II 

110TH CONGRESS 

2D SESSION S. 3600 

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

IN THE SENATE OF THE UNITED STATES 

SEPTEMBER 25 (legislative day, SEPTEMBER 17), 2008 

Mr. KYL introduced the following bill; which was read twice and referred to 

the Committee on the Judiciary 

A BILL 

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

reform. 

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

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Patent Reform Act of 2008’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Right of the first inventor to file. 

Sec. 3. Inventor’s oath or declaration. 

Sec. 4. Damages. 

Sec. 5. Post-grant review proceedings. 

Sec. 6. Definition; patent trial and appeal board. 

Sec. 7. Submissions by third parties and other quality enhancements. 

Sec. 8. Venue. 


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Sec. 9. Patent and trademark office regulatory authority. 

Sec. 10. Applicant quality submissions. 

Sec. 11. Inequitable conduct and civil sanctions for misconduct before the Office. 

Sec. 12. Authority of the Director of the Patent and Trademark Office to accept late filings. 

Sec. 13. Limitation on damages and other remedies with respect to patents for 

methods in compliance with check imaging methods. 

Sec. 14. Patent and trademark office funding. 

Sec. 15. Technical amendments. 

Sec. 16. Effective date; rule of construction. 

1 SEC. 2. RIGHT OF THE FIRST INVENTOR TO FILE. 

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

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

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

6 a joint invention, the individuals collectively who invented 

7 or discovered the subject matter of the invention. 

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

9 any 1 of the individuals who invented or discovered the 

10 subject matter of a joint invention. 

11 ‘‘(h) The ‘effective filing date of a claimed invention’ 

12 is— 

13 ‘‘(1) the filing date of the patent or the applica14 tion for patent containing the claim to the invention; 

15 or 

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

17 entitled to a right of priority of any other applica18 tion under section 119, 365(a), or 365(b) or to the 

19 benefit of an earlier filing date in the United States 

20 under section 120, 121, or 365(c), the filing date of 


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1 the earliest such application in which the claimed in2 vention is disclosed in the manner provided by the 

3 first paragraph of section 112. 

4 ‘‘(i) The term ‘claimed invention’ means the subject 

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

6 for a patent.’’. 

7 (b) CONDITIONS FOR PATENTABILITY.— 

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

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

10 ‘‘§ 102. Conditions for patentability; novelty 

11 ‘‘(a) NOVELTY; PRIOR ART.—A patent for a claimed 

12 invention may not be obtained if— 

13 ‘‘(1) the claimed invention was patented, de14 scribed in a printed publication, or otherwise made 

15 available to the public (other than through testing 

16 undertaken to reduce the invention to practice)— 

17 ‘‘(A) more than 1 year before the effective 

18 filing date of the claimed invention; or 

19 ‘‘(B) 1 year or less before the effective fil20 ing date of the claimed invention, other than 

21 through disclosures made by the inventor or a 

22 joint inventor or by others who obtained the 

23 subject matter disclosed directly or indirectly 

24 from the inventor or a joint inventor; or 


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

2 patent issued under section 151, or in an application 

3 for patent published or deemed published under sec4 tion 122(b), in which the patent or application, as 

5 the case may be, names another inventor and was 

6 effectively filed before the effective filing date of the 

7 claimed invention. 

8 ‘‘(b) EXCEPTIONS.— 

9 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP10 TION.—Subject matter that would otherwise qualify 

11 as prior art based upon a disclosure under subpara12 graph (B) of subsection (a)(1) shall not be prior art 

13 to a claimed invention under that subparagraph if 

14 the subject matter had, before such disclosure, been 

15 publicly disclosed by the inventor or a joint inventor 

16 or others who obtained the subject matter disclosed 

17 directly or indirectly from the inventor or a joint in18 ventor. 

19 ‘‘(2) DERIVATION, PRIOR DISCLOSURE, AND

20 COMMON ASSIGNMENT EXCEPTIONS.—Subject mat21 ter that would otherwise qualify as prior art only 

22 under subsection (a)(2), after taking into account 

23 the exception under paragraph (1), shall not be prior 

24 art to a claimed invention if— 


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1 ‘‘(A) the subject matter was obtained di2 rectly or indirectly from the inventor or a joint 

3 inventor; 

4 ‘‘(B) the subject matter had been publicly 

5 disclosed by the inventor or a joint inventor or 

6 others who obtained the subject matter dis7 closed, directly or indirectly, from the inventor 

8 or a joint inventor before the effective filing 

9 date of the application or patent set forth under 

10 subsection (a)(2); or 

11 ‘‘(C) the subject matter and the claimed 

12 invention, not later than the effective filing date 

13 of the claimed invention, were owned by the 

14 same person or subject to an obligation of as15 signment to the same person. 

16 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP17 TION.— 

18 ‘‘(A) IN GENERAL.—Subject matter and a 

19 claimed invention shall be deemed to have been 

20 owned by the same person or subject to an obli21 gation of assignment to the same person in ap22 plying the provisions of paragraph (2) if— 

23 ‘‘(i) the subject matter and the 

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1 search agreement that was in effect on or 

2 before the effective filing date of the 

3 claimed invention; 

4 ‘‘(ii) the claimed invention was made 

5 as a result of activities undertaken within 

6 the scope of the joint research agreement; 

7 and 

8 ‘‘(iii) the application for patent for 

9 the claimed invention discloses or is 

10 amended to disclose the names of the par11 ties to the joint research agreement. 

12 ‘‘(B) For purposes of subparagraph (A), 

13 the term ‘joint research agreement’ means a 

14 written contract, grant, or cooperative agree15 ment entered into by 2 or more persons or enti16 ties for the performance of experimental, devel17 opmental, or research work in the field of the 

18 claimed invention. 

19 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

20 EFFECTIVELY FILED.—A patent or application for 

21 patent is effectively filed under subsection (a)(2) 

22 with respect to any subject matter described in the 

23 patent or application— 

24 ‘‘(A) as of the filing date of the patent or 

25 the application for patent; or 


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1 ‘‘(B) if the patent or application for patent 

2 is entitled to claim a right of priority under sec3 tion 119, 365(a), or 365(b) or to claim the ben4 efit of an earlier filing date under section 120, 

5 121, or 365(c), based upon 1 or more prior 

6 filed applications for patent, as of the filing 

7 date of the earliest such application that de8 scribes the subject matter.’’. 

9 (2) CONFORMING AMENDMENT.—The item re10 lating to section 102 in the table of sections for 

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

12 amended to read as follows: 

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

13 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

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

15 States Code, is amended to read as follows: 

16 ‘‘§ 103. Conditions for patentability; nonobvious sub17 ject matter 

18 ‘‘A patent for a claimed invention may not be ob19 tained though the claimed invention is not identically dis20 closed as set forth in section 102, if the differences be21 tween the claimed invention and the prior art are such 

22 that the claimed invention as a whole would have been ob23 vious before the effective filing date of the claimed inven24 tion to a person having ordinary skill in the art to which 


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1 the claimed invention pertains. Patentability shall not be 

2 negated by the manner in which the invention was made.’’. 

3 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

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

7 are repealed. 

8 (e) REPEAL OF STATUTORY INVENTION REGISTRA9 TION.— 

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

11 United States Code, and the item relating to that 

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

13 35, United States Code, are repealed. 

14 (2) REMOVAL OF CROSS REFERENCES.—Section 

15 111(b)(8) of title 35, United States Code, is amend16 ed by striking ‘‘sections 115, 131, 135, and 157’’ 

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

18 (f) EARLIER FILING DATE FOR INVENTOR AND

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

20 Code, is amended by striking ‘‘which is filed by an inven21 tor or inventors named’’ and inserting ‘‘which names an 

22 inventor or joint inventor’’. 

23 (g) CONFORMING AMENDMENTS.— 


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

2 35, United States Code, is amended by striking 

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

4 (2) LIMITATION ON REMEDIES.—Section 

5 287(c)(4) of title 35, United States Code, is amend6 ed by striking ‘‘the earliest effective filing date of 

7 which is prior to’’ and inserting ‘‘which has an effec8 tive filing date before’’. 

9 (3) INTERNATIONAL APPLICATION DESIG10 NATING THE UNITED STATES: EFFECT.—Section 

11 363 of title 35, United States Code, is amended by 

12 striking ‘‘except as otherwise provided in section 

13 102(e) of this title’’. 

14 (4) PUBLICATION OF INTERNATIONAL APPLICA15 TION: EFFECT.—Section 374 of title 35, United 

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

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

18 (5) PATENT ISSUED ON INTERNATIONAL APPLI19 CATION: EFFECT.—The second sentence of section 

20 375(a) of title 35, United States Code, is amended 

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

22 such’’ and inserting ‘‘Such’’. 

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

24 119(a) of title 35, United States Code, is amended 

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


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1 all that follows through ‘‘one year prior to such fil2 ing’’. 

3 (7) INVENTIONS MADE WITH FEDERAL ASSIST4 ANCE.—Section 202(c) of title 35, United States 

5 Code, is amended— 

6 (A) in paragraph (2)— 

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

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

9 ‘‘obtained in the United States’’ and in10 serting ‘‘the 1-year period referred to in 

11 section 102(a) would end before the end of 

12 that 2-year period’’; and 

13 (ii) by striking ‘‘the statutory’’ and 

14 inserting ‘‘that 1-year’’; and 

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

16 statutory bar date that may occur under this 

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

18 and inserting ‘‘the expiration of the 1-year pe19 riod referred to in section 102(a)’’. 

20 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

21 Section 291 of title 35, United States Code, and the item 

22 relating to that section in the table of sections for chapter 

23 29 of title 35, United States Code, are repealed. 


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1 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN2 VENTION.—Section 135(a) of title 35, United States Code, 

3 is amended to read as follows: 

4 ‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 

5 ‘‘(1) INSTITUTION OF DERIVATION PRO6 CEEDING.—An applicant may request initiation of a 

7 derivation proceeding to determine the right of the 

8 applicant to a patent by filing a request which sets 

9 forth with particularity the basis for finding that an 

10 earlier applicant derived the claimed invention from 

11 the applicant requesting the proceeding and, without 

12 authorization, filed an application claiming such in13 vention. Any such request may only be made within 

14 1 year after the date of first publication of an appli15 cation or of the issuance of a patent, whichever is 

16 earlier, containing a claim that is the same or is 

17 substantially the same as the claimed invention, 

18 must be made under oath, and must be supported 

19 by substantial evidence. Whenever the Director de20 termines that patents or applications for patent 

21 naming different individuals as the inventor interfere 

22 with one another because of a dispute over the right 

23 to patent under section 101, the Director shall insti24 tute a derivation proceeding for the purpose of de25 termining which applicant is entitled to a patent. 


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1 ‘‘(2) DETERMINATION BY PATENT TRIAL AND

2 APPEAL BOARD.—In any proceeding under this sub3 section, the Patent Trial and Appeal Board— 

4 ‘‘(A) shall determine the question of the 

5 right to patent; 

6 ‘‘(B) in appropriate circumstances, may 

7 correct the naming of the inventor in any appli8 cation or patent at issue; and 

9 ‘‘(C) shall issue a final decision on the 

10 right to patent. 

11 ‘‘(3) DERIVATION PROCEEDING.—The Board 

12 may defer action on a request to initiate a derivation 

13 proceeding until 3 months after the date on which 

14 the Director issues a patent to the applicant whose 

15 application has the earlier effective filing date of the 

16 commonly claimed invention. 

17 ‘‘(4) EFFECT OF FINAL DECISION.—The final 

18 decision of the Patent Trial and Appeal Board, if 

19 adverse to the claim of an applicant, shall constitute 

20 the final refusal by the United States Patent and 

21 Trademark Office on the claims involved. The Direc22 tor may issue a patent to an applicant who is deter23 mined by the Patent Trial and Appeal Board to have 

24 the right to patent. The final decision of the Board, 

25 if adverse to a patentee, shall, if no appeal or other 


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1 review of the decision has been or can be taken or 

2 had, constitute cancellation of the claims involved in 

3 the patent, and notice of such cancellation shall be 

4 endorsed on copies of the patent distributed after 

5 such cancellation by the United States Patent and 

6 Trademark Office.’’. 

7 (j) ELIMINATION OF REFERENCES TO INTER8 FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 

9 305, and 314 of title 35, United States Code, are each 

10 amended by striking ‘‘Board of Patent Appeals and Inter11 ferences’’ each place it appears and inserting ‘‘Patent 

12 Trial and Appeal Board’’. 

13 (2) Sections 141, 146, and 154 of title 35, United 

14 States Code, are each amended— 

15 (A) by striking ‘‘an interference’’ each place it 

16 appears and inserting ‘‘a derivation proceeding’’; 

17 and 

18 (B) by striking ‘‘interference’’ each additional 

19 place it appears and inserting ‘‘derivation pro20 ceeding’’. 

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

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

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

24 (4) The section heading for section 135 of title 35, 

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


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1 ‘‘§ 135. Derivation proceedings’’. 

