred to the Committee on the Judiciary 

SEPTEMBER 8, 2015 

Reported by Mr. GRASSLEY, with an amendment 

[Strike out all after the enacting clause and insert the part printed in italic] 

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 ‘‘Protecting American Talent and Entrepreneurship Act 

6 of 2015’’ or the ‘‘PATENT Act’’. 


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

2 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Pleading requirements for patent infringement actions. 

Sec. 4. Customer-suit exception. 

Sec. 5. Discovery limits. 

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

Conference. 

Sec. 7. Fees and other expenses. 

Sec. 8. Requirement of clarity and specificity in demand letters. 

Sec. 9. Abusive demand letters. 

Sec. 10. Transparency of patent transfer. 

Sec. 11. Protection of intellectual property licenses in bankruptcy. 

Sec. 12. Small business education, outreach, and information access. 

Sec. 13. Studies on patent transactions, quality, and examination. 

Sec. 14. Technical corrections to the Leahy-Smith America Invents Act and 

other improvements. 

Sec. 15. Effective date. 

Sec. 16. Severability. 

3 SEC. 2. DEFINITIONS. 

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

5 the Under Secretary of Commerce for Intellectual 

6 Property and Director of the United States Patent 

7 and Trademark Office. 

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

9 United States Patent and Trademark Office. 

10 SEC. 3. PLEADING REQUIREMENTS FOR PATENT INFRINGE11 MENT ACTIONS. 

12 (a) ELIMINATION OF FORM 18.—Not later than 1 

13 month after the date of enactment of this Act, the Su14 preme Court, using existing resources, shall eliminate 

15 Form 18 in the Appendix to the Federal Rules of Civil 

16 Procedure (Complaint for Patent Infringement). 

17 (b) PLEADING REQUIREMENTS.— 


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

2 United States Code, is amended by inserting after 

3 section 281 the following: 

4 ‘‘§ 281A. Pleading requirements for patent infringe5 ment actions 

6 ‘‘(a) PLEADING REQUIREMENTS.—In a civil action in 

7 which a party asserts a claim for relief arising under any 

8 Act of Congress relating to patents, a party alleging in9 fringement shall include in a complaint, counterclaim, or 

10 cross-claim for patent infringement, except as provided in 

11 subsection (c), the following: 

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

13 infringed. 

14 ‘‘(2) An identification of each claim of each pat15 ent identified under paragraph (1) that is allegedly 

16 infringed. 

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

18 (2), an identification of each accused process, ma19 chine, manufacture, or composition of matter (re20 ferred to in this section as an ‘accused instrumen21 tality’) alleged to infringe the claim. 

22 ‘‘(4) For each accused instrumentality identi23 fied under paragraph (3), an identification with par24 ticularity, if known, of— 


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1 ‘‘(A) the name or model number (or a rep2 resentative model number) of each accused in3 strumentality; or 

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

5 a description of each accused instrumentality. 

6 ‘‘(5) For each claim identified under paragraph 

7 (2), a description of the elements thereof that are al8 leged to be infringed by the accused instrumentality 

9 and how the accused instrumentality is alleged to in10 fringe those elements. 

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

12 description of the acts of the alleged infringer that 

13 are alleged to contribute to or induce the direct in14 fringement. 

15 ‘‘(b) DISMISSAL FOR FAILURE TO MEET PLEADING

16 REQUIREMENTS.—The court shall, on the motion of any 

17 party, dismiss any count or counts of the complaint, coun18 terclaim, or cross-claim for patent infringement if the re19 quirements of paragraphs (1) through (6) of subsection 

20 (a) are not met with respect to such count or counts. The 

21 fact that a party pleads in accordance with subsection (c) 

22 shall not be a basis for dismissal if the party nonetheless 

23 states a plausible claim for relief sufficient under the Fed24 eral Rules of Civil Procedure. 


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1 ‘‘(c) INFORMATION NOT ACCESSIBLE.—If some sub2 set of information required to comply with subsection (a) 

3 is not accessible to a party after an inquiry reasonable 

4 under the circumstances, consistent with rule 11 of the 

5 Federal Rules of Civil Procedure, an allegation requiring 

6 that information may be based upon a general description 

7 of that information, along with a statement as to why the 

8 information is not accessible. 

9 ‘‘(d) AMENDMENT OF PLEADINGS.—Nothing in this 

10 provision shall be construed to affect a party’s leave to 

11 amend pleadings as specified in the Federal Rules of Civil 

12 Procedure. Amendments permitted by the court are sub13 ject to the pleading requirements set forth in this section. 

14 ‘‘(e) CONFIDENTIAL INFORMATION.—A party re15 quired to disclose information described under subsection 

16 (a) may file information believed to be confidential under 

17 seal, with a motion setting forth good cause for such seal18 ing. If such motion is denied by the court, the party may 

19 seek to file an amended pleading. 

20 ‘‘(f) EXEMPTION.—Subsection (a) shall not apply to 

21 a civil action that includes a claim for relief arising under 

22 section 271(e)(2). 

23 ‘‘§ 281B. Early disclosure requirements for patent in24 fringement actions 

25 ‘‘(a) DEFINITIONS.—In this section— 


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1 ‘‘(1) the term ‘financial interest’— 

2 ‘‘(A) means— 

3 ‘‘(i) with regard to a patent or pat4 ents, the right of a person to receive pro5 ceeds from the assertion of the patent or 

6 patents, including a fixed or variable por7 tion of such proceeds; and 

8 ‘‘(ii) with regard to the patentee, di9 rect or indirect ownership or control by a 

10 person of more than 20 percent of the pat11 entee; and 

12 ‘‘(B) does not mean— 

13 ‘‘(i) ownership of shares or other in14 terests in a mutual or common investment 

15 fund, unless the owner of such interest 

16 participates in the management of such 

17 fund; or 

18 ‘‘(ii) the proprietary interest of a pol19 icyholder in a mutual insurance company 

20 or a depositor in a mutual savings associa21 tion, or a similar proprietary interest, un22 less the outcome of the proceeding could 

23 substantially affect the value of such inter24 est; 


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1 ‘‘(2) the term ‘patentee’ means a party in a 

2 civil action that files a pleading subject to the re3 quirements of section 281A; 

4 ‘‘(3) the term ‘proceeding’ means all stages of 

5 a civil action, including pretrial and trial proceedings 

6 and appellate review; and 

7 ‘‘(4) the term ‘ultimate parent entity’ has the 

8 meaning given the term in section 261A. 

9 ‘‘(b) EARLY DISCLOSURE REQUIREMENTS.—Not10 withstanding the requirements of section 299B, a patentee 

11 shall disclose to the court and each adverse party, not later 

12 than 14 days after the date on which the patentee serves 

13 or files the pleading subject to the requirements of section 

14 281A— 

15 ‘‘(1) the identity of each— 

16 ‘‘(A) assignee of the patent or patents at 

17 issue, and any ultimate parent entity thereof; 

18 ‘‘(B) entity with a right to sublicense to 

19 unaffiliated entities or to enforce the patent or 

20 patents at issue, and any ultimate parent entity 

21 thereof; and 

22 ‘‘(C) entity, other than an entity the ulti23 mate parent of which is disclosed under sub24 paragraph (A) or (B), that the patentee knows 

25 to have a financial interest in— 


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1 ‘‘(i) the patent or patents at issue; or 

2 ‘‘(ii) the patentee, and any ultimate 

3 parent entity thereof; and 

4 ‘‘(2) for each patent that the patentee alleges to 

5 be infringed— 

6 ‘‘(A) a list of each complaint, counterclaim, 

7 or cross-claim filed by the patentee or an affil8 iate thereof in the United States during the 3- 

9 year period preceding the date of the filing of 

10 the action, and any other complaint, counter11 claim, or cross-claim filed in the United States 

12 during that period of which the patentee has 

13 knowledge, that asserts or asserted such patent, 

14 including— 

15 ‘‘(i) the caption; 

16 ‘‘(ii) civil action number; 

17 ‘‘(iii) the court where the action was 

18 filed; and 

19 ‘‘(iv) if applicable, any court to which 

20 the action was transferred; 

21 ‘‘(B) a statement as to whether the patent 

22 is subject to an assurance made by the party to 

23 a standards development organization to license 

24 others under such patent if— 


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1 ‘‘(i) the assurance specifically identi2 fies such patent or claims therein; and 

3 ‘‘(ii) the allegation of infringement re4 lates to such standard; and 

5 ‘‘(C) a statement as to whether the Fed6 eral Government has imposed specific licensing 

7 requirements with respect to such patent. 

8 ‘‘(c) DISCLOSURE OF FINANCIAL INTEREST.— 

9 ‘‘(1) PUBLICLY TRADED.—For purposes of sub10 section (b)(1)(C), if the financial interest is held by 

11 a corporation traded on a public stock exchange, an 

12 identification of the name of the corporation and the 

13 public exchange listing shall satisfy the disclosure re14 quirement. 

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

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

17 held by a publicly traded corporation, the disclosure 

18 shall satisfy the disclosure requirement if the infor19 mation identifies— 

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

21 name of the partnership, the address of the 

22 principal place of business, and the name and 

23 correspondence address of the registered agent; 

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

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1 poration, and the address of the principal place 

2 of business; and 

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

4 correspondence address of that individual. 

5 ‘‘(d) PROVISION OF INFORMATION TO THE UNITED

6 STATES PATENT AND TRADEMARK OFFICE.—Not later 

7 than 1 month after the date on which the disclosures re8 quired under subsection (b) are made, the patentee shall 

9 provide to the United States Patent and Trademark Office 

10 a filing containing the information disclosed pursuant to 

11 subsection (b)(1). 

12 ‘‘(e) CONFIDENTIAL INFORMATION.— 

13 ‘‘(1) IN GENERAL.—A patentee required to dis14 close information under subsection (b) may file, 

15 under seal, information believed to be confidential, 

16 with a motion setting forth good cause for such seal17 ing. 

18 ‘‘(2) HOME ADDRESS INFORMATION.—For pur19 poses of this section, the home address of an indi20 vidual shall be considered to be confidential informa21 tion.’’. 

22 (2) CONFORMING AMENDMENT.—The table of 

23 sections for chapter 29 of title 35, United States 

24 Code, is amended by inserting after the item relating 

25 to section 281 the following new items: 


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

‘‘281B. Early disclosure requirements for patent infringement actions.’’. 

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

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

3 this Act and shall apply to any action for which a com4 plaint is filed on or after that date. 

5 SEC. 4. CUSTOMER-SUIT EXCEPTION. 

6 (a) IN GENERAL.—Chapter 29 of title 35, United 

7 States Code, is amended by adding at the end the fol8 lowing: 

9 ‘‘§ 299A. Customer stay 

10 ‘‘(a) DEFINITIONS.—In this section— 

11 ‘‘(1) the term ‘covered customer’ means a re12 tailer or end user that is accused of infringing a pat13 ent or patents in dispute based on— 

14 ‘‘(A) the sale, or offer for sale, of a covered 

15 product or covered process without material 

16 modification of the product or process in a 

17 manner that is alleged to infringe a patent or 

18 patents in dispute; or 

19 ‘‘(B) the use by such retailer, the retailer’s 

20 end user customer, or an end user of a covered 

21 product or covered process without material 

22 modification of the product or process in a 

23 manner that is alleged to infringe a patent or 

24 patents in dispute; 


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1 ‘‘(2) the term ‘covered manufacturer’ means a 

2 person who manufactures or supplies, or causes the 

3 manufacture or supply of, a covered product or cov4 ered process, or a relevant part thereof; 

5 ‘‘(3) the term ‘covered process’ means a proc6 ess, method, or a relevant part thereof, that is al7 leged to infringe the patent or patents in dispute 

8 where such process, method, or relevant part thereof 

9 is implemented by an apparatus, material, system, 

10 software or other instrumentality that is provided by 

11 the covered manufacturer; 

12 ‘‘(4) the term ‘covered product’ means a compo13 nent, product, system, service, or a relevant part 

14 thereof, that— 

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

16 patents in dispute; or 

17 ‘‘(B) implements a process alleged to in18 fringe the patent or patents in dispute; 

19 ‘‘(5) for purposes of this section, the term ‘end 

20 user’ shall include an affiliate of such an end user, 

21 but shall not include an entity that manufactures or 

22 causes the manufacture of a covered product or cov23 ered process or a relevant part thereof; 

24 ‘‘(6) the term ‘retailer’ means an entity that 

25 generates its revenues predominately through the 


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1 sale to the public of consumer goods or services, or 

2 an affiliate of such entity, but shall not include an 

3 entity that manufactures or causes the manufacture 

4 of a covered product or covered process or a relevant 

5 part thereof; and 

6 ‘‘(7) for purposes of the definitions in para7 graphs (5) and (6), the terms ‘use’ and ‘sale’ mean 

8 the use and the sale, respectively, within the mean9 ings given those terms under section 271. 

10 ‘‘(b) MOTION FOR STAY.—In a civil action in which 

11 a party asserts a claim for relief arising under any Act 

12 of Congress relating to patents (other than an action that 

13 includes a cause of action described in section 271(e)), the 

14 court shall grant a motion to stay at least the portion of 

15 the action against a covered customer that relates to in16 fringement of a patent involving a covered product or cov17 ered process if— 

18 ‘‘(1) the covered manufacturer is a party to the 

19 action or a separate action in a Federal court of the 

20 United States involving the same patent or patents 

21 relating to the same covered product or covered 

22 process; 

23 ‘‘(2) the covered customer agrees to be bound 

24 as to issues determined in an action described in 

25 paragraph (1) without a full and fair opportunity to 


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1 separately litigate any such issue, but only as to 

2 those issues for which all other elements of the com3 mon law doctrine of issue preclusion are met; and 

4 ‘‘(3) the motion is filed after the first pleading 

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

6 ‘‘(A) 120 days after service of the first 

7 pleading or paper in the action that specifically 

8 identifies the covered product or covered proc9 ess as a basis for the alleged infringement of 

10 the patent by the covered customer, and specifi11 cally identifies how the covered product or cov12 ered process is alleged to infringe the patent; or 

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

14 order in the case is entered. 

15 ‘‘(c) MANUFACTURER CONSENT IN CERTAIN

16 CASES.—If the covered manufacturer has been made a 

17 party to the action on motion by the covered customer, 

18 then a motion under subsection (b) may only be granted 

19 if the covered manufacturer and the covered customer 

20 agree in writing to the stay. 

21 ‘‘(d) LIFT OF STAY.— 

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

23 section may be lifted upon grant of a motion based 

24 on a showing that— 


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1 ‘‘(A) the action involving the covered man2 ufacturer will not resolve major issues in the 

3 suit against the covered customer, such as that 

4 a covered product or covered process identified 

5 in the motion to lift the stay is not a material 

6 part of the claimed invention or inventions in 

7 the patent or patents in dispute; or 

8 ‘‘(B) the stay unreasonably prejudices or 

9 would be manifestly unjust to the party seeking 

10 to lift the stay. 

11 ‘‘(2) SEPARATE ACTIONS.—In the case of a stay 

12 entered under this section based on the participation 

13 of the covered manufacturer in a separate action de14 scribed in subsection (b)(1), a motion under para15 graph (1) may only be granted if the court in such 

16 separate action determines that the showing re17 quired under paragraph (1) has been made. 

18 ‘‘(e) WAIVER OF ESTOPPEL EFFECT.—If, following 

19 the grant of a motion to stay under this section, the cov20 ered manufacturer in an action described in subsection 

21 (b)(1)— 

22 ‘‘(1) obtains or consents to entry of a consent 

23 judgment involving one or more of the issues that 

24 gave rise to the stay; or 


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1 ‘‘(2) fails to prosecute to a final, non-appealable 

2 judgment a final decision as to one or more of the 

3 issues that gave rise to the stay, 

4 the court may, upon motion, determine that such consent 

5 judgment or unappealed final decision shall not be binding 

6 on the covered customer with respect to one or more of 

7 the issues that gave rise to the stay based on a showing 

8 that such an outcome would unreasonably prejudice or be 

9 manifestly unjust to the covered customer in light of the 

10 circumstances of the case. 

11 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec12 tion shall be construed to limit the ability of a court to 

13 grant any stay, expand any stay granted pursuant to this 

14 section, or grant any motion to intervene, if otherwise per15 mitted by law.’’. 

16 (b) CONFORMING AMENDMENT.—The table of sec17 tions for chapter 29 of title 35, United States Code, is 

18 amended by adding at the end the following: 

‘‘299A. Customer stay.’’. 

19 SEC. 5. DISCOVERY LIMITS. 

20 (a) AMENDMENT.—Chapter 29 of title 35, United 

21 States Code, as amended by section 4, is amended by add22 ing at the end the following: 

23 ‘‘§ 299B. Discovery in patent infringement action 

24 ‘‘(a) DISCOVERY IN PATENT INFRINGEMENT AC25 TION.— 


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1 ‘‘(1) IN GENERAL.—Except as provided in sub2 sections (b) and (c), in a civil action arising under 

3 any Act of Congress relating to patents, discovery 

4 shall be stayed during the pendency of 1 or more 

5 motions described in paragraph (2) if the motion or 

6 motions were filed prior to the first responsive plead7 ing. 

8 ‘‘(2) MOTIONS DESCRIBED.—The motions de9 scribed in this paragraph are— 

10 ‘‘(A) a motion to dismiss; 

11 ‘‘(B) a motion to transfer venue; and 

12 ‘‘(C) a motion to sever accused infringers. 

13 ‘‘(b) DISCRETION TO EXPAND SCOPE OF DIS14 COVERY.— 

15 ‘‘(1) RESOLUTION OF MOTIONS.—A court may 

16 allow limited discovery necessary to resolve a motion 

17 described in subsection (a) or a motion for prelimi18 nary relief properly raised by a party before or dur19 ing the pendency of a motion described in subsection 

20 (a). 

