II 

117TH CONGRESS 

2D SESSION S. 4417 

To amend title 35, United States Code, to address matters relating to the 

Patent Trial and Appeal Board of the United States Patent and Trademark Office, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

JUNE 16, 2022 

Mr. LEAHY (for himself, Mr. CORNYN, and Mr. TILLIS) 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 address matters 

relating to the Patent Trial and Appeal Board of the 

United States Patent and Trademark Office, and for 

other purposes. 

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

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Patent Trial and Ap5 peal Board Reform Act of 2022’’. 

6 SEC. 2. PATENTS. 

7 (a) IN GENERAL.—Title 35, United States Code, is 

8 amended— 


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1 (1) in section 6— 

2 (A) in subsection (a), by inserting after the 

3 third sentence the following: ‘‘Each member of 

4 the Patent Trial and Appeal Board shall com5 ply with the Code of Conduct for United States 

6 Judges, including limitations on ex parte com7 munications, when performing the duties enu8 merated in subsection (b).’’; 

9 (B) in subsection (c)— 

10 (i) in the second sentence, by striking 

11 ‘‘Only the’’ and inserting ‘‘The’’; and 

12 (ii) by adding at the end the fol13 lowing: ‘‘After the constitution of a panel 

14 of the Patent Trial and Appeal Board 

15 under this subsection has been made pub16 lic, any changes to the constitution of that 

17 panel, including changes that were made 

18 before the constitution of the panel was 

19 made public, shall be noted in the record.’’; 

20 (C) by redesignating subsection (d) as sub21 section (e); 

22 (D) by inserting after subsection (c) the 

23 following: 

24 ‘‘(d) REVIEW BY THE DIRECTOR.— 

25 ‘‘(1) OPPORTUNITIES FOR REVIEW.— 


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1 ‘‘(A) IN GENERAL.—With respect to a de2 cision of the Patent Trial and Appeal Board— 

3 ‘‘(i) the Director may, on the initia4 tive of the Director, review, and modify or 

5 set aside, the decision; 

6 ‘‘(ii) if the decision is issued under 

7 section 318(a) or 328(a), a party to the 

8 applicable inter partes or post-grant review 

9 may request that the Director review, and 

10 modify or set aside, the decision; and 

11 ‘‘(iii) if the decision is issued under 

12 section 314 or 324 under a delegation by 

13 the Director, a party to the applicable 

14 inter partes or post-grant review petition 

15 may request that the Director review, and 

16 modify or set aside, the decision. 

17 ‘‘(B) EFFECT OF REQUEST FOR REVIEW

18 OF DETERMINATION TO INSTITUTE REVIEW.—A 

19 request for review under subparagraph (A)(iii) 

20 shall not be a basis to stay or delay any pro21 ceeding. 

22 ‘‘(2) REQUIREMENT.— 

23 ‘‘(A) IN GENERAL.—Any review by the Di24 rector under paragraph (1) shall be issued in a 

25 separate written opinion that— 


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1 ‘‘(i) is made part of the public record; 

2 ‘‘(ii) sets forth the reasons for the re3 view, modification, or setting aside of the 

4 decision of the Patent Trial and Appeal 

5 Board; and 

6 ‘‘(iii) may be designated as preceden7 tial, and if it is designated as precedential, 

8 shall be followed by future panels of the 

9 Patent Trial and Appeal Board, unless and 

10 until the opinion is— 

11 ‘‘(I) rescinded; or 

12 ‘‘(II) superseded by— 

13 ‘‘(aa) regulation; 

14 ‘‘(bb) a decision of the Di15 rector that is designated as prec16 edential; or 

17 ‘‘(cc) a decision of a court. 

18 ‘‘(B) EFFECT OF PRECEDENTIAL DESIGNA19 TION.—Nothing in subparagraph (A)(iii) shall 

20 be construed to affect the obligation of the Di21 rector to prescribe regulations under section 

22 316(a) or 326(a). 