2 (5) The section heading for section 146 of title 35, 

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

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

5 (6) Section 154(b)(1)(C) of title 35, United States 

6 Code, is amended by striking ‘‘INTERFERENCES’’ and in7 serting ‘‘DERIVATION PROCEEDINGS’’. 

8 (7) The item relating to section 6 in the table of sec9 tions for chapter 1 of title 35, United States Code, is 

10 amended to read as follows: 

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

11 (8) The items relating to sections 134 and 135 in 

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

13 States Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 

14 (9) The item relating to section 146 in the table of 

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

16 is amended to read as follows: 

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

17 (10) CERTAIN APPEALS.—Section 1295(a)(4)(A) of 

18 title 28, United States Code, is amended to read as fol19 lows: 

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

21 the United States Patent and Trademark Office 

22 with respect to patent applications, derivation 

23 proceedings, and post-grant review proceedings, 


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1 at the instance of an applicant for a patent or 

2 any party to a patent interference (commenced 

3 before the effective date of the Patent Reform 

4 Act of 2008), derivation proceeding, or post5 grant review proceeding, and any such appeal 

6 shall waive any right of such applicant or party 

7 to proceed under section 145 or 146 of title 

8 35;’’. 

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

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

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

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

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

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

15 DECLARATION.—An application for patent that is filed 

16 under section 111(a) or that commences the national stage 

17 under section 371 (including an application under section 

18 111 that is filed by an inventor for an invention for which 

19 an application has previously been filed under this title 

20 by that inventor) shall include, or be amended to include, 

21 the name of the inventor of any claimed invention in the 

22 application. Except as otherwise provided in this section, 

23 an individual who is the inventor or a joint inventor of 

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1 cute an oath or declaration in connection with the applica2 tion. 

3 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara4 tion under subsection (a) shall contain statements that— 

5 ‘‘(1) the application was made or was author6 ized to be made by the affiant or declarant; and 

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

8 to be the original inventor or an original joint inven9 tor of a claimed invention in the application. 

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

11 may specify additional information relating to the inventor 

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

13 oath or declaration under subsection (a). 

14 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

17 patent may provide a substitute statement under the 

18 circumstances described in paragraph (2) and such 

19 additional circumstances that the Director may 

20 specify by regulation. 

21 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub22 stitute statement under paragraph (1) is permitted 

23 with respect to any individual who— 


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1 ‘‘(A) is unable to file the oath or declara2 tion under subsection (a) because the indi3 vidual— 

4 ‘‘(i) is deceased; 

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

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

7 diligent effort; or 

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

9 invention but has refused to make the oath or 

10 declaration required under subsection (a). 

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

12 this subsection shall— 

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

14 whom the statement applies; 

15 ‘‘(B) set forth the circumstances rep16 resenting the permitted basis for the filing of 

17 the substitute statement in lieu of the oath or 

18 declaration under subsection (a); and 

19 ‘‘(C) contain any additional information, 

20 including any showing, required by the Direc21 tor. 

22 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN23 MENT OF RECORD.—An individual who is under an obliga24 tion of assignment of an application for patent may in25 clude the required statements under subsections (b) and 


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

2 of filing such statements separately. 

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

4 section 151 may be provided to an applicant for patent 

5 only if the applicant for patent has filed each required 

6 oath or declaration under subsection (a) or has filed a sub7 stitute statement under subsection (d) or recorded an as8 signment meeting the requirements of subsection (e). 

9 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE10 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

11 The requirements under this section shall not apply to an 

12 individual with respect to an application for patent in 

13 which the individual is named as the inventor or a joint 

14 inventor and that claims the benefit under section 120 or 

15 365(c) of the filing of an earlier-filed application, if— 

16 ‘‘(1) an oath or declaration meeting the require17 ments of subsection (a) was executed by the indi18 vidual and was filed in connection with the earlier19 filed application; 

20 ‘‘(2) a substitute statement meeting the re21 quirements of subsection (d) was filed in the earlier 

22 filed application with respect to the individual; or 

23 ‘‘(3) an assignment meeting the requirements 

24 of subsection (e) was executed with respect to the 

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1 corded in connection with the earlier-filed applica2 tion. 

3 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE4 MENTS; FILING ADDITIONAL STATEMENTS.— 

5 ‘‘(1) IN GENERAL.—Any person making a state6 ment required under this section may withdraw, re7 place, or otherwise correct the statement at any 

8 time. If a change is made in the naming of the in9 ventor requiring the filing of 1 or more additional 

10 statements under this section, the Director shall es11 tablish regulations under which such additional 

12 statements may be filed. 

13 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE14 QUIRED.—If an individual has executed an oath or 

15 declaration under subsection (a) or an assignment 

16 meeting the requirements of subsection (e) with re17 spect to an application for patent, the Director may 

18 not thereafter require that individual to make any 

19 additional oath, declaration, or other statement 

20 equivalent to those required by this section in con21 nection with the application for patent or any patent 

22 issuing thereon. 

23 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in24 valid or unenforceable based upon the failure to 


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1 comply with a requirement under this section if the 

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

3 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec4 laration or statement filed pursuant to this section shall 

5 contain an acknowledgment that any willful false state6 ment made in such declaration or statement is punishable 

7 under section 1001 of title 18 by fine or imprisonment 

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

9 (2) RELATIONSHIP TO DIVISIONAL APPLICA10 TIONS.—Section 121 of title 35, United States Code, 

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

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

13 (3) REQUIREMENTS FOR NONPROVISIONAL AP14 PLICATIONS.—Section 111(a) of title 35, United 

15 States Code, is amended— 

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

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

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

19 striking ‘‘AND OATH’’; and 

20 (C) by striking ‘‘and oath’’ each place it 

21 appears. 

22 (4) CONFORMING AMENDMENT.—The item re23 lating to section 115 in the table of sections for 

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

25 amended to read as follows: 

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


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1 (b) FILING BY OTHER THAN INVENTOR.—Section 

2 118 of title 35, United States Code, is amended to read 

3 as follows: 

4 ‘‘§ 118. Filing by other than inventor 

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

6 under an obligation to assign the invention may make an 

7 application for patent. A person who otherwise shows suf8 ficient proprietary interest in the matter may make an ap9 plication for patent on behalf of and as agent for the in10 ventor on proof of the pertinent facts and a showing that 

11 such action is appropriate to preserve the rights of the 

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

13 filed under this section by a person other than the inven14 tor, the patent shall be granted to the real party in inter15 est and upon such notice to the inventor as the Director 

16 considers to be sufficient.’’. 

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

18 States Code, is amended— 

19 (1) in the first paragraph— 

20 (A) by striking ‘‘The specification’’ and in21 serting ‘‘(a) IN GENERAL.—The specification’’; 

22 and 

23 (B) by striking ‘‘, and shall set forth’’ and 

24 all that follows through ‘‘his invention’’; and 

25 (2) in the second paragraph— 


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1 (A) by striking ‘‘The specifications’’ and 

2 inserting ‘‘(b) CONCLUSION.—The specifica3 tions’’; and 

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

5 invention’’ and inserting ‘‘inventor or a joint in6 ventor regards as the invention’’; 

7 (3) in the third paragraph, by striking ‘‘A 

8 claim’’ and inserting ‘‘(c) FORM.—A claim’’; 

9 (4) in the fourth paragraph, by striking ‘‘Sub10 ject to the following paragraph,’’ and inserting ‘‘(d) 

11 REFERENCE IN DEPENDENT FORMS.—Subject to 

12 subsection (e),’’; 

13 (5) in the fifth paragraph, by striking ‘‘A 

14 claim’’ and inserting ‘‘(e) REFERENCE IN MULTIPLE

15 DEPENDENT FORM.—A claim’’; and 

16 (6) in the last paragraph, by striking ‘‘An ele17 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

18 A COMBINATION.—An element’’. 

19 SEC. 4. DAMAGES. 

20 (a) DAMAGES.—Section 284 of title 35, United 

21 States Code, is amended to read as follows: 

22 ‘‘§ 284. Damages 

23 ‘‘(a) IN GENERAL.— 

24 ‘‘(1) COMPENSATORY DAMAGES.—Upon finding 

25 for a claimant, the court shall award the claimant 


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1 damages adequate to compensate for the infringe2 ment, but in no event less than a reasonable royalty 

3 for the use made of the invention by the infringer, 

4 together with interest and costs as determined by 

5 the court. 

6 ‘‘(2) INCREASED DAMAGES.—When the dam7 ages are not found by a jury, the court shall assess 

8 them. In either event the court may increase the 

9 damages up to 3 times the amount found or as10 sessed. Increased damages under this paragraph 

11 shall not apply to provisional rights under section 

12 154(d) of this title. 

13 ‘‘(3) LIMITATION.—Subsections (b) through (i) 

14 of this section apply only to the determination of the 

15 amount of reasonable royalty and shall not apply to 

16 the determination of other types of damages. 

17 ‘‘(b) HYPOTHETICAL NEGOTIATION.—For purposes 

18 of this section, the term ‘reasonable royalty’ means the 

19 amount that the infringer would have agreed to pay and 

20 the claimant would have agreed to accept if the infringer 

21 and claimant had voluntarily negotiated a license for use 

22 of the invention at the time just prior to when the infringe23 ment began. The court or the jury, as the case may be, 

24 shall assume that the infringer and claimant would have 

25 agreed that the patent is valid, enforceable, and infringed. 


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1 ‘‘(c) APPROPRIATE FACTORS.—The court or the jury, 

2 as the case may be, may consider any factors that are rel3 evant to the determination of the amount of a reasonable 

4 royalty. 

5 ‘‘(d) STANDARDIZED MEASURES.—The amount of a 

6 reasonable royalty shall not be determined by the use of 

7 a standard or average ratio for the division of profits, an 

8 industry average rate for royalties, or other methods that 

9 are not based on the particular benefits or advantages of 

10 the use of the invention, unless the party asserting the 

11 propriety of such a method demonstrates that— 

12 ‘‘(1) the use made of the invention is the pri13 mary reason for demand for the infringing product 

14 or process; 

15 ‘‘(2) the method consists of the use of an estab16 lished royalty; 

17 ‘‘(3) the method consists of the use of an indus18 try average range to confirm that an estimate of the 

19 amount of a reasonable royalty that is produced by 

20 an independently allowable method falls within a 

21 reasonable range; or 

22 ‘‘(4) no other method is reasonably available to 

23 determine the amount of a reasonable royalty and 

24 the use of the method is otherwise appropriate. 

25 ‘‘(e) COMPARABLE PATENTS.— 


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1 ‘‘(1) IN GENERAL.—The amount of a reason2 able royalty shall not be determined by comparison 

3 to royalties paid for patents other than the patent 

4 in suit unless— 

5 ‘‘(A) such other patents are used in the 

6 same or an analogous technological field; 

7 ‘‘(B) such other patents are found to be 

8 economically comparable to the patent in suit; 

9 and 

10 ‘‘(C) evidence of the value of such other 

11 patents is presented in conjunction with or as 

12 confirmation of other evidence for determining 

13 the amount of a reasonable royalty. 

14 ‘‘(2) FACTORS.—Factors that may be consid15 ered to determine whether another patent is eco16 nomically comparable to the patent in suit under 

17 paragraph (1)(A) include whether— 

18 ‘‘(A) the other patent is comparable to the 

19 patent in suit in terms of the overall signifi20 cance of the other patent to the product or 

21 process licensed under such other patent; and 

22 ‘‘(B) the product or process that uses the 

23 other patent is comparable to the infringing 

24 product or process based upon its profitability 

25 or a like measure of value. 


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1 ‘‘(f) FINANCIAL CONDITION.—The financial condi2 tion of the infringer as of the time of the trial shall not 

3 be relevant to the determination of the amount of a rea4 sonable royalty. 

5 ‘‘(g) SEQUENCING.—Either party may request that 

6 a patent-infringement trial be sequenced so that the court 

7 or the jury, as the case may be, decides questions of the 

8 patent’s infringement and validity before the issue of the 

9 amount of a reasonable royalty is presented to the court 

10 or the jury, as the case may be. The court shall grant 

11 such a request absent good cause to reject the request, 

12 such as the absence of issues of significant damages or 

13 infringement and validity. The sequencing of a trial pursu14 ant to this subsection shall not affect other matters, such 

15 as the timing of discovery. 

16 ‘‘(h) EXPERTS.—In addition to the expert disclosure 

17 requirements under rule 26(a)(2) of the Federal Rules of 

18 Civil Procedure, a party that intends to present the testi19 mony of an expert relating to the amount of a reasonable 

20 royalty shall provide— 

21 ‘‘(1) to the other parties to that civil action, the 

22 expert report relating to damages, including all data 

23 and other information considered by the expert in 

24 forming the opinions of the expert; and 


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1 ‘‘(2) to the court, at the same time as to the 

2 other parties, the complete statement of all opinions 

3 that the expert will express and the basis and rea4 sons for those opinions. 

5 ‘‘(i) JURY INSTRUCTIONS.—On the motion of any 

6 party and after allowing any other party to the civil action 

7 a reasonable opportunity to be heard, the court shall de8 termine whether there is no legally sufficient evidence to 

9 support 1 or more of the contentions of a party relating 

10 to the amount of a reasonable royalty. The court shall 

11 identify for the record those factors that are supported 

12 by legally sufficient evidence, and shall instruct the jury 

13 to consider only those factors when determining the 

14 amount of a reasonable royalty. The jury may not consider 

15 any factor for which legally sufficient evidence has not 

16 been admitted at trial.’’. 

