I

107TH CONGRESS

1ST SESSION H. R. 1333

To amend title 35, United States Code, to provide for improvements in

the quality of patents on certain inventions.

IN THE HOUSE OF REPRESENTATIVES

APRIL 3, 2001

Mr. BERMAN (for himself and Mr. BOUCHER) introduced the following bill;

which was referred to the Committee on the Judiciary

A BILL

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

improvements in the quality of patents on certain inventions.

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 Improvement

5 Act of 2001’’.

6 SEC. 2. OPPOSITION PROCEDURES.

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

8 amended by inserting after chapter 31 the following new

9 chapter:
2

•HR 1333 IH

1 ‘‘CHAPTER 32—OPPOSITION PROCEDURES

‘‘Sec.

‘‘321. Opposition procedures.

‘‘322. Effect on other proceedings.

2 ‘‘§ 321. Opposition procedures

3 ‘‘(a) ADMINISTRATIVE OPPOSITION PANEL.—

4 ‘‘(1) ESTABLISHMENT.—The Director shall, not

5 later than 1 year after the date of enactment of the

6 Patent Improvement Act of 2001, establish an Ad7 ministrative Opposition Panel. The Administrative

8 Opposition Panel shall be comprised of not less than

9 18 administrative opposition judges, each of whom

10 shall be an individual of competent legal knowledge

11 and scientific ability. Upon establishment of the Ad12 ministrative Opposition Panel, the Director shall

13 publish notice of the establishment of the Panel in

14 the Federal Register.

15 ‘‘(2) ASSIGNMENT OF PATENT EXAMINERS TO

16 PANEL.—Patent examiners may be assigned on de17 tail to assist the Administrative Opposition Panel in

18 carrying out opposition proceedings under this sec19 tion, except that a patent examiner may not be as20 signed to assist in review of a patent application ex21 amined by that patent examiner. The Director shall

22 establish procedures by which an opposition is heard

23 under subsection (b).

24 ‘‘(b) OPPOSITION PROCEDURES.—
3

•HR 1333 IH

1 ‘‘(1) REQUEST FOR OPPOSITION.—(A) Any per2 son may file a request for an opposition to a patent

3 on the basis of section 101, 102, 103, or 112 of this

4 title. Such a request is valid only if the request—

5 ‘‘(i) is made not later than 9 months after

6 the date of issuance of the patent;

7 ‘‘(ii) is in writing;

8 ‘‘(iii) is accompanied by payment of the

9 opposition fee set forth in section 41(a) of this

10 title; and

11 ‘‘(iv) sets forth in detail the basis on which

12 the opposition is requested.

13 ‘‘(B) Not later than 60 days after receiving a

14 valid request under subparagraph (A), the Director

15 shall issue an order for an opposition proceeding to

16 be held on the record after opportunity for a hear17 ing, and shall promptly send a copy of the request

18 to the owner of record of the patent. The patent

19 owner shall be provided a reasonable period, but in

20 no case less than 60 days after the date on which

21 a copy of the request is given or mailed to the pat22 ent owner, within which the owner may file a state23 ment in reply to the grounds for the request for op24 position, including any amendment to the patent and

25 new claim or claims, for consideration in the opposi-
4

•HR 1333 IH

1 tion proceeding. If the patent owner files such a

2 statement, the patent owner shall promptly serve a

3 copy of the statement on the third-party requester.

4 Not later than 2 months after the date of such serv5 ice, the third-party requester may file and have con6 sidered in the opposition proceeding a reply to the

7 statement filed by the patent owner.

8 ‘‘(2) CONDUCT OF OPPOSITION PRO9 CEEDINGS.—Each opposition shall be heard by one

10 administrative opposition judge, and no party shall

11 be permitted ex parte communication with the ad12 ministrative opposition judge. In addition to the

13 statements and replies set forth in paragraph (1),

14 the administrative opposition judge may consider

15 evidence that the judge considers relevant, including

16 evidence that is presented in any oral testimony (in17 cluding exhibits and expert testimony) in direct or

18 cross examination, or in any deposition, affidavit, or

19 other documentary form, whether voluntary or com20 pelled. In any opposition proceeding, the Federal

21 Rules of Evidence shall apply.

22 ‘‘(3) AMENDMENTS TO PATENT CLAIMS.—A

23 patent applicant may propose to amend a patent

24 claim or propose a new claim at any time during the

25 opposition proceeding, except that no proposed
5

•HR 1333 IH

1 amended or new claim enlarging the scope of a claim

2 of the patent may be permitted at any time during

3 an opposition proceeding under this section.

4 ‘‘(4) DETERMINATION.—Not later than 18

5 months after the filing of a request for an opposition

6 under this section, the administrative opposition

7 judge in the opposition proceeding shall determine

8 the patentability of the subject matter of the patent,

9 a record of the administrative opposition judge’s de10 termination under this section shall be placed in the

11 official file of the patent, and a copy shall promptly

12 be given or mailed to the owner of record of the pat13 ent and to the third-party requester.