21 ‘‘(2) ADDITIONAL DISCOVERY.—On motion, a 

22 court may allow additional discovery if the court 

23 finds that such discovery is necessary to preserve 

24 evidence or otherwise prevent specific prejudice to a 

25 party. 


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

2 ‘‘(1) VOLUNTARY EXCLUSION.—The parties to 

3 an action described in subsection (a) may voluntarily 

4 consent to be excluded, in whole or in part, from the 

5 limitation on discovery under subsection (a). 

6 ‘‘(2) CLAIMS UNDER SECTION 271(e).—This 

7 section shall not apply to a civil action that includes 

8 a claim for relief arising under section 271(e). 

9 ‘‘(d) RULES OF CONSTRUCTION.— 

10 ‘‘(1) TIMELINE FOR RESPONSIVE PLEADINGS.— 

11 Nothing in this section shall be construed to alter 

12 the time provided by the Federal Rules of Civil Pro13 cedure for the filing of responsive pleadings. 

14 ‘‘(2) EXCHANGE OF CONTENTIONS.—Nothing 

15 in this section shall prohibit a court from ordering 

16 or local rules from requiring the exchange of conten17 tions regarding infringement, non-infringement, in18 validity or other issues, by interrogatories or other 

19 written initial disclosures, at an appropriate time de20 termined by the court.’’. 

21 (b) CONFORMING AMENDMENT.—The table of sec22 tions for chapter 29 of title 35, United States Code, as 

23 amended by section 4, is amended by inserting after the 

24 item relating to section 299A the following: 

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


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

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

3 this Act and shall apply to any action for which a com4 plaint is filed on or after that date. 

5 SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC6 OMMENDATIONS OF THE JUDICIAL CON7 FERENCE. 

8 (a) JUDICIAL CONFERENCE RULES AND PROCE9 DURES ON DISCOVERY BURDENS AND COSTS.— 

10 (1) RULES AND PROCEDURES.—The Judicial 

11 Conference of the United States, using existing re12 sources, should develop rules and procedures to im13 plement the discovery proposals described in para14 graph (2) to address concerns regarding the 

15 asymmetries in discovery burdens and costs that 

16 may arise in a civil action arising under any Act of 

17 Congress relating to patents. 

18 (2) RULES AND PROCEDURES TO BE CONSID19 ERED.—The rules and procedures to be developed 

20 under paragraph (1) should address each of the fol21 lowing: 

22 (A) DISCOVERY OF CORE DOCUMENTARY

23 EVIDENCE.—To what extent each party to the 

24 action is entitled to receive core documentary 

25 evidence and should be responsible for the costs 


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1 of producing core documentary evidence within 

2 the possession or control of each such party, 

3 and to what extent each party to the action 

4 may seek noncore documentary discovery as 

5 otherwise provided in the Federal Rules of Civil 

6 Procedure. 

7 (B) ELECTRONIC COMMUNICATION.—If the 

8 parties request discovery of electronic commu9 nication, how such discovery should be phased 

10 to occur relative to the exchange of initial dis11 closures and core documentary evidence, and 

12 appropriate limitations to apply to such dis13 covery. 

14 (C) ADDITIONAL DOCUMENT DISCOVERY.— 

15 The manner and extent to which the following 

16 should apply: 

17 (i) IN GENERAL.—Each party to the 

18 action may seek any additional document 

19 discovery beyond core documentary evi20 dence as permitted under the Federal 

21 Rules of Civil Procedure, if such party 

22 bears the reasonable costs, including rea23 sonable attorney’s fees, of the additional 

24 document discovery. 


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1 (ii) REQUIREMENTS FOR ADDITIONAL

2 DOCUMENT DISCOVERY.—Unless the par3 ties mutually agree otherwise, no party 

4 may be permitted additional document dis5 covery unless such a party posts a bond, or 

6 provides other security, in an amount suffi7 cient to cover the expected costs of such 

8 additional document discovery, or makes a 

9 showing to the court that such party has 

10 the financial capacity to pay the costs of 

11 such additional document discovery. 

12 (iii) GOOD CAUSE MODIFICATION.—A 

13 court, upon motion and for good cause 

14 shown, may modify the requirements of 

15 subparagraphs (A) and (B) and any defini16 tion under paragraph (3). Not later than 

17 30 days after the pretrial conference under 

18 rule 16 of the Federal Rules of Civil Pro19 cedure, the parties shall jointly submit any 

20 proposed modifications of the requirements 

21 of subparagraphs (A) and (B) and any def22 inition under paragraph (3), unless the 

23 parties do not agree, in which case each 

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1 tion of such party and a summary of the 

2 disagreement over the modification. 

3 (iv) COMPUTER CODE.—A court, upon 

4 motion and for good cause shown, may de5 termine that computer code should be in6 cluded in the discovery of core documen7 tary evidence. The discovery of computer 

8 code shall occur after the parties have ex9 changed initial disclosures and other core 

10 documentary evidence. 

11 (D) DISCOVERY SEQUENCE AND SCOPE.— 

12 The manner and extent to which the parties 

13 shall discuss and address in the written report 

14 filed pursuant to rule 26(f) of the Federal 

15 Rules of Civil Procedure the views and pro16 posals of each party on the following: 

17 (i) When the discovery of core docu18 mentary evidence should be completed. 

19 (ii) Whether additional document dis20 covery will be sought under subparagraph 

21 (C). 

22 (iii) Any issues about infringement, 

23 invalidity, or damages that, if resolved be24 fore the additional discovery described in 


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1 subparagraph (C) commences, might sim2 plify or streamline the case. 

3 (3) SCOPE OF DOCUMENTARY EVIDENCE.—In 

4 developing rules or procedures under this section, 

5 the Judicial Conference should consider which kinds 

6 of evidence constitute ‘‘core documentary evidence’’. 

7 (4) DEFINITIONS.—In this subsection the term 

8 ‘‘electronic communication’’ means any form of elec9 tronic communication, including email, text message, 

10 or instant message. 

11 (b) JUDICIAL CONFERENCE PATENT CASE MANAGE12 MENT.—The Judicial Conference of the United States, 

13 using existing resources, should develop case management 

14 procedures to be implemented by the United States dis15 trict courts and the United States Court of Federal Claims 

16 for any civil action arising under any Act of Congress re17 lating to patents, including initial disclosure and early case 

18 management conference practices that— 

19 (1) will identify any potential dispositive issues 

20 of the case; and 

21 (2) focus on early summary judgment motions 

22 when resolution of issues may lead to expedited dis23 position of the case. 


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1 SEC. 7. FEES AND OTHER EXPENSES. 

2 (a) SENSE OF CONGRESS.—It is the sense of Con3 gress that, in patent cases, reasonable attorney fees should 

4 be paid by a non-prevailing party whose litigation position 

5 or conduct is not objectively reasonable. As the Supreme 

6 Court wrote in adopting this legal standard in the context 

7 of fee shifting under section 1447 of title 28, United 

8 States Code, this standard is intended to strike a balance; 

9 in patent cases, a more appropriate balance between pro10 tecting the right of a patent holder to enforce its patent 

11 on the one hand, and deterring abuses in patent litigation 

12 and threats thereof on the other. 

13 (b) AMENDMENT.—Section 285 of title 35, United 

14 States Code, is amended to read as follows: 

15 ‘‘§ 285. Fees and other expenses 

16 ‘‘(a) AWARD.—In connection with a civil action in 

17 which any party asserts a claim for relief arising under 

18 any Act of Congress relating to patents, upon motion by 

19 a prevailing party, the court shall determine whether the 

20 position of the non-prevailing party was objectively reason21 able in law and fact, and whether the conduct of the non22 prevailing party was objectively reasonable. If the court 

23 finds that the position of the non-prevailing party was not 

24 objectively reasonable in law or fact or that the conduct 

25 of the non-prevailing party was not objectively reasonable, 

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1 vailing party unless special circumstances would make an 

2 award unjust. 

3 ‘‘(b) COVENANT NOT TO SUE.—A party to a civil ac4 tion who asserts a claim for relief arising under any Act 

5 of Congress relating to patents against another party, and 

6 who subsequently unilaterally (i) seeks dismissal of the ac7 tion without consent of the other party and (ii) extends 

8 to such other party a covenant not to sue for infringement 

9 with respect to the patent or patents at issue, may be the 

10 subject of a motion for attorney fees under subsection (a) 

11 as if it were a non-prevailing party, unless the party as12 serting such claim would have been entitled, at the time 

13 that such covenant was extended, to dismiss voluntarily 

14 the action without a court order under rule 41 of the Fed15 eral Rules of Civil Procedure, or the interests of justice 

16 require otherwise. 

17 ‘‘(c) RECOVERY OF AWARD.— 

18 ‘‘(1) CERTIFICATION; DISCLOSURE OF INTER19 ESTED PARTIES.— 

20 ‘‘(A) INITIAL STATEMENT.—A party de21 fending against a claim of infringement may 

22 file, not later than 14 days before a scheduling 

23 conference is to be held or a scheduling order 

24 is due under rule 16(b) of the Federal Rules of 

25 Civil Procedure, a statement that such party 


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1 holds a good faith belief, based on publicly2 available information and any other information 

3 known to such party, that the primary business 

4 of the party alleging infringement is the asser5 tion and enforcement of patents or the licensing 

6 resulting therefrom. 

7 ‘‘(B) CERTIFICATION.—Not later than 45 

8 days after being served with an initial state9 ment under subparagraph (A), a party alleging 

10 infringement shall file a certification that— 

11 ‘‘(i) establishes and certifies to the 

12 court, under oath, that it will have suffi13 cient funds available to satisfy any award 

14 of reasonable attorney fees under this sec15 tion if an award is assessed; 

16 ‘‘(ii) demonstrates that its primary 

17 business is not the assertion and enforce18 ment of patents or the licensing resulting 

19 therefrom; 

20 ‘‘(iii) identifies interested parties, if 

21 any, as defined in paragraph (2) of this 

22 subsection; or 

23 ‘‘(iv) states that it has no such inter24 ested parties. 


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1 A party alleging infringement shall have an on2 going obligation to supplement its certification 

3 under this subparagraph within 30 days after a 

4 material change to the information provided in 

5 its certification. 

6 ‘‘(C) NOTICE TO INTERESTED PARTY.—A 

7 party that files a certification under subpara8 graph (B)(iii) shall, prior to filing the certifi9 cation, provide each identified interested party 

10 actual notice in writing by service of notice in 

11 any district where the interested party may be 

12 found, such that jurisdiction shall be estab13 lished over each interested party to the action 

14 for purposes of enforcing an award of attorney 

15 fees under this section, consistent with the Con16 stitution of the United States. The notice shall 

17 identify the action, the parties, the patents at 

18 issue, and the interest qualifying the party to 

19 be an interested party. The notice shall inform 

20 the recipient that the recipient may be held ac21 countable under this subsection for any award 

22 of attorney fees, or a portion thereof, resulting 

23 from the action in the event the party alleging 

24 infringement cannot satisfy the full amount of 

25 such an award, unless the recipient renounces 


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1 its interest pursuant to subparagraph (E) or is 

2 otherwise exempt from the applicability of this 

3 subsection. 

4 ‘‘(D) ACCOUNTABILITY FOR INTERESTED

5 PARTIES.—Any interested parties who are time6 ly served with actual notice pursuant to sub7 paragraph (C) and do not renounce their inter8 ests pursuant to subparagraph (E) or are not 

9 otherwise exempt from the applicability of this 

10 subsection may be held accountable for any 

11 fees, or a portion thereof, awarded under this 

12 section in the event that the party alleging in13 fringement cannot satisfy the full amount of the 

14 award. If a true and correct certification under 

15 clause (i) or (ii) of subparagraph (B) is timely 

16 filed with the court, interested parties shall not 

17 be subject to this subparagraph. 

18 ‘‘(E) RENUNCIATION OF INTEREST.—Any 

19 recipient of a notice under subparagraph (C) 

20 may submit a statement of renunciation of in21 terest in a binding document with notice to the 

22 court and parties in the action not later than 

23 120 days after receipt of the notice under sub24 paragraph (C). The statement shall be required 


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1 to renounce only such interest as would qualify 

2 the recipient as an interested party. 

3 ‘‘(F) INSTITUTIONS OF HIGHER EDU4 CATION EXCEPTION.—Any institution of higher 

5 education (as defined in section 101(a) of the 

6 Higher Education Act of 1965 (20 U.S.C. 

7 1001(a)) or under equivalent laws in foreign ju8 risdictions), or a non-profit technology transfer 

9 organization whose primary purpose is to facili10 tate the commercialization of technologies devel11 oped by 1 or more institutions of higher edu12 cation, may exempt itself from the applicability 

13 of this subsection by filing a certification that 

14 it qualifies for the exception provided for in this 

15 subparagraph with the court and providing no16 tice to the parties. 

17 ‘‘(G) INTEREST OF JUSTICE EXCEPTION.— 

18 Any recipient of a notice under subparagraph 

19 (C) may intervene in the action for purposes of 

20 contesting its identification as an interested 

21 party or its liability under this subsection, and 

22 a court may exempt any party identified as an 

23 interested party from the applicability of this 

24 subsection as the interest of justice requires. 


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1 ‘‘(2) INTERESTED PARTY.—In this section, the 

2 term ‘interested party’— 

3 ‘‘(A) means a person who has a substantial 

4 financial interest related to the proceeds from 

5 any settlement, license, or damages award re6 sulting from the enforcement of the patent in 

7 the action by the party alleging infringement; 

8 ‘‘(B) does not include an attorney or law 

9 firm providing legal representation in the action 

10 if the sole basis for the financial interest of the 

11 attorney or law firm in the outcome of the ac12 tion arises from the attorney or law firm’s re13 ceipt of compensation reasonably related to the 

14 provision of the legal representation; 

15 ‘‘(C) does not include a person who has as16 signed all right, title, and interest in a patent, 

17 except for passive receipt of income, to an enti18 ty described in paragraph (1)(F), or who has a 

19 right to receive any portion of such passive in20 come; and 

21 ‘‘(D) does not include a person who would 

22 be an interested party under subparagraph (A) 

23 but whose financial interest is based solely on 

24 an equity or security interest established when 

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1 ness was not the assertion and enforcement of 

2 patents or the licensing resulting therefrom. 

3 ‘‘(d) CLAIMS UNDER SECTION 271(e).— 

4 ‘‘(1) APPLICABILITY.—Subsections (a), (b), and 

5 (c) shall not apply to a civil action that includes a 

6 claim for relief arising under section 271(e). 

7 ‘‘(2) AWARD IN CERTAIN CLAIMS UNDER SEC8 TION 271(e).—In a civil action that includes a claim 

9 for relief arising under section 271(e), the court may 

10 in exceptional cases award reasonable attorney fees 

11 to the prevailing party.’’. 

12 (c) CONFORMING AMENDMENT AND AMENDMENT.— 

13 (1) CONFORMING AMENDMENT.—The item re14 lating to section 285 of the table of sections for 

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

16 amended to read as follows: 

‘‘285. Fees and other expenses.’’. 

17 (2) AMENDMENT.—Section 273 of title 35, 

18 United States Code, is amended by striking sub19 sections (f) and (g). 

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

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

22 this Act and shall apply to any action filed on or after 

23 such date. 


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1 SEC. 8. REQUIREMENT OF CLARITY AND SPECIFICITY IN 

2 DEMAND LETTERS. 

3 (a) IN GENERAL.—Chapter 29 of title 35, United 

4 States Code, as amended by section 5, is amended by add5 ing at the end the following: 

6 ‘‘§ 299C. Pre-suit written notice 

7 ‘‘(a) APPLICABILITY.—Subsection (b) shall not 

8 apply— 

9 ‘‘(1) to written communication between par10 ties— 

11 ‘‘(A) regarding existing licensing agree12 ments; 

13 ‘‘(B) as part of an ongoing licensing nego14 tiation, provided that the initial written notice 

15 complied with the requirements of subsection 

16 (b) of this section; or 

17 ‘‘(C) sent after the initial written notice, 

18 provided that the initial written notice complied 

19 with the requirements of subsection (b) of this 

20 section; or 

21 ‘‘(2) if the court determines it is in the interest 

22 of justice to waive the requirements of subsection 

23 (b). 

24 ‘‘(b) WRITTEN NOTIFICATION REQUIREMENTS.— 

25 ‘‘(1) IN GENERAL.—In a civil action alleging in26 fringement of a patent in which the plaintiff has 


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1 provided written notice of the accusation of infringe2 ment to the party accused of infringement prior to 

3 filing the action, the initial written notice shall con4 tain the information required under paragraph (2) 

5 or be subject to paragraph (3). 

6 ‘‘(2) REQUIRED INFORMATION PROVIDED IN

7 INITIAL WRITTEN NOTICE.—The initial written no8 tice described in paragraph (1) shall contain, at a 

9 minimum— 

10 ‘‘(A) an identification of— 

11 ‘‘(i) each patent believed to be in12 fringed, including the patent number; and 

13 ‘‘(ii) at least one claim of each patent 

14 that is believed to be infringed; 

15 ‘‘(B) an identification of each product, 

16 process, apparatus, or chemical composition, in17 cluding any manufacturer thereof, that is be18 lieved to infringe one or more claims of each 

19 patent under subparagraph (A); 

20 ‘‘(C) a clear and detailed description of the 

21 reasons why the plaintiff believes each patent 

22 identified under subparagraph (A) is infringed; 

23 ‘‘(D) notice to the intended recipient that 

24 the intended recipient may have the right to a 


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1 stay of any suit in accordance with section 

2 299A; 

3 ‘‘(E) the identity of any person with the 

4 right to enforce each patent under subpara5 graph (A); and 

6 ‘‘(F) if compensation is proposed, a short 

7 and plain statement as to how that proposed 

8 compensation was determined. 

