I 

115TH CONGRESS 

2D SESSION H. R. 7366 

To reform and improve procedures for amending patents subject to postissuance review proceedings of the United States Patent and Trademark 

Office, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

DECEMBER 20, 2018 

Mr. ISSA introduced the following bill; which was referred to the Committee 

on the Judiciary 

A BILL 

To reform and improve procedures for amending patents 

subject to post-issuance review proceedings 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 ‘‘Revitalizing Amend5 ment Motions for Patents Act of 2018’’ or the ‘‘RAMP 

6 Act’’. 


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1 SEC. 2. REFORM OF PATENT AMENDMENTS IN PTAB PRO2 CEEDINGS. 

3 (a) PROCEDURES FOR MOTIONS TO AMEND.—Sec4 tion 316(d) of title 35, United States Code, is amended 

5 by inserting at the end the following new paragraphs: 

6 ‘‘(4) PROCEDURES FOR MOTIONS TO AMEND.— 

7 ‘‘(A) IN GENERAL.—With respect to a mo8 tion to amend filed under paragraph (1) or (2) 

9 that proposes 1 or more substitute claims— 

10 ‘‘(i) a substitute claim shall be con11 strued according to its broadest reasonable 

12 interpretation for the purposes of deter13 mining the patentability of the substitute 

14 claim; 

15 ‘‘(ii) the petitioner shall be given a 

16 reasonable opportunity to respond to each 

17 substitute claim; 

18 ‘‘(iii) the Director shall assign an ex19 aminer to examine each proposed sub20 stitute claim (giving consideration to the 

21 evidence and the arguments presented by 

22 the parties) and to submit to the Patent 

23 Trial and Appeal Board an advisory re24 port, which shall be non-binding, on the 

25 patentability of each such substitute claim; 

26 and 


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1 ‘‘(iv) the Board shall consider such re2 port in deciding the motion. 

3 ‘‘(B) RULE OF CONSTRUCTION.—Nothing 

4 in subparagraph (A) may be construed as af5 fecting the provisions of subsection (a)(11). 

6 ‘‘(C) MATTERS NOT CONSIDERED ON AP7 PEAL.—With respect to an appeal described 

8 under section 319, a party to the appeal may 

9 not challenge the decision of the Patent Trial 

10 and Appeal Board regarding a motion to amend 

11 under this paragraph on the basis of— 

12 ‘‘(i) the qualifications or expertise of 

13 the examiner assigned by the Director 

14 under subparagraph (A); or 

15 ‘‘(ii) any content of the report sub16 mitted pursuant to subparagraph (A) that 

17 was not expressly relied on by the Patent 

18 Trial and Appeal Board in such decision. 

19 ‘‘(5) EXPEDITED POST-REVIEW REEXAMINA20 TION.— 

21 ‘‘(A) AVAILABILITY OF EXPEDITED POST22 REVIEW REEXAMINATION.—An owner of a pat23 ent may file a request for an expedited post-re24 view reexamination by the Office of a chal25 lenged patent claim for which a final written 


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1 decision of the Patent Trial and Appeal Board 

2 under section 318(a) was issued if the following 

3 requirements are met: 

4 ‘‘(i) The challenged patent claim was 

5 determined to be unpatentable in such 

6 final written decision. 

7 ‘‘(ii) During the inter partes review 

8 for which such final written decision was 

9 issued, the owner of the patent filed a 

10 timely motion to amend the patent that 

11 proposed 1 or more substitute claims for 

12 the challenged patent claim. 

13 ‘‘(iii) The motion to amend was de14 nied as to each substitute claim proposed 

15 for the challenged patent claim. 

16 ‘‘(iv) The request for the expedited 

17 post-review reexamination of the chal18 lenged patent claim is made on the basis of 

19 the prior art asserted during such inter 

20 partes review against— 

21 ‘‘(I) the challenged patent claim; 

22 or 

23 ‘‘(II) a substitute claim proposed 

24 for the challenged claim. 