17 (b) TESTIMONY BY EXPERTS.—Chapter 29 of title 

18 35, United States Code, as amended by section 11, is fur19 ther amended by adding at the end the following: 

20 ‘‘§ 299A. Testimony by experts 

21 ‘‘(a) FEDERAL RULE.—In a patent case, the court 

22 shall ensure that the testimony of a witness qualified as 

23 an expert by knowledge, skill, experience, training, or edu24 cation meets the requirements set forth in rule 702 of the 

25 Federal Rules of Evidence. 


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1 ‘‘(b) DETERMINATION OF RELIABILITY.—To deter2 mine whether an expert’s principles and methods are reli3 able, the court may consider, among other factors— 

4 ‘‘(1) whether the expert’s theory or technique 

5 can be or has been tested; 

6 ‘‘(2) whether the theory or technique has been 

7 subjected to peer review and publication; 

8 ‘‘(3) the known or potential error rate of the 

9 theory or technique, and the existence and mainte10 nance of standards controlling the technique’s oper11 ation; 

12 ‘‘(4) the degree of acceptance of the theory or 

13 technique within the relevant scientific or specialized 

14 community; 

15 ‘‘(5) whether the theory or technique is em16 ployed independently of litigation; or 

17 ‘‘(6) whether the expert has adequately consid18 ered or accounted for readily available alternative 

19 theories or techniques. 

20 ‘‘(c) REQUIRED EXPLANATION.—The court shall ex21 plain its reasons for allowing or barring the introduction 

22 of an expert’s proposed testimony under this section.’’. 

23 SEC. 5. POST-GRANT REVIEW PROCEEDINGS. 

24 (a) REEXAMINATION.—Section 303(a) of title 35, 

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


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1 ‘‘(a) Within 3 months after the owner of a patent 

2 files a request for reexamination under section 302, the 

3 Director shall determine whether a substantial new ques4 tion of patentability affecting any claim of the patent con5 cerned is raised by the request, with or without consider6 ation of other patents or printed publications. The exist7 ence of a substantial new question of patentability is not 

8 precluded by the fact that a patent or printed publication 

9 was previously cited by or to the Office or considered by 

10 the Office.’’. 

11 (b) REPEAL OF OPTIONAL INTER PARTES REEXAM12 INATION PROCEDURES.— 

13 (1) IN GENERAL.—Sections 311, 312, 313, 314, 

14 315, 316, 317, and 318 of title 35, United States 

15 Code, and the items relating to those sections in the 

16 table of sections, are repealed. 

17 (2) EFFECTIVE DATE.—Notwithstanding para18 graph (1), the provisions of sections 311, 312, 313, 

19 314, 315, 316, 317, and 318 of title 35, United 

20 States Code, shall continue to apply to any inter 

21 partes reexamination determination request filed on 

22 or before the effective date of subsection (c). 

23 (c) POST-GRANT REVIEW PROCEEDINGS.—Part III 

24 of title 35, United States Code, is amended by adding at 

25 the end the following: 


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1 ‘‘CHAPTER 32—POST-GRANT REVIEW 

2 PROCEEDINGS 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Relation to other proceedings or actions. 

‘‘323. Requirements of petition. 

‘‘324. Publication and public availability of petition. 

‘‘325. Consolidation or stay of proceedings. 

‘‘326. Submission of additional information. 

‘‘327. Institution of post-grant review proceedings. 

‘‘328. Determination not appealable. 

‘‘329. Conduct of post-grant review proceedings. 

‘‘330. Patent owner response. 

‘‘331. Proof and evidentiary standards. 

‘‘332. Amendment of the patent. 

‘‘333. Settlement. 

‘‘334. Decision of the board. 

‘‘335. Effect of decision. 

‘‘336. Appeal. 

3 ‘‘§ 321. Petition for post-grant review 

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

5 chapter, a person who has a substantial economic interest 

6 adverse to a patent may file with the Office a petition to 

7 institute a post-grant review proceeding for that patent. 

8 If instituted, such a proceeding shall be deemed to be ei9 ther a first-period proceeding or a second-period pro10 ceeding. The Director shall establish, by regulation, fees 

11 to be paid by the person requesting the proceeding, in such 

12 amounts as the Director determines to be reasonable, con13 sidering the aggregate costs of the post-grant review pro14 ceeding and the status of the petitioner. 

15 ‘‘(b) FIRST-PERIOD PROCEEDING.— 

16 ‘‘(1) SCOPE.—A petitioner in a first-period pro17 ceeding may request to cancel as unpatentable 1 or 


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1 more claims of a patent on any ground that could 

2 be raised under paragraph (2) or (3) of section 

3 282(b) (relating to invalidity of the patent or any 

4 claim). 

5 ‘‘(2) FILING DEADLINE.—A petition for a first6 period proceeding shall be filed not later than 9 

7 months after the grant of the patent or issuance of 

8 a reissue patent. 

9 ‘‘(c) SECOND-PERIOD PROCEEDING.— 

10 ‘‘(1) SCOPE.—A petitioner in a second-period 

11 proceeding may request to cancel as unpatentable 1 

12 or more claims of a patent only on a ground that 

13 could be raised under section 102 or 103 and only 

14 on the basis of prior art consisting of patents or 

15 printed publications. 

16 ‘‘(2) FILING DEADLINE.—A petition for a sec17 ond-period proceeding shall be filed after the later of 

18 either— 

19 ‘‘(A) 9 months after the grant of a patent 

20 or issuance of a reissue of a patent; or 

21 ‘‘(B) if a first-period proceeding is insti22 tuted under section 327, the date of the termi23 nation of such first-period proceeding. 


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1 ‘‘§ 322. Relation to other proceedings or actions 

2 ‘‘(a) EARLY ACTIONS.—A first-period proceeding 

3 may not be instituted until after a civil action alleging in4 fringement of the patent is finally concluded if— 

5 ‘‘(1) the infringement action is filed within 3 

6 months after the grant of the patent; 

7 ‘‘(2) a stay of the proceeding is requested by 

8 the patent owner; 

9 ‘‘(3) the Director determines that the infringe10 ment action is likely to address the same or substan11 tially the same questions of patentability that would 

12 be addressed in the proceeding; and 

13 ‘‘(4) the Director determines that a stay of the 

14 proceeding would not be contrary to the interests of 

15 justice. 

16 ‘‘(b) PENDING CIVIL ACTIONS.— 

17 ‘‘(1) INFRINGER’S ACTION.—A post-grant re18 view proceeding may not be instituted or maintained 

19 if the petitioner or real party in interest has filed a 

20 civil action challenging the validity of a claim of the 

21 patent. 

22 ‘‘(2) PATENT OWNER’S ACTION.—A second-pe23 riod proceeding may not be instituted if the petition 

24 requesting the proceeding is filed more than 3 

25 months after the date on which the petitioner, real 


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1 party in interest, or his privy is required to respond 

2 to a civil action alleging infringement of the patent. 

3 ‘‘(3) STAY OR DISMISSAL.—The Director may 

4 stay or dismiss a second-period proceeding if the pe5 titioner or real party in interest challenges the valid6 ity of a claim of the patent in a civil action. 

7 ‘‘(c) DUPLICATIVE PROCEEDINGS.—A post-grant re8 view or reexamination proceeding may not be instituted 

9 if— 

10 ‘‘(1) the petition requesting the proceeding 

11 identifies the same petitioner or real party in inter12 est and the same patent as a previous petition re13 questing a post-grant review proceeding; or 

14 ‘‘(2) the petition requests cancellation of a 

15 claim in a reissue patent that is identical to a claim 

16 in the original patent from which the reissue patent 

17 was issued, and the time limitations in section 321 

18 would bar filing a post-grant review petition for such 

19 original patent. 

20 ‘‘(d) ESTOPPEL.—The petitioner in any post-grant 

21 review proceeding under this chapter may not request or 

22 maintain a proceeding before the Office with respect to 

23 a claim, or assert either in a civil action arising in whole 

24 or in part under section 1338 of title 28 or in a proceeding 


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1 before the International Trade Commission that a claim 

2 in a patent is invalid, on any ground that— 

3 ‘‘(1) the petitioner, real party in interest, or his 

4 privy raised during a post-grant review proceeding 

5 resulting in a final decision under section 334; or 

6 ‘‘(2) the petitioner, real party in interest, or his 

7 privy could have raised during a second-period pro8 ceeding resulting in a final decision under section 

9 334. 

10 ‘‘§ 323. Requirements of petition 

11 ‘‘A petition filed under section 321 may be considered 

12 only if— 

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

14 the fee established by the Director under section 

15 321; 

16 ‘‘(2) the petition identifies all real parties in in17 terest; 

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

19 particularity, each claim challenged, the grounds on 

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

21 evidence that supports the grounds for each chal22 lenged claim, including— 

23 ‘‘(A) copies of patents and printed publica24 tions that the petitioner relies upon in support 

25 of the petition; and 


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1 ‘‘(B) affidavits or declarations of sup2 porting evidence and opinions, if the petitioner 

3 relies on other factual evidence or on expert 

4 opinions; 

5 ‘‘(4) the petition provides such other informa6 tion as the Director may require by regulation; and 

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

8 documents required under paragraphs (3) and (4) to 

9 the patent owner or, if applicable, the designated 

10 representative of the patent owner. 

11 ‘‘§ 324. Publication and public availability of petition 

12 ‘‘(a) IN GENERAL.—As soon as practicable after the 

13 receipt of a petition under section 321, the Director 

14 shall— 

15 ‘‘(1) publish the petition in the Federal Reg16 ister; and 

17 ‘‘(2) make that petition available on the website 

18 of the United States Patent and Trademark Office. 

19 ‘‘(b) PUBLIC AVAILABILITY.—The file of any pro20 ceeding under this chapter shall be made available to the 

21 public except that any petition or document filed with the 

22 intent that it be sealed shall be accompanied by a motion 

23 to seal. Such petition or document shall be treated as 

24 sealed, pending the outcome of the ruling on the motion. 


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1 Failure to file a motion to seal will result in the pleadings 

2 being placed in the public record. 

3 ‘‘§ 325. Consolidation or stay of proceedings 

4 ‘‘(a) FIRST-PERIOD PROCEEDINGS.—If more than 1 

5 petition for a first-period proceeding is properly filed 

6 against the same patent and the Director determines that 

7 more than 1 of these petitions warrants the instituting of 

8 a first-period proceeding under section 327, the Director 

9 shall consolidate such proceedings into a single first-period 

10 proceeding. 

11 ‘‘(b) SECOND-PERIOD PROCEEDINGS.—If the Direc12 tor institutes a second-period proceeding, the Director, in 

13 his discretion, may join as a party to that second-period 

14 proceeding any person who properly files a petition under 

15 section 321 that the Director, after receiving a preliminary 

16 response under section 330 or the expiration of the time 

17 for filing such a response, determines warrants the insti18 tuting of a second-period proceeding under section 327. 

19 ‘‘(c) OTHER PROCEEDINGS.—Notwithstanding sec20 tions 135(a), 251, and 252, and chapter 30, during the 

21 pendency of any post-grant review proceeding the Director 

22 may determine the manner in which any proceeding or 

23 matter involving the patent that is before the Office may 

24 proceed, including providing for stay, transfer, consolida25 tion, or termination of any such proceeding or matter. 


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1 ‘‘§ 326. Submission of additional information 

2 ‘‘A petitioner under this chapter shall file such addi3 tional information with respect to the petition as the Di4 rector may require by regulation. 

5 ‘‘§ 327. Institution of post-grant review proceedings 

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

7 a post-grant review proceeding to commence unless the Di8 rector determines that the information presented in the 

9 petition, if such information is not rebutted, would provide 

10 a sufficient basis to conclude that at least 1 of the claims 

11 challenged in the petition is unpatentable. 

12 ‘‘(b) ADDITIONAL GROUNDS.—In the case of a peti13 tion for a first-period proceeding, the determination re14 quired under subsection (a) may be satisfied by a showing 

15 that the petition raises a novel or unsettled legal question 

16 that is important to other patents or patent applications. 

17 ‘‘(c) SUCCESSIVE PETITIONS.—The Director may not 

18 institute an additional second-period proceeding if a prior 

19 second-period proceeding has been instituted and the time 

20 period established under section 329(b)(2) for requesting 

21 joinder under section 325(b) has expired, unless the Direc22 tor determines that— 

23 ‘‘(1) the additional petition satisfies the require24 ments under subsection (a); and 

25 ‘‘(2) either— 


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1 ‘‘(A) the additional petition presents excep2 tional circumstances; or 

3 ‘‘(B) such an additional proceeding is rea4 sonably required in the interests of justice. 

5 ‘‘(d) TIMING.—The Director shall determine whether 

6 to institute a post-grant review proceeding under this 

7 chapter within 3 months after receiving a preliminary re8 sponse under section 330 or the expiration of the time for 

9 filing such a response. 