9 ‘‘(3) ADDITIONAL TIME TO RESPOND.—If the 

10 initial written notice provided to the defendant prior 

11 to the filing of the civil action did not contain the 

12 information required by paragraph (2), the defend13 ant’s time to respond to the complaint shall be ex14 tended by an additional 30 days.’’. 

15 (b) CONFORMING AMENDMENT.—The table of sec16 tions for chapter 29 of title 35, United States Code, as 

17 amended by section 5, is amended by adding at the end 

18 the following: 

‘‘299C. Pre-suit written notice.’’. 

19 (c) WILLFUL INFRINGEMENT.—Section 284 of title 

20 35, United States Code, is amended— 

21 (1) in the first undesignated paragraph, by 

22 striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN23 ERAL.—Upon finding’’; 

24 (2) in the second undesignated paragraph, by 

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1 SESSMENT BY COURT; TREBLE DAMAGES.—When 

2 the damages’’; 

3 (3) by inserting after subsection (b), as des4 ignated by subparagraph (B), the following: 

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

6 to establish willful infringement may not rely on evidence 

7 of pre-suit notification of infringement unless that notifi8 cation complies with the standards set out in section 

9 299C(b)(2).’’; and 

10 (4) in the last undesignated paragraph, by 

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

12 TESTIMONY.—The court’’. 

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

14 this section shall take effect on the date that is 1 year 

15 after the date of enactment of this Act and shall apply 

16 to any action for which a complaint is filed on or after 

17 that date. 

18 SEC. 9. ABUSIVE DEMAND LETTERS. 

19 (a) BAD-FAITH DEMAND LETTERS.—Chapter 29 of 

20 title 35, United States Code, as amended by section 8, 

21 is amended by adding at the end the following: 

22 ‘‘§ 299D. Bad-faith demand letters 

23 ‘‘(a) DEFINITION.—In this section, the term ‘affili24 ated person’ means a person affiliated with the intended 

25 recipient of a written communication. 


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1 ‘‘(b) CIVIL PENALTIES FOR CERTAIN UNFAIR OR DE2 CEPTIVE ACTS OR PRACTICES IN CONNECTION WITH

3 ABUSIVE DEMAND LETTERS.—A person who commits an 

4 unfair or deceptive act or practice within the meaning of 

5 section 5(a)(1) of the Federal Trade Commission Act (15 

6 U.S.C. 45(a)(1)), in connection with the assertion of a 

7 United States patent, and who engages in the widespread 

8 sending of written communications representing that the 

9 intended recipients, or any persons affiliated with those 

10 recipients, are or may be infringing, or have or may have 

11 infringed, the patent and may bear liability or owe com12 pensation to another, shall be deemed to have violated a 

13 rule defining an unfair or deceptive act or practice de14 scribed under section 18(a)(1)(B) of the Federal Trade 

15 Commission Act (15 U.S.C. 57a(a)(1)(B)) if— 

16 ‘‘(1)(A) the communications falsely— 

17 ‘‘(i) represent that administrative or judi18 cial relief has been sought against the recipient 

19 or others; or 

20 ‘‘(ii) threaten litigation if compensation is 

21 not paid, the infringement issue is not other22 wise resolved, or the communication is not re23 sponded to; and 

24 ‘‘(B) there is a pattern of false statements or 

25 threats described in subparagraph (A) having been 


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1 made without litigation or other relief then having 

2 been pursued; 

3 ‘‘(2) the assertions contained in the commu4 nications lack a reasonable basis in fact or law, be5 cause— 

6 ‘‘(A) the person asserting the patent is not 

7 a person, or does not represent a person, with 

8 the current right to license the patent to, or to 

9 enforce the patent against, the intended recipi10 ents or any affiliated persons; 

11 ‘‘(B) the communications seek compensa12 tion on account of activities undertaken after 

13 the patent has expired; 

14 ‘‘(C) the communications seek compensa15 tion for a patent that has been held to be in16 valid or unenforceable in a final judicial or ad17 ministrative proceeding that is unappealable or 

18 for which any opportunity for appeal is no 

19 longer available; 

20 ‘‘(D) the communications seek compensa21 tion for activities by the recipient that the send22 er knows do not infringe the patent because 

23 such activities are authorized by the patentee; 


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1 ‘‘(E) the communications falsely represent 

2 that an investigation of the recipient’s alleged 

3 infringement has occurred; or 

4 ‘‘(F) the communications falsely state that 

5 litigation has been filed against, or a license has 

6 been paid by persons similarly situated to the 

7 recipient; or 

8 ‘‘(3) the content of the written communications 

9 is likely to materially mislead a reasonable recipient 

10 because the content fails to include facts reasonably 

11 necessary to inform the recipient— 

12 ‘‘(A) of the identity of the person asserting 

13 a right to license the patent to, or enforce the 

14 patent against, the intended recipient or any af15 filiated person; 

16 ‘‘(B) of the patent issued by the United 

17 States Patent and Trademark Office alleged to 

18 have been infringed; and 

19 ‘‘(C) if infringement or the need to pay 

20 compensation for a license is alleged, of an 

21 identification of at least one product, service, or 

22 other activity of the recipient that is alleged to 

23 infringe the identified patent or patents and, 

24 unless the information is not readily accessible, 

25 an explanation of the basis for such allegation. 


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1 ‘‘(c) ENFORCEMENT BY FEDERAL TRADE COMMIS2 SION.— 

3 ‘‘(1) POWERS OF COMMISSION.—The Federal 

4 Trade Commission shall enforce this section in the 

5 same manner, by the same means, and with the 

6 same jurisdiction, powers, and duties as though all 

7 applicable terms and provisions of the Federal Trade 

8 Commission Act (15 U.S.C. 41 et seq.) were incor9 porated into and made a part of this section. 

10 ‘‘(2) PRIVILEGES AND IMMUNITIES.—Any per11 son who engages in an act or practice described in 

12 subsection (b) shall be subject to the penalties and 

13 entitled to the privileges and immunities provided in 

14 the Federal Trade Commission Act (15 U.S.C. 41 et 

15 seq.).’’. 

16 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

17 The table of sections for chapter 29 of title 35, United 

18 States Code, as amended by section 8, is amended by in19 serting after the item relating to section 299C the fol20 lowing: 

‘‘299D. Bad-faith demand letters.’’. 

21 SEC. 10. TRANSPARENCY OF PATENT TRANSFER. 

22 (a) PATENT AND TRADEMARK OFFICE PRO23 CEEDINGS.— 


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1 (1) IN GENERAL.—Chapter 26 of title 35, 

2 United States Code, is amended by inserting after 

3 section 261 the following: 

4 ‘‘§ 261A. Disclosure of information relating to patent 

5 ownership 

6 ‘‘(a) DEFINITIONS.—In this section: 

7 ‘‘(1) PERIOD OF NONCOMPLIANCE.—The term 

8 ‘period of noncompliance’ refers to a period of time 

9 during which the assignee or the ultimate parent en10 tity of an assignee of a patent has not been disclosed 

11 to the United States Patent and Trademark Office 

12 in accordance with this section. 

13 ‘‘(2) ULTIMATE PATENT ENTITY.— 

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

15 subparagraph (B), the term ‘ultimate parent 

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

18 Regulations, or any successor regulation. 

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

20 Director may by regulation modify the defini21 tion of the term ‘ultimate parent entity’. 

22 ‘‘(b) REQUIREMENT TO DISCLOSE ASSIGNMENT.— 

23 An assignment of all substantial rights in an issued patent 

24 shall be recorded in the Patent and Trademark Office— 


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1 ‘‘(1) not later than the date on which the pat2 ent is issued; and 

3 ‘‘(2) when any subsequent assignment is made 

4 that results in a change to the ultimate parent enti5 ty— 

6 ‘‘(A) not later than 3 months after the 

7 date on which such assignment is made; or 

8 ‘‘(B) in the case of an assignment made as 

9 part of a corporate acquisition that meets the 

10 reporting thresholds under section 7A(a)(2) of 

11 the Clayton Act (15 U.S.C. 18a(a)(2)), not 

12 later than 6 months after the closing date of 

13 such acquisition. 

14 ‘‘(c) DISCLOSURE REQUIREMENTS.—A disclosure 

15 under subsection (b) shall include the name of the assignee 

16 and the ultimate parent entity of the assignee. 

17 ‘‘(d) FAILURE TO COMPLY.—In a civil action in 

18 which a party asserts a claim for infringement of a patent, 

19 if there was a failure to comply with subsection (b) for 

20 the patent— 

21 ‘‘(1) the party asserting infringement of the 

22 patent may not recover increased damages under 

23 section 284 or attorney fees under section 285 with 

24 respect to infringing activities taking place during 

25 any period of noncompliance, unless the denial of 


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1 such damages or fees would be manifestly unjust; 

2 and 

3 ‘‘(2) the court shall award to a prevailing ac4 cused infringer reasonable attorney fees and ex5 penses incurred in discovering the identity of any 

6 undisclosed entity required to be disclosed under 

7 subsection (b), unless such sanctions would be mani8 festly unjust.’’. 

9 (2) APPLICABILITY.—The amendment made by 

10 paragraph (1) shall apply to any patent for which a 

11 notice of allowance is issued on or after the date of 

12 enactment of this Act. 

13 (3) CONFORMING AMENDMENT.—The table of 

14 sections for chapter 26 of title 35, United States 

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

16 new item: 

‘‘261A. Disclosure of information relating to patent ownership.’’. 

17 (b) REGULATIONS.—The Director may promulgate 

18 such regulations as are necessary to establish a registra19 tion fee in an amount sufficient to recover the estimated 

20 costs of administering section 261A of title 35, United 

21 States Code, as added by subsection (a), to facilitate the 

22 collection and maintenance of the information required by 

23 the amendments made by this section and section 3(b) of 

24 this Act, and to ensure the timely disclosure of such infor25 mation to the public. 


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1 SEC. 11. PROTECTION OF INTELLECTUAL PROPERTY LI2 CENSES IN BANKRUPTCY. 

3 (a) IN GENERAL.—Section 1522 of title 11, United 

4 States Code, is amended by adding at the end the fol5 lowing: 

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

7 chapter. If the foreign representative rejects or repudiates 

8 a contract under which the debtor is a licensor of intellec9 tual property, the licensee under such contract shall be 

10 entitled to make the election and exercise the rights de11 scribed in section 365(n).’’. 

12 (b) TRADEMARKS.— 

13 (1) AMENDMENT.—Section 101(35A) of title 

14 11, United States Code, is amended— 

15 (A) in subparagraph (E), by striking ‘‘or’’; 

16 (B) in subparagraph (F), by adding ‘‘or’’ 

17 at the end; and 

18 (C) by adding after subparagraph (F) the 

19 following new subparagraph: 

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

21 name, as those terms are defined in section 45 

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

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

24 1127));’’. 


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1 (2) CONFORMING AMENDMENT.—Section 

2 365(n)(2) of title 11, United States Code, is amend3 ed— 

4 (A) in subparagraph (B)— 

5 (i) by striking ‘‘royalty payments’’ 

6 and inserting ‘‘royalty or other payments’’; 

7 and 

8 (ii) by striking ‘‘and’’ after the semi9 colon; 

10 (B) in subparagraph (C), by striking the 

11 period at the end of clause (ii) and inserting ‘‘; 

12 and’’; and 

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

14 subparagraph: 

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

16 mark, or trade name, the licensee shall not be 

17 relieved of any of its obligations to maintain the 

18 quality of the products and services offered 

19 under or in connection with the licensed trade20 mark, service mark or trade name, and the 

21 trustee shall retain the right to oversee and en22 force quality control for said products and/or 

23 services.’’. 

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

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


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1 this Act and shall apply to any case that is pending on, 

2 or for which a petition or complaint is filed on or after, 

3 such date of enactment. 

4 SEC. 12. SMALL BUSINESS EDUCATION, OUTREACH, AND IN5 FORMATION ACCESS. 

6 (a) SMALL BUSINESS EDUCATION AND OUT7 REACH.— 

8 (1) RESOURCES FOR SMALL BUSINESS.—Using 

9 existing resources, the Director shall develop edu10 cational resources for small businesses to address 

11 concerns arising from patent infringement. 

12 (2) SMALL BUSINESS PATENT OMBUDSMAN.— 

13 The existing small business patent outreach pro14 grams of the Office, in consultation with the relevant 

15 offices at the Small Business Administration and the 

16 Minority Business Development Agency, shall pro17 vide education and awareness regarding resources 

18 available for those persons responding to allegations 

19 of patent infringement. 

20 (b) IMPROVING INFORMATION TRANSPARENCY FOR

21 SMALL BUSINESS AND THE UNITED STATES PATENT AND

22 TRADEMARK OFFICE USERS.— 

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

24 Director shall create a user-friendly section on the 

25 official Web site of the Office to notify the public 


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

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

3 Director shall include— 

4 (A) information disclosed under section 

5 261A of title 35, United States Code, as added 

6 by section 10, and section 281B(b) of title 35, 

7 United States Code, as added by section 3; and 

8 (B) any other information the Director de9 termines to be relevant. 

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

11 for the public, the information described in para12 graph (1) shall be searchable by patent number, pat13 ent art area, and entity. 

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

15 AND EXAMINATION. 

16 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

17 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY

18 AND ETHICAL BUSINESS PRACTICES.— 

19 (1) STUDY REQUIRED.—The Director, in con20 sultation with the Secretary of Commerce, the Sec21 retary of the Treasury, the Chairman of the Securi22 ties and Exchange Commission, the heads of other 

23 relevant agencies, and interested parties, shall, using 

24 existing resources of the Office, conduct a study— 


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1 (A) to develop legislative recommendations 

2 to ensure greater transparency and account3 ability in patent transactions occurring on the 

4 secondary market; 

5 (B) to examine the economic impact that 

6 the patent secondary market has on the United 

7 States; 

8 (C) to examine licensing and other over9 sight requirements that may be placed on the 

10 patent secondary market, including on the par11 ticipants in such markets, to ensure that the 

12 market is a level playing field and that brokers 

13 in the market have the requisite expertise and 

14 adhere to ethical business practices; and 

15 (D) to examine the requirements placed on 

16 other markets. 

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

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

19 Director shall submit a report to the Committee on 

20 the Judiciary of the House of Representatives and 

21 the Committee on the Judiciary of the Senate on the 

22 findings and recommendations of the Director from 

23 the study required under paragraph (1). 

24 (b) STUDY ON PATENT SMALL CLAIMS PROCE25 DURES.— 


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1 (1) STUDY REQUIRED.— 

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

3 Administrative Office of the United States 

4 Courts, in consultation with the Director of the 

5 Federal Judicial Center and the United States 

6 Patent and Trademark Office, shall, using ex7 isting resources, conduct a study to examine the 

8 idea of developing a pilot program for patent 

9 small claims procedures in certain judicial dis10 tricts within the existing patent pilot program 

11 mandated by Public Law 111–349. 

12 (B) CONTENTS OF STUDY.—The study 

13 under subparagraph (A) shall examine— 

14 (i) the necessary criteria for using 

15 small claims procedures; 

16 (ii) the costs that would be incurred 

17 for establishing, maintaining, and oper18 ating such a pilot program; and 

19 (iii) the steps that would be taken to 

20 ensure that the procedures used in the 

21 pilot program are not misused for abusive 

22 patent litigation. 

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

24 after the date of enactment of this Act, the Director 

25 of the Administrative Office of the United States 


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1 Courts shall submit a report to the Committee on 

2 the Judiciary of the House of Representatives and 

3 the Committee on the Judiciary of the Senate on the 

4 findings and recommendations of the Director of the 

5 Administrative Office from the study required under 

6 paragraph (1). 

7 (c) STUDY ON BUSINESS METHOD PATENT QUAL8 ITY.— 

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

10 the United States shall, using existing resources, 

11 conduct a study on the volume and nature of litiga12 tion involving business method patents. 

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

14 under paragraph (1) shall focus on examining the 

15 quality of business method patents asserted in suits 

16 alleging patent infringement, and may include an ex17 amination of any other areas that the Comptroller 

18 General determines to be relevant. 

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

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

21 Comptroller General shall submit to the Committee 

22 on the Judiciary of the House of Representatives 

23 and the Committee on the Judiciary of the Senate 

24 a report on the findings and recommendations from 

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1 ommendations for any changes to laws or regula2 tions that the Comptroller General considers appro3 priate on the basis of the study. 

4 SEC. 14. TECHNICAL CORRECTIONS TO THE LEAHY-SMITH 

5 AMERICA INVENTS ACT AND OTHER IM6 PROVEMENTS. 

7 (a) Section 325(e)(2) of title 35, United States Code, 

8 is amended by striking ‘‘or reasonably could have raised’’. 

9 (b) PTO PATENT REVIEWS.— 

10 (1) CLARIFICATION.— 

11 (A) SCOPE OF PRIOR ART.—Section 

12 18(a)(1)(C)(i) of the Leahy-Smith America In13 vents Act (35 U.S.C. 321 note) is amended by 

14 striking ‘‘section 102(a)’’ and inserting ‘‘sub15 section (a) or (e) of section 102’’. 

16 (B) EFFECTIVE DATE.—The amendment 

17 made by subparagraph (A) shall take effect on 

18 the date of the enactment of this Act and shall 

19 apply to any proceeding pending on, or filed on 

20 or after, such date of enactment. 

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

22 available resources, the Director may waive payment 

23 of a filing fee for a transitional proceeding described 

24 under section 18(a) of the Leahy-Smith America In25 vents Act (35 U.S.C. 321 note). 


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1 (c) TECHNICAL CORRECTIONS.— 

2 (1) NOVELTY.— 

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

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

5 striking ‘‘the inventor or joint inventor or by 

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

7 inventor or another’’. 