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1 ‘‘(B) PROCEDURES FOR REQUEST AND

2 CONDUCT OF REEXAMINATION.—A request for 

3 expedited post-review reexamination under this 

4 paragraph and the conduct of such reexamina5 tion under this paragraph shall be subject to 

6 section 302 and sections 304 through 307, ex7 cept that— 

8 ‘‘(i) the Director shall establish, by 

9 regulation, a time period (which may not 

10 exceed 60 days) after the time for filing an 

11 appeal of a final written decision of the 

12 Patent Trial and Appeal Board under sec13 tion 318(a) has expired, or after the final 

14 disposition of any such appeal, during 

15 which the owner of the patent may request 

16 an expedited post-review reexamination 

17 under this paragraph; 

18 ‘‘(ii) only the owner of the patent may 

19 file a request for an expedited post-review 

20 reexamination under this paragraph; 

21 ‘‘(iii) for the purposes of section 304, 

22 a determination that a substantial new 

23 question of unpatentability is raised shall 

24 be assumed, and not later than 14 days 

25 after a request for an expedited post-reVerDate Sep 11 2014 22:01 Dec 26, 2018 Jkt 089200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\H7366.IH H7366

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1 view reexamination is filed, the Director 

2 shall order the reexamination of the chal3 lenged patent claim identified in the re4 quest if the Director determines that the 

5 request meets the requirements of subpara6 graph (A); 

7 ‘‘(iv) the owner of the patent may not 

8 file a statement under section 304 and the 

9 reexamination shall begin immediately 

10 upon the order of the reexamination; 

11 ‘‘(v) in any expedited post-review reex12 amination proceeding under this para13 graph, the owner of the patent may only 

14 propose amended or new claims that are 

15 patentably distinct from the challenged 

16 patent claim of which the expedited post17 review reexamination was requested; 

18 ‘‘(vi) the full record of the inter partes 

19 review upon which the post-review reexam20 ination was requested shall be made avail21 able for consideration during the reexam22 ination; and 

23 ‘‘(vii) the reexamination (excluding 

24 any appeal thereof) shall be concluded on 

25 the date that is not later than 180 days 


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1 after the date on which the Director orders 

2 the reexamination.’’. 

3 (b) PATENT OWNER’S ACTIONS.—Section 315(b) of 

4 title 35, United States Code, is amended to read as fol5 lows: 

6 ‘‘(b) PATENT OWNER’S ACTIONS.— 

7 ‘‘(1) IN GENERAL.—An inter partes review may 

8 not be instituted if the petition requesting the pro9 ceeding is filed more than 1 year after the date on 

10 which the petitioner, real party in interest, or privy 

11 of the petitioner is served with a complaint alleging 

12 infringement of the patent. 

13 ‘‘(2) EXCEPTION FOR JOINDER.—The time lim14 itation in paragraph (1) shall not apply to a request 

15 for joinder under subsection (c). 

16 ‘‘(3) EXCEPTION FOR AMENDED CLAIMS.—The 

17 time limitation in paragraph (1) shall not apply to 

18 a challenge in a petition for inter partes review 

19 against a patent claim that was amended pursuant 

20 to section 316(d)(5) unless the complaint was served 

21 after the issuance of a certificate under section 

22 307(a) for the patent claim.’’. 

23 (c) AMENDMENT TO PROCEDURES FOR ISSUANCE OF

24 CERTIFICATE.—Section 318(b) of title 35, United States 

25 Code, is amended— 


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1 (1) by striking ‘‘and the time for appeal’’ and 

2 inserting ‘‘, the time for appeal’’; and 

3 (2) by inserting ‘‘and the time for filing a re4 quest under section 316(d)(5)(A) has expired or any 

5 post-review reexamination has been terminated,’’ 

6 after ‘‘terminated,’’. 

7 SEC. 3. CLARIFICATION OF WHICH CLAIMS FOR WHICH THE 

8 PTAB SHALL ISSUE A FINAL WRITTEN DECI9 SION. 

10 Section 318(a) of title 35, United States Code, is 

11 amended by striking ‘‘challenged by the petitioner’’ and 

12 inserting ‘‘on which the inter partes review was insti13 tuted’’. 

Æ 


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