23 ‘‘(3) TIMELINE AND BASES FOR REVIEW.—Not 

24 later than 18 months after the date of enactment of 

25 the Patent Trial and Appeal Board Reform Act of 


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1 2022, the Director shall promulgate rules addressing 

2 the following issues: 

3 ‘‘(A) With respect to review of a decision 

4 on the initiative of the Director under para5 graph (1)(A)(i)— 

6 ‘‘(i) the timeline under which the Di7 rector may review the decision, which shall 

8 be consistent with the requirements under 

9 section 318(e) or 328(e), if applicable; and 

10 ‘‘(ii) the bases on which the Director 

11 may review the decision. 

12 ‘‘(B) With respect to a request by a party 

13 under clause (ii) or (iii) of paragraph (1)(A)— 

14 ‘‘(i) the timeline for submitting such a 

15 request; 

16 ‘‘(ii) the content that the party is re17 quired to include in such a request; 

18 ‘‘(iii) the bases on which the party 

19 may submit such a request; and 

20 ‘‘(iv) the timeline for any response or 

21 reply to such a request such that the re22 quest can be decided within the deadline 

23 imposed under section 318(e) or 328(e), as 

24 applicable. 


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1 ‘‘(4) DETERMINATION WHETHER TO REVIEW

2 FINAL DECISIONS OF BOARD.—Notwithstanding the 

3 bases for review promulgated under paragraph (3), 

4 the determination whether to review a final decision 

5 of the Patent Trial and Appeal Board under this 

6 subsection is committed to the discretion of the Di7 rector. 

8 ‘‘(5) RULE OF CONSTRUCTION.—For the pur9 poses of an appeal permitted under section 141, any 

10 decision on review of a final written decision of the 

11 Patent Trial and Appeal Board under section 318(a) 

12 or 328(a), that is issued by the Director under this 

13 subsection, shall be deemed a final written decision 

14 of the Patent Trial and Appeal Board.’’; and 

15 (E) in subsection (e), as so redesignated— 

16 (i) in the first sentence— 

17 (I) by striking ‘‘of this sub18 section’’ and inserting ‘‘of the Patent 

19 Trial and Appeal Board Reform Act 

20 of 2022’’; 

21 (II) by inserting ‘‘or the Sec22 retary’’ after ‘‘appointment by the Di23 rector’’; and 


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1 (III) by inserting ‘‘or the Sec2 retary, as applicable,’’ after ‘‘on which 

3 the Director’’; and 

4 (ii) in the second sentence— 

5 (I) by inserting ‘‘, or, before the 

6 date of enactment of the Patent Trial 

7 and Appeal Board Reform Act of 

8 2022, having performed duties no 

9 longer performed by administrative 

10 patent judges,’’ after ‘‘by the Direc11 tor’’; and 

12 (II) by striking ‘‘that the admin13 istrative patent judge so appointed’’ 

14 and inserting ‘‘that the applicable ad15 ministrative patent judge’’; 

16 (2) in chapter 31— 

17 (A) in section 314(d), by striking ‘‘section’’ 

18 and inserting ‘‘chapter’’; 

19 (B) in section 315— 

20 (i) in subsection (b), by striking ‘‘shall 

21 not apply to a request for joinder under 

22 subsection (c).’’ and inserting the fol23 lowing: ‘‘shall be subject to the following 

24 limitations: 

25 ‘‘(1) The time limitation shall not apply— 


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1 ‘‘(A) to a request for joinder under sub2 section (c); or 

3 ‘‘(B) if the complaint is dismissed without 

4 prejudice. 

5 ‘‘(2) If new or amended claims issue from reex6 amination after the petitioner, real party in interest, 

7 or privy of the petitioner is served with the com8 plaint, an inter partes review of those claims, and 

9 any dependent claims depending from those claims, 

10 may be instituted if the petition requesting the re11 view is filed not later than 1 year after the date on 

12 which the new or amended claims are asserted 

13 against the petitioner, real party in interest, or privy 

14 of the petitioner.’’; 

15 (ii) in subsection (c), by inserting ‘‘a 

16 request to join the inter partes review and’’ 

17 before ‘‘a petition under section 311’’; 

18 (iii) in subsection (d)— 

19 (I) by striking ‘‘Notwith20 standing’’ and inserting the following: 

21 ‘‘(1) IN GENERAL.—Notwithstanding’’; and 

22 (II) by striking ‘‘before the Of23 fice,’’ and all that follows and insert24 ing the following: ‘‘before the Office— 

25 ‘‘(A) the parties shall notify the Director; 


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1 ‘‘(B) the Director shall issue a decision de2 termining the manner in which the other pro3 ceeding or matter may proceed, including pro4 viding for stay, transfer, consolidation, or ter5 mination of any such proceeding or matter; and 

6 ‘‘(C) a party may seek review of the deci7 sion by way of petition to the Director. 