8 (B) EFFECTIVE DATE.—The amendment 

9 made by subparagraph (A) shall be effective as 

10 if included in the amendment made by section 

11 3(b)(1) of the Leahy-Smith America Invents 

12 Act (Public Law 112–29). 

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

14 (A) REQUIREMENT TO EXECUTE.—Section 

15 115(a) of title 35, United States Code, is 

16 amended in the second sentence by striking 

17 ‘‘shall execute’’ and inserting ‘‘may be required 

18 by the Director to execute’’. 

19 (B) EFFECTIVE DATE.—The amendment 

20 made by subparagraph (A) shall be effective as 

21 if included in the amendment made by section 

22 4(a)(1) of the Leahy-Smith America Invents 

23 Act (Public Law 112–29). 

24 (3) ASSIGNEE FILERS.— 


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1 (A) BENEFIT OF EARLIER FILING DATE; 

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

3 35, United States Code, is amended, in the first 

4 sentence, by striking ‘‘by an inventor or inven5 tors named’’ and inserting ‘‘that names the in6 ventor or a joint inventor’’. 

7 (B) BENEFIT OF EARLIER FILING DATE IN

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

9 United States Code, is amended, in the first 

10 sentence, by striking ‘‘names an inventor or 

11 joint inventor’’ and inserting ‘‘names the inven12 tor or a joint inventor’’. 

13 (C) EFFECTIVE DATE.—The amendments 

14 made by this paragraph shall take effect on the 

15 date of the enactment of this Act and shall 

16 apply to any patent application, and any patent 

17 issuing from such application, that is filed on or 

18 after September 16, 2012. 

19 (4) DERIVED PATENTS.— 

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

21 35, United States Code, is amended by striking 

22 ‘‘or joint inventor’’ and inserting ‘‘or a joint in23 ventor’’. 

24 (B) EFFECTIVE DATE.—The amendment 

25 made by subparagraph (A) shall be effective as 


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1 if included in the amendment made by section 

2 3(h)(1) of the Leahy-Smith America Invents 

3 Act (Public Law 112–29). 

4 (5) SPECIFICATION.—Notwithstanding section 

5 4(e) of the Leahy-Smith America Invents Act (Pub6 lic Law 112–29; 125 Stat. 297), the amendments 

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

8 Act shall apply to any proceeding or matter that is 

9 pending on, or filed on or after, the date of the en10 actment of this Act. 

11 (6) TIME LIMIT FOR COMMENCING MISCONDUCT

12 PROCEEDINGS.— 

13 (A) AMENDMENT.—The fourth sentence of 

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

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

16 ‘‘18 months’’. 

17 (B) EFFECTIVE DATE.—The amendment 

18 made by this paragraph shall take effect on the 

19 date of the enactment of this Act and shall 

20 apply to any action in which the Office files a 

21 complaint on or after such date of enactment. 

22 (7) PATENT OWNER RESPONSE.— 

23 (A) CONDUCT OF INTER PARTES RE24 VIEW.—Paragraph (8) of section 316(a) of title 

25 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 (d) MANAGEMENT OF THE UNITED STATES PATENT

12 AND TRADEMARK OFFICE.— 

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

14 United States Code, is amended in the first sen15 tence— 

16 (A) by striking ‘‘be vested with the author17 ity to act in the capacity of the’’ and inserting 

18 ‘‘serve as Acting,’’; and 

19 (B) by inserting before the period ‘‘or in 

20 the event of a vacancy in the office of the Di21 rector.’’. 

22 (2) EFFECTIVE DATE.—The amendments made 

23 by paragraph (1) shall take effect on the date of en24 actment of this Act and shall apply with respect to 


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1 appointments and vacancies occurring before, on, or 

2 after the date of enactment of this Act. 

3 SEC. 15. EFFECTIVE DATE. 

4 Except as otherwise provided in this Act, the provi5 sions of this Act shall take effect on the date of enactment 

6 of this Act, and shall apply to any patent issued, or any 

7 action filed, on or after that date. 

8 SEC. 16. SEVERABILITY. 

9 If any provision of this Act, or an amendment made 

10 by this Act, or the application of such provision or amend11 ment to any person or circumstance, is held to be invalid, 

12 the remainder of this Act, or an amendment made by this 

13 Act, or the application of such provision to other persons 

14 or circumstances, shall not be affected. 

15 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

16 (a) SHORT TITLE.—This Act may be cited as the ‘‘Pro17 tecting American Talent and Entrepreneurship Act of 

18 2015’’ or the ‘‘PATENT Act’’. 

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

20 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Definitions. 

Sec. 3. Pleading requirements for patent infringement actions. 

Sec. 4. Customer-suit exception. 

Sec. 5. Discovery limits. 

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

Conference. 

Sec. 7. Fees and other expenses. 

Sec. 8. Requirement of clarity and specificity in demand letters. 

Sec. 9. Abusive demand letters. 

Sec. 10. Transparency of patent transfer. 

Sec. 11. Inter partes review and post-grant proceedings. 


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Sec. 12. Protection of intellectual property licenses in bankruptcy. 

Sec. 13. Small business education, outreach, and information access. 

Sec. 14. Studies on patent transactions, quality, and examination. 

Sec. 15. Technical corrections to the Leahy-Smith America Invents Act and other 

improvements. 

Sec. 16. Institutions of higher education and nonprofit research. 

Sec. 17. Effective date. 

Sec. 18. Severability. 

1 SEC. 2. DEFINITIONS. 

2 In this Act: 

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

4 Under Secretary of Commerce for Intellectual Prop5 erty and Director of the United States Patent and 

6 Trademark Office. 

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

8 United States Patent and Trademark Office. 

9 SEC. 3. PLEADING REQUIREMENTS FOR PATENT INFRINGE10 MENT ACTIONS. 

11 (a) ELIMINATION OF FORM 18.—Not later than 1 

12 month after the date of enactment of this Act, the Supreme 

13 Court, using existing resources, shall eliminate Form 18 in 

14 the Appendix to the Federal Rules of Civil Procedure (Com15 plaint for Patent Infringement). 

16 (b) PLEADING REQUIREMENTS.— 

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

18 States Code, is amended by inserting after section 281 

19 the following: 


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

3 ‘‘(a) PLEADING REQUIREMENTS.—In a civil action in 

4 which a party asserts a claim for relief arising under any 

5 Act of Congress relating to patents, a party alleging in6 fringement shall include in a complaint, counterclaim, or 

7 cross-claim for patent infringement, except as provided in 

8 subsection (c), the following: 

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

10 infringed. 

11 ‘‘(2) An identification of each claim of each pat12 ent identified under paragraph (1) that is allegedly 

13 infringed. 

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

15 (2), an identification of each accused process, ma16 chine, manufacture, or composition of matter (re17 ferred to in this section as an ‘accused instrumen18 tality’) alleged to infringe the claim. 

19 ‘‘(4) For each accused instrumentality identified 

20 under paragraph (3), an identification with particu21 larity, if known, of— 

22 ‘‘(A) the name or model number (or a rep23 resentative model number) of each accused in24 strumentality; or 

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

26 a description of each accused instrumentality. 


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1 ‘‘(5) For each claim identified under paragraph 

2 (2), a description of the elements thereof that are al3 leged to be infringed by the accused instrumentality 

4 and how the accused instrumentality is alleged to in5 fringe those elements. 

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

7 description of the acts of the alleged infringer that are 

8 alleged to contribute to or induce the direct infringe9 ment. 

10 ‘‘(b) DISMISSAL FOR FAILURE TO MEET PLEADING

11 REQUIREMENTS.—The court shall, on the motion of any 

12 party, dismiss any count or counts of the complaint, coun13 terclaim, or cross-claim for patent infringement if the re14 quirements of paragraphs (1) through (6) of subsection (a) 

15 are not met with respect to such count or counts. The fact 

16 that a party pleads in accordance with subsection (c) shall 

17 not be a basis for dismissal if the party nonetheless states 

18 a plausible claim for relief sufficient under the Federal 

19 Rules of Civil Procedure. 

20 ‘‘(c) INFORMATION NOT ACCESSIBLE.—If some subset 

21 of information required to comply with subsection (a) is 

22 not accessible to a party after an inquiry reasonable under 

23 the circumstances, consistent with rule 11 of the Federal 

24 Rules of Civil Procedure, an allegation requiring that infor25 mation may be based upon a general description of that 


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1 information, along with a statement as to why the informa2 tion is not accessible. 

3 ‘‘(d) AMENDMENT OF PLEADINGS.—Nothing in this 

4 provision shall be construed to affect a party’s leave to 

5 amend pleadings as specified in the Federal Rules of Civil 

6 Procedure. Amendments permitted by the court are subject 

7 to the pleading requirements set forth in this section. 

8 ‘‘(e) CONFIDENTIAL INFORMATION.—A party required 

9 to disclose information described under subsection (a) may 

10 file information believed to be confidential under seal, with 

11 a motion setting forth good cause for such sealing. If such 

12 motion is denied by the court, the party may seek to file 

13 an amended pleading. 

14 ‘‘(f) EXEMPTION.—Subsection (a) shall not apply to 

15 a civil action that includes a claim for relief arising under 

16 section 271(e). 

17 ‘‘§ 281B. Early disclosure requirements for patent in18 fringement actions 

19 ‘‘(a) DEFINITIONS.—In this section— 

20 ‘‘(1) the term ‘financial interest’— 

21 ‘‘(A) means— 

22 ‘‘(i) with regard to a patent or patents, 

23 the right of a person to receive proceeds 

24 from the assertion of the patent or patents, 


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1 including a fixed or variable portion of such 

2 proceeds; and 

3 ‘‘(ii) with regard to the patentee, direct 

4 or indirect ownership or control by a person 

5 of more than 20 percent of the patentee; and 

6 ‘‘(B) does not mean— 

7 ‘‘(i) ownership of shares or other inter8 ests in a mutual or common investment 

9 fund, unless the owner of such interest par10 ticipates in the management of such fund; 

11 or 

12 ‘‘(ii) the proprietary interest of a pol13 icyholder in a mutual insurance company 

14 or a depositor in a mutual savings associa15 tion, or a similar proprietary interest, un16 less the outcome of the proceeding could sub17 stantially affect the value of such interest; 

18 ‘‘(2) the term ‘patentee’ means a party in a civil 

19 action that files a pleading subject to the requirements 

20 of section 281A; 

21 ‘‘(3) the term ‘proceeding’ means all stages of a 

22 civil action, including pretrial and trial proceedings 

23 and appellate review; and 

24 ‘‘(4) the term ‘ultimate parent entity’ has the 

25 meaning given the term in section 261A. 


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1 ‘‘(b) EARLY DISCLOSURE REQUIREMENTS.—Notwith2 standing the requirements of section 299B, a patentee shall 

3 disclose to the court and each adverse party, not later than 

4 14 days after the date on which the patentee serves or files 

5 the pleading subject to the requirements of section 281A— 

6 ‘‘(1) the identity of each— 

7 ‘‘(A) assignee of the patent or patents at 

8 issue, and any ultimate parent entity thereof; 

9 ‘‘(B) entity with a right to sublicense to un10 affiliated entities or to enforce the patent or pat11 ents at issue, and any ultimate parent entity 

12 thereof; and 

13 ‘‘(C) entity, other than an entity the ulti14 mate parent of which is disclosed under subpara15 graph (A) or (B), that the patentee knows to 

16 have a financial interest in— 

17 ‘‘(i) the patent or patents at issue; or 

18 ‘‘(ii) the patentee, and any ultimate 

19 parent entity thereof; and 

20 ‘‘(2) for each patent that the patentee alleges to 

21 be infringed— 

22 ‘‘(A) a list of each complaint, counterclaim, 

23 or cross-claim filed by the patentee or an affil24 iate thereof in the United States during the 3- 

25 year period preceding the date of the filing of the 


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1 action, and any other complaint, counterclaim, 

2 or cross-claim filed in the United States during 

3 that period of which the patentee has knowledge, 

4 that asserts or asserted such patent, including— 

5 ‘‘(i) the caption; 

6 ‘‘(ii) the civil action number; 

7 ‘‘(iii) the court where the action was 

8 filed; and 

9 ‘‘(iv) if applicable, any court to which 

10 the action was transferred; 

11 ‘‘(B) a statement as to whether the patent 

12 is subject to an assurance made by the party to 

13 a standards development organization to license 

14 others under such patent if— 

15 ‘‘(i) the assurance specifically identi16 fies such patent or claims therein; and 

17 ‘‘(ii) the allegation of infringement re18 lates to such standard; and 

19 ‘‘(C) a statement as to whether the Federal 

20 Government has imposed specific licensing re21 quirements with respect to such patent. 

22 ‘‘(c) DISCLOSURE OF FINANCIAL INTEREST.— 

23 ‘‘(1) PUBLICLY TRADED.—For purposes of sub24 section (b)(1)(C), if the financial interest is held by 

25 a corporation traded on a public stock exchange, an 


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1 identification of the name of the corporation and the 

2 public exchange listing shall satisfy the disclosure re3 quirement. 

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

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

6 held by a publicly traded corporation, the disclosure 

7 shall satisfy the disclosure requirement if the informa8 tion identifies— 

9 ‘‘(A) in the case of a partnership, the name 

10 of the partnership, the address of the principal 

11 place of business, and the name and correspond12 ence address of the registered agent; 

13 ‘‘(B) in the case of a corporation, the name 

14 of the corporation, the location of incorporation, 

15 and the address of the principal place of busi16 ness; and 

17 ‘‘(C) for each individual, the name and cor18 respondence address of that individual. 

19 ‘‘(d) PROVISION OF INFORMATION TO THE UNITED

20 STATES PATENT AND TRADEMARK OFFICE.—Not later than 

21 1 month after the date on which the disclosures required 

22 under subsection (b) are made, the patentee shall provide 

23 to the United States Patent and Trademark Office a filing 

24 containing the information disclosed pursuant to subsection 

25 (b)(1). 


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1 ‘‘(e) CONFIDENTIAL INFORMATION.— 

2 ‘‘(1) IN GENERAL.—A patentee required to dis3 close information under subsection (b) may file, under 

4 seal, information believed to be confidential, with a 

5 motion setting forth good cause for such sealing. 

6 ‘‘(2) HOME ADDRESS INFORMATION.—For pur7 poses of this section, the home address of an indi8 vidual shall be considered to be confidential informa9 tion.’’. 

10 (2) CONFORMING AMENDMENT.—The table of sec11 tions for chapter 29 of title 35, United States Code, 

12 is amended by inserting after the item relating to sec13 tion 281 the following new items: 

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

‘‘281B. Early disclosure requirements for patent infringement actions.’’. 

14 SEC. 4. CUSTOMER-SUIT EXCEPTION. 

15 (a) IN GENERAL.—Chapter 29 of title 35, United 

16 States Code, is amended by adding at the end the following: 

17 ‘‘§ 299A. Customer stay 

18 ‘‘(a) DEFINITIONS.—In this section— 

19 ‘‘(1) the term ‘covered customer’ means a retailer 

20 or end user that is accused of infringing a patent or 

21 patents in dispute based on— 

22 ‘‘(A) the sale, or offer for sale, of a covered 

23 product or covered process without material 

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1 ner that is alleged to infringe a patent or patents 

2 in dispute; or 

3 ‘‘(B) the use by such retailer, the retailer’s 

4 end user customer, or an end user of a covered 

5 product or covered process without material 

6 modification of the product or process in a man7 ner that is alleged to infringe a patent or patents 

8 in dispute; 

9 ‘‘(2) the term ‘covered manufacturer’ means a 

10 person who manufactures or supplies, or causes the 

11 manufacture or supply of, a covered product or cov12 ered process, or a relevant part thereof; 

13 ‘‘(3) the term ‘covered process’ means a process, 

14 method, or a relevant part thereof, that is alleged to 

15 infringe the patent or patents in dispute where such 

16 process, method, or relevant part thereof is imple17 mented by an apparatus, material, system, software 

18 or other instrumentality that is provided by the cov19 ered manufacturer; 

20 ‘‘(4) the term ‘covered product’ means a compo21 nent, product, system, service, or a relevant part 

22 thereof, that— 

23 ‘‘(A) is alleged to infringe the patent or pat24 ents in dispute; or 


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1 ‘‘(B) implements a process alleged to in2 fringe the patent or patents in dispute; 

3 ‘‘(5) for purposes of this section, the term ‘end 

4 user’ shall include an affiliate of such an end user, 

5 but shall not include an entity that manufactures or 

6 causes the manufacture of a covered product or cov7 ered process or a relevant part thereof; 

8 ‘‘(6) the term ‘retailer’ means an entity that gen9 erates its revenues predominately through the sale to 

10 the public of consumer goods or services, or an affil11 iate of such entity, but shall not include an entity 

12 that manufactures or causes the manufacture of a cov13 ered product or covered process or a relevant part 

14 thereof; and 

15 ‘‘(7) for purposes of the definitions in para16 graphs (5) and (6), the terms ‘use’ and ‘sale’ mean 

17 the use and the sale, respectively, within the meanings 

18 given those terms under section 271. 

19 ‘‘(b) MOTION FOR STAY.—In a civil action in which 

20 a party asserts a claim for relief arising under any Act 

21 of Congress relating to patents (other than an action that 

22 includes a cause of action described in section 271(e)), the 

23 court shall grant a motion to stay at least the portion of 

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1 fringement of a patent involving a covered product or cov2 ered process if— 

3 ‘‘(1) the covered manufacturer is a party to the 

4 action or a separate action in a Federal court of the 

5 United States involving the same patent or patents 

6 relating to the same covered product or covered proc7 ess; 

8 ‘‘(2) the covered customer agrees to be bound as 

9 to issues determined in an action described in para10 graph (1) without a full and fair opportunity to sep11 arately litigate any such issue, but only as to those 

12 issues for which all other elements of the common law 

13 doctrine of issue preclusion are met; and 

14 ‘‘(3) the motion is filed after the first pleading 

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

16 ‘‘(A) 90 days after service of the first plead17 ing or paper in the action that specifically iden18 tifies the covered product or covered process as a 

19 basis for the alleged infringement of the patent 

20 by the covered customer, and specifically identi21 fies how the covered product or covered process is 

22 alleged to infringe the patent; or 

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

24 order in the case is entered. 