10 ‘‘(e) NOTICE.—The Director shall notify the peti11 tioner and patent owner, in writing, of the Director’s de12 termination under subsection (a). The Director shall pub13 lish each notice of institution of a post-grant review pro14 ceeding in the Federal Register and make such notice 

15 available on the website of the United States Patent and 

16 Trademark Office. Such notice shall list the date on which 

17 the proceeding shall commence. 

18 ‘‘§ 328. Determination not appealable 

19 ‘‘The determination by the Director regarding wheth20 er to institute a post-grant review proceeding under sec21 tion 327 shall not be appealable. 

22 ‘‘§ 329. Conduct of post-grant review proceedings 

23 ‘‘(a) IN GENERAL.—The Director shall prescribe reg24 ulations— 


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1 ‘‘(1) in accordance with section 2(b)(2), estab2 lishing and governing post-grant review proceedings 

3 under this chapter and their relationship to other 

4 proceedings under this title; 

5 ‘‘(2) for setting forth the standards for 

6 showings of sufficient grounds to institute a pro7 ceeding under section 321(a) and subsections (a), 

8 (b), and (c) of section 327; 

9 ‘‘(3) providing for the publication in the Fed10 eral Register all requests for the institution of post11 grant proceedings; 

12 ‘‘(4) establishing procedures for the submission 

13 of supplemental information after the petition is 

14 filed; and 

15 ‘‘(5) setting forth procedures for discovery of 

16 relevant evidence, including that such discovery shall 

17 be limited to evidence directly related to factual as18 sertions advanced by either party in the proceeding. 

19 ‘‘(b) POST-GRANT REVIEW REGULATIONS.—The reg20 ulations required under subsection (a)(1) shall— 

21 ‘‘(1) require that the final determination in any 

22 post-grant review proceeding be issued not later 

23 than 1 year after the date on which the Director no24 tices the institution of a post-grant proceeding under 

25 this chapter, except that the Director may, for good 


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1 cause shown, extend the 1-year period by not more 

2 than 6 months, and may adjust the time periods in 

3 this paragraph in the case of joinder under section 

4 325(b); 

5 ‘‘(2) set a time period for requesting joinder 

6 under section 325(b); 

7 ‘‘(3) allow for discovery upon order of the Di8 rector, provided that in a second-period proceeding 

9 discovery shall be limited to— 

10 ‘‘(A) the deposition of witnesses submitting 

11 affidavits or declarations; and 

12 ‘‘(B) what is otherwise necessary in the in13 terest of justice; 

14 ‘‘(4) prescribe sanctions for abuse of discovery, 

15 abuse of process, or any other improper use of the 

16 proceeding, such as to harass or to cause unneces17 sary delay or unnecessary increase in the cost of the 

18 proceeding; 

19 ‘‘(5) provide for protective orders governing the 

20 exchange and submission of confidential information; 

21 ‘‘(6) ensure that any information submitted by 

22 the patent owner in support of any amendment en23 tered under section 332 is made available to the 

24 public as part of the prosecution history of the pat25 ent; and 


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1 ‘‘(7) provide either party with the right to an 

2 oral hearing as part of the proceeding. 

3 ‘‘(c) CONSIDERATIONS.—In prescribing regulations 

4 under this section, the Director shall consider the effect 

5 on the economy, the integrity of the patent system, and 

6 the efficient administration of the Office. 

7 ‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 

8 and Appeal Board shall, in accordance with section 6(b), 

9 conduct each proceeding authorized by the Director. 

10 ‘‘§ 330. Patent owner response 

11 ‘‘(a) PRELIMINARY RESPONSE.—If a post-grant re12 view petition is filed under section 321, the patent owner 

13 shall have the right to file a preliminary response— 

14 ‘‘(1) in the case of a first-period proceeding, 

15 within 2 months of the expiration of the time for fil16 ing a petition for a first-period proceeding; and 

17 ‘‘(2) in the case of a second-period proceeding, 

18 within a time period set by the Director. 

19 ‘‘(b) CONTENT OF RESPONSE.—A preliminary re20 sponse to a petition for a post-grant review proceeding 

21 shall set forth reasons why no post-grant review pro22 ceeding should be instituted based upon the failure of the 

23 petition to meet any requirement of this chapter. 

24 ‘‘(c) ADDITIONAL RESPONSE.—After a post-grant re25 view proceeding under this chapter has been instituted 


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1 with respect to a patent, the patent owner shall have the 

2 right to file, within a time period set by the Director, a 

3 response to the petition. The patent owner shall file with 

4 the response, through affidavits or declarations, any addi5 tional factual evidence and expert opinions on which the 

6 patent owner relies in support of the response. 

7 ‘‘§ 331. Proof and evidentiary standards 

8 ‘‘(a) IN GENERAL.—The presumption of validity set 

9 forth in section 282 of this title shall apply in post-grant 

10 review proceedings instituted under this chapter. 

11 ‘‘(b) BURDEN OF PROOF.—The petitioner shall have 

12 the burden of proving a proposition of invalidity by a pre13 ponderance of the evidence in a first-period proceeding 

14 and by clear and convincing evidence in a second-period 

15 proceeding. 

16 ‘‘§ 332. Amendment of the patent 

17 ‘‘(a) IN GENERAL.—During a post-grant review pro18 ceeding instituted under this chapter, the patent owner 

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

20 the following ways: 

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

22 ‘‘(2) For each challenged claim, propose a rea23 sonable number of substitute claims. 

24 ‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 

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1 titioner and the patent owner to materially advance the 

2 settlement of a proceeding under section 333, or upon the 

3 request of the patent owner for good cause shown. 

4 ‘‘(c) SCOPE OF CLAIMS.—An amendment under this 

5 section may not enlarge the scope of the claims of the pat6 ent or introduce new matter. 

7 ‘‘§ 333. Settlement 

8 ‘‘(a) IN GENERAL.—A post-grant review proceeding 

9 instituted under this chapter shall be terminated with re10 spect to any petitioner upon the joint request of the peti11 tioner and the patent owner, unless the Office has decided 

12 the matter before the request for termination is filed. If 

13 the post-grant review proceeding is terminated with re14 spect to a petitioner under this section, no estoppel under 

15 this chapter shall apply to that petitioner. If no petitioner 

16 remains in the post-grant review proceeding, the Office 

17 may terminate the post-grant review proceeding or pro18 ceed to a final written decision under section 334. 

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

20 understanding between the patent owner and a petitioner, 

21 including any collateral agreements referred to in such 

22 agreement or understanding, made in connection with, or 

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

24 proceeding under this section shall be in writing and a 

25 true copy of such agreement or understanding shall be 


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1 filed in the United States Patent and Trademark Office 

2 before the termination of the post-grant review proceeding 

3 as between the parties to the agreement or understanding. 

4 If any party filing such agreement or understanding so 

5 requests, the copy shall be kept separate from the file of 

6 the post-grant review proceeding, and shall be made avail7 able only to Federal Government agencies upon written 

8 request, or to any other person on a showing of good 

9 cause. 

10 ‘‘§ 334. Decision of the board 

11 ‘‘If the post-grant review proceeding is instituted and 

12 not dismissed under this chapter, the Patent Trial and 

13 Appeal Board shall issue a final written decision with re14 spect to the patentability of any patent claim challenged 

15 and any new claim added under section 332. 

16 ‘‘§ 335. Effect of decision 

17 ‘‘If the Patent Trial and Appeal Board issues a final 

18 decision under section 334 and the time for appeal has 

19 expired or any appeal proceeding has terminated, the Di20 rector shall issue and publish a certificate canceling any 

21 claim of the patent finally determined to be unpatentable 

22 and incorporating in the patent by operation of the certifi23 cate any new claim determined to be patentable. 


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1 ‘‘§ 336. Appeal 

2 ‘‘A party dissatisfied with the final determination of 

3 the Patent Trial and Appeal Board in a post-grant review 

4 proceeding instituted under this chapter may appeal the 

5 determination under sections 141 through 144. Any party 

6 to the post-grant review proceeding shall have the right 

7 to be a party to the appeal.’’. 

8 (d) TECHNICAL AND CONFORMING AMENDMENT.— 

9 The table of chapters for part III of title 35, United States 

10 Code, is amended by adding at the end the following: 

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

11 (e) REGULATIONS AND EFFECTIVE DATE.— 

12 (1) REGULATIONS.—The Under Secretary of 

13 Commerce for Intellectual Property and the Director 

14 of the United States Patent and Trademark Office 

15 (in this subsection referred to as the ‘‘Director’’) 

16 shall, not later than the date that is 1 year after the 

17 date of the enactment of this Act, issue regulations 

18 to carry out chapter 32 of title 35, United States 

19 Code, as added by subsection (c) of this section. 

20 (2) APPLICABILITY.—The amendments made 

21 by subsection (c) shall take effect on the date that 

22 is 1 year after the date of the enactment of this Act 

23 and shall apply only to patents issued on or after 

24 that date, except that, in the case of a patent issued 

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1 plication filed between September 15, 1999 and the 

2 effective date of subsection (c), a petition for second3 period review may be filed. 

4 (3) PENDING INTERFERENCES.—The Director 

5 shall determine the procedures under which inter6 ferences commenced before the effective date under 

7 paragraph (2) are to proceed, including whether any 

8 such interference is to be dismissed without preju9 dice to the filing of a petition for a post-grant review 

10 proceeding under chapter 32 of title 35, United 

11 States Code, or is to proceed as if this Act had not 

12 been enacted. The Director shall include such proce13 dures in regulations issued under paragraph (1). 

14 SEC. 6. DEFINITION; PATENT TRIAL AND APPEAL BOARD. 

15 (a) DEFINITION.—Section 100 of title 35, United 

16 States Code, as amended by section 2 of this Act, is fur17 ther amended in subsection (e), by striking ‘‘or inter 

18 partes reexamination under section 311’’. 

19 (b) PATENT TRIAL AND APPEAL BOARD.—Section 6 

20 of title 35, United States Code, is amended to read as 

21 follows: 

22 ‘‘§ 6. Patent trial and appeal board 

23 ‘‘(a) ESTABLISHMENT AND COMPOSITION.—There 

24 shall be in the Office a Patent Trial and Appeal Board. 

25 The Director, the Deputy Director, the Commissioner for 


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1 Patents, the Commissioner for Trademarks, and the ad2 ministrative patent judges shall constitute the Patent 

3 Trial and Appeal Board. The administrative patent judges 

4 shall be persons of competent legal knowledge and sci5 entific ability who are appointed by the Secretary. Any ref6 erence in any Federal law, Executive order, rule, regula7 tion, or delegation of authority, or any document of or 

8 pertaining to the Board of Patent Appeals and Inter9 ferences is deemed to refer to the Patent Trial and Appeal 

10 Board. 

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

12 shall— 

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

14 adverse decisions of examiners upon application for 

15 patents; 

16 ‘‘(2) on written appeal of a patent owner, re17 view adverse decisions of examiners upon patents in 

18 reexamination proceedings under chapter 30; 

19 ‘‘(3) determine priority and patentability of in20 vention in derivation proceedings under subsection 

21 135(a); and 

22 ‘‘(4) conduct post-grant review proceedings 

23 under chapter 32. 

24 Each appeal, derivation, and post-grant review proceeding 

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


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1 and Appeal Board, who shall be designated by the Direc2 tor. Only the Patent Trial and Appeal Board may grant 

3 rehearings.’’. 

4 SEC. 7. SUBMISSIONS BY THIRD PARTIES AND OTHER 

5 QUALITY ENHANCEMENTS. 

6 Section 122 of title 35, United States Code, is 

7 amended by adding at the end the following: 

8 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR9 TIES.— 

10 ‘‘(1) IN GENERAL.—Any person may submit for 

11 consideration and inclusion in the record of a patent 

12 application, any patent, published patent application, 

13 or other publication of potential relevance to the ex14 amination of the application, if such submission is 

15 made in writing before the earlier of— 

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

17 section 151 is mailed in the application for pat18 ent; or 

19 ‘‘(B) either— 

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

21 the application for patent is published 

22 under section 122, or 

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

24 under section 132 of any claim by the exVerDate Aug 31 2005 03:51 Sep 30, 2008 Jkt 069200 PO 00000 Frm 00048 Fmt 6652 Sfmt 6201 E:\BILLS\S3600.IS S3600

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1 aminer during the examination of the ap2 plication for patent, 

3 whichever occurs later. 

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

5 under paragraph (1) shall— 

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

7 asserted relevance of each submitted document; 

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

9 Director may prescribe; and 

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

11 making such submission affirming that the sub12 mission was made in compliance with this sec13 tion.’’. 