8 ‘‘(2) NO EXTENSION.—A decision of the Direc9 tor under paragraph (1)(B) may not— 

10 ‘‘(A) extend any statutory deadline under 

11 this chapter; or 

12 ‘‘(B) terminate an inter partes proceeding 

13 in favor of an ex parte proceeding. 

14 ‘‘(3) LIMIT ON REPEATED PETITIONS.—The Di15 rector may not authorize an inter partes review to 

16 be instituted if the Director has previously instituted 

17 an inter partes review or post-grant review that in18 cludes one or more of the same claims based on a 

19 petition that was filed on a different day by the 

20 same petitioner, or a real party in interest or privy 

21 of the same petitioner.’’; 

22 (iv) in subsection (e)— 

23 (I) in paragraph (2), by inserting 

24 ‘‘that the claim is not unpatentable’’ 


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1 after ‘‘decision under section 318(a)’’; 

2 and 

3 (II) by adding at the end the fol4 lowing: 

5 ‘‘(3) APPLICABILITY.—The prohibitions under 

6 this subsection shall apply to the petitioner in an 

7 inter partes review upon the issuance of the final 

8 written decision for that review.’’; and 

9 (v) by adding at the end the following: 

10 ‘‘(f) INSTITUTION NOT TO BE DENIED BASED ON

11 PARALLEL PROCEEDINGS.—In deciding whether to insti12 tute an inter partes review proceeding, the Director shall 

13 not in any respect consider an ongoing civil action or a 

14 proceeding before the International Trade Commission 

15 under section 337 of the Tariff Act of 1930 (19 U.S.C. 

16 1337), other than with respect to— 

17 ‘‘(1) the bars specified in subsections (a) and 

18 (b); or 

19 ‘‘(2) the determination under section 314(a) 

20 that there is a reasonable likelihood that the peti21 tioner would prevail with respect to at least 1 of the 

22 claims challenged in the petition.’’; 

23 (C) in section 316— 

24 (i) in subsection (a)— 

25 (I) in paragraph (5)— 


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1 (aa) in subparagraph (A), 

2 by striking ‘‘and’’ at the end; 

3 (bb) by redesignating sub4 paragraph (B) as subparagraph 

5 (C); and 

6 (cc) by inserting after sub7 paragraph (A) the following: 

8 ‘‘(B) evidence identifying real parties in in9 terest of the petitioner who would be statutorily 

10 prohibited from filing a petition under section 

11 311; and’’; 

12 (II) in paragraph (6)— 

13 (aa) by inserting after 

14 ‘‘abuse of process,’’ the following: 

15 ‘‘including a petitioner delib16 erately delaying or losing, or of17 fering to deliberately delay or 

18 lose, an instituted proceeding in 

19 exchange for consideration,’’; and 

20 (bb) by inserting before the 

21 semicolon at the end the fol22 lowing: ‘‘, which sanctions shall 

23 be equally applicable to peti24 tioners and patent owners and 


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1 may include, among other 

2 things— 

3 ‘‘(A) shifting costs, expert witness fees, or 

4 attorney fees; 

5 ‘‘(B) referring counsel to the Office of En6 rollment and Discipline; 

7 ‘‘(C) a bar preventing a party from filing 

8 certain documents; and 

9 ‘‘(D) a bar preventing a party from filing 

10 any inter partes review or post-grant review pe11 tition for a period of 1 year’’; 

12 (III) in paragraph (11), by in13 serting ‘‘or consolidation under sec14 tion 315(d)’’ after ‘‘under section 