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1 ‘‘(c) MANUFACTURER CONSENT IN CERTAIN CASES.— 

2 If the covered manufacturer has been made a party to the 

3 action on motion by the covered customer, then a motion 

4 under subsection (b) may only be granted if the covered 

5 manufacturer and the covered customer agree in writing to 

6 the stay. 

7 ‘‘(d) LIFT OF STAY.— 

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

9 section may be lifted upon grant of a motion based 

10 on a showing that— 

11 ‘‘(A) the action involving the covered manu12 facturer will not resolve major issues in the suit 

13 against the covered customer, such as that a cov14 ered product or covered process identified in the 

15 motion to lift the stay is not a material part of 

16 the claimed invention or inventions in the patent 

17 or patents in dispute; or 

18 ‘‘(B) the stay unreasonably prejudices or 

19 would be manifestly unjust to the party seeking 

20 to lift the stay. 

21 ‘‘(2) SEPARATE ACTIONS.—In the case of a stay 

22 entered under this section based on the participation 

23 of the covered manufacturer in a separate action de24 scribed in subsection (b)(1), a motion under para25 graph (1) may only be granted if the court in such 


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1 separate action determines that the showing required 

2 under paragraph (1) has been made. 

3 ‘‘(e) WAIVER OF ESTOPPEL EFFECT.—If, following the 

4 grant of a motion to stay under this section, the covered 

5 manufacturer in an action described in subsection (b)(1)— 

6 ‘‘(1) obtains or consents to entry of a consent 

7 judgment involving one or more of the issues that 

8 gave rise to the stay; or 

9 ‘‘(2) fails to prosecute to a final, non-appealable 

10 judgment a final decision as to one or more of the 

11 issues that gave rise to the stay, 

12 the court may, upon motion, determine that such consent 

13 judgment or unappealed final decision shall not be binding 

14 on the covered customer with respect to one or more of the 

15 issues that gave rise to the stay based on a showing that 

16 such an outcome would unreasonably prejudice or be mani17 festly unjust to the covered customer in light of the cir18 cumstances of the case. 

19 ‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec20 tion shall be construed to limit the ability of a court to 

21 grant any stay, expand any stay granted pursuant to this 

22 section, or grant any motion to intervene, if otherwise per23 mitted by law.’’. 


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1 (b) CONFORMING AMENDMENT.—The table of sections 

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

3 by adding at the end the following: 

‘‘299A. Customer stay.’’. 

4 SEC. 5. DISCOVERY LIMITS. 

5 (a) AMENDMENT.—Chapter 29 of title 35, United 

6 States Code, as amended by section 4, is amended by adding 

7 at the end the following: 

8 ‘‘§ 299B. Discovery in patent infringement action 

9 ‘‘(a) DISCOVERY IN PATENT INFRINGEMENT ACTION.— 

10 ‘‘(1) IN GENERAL.—Except as provided in sub11 sections (b) and (c), in a civil action arising under 

12 any Act of Congress relating to patents, discovery 

13 shall be stayed during the pendency of 1 or more mo14 tions described in paragraph (2) if the motion or mo15 tions were filed prior to the first responsive pleading. 

16 ‘‘(2) MOTIONS DESCRIBED.—The motions de17 scribed in this paragraph are— 

18 ‘‘(A) a motion to dismiss; 

19 ‘‘(B) a motion to transfer venue; and 

20 ‘‘(C) a motion to sever accused infringers. 

21 ‘‘(b) DISCRETION TO EXPAND SCOPE OF DIS22 COVERY.— 

23 ‘‘(1) RESOLUTION OF MOTIONS.—A court may 

24 allow limited discovery necessary to resolve a motion 

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1 nary relief properly raised by a party before or dur2 ing the pendency of a motion described in subsection 

3 (a). 

4 ‘‘(2) ADDITIONAL DISCOVERY.—On motion, a 

5 court may allow additional discovery if the court 

6 finds that such discovery is necessary to preserve evi7 dence or otherwise prevent specific prejudice to a 

8 party. 

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

10 ‘‘(1) VOLUNTARY EXCLUSION.—The parties to an 

11 action described in subsection (a) may voluntarily 

12 consent to be excluded, in whole or in part, from the 

13 limitation on discovery under subsection (a). 

14 ‘‘(2) CLAIMS UNDER SECTION 271(e).—This sec15 tion shall not apply to a civil action that includes a 

16 claim for relief arising under section 271(e). 

17 ‘‘(d) RULES OF CONSTRUCTION.— 

18 ‘‘(1) TIMELINE FOR RESPONSIVE PLEADINGS.— 

19 Nothing in this section shall be construed to alter the 

20 time provided by the Federal Rules of Civil Procedure 

21 for the filing of responsive pleadings. 

22 ‘‘(2) EXCHANGE OF CONTENTIONS.—Nothing in 

23 this section shall prohibit a court from ordering, or 

24 local rules from requiring, the exchange of contentions 

25 regarding infringement, non-infringement, invalidity, 


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1 or other issues, by interrogatories or other written 

2 initial disclosures, at an appropriate time determined 

3 by the court.’’. 

4 (b) CONFORMING AMENDMENT.—The table of sections 

5 for chapter 29 of title 35, United States Code, as amended 

6 by section 4, is amended by inserting after the item relating 

7 to section 299A the following: 

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

8 SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC9 OMMENDATIONS OF THE JUDICIAL CON10 FERENCE. 

11 (a) JUDICIAL CONFERENCE RULES AND PROCEDURES

12 ON DISCOVERY BURDENS AND COSTS.— 

13 (1) RULES AND PROCEDURES.—The Judicial 

14 Conference of the United States, using existing re15 sources, should develop rules and procedures to imple16 ment the discovery proposals described in paragraph 

17 (2) to address concerns regarding the asymmetries in 

18 discovery burdens and costs that may arise in a civil 

19 action arising under any Act of Congress relating to 

20 patents. 

21 (2) RULES AND PROCEDURES TO BE CONSID22 ERED.—The rules and procedures to be developed 

23 under paragraph (1) should address each of the fol24 lowing: 


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1 (A) DISCOVERY OF CORE DOCUMENTARY

2 EVIDENCE.—To what extent each party to the ac3 tion is entitled to receive core documentary evi4 dence and should be responsible for the costs of 

5 producing core documentary evidence within the 

6 possession or control of each such party, and to 

7 what extent each party to the action may seek 

8 noncore documentary discovery as otherwise pro9 vided in the Federal Rules of Civil Procedure. 

10 (B) ELECTRONIC COMMUNICATION.—If the 

11 parties request discovery of electronic commu12 nication, how such discovery should be phased to 

13 occur relative to the exchange of initial disclo14 sures and core documentary evidence, and ap15 propriate limitations to apply to such discovery. 

16 (C) ADDITIONAL DOCUMENT DISCOVERY.— 

17 The manner and extent to which the following 

18 should apply: 

19 (i) IN GENERAL.—Each party to the 

20 action may seek any additional document 

21 discovery beyond core documentary evidence 

22 as permitted under the Federal Rules of 

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1 ney’s fees, of the additional document dis2 covery. 

3 (ii) REQUIREMENTS FOR ADDITIONAL

4 DOCUMENT DISCOVERY.—Unless the parties 

5 mutually agree otherwise, no party may be 

6 permitted additional document discovery 

7 unless such a party posts a bond, or pro8 vides other security, in an amount sufficient 

9 to cover the expected costs of such additional 

10 document discovery, or makes a showing to 

11 the court that such party has the financial 

12 capacity to pay the costs of such additional 

13 document discovery. 

14 (iii) GOOD CAUSE MODIFICATION.—A 

15 court, upon motion and for good cause 

16 shown, may modify the requirements of sub17 paragraphs (A) and (B) and any definition 

18 under paragraph (3). Not later than 30 

19 days after the pretrial conference under rule 

20 16 of the Federal Rules of Civil Procedure, 

21 the parties shall jointly submit any pro22 posed modifications of the requirements of 

23 subparagraphs (A) and (B) and any defini24 tion under paragraph (3), unless the parties 

25 do not agree, in which case each party shall 


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1 submit any proposed modification of such 

2 party and a summary of the disagreement 

3 over the modification. 

4 (iv) COMPUTER CODE.—A court, upon 

5 motion and for good cause shown, may de6 termine that computer code should be in7 cluded in the discovery of core documentary 

8 evidence. The discovery of computer code 

9 shall occur after the parties have exchanged 

10 initial disclosures and other core documen11 tary evidence. 

12 (D) DISCOVERY SEQUENCE AND SCOPE.— 

13 The manner and extent to which the parties shall 

14 discuss and address in the written report filed 

15 pursuant to rule 26(f) of the Federal Rules of 

16 Civil Procedure the views and proposals of each 

17 party on the following: 

18 (i) When the discovery of core docu19 mentary evidence should be completed. 

20 (ii) Whether additional document dis21 covery will be sought under subparagraph 

22 (C). 

23 (iii) Any issues about infringement, 

24 invalidity, or damages that, if resolved be25 fore the additional discovery described in 


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1 subparagraph (C) commences, might sim2 plify or streamline the case. 

3 (3) SCOPE OF DOCUMENTARY EVIDENCE.—In de4 veloping rules or procedures under this section, the 

5 Judicial Conference should consider which kinds of 

6 evidence constitute ‘‘core documentary evidence’’. 

7 (4) DEFINITIONS.—In this subsection, the term 

8 ‘‘electronic communication’’ means any form of elec9 tronic communication, including email, text message, 

10 or instant message. 

11 (b) JUDICIAL CONFERENCE PATENT CASE MANAGE12 MENT.—The Judicial Conference of the United States, using 

13 existing resources, should develop case management proce14 dures to be implemented by the United States district courts 

15 and the United States Court of Federal Claims for any civil 

16 action arising under any Act of Congress relating to pat17 ents, including initial disclosure and early case manage18 ment conference practices that— 

19 (1) will identify any potential dispositive issues 

20 of the case; and 

21 (2) focus on early summary judgment motions 

22 when resolution of issues may lead to expedited dis23 position of the case. 


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1 SEC. 7. FEES AND OTHER EXPENSES. 

2 (a) SENSE OF CONGRESS.—It is the sense of Congress 

3 that, in patent cases, reasonable attorney fees should be paid 

4 by a non-prevailing party whose litigation position or con5 duct is not objectively reasonable. As the Supreme Court 

6 wrote in adopting this legal standard in the context of fee 

7 shifting under section 1447 of title 28, United States Code, 

8 this standard is intended to strike a balance; in patent 

9 cases, a more appropriate balance between protecting the 

10 right of a patent holder to enforce its patent on the one 

11 hand, and deterring abuses in patent litigation and threats 

12 thereof on the other. 

13 (b) AMENDMENT.—Section 285 of title 35, United 

14 States Code, is amended to read as follows: 

15 ‘‘§ 285. Fees and other expenses 

16 ‘‘(a) AWARD.—In connection with a civil action in 

17 which any party asserts a claim for relief arising under 

18 any Act of Congress relating to patents, upon motion by 

19 a prevailing party, the court shall determine whether the 

20 position of the non-prevailing party was objectively reason21 able in law and fact, and whether the conduct of the non22 prevailing party was objectively reasonable. If the court 

23 finds that the position of the non-prevailing party was not 

24 objectively reasonable in law or fact or that the conduct of 

25 the non-prevailing party was not objectively reasonable, the 

26 court shall award reasonable attorney fees to the prevailing 


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1 party unless special circumstances, such as undue economic 

2 hardship to a named inventor or an institution of higher 

3 education (as defined in section 101(a) of the Higher Edu4 cation Act of 1965 (20 U.S.C. 1001(a))), would make an 

5 award unjust. The prevailing party shall bear the burden 

6 of demonstrating that the prevailing party is entitled to an 

7 award. 

8 ‘‘(b) COVENANT NOT TO SUE.—A party to a civil ac9 tion who asserts a claim for relief arising under any Act 

10 of Congress relating to patents against another party, and 

11 who subsequently unilaterally (i) seeks dismissal of the ac12 tion without consent of the other party and (ii) extends to 

13 such other party a covenant not to sue for infringement 

14 with respect to the patent or patents at issue, may be the 

15 subject of a motion for attorney fees under subsection (a) 

16 as if it were a non-prevailing party, unless the party assert17 ing such claim would have been entitled, at the time that 

18 such covenant was extended, to dismiss voluntarily the ac19 tion without a court order under rule 41 of the Federal 

20 Rules of Civil Procedure, or the interests of justice require 

21 otherwise. 

22 ‘‘(c) RECOVERY OF AWARD.— 

23 ‘‘(1) CERTIFICATION; DISCLOSURE OF INTER24 ESTED PARTIES.— 


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1 ‘‘(A) INITIAL STATEMENT.—A party defend2 ing against a claim of infringement may file, 

3 not later than 14 days before a scheduling con4 ference is to be held or a scheduling order is due 

5 under rule 16(b) of the Federal Rules of Civil 

6 Procedure, a statement that such party holds a 

7 good faith belief, based on publicly-available in8 formation and any other information known to 

9 such party, that the primary business of the 

10 party alleging infringement is the assertion and 

11 enforcement of patents or the licensing resulting 

12 therefrom. 

13 ‘‘(B) CERTIFICATION.—Not later than 45 

14 days after being served with an initial statement 

15 under subparagraph (A), a party alleging in16 fringement shall file a certification that— 

17 ‘‘(i) establishes and certifies to the 

18 court, under oath, that it will have suffi19 cient funds available to satisfy any award 

20 of reasonable attorney fees under this sec21 tion if an award is assessed; 

22 ‘‘(ii) demonstrates that its primary 

23 business is not the assertion and enforce24 ment of patents or the licensing resulting 

25 therefrom; 


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1 ‘‘(iii) identifies interested parties, if 

2 any, as defined in paragraph (2) of this 

3 subsection; or 

4 ‘‘(iv) states that it has no such inter5 ested parties. 

6 A party alleging infringement shall have an on7 going obligation to supplement its certification 

8 under this subparagraph within 30 days after a 

9 material change to the information provided in 

10 its certification. 

11 ‘‘(C) NOTICE TO INTERESTED PARTY.—A 

12 party that files a certification under subpara13 graph (B)(iii) shall, prior to filing the certifi14 cation, provide each identified interested party 

15 actual notice in writing by service of notice in 

16 any district where the interested party may be 

17 found, such that jurisdiction shall be established 

18 over each interested party to the action for pur19 poses of enforcing an award of attorney fees 

20 under this section, consistent with the Constitu21 tion of the United States. The notice shall iden22 tify the action, the parties, the patents at issue, 

23 and the interest qualifying the party to be an in24 terested party. The notice shall inform the recipi25 ent that the recipient may be held accountable 


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1 under this subsection for any award of attorney 

2 fees, or a portion thereof, resulting from the ac3 tion in the event the party alleging infringement 

4 cannot satisfy the full amount of such an award, 

5 unless the recipient renounces its interest pursu6 ant to subparagraph (E) or is otherwise exempt 

7 from the applicability of this subsection. 

8 ‘‘(D) ACCOUNTABILITY FOR INTERESTED

9 PARTIES.—Any interested parties who are timely 

10 served with actual notice pursuant to subpara11 graph (C) and do not renounce their interests 

12 pursuant to subparagraph (E) or are not other13 wise exempt from the applicability of this sub14 section may be held accountable for any fees, or 

15 a portion thereof, awarded under this section in 

16 the event that the party alleging infringement 

17 cannot satisfy the full amount of the award. If 

18 a true and correct certification under clause (i) 

19 or (ii) of subparagraph (B) is timely filed with 

20 the court, interested parties shall not be subject 

21 to this subparagraph. 

22 ‘‘(E) RENUNCIATION OF INTEREST.—Any 

23 recipient of a notice under subparagraph (C) 

24 may submit a statement of renunciation of inter25 est in a binding document with notice to the 


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1 court and parties in the action not later than 90 

2 days after receipt of the notice under subpara3 graph (C). The statement shall be required to re4 nounce only such interest as would qualify the 

5 recipient as an interested party. 

6 ‘‘(F) INSTITUTIONS OF HIGHER EDUCATION

7 EXCEPTION.—Any institution of higher edu8 cation (as defined in section 101(a) of the High9 er Education Act of 1965 (20 U.S.C. 1001(a)) or 

10 under equivalent laws in foreign jurisdictions), 

11 or a non-profit technology transfer organization 

12 whose primary purpose is to facilitate the com13 mercialization of technologies developed by 1 or 

14 more institutions of higher education, may ex15 empt itself from the applicability of this sub16 section by filing a certification that it qualifies 

17 for the exception provided for in this subpara18 graph with the court and providing notice to the 

19 parties. 

20 ‘‘(G) INTEREST OF JUSTICE EXCEPTION.— 

21 Any recipient of a notice under subparagraph 

22 (C) may intervene in the action for purposes of 

23 contesting its identification as an interested 

24 party or its liability under this subsection, and 

25 a court may exempt any party identified as an 


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1 interested party from the applicability of this 

2 subsection as the interest of justice requires. 