14 SEC. 8. VENUE. 

15 (a) VENUE FOR PATENT CASES.—Section 1400 of 

16 title 28, United States Code, is amended by striking sub17 section (b) and inserting the following: 

18 ‘‘(b) Notwithstanding subsections (b) and (c) of sec19 tion 1391 of this title, any civil action for patent infringe20 ment or any action for declaratory judgment arising under 

21 any Act of Congress relating to patents may be brought 

22 only in a judicial district— 

23 ‘‘(1) where the defendant has its principal place 

24 of business or is incorporated; 


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1 ‘‘(2) where the defendant has committed acts of 

2 infringement and has a regular and established 

3 physical facility; 

4 ‘‘(3) where the defendant has agreed or con5 sented to be sued; 

6 ‘‘(4) where the invention claimed in a patent in 

7 suit was conceived or actually reduced to practice; 

8 ‘‘(5) where significant research and develop9 ment of an invention claimed in a patent in suit oc10 curred at a regular and established physical facility; 

11 ‘‘(6) where a party has a regular and estab12 lished physical facility that such party controls and 

13 operates and has— 

14 ‘‘(A) engaged in management of significant 

15 research and development of an invention 

16 claimed in a patent in suit; 

17 ‘‘(B) manufactured a product that em18 bodies an invention claimed in a patent in suit; 

19 or 

20 ‘‘(C) implemented a manufacturing process 

21 that embodies an invention claimed in a patent 

22 in suit; 

23 ‘‘(7) where a nonprofit organization whose 

24 function is the management of inventions on behalf 

25 of an institution of higher education (as that term 


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1 is defined under section 101(a) of the Higher Edu2 cation Act of 1965 (20 U.S.C. 1001(a))), including 

3 the patent in suit, has its principal place of business; 

4 or 

5 ‘‘(8) for foreign defendants that do not meet 

6 the requirements of paragraphs (1) or (2), according 

7 to section 1391(d) of this title.’’. 

8 (b) TECHNICAL AMENDMENTS RELATING TO

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

10 of title 35, United States Code, and section 1071(b)(4) 

11 of an Act entitled ‘‘Act to provide for the registration and 

12 protection of trademarks used in commerce, to carry out 

13 the provisions of certain international conventions, and for 

14 other purposes’’, approved July 5, 1946 (commonly re15 ferred to as the ‘‘Trademark Act of 1946’’ or the 

16 ‘‘Lanham Act’’) are each amended by striking ‘‘United 

17 States District Court for the District of Columbia’’ each 

18 place that term appears and inserting ‘‘United States Dis19 trict Court for the Eastern District of Virginia’’. 

20 SEC. 9. PATENT AND TRADEMARK OFFICE REGULATORY 

21 AUTHORITY. 

22 (a) FEE SETTING.— 

23 (1) IN GENERAL.—The Director shall have au24 thority to set or adjust by rule any fee established 

25 or charged by the Office under sections 41 and 376 


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1 of title 35, United States Code or under section 31 

2 of the Trademark Act of 1946 (15 U.S.C. 1113) for 

3 the filing or processing of any submission to, and for 

4 all other services performed by or materials fur5 nished by, the Office, provided that such fee 

6 amounts are set to reasonably compensate the Office 

7 for the services performed. 

8 (2) REDUCTION OF FEES IN CERTAIN FISCAL

9 YEARS.—In any fiscal year, the Director— 

10 (A) shall consult with the Patent Public 

11 Advisory Committee and the Trademark Public 

12 Advisory Committee on the advisability of re13 ducing any fees described in paragraph (1); and 

14 (B) after that consultation may reduce 

15 such fees. 

16 (3) ROLE OF THE PUBLIC ADVISORY COM17 MITTEE.—The Director shall— 

18 (A) submit to the Patent or Trademark 

19 Public Advisory Committee, or both, as appro20 priate, any proposed fee under paragraph (1) 

21 not less than 45 days before publishing any 

22 proposed fee in the Federal Register; 

23 (B) provide the relevant advisory com24 mittee described in subparagraph (A) a 30-day 

25 period following the submission of any proposed 


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1 fee, on which to deliberate, consider, and com2 ment on such proposal, and require that— 

3 (i) during such 30-day period, the rel4 evant advisory committee hold a public 

5 hearing related to such proposal; and 

6 (ii) the Director shall assist the rel7 evant advisory committee in carrying out 

8 such public hearing, including by offering 

9 the use of Office resources to notify and 

10 promote the hearing to the public and in11 terested stakeholders; 

12 (C) require the relevant advisory com13 mittee to make available to the public a written 

14 report detailing the comments, advice, and rec15 ommendations of the committee regarding any 

16 proposed fee; 

17 (D) consider and analyze any comments, 

18 advice, or recommendations received from the 

19 relevant advisory committee before setting or 

20 adjusting any fee; and 

21 (E) notify, through the Chair and Ranking 

22 Member of the Senate and House Judiciary 

23 Committees, the Congress of any final decision 

24 regarding proposed fees. 


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1 (4) PUBLICATION IN THE FEDERAL REG2 ISTER.— 

3 (A) IN GENERAL.—Any rules prescribed 

4 under this subsection shall be published in the 

5 Federal Register. 

6 (B) RATIONALE.—Any proposal for a 

7 change in fees under this section shall— 

8 (i) be published in the Federal Reg9 ister; and 

10 (ii) include, in such publication, the 

11 specific rationale and purpose for the pro12 posal, including the possible expectations 

13 or benefits resulting from the proposed 

14 change. 

15 (C) PUBLIC COMMENT PERIOD.—Following 

16 the publication of any proposed fee in the Fed17 eral Register pursuant to subparagraph (A), the 

18 Director shall seek public comment for a period 

19 of not less than 45 days. 

20 (5) CONGRESSIONAL COMMENT PERIOD.—Fol21 lowing the notification described in paragraph 

22 (3)(E), Congress shall have not more than 45 days 

23 to consider and comment on any proposed fee under 

24 paragraph (1). No proposed fee shall be effective 

25 prior to the end of such 45-day comment period. 


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1 (6) RULE OF CONSTRUCTION.—No rules pre2 scribed under this subsection may diminish— 

3 (A) an applicant’s rights under this title or 

4 the Trademark Act of 1946; or 

5 (B) any rights under a ratified treaty. 

6 (b) FEES FOR PATENT SERVICES.—Division B of 

7 Public Law 108–447 is amended in title VIII of the De8 partments of Commerce, Justice and State, the Judiciary, 

9 and Related Agencies Appropriations Act, 2005, in section 

10 801(a) by striking ‘‘During fiscal years 2005, 2006, and 

11 2007,’’, and inserting ‘‘Until such time as the Director 

12 sets or adjusts the fees otherwise,’’. 

13 (c) ADJUSTMENT OF TRADEMARK FEES.—Division 

14 B of Public Law 108–447 is amended in title VIII of the 

15 Departments of Commerce, Justice and State, the Judici16 ary and Related Agencies Appropriations Act, 2005, in 

17 section 802(a) by striking ‘‘During fiscal years 2005, 

18 2006, and 2007,’’, and inserting ‘‘Until such time as the 

19 Director sets or adjusts the fees otherwise,’’. 

20 (d) EFFECTIVE DATE, APPLICABILITY, AND TRANSI21 TIONAL PROVISION.—Division B of Public Law 108–447 

22 is amended in title VIII of the Departments of Commerce, 

23 Justice and State, the Judiciary and Related Agencies Ap24 propriations Act, 2005, in section 803(a) by striking ‘‘and 


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1 shall apply only with respect to the remaining portion of 

2 fiscal year 2005 and fiscal year 2006.’’. 

3 (e) RULE OF CONSTRUCTION.—Nothing in this sec4 tion shall be construed to affect any other provision of Di5 vision B of Public Law 108–447, including section 801(c) 

6 of title VII of the Departments of Commerce, Justice and 

7 State, the Judiciary and Related Agencies Appropriations 

8 Act, 2005. 

9 (f) DEFINITIONS.—In this section: 

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

11 the Director of the United States Patent and Trade12 mark Office. 

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

14 United States Patent and Trademark Office. 

15 (3) TRADEMARK ACT OF 1946.—The term 

16 ‘‘Trademark Act of 1946’’ means an Act entitled 

17 ‘‘Act to provide for the registration and protection 

18 of trademarks used in commerce, to carry out the 

19 provisions of certain international conventions, and 

20 for other purposes’’, approved July 5, 1946 (15 

21 U.S.C. 1051 et seq.) (commonly referred to as the 

22 Trademark Act of 1946 or the Lanham Act). 


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1 SEC. 10. APPLICANT QUALITY SUBMISSIONS. 

2 (a) IN GENERAL.—Chapter 11 of title 35, United 

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

5 ‘‘§ 123. Additional information 

6 ‘‘(a) INCENTIVES.—The Director may, by regulation, 

7 offer incentives to applicants who submit a search report, 

8 a patentability analysis, or other information relevant to 

9 patentability. Such incentives may include prosecution 

10 flexibility, modifications to requirements for adjustment of 

11 a patent term pursuant to section 154(b) of this title, or 

12 modifications to fees imposed pursuant to section 9 of the 

13 Patent Reform Act of 2008. 

14 ‘‘(b) ADMISSIBILITY OF RECORD.—If the Director 

15 certifies that an applicant has satisfied the requirements 

16 of the regulations issued pursuant to this section with re17 gard to a patent, the record made in a matter or pro18 ceeding before the Office involving that patent or efforts 

19 to obtain the patent shall not be admissible to construe 

20 the patent in a civil action or in a proceeding before the 

21 International Trade Commission, except that such record 

22 may be introduced to demonstrate that the patent owner 

23 is estopped from asserting that the patent is infringed 

24 under the doctrine of equivalents. The Director may, by 

25 regulation, identify any material submitted in an attempt 

26 to satisfy the requirements of any regulations issued purVerDate Aug 31 2005 03:51 Sep 30, 2008 Jkt 069200 PO 00000 Frm 00057 Fmt 6652 Sfmt 6201 E:\BILLS\S3600.IS S3600

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1 suant to this section that also shall not be admissible to 

2 construe the patent in a civil action or in a proceeding 

3 before the International Trade Commission.’’. 

4 (b) RULE OF CONSTRUCTION.—Nothing in this sec5 tion shall be construed to imply that, prior to the date 

6 of enactment of this section, the Director either lacked or 

7 possessed the authority to offer incentives to applicants 

8 who submit a search report, a patentability analysis, or 

9 other information relevant to patentability. 

10 SEC. 11. INEQUITABLE CONDUCT AND CIVIL SANCTIONS 

11 FOR MISCONDUCT BEFORE THE OFFICE. 

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

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

15 ‘‘§ 298. Inequitable conduct 

16 ‘‘(a) IN GENERAL.—Except as provided under this 

17 section or section 299, a patent shall not be held invalid 

18 or unenforceable based upon misconduct before the Office. 

19 Nothing in this section shall be construed to create a cause 

20 of action or a defense in a civil action. 

21 ‘‘(b) ORDER TO REISSUE PATENT.— 

22 ‘‘(1) FINDING OF THE COURT.— 

23 ‘‘(A) IN GENERAL.—If a court in a civil 

24 action, upon motion of a party to the action, 

25 finds that it is more likely than not that a perVerDate Aug 31 2005 03:51 Sep 30, 2008 Jkt 069200 PO 00000 Frm 00058 Fmt 6652 Sfmt 6201 E:\BILLS\S3600.IS S3600

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1 son who participated in a matter or proceeding 

2 before the Office knowingly and intentionally 

3 deceived the Office by concealing material infor4 mation or by submitting false material informa5 tion in such matter or proceeding, the court 

6 shall order the patent to be made the subject of 

7 a reissue application under section 251. The 

8 motion shall set forth any basis upon which the 

9 moving party contends 1 or more claims of the 

10 patent are invalid in view of information relat11 ing to the conduct at issue not previously con12 sidered by the Director. The decision on a mo13 tion filed under this paragraph shall not be sub14 ject to appellate review. 

15 ‘‘(B) MATERIAL INFORMATION.—For pur16 poses of this paragraph, information is material 

17 if it is not part of the record or cumulative to 

18 information in the record and either establishes 

19 that a patent claim is not patentable or refutes 

20 a position that the applicant or patent owner 

21 took in response to a rejection of the claim as 

22 unpatentable. 

23 ‘‘(2) TIMING OF MOTION.—A motion described 

24 under paragraph (1) shall be filed promptly after 


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1 discovery of the conduct at issue by the moving 

2 party. 

3 ‘‘(3) REQUIRED SPECIFICITY IN COURT

4 ORDER.—An order issued by a court under para5 graph (1) shall contain findings of fact setting out 

6 with specificity the information relating to the con7 duct at issue not previously considered by the Direc8 tor and upon which the court based its order. The 

9 findings of fact shall not be used by a court except 

10 as provided under this paragraph. 

11 ‘‘(4) STAYS.—A court shall not stay a civil ac12 tion by reason of commencement of a reissue pro13 ceeding that was authorized to be filed under this 

14 section unless— 

15 ‘‘(A) the Director in a notification under 

16 section 132 makes a rejection of 1 or more 

17 claims of the patent; 

18 ‘‘(B) an allegation of infringement remains 

19 in the civil action for at least 1 of the claims 

20 rejected; and 

21 ‘‘(C) the court determines that the inter22 ests of justice require a stay of the action. 

23 ‘‘(5) JUDGMENT THAT PATENT IS UNENFORCE24 ABLE.—If a patentee involved in a civil action in 

25 which an order under this subsection is issued does 


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1 not seek reissue of the patent within 2 months of 

2 such order, the court shall enter judgment that the 

3 patent is unenforceable. 