15 315(c)’’; 

16 (IV) in paragraph (12), by strik17 ing ‘‘and’’ at the end; 

18 (V) in paragraph (13), by strik19 ing the period at the end and insert20 ing ‘‘; and’’; and 

21 (VI) by adding at the end the fol22 lowing: 

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

24 chapter— 


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1 ‘‘(A) each term in a challenged claim of a 

2 patent shall be construed using the same claim 

3 construction standard that would be used to 

4 construe the term in a civil action under chap5 ter 29; and 

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

7 term in a civil action involving the patent under 

8 chapter 29, the Office— 

9 ‘‘(i) shall make that construction of 

10 record in the proceeding; and 

11 ‘‘(ii) shall consider but shall not be 

12 bound by that construction.’’; 

13 (ii) in subsection (c)— 

14 (I) by striking ‘‘The Patent’’ and 

15 inserting the following: 

16 ‘‘(1) IN GENERAL.—The Patent’’; and 

17 (II) by adding at the end the fol18 lowing: 

19 ‘‘(2) EX PARTE COMMUNICATION.—An officer 

20 who has supervisory authority or disciplinary author21 ity with respect to an administrative patent judge of 

22 the Patent Trial and Appeal Board (or a delegate of 

23 such an officer), and who is not a member of a panel 

24 described in section 6(c), shall refrain from ex parte 

25 communication with such a judge who is a member 


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1 of that panel concerning any pending matter before 

2 that panel, except as allowed under the Code of Con3 duct for United States Judges.’’; and 

4 (iii) in subsection (e)— 

5 (I) by striking ‘‘In an’’ and in6 serting the following: 

7 ‘‘(1) IN GENERAL.—In an’’; 

8 (II) in paragraph (1), as so des9 ignated, by inserting ‘‘of challenged 

10 patent claims’’ after 

11 ‘‘unpatentability’’; and 

12 (III) by adding at the end the 

13 following: 

14 ‘‘(2) CLAIM AMENDMENT.—For any substitute 

15 claim proposed under subsection (d), the burden of 

16 proving patentability, including under sections 101, 

17 102, 103, and 112, shall be the same as in examina18 tion under section 131.’’; 

19 (D) in section 318— 

20 (i) in subsection (b), by inserting ‘‘, 

21 not later than 60 days after the date on 

22 which the parties to the inter partes review 

23 have informed the Director that the time 

24 for appeal has expired or any appeal has 


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1 terminated,’’ after ‘‘the Director shall’’; 

2 and 

3 (ii) by adding at the end the fol4 lowing: 

5 ‘‘(e) REHEARING.—Not later than 120 days after the 

6 date on which the Patent Trial and Appeal Board issues 

7 a final written decision under subsection (a), the Board 

8 or the Director shall finally decide any request for recon9 sideration, rehearing, or review that is submitted with re10 spect to the decision, except that the Director may, for 

11 good cause shown, extend that 120-day period by not more 

12 than 60 days.’’; 

13 (E) in section 319— 

14 (i) by striking ‘‘A party’’ and insert15 ing the following: 

16 ‘‘(a) IN GENERAL.—A party’’; and 

17 (ii) by adding at the end the fol18 lowing: 

19 ‘‘(b) STANDING TO APPEAL.—For the purposes of an 

20 appeal described in subsection (a), the right to appeal 

21 shall extend at least to any dissatisfied party that reason22 ably expects that another person will assert estoppel 

23 against the party under section 315(e) as a result of the 

24 decision. 


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1 ‘‘(c) TIMING ON REMAND AFTER APPEAL.—Not later 

2 than 120 days after the date on which a mandate issues 

3 from the court remanding to the Patent Trial and Appeal 

4 Board after an appeal under subsection (a), the Board or 

5 the Director shall finally decide any issue on remand, ex6 cept that the Director may, for good cause shown, extend 

7 that 120-day period by not more than 60 days.’’; and 

8 (F) by adding at the end the following: 