3 ‘‘(2) INTERESTED PARTY.—In this section, the 

4 term ‘interested party’— 

5 ‘‘(A) means a person who has a substantial 

6 financial interest related to the proceeds from 

7 any settlement, license, or damages award result8 ing from the enforcement of the patent in the ac9 tion by the party alleging infringement; 

10 ‘‘(B) does not include an attorney or law 

11 firm providing legal representation in the action 

12 if the sole basis for the financial interest of the 

13 attorney or law firm in the outcome of the action 

14 arises from the attorney or law firm’s receipt of 

15 compensation reasonably related to the provision 

16 of the legal representation; 

17 ‘‘(C) does not include a person who has as18 signed all right, title, and interest in a patent, 

19 except for passive receipt of income, to an entity 

20 described in paragraph (1)(F), or who has a 

21 right to receive any portion of such passive in22 come; 

23 ‘‘(D) does not include a person who would 

24 be an interested party under subparagraph (A) 

25 but whose financial interest is based solely on an 


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1 equity or security interest established when the 

2 party alleging infringement’s primary business 

3 was not the assertion and enforcement of patents 

4 or the licensing resulting therefrom; and 

5 ‘‘(E) does not include a depository institu6 tion as defined in section 19(b)(1)(A) of the Fed7 eral Reserve Act (12 U.S.C. 461(b)(1)(A)) if the 

8 sole basis for the financial interest arises from a 

9 loan or other debt obligation. 

10 ‘‘(d) CLAIMS UNDER SECTION 271(e).— 

11 ‘‘(1) APPLICABILITY.—Subsections (a), (b), and 

12 (c) shall not apply to a civil action that includes a 

13 claim for relief arising under section 271(e). 

14 ‘‘(2) AWARD IN CERTAIN CLAIMS UNDER SECTION

15 271(e).—In a civil action that includes a claim for 

16 relief arising under section 271(e), the court may in 

17 exceptional cases award reasonable attorney fees to 

18 the prevailing party.’’. 

19 (c) CONFORMING AMENDMENT AND AMENDMENT.— 

20 (1) CONFORMING AMENDMENT.—The item relat21 ing to section 285 of the table of sections for chapter 

22 29 of title 35, United States Code, is amended to read 

23 as follows: 

‘‘285. Fees and other expenses.’’. 


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1 (2) AMENDMENT.—Section 273 of title 35, 

2 United States Code, is amended by striking sub3 sections (f) and (g). 

4 SEC. 8. REQUIREMENT OF CLARITY AND SPECIFICITY IN DE5 MAND LETTERS. 

6 (a) IN GENERAL.—Chapter 29 of title 35, United 

7 States Code, as amended by section 5, is amended by adding 

8 at the end the following: 

9 ‘‘§ 299C. Pre-suit written notice 

10 ‘‘(a) APPLICABILITY.—Subsection (b) shall not 

11 apply— 

12 ‘‘(1) to written communication between par13 ties— 

14 ‘‘(A) regarding existing licensing agree15 ments; 

16 ‘‘(B) as part of an ongoing licensing nego17 tiation, provided that the initial written notice 

18 complied with the requirements of subsection (b) 

19 of this section; or 

20 ‘‘(C) sent after the initial written notice, 

21 provided that the initial written notice complied 

22 with the requirements of subsection (b) of this 

23 section; or 

24 ‘‘(2) if the court determines it is in the interest 

25 of justice to waive the requirements of subsection (b). 


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1 ‘‘(b) WRITTEN NOTIFICATION REQUIREMENTS.— 

2 ‘‘(1) IN GENERAL.—In a civil action alleging in3 fringement of a patent in which the plaintiff has pro4 vided written notice of the accusation of infringement 

5 to the party accused of infringement prior to filing 

6 the action, the initial written notice shall be subject 

7 to paragraph (4) if it does not contain the informa8 tion required under paragraph (2) or if it contains 

9 a specific monetary amount described in paragraph 

10 (3). 

11 ‘‘(2) REQUIRED INFORMATION PROVIDED IN INI12 TIAL WRITTEN NOTICE.—The initial written notice 

13 described in paragraph (1) shall contain, at a min14 imum— 

15 ‘‘(A) an identification of— 

16 ‘‘(i) each patent believed to be in17 fringed, including the patent number; and 

18 ‘‘(ii) at least one claim of each patent 

19 that is believed to be infringed; 

20 ‘‘(B) an identification of each product, 

21 process, apparatus, or chemical composition, in22 cluding any manufacturer thereof, that is be23 lieved to infringe one or more claims of each pat24 ent under subparagraph (A); 


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1 ‘‘(C) a clear and detailed description of the 

2 reasons why the plaintiff believes each patent 

3 identified under subparagraph (A) is infringed; 

4 ‘‘(D) notice to the intended recipient that 

5 the intended recipient may have the right to a 

6 stay of any suit in accordance with section 

7 299A; and 

8 ‘‘(E) the identity of any person with the 

9 right to enforce each patent under subparagraph 

10 (A). 

11 ‘‘(3) SPECIFIC MONETARY AMOUNTS IN DEMAND

12 LETTERS.—Except with the consent of the intended 

13 recipient, the initial written notice described in para14 graph (1) is prohibited from containing— 

15 ‘‘(A) a request for, demand for, or offer to 

16 accept a specific monetary amount in exchange 

17 for a license, settlement, or similar agreement to 

18 resolve allegations of patent infringement; or 

19 ‘‘(B) a specific monetary amount demanded 

20 based on the cost of legal defense in a lawsuit 

21 concerning any asserted claim or claims. 

22 ‘‘(4) ADDITIONAL TIME TO RESPOND.—If the ini23 tial written notice provided to the defendant prior to 

24 the filing of the civil action did not contain the infor25 mation required by paragraph (2), or contained a 


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1 statement prohibited under paragraph (3), the defend2 ant’s time to respond to the complaint shall be ex3 tended by an additional 30 days.’’. 

4 (b) CONFORMING AMENDMENT.—The table of sections 

5 for chapter 29 of title 35, United States Code, as amended 

6 by section 5, is amended by adding at the end the following: 

‘‘299C. Pre-suit written notice.’’. 

7 (c) WILLFUL INFRINGEMENT.—Section 284 of title 35, 

8 United States Code, is amended— 

9 (1) in the first undesignated paragraph, by 

10 striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN11 ERAL.—Upon finding’’; 

12 (2) in the second undesignated paragraph, by 

13 striking ‘‘When the damages’’ and inserting ‘‘(b) AS14 SESSMENT BY COURT; TREBLE DAMAGES.—When the 

15 damages’’; 

16 (3) by inserting after subsection (b), as des17 ignated by paragraph (2), the following: 

18 ‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking to 

19 establish willful infringement may not rely on evidence of 

20 pre-suit notification of infringement unless that notifica21 tion complies with the standards set out in paragraphs (2) 

22 and (3) of section 299C(b).’’; and 

23 (4) in the last undesignated paragraph, by strik24 ing ‘‘The court’’ and inserting ‘‘(d) EXPERT TESTI25 MONY.—The court’’. 


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1 (d) EFFECTIVE DATE.—The amendments made by this 

2 section shall take effect on the date that is 1 year after the 

3 date of enactment of this Act and shall apply to any action 

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

5 SEC. 9. ABUSIVE DEMAND LETTERS. 

6 (a) BAD-FAITH DEMAND LETTERS.—Chapter 29 of 

7 title 35, United States Code, as amended by section 8, is 

8 amended by adding at the end the following: 

9 ‘‘§ 299D. Bad-faith demand letters 

10 ‘‘(a) DEFINITION.—In this section, the term ‘affiliated 

11 person’ means a person affiliated with the intended recipi12 ent of a written communication. 

13 ‘‘(b) CIVIL PENALTIES FOR CERTAIN UNFAIR OR DE14 CEPTIVE ACTS OR PRACTICES IN CONNECTION WITH ABU15 SIVE DEMAND LETTERS.—An unfair or deceptive act or 

16 practice within the meaning of section 5(a)(1) of the Fed17 eral Trade Commission Act (15 U.S.C. 45(a)(1)), in connec18 tion with the widespread sending of written communica19 tions representing that the intended recipients, or any per20 sons affiliated with those recipients, are or may be infring21 ing, or have or may have infringed, a patent and may bear 

22 liability or owe compensation to another, shall be treated 

23 as a violation of a rule defining an unfair or deceptive act 

24 or practice described under section 18(a)(1)(B) of the Fed25 eral Trade Commission Act (15 U.S.C. 57a(a)(1)(B)) if— 


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1 ‘‘(1)(A) the communications falsely— 

2 ‘‘(i) represent that administrative or judi3 cial relief has been sought against the recipient 

4 or others; or 

5 ‘‘(ii) threaten litigation if compensation is 

6 not paid, the infringement issue is not otherwise 

7 resolved, or the communication is not responded 

8 to; and 

9 ‘‘(B) there is a pattern of false representations or 

10 threats described in subparagraph (A) having been 

11 made without litigation or other relief then having 

12 been pursued; 

13 ‘‘(2) the assertions contained in the communica14 tions lack a reasonable basis in fact or law, because— 

15 ‘‘(A) the person asserting the patent is not 

16 a person, or does not represent a person, with the 

17 current right to license the patent to, or to en18 force the patent against, the intended recipients 

19 or any affiliated persons; 

20 ‘‘(B) the communications seek compensation 

21 on account of activities undertaken after the pat22 ent has expired; 

23 ‘‘(C) the communications seek compensation 

24 for a patent that has been held to be invalid or 

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1 tive proceeding that is unappealable or for which 

2 any opportunity for appeal is no longer avail3 able; 

4 ‘‘(D) the communications seek compensation 

5 for activities by the recipient that the sender 

6 knows do not infringe the patent because such 

7 activities are authorized by the patentee; 

8 ‘‘(E) the communications falsely represent 

9 that an investigation of the recipient’s alleged 

10 infringement has occurred; or 

11 ‘‘(F) the communications falsely represent 

12 that litigation has been filed against, or a license 

13 has been paid by, persons similarly situated to 

14 the recipient; or 

15 ‘‘(3) the content of the written communications 

16 is likely to materially mislead a reasonable recipient 

17 because the content fails to include facts reasonably 

18 necessary to inform the recipient— 

19 ‘‘(A) of the identity of the person asserting 

20 a right to license the patent to, or enforce the 

21 patent against, the intended recipient or any af22 filiated person; 

23 ‘‘(B) of the patent issued by the United 

24 States Patent and Trademark Office alleged to 

25 have been infringed; and 


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1 ‘‘(C) if infringement or the need to pay 

2 compensation for a license is alleged, of an iden3 tification of at least one product, service, or other 

4 activity of the recipient that is alleged to in5 fringe the identified patent or patents and, un6 less the information is not readily accessible, an 

7 explanation of the basis for such allegation. 

8 ‘‘(c) ENFORCEMENT BY FEDERAL TRADE COMMIS9 SION.— 

10 ‘‘(1) POWERS OF COMMISSION.—The Federal 

11 Trade Commission shall enforce this section in the 

12 same manner, by the same means, and with the same 

13 jurisdiction, powers, and duties as though all applica14 ble terms and provisions of the Federal Trade Com15 mission Act (15 U.S.C. 41 et seq.) were incorporated 

16 into and made a part of this section. 

17 ‘‘(2) PRIVILEGES AND IMMUNITIES.—Any person 

18 who engages in an act or practice described in sub19 section (b) shall be subject to the penalties and enti20 tled to the privileges and immunities provided in the 

21 Federal Trade Commission Act (15 U.S.C. 41 et seq.). 

22 ‘‘(d) AUTHORITY PRESERVED.—Nothing in this sec23 tion shall be construed to— 


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1 ‘‘(1) limit, modify, or expand the authority of 

2 the Federal Trade Commission under any other pro3 vision of law; or 

4 ‘‘(2) alter any defense currently available under 

5 the Federal Trade Commission Act (15 U.S.C. 41 et 

6 seq.).’’. 

7 (b) TECHNICAL AND CONFORMING AMENDMENT.—The 

8 table of sections for chapter 29 of title 35, United States 

9 Code, as amended by section 8, is amended by inserting 

10 after the item relating to section 299C the following: 

‘‘299D. Bad-faith demand letters.’’. 

11 SEC. 10. TRANSPARENCY OF PATENT TRANSFER. 

12 (a) PATENT AND TRADEMARK OFFICE PRO13 CEEDINGS.— 

14 (1) IN GENERAL.—Chapter 26 of title 35, United 

15 States Code, is amended by inserting after section 261 

16 the following: 

17 ‘‘§ 261A. Disclosure of information relating to patent 

18 ownership 

19 ‘‘(a) DEFINITIONS.—In this section: 

20 ‘‘(1) PERIOD OF NONCOMPLIANCE.—The term 

21 ‘period of noncompliance’ refers to a period of time 

22 during which the assignee or the ultimate parent enti23 ty of an assignee of a patent has not been disclosed 

24 to the United States Patent and Trademark Office in 

25 accordance with this section. 


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1 ‘‘(2) ULTIMATE PARENT ENTITY.— 

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

3 subparagraph (B), the term ‘ultimate parent en4 tity’ has the meaning given such term in section 

5 801.1(a)(3) of title 16, Code of Federal Regula6 tions, or any successor regulation. 

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

8 Director may by regulation modify the definition 

9 of the term ‘ultimate parent entity’. 

10 ‘‘(b) REQUIREMENT TO DISCLOSE ASSIGNMENT.—An 

11 assignment of all substantial rights in an issued patent 

12 shall be recorded in the Patent and Trademark Office— 

13 ‘‘(1) not later than the date on which the patent 

14 is issued; and 

15 ‘‘(2) when any subsequent assignment is made 

16 that results in a change to the ultimate parent enti17 ty— 

18 ‘‘(A) not later than 3 months after the date 

19 on which such assignment is made; or 

20 ‘‘(B) in the case of an assignment made as 

21 part of a corporate acquisition that meets the re22 porting thresholds under section 7A(a)(2) of the 

23 Clayton Act (15 U.S.C. 18a(a)(2)), not later 

24 than 6 months after the closing date of such ac25 quisition. 


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1 ‘‘(c) DISCLOSURE REQUIREMENTS.—A disclosure 

2 under subsection (b) shall include the name of the assignee 

3 and the ultimate parent entity of the assignee. 

4 ‘‘(d) FAILURE TO COMPLY.—In a civil action in which 

5 a party asserts a claim for infringement of a patent, if there 

6 was a failure to comply with subsection (b) for the patent— 

7 ‘‘(1) the party asserting infringement of the pat8 ent may not recover increased damages under section 

9 284 or attorney fees under section 285 with respect to 

10 infringing activities taking place during any period 

11 of noncompliance, unless the denial of such damages 

12 or fees would be manifestly unjust; and 

13 ‘‘(2) the court shall award to a prevailing ac14 cused infringer reasonable attorney fees and expenses 

15 incurred in discovering the identity of any undis16 closed entity required to be disclosed under subsection 

17 (b), unless such sanctions would be manifestly un18 just.’’. 

19 (2) APPLICABILITY.—The amendment made by 

20 paragraph (1) shall apply to any patent for which a 

21 notice of allowance is issued on or after the date of 

22 enactment of this Act. 

23 (3) CONFORMING AMENDMENT.—The table of sec24 tions for chapter 26 of title 35, United States Code, 


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1 is amended by adding at the end the following new 

2 item: 

‘‘261A. Disclosure of information relating to patent ownership.’’. 

3 (b) REGULATIONS.—The Director may promulgate 

4 such regulations as are necessary to establish a registration 

5 fee in an amount sufficient to recover the estimated costs 

6 of administering section 261A of title 35, United States 

7 Code, as added by subsection (a), to facilitate the collection 

8 and maintenance of the information required by the amend9 ments made by this section and section 3(b) of this Act, 

10 and to ensure the timely disclosure of such information to 

11 the public. 

12 SEC. 11. INTER PARTES REVIEW AND POST-GRANT PRO13 CEEDINGS. 

14 (a) AMENDMENTS TO CHAPTER 31.—Chapter 31 of 

15 title 35, United States Code, is amended— 

16 (1) in section 313— 

17 (A) by striking ‘‘If an’’ and inserting ‘‘(a) 

18 IN GENERAL.—If an’’; and 

19 (B) by adding at the end the following: 

20 ‘‘(b) SUPPORTING EVIDENCE.—A preliminary re21 sponse filed under subsection (a) may be supported by affi22 davits or declarations of supporting evidence and opinions, 

23 or such other information as the Director may require by 

24 regulation. The petitioner may seek leave to file a reply to 


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1 respond to new issues raised in the preliminary response, 

2 within a time period set by the Director.’’; 

3 (2) in section 314— 

4 (A) in subsection (a)— 

5 (i) by striking ‘‘The Director’’ and in6 serting the following: 

7 ‘‘(1) The Director’’; 

8 (ii) by inserting ‘‘and any reply’’ after 

9 ‘‘any response’’; and 

10 (iii) by adding at the end the fol11 lowing: 

12 ‘‘(2) The Director may choose not to institute a 

13 proceeding under this section if the Director deter14 mines that institution would not serve the interests of 

15 justice. In making this determination, the Director 

16 shall consider, among other appropriate factors, 

17 whether the grounds of unpatentability on prior art 

18 or arguments set forth in the petition are the same or 

19 substantially the same as those considered and de20 cided in a prior judicial proceeding, or in a prior 

21 proceeding before the Office involving the same claim 

22 or claims (including a decision by the Director not to 

23 institute a proceeding under this chapter), and wheth24 er there is another proceeding or matter involving the 

25 same patent pending before the Office. 


