II 

109TH CONGRESS 

2D SESSION S. 3818 

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

IN THE SENATE OF THE UNITED STATES 

AUGUST 3, 2006 

Mr. HATCH (for himself and Mr. LEAHY) 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 2006’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Reference to title 35, United States Code. 

Sec. 3. Right of the first inventor to file. 

Sec. 4. Inventor’s oath or declaration. 

Sec. 5. Remedies for infringement and affirmative defenses thereto. 

Sec. 6. Post-grant procedures. 

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

Sec. 8. Venue and jurisdiction. 


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Sec. 9. Other statutory and conforming amendments. 

Sec. 10. Effective date. 

1 SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE. 

2 Whenever in this Act a section or other provision is 

3 amended or repealed, that amendment or repeal shall be 

4 considered to be made to that section or other provision 

5 of title 35, United States Code. 

6 SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE. 

7 (a) DEFINITIONS.—Section 100 is amended by add8 ing at the end the following: 

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

10 a joint invention, the individuals collectively who invented 

11 or discovered the subject matter of the invention. 

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

13 any 1 of the individuals who invented or discovered the 

14 subject matter of a joint invention. 

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

16 is— 

17 ‘‘(1) the filing date of the patent or the applica18 tion for patent containing the claim to the invention; 

19 or 

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

21 entitled to a right of priority of any other applica22 tion under section 119, 365(a), or 365(b) or to the 

23 benefit of an earlier filing date in the United States 

24 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 ‘‘(j) The term ‘joint invention’ means an invention 

8 resulting from the collaboration of inventive endeavors of 

9 2 or more persons working toward the same end and pro10 ducing an invention by their collective efforts.’’. 

11 (b) CONDITIONS FOR PATENTABILITY.— 

12 (1) IN GENERAL.—Section 102 is amended to 

13 read as follows: 

14 ‘‘§ 102. Conditions for patentability; novelty 

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

16 invention may not be obtained if— 

17 ‘‘(1) the claimed invention was patented, de18 scribed in a printed publication, or otherwise pub19 licly known— 

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

21 filing date of the claimed invention; or 

22 ‘‘(B) 1 year or less before the effective fil23 ing date of the claimed invention, if the inven24 tion was patented or described in a printed pub25 lication or otherwise publicly known before the 


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1 invention thereof by the applicant for a patent; 

2 or 

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

4 patent issued under section 151, or in an application 

5 for patent published or deemed published under sec6 tion 122(b), in which the patent or application, as 

7 the case may be, names another inventor and was 

8 effectively filed before the effective filing date of the 

9 claimed invention. 

10 ‘‘(b) LIMITATION ON PRIOR ART.— 

11 ‘‘(1) DERIVATION AND COMMON ASSIGNMENT

12 EXCEPTIONS.—Subject matter that would otherwise 

13 qualify as prior art only under subsection (a)(2) 

14 shall not be prior art to a claimed invention if— 

15 ‘‘(A) the subject matter was obtained di16 rectly or indirectly from the inventor or a joint 

17 inventor; or 

18 ‘‘(B) the subject matter and the claimed 

19 invention were, not later than the effective fil20 ing date of the claimed invention, owned by the 

21 same person or subject to an obligation of as22 signment to the same person. 

23 ‘‘(2) GRACE PERIOD.—Subject matter disclosed 

24 in the prior art less than 1 year before the effective 

25 filing date of the claimed invention shall not preVerDate Aug 31 2005 03:32 Aug 09, 2006 Jkt 049200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\S3818.IS S3818

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1 clude the patenting of a claimed invention under 

2 subsection (a) or section 103 if the claimed inven3 tion was made prior to the date the subject matter 

4 becomes prior art pursuant to section 102(b), if the 

5 subject matter disclosed was obtained directly or in6 directly from an inventor of the claimed subject mat7 ter or the applicant. 