9 ‘‘§ 320. Support for small and micro entities in inter 

10 partes review and post-grant review 

11 ‘‘(a) COVERED PATENT DEFINED.—In this section, 

12 the term ‘covered patent’ means a patent— 

13 ‘‘(1) that is the subject of a petition for inter 

14 partes review under chapter 31 or post-grant review 

15 under chapter 32; 

16 ‘‘(2) whose owner at the time of the patent ap17 plication qualified for small entity or micro entity 

18 status; 

19 ‘‘(3) whose owner, on the date on which the pe20 tition is filed, would qualify for small entity or micro 

21 entity status if that owner were to file a patent ap22 plication; 

23 ‘‘(4) whose owner has not asserted the patent 

24 in litigation; 


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1 ‘‘(5) that has not been licensed to any other 

2 party that would not qualify for small entity or 

3 micro entity status if that party were to file a patent 

4 application; and 

5 ‘‘(6) the owner or exclusive licensee of which 

6 makes or uses the claimed invention in a commercial 

7 enterprise, or has made substantial preparations to 

8 do so. 

9 ‘‘(b) EXPENSES COVERED.— 

10 ‘‘(1) IN GENERAL.—The Office shall pay to the 

11 owner of a covered patent all of the reasonable ex12 penses of the proceeding actually incurred by the 

13 patent owner (and not expenses incurred by a third 

14 party funding the proceeding), including reasonable 

15 expert witness fees and reasonable attorney fees, for 

16 defending the inter partes review or post-grant re17 view. 

18 ‘‘(2) EXPENSES INCLUDED.—The expenses to 

19 be paid under paragraph (1) shall include expenses 

20 of— 

21 ‘‘(A) a preliminary response under section 

22 313 or 323; 

23 ‘‘(B) a response under section 316(a)(8) or 

24 326(a)(8); 


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1 ‘‘(C) any discovery under section 316(a)(5) 

2 or 326(a)(5); 

3 ‘‘(D) motions filed at the Patent Trial and 

4 Appeal Board; 

5 ‘‘(E) any requests for reconsideration, re6 hearing, or review; and 

7 ‘‘(F) any proceedings after a remand from 

8 the Court of Appeals for the Federal Circuit. 

9 ‘‘(3) PAYMENT NOT DEPENDENT ON OUT10 COME.—The Office shall pay reasonable expenses 

11 under paragraph (1) regardless of the outcome of 

12 the proceeding. 

13 ‘‘(4) EXPENSES NOT INCLUDED.—The expenses 

14 to be paid under paragraph (1) shall not include ex15 penses incurred— 

16 ‘‘(A) in a proceeding at the Court of Ap17 peals for the Federal Circuit or any tribunal 

18 outside the Office; or 

19 ‘‘(B) in moving to amend any patent claim 

20 under— 

21 ‘‘(i) subsection (a)(9), (d), or (e) of 

22 section 316; or 

23 ‘‘(ii) subsection (a)(9), (d), or (e) of 

24 section 326. 


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1 ‘‘(c) SOURCE OF FUNDS.—The total estimated ex2 penses paid to owners of covered patents under this sec3 tion— 

4 ‘‘(1) shall be considered part of the aggregate 

5 costs under section 311(a) or 321(a); and 

6 ‘‘(2) shall be recovered through fees paid by pe7 titioners.’’; and 

8 (3) in chapter 32— 

9 (A) in section 324(e), by striking ‘‘section’’ 

10 and inserting ‘‘chapter’’; 

11 (B) in section 325— 

12 (i) in subsection (c), by inserting ‘‘, 

13 the petitioner files a request to join the 

14 post-grant review,’’ before ‘‘and the Direc15 tor’’; 

16 (ii) by striking subsection (d) and in17 serting the following: 

18 ‘‘(d) MULTIPLE PROCEEDINGS.— 

19 ‘‘(1) IN GENERAL.—Notwithstanding sections 

20 135(a), 251, and 252, and chapter 30, during the 

21 pendency of any post-grant review under this chap22 ter, if another proceeding or matter involving the 

23 patent is before the Office— 

24 ‘‘(A) the parties shall notify the Director; 


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1 ‘‘(B) the Director shall issue a decision de2 termining the manner in which the other pro3 ceeding or matter may proceed, including pro4 viding for stay, transfer, consolidation, or ter5 mination of any such proceeding or matter; and 

6 ‘‘(C) a party may seek review of the deci7 sion by way of petition to the Director. 