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1 ‘‘(3) An inter partes review shall not be insti2 tuted on the basis that the evidentiary standard before 

3 the Office differs from the evidentiary standard that 

4 was used in a proceeding before a court of the United 

5 States to adjudicate the claim or claims challenged in 

6 the petition.’’; and 

7 (B) in subsection (b)— 

8 (i) in paragraph (1), by striking ‘‘re9 ceiving a preliminary response to the peti10 tion’’ and inserting ‘‘receiving the last of a 

11 preliminary response to the petition or a 

12 reply’’; and 

13 (ii) in paragraph (2)— 

14 (I) by striking ‘‘is filed, the’’ and 

15 inserting ‘‘is filed or reply is requested, 

16 the’’; and 

17 (II) by inserting ‘‘or reply may be 

18 requested’’ after ‘‘may be filed’’; 

19 (3) in section 315— 

20 (A) by amending subsection (b) to read as 

21 follows: 

22 ‘‘(b) PATENT OWNER’S ACTION.—An inter partes re23 view may not be instituted with respect to a particular 

24 claim of a patent if the petition requesting the proceeding 

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1 tioner, real party in interest, or privy of the petitioner is 

2 served with a complaint alleging infringement of that pat3 ent claim. The time limitation set forth in the preceding 

4 sentence shall not apply to a request for joinder under sub5 section (c).’’; 

6 (B) in subsection (c), by adding at the end 

7 the following: ‘‘A petitioner may petition to add 

8 additional patent claims in an instituted inter 

9 partes review in which the petitioner is a party, 

10 if such petition is made within 1 year after the 

11 date on which that petitioner, or the real party 

12 in interest or privy of that petitioner, is served 

13 with an amended complaint or other paper in a 

14 pending litigation for the first time alleging in15 fringement by one or more of them of those pat16 ent claims to be added.’’; and 

17 (C) in subsection (e), by adding at the end 

18 the following: 

19 ‘‘(3) REPRESENTATION BY EITHER PARTY.—A 

20 party in an inter partes review of a claim in a pat21 ent under this chapter, or the real party in interest 

22 or privy of such party, shall be bound in a subsequent 

23 proceeding before the Office or civil action in a court 

24 of the United States by any representations regarding 

25 claim construction made by the party during the 


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1 inter partes review with respect to the prosecution 

2 history of the patent that were finally adopted by the 

3 Office in deciding the inter partes review.’’; and 

4 (4) in section 316— 

5 (A) in subsection (a)— 

6 (i) in paragraph (5), by redesignating 

7 subparagraphs (A) and (B) as clauses (i) 

8 and (ii), respectively, and by adjusting the 

9 margins accordingly; 

10 (ii) by redesignating paragraphs (1) 

11 through (13) as subparagraphs (A) through 

12 (M), respectively, and adjusting the margins 

13 accordingly; 

14 (iii) by striking ‘‘The Director shall 

15 prescribe regulations—’’ and inserting the 

16 following: 

17 ‘‘(1) IN GENERAL.—The Director shall prescribe 

18 regulations—’’; 

19 (iv) by amending subparagraph (J), as 

20 redesignated, to read as follows: 

21 ‘‘(J) providing either party with the right 

22 to have testimony (including cross examination 

23 of adverse witnesses) heard live by the panel de24 ciding the review where the panel finds that such 

25 testimony would facilitate resolution of the case 


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1 because genuine issues of material fact, con2 flicting expert opinions, or issues of witness 

3 credibility exist, followed by an oral hearing be4 fore that panel as part of the proceeding;’’; 

5 (v) in subparagraph (L), as redesig6 nated, by striking ‘‘and’’; 

7 (vi) in subparagraph (M), as redesig8 nated, by striking the period at the end and 

9 inserting the following: ‘‘, including not less 

10 than 1 meaningful opportunity to respond 

11 to any substitute claim offered as an 

12 amendment to the patent under subsection 

13 (d);’’; and 

14 (vii) by adding at the end the fol15 lowing: 

16 ‘‘(N) providing that for all purposes under 

17 this chapter— 

18 ‘‘(i) each claim of a patent shall be 

19 construed as such claim would be in a civil 

20 action to invalidate a patent under section 

21 282(b), including construing each claim of 

22 the patent in accordance with the ordinary 

23 and customary meaning of such claim as 

24 understood by one of ordinary skill in the 


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1 art and the prosecution history pertaining 

2 to the patent; and 

3 ‘‘(ii) if a court of the United States has 

4 previously construed the claim or a claim 

5 term, or made a determination as to the 

6 patent’s validity, in a proceeding or an ac7 tion in which the patent owner was a 

8 party, the Office shall consider such claim 

9 construction or determination; and 

10 ‘‘(O) requiring that all decisions of the Pat11 ent Trial and Appeal Board in its proceedings 

12 be available to the public in an easily accessible, 

13 searchable form. 

14 ‘‘(2) REQUIREMENTS.—The regulations pre15 scribed under paragraph (1)(I) shall provide that— 

16 ‘‘(A) an amendment to propose 1 or more 

17 substitute claims shall be made in the patent 

18 holder’s first paper following institution (other 

19 than a request for rehearing) and not later than 

20 30 days after the institution of the proceeding, 

21 unless otherwise agreed to by the parties; 

22 ‘‘(B) any substitute claim must narrow the 

23 scope of the cancelled claim and may not intro24 duce new subject matter; 


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1 ‘‘(C) any amendment shall respond to a 

2 ground of unpatentability involved in the trial; 

3 ‘‘(D) the petitioner shall have a meaningful 

4 opportunity to file a written response as to 

5 whether the substitute claim meets the require6 ments of subparagraphs (A) through (C) and 

7 whether the substitute claim is unpatentable; and 

8 ‘‘(E) if a substitute claim meets the require9 ments of subparagraphs (A) through (C), the pe10 titioner shall have the burden of proving a prop11 osition of unpatentability of the substitute claim 

12 by a preponderance of the evidence.’’; 

13 (B) in subsection (b), by inserting ‘‘the in14 terests in clarity in scope and reliance on intel15 lectual property rights,’’ after ‘‘patent system,’’; 

16 and 

17 (C) in subsection (e)— 

18 (i) by striking ‘‘In an inter partes’’ 

19 and inserting ‘‘(1) IN GENERAL.—In an 

20 inter partes’’; 

21 (ii) by striking ‘‘the petitioner’’ and 

22 inserting ‘‘the challenged patent shall be 

23 presumed to be valid. The petitioner’’; and 

24 (iii) by adding at the end the fol25 lowing: 


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1 ‘‘(2) RULE OF CONSTRUCTION.—Nothing in this 

2 subsection shall be construed to impact the operation 

3 of section 282(a) in proceedings in a court of the 

4 United States.’’. 

5 (b) AMENDMENTS TO CHAPTER 32.—Chapter 32 of 

6 title 35, United States Code, is amended— 

7 (1) in section 323— 

8 (A) by striking ‘‘If a post-grant’’ and in9 serting ‘‘(a) IN GENERAL.—If a post-grant’’; and 

10 (B) by adding at the end the following: 

11 ‘‘(b) SUPPORTING EVIDENCE.—A preliminary re12 sponse filed under subsection (a) may be supported by affi13 davits or declarations of supporting evidence and opinions, 

14 or such other information as the Director may require by 

15 regulation. The petitioner may seek leave to file a reply to 

16 respond to new issues raised in the preliminary response, 

17 within a time period set by the Director.’’; 

18 (2) in section 324— 

19 (A) in subsection (a)— 

20 (i) by striking ‘‘The Director’’ and in21 serting the following: 

22 ‘‘(1) The Director’’; and 

23 (ii) by adding at the end the following: 

24 ‘‘(2) The Director may choose not to institute a 

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1 mines that institution would not serve the interests of 

2 justice. In making this determination, the Director 

3 shall consider, among other appropriate factors, the 

4 grounds of unpatentability on prior art or arguments 

5 set forth in the petition are the same or substantially 

6 the same as those considered and decided in a prior 

7 judicial proceeding, or in a prior proceeding before 

8 the Office involving the same claim or claims (includ9 ing a decision by the Director not to institute a pro10 ceeding under this chapter), and whether there is an11 other proceeding or matter involving the same patent 

12 pending before the Office.’’; and 

13 (B) in subsection (c)— 

14 (i) in paragraph (1), by striking ‘‘re15 ceiving a preliminary response to the peti16 tion’’ and inserting ‘‘receiving the last of a 

17 preliminary response to the petition or a 

18 reply’’; and 

19 (ii) in paragraph (2)— 

20 (I) by striking ‘‘is filed, the’’ and 

21 inserting ‘‘is filed or reply is requested, 

22 the’’; and 

23 (II) by inserting ‘‘or reply may be 

24 requested’’ after ‘‘may be filed’’; 


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1 (3) in section 325(e), by adding at the end the 

2 following: 

3 ‘‘(3) REPRESENTATIONS BY EITHER PARTY.—A 

4 party in a post grant review of a claim in a patent 

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

6 privy of such party, shall be bound in a subsequent 

7 proceeding before the Office or civil action in a court 

8 of the United States by any representations regarding 

9 claim construction made by the party during the post 

10 grant review with respect to the prosecution history of 

11 the patent that were finally adopted by the Office in 

12 deciding the post grant review.’’; and 

13 (4) in section 326— 

14 (A) in subsection (a)— 

15 (i) by redesignating paragraphs (1) 

16 through (12) as subparagraphs (A) through 

17 (L), respectively, and adjusting the margins 

18 accordingly; 

19 (ii) by striking ‘‘The Director shall 

20 prescribe regulations—’’ and inserting the 

21 following: 

22 ‘‘(1) IN GENERAL.—The Director shall prescribe 

23 regulations—’’; 

24 (iii) by amending subparagraph (J), 

25 as redesignated, to read as follows: 


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1 ‘‘(J) providing either party with the right 

2 to have testimony (including cross examination 

3 of adverse witnesses) heard live by the panel de4 ciding the review where the panel finds that such 

5 testimony would facilitate resolution of the case 

6 because genuine issues of material fact, con7 flicting expert opinions, or issues of witness 

8 credibility exist, followed by an oral hearing be9 fore that panel as part of the proceeding;’’; 

10 (iv) in subparagraph (K), as redesig11 nated, by striking ‘‘and’’ at the end; 

12 (v) in subparagraph (L), as redesig13 nated, by striking the period at the end and 

14 inserting the following: ‘‘, including not less 

15 than 1 meaningful opportunity to respond 

16 to any substitute claim offered as an 

17 amendment to the patent under subsection 

18 (d);’’; and 

19 (vi) by adding at the end the following: 

20 ‘‘(M) providing that for all purposes under 

21 this chapter— 

22 ‘‘(i) each claim of a patent shall be 

23 construed as such claim would be in a civil 

24 action to invalidate a patent under section 

25 282(b), including construing each claim of 


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1 the patent in accordance with the ordinary 

2 and customary meaning of such claim as 

3 understood by one of ordinary skill in the 

4 art and the prosecution history pertaining 

5 to the patent; and 

6 ‘‘(ii) if a court of the United States has 

7 previously construed the claim or a claim 

8 term, or made a determination as to the 

9 patent’s validity, in a proceeding or an ac10 tion in which the patent owner was a 

11 party, the Office shall consider such claim 

12 construction or determination; and 

13 ‘‘(N) requiring that all decisions of the Pat14 ent Trial and Appeal Board in its proceedings 

15 be available to the public in an easily accessible, 

16 searchable form. 

17 ‘‘(2) REQUIREMENTS.—The regulations pre18 scribed under paragraph (1)(I) shall provide that— 

19 ‘‘(A) an amendment to propose 1 or more 

20 substitute claims shall be made in the patent 

21 holder’s first paper following institution (other 

22 than a request for a rehearing) and not later 

23 than 30 days after the institution of the pro24 ceeding, unless otherwise agreed to by the parties; 


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1 ‘‘(B) any substitute claim must narrow the 

2 scope of the cancelled claim and may not intro3 duce new subject matter; 

4 ‘‘(C) any amendment shall respond to a 

5 ground of unpatentability involved in the trial; 

6 ‘‘(D) the petitioner shall have a meaningful 

7 opportunity to file a written response as to 

8 whether the substitute claim meets the require9 ments of subparagraphs (A) through (C) and 

10 whether the substitute claim is unpatentable; and 

11 ‘‘(E) if a substitute claim meets the require12 ments of subparagraphs (A) through (C), the pe13 titioner shall have the burden of proving a prop14 osition of unpatentability of the substitute claim 

15 by a preponderance of the evidence.’’; 

16 (B) in subsection (b), by inserting ‘‘the in17 terests in clarity in scope and reliance on intel18 lectual property rights,’’ after ‘‘patent system,’’; 

19 and 

20 (C) in subsection (e)— 

21 (i) by striking ‘‘In a post-grant’’ and 

22 inserting ‘‘(1) IN GENERAL.—In a post23 grant’’; 


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1 (ii) by striking ‘‘the petitioner’’ and 

2 inserting ‘‘the challenged patent shall be 

3 presumed to be valid. The petitioner’’; and 

4 (iii) by adding at the end the fol5 lowing: 

6 ‘‘(2) RULE OF CONSTRUCTION.—Nothing in this 

7 subsection shall be construed to impact the operation 

8 of section 282(a) in proceedings in a court of the 

9 United States.’’. 

10 (c) DIRECTOR REQUIREMENTS.— 

11 (1) THREE-MEMBER PANELS.—Not later than 1 

12 year after the date of enactment of this Act, the Direc13 tor shall prescribe regulations governing the composi14 tion of panels convened to adjudicate a post-grant re15 view or inter partes review under section 6 of title 35, 

16 United States Code, to ensure that the panel adjudi17 cating such proceeding consists of not more than 1 in18 dividual, if any, who participated in the decision to 

19 institute such proceeding. Such regulations may pre20 scribe that the decision to institute a proceeding shall 

21 be made by designees of the Director other than mem22 bers of the Patent Trial and Appeal Board. 

23 (2) REPRESENTATIONS TO THE OFFICE.— 

24 (A) REGULATIONS.—Not later than 1 year 

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1 tor shall issue regulations to make clear that an 

2 attorney or unrepresented party presenting a 

3 statement, petition, or other submission to the 

4 Office does so under an obligation substantially 

5 similar to the obligations contained in rule 11 of 

6 the Federal Rules of Civil Procedure. 

7 (B) INTERACTION WITH EXISTING RULES.— 

8 Regulations promulgated under this paragraph 

9 shall not be construed to undermine or otherwise 

10 limit existing regulations governing professional 

11 conduct before the Office, including regulations 

12 recognizing the duty of candor and good faith, 

13 the duty to disclose in a proceeding under section 

14 311 or 321 of title 35, United States Code, infor15 mation that is inconsistent with a position ad16 vanced by the party during such proceeding, and 

17 the duty to disclose information material to pat18 entability. 

19 (d) EFFECTIVE DATE.— 

20 (1) IN GENERAL.—Except as provided in para21 graph (2), the Director shall, not later than the date 

22 that is 1 year after the date of enactment of this Act, 

23 issue regulations implementing the amendments made 

24 by this section to chapters 31 and 32 of title 35, 

25 United States Code. 


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1 (2) EXCEPTION.—The Director shall, not later 

2 than the date that is 6 months after the date of enact3 ment of this Act, issue regulations implementing the 

4 amendments made by this section to paragraph (10) 

5 of sections 316(a) and 326(a) of title 35, United 

6 States Code, the amendment adding paragraph (14) 

7 to section 316(a) of title 35, United States Code, and 

8 the amendment adding paragraph (13) to section 

9 326(a) of title 35, United States Code. 

10 (3) REGULATIONS.—The regulations issued 

11 under this section shall take effect on the date on 

12 which they are issued and shall apply to all pro13 ceedings under chapters 31 and 32 of title 35, United 

14 States Code, for which a petition for review under 

15 section 311 or 321 of title 35, United States Code, is 

16 filed on or after such date of issuance. 

17 SEC. 12. PROTECTION OF INTELLECTUAL PROPERTY LI18 CENSES IN BANKRUPTCY. 

19 (a) IN GENERAL.—Section 1522 of title 11, United 

20 States Code, is amended by adding at the end the following: 

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

22 chapter. If the foreign representative rejects or repudiates 

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1 tled to make the election and exercise the rights described 

2 in section 365(n).’’. 

3 (b) TRADEMARKS.— 

4 (1) AMENDMENT.—Section 101(35A) of title 11, 

5 United States Code, is amended— 

6 (A) in subparagraph (E), by striking ‘‘or’’; 

7 (B) in subparagraph (F), by adding ‘‘or’’ at 

8 the end; and 

9 (C) by adding after subparagraph (F) the 

10 following new subparagraph: 

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

12 name, as those terms are defined in section 45 of 

13 the Act of July 5, 1946 (commonly referred to as 

14 the ‘Trademark Act of 1946’ (15 U.S.C. 1127));’’. 

15 (2) CONFORMING AMENDMENT.—Section 

16 365(n)(2) of title 11, United States Code, is amend17 ed— 

18 (A) in subparagraph (B)— 

19 (i) by striking ‘‘royalty payments’’ and 

20 inserting ‘‘royalty or other payments’’; and 

21 (ii) by striking ‘‘and’’ after the semi22 colon; 

23 (B) in subparagraph (C), by striking the 

24 period at the end of clause (ii) and inserting ‘‘; 

25 and’’; and 


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

2 subparagraph: 

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

4 mark, or trade name, the licensee shall not be re5 lieved of any of its obligations to maintain the 

6 quality of the products and services offered under 

7 or in connection with the licensed trademark, 

8 service mark, or trade name, and the trustee 

9 shall retain the right to oversee and enforce qual10 ity control for said products and/or services.’’. 

11 (c) EFFECTIVE DATE.—The amendments made by this 

12 section shall take effect on the date of enactment of this Act 

13 and shall apply to any case that is pending on, or for which 

14 a petition or complaint is filed on or after, such date of 

15 enactment. 

16 SEC. 13. SMALL BUSINESS EDUCATION, OUTREACH, AND IN17 FORMATION ACCESS. 

18 (a) SMALL BUSINESS EDUCATION AND OUTREACH.— 

19 (1) RESOURCES FOR SMALL BUSINESS.—Using 

20 existing resources, the Director shall develop edu21 cational resources for small businesses to address con22 cerns arising from patent infringement. 