14 ‘‘(5) APPEALS.—Any party to the opposition

15 may appeal a decision of the Administrative Opposi16 tion Panel under the provisions of section 134 of

17 this title, and may seek court review under the pro18 visions of sections 141 through 145 of this title, with

19 respect to any decision in regard to the patentability

20 of any original or proposed amended or new claim

21 of the patent. A patent owner may be a party to an

22 appeal taken by a third-party requester. Any third23 party requester may be a party to an appeal taken

24 by a patent owner.
6

•HR 1333 IH

1 ‘‘(6) CERTIFICATION OF PATENTABILITY.—In

2 an opposition proceeding under this chapter, when

3 the time for appeal has expired or any appeal pro4 ceeding has terminated, the Director shall issue and

5 publish a certificate canceling any claim of the pat6 ent finally determined to be unpatentable, con7 firming any claim of the patent determined to be

8 patentable, and incorporating in the patent any pro9 posed amended or new claim determined to be pat10 entable.

11 ‘‘(7) EFFECT OF DETERMINATION.—Any pro12 posed, amended, or new claim determined to be pat13 entable and incorporated into a patent following an

14 opposition proceeding shall have the same effect as

15 that specified in section 252 of this title for reissued

16 patents on the right of any person who made, pur17 chased, or used within the United States, or im18 ported into the United States, anything patented by

19 such proposed amended or new claim, or who made

20 substantial preparations therefor, prior to issuance

21 of a certificate under paragraph (6) of this sub22 section.

23 ‘‘§ 322. Effect on other proceedings

24 ‘‘(a) RIGHT TO LITIGATION.—Subject to subsections

25 (b) and (c), proceedings under section 321 shall not alter
7

•HR 1333 IH

1 or prejudice any party’s right to pursue remedies under

2 provisions of law other than this section. In the case of

3 court proceedings, other than an appeal of a decision in

4 an opposition proceeding under section 321, the court may

5 consider any matter independently of any opposition pro6 ceeding under this section.

7 ‘‘(b) EFFECT OF FINAL DECISION.—

8 ‘‘(1) IN FUTURE OPPOSITION PROCEEDINGS.—

9 If a final decision has been entered against a party

10 in a civil action arising in whole or in part under

11 section 1338 of title 28, establishing that the party

12 has not sustained its burden of proving the invalidity

13 of any patent claim, or if a final decision in an inter

14 partes reexamination proceeding instituted by a

15 third-party requester is favorable to the patentability

16 of any original or proposed amended or new claim

17 of the patent—

18 ‘‘(A) neither that party to the civil action,

19 the third-party requester, nor the privies of that

20 party or third-party requester may thereafter

21 request an opposition to such patent claim on

22 the basis of issues which that party, third-party

23 requester, or the privies of that party or third24 party requester raised in such civil action or
8

•HR 1333 IH

1 inter partes reexamination proceeding (as the

2 case may be); and

3 ‘‘(B) an opposition requested by that

4 party, third-party requester, or the privies of

5 that party or third-party requester on the basis

6 of such issues may not thereafter be maintained

7 by the Office.

8 ‘‘(2) EFFECT OF FINAL DECISION IN OPPOSI9 TION.—If a final decision in an opposition pro10 ceeding instituted by a third-party requester is fa11 vorable to the patentability of any original or pro12 posed amended or new claim of the patent—

13 ‘‘(A) neither the third-party requester, nor

14 the privies of that third-party requester, may

15 thereafter bring a civil action under section

16 1338 of title 28, or request an inter partes re17 examination of, or an opposition to, such patent

18 claim on the basis of issues which that third19 party requester, or the privies of that third20 party requester, raised in such opposition pro21 ceeding; and

22 ‘‘(B) an inter partes reexamination or op23 position requested by that third-party requester,

24 or the privies of that third-party requester, on
9

•HR 1333 IH

1 the basis of such issues may not thereafter be

2 maintained by the Office.

3 ‘‘(3) NEW EVIDENCE.—Paragraphs (1) and (2)

4 do not prevent the assertion by a party to a civil ac5 tion or a third-party requester of invalidity based on

6 newly discovered prior art, or other evidence, un7 available to that party or third-party requester, as

8 the case may be, and the Patent and Trademark Of9 fice, at the time of the civil action, inter partes reex10 amination, or opposition proceeding (as the case

11 may be).

12 ‘‘(c) STAY OF LITIGATION.—Once an order for an op13 position proceeding with respect to a patent has been

14 issued under section 321(b)(1)(B), any party to the pro15 ceeding may obtain a stay of any pending court proceeding

16 (other than an appeal to the Court of Appeals for the Fed17 eral Circuit) which involves an issue of patentability of any

18 claims of the patent which are the subject of the opposi19 tion proceeding, unless the court before which such litiga20 tion is pending determines that a stay would not serve the

21 interests of justice.’’.

22 (b) FEES.—Section 41(a) of title 35, United States

23 Code, is amended—
10

•HR 1333 IH

1 (1) by redesignating paragraphs (7) through

2 (15) as paragraphs (9) through (17), respectively;

3 and

4 (2) by inserting after paragraph (6) the fol5 lowing:

6 ‘‘(7)(A) On filing an opposition under chapter

7 32 to a patent based on prior art citations or obvi8 ousness, a fee of $200.