8 ‘‘(2) NO EXTENSION.—A decision of the Direc9 tor under paragraph (1)(B) may not— 

10 ‘‘(A) extend any statutory deadline under 

11 this chapter; or 

12 ‘‘(B) terminate an inter partes proceeding 

13 in favor of an ex parte proceeding. 

14 ‘‘(3) LIMIT ON REPEATED PETITIONS.—The Di15 rector shall not authorize a post-grant review to be 

16 instituted if the Director has previously instituted an 

17 inter partes review or post-grant review that includes 

18 one or more of the same claims based on a petition 

19 that was filed on a different day by the same peti20 tioner, or a real party in interest or privy of the 

21 same petitioner. 

22 ‘‘(4) CONSIDERATIONS.—In determining wheth23 er to institute or order a proceeding under this chap24 ter, chapter 30, or chapter 31, the Director may 

25 take into account whether, and reject the petition or 


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1 request because, the same or substantially the same 

2 prior art or arguments previously were presented to 

3 the Office.’’; 

4 (iii) in subsection (e)— 

5 (I) in paragraph (2), by inserting 

6 ‘‘that the claim is not unpatentable’’ 

7 after ‘‘decision under section 328(a)’’; 

8 and 

9 (II) by adding at the end the fol10 lowing: 

11 ‘‘(3) APPLICABILITY.—The prohibitions under 

12 this subsection shall apply to the petitioner in a 

13 post-grant review upon the issuance of the final 

14 written decision for that review.’’; and 

15 (iv) by adding at the end the fol16 lowing: 

17 ‘‘(g) INSTITUTION NOT TO BE DENIED BASED ON

18 PARALLEL PROCEEDINGS.—In deciding whether to insti19 tute a post-grant review proceeding, the Director shall not 

20 in any respect consider an ongoing civil action or a pro21 ceeding before the International Trade Commission under 

22 section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), 

23 other than with respect to the determination under section 

24 324(a) that there is a reasonable likelihood that the petiVerDate Sep 11 2014 22:22 Jun 20, 2022 Jkt 029200 PO 00000 Frm 00021 Fmt 6652 Sfmt 6201 E:\BILLS\S4417.IS S4417

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1 tioner would prevail with respect to at least 1 of the claims 

2 challenged in the petition.’’; 

3 (C) in section 326— 

4 (i) in subsection (a)— 

5 (I) in paragraph (5)— 

6 (aa) by striking ‘‘shall be 

7 limited to evidence’’ and inserting 

8 the following: ‘‘shall be limited 

9 to— 

10 ‘‘(A) evidence’’; and 

11 (bb) by adding at the end 

12 the following: ‘‘and 

13 ‘‘(B) evidence identifying real parties in in14 terest of the petitioner who would be statutorily 

15 prohibited from filing a petition under section 

16 321;’’; 

17 (II) in paragraph (6)— 

18 (aa) by inserting after 

19 ‘‘abuse of process,’’ the following: 

20 ‘‘including a petitioner delib21 erately delaying or losing, or of22 fering to deliberately delay or 

23 lose, an instituted proceeding in 

24 exchange for consideration,’’; and 


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1 (bb) by inserting before the 

2 semicolon at the end the fol3 lowing: ‘‘, which sanctions shall 

4 be equally applicable to peti5 tioners and patent owners and 

6 may include, among other 

7 things— 

8 ‘‘(A) shifting costs, expert witness fees, or 

9 attorney fees; 

10 ‘‘(B) referring counsel to the Office of En11 rollment and Discipline; 

12 ‘‘(C) a bar preventing a party from filing 

13 certain documents; and 

14 ‘‘(D) a bar preventing a party from filing 

15 any inter partes review or post-grant review pe16 tition for a period of 1 year’’; 

17 (III) in paragraph (11)— 

18 (aa) by inserting ‘‘or consoli19 dation under section 325(d)’’ 