23 (2) SMALL BUSINESS PATENT OMBUDSMAN.—The 

24 existing small business patent outreach programs of 

25 the Office, in consultation with the relevant offices at 


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1 the Small Business Administration and the Minority 

2 Business Development Agency, shall provide edu3 cation and awareness regarding resources available 

4 for those persons responding to allegations of patent 

5 infringement. 

6 (b) IMPROVING INFORMATION TRANSPARENCY FOR

7 SMALL BUSINESS AND THE UNITED STATES PATENT AND

8 TRADEMARK OFFICE USERS.— 

9 (1) WEB SITE.—Using existing resources, the Di10 rector shall create a user-friendly section on the offi11 cial Web site of the Office to notify the public when 

12 a patent case is brought in Federal court and, with 

13 respect to each patent at issue in such case, the Direc14 tor shall include— 

15 (A) information disclosed under section 

16 261A of title 35, United States Code, as added 

17 by section 10, and section 281B(b) of title 35, 

18 United States Code, as added by section 3; and 

19 (B) any other information the Director de20 termines to be relevant. 

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

22 for the public, the information described in paragraph 

23 (1) shall be searchable by patent number, patent art 

24 area, and entity. 


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1 SEC. 14. STUDIES ON PATENT TRANSACTIONS, QUALITY, 

2 AND EXAMINATION. 

3 (a) STUDY ON SECONDARY MARKET OVERSIGHT FOR

4 PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY AND

5 ETHICAL BUSINESS PRACTICES.— 

6 (1) STUDY REQUIRED.—The Director, in con7 sultation with the Secretary of Commerce, the Sec8 retary of the Treasury, the Chairman of the Securities 

9 and Exchange Commission, the heads of other rel10 evant agencies, and interested parties, shall, using ex11 isting resources of the Office, conduct a study— 

12 (A) to develop legislative recommendations 

13 to ensure greater transparency and account14 ability in patent transactions occurring on the 

15 secondary market; 

16 (B) to examine the economic impact that 

17 the patent secondary market has on the United 

18 States; 

19 (C) to examine licensing and other oversight 

20 requirements that may be placed on the patent 

21 secondary market, including on the participants 

22 in such markets, to ensure that the market is a 

23 level playing field and that brokers in the market 

24 have the requisite expertise and adhere to ethical 

25 business practices; and 


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1 (D) to examine the requirements placed on 

2 other markets. 

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

4 months after the date of enactment of this Act, the Di5 rector shall submit a report to the Committee on the 

6 Judiciary of the House of Representatives and the 

7 Committee on the Judiciary of the Senate on the find8 ings and recommendations of the Director from the 

9 study required under paragraph (1). 

10 (b) STUDY ON PATENT SMALL CLAIMS PROCE11 DURES.— 

12 (1) STUDY REQUIRED.— 

13 (A) IN GENERAL.—The Director of the Ad14 ministrative Office of the United States Courts, 

15 in consultation with the Director of the Federal 

16 Judicial Center and the United States Patent 

17 and Trademark Office, shall, using existing re18 sources, conduct a study to examine the idea of 

19 developing a pilot program for patent small 

20 claims procedures in certain judicial districts 

21 within the existing patent pilot program man22 dated by Public Law 111–349. 

23 (B) CONTENTS OF STUDY.—The study 

24 under subparagraph (A) shall examine— 


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1 (i) the necessary criteria for using 

2 small claims procedures; 

3 (ii) the costs that would be incurred for 

4 establishing, maintaining, and operating 

5 such a pilot program; and 

6 (iii) the steps that would be taken to 

7 ensure that the procedures used in the pilot 

8 program are not misused for abusive patent 

9 litigation. 

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

11 after the date of enactment of this Act, the Director 

12 of the Administrative Office of the United States 

13 Courts shall submit a report to the Committee on the 

14 Judiciary of the House of Representatives and the 

15 Committee on the Judiciary of the Senate on the find16 ings and recommendations of the Director of the Ad17 ministrative Office from the study required under 

18 paragraph (1). 

19 (c) STUDY ON BUSINESS METHOD PATENT QUAL20 ITY.— 

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

22 the United States shall, using existing resources, con23 duct a study on the volume and nature of litigation 

24 involving business method patents. 


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

2 under paragraph (1) shall focus on examining the 

3 quality of business method patents asserted in suits 

4 alleging patent infringement, and may include an ex5 amination of any other areas that the Comptroller 

6 General determines to be relevant. 

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

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

9 Comptroller General shall submit to the Committee on 

10 the Judiciary of the House of Representatives and the 

11 Committee on the Judiciary of the Senate a report on 

12 the findings and recommendations from the study re13 quired by this subsection, including recommendations 

14 for any changes to laws or regulations that the Comp15 troller General considers appropriate on the basis of 

16 the study. 

17 SEC. 15. TECHNICAL CORRECTIONS TO THE LEAHY-SMITH 

18 AMERICA INVENTS ACT AND OTHER IM19 PROVEMENTS. 

20 (a) ESTOPPEL.—Section 325(e)(2) of title 35, United 

21 States Code, is amended by striking ‘‘or reasonably could 

22 have raised’’. 

23 (b) PTO PATENT REVIEWS.— 

24 (1) CLARIFICATION.— 


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1 (A) SCOPE OF PRIOR ART.—Section 

2 18(a)(1)(C)(i) of the Leahy-Smith America In3 vents Act (35 U.S.C. 321 note) is amended by 

4 striking ‘‘section 102(a)’’ and inserting ‘‘sub5 section (a) or (e) of section 102’’. 

6 (B) EFFECTIVE DATE.—The amendment 

7 made by subparagraph (A) shall take effect on 

8 the date of the enactment of this Act and shall 

9 apply to any proceeding pending on, or filed on 

10 or after, such date of enactment. 

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

12 available resources, the Director may waive payment 

13 of a filing fee for a transitional proceeding described 

14 under section 18(a) of the Leahy-Smith America In15 vents Act (35 U.S.C. 321 note). 

16 (c) TECHNICAL CORRECTIONS.— 

17 (1) NOVELTY.— 

18 (A) AMENDMENT.—Section 102(b)(1)(A) of 

19 title 35, United States Code, is amended by 

20 striking ‘‘the inventor or joint inventor or by an21 other’’ and inserting ‘‘the inventor or a joint in22 ventor or another’’. 

23 (B) EFFECTIVE DATE.—The amendment 

24 made by subparagraph (A) shall be effective as 

25 if included in the amendment made by section 


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

2 (Public Law 112–29). 

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

4 (A) REQUIREMENT TO EXECUTE.—Section 

5 115(a) of title 35, United States Code, is amend6 ed in the second sentence by striking ‘‘shall exe7 cute’’ and inserting ‘‘may be required by the Di8 rector to execute’’. 

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

13 (Public Law 112–29). 

14 (3) ASSIGNEE FILERS.— 

15 (A) BENEFIT OF EARLIER FILING DATE; 

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

17 35, United States Code, is amended, in the first 

18 sentence, by striking ‘‘by an inventor or inven19 tors named’’ and inserting ‘‘that names the in20 ventor or a joint inventor’’. 

21 (B) BENEFIT OF EARLIER FILING DATE IN

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

23 United States Code, is amended, in the first sen24 tence, by striking ‘‘names an inventor or joint 


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1 inventor’’ and inserting ‘‘names the inventor or 

2 a joint inventor’’. 

3 (C) EFFECTIVE DATE.—The amendments 

4 made by this paragraph shall take effect on the 

5 date of the enactment of this Act and shall apply 

6 to any patent application, and any patent 

7 issuing from such application, that is filed on or 

8 after September 16, 2012. 

9 (4) DERIVED PATENTS.— 

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

11 35, United States Code, is amended by striking 

12 ‘‘or joint inventor’’ and inserting ‘‘or a joint in13 ventor’’. 

14 (B) EFFECTIVE DATE.—The amendment 

15 made by subparagraph (A) shall be effective as 

16 if included in the amendment made by section 

17 3(h)(1) of the Leahy-Smith America Invents Act 

18 (Public Law 112–29). 

19 (5) SPECIFICATION.—Notwithstanding section 

20 4(e) of the Leahy-Smith America Invents Act (Public 

21 Law 112–29; 125 Stat. 297), the amendments made 

22 by subsections (c) and (d) of section 4 of such Act 

23 shall apply to any proceeding or matter that is pend24 ing on, or filed on or after, the date of the enactment 

25 of this Act. 


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1 (6) TIME LIMIT FOR COMMENCING MISCONDUCT

2 PROCEEDINGS.— 

3 (A) AMENDMENT.—The fourth sentence of 

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

5 amended by striking ‘‘1 year’’ and inserting ‘‘18 

6 months’’. 

7 (B) EFFECTIVE DATE.—The amendment 

8 made by this paragraph shall take effect on the 

9 date of the enactment of this Act and shall apply 

10 to any action in which the Office files a com11 plaint on or after such date of enactment. 

12 (7) PATENT OWNER RESPONSE.— 

13 (A) CONDUCT OF INTER PARTES REVIEW.— 

14 Paragraph (8) of section 316(a) of title 35, 

15 United States Code, is amended by striking ‘‘the 

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

17 petition under section 311’’. 

18 (B) CONDUCT OF POST-GRANT REVIEW.— 

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

20 United States Code, is amended by striking ‘‘the 

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

22 petition under section 321’’. 

23 (C) EFFECTIVE DATE.—The amendments 

24 made by this paragraph shall take effect on the 

25 date of the enactment of this Act. 


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1 (8) GLOBAL WORKSHARING.—Section 122 of title 

2 35, United States Code, is amended— 

3 (A) in subsection (a), by striking ‘‘sub4 section (b)’’ and inserting ‘‘subsections (b) and 

5 (f)’’; and 

6 (B) by adding at the end the following: 

7 ‘‘(f) FOREIGN OR INTERNATIONAL FILING.—The Direc8 tor may provide information concerning an application for 

9 a patent to a foreign country or international intergovern10 mental organization if a corresponding application is filed 

11 in such foreign country or with such international intergov12 ernmental organization. If the corresponding application is 

13 an international application, such information may also 

14 be provided to an International Searching Authority, an 

15 International Preliminary Examining Authority, and the 

16 International Bureau (as defined in section 351).’’. 

17 (9) APPOINTMENTS CLARIFICATION.—Section 

18 3(b)(3) of title 35, United State Code, is amended— 

19 (A) by redesignating subparagraphs (A) 

20 and (B) as subparagraphs (B) and (C), respec21 tively; 

22 (B) by inserting before subparagraph (B), 

23 as redesignated, the following: 

24 ‘‘(A) nominate, for appointment by the Sec25 retary of Commerce, such officers as the Director 


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1 considers necessary to carry out the functions of 

2 the Office and who may exercise any authority 

3 delegated by the Director or a Commissioner;’’; 

4 and 

5 (C) in subparagraph (B), as redesignated, 

6 by striking ‘‘officers, employees (including attor7 neys),’’ and inserting ‘‘employees (including at8 torneys)’’. 

9 (10) PUBLIC ADVISORY COMMITTEES.—Section 

10 5(h) of title 35, United States Code, is amended by 

11 inserting before the period at the end the following: ‘‘, 

12 except that members of each Advisory Committee shall 

13 be considered to be serving on an advisory committee 

14 within the meaning of the Federal Advisory Com15 mittee Act for purposes of section 208(b)(3) of title 

16 18’’. 

17 (11) ELECTRONIC FILING TIMEZONE ALIGN18 MENT.— 

19 (A) AMENDMENT.—Section 21 of title 35, 

20 United States Code, is amended by— 

21 (i) redesignating subsection (b) as sub22 section (c), and 

23 (ii) inserting after subsection (a) the 

24 following: 


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1 ‘‘(b) The Director may by rule prescribe that any 

2 paper or fee required to be filed in the United States Patent 

3 and Trademark Office will be considered filed in the Office 

4 on the date on which it is submitted using the electronic 

5 filing system prescribed by the Director or would have been 

6 submitted but for filing system interruptions or emergencies 

7 designated by the Director.’’. 

8 (B) EFFECTIVE DATE.—The amendments 

9 made by this paragraph shall take effect on the 

10 date that is 1 year after the date of enactment 

11 of this Act and shall apply to papers or fees that 

12 are filed on or after that effective date. 

13 (d) MANAGEMENT OF THE UNITED STATES PATENT

14 AND TRADEMARK OFFICE.— 

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

16 United States Code, is amended in the first sen17 tence— 

18 (A) by striking ‘‘be vested with the author19 ity to act in the capacity of the’’ and inserting 

20 ‘‘serve as Acting’’; and 

21 (B) by inserting before the period ‘‘or in the 

22 event of a vacancy in the office of the Director’’. 

23 (2) EFFECTIVE DATE.—The amendments made 

24 by paragraph (1) shall take effect on the date of en25 actment of this Act and shall apply with respect to 


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1 appointments and vacancies occurring before, on, or 

2 after the date of enactment of this Act. 

3 (e) EXTENSION OF FEE SETTING AUTHORITY.—Sec4 tion 10(i)(2) of the Leahy-Smith America Invents Act (Pub5 lic Law 112–29; 125 Stat. 319) is amended by striking ‘‘7- 

6 year’’ and inserting ‘‘14-year’’. 

7 (f) PATENTS FOR HUMANITY PROGRAM.— 

8 (1) SHORT TITLE.—This subsection may be cited 

9 as the ‘‘Patents for Humanity Program Improvement 

10 Act’’. 

11 (2) TRANSFERABILITY OF ACCELERATION CER12 TIFICATES.—A holder of an acceleration certificate 

13 issued pursuant to the Patents for Humanity Pro14 gram (established in the notice entitled ‘‘Humani15 tarian Awards Pilot Program’’, published at 77 Fed. 

16 Reg. 6544 (February 8, 2012)), or any successor 

17 thereto, of the United States Patent and Trademark 

18 Office, may transfer (including by sale) the entitle19 ment to such acceleration certificate to another per20 son. 

21 (3) REQUIREMENT.—An acceleration certificate 

22 transferred under paragraph (1) shall be subject to 

23 any other applicable limitations under the notice en24 titled ‘‘Humanitarian Awards Pilot Program’’, pubVerDate Sep 11 2014 21:15 Sep 08, 2015 Jkt 049200 PO 00000 Frm 00127 Fmt 6652 Sfmt 6203 E:\BILLS\S1137.RS S1137

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1 lished at 77 Fed. Reg. 6544 (February 8, 2012), or 

2 any successor thereto. 

3 SEC. 16. INSTITUTIONS OF HIGHER EDUCATION AND NON4 PROFIT RESEARCH. 

5 Section 123(d) of title 35, United States Code, is 

6 amended to read as follows: 

7 ‘‘(d) INSTITUTIONS OF HIGHER EDUCATION AND NON8 PROFIT RESEARCH ORGANIZATIONS.—For purposes of this 

9 section, a micro entity shall include an applicant who cer10 tifies that— 

11 ‘‘(1) the applicant’s employer, from which the 

12 applicant obtains the majority of the applicant’s in13 come, is an institution of higher education as defined 

14 in section 101(a) of the Higher Education Act of 1965 

15 (20 U.S.C. 1001(a)), or a comparable organization 

16 outside the United States; 

17 ‘‘(2) the applicant has assigned, granted, con18 veyed, or is under an obligation by contract or law, 

19 to assign, grant, or convey, a license or other owner20 ship interest in the particular applications to such an 

21 institution of higher education; 

22 ‘‘(3) the applicant is an institution of higher 

23 education as defined in section 101(a) of the Higher 

24 Education Act of 1965 (20 U.S.C. 1001(a)), or a com25 parable organization outside the United States; 


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1 ‘‘(4) the applicant is an organization described 

2 in section 501(c)(3) of the Internal Revenue Code of 

3 1986 and exempt from taxation under section 501(a) 

4 of such Code, or a comparable organization outside 

5 the United States, that holds title to patents and pat6 ent applications on behalf of such an institution of 

7 higher education for the purpose of facilitating com8 mercialization of the technologies of the patents and 

9 patent applications; or 

10 ‘‘(5) the applicant is an organization described 

11 in section 501(c)(3) of the Internal Revenue Code of 

12 1986 and exempt from taxation under section 501(a) 

13 of such Code and certifies that— 

14 ‘‘(A) the applicant performs, at least in 

15 part, research or development activities for the 

16 Federal Government; or 

17 ‘‘(B) the applicant has assigned, granted, or 

18 conveyed, or is under an obligation by contract 

19 or law to assign, grant, or convey, a license or 

20 other ownership interest in the particular appli21 cations to an organization described in section 

22 501(c)(3) of the Internal Revenue Code of 1986 

23 and exempt from taxation under section 501(a) 

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1 search or development activities for the Federal 

2 Government.’’. 

3 SEC. 17. EFFECTIVE DATE. 

4 Except as otherwise provided in this Act, this Act and 

5 the amendments made by this Act shall take effect on the 

6 date of enactment of this Act, and shall apply to any patent 

7 issued, or any action filed, on or after that date. 

8 SEC. 18. SEVERABILITY. 

9 If any provision of this Act, or an amendment made 

10 by this Act, or the application of such provision or amend11 ment to any person or circumstance, is held to be invalid, 

12 the remainder of this Act, or an amendment made by this 

13 Act, or the application of such provision to other persons 

14 or circumstances, shall not be affected. 


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Calendar No. 203 

114TH CONGRESS 

1ST SESSION S. 1137 

A BILL 

To amend title 35, United States Code, and the 

other purposes. provements and technical corrections, and for Leahy-Smith America Invents Act to make imSEPTEMBER 8, 2015 

Reported with an amendment 


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