4 ‘‘(c) PERMITTED REISSUE BY PATENTEE.—A pat5 entee may request reissue of a patent on the basis of infor6 mation not previously considered by the Director in con7 nection with a patent, or the efforts to obtain such patent, 

8 by filing an application for reissue under section 251. 

9 ‘‘(d) REQUIRED STATEMENT, AMENDED CLAIMS.— 

10 In any application for reissue of a patent authorized to 

11 be filed under this section, the patentee shall provide a 

12 statement to the Director containing the information de13 scribed in subsections (b) and (c). The reissue application 

14 may be filed with the omission of 1 or more claims of the 

15 original patent and with a single substitute claim of equiv16 alent or narrower scope replacing any omitted claim of the 

17 original patent. For a reissue application authorized to be 

18 filed under subsection (c), the statement shall identify 

19 with specificity the issues of patentability arising from the 

20 information and the basis upon which the claims in the 

21 reissue application are believed by the applicant to be pat22 entable notwithstanding the information. 

23 ‘‘(e) CONDUCT OF REISSUE PROCEEDING.— 

24 ‘‘(1) INITIAL ACTION.—The Director shall pro25 vide at least 1 of the notifications under section 132 


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1 or a notice of allowance under section 151 not later 

2 than 3 months after the filing date of an application 

3 for reissue authorized to be filed under this section. 

4 ‘‘(2) SCOPE OF PROCEEDING.— 

5 ‘‘(A) IN GENERAL.—A reissue proceeding 

6 authorized to be filed under this section shall, 

7 unless substitute claims are submitted, address 

8 only whether original claims continue to be pat9 entable after consideration of the additional in10 formation provided by the applicant for reissue 

11 pursuant to subsection (d) in combination with 

12 information already of record in the original 

13 patent. 

14 ‘‘(B) ISSUES OF PATENTABILITY.—If the 

15 Director determines during a reissue proceeding 

16 authorized to be filed under this section that 1 

17 or more of the original claims of the patent 

18 cannot be reissued and the time for appeal of 

19 such determination has expired or any appeal 

20 proceeding related to such determination has 

21 terminated, the Director shall notify the pat22 entee of the surrender of the patent in connec23 tion with the termination of the reissue pro24 ceeding, subject to the patentee’s right to obVerDate Aug 31 2005 03:51 Sep 30, 2008 Jkt 069200 PO 00000 Frm 00062 Fmt 6652 Sfmt 6201 E:\BILLS\S3600.IS S3600

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1 tain a reissue for claims the Director deter2 mines to be patentable. 

3 ‘‘(3) DURATION OF PROCEEDING.—For a re4 issue application authorized to be filed under sub5 section (b), a final decision on all issues of patent6 ability shall be made by the Director within 1 year 

7 from the date of the initial notification under para8 graph (1), subject to the right of the patentee to ap9 peal under section 134. 

10 ‘‘(4) TERMINATION OF PROCEEDING.—If the 

11 Director determines that all of the original claims 

12 continue to be patentable, the Director shall termi13 nate the proceeding without the surrender of the 

14 original patent. 

15 ‘‘(5) PROCEDURE AND APPEALS.— 

16 ‘‘(A) IN GENERAL.—A reissue application 

17 authorized to be filed under this section may 

18 not be abandoned by the applicant or otherwise 

19 terminated without surrender of the original 

20 patent, except as provided under this section, 

21 and shall be conducted as an ex parte matter 

22 before the Office. 

23 ‘‘(B) SPECIAL PROCEDURES.—Subject to 

24 subsection (d), no amendments other than an 

25 amendment presenting a single substitute claim 


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1 of equivalent or narrower scope for each can2 celed claim in the first reply to the first action 

3 under section 132 may be made during the ex4 amination of a reissue application authorized to 

5 be filed under this section. The Director may 

6 amend pending claims at any time on agree7 ment to a change proposed by the Director to 

8 the applicant. The Director may refuse to admit 

9 any paper filed after a second notification 

10 under section 132. 

11 ‘‘(C) CONTINUING APPLICATIONS

12 BARRED.—No application shall be entitled to 

13 the benefit of the filing date of an application 

14 authorized to be filed under this section. 

15 ‘‘(D) EXPANDED EXAMINATION.—The Di16 rector may consider additional information in17 troduced by the Director if substitute claims 

18 are presented. 

19 ‘‘(E) APPEAL.—An applicant in a reissue 

20 application authorized to be filed by this section 

21 dissatisfied with a decision by the Patent Trial 

22 and Appeal Board may appeal only under the 

23 provisions of sections 141 though 144. 

24 ‘‘(f) LIMITATION ON ENLARGING SCOPE OF

25 CLAIMS.—No patent may be reissued based upon the filVerDate Aug 31 2005 03:51 Sep 30, 2008 Jkt 069200 PO 00000 Frm 00064 Fmt 6652 Sfmt 6201 E:\BILLS\S3600.IS S3600

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1 ing of a reissue application authorized to be filed under 

2 this section that enlarges the scope of the claims of the 

3 original patent. 

4 ‘‘(g) SANCTIONS.—Except as provided under sub5 section (h), if a reissue proceeding authorized under this 

6 section concludes without the surrender of the original 

7 patent or with the grant of 1 or more reissued patents, 

8 no further sanctions may be imposed against the patentee 

9 in connection with the original patent or the reissued pat10 ents based upon misconduct arising from the concealment 

11 of information subsequently provided, or the misrepresen12 tation of information subsequently corrected in the state13 ment provided under subsection (d). 

14 ‘‘(h) RULE OF CONSTRUCTION.—Nothing in this sec15 tion shall be construed— 

16 ‘‘(1) to preclude the imposition of sanctions 

17 based upon criminal or antitrust laws (including sec18 tion 1001(a) of title 18, the first section of the Clay19 ton Act, and section 5 of the Federal Trade Com20 mission Act to the extent that section relates to un21 fair methods of competition); 

22 ‘‘(2) to limit the authority of the Director to in23 vestigate issues of possible misconduct and impose 

24 sanctions for misconduct in connection with matters 

25 or proceedings before the Office; or 


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1 ‘‘(3) to limit the authority of the Director to 

2 promulgate regulations under chapter 3 relating to 

3 sanctions for misconduct by representatives prac4 ticing before the Office. 

5 ‘‘§ 299. Civil sanctions for misconduct before the Of6 fice 

7 ‘‘(a) INFORMATION RELATING TO POSSIBLE MIS8 CONDUCT.—The Director shall provide by regulation pro9 cedures for receiving and reviewing information indicating 

10 that parties to a matter or proceeding before the Office 

11 may have engaged in misconduct in connection with such 

12 matter or proceeding. 

13 ‘‘(b) ADMINISTRATIVE PROCEEDING.— 

14 ‘‘(1) PROBABLE CAUSE.—The Director shall de15 termine, based on information received and reviewed 

16 under subsection (a), if there is probable cause to 

17 believe that 1 or more individuals or parties engaged 

18 in misconduct consisting of intentionally deceptive 

19 conduct of a material nature in connection with a 

20 matter or proceeding before the Office. A determina21 tion of probable cause by the Director under this 

22 paragraph shall be final and shall not be reviewable 

23 on appeal or otherwise. 

24 ‘‘(2) DETERMINATION.—If the Director finds 

25 probable cause under paragraph (1), the Director 


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1 shall, after notice and an opportunity for a hearing, 

2 and not later than 1 year after the date of such 

3 finding, determine whether misconduct consisting of 

4 intentionally deceptive conduct of a material nature 

5 in connection with the applicable matter or pro6 ceeding before the Office has occurred. The pro7 ceeding to determine whether such misconduct oc8 curred shall be before an individual designated by 

9 the Director. 

10 ‘‘(3) CIVIL SANCTIONS.— 

11 ‘‘(A) IN GENERAL.—If the Director deter12 mines under paragraph (2) that misconduct has 

13 occurred, the Director may levy a civil penalty 

14 against the party that committed such mis15 conduct. 

16 ‘‘(B) FACTORS.—In establishing the 

17 amount of any civil penalty to be levied under 

18 subparagraph (A), the Director shall consider— 

19 ‘‘(i) the materiality of the misconduct; 

20 ‘‘(ii) the impact of the misconduct on 

21 a decision of the Director regarding a pat22 ent, proceeding, or application; and 

23 ‘‘(iii) the impact of the misconduct on 

24 the integrity of matters or proceedings be25 fore the Office. 


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1 ‘‘(C) SANCTIONS.—A civil penalty levied 

2 under subparagraph (A) may consist of— 

3 ‘‘(i) a penalty of up to $150,000 for 

4 each act of misconduct; 

5 ‘‘(ii) in the case of a finding of a pat6 tern of misconduct, a penalty of up to 

7 $1,000,000; or 

8 ‘‘(iii) in the case of a finding of excep9 tional misconduct establishing that an ap10 plication for a patent amounted to a fraud 

11 practiced by or at the behest of a real 

12 party in interest of the application— 

13 ‘‘(I) a determination that 1 or 

14 more claims of the patent is unen15 forceable; or 

16 ‘‘(II) a penalty of up to 

17 $10,000,000. 

18 ‘‘(D) JOINT AND SEVERAL LIABILITY.— 

19 Any party found to have been responsible for 

20 misconduct in connection with any matter or 

21 proceeding before the Office under this section 

22 may be jointly and severally liable for any civil 

23 penalty levied under subparagraph (A). 


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1 ‘‘(E) DEPOSIT WITH THE TREASURY.— 

2 Any civil penalty levied under subparagraph (A) 

3 shall— 

4 ‘‘(i) accrue to the benefit of the 

5 United States Government; and 

6 ‘‘(ii) be deposited under ‘Miscella7 neous Receipts’ in the United States 

8 Treasury. 

9 ‘‘(F) AUTHORITY TO BRING ACTION FOR

10 RECOVERY OF PENALTIES.— 

11 ‘‘(i) IN GENERAL.—If any party re12 fuses to pay or remit to the United States 

13 Government a civil penalty levied under 

14 this paragraph, the United States may re15 cover such amounts in a civil action 

16 brought by the United States Attorney 

17 General on behalf of the Director in the 

18 United States District Court for the East19 ern District of Virginia. 

20 ‘‘(ii) INJUNCTIONS.—In any action 

21 brought under clause (i), the United States 

22 District Court for the Eastern District of 

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1 corporating the relief sought by the Direc2 tor. 

3 ‘‘(4) COMBINED PROCEEDINGS.—If the mis4 conduct that is the subject of a proceeding under 

5 this subsection is attributed to a practitioner who 

6 practices before the Office, the Director may com7 bine such proceeding with any other disciplinary pro8 ceeding under section 32 of this title. 

9 ‘‘(c) OBTAINING EVIDENCE.— 

10 ‘‘(1) IN GENERAL.—During the period in which 

11 an investigation for a finding of probable cause or 

12 for a determination of whether misconduct occurred 

13 in connection with any matter or proceeding before 

14 the Office is being conducted, the Director may re15 quire, by subpoena issued by the Director, persons 

16 to produce any relevant information, documents, re17 ports, answers, records, accounts, papers, and other 

18 documentary or testimonial evidence. 

19 ‘‘(2) ADDITIONAL AUTHORITY.—For the pur20 poses of carrying out this section, the Director— 

21 ‘‘(A) shall have access to, and the right to 

22 copy, any document, paper, or record, the Di23 rector determines pertinent to any investigation 

24 or determination under this section, in the pos25 session of any person; 


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1 ‘‘(B) may summon witnesses, take testi2 mony, and administer oaths; 

3 ‘‘(C) may require any person to produce 

4 books or papers relating to any matter per5 taining to such investigation or determination; 

6 and 

7 ‘‘(D) may require any person to furnish in 

8 writing, in such detail and in such form as the 

9 Director may prescribe, information in their 

10 possession pertaining to such investigation or 

11 determination. 

12 ‘‘(3) WITNESSES AND EVIDENCE.— 

13 ‘‘(A) IN GENERAL.—The Director may re14 quire the attendance of any witness and the 

15 production of any documentary evidence from 

16 any place in the United States at any des17 ignated place of hearing. 

18 ‘‘(B) CONTUMACY.— 

19 ‘‘(i) ORDERS OF THE COURT.—In the 

20 case of contumacy or failure to obey a sub21 poena issued under this subsection, any 

22 appropriate United States district court or 

23 territorial court of the United States may 

24 issue an order requiring such person— 


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1 ‘‘(I) to appear before the Direc2 tor; 

3 ‘‘(II) to appear at any other des4 ignated place to testify; and 

5 ‘‘(III) to produce documentary or 

6 other evidence. 

7 ‘‘(ii) FAILURE TO OBEY.—Any failure 

8 to obey an order issued under this sub9 paragraph court may be punished by the 

10 court as a contempt of that court. 

11 ‘‘(4) DEPOSITIONS.— 

12 ‘‘(A) IN GENERAL.—In any proceeding or 

13 investigation under this section, the Director 

14 may order a person to give testimony by deposi15 tion. 

16 ‘‘(B) REQUIREMENTS OF DEPOSITION.— 

17 ‘‘(i) OATH.—A deposition may be 

18 taken before an individual designated by 

19 the Director and having the power to ad20 minister oaths. 