20 after ‘‘under section 325(c)’’; and 

21 (bb) by striking ‘‘and’’ at 

22 the end; 

23 (IV) in paragraph (12), by strik24 ing the period at the end and insert25 ing ‘‘; and’’; and 


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1 (V) by adding at the end the fol2 lowing: 

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

4 chapter— 

5 ‘‘(A) each term in a challenged claim of a 

6 patent shall be construed using the same claim 

7 construction standard that would be used to 

8 construe the term in a civil action under chap9 ter 29; and 

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

11 term in a civil action involving the patent under 

12 chapter 29, the Office— 

13 ‘‘(i) shall make that construction of 

14 record in the proceeding; and 

15 ‘‘(ii) shall consider but shall not be 

16 bound by that construction.’’; 

17 (ii) in subsection (c)— 

18 (I) by striking ‘‘The Patent’’ and 

19 inserting the following: 

20 ‘‘(1) IN GENERAL.—The Patent’’; and 

21 (II) by adding at the end the fol22 lowing: 

23 ‘‘(2) EX PARTE COMMUNICATION.—An officer 

24 who has supervisory authority or disciplinary author25 ity with respect to an administrative patent judge of 


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1 the Patent Trial and Appeal Board (or a delegate of 

2 such an officer), and who is not a member of a panel 

3 described in section 6(c), shall refrain from ex parte 

4 communication with such a judge who is a member 

5 of that panel concerning any pending matter before 

6 that panel, except as allowed under the Code of Con7 duct for United States Judges.’’; and 

8 (iii) in subsection (e)— 

9 (I) by striking ‘‘In a’’ and insert10 ing the following: 

11 ‘‘(1) IN GENERAL.—In a’’; 

12 (II) in paragraph (1), as so des13 ignated, by inserting ‘‘of challenged 

14 patent claims’’ after 

15 ‘‘unpatentability’’; and 

16 (III) by adding at the end the 

17 following: 

18 ‘‘(2) CLAIM AMENDMENT.—For any substitute 

19 claim proposed under subsection (d), the burden of 

20 proving patentability, including under sections 101, 

21 102, 103, and 112, shall be the same as in examina22 tion under section 131.’’; 

23 (D) in section 328— 

24 (i) in subsection (b), by inserting ‘‘, 

25 not later than 60 days after the date on 


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1 which the parties to the post-grant review 

2 have informed the Director that the time 

3 for appeal has expired or any appeal has 

4 terminated,’’ after ‘‘the Director shall’’; 

5 and 

6 (ii) by adding at the end the fol7 lowing: 

8 ‘‘(e) REHEARING.—Not later than 120 days after the 

9 date on which the Patent Trial and Appeal Board issues 

10 a final written decision under subsection (a), the Board 

11 or the Director shall finally decide any request for recon12 sideration, rehearing, or review that is submitted with re13 spect to the decision, except that the Director may, for 

14 good cause shown, extend that 120-day period by not more 

15 than 60 days.’’; and 

16 (E) in section 329— 

17 (i) by striking ‘‘A party’’ and insert18 ing the following: 

19 ‘‘(a) IN GENERAL.—A party’’; and 

20 (ii) by adding at the end the fol21 lowing: 

22 ‘‘(b) STANDING TO APPEAL.—For the purposes of an 

23 appeal described in subsection (a), the right to appeal 

24 shall extend at least to any dissatisfied party that reason25 ably expects that another person will assert estoppel 


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27 

•S 4417 IS

1 against the party under section 325(e) as a result of the 

2 decision. 

3 ‘‘(c) TIMING ON REMAND AFTER APPEAL.—Not later 

4 than 120 days after the date on which a mandate issues 

5 from the court remanding to the Patent Trial and Appeal 

6 Board after an appeal under subsection (a), the Board or 

7 the Director shall finally decide any issue on remand, ex8 cept that the Director may, for good cause shown, extend 

9 that 120-day period by not more than 60 days.’’. 

10 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

11 The table of sections for chapter 31 of title 35, United 

12 States Code, is amended by adding at the end the fol13 lowing: 

‘‘320. Support for small and micro entities in inter partes review and post-grant 

review.’’. 

Æ 


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