9 ‘‘(B) On filing an opposition under chapter 32

10 to a patent on any other basis, a fee of $5,000.

11 ‘‘(C) The Director may waive the payment by

12 an individual of fees under this paragraph if such

13 waiver is in the public interest.

14 ‘‘(8) On filing a request for a proceeding to de15 termine whether an invention claimed in an applica16 tion was known or used, or has been in public use

17 or on sale, under section 102, a fee of $35.’’.

18 (b) CLERICAL AMENDMENT.—The table of chapters

19 for part III of title 35, United States Code, is amended

20 by adding at the end the following:

‘‘32. Opposition Procedures ........................................................... 321.’’.

21 SEC. 3. NONOBVIOUSNESS.

22 Section 103 of title 35, United States Code, is

23 amended by adding at the end the following:

24 ‘‘(d)(1) An invention shall be presumed obvious under

25 this section if the only significant difference between the
11

•HR 1333 IH

1 combined teachings of the prior art and the claimed inven2 tion is that the claimed invention is appropriate for use

3 with a computer technology, unless—

4 ‘‘(A) the application of the computer technology

5 is novel; or

6 ‘‘(B) the computer technology is novel and not

7 the subject of another patent or patent application.

8 ‘‘(2)(A) An applicant or patentee may rebut the pre9 sumption under paragraph (1) upon a showing by a pre10 ponderance of the evidence that the invention is not obvi11 ous to persons of ordinary skill in all relevant arts.

12 ‘‘(B) Those areas of art which are relevant for pur13 poses of subparagraph (A) include the field of the com14 puter implementation.’’.

15 SEC. 4. REQUIREMENT TO DISCLOSE SEARCH.

16 The Director of the Patent and Trademark Office

17 shall, within 30 days after the date of enactment of this

18 Act, publish notice of rulemaking proceedings to amend

19 the rules of the Patent and Trademark Office to require

20 an applicant for a patent to disclose in the application the

21 extent to which the applicant searched for prior art to

22 meet the requirements of title 35, United States Code.

23 Such amendment shall include appropriate penalties for

24 failure to comply with such requirement. The Director
12

•HR 1333 IH

1 shall ensure that the amendment is implemented as

2 promptly as possible.

3 SEC. 5. CONFORMING AMENDMENTS.

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

5 States Code, is amended by striking ‘‘or inter partes reex6 amination under section 311’’ and inserting ‘‘, inter partes

7 reexamination under section 311, or an opposition under

8 section 321,’’.

9 (b) BOARD OF PATENT APPEALS AND INTER10 FERENCES.—Section 134 of title 35, United States Code,

11 is amended—

12 (1) in subsection (b)—

13 (A) by inserting ‘‘or opposition’’ after ‘‘re14 examination’’; and

15 (B) by inserting ‘‘or the Administrative

16 Opposition Panel (as the case may be)’’ after

17 ‘‘administrative patent judge’’; and

18 (2) in subsection (c)—

19 (A) by striking ‘‘proceeding’’ and inserting

20 ‘‘reexamination proceeding or an opposition

21 proceeding’’;

22 (B) by inserting ‘‘or the Administrative

23 Opposition Panel (as the case may be)’’ after

24 ‘‘administrative patent judge’’; and
13

•HR 1333 IH

1 (C) in the last sentence, by inserting ‘‘in

2 an inter partes reexamination proceeding’’ after

3 ‘‘requester’’.

4 (c) APPEAL TO COURT OF APPEALS.—(1) Section

5 141 of title 35, United States Code, is amended in the

6 second sentence by inserting after ‘‘reexamination pro7 ceeding’’ the following: ‘‘, and any party in an opposition

8 proceeding, who is’’.

9 (2) Section 143 of title 35, United States Code, is

10 amended by inserting after the third sentence the fol11 lowing: ‘‘In any opposition proceeding, the Administrative

12 Opposition Panel shall submit to the court in writing the

13 grounds for the decision of the Panel, addressing all the

14 issues involved in the appeal.’’.

15 SEC. 6. EFFECTIVE DATE.

16 (a) IN GENERAL.—Subject to subsections (b), (c),

17 and (d), this Act and the amendments made by this Act

18 apply to—

19 (1) any application for patent that is pending

20 on, or that is filed on or after, the date of enactment

21 of this Act; and

22 (2) any patent issued on or after the date of en23 actment of this Act.

24 (b) PATENTS ISSUED BEFORE ESTABLISHMENT OF

25 ADMINISTRATIVE OPPOSITION PANEL.—In the case of a
14

•HR 1333 IH

1 patent issued after the enactment of this Act but before

2 the date on which notice of the establishment of the Ad3 ministrative Opposition Panel is published under section

4 321(a)(1) of title 35, United States Code (as added by

5 this Act), a request for an opposition to the patent may

6 be filed under section 321(b)(1)(A) of title 35, United

7 States Code (as added by this Act), notwithstanding the

8 9-month requirement set forth in clause (i) of that section,

9 if the request is filed not later than 9 months after the

10 date on which such notice is so published.

Æ