21 ‘‘(ii) NOTICE.—Before taking a depo22 sition, the Director shall give reasonable 

23 notice in writing to the person ordered to 

24 give testimony by deposition under this 

25 paragraph. The notice shall state the name 


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1 of the witness and the time and place of 

2 taking the deposition. 

3 ‘‘(iii) WRITTEN TRANSCRIPT.—The 

4 testimony of a person deposed under this 

5 paragraph shall be under oath. The person 

6 taking the deposition shall prepare, or 

7 cause to be prepared, a written transcript 

8 of the testimony taken. The transcript 

9 shall be subscribed by the deponent. Each 

10 deposition shall be filed promptly with the 

11 Director. 

12 ‘‘(d) APPEAL.— 

13 ‘‘(1) IN GENERAL.—A party may appeal a de14 termination under subsection (b)(2) that misconduct 

15 occurred in connection with any matter or pro16 ceeding before the Office to the United States Court 

17 of Appeals for the Federal Circuit. 

18 ‘‘(2) NOTICE TO USPTO.—A party appealing 

19 under this subsection shall file in the Office a writ20 ten notice of appeal directed to the Director, within 

21 such time after the date of the determination from 

22 which the appeal is taken as the Director prescribes, 

23 but in no case less than 60 days after such date. 

24 ‘‘(3) REQUIRED ACTIONS OF THE DIRECTOR.— 

25 In any appeal under this subsection, the Director 


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1 shall transmit to the United States Court of Appeals 

2 for the Federal Circuit a certified list of the docu3 ments comprising the record in the determination 

4 proceeding. The court may request that the Director 

5 forward the original or certified copies of such docu6 ments during the pendency of the appeal. The court 

7 shall, before hearing the appeal, give notice of the 

8 time and place of the hearing to the Director and 

9 the parties in the appeal. 

10 ‘‘(4) AUTHORITY OF THE COURT.—The United 

11 States Court of Appeals for the Federal Circuit shall 

12 have power to enter, upon the pleadings and evi13 dence of record at the time the determination was 

14 made, a judgment affirming, modifying, or setting 

15 aside, in whole or in part, the determination, with or 

16 without remanding the case for a rehearing. The 

17 court shall not set aside or remand the determina18 tion made under subsection (b)(2) unless there is 

19 not substantial evidence on the record to support the 

20 findings or the determination is not in accordance 

21 with law. Any sanction levied under subsection 

22 (b)(3) shall not be set aside or remanded by the 

23 court, unless the court determines that such sanc24 tion constitutes an abuse of discretion of the Direc25 tor. 


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1 ‘‘(e) DEFINITION.—For purposes of this section, the 

2 term ‘person’ means any individual, partnership, corpora3 tion, company, association, firm, partnership, society, 

4 trust, estate, cooperative, association, or any other entity 

5 capable of suing and being sued in a court of law.’’. 

6 (b) SUSPENSION OR EXCLUSION FROM PRACTICE.— 

7 Section 32 of title 35, United States Code, is amended— 

8 (1) by striking ‘‘The Director may’’ and insert9 ing the following: 

10 ‘‘(a) IN GENERAL.—The Director may’’; and 

11 (2) by adding at the end the following: 

12 ‘‘(b) TOLLING OF TIME PERIOD.—The time period 

13 for instituting a proceeding under subsection (a), as pro14 vided in section 2462 of title 28, shall not begin to run 

15 where fraud, concealment, or misconduct is involved until 

16 the information regarding fraud, concealment, or mis17 conduct is made known in the manner set forth by regula18 tion under section 2(b)(2)(D) to an officer or employee 

19 of the United States Patent and Trademark Office des20 ignated by the Director to receive such information.’’. 

21 (c) EFFECTIVE DATE.— 

22 (1) IN GENERAL.—Except as otherwise pro23 vided under paragraph (2), the amendments made 

24 by this section shall take effect on the date of enact25 ment of this Act. 


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1 (2) INAPPLICABILITY TO PENDING LITIGA2 TION.—Subsections (a) and (b) of section 298 of 

3 title 35, United States Code (as added by the 

4 amendment made by subsection (a) of this section), 

5 shall apply to any civil action filed on or after the 

6 date of the enactment of this Act. 

7 SEC. 12. AUTHORITY OF THE DIRECTOR OF THE PATENT 

8 AND TRADEMARK OFFICE TO ACCEPT LATE 

9 FILINGS. 

10 (a) AUTHORITY.—Section 2 of title 35, United States 

11 Code, is amended by adding at the end the following: 

12 ‘‘(e) DISCRETION TO ACCEPT LATE FILINGS IN CER13 TAIN CASES OF UNINTENTIONAL DELAY.— 

14 ‘‘(1) IN GENERAL.—The Director may accept 

15 any application or other filing made by— 

16 ‘‘(A) an applicant for, or owner of, a pat17 ent after the applicable deadline set forth in 

18 this title with respect to the application or pat19 ent; or 

20 ‘‘(B) an applicant for, or owner of, a mark 

21 after the applicable deadline under the Trade22 mark Act of 1946 with respect to the registra23 tion or other filing of the mark, 

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1 in 30 days after such deadline showing, to the satis2 faction of the Director, that the delay was uninten3 tional. 

4 ‘‘(2) TREATMENT OF DIRECTOR’S ACTIONS ON

5 PETITION.—If the Director has not made a deter6 mination on a petition filed under paragraph (1) 

7 within 60 days after the date on which the petition 

8 is filed, the petition shall be deemed to be denied. A 

9 decision by the Director not to exercise, or a failure 

10 to exercise, the discretion provided by this subsection 

11 shall not be subject to judicial review. 

12 ‘‘(3) OTHER PROVISIONS NOT AFFECTED.— 

13 This subsection shall not apply to any other provi14 sion of this title, or to any provision of the Trade15 mark Act of 1946, that authorizes the Director to 

16 accept, under certain circumstances, applications or 

17 other filings made after a statutory deadline or to 

18 statutory deadlines that are required by reason of 

19 the obligations of the United States under any trea20 ty. 

21 ‘‘(4) DEFINITION.—In this subsection, the term 

22 ‘Trademark Act of 1946’ means the Act entitled ‘An 

23 Act to provide for the registration and protection of 

24 trademarks used in commerce, to carry out the pro25 visions of certain international conventions, and for 


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1 other purposes’, approved July 5, 1946 (15 U.S.C. 

2 1051 et seq.) (commonly referred to as the Trade3 mark Act of 1946 or the Lanham Act).’’. 

4 (b) APPLICABILITY.— 

5 (1) IN GENERAL.—The amendment made by 

6 subsection (a) shall apply to any application or other 

7 filing that— 

8 (A) is filed on or after the date of the en9 actment of this Act; or 

10 (B) on such date of enactment, is pending 

11 before the Director or is subject to judicial re12 view. 

13 (2) TREATMENT OF PENDING APPLICATIONS

14 AND FILINGS.—In the case of any application or fil15 ing described in paragraph (1)(B), the 30-day period 

16 prescribed in section 2(e)(1) of title 35, United 

17 States Code, as added by subsection (a) of this sec18 tion, shall be deemed to be the 30-day period begin19 ning on the date of the enactment of this Act. 

20 (c) CONVERSION OF DAY-BASED DEADLINES INTO

21 MONTH-BASED DEADLINES.— 

22 (1) Sections 141, 156(d)(2)(A), 

23 156(d)(2)(B)(ii), 156(d)(5)(C), and 282 of title 35, 

24 United States Code, are each amended by striking 


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1 ‘‘30 days’’ or ‘‘thirty days’’ each place that term ap2 pears and inserting ‘‘1 month’’. 

3 (2) Sections 135(c), 142, 145, 146, 

4 156(d)(2)(B)(ii), 156(d)(5)(C), and the matter pre5 ceding clause (i) of section 156(d)(2)(A) of title 35, 

6 United States Code, are each amended by striking 

7 ‘‘60 days’’ or ‘‘sixty days’’ each place that term ap8 pears and inserting ‘‘2 months’’. 

9 (3) The matter preceding subparagraph (A) of 

10 section 156(d)(1) and sections 156(d)(2)(B)(ii) and 

11 156(d)(5)(E) of title 35, United States Code, are 

12 each amended by striking ‘‘60-day’’ or ‘‘sixty-day’’ 

13 each place that term appears and inserting ‘‘2- 

14 month’’. 

15 (4) Sections 155 and 156(d)(2)(B)(i) of title 

16 35, United States Code, are each amended by strik17 ing ‘‘90 days’’ or ‘‘ninety days’’ each place that term 

18 appears and inserting ‘‘3 months’’. 

19 (5) Sections 154(b)(4)(A) and 156(d)(2)(B)(i) 

20 of title 35, United States Code, are each amended 

21 by striking ‘‘180 days’’ each place that term appears 

22 and inserting ‘‘6 months’’. 


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1 SEC. 13. LIMITATION ON DAMAGES AND OTHER REMEDIES 

2 WITH RESPECT TO PATENTS FOR METHODS 

3 IN COMPLIANCE WITH CHECK IMAGING 

4 METHODS. 

5 (a) LIMITATION.—Section 287 of title 35, United 

6 States Code, is amended by adding at the end the fol7 lowing: 

8 ‘‘(d)(1) With respect to the use by a financial institu9 tion of a check collection system that constitutes an in10 fringement under subsection (a) or (b) of section 271, the 

11 provisions of sections 281, 283, 284, and 285 shall not 

12 apply against the financial institution with respect to such 

13 a check collection system. 

14 ‘‘(2) For the purposes of this subsection— 

15 ‘‘(A) the term ‘check’ has the meaning given 

16 under section 3(6) of the Check Clearing for the 

17 21st Century Act (12 U.S.C. 5002(6)); 

18 ‘‘(B) the term ‘check collection system’ means 

19 the use, creation, transmission, receipt, storing, set20 tling, or archiving of truncated checks, substitute 

21 checks, check images, or electronic check data asso22 ciated with or related to any method, system, or 

23 process that furthers or effectuates, in whole or in 

24 part, any of the purposes of the Check Clearing for 

25 the 21st Century Act (12 U.S.C. 5001 et seq.); 


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1 ‘‘(C) the term ‘financial institution’ has the 

2 meaning given under section 509 of the Gramm3 Leach-Bliley Act (15 U.S.C. 6809); 

4 ‘‘(D) the term ‘substitute check’ has the mean5 ing given under section 3(16) of the Check Clearing 

6 for the 21st Century Act (12 U.S.C. 5002(16)); and 

7 ‘‘(E) the term ‘truncate’ has the meaning given 

8 under section 3(18) of the Check Clearing for the 

9 21st Century Act (12 U.S.C. 5002(18)). 

10 ‘‘(3) This subsection shall not limit or affect the en11 forcement rights of the original owner of a patent where 

12 such original owner— 

13 ‘‘(A) is directly engaged in the commercial 

14 manufacture and distribution of machinery or the 

15 commercial development of software; and 

16 ‘‘(B) has operated as a subsidiary of a bank 

17 holding company, as such term is defined under sec18 tion 2(a) of the Bank Holding Company Act of 1956 

19 (12 U.S.C. 1841(a)), prior to July 19, 2007. 

20 ‘‘(4) A party shall not manipulate its activities, or 

21 conspire with others to manipulate its activities, for pur22 poses of establishing compliance with the requirements of 

23 this subsection, including, without limitation, by granting 

24 or conveying any rights in the patent, enforcement of the 

25 patent, or the result of any such enforcement.’’. 


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1 (b) TAKINGS.—If this section is found to establish 

2 a taking of private property for public use without just 

3 compensation, this section shall be null and void. The ex4 clusive remedy for such a finding shall be invalidation of 

5 this section. In the event of such invalidation, for purposes 

6 of application of the time limitation on damages in section 

7 286 of title 35, United States Code, any action for patent 

8 infringement or counterclaim for infringement that could 

9 have been filed or continued but for this section, shall be 

10 considered to have been filed on the date of enactment 

11 of this Act or continued from such date of enactment. 

12 (c) EFFECTIVE DATE.—The amendment made by 

13 subsection (a) shall apply to any civil action for patent 

14 infringement pending or filed on or after the date of enact15 ment of this Act. 

16 SEC. 14. PATENT AND TRADEMARK OFFICE FUNDING. 

17 (a) DEFINITIONS.—In this section: 

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

19 the Director of the United States Patent and Trade20 mark Office. 

21 (2) FUND.—The term ‘‘Fund’’ means the pub22 lic enterprise revolving fund established under sub23 section (c). 