8 ‘‘(3) PATENTS AND PUBLISHED APPLICATIONS

9 EFFECTIVELY FILED.—A patent or application for 

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

11 with respect to any subject matter described in the 

12 patent or application— 

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

14 the application for patent; or 

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

16 is entitled to claim a right of priority under sec17 tion 119, 365(a), or 365(b) or to claim the ben18 efit of an earlier filing date under section 120, 

19 121, or 365(c), based upon 1 or more prior 

20 filed applications for patent, as of the filing 

21 date of the earliest such application that de22 scribes the subject matter.’’. 

23 (2) CONFORMING AMENDMENT.—The item re24 lating to section 102 in the table of sections for 

25 chapter 10 is amended to read as follows: 

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


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1 (c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS

2 SUBJECT MATTER.—Section 103 is amended— 

3 (1) in subsection (a)— 

4 (A) by striking ‘‘A patent may not be ob5 tained through the invention’’ and inserting ‘‘A 

6 patent for the claimed invention may not be ob7 tained through the claimed invention’’; 

8 (B) by striking ‘‘sought to be patented’’ 

9 and inserting ‘‘of the claimed invention’’; and 

10 (C) by striking ‘‘at the time the invention 

11 was made’’ and inserting ‘‘before the effective 

12 filing date of the claimed invention’’; 

13 (2) by striking subsection (b) and redesignating 

14 subsection (c) as subsection (b); 

15 (3) by amending subsection (b)(1), as so redes16 ignated, to read as follows: 

17 ‘‘(d)(1) Subject matter developed by another person, 

18 which is disqualified as prior art under section 102(b), 

19 shall not preclude patentability under this section if the 

20 subject matter and the claimed invention were owned by 

21 the same person, or subject to an obligation of assignment 

22 to the same person, on or before the effective filing date 

23 of the claimed invention.’’; and 

24 (4) in subsection (b)(2)(A), as so redesignated, 

25 by striking ‘‘the date the claimed invention was 


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1 made’’ and inserting ‘‘the effective filing date of the 

2 claimed invention’’. 

3 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

4 MADE ABROAD.—Section 104, and the item relating to 

5 that section in the table of sections for chapter 10, are 

6 repealed. 

7 (e) REPEAL OF STATUTORY INVENTION REGISTRA8 TION.— 

9 (1) IN GENERAL.—Section 157, and the item 

10 relating to that section in the table of sections for 

11 chapter 14, are repealed. 

12 (2) REMOVAL OF CROSS REFERENCES.—Section 

13 111(b)(8) is amended by striking ‘‘sections 115, 

14 131, 135, and 157’’ and inserting ‘‘sections 131 and 

15 135’’. 

16 (f) EARLIER FILING DATE FOR INVENTOR AND

17 JOINT INVENTOR.—Section 120 is amended by striking 

18 ‘‘which is filed by an inventor or inventors named’’ and 

19 inserting ‘‘which names an inventor or joint inventor’’. 

20 (g) CONFORMING AMENDMENTS.— 

21 (1) RIGHT OF PRIORITY.—Section 172 is 

22 amended by striking ‘‘and the time specified in sec23 tion 102(d)’’. 

24 (2) LIMITATION ON REMEDIES.—Section 

25 287(c)(4) is amended by striking ‘‘the earliest effecVerDate Aug 31 2005 03:32 Aug 09, 2006 Jkt 049200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\S3818.IS S3818

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1 tive filing date of which is prior to’’ and inserting 

2 ‘‘which has an effective filing date before’’. 

3 (3) INTERNATIONAL APPLICATION DESIG4 NATING THE UNITED STATES: EFFECT.—Section 

5 363 is amended by striking ‘‘except as otherwise 

6 provided in section 102(e) of this title’’. 

7 (4) PUBLICATION OF INTERNATIONAL APPLICA8 TION: EFFECT.—Section 374 is amended by striking 

9 ‘‘sections 102(e) and 154(d)’’ and inserting ‘‘section 

10 154(d)’’. 

11 (5) PATENT ISSUED ON INTERNATIONAL APPLI12 CATION: EFFECT.—The second sentence of section 

13 375(a) is amended by striking ‘‘Subject to section 

14 102(e) of this title, such’’ and inserting ‘‘Such’’. 