24 (3) OFFICE.—The term ‘‘Office’’ means the 

25 United States Patent and Trademark Office. 


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1 (4) TRADEMARK ACT OF 1946.—The term 

2 ‘‘Trademark Act of 1946’’ means an Act entitled 

3 ‘‘Act to provide for the registration and protection 

4 of trademarks used in commerce, to carry out the 

5 provisions of certain international conventions, and 

6 for other purposes’’, approved July 5, 1946 (15 

7 U.S.C. 1051 et seq.) (commonly referred to as the 

8 ‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 

9 (5) UNDERSECRETARY.—The term ‘‘Undersec10 retary’’ means the Under Secretary of Commerce for 

11 Intellectual Property. 

12 (b) FUNDING.— 

13 (1) IN GENERAL.—Section 42 of title 35, 

14 United States Code, is amended— 

15 (A) in subsection (b), by striking ‘‘Patent 

16 and Trademark Office Appropriation Account’’ 

17 and inserting ‘‘United States Patent and 

18 Trademark Office Public Enterprise Fund’’; 

19 and 

20 (B) in subsection (c), in the first sen21 tence— 

22 (i) by striking ‘‘To the extent’’ and all 

23 that follows through ‘‘fees’’ and inserting 

24 ‘‘Fees’’; and 


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1 (ii) by striking ‘‘shall be collected by 

2 and shall be available to the Director’’ and 

3 inserting ‘‘shall be collected by the Direc4 tor and shall be available until expended’’. 

5 (2) EFFECTIVE DATE.—The amendments made 

6 by paragraph (1) shall take effect on the later of— 

7 (A) October 1, 2008; or 

8 (B) the date of enactment of this Act. 

9 (c) USPTO REVOLVING FUND.— 

10 (1) ESTABLISHMENT.—There is established in 

11 the Treasury of the United States a revolving fund 

12 to be known as the ‘‘United States Patent and 

13 Trademark Office Public Enterprise Fund’’. Any 

14 amounts in the Fund shall be available for use by 

15 the Director without fiscal year limitation. 

16 (2) DERIVATION OF RESOURCES.—There shall 

17 be deposited into the Fund— 

18 (A) any fees collected under sections 41, 

19 42, and 376 of title 35, United States Code, 

20 provided that notwithstanding any other provi21 sion of law, if such fees are collected by, and 

22 payable to, the Director, the Director shall 

23 transfer such amounts to the Fund; and 

24 (B) any fees collected under section 31 of 

25 the Trademark Act of 1946 (15 U.S.C. 1113). 


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1 (3) EXPENSES.—Amounts deposited into the 

2 Fund under paragraph (2) shall be available, with3 out fiscal year limitation, to cover— 

4 (A) all expenses to the extent consistent 

5 with the limitation on the use of fees set forth 

6 in section 42(c) of title 35, United States Code, 

7 including all administrative and operating ex8 penses, determined in the discretion of the 

9 Under Secretary to be ordinary and reasonable, 

10 incurred by the Under Secretary and the Direc11 tor for the continued operation of all services, 

12 programs, activities, and duties of the Office, as 

13 such services, programs, activities, and duties 

14 are described under— 

15 (i) title 35, United States Code; and 

16 (ii) the Trademark Act of 1946; and 

17 (B) all expenses incurred pursuant to any 

18 obligation, representation, or other commitment 

19 of the Office. 

20 (4) CUSTODIANS OF MONEY.—Notwithstanding 

21 section 3302 of title 31, United States Code, any 

22 funds received by the Director and transferred to 

23 Fund, or any amounts directly deposited into the 

24 Fund, may be used— 


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1 (A) to cover the expenses described in 

2 paragraph (3); and 

3 (B) to purchase obligations of the United 

4 States, or any obligations guaranteed by the 

5 United States. 

6 (d) ANNUAL REPORT.—Not later than 60 days after 

7 the end of each fiscal year, the Under Secretary and the 

8 Director shall submit a report to Congress which shall— 

9 (1) summarize the operations of the Office for 

10 the preceding fiscal year, including financial details 

11 and staff levels broken down by each major activity 

12 of the Office; 

13 (2) detail the operating plan of the Office, in14 cluding specific expense and staff needs for the up15 coming fiscal year; 

16 (3) describe the long term modernization plans 

17 of the Office; 

18 (4) set forth details of any progress towards 

19 such modernization plans made in the previous fiscal 

20 year; and 

21 (5) include the results of the most recent audit 

22 carried out under subsection (e). 

23 (e) ANNUAL SPENDING PLAN.— 

24 (1) IN GENERAL.—Not later than 30 days after 

25 the beginning of each fiscal year, the Director shall 


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1 notify the Committees on Appropriations of both 

2 Houses of Congress of the plan for the obligation 

3 and expenditure of the total amount of the funds for 

4 that fiscal year in accordance with section 605 of the 

5 Science, State, Justice, Commerce, and Related 

6 Agencies Appropriations Act, 2006 (Public Law 

7 109–108; 119 Stat. 2334). 

8 (2) CONTENTS.—Each plan under paragraph 

9 (1) shall— 

10 (A) summarize the operations of the Office 

11 for the current fiscal year, including financial 

12 details and staff levels with respect to major ac13 tivities; and 

14 (B) detail the operating plan of the Office, 

15 including specific expense and staff needs, for 

16 the current fiscal year. 

17 (f) AUDIT.—The Under Secretary shall, on an annual 

18 basis, provide for an independent audit of the financial 

19 statements of the Office. Such audit shall be conducted 

20 in accordance with generally acceptable accounting proce21 dures. 

22 (g) BUDGET.—In accordance with section 9103 of 

23 title 31, United States Code, the Fund shall prepare and 

24 submit each year to the President a business-type budget 


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1 in a way, and before a date, the President prescribes by 

2 regulation for the budget program. 

3 SEC. 15. TECHNICAL AMENDMENTS. 

4 (a) JOINT INVENTIONS.—Section 116 of title 35, 

5 United States Code, is amended— 

6 (1) in the first paragraph, by striking 

7 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN8 TIONS.—When’’; 

9 (2) in the second paragraph, by striking 

10 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT11 TED INVENTOR.—If a joint inventor’’; and 

12 (3) in the third paragraph— 

13 (A) by striking ‘‘Whenever’’ and in14 serting ‘‘(c) CORRECTION OF ERRORS IN

15 APPLICATION.—Whenever’’; and 

16 (B) by striking ‘‘and such error arose 

17 without any deceptive intent on his part,’’. 

18 (b) FILING OF APPLICATION IN FOREIGN COUN19 TRY.—Section 184 of title 35, United States Code, is 

20 amended— 

21 (1) in the first paragraph— 

22 (A) by striking ‘‘Except when’’ and insert23 ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Ex24 cept when’’; and 


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1 (B) by striking ‘‘and without deceptive in2 tent’’; 

3 (2) in the second paragraph, by striking ‘‘The 

4 term’’ and inserting ‘‘(b) APPLICATION.—The 

5 term’’; and 

6 (3) in the third paragraph, by striking ‘‘The 

7 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA8 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

9 scope’’. 

10 (c) FILING WITHOUT A LICENSE.—Section 185 of 

11 title 35, United States Code, is amended by striking ‘‘and 

12 without deceptive intent’’. 

13 (d) REISSUE OF DEFECTIVE PATENTS.—Section 251 

14 of title 35, United States Code, is amended— 

15 (1) in the first paragraph— 

16 (A) by striking ‘‘Whenever’’ and inserting 

17 ‘‘(a) IN GENERAL.—Whenever reissue of any 

18 patent is authorized under section 298 or’’; and 

19 (B) by striking ‘‘without deceptive inten20 tion’’; 

21 (2) in the second paragraph, by striking ‘‘The 

22 Director’’ and inserting ‘‘(b) MULTIPLE REISSUED

23 PATENTS.—The Director’’; 


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1 (3) in the third paragraph, by striking ‘‘The 

2 provision’’ and inserting ‘‘(c) APPLICABILITY OF

3 THIS TITLE.—The provisions’’; and 

4 (4) in the last paragraph, by striking ‘‘No re5 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

6 ENLARGING SCOPE OF CLAIMS.—No reissued pat7 ent’’. 

8 (e) EFFECT OF REISSUE.—Section 253 of title 35, 

9 United States Code, is amended— 

10 (1) in the first paragraph, by striking ‘‘When11 ever, without deceptive intention’’ and inserting ‘‘(a) 

12 IN GENERAL.—Whenever’’; and 

13 (2) in the second paragraph, by striking ‘‘in 

14 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS15 CLAIMER OR DEDICATION.—In the manner set forth 

16 in subsection (a),’’. 

17 (f) CORRECTION OF NAMED INVENTOR.—Section 

18 256 of title 35, United States Code, is amended— 

19 (1) in the first paragraph, by striking ‘‘When20 ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 

21 and 

22 (2) in the second paragraph, by striking ‘‘The 

23 error’’ and inserting ‘‘(b) PATENT VALID IF ERROR

24 CORRECTED.—The error’’. 


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1 (g) PRESUMPTION OF VALIDITY.—Section 282 of 

2 title 35, United States Code, is amended— 

3 (1) in the first undesignated paragraph, by 

4 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN5 ERAL.—A patent’’; 

6 (2) in the second undesignated paragraph, by 

7 striking ‘‘The following’’ and inserting ‘‘(b) DE8 FENSES.—The following’’; and 

9 (3) in the third undesignated paragraph, by 

10 striking ‘‘In actions’’ and inserting ‘‘(c) NOTICE OF

11 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

12 TERM.—In actions’’. 

13 (h) ACTION FOR INFRINGEMENT.—Section 288 of 

14 title 35, United States Code, is amended by striking ‘‘, 

15 without any deceptive intention,’’. 

16 SEC. 16. EFFECTIVE DATE; RULE OF CONSTRUCTION. 

17 (a) EFFECTIVE DATE.—Except as otherwise provided 

18 in this Act, the provisions of this Act shall take effect 12 

19 months after the date of the enactment of this Act and 

20 shall apply to any patent issued on or after that effective 

21 date. 

22 (b) SPECIAL PROVISIONS RELATING TO DETERMINA23 TIONS OF VALIDITY AND PATENTABILITY.— 

24 (1) IN GENERAL.—The amendments made by 

25 section 2 shall apply to any application for a patent 


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1 and any patent issued pursuant to such an applica2 tion that at any time— 

3 (A) contained a claim to a claimed inven4 tion that has an effective filing date, as such 

5 date is defined under section 100(h) of title 35, 

6 United States Code, 1 year or more after the 

7 date of the enactment of this Act; 

8 (B) asserted a claim to a right of priority 

9 under section 119, 365(a), or 365(b) of title 35, 

10 United States Code, to any application that was 

11 filed 1 year or more after the date of the enact12 ment of this Act; or 

13 (C) made a specific reference under section 

14 120, 121, or 365(c) of title 35, United States 

15 Code, to any application to which the amend16 ments made by section 2 otherwise apply under 

17 this subsection. 

18 (2) PATENTABILITY.—For any application for 

19 patent and any patent issued pursuant to such an 

20 application to which the amendments made by sec21 tion 2 apply, no claim asserted in such application 

22 shall be patentable or valid unless such claim meets 

23 the conditions of patentability specified in section 

24 102(g) of title 35, United States Code, as such con25 ditions were in effect on the day prior to the date 


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1 of enactment of this Act, if the application at any 

2 time— 

3 (A) contained a claim to a claimed inven4 tion that has an effective filing date as defined 

5 in section 100(h) of title 35, United States 

6 Code, earlier than 1 year after the date of the 

7 enactment of this Act; 

8 (B) asserted a claim to a right of priority 

9 under section 119, 365(a), or 365(b) of title 35, 

10 United States Code, to any application that was 

11 filed earlier than 1 year after the date of the 

12 enactment of this Act; or 

13 (C) made a specific reference under section 

14 120, 121, or 365(c) of title 35, United States 

15 Code, with respect to which the requirements of 

16 section 102(g) applied. 

17 (3) VALIDITY OF PATENTS.—For the purpose 

18 of determining the validity of a claim in any patent 

19 or the patentability of any claim in a nonprovisional 

20 application for patent that is made before the effec21 tive date of the amendments made by sections 2 and 

22 3, other than in an action brought in a court before 

23 the date of the enactment of this Act— 

24 (A) the provisions of subsections (c), (d), 

25 and (f) of section 102 of title 35, United States 


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1 Code, that were in effect on the day prior to the 

2 date of enactment of this Act shall be deemed 

3 to be repealed; 

4 (B) the amendments made by section 3 of 

5 this Act shall apply, except that a claim in a 

6 patent that is otherwise valid under the provi7 sions of section 102(f) of title 35, United States 

8 Code, as such provision was in effect on the day 

9 prior to the date of enactment of this Act, shall 

10 not be invalidated by reason of this paragraph; 

11 and 

12 (C) the term ‘‘in public use or on sale’’ as 

13 used in section 102(b) of title 35, United States 

14 Code, as such section was in effect on the day 

15 prior to the date of enactment of this Act shall 

16 be deemed to exclude the use, sale, or offer for 

17 sale of any subject matter that had not become 

18 available to the public. 

19 (4) CONTINUITY OF INTENT UNDER THE CRE20 ATE ACT.—The enactment of section 102(b)(3) of 

21 title 35, United States Code, under section (2)(b) of 

22 this Act is done with the same intent to promote 

23 joint research activities that was expressed, includ24 ing in the legislative history, through the enactment 

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1 hancement Act of 2004 (Public Law 108–453; the 

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

3 stricken by section 2(c) of this Act. The United 

4 States Patent and Trademark Office shall admin5 ister section 102(b)(3) of title 35, United States 

6 Code, in a manner consistent with the legislative his7 tory of the CREATE Act that was relevant to its 

8 administration by the United States Patent and 

9 Trademark Office. 

Æ 


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