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

16 119(a) is amended by striking ‘‘; but no patent shall 

17 be granted’’ and all that follows through ‘‘one year 

18 prior to such filing’’. 

19 (7) INVENTIONS MADE WITH FEDERAL ASSIST20 ANCE.—Section 202(c) is amended— 

21 (A) in paragraph (2)— 

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

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

24 ‘‘obtained in the United States’’ and in25 serting ‘‘the 1-year period referred to in 


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

2 such 2-year period’’; and 

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

4 inserting ‘‘the 1-year’’; and 

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

6 statutory bar date that may occur under this 

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

8 and inserting ‘‘the expiration of the 1-year pe9 riod referred to in section 102(a)’’. 

10 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

11 Section 291, and the item relating to that section in the 

12 table of sections for chapter 29, are repealed. 

13 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN14 VENTION.—Section 135(a) is amended to read as follows: 

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

16 ‘‘(1) INSTITUTION OF INVENTOR’S RIGHTS CON17 TEST.—An applicant may request initiation of a der18 ivation proceeding to determine the right of the ap19 plicant to a patent by filing a request which sets 

20 forth with particularity the basis for finding that an 

21 earlier applicant derived the claimed invention and 

22 without authorization filed an application claiming 

23 such invention. Any such request shall be made 

24 within 12 months of the date of first publication of 

25 an application containing a claim that is the same 


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1 or is substantially the same as the claimed invention, 

2 under oath and supported by substantial evidence. 

3 Whenever patents or applications for patent naming 

4 different individuals as the inventor are determined 

5 by the Director to interfere because of a dispute over 

6 the right to patent under section 101, the Director 

7 shall institute an inventor’s rights contest for the 

8 purpose of determining which applicant is entitled to 

9 a patent. 

10 ‘‘(2) REQUIREMENTS.—No proceeding shall be 

11 commenced under this subsection unless the party 

12 requesting the proceeding has filed an application 

13 that— 

14 ‘‘(A) was filed not later than 18 months 

15 after the effective filing date of the application 

16 or patent deemed to interfere with the subse17 quent application or patent; and 

18 ‘‘(B) did not, within 1 year of the earliest 

19 effective filing date of the application, contain a 

20 claim that is the same or substantially the same 

21 as the invention claimed in the earlier filed ap22 plication; 

23 ‘‘(3) DETERMINATION BY PATENT TRIAL AND

24 APPEAL BOARD.—In any proceeding under this sub25 section, the Patent Trial and Appeal Board— 


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

2 right to patent; 

3 ‘‘(B) in appropriate circumstances, may 

4 correct the naming of the inventor in any appli5 cation or patent at issue; and 

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

7 right to patent. 

8 ‘‘(4) DERIVATIVE PROCEEDING.—The Board 

9 may defer action on a request to initiate a derivation 

10 proceeding until 3 months after the date on which 

11 the Director issues a patent to the applicant that 

12 filed the earlier application. 

13 ‘‘(5) EFFECT OF FINAL DECISION.—The final 

14 decision of the Patent Trials and Appeal Board, if 

15 adverse to the claim of an applicant, shall constitute 

16 the final refusal by the Patent and Trademark Of17 fice on the claims involved. The Director may issue 

18 a patent to an applicant who is judged to have the 

19 right to patent. The final decision of the Board, if 

20 adverse to a patentee, shall, if no appeal or other re21 view of the decision has been or can be taken or had, 

22 constitute cancellation of the claims involved in the 

23 patent, and notice of such cancellation shall be en24 dorsed on copies of the patent distributed after such 

25 cancellation by the Patent and Trademark Office.’’. 


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1 (j) PATENT TRIAL AND APPEAL BOARD.— 

2 (1) ELIMINATION OF REFERENCES TO INTER3 FERENCES.— 

4 (A) Sections 6, 41, 134, 141, 145, 146, 

5 154, 305, and 314 are each amended by strik6 ing ‘‘Board of Patent Appeals’’ each place it 

7 appears and inserting ‘‘Patent Trial and Appeal 

8 Board’’. 

9 (B) Sections 135, 141, 146, and 154 are 

10 each amended by striking ‘‘interference’’ each 

11 place it appears and inserting ‘‘inventor’s rights 

12 contest’’. 

13 (C) The item relating to section 146 in the 

14 table of sections for chapter 13 is amended to 

15 read as follows: 

‘‘146. Civil action in case of inventor’s rights contest.’’. 

16 (2) TECHNICAL AND CONFORMING AMEND17 MENTS.—Section 135(c) is amended— 

18 (A) by striking ‘‘(c) Any’’ and inserting 

19 ‘‘(c)(1) Any’’; 

20 (B) in the second paragraph, by striking 

21 ‘‘The Director’’ and inserting ‘‘(2) The Direc22 tor’’; and 

23 (C) in the third paragraph, by striking 

24 ‘‘Any discretionary’’ and inserting ‘‘(3) Any dis25 cretionary’’. 


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1 SEC. 4. INVENTOR’S OATH OR DECLARATION. 

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

3 (1) IN GENERAL.—Section 115 is amended to 

4 read as follows: 

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

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

7 DECLARATION.—An application for patent that is filed 

8 under section 111(a), that commences the national stage 

9 under section 363, or that is filed by an inventor for an 

10 invention for which an application has previously been 

11 filed under this title by that inventor shall include, or be 

12 amended to include, the name of the inventor of any 

13 claimed invention in the application. Except as otherwise 

14 provided in this section, an individual who is the inventor 

15 or a joint inventor of a claimed invention in an application 

16 for patent shall execute an oath or declaration in connec17 tion with the application. 

18 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara19 tion under subsection (a) shall contain statements that— 

20 ‘‘(1) the application was made or was author21 ized to be made by the affiant or declarant; and 

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

23 to be the original inventor or an original joint inven24 tor of a claimed invention in the application. 

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

26 may specify additional information relating to the inventor 


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

2 oath or declaration under subsection (a). 

3 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

6 patent may provide a substitute statement under the 

7 circumstances described in paragraph (2) and such 

8 additional circumstances that the Director may 

9 specify by regulation. 

10 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub11 stitute statement under paragraph (1) shall be per12 mitted with respect to any individual who, at the 

13 time the substitute statement is filed— 

14 ‘‘(A) is deceased; 

15 ‘‘(B) is under legal incapacity; 

16 ‘‘(C) is under an obligation to assign the 

17 invention, but has refused to make the oath or 

18 declaration required under subsection (a); or 

19 ‘‘(D) cannot be found or reached after dili20 gent effort. 

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

22 this subsection shall— 

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

24 whom the statement applies; 


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1 ‘‘(B) set forth the circumstances rep2 resenting the permitted basis for the filing of 

3 the substitute statement in lieu of the oath or 

4 declaration under subsection (a); and 

5 ‘‘(C) contain any additional information, 

6 including any showing, required by the Direc7 tor. 

8 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN9 MENT OF RECORD.—An individual who is under an obliga10 tion of assignment of an application for patent may in11 clude the required statements under subsections (b) and 

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

13 of filing such statements separately. 

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

15 section 151 may be provided to an applicant for patent 

16 only if the applicant for patent has filed each required 

17 oath or declaration under subsection (a) or has filed a sub18 stitute statement under subsection (d) or recorded an as19 signment meeting the requirements of subsection (e). 

20 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE21 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

22 The requirements under this section shall not apply to an 

23 individual with respect to an application for patent in 

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


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1 inventor and that claims the benefit under section 120 or 

2 365(c) of the filing of an earlier-filed application, if— 

3 ‘‘(1) an oath or declaration meeting the require4 ments of subsection (a) was executed by the indi5 vidual and was filed in connection with the earlier6 filed application; 

7 ‘‘(2) a substitute statement meeting the re8 quirements of subsection (d) was filed in the earlier 

9 filed application with respect to the individual; or 

10 ‘‘(3) an assignment meeting the requirements 

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

12 earlier-filed application by the individual and was re13 corded in connection with the earlier-filed applica14 tion. 

15 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE16 MENTS; FILING ADDITIONAL STATEMENTS.— 

17 ‘‘(1) IN GENERAL.—A statement made under 

18 this section may be withdrawn, replaced, or other19 wise corrected at any time. If a change is made in 

20 the naming of the inventor requiring the filing of 1 

21 or more additional statements under this section, the 

22 Director shall establish regulations under which such 

23 additional statements may be filed. 

24 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE25 QUIRED.—If an individual has executed an oath or 


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1 declaration under subsection (a) or an assignment 

2 meeting the requirements of subsection (e) with re3 spect to an application for patent, no supplemental 

4 oath or declaration or further substitute statement 

5 shall thereafter be required in connection with the 

6 application for patent or any patent issuing thereon. 

7 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in8 valid or unenforceable based upon the failure to 

9 comply with a requirement under this section if the 

10 failure is remedied as provided under paragraph 

11 (1).’’. 

12 (2) RELATIONSHIP TO DIVISIONAL APPLICA13 TIONS.—Section 121 is amended by striking ‘‘If a 3 

14 divisional application’’ and all that follows through 

15 ‘‘inventor.’’. 

16 (3) CONFORMING AMENDMENT.—The item re17 lating to section 115 in the table of sections for 

18 chapter 10 is amended to read as follows: 

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

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

20 118 is amended to read as follows: 

21 ‘‘§ 118. Filing by other than inventor 

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

23 under an obligation to assign the invention may make an 

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1 plication for patent on behalf of and as agent for the in2 ventor on proof of the pertinent facts and a showing that 

3 such action is appropriate to preserve the rights of the 

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

5 filed under this section by a person other than the inven6 tor, the patent shall be granted to the real party in inter7 est and upon such notice to the inventor as the Director 

8 considers to be sufficient.’’. 

9 (c) SPECIFICATION.—Section 112 is amended— 

10 (1) in the first paragraph by striking ‘‘The 

11 specification’’ and inserting ‘‘(a) IN GENERAL.—The 

12 specification’’; 

13 (2) in the second paragraph— 

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

15 inserting ‘‘(b) CONCLUSION.—The specifica16 tions’’; and 

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

18 invention’’ and inserting ‘‘inventor or a joint in19 ventor regards as the invention’’; 

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

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

22 (4) in the fourth paragraph, by striking ‘‘Sub23 ject to the following paragraph,’’ and inserting ‘‘(d) 

24 REFERENCE IN DEPENDENT FORMS.—Subject to 

25 subsection (e),’’; 


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

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

3 DEPENDENT FORM.—A claim’’; and 

4 (6) in the last paragraph, by striking ‘‘An ele5 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

6 A COMBINATION.—An element’’. 

7 SEC. 5. REMEDIES FOR INFRINGEMENT AND AFFIRMATIVE 

8 DEFENSES THERETO. 

9 (a) DAMAGES.—Section 284 is amended by— 

10 (1) in the first paragraph— 

11 (A) by striking ‘‘Upon’’ and inserting ‘‘(a) 

12 AWARD OF DAMAGES.—(1) Upon’’; and 

13 (B) by adding at the end the following: 

14 ‘‘(2) In determining a reasonable royalty con15 sideration shall be given to— 

16 ‘‘(A) the economic value that should be at17 tributed to the novel and non-obvious feature or 

18 features of the invention, as distinguished from 

19 the economic value attributable to other fea20 tures, improvements added by the infringer, 

21 and the business risks the infringer undertook 

22 in commercialization; 

23 ‘‘(B) the terms of non-exclusive market24 place licensing of the invention; and 


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1 ‘‘(C) other relevant factors in applicable 

2 law.’’; 

3 (2) by amending the second paragraph to read 

4 as follows: 

5 ‘‘(b) WILLFUL INFRINGEMENT.— 

6 ‘‘(1) INCREASED DAMAGES.—A court that has 

7 determined that the infringer has willfully infringed 

8 a patent or patents may increase the damages up to 

9 3 times the amount of damages found or assessed 

10 under subsection (a), except that increased damages 

11 under this paragraph shall not apply to provisional 

12 rights under section 154(d). 

13 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL14 NESS.—A court may find that an infringer has will15 fully infringed a patent only if the patent owner pre16 sents clear and convincing evidence that— 

17 ‘‘(A) the infringer, having received ade18 quate written notice from the patentee, after a 

19 reasonable opportunity to investigate, thereafter 

20 performed 1 or more of the alleged acts of in21 fringement; 

22 ‘‘(B) the infringer intentionally copied the 

23 patented invention with knowledge that it was 

24 patented; or 


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1 ‘‘(C) after having been found by a court to 

2 have infringed that patent, the infringer en3 gaged in conduct that was not colorably dif4 ferent from the conduct previously found to 

5 have infringed the patent, and which resulted in 

6 a separate finding of infringement of the same 

7 patent. 

8 ‘‘(3) WRITTEN NOTICE.—For purposes of para9 graph (2), written notice shall be adequate only if 

10 such notice— 

11 ‘‘(A) alleges acts of infringement in a man12 ner sufficient to give the infringer an objectively 

13 reasonable apprehension of suit on such patent, 

14 and 

15 ‘‘(B) identifies with particularity each 

16 claim of the patent, each product or process 

17 that the patent owner alleges infringes the pat18 ent, and the relationship of such product or 

19 process to such claim, the infringer. 

20 ‘‘(4) LIMITATIONS ON WILLFULNESS.— 

21 ‘‘(A) IN GENERAL.—A court shall not find 

22 that an infringer has willfully infringed a patent 

23 under paragraph (2) for any period of time dur24 ing which the infringer had an informed good 

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1 forceable, or would not be infringed by the con2 duct later shown to constitute infringement of 

3 the patent. 

4 ‘‘(B) INFORMED GOOD FAITH BELIEF.— 

5 For purposes of this paragraph, an informed 

6 good faith belief may be established by— 

7 ‘‘(i) reasonable reliance on advice of 

8 counsel; 

9 ‘‘(ii) evidence that the infringer 

10 sought to modify its conduct to avoid in11 fringement once it had discovered the pat12 ent; or 

13 ‘‘(iii) other evidence a court may find 

14 sufficient to establish such good faith be15 lief. 

16 ‘‘(C) EVIDENCE.—The decision of the in17 fringer not to present evidence of advice of 

18 counsel shall have no relevance to a determina19 tion of willful infringement under paragraph 

20 (2). 

21 ‘‘(5) LIMITATION ON PLEADING.—Before the 

22 date on which a determination has been made that 

23 the patent in suit is not invalid, is enforceable, and 

24 has been infringed by the infringer, a patentee may 

25 not plead, and a court may not determine, that an 


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1 infringer has willfully infringed the patent. The 

2 court’s determination of an infringer’s willfulness 

3 shall be made without a jury.’’; and 

4 (3) in the third paragraph, by striking ‘‘The 

5 court’’ and inserting ‘‘(c) EXPERT TESTIMONY.— 

6 The court’’. 

7 (b) ATTORNEY’S FEES.—Section 285 is amended to 

8 read: 

9 ‘‘(a) The court shall award, to a prevailing party, fees 

10 and other expenses incurred by that party in connection 

11 with that proceeding, unless the court finds that the posi12 tion of the nonprevailing party or parties was substantially 

13 justified or that special circumstances make an award un14 just.’’. 

15 (c) UNENFORCEABILITY.—Section 282 of title 35, 

16 United States Code, is amended— 

17 (1) by inserting ‘‘(a) IN GENERAL.—’’ before 

18 ‘‘A patent shall be presumed valid.’’; and 

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

20 ‘‘(b) UNENFORCEABILITY.— 

21 ‘‘(1) PERMITTED GROUNDS FOR UNENFORCE22 ABILITY.—A court may find that a patent is unen23 forceable only if the patent owner presents clear and 

24 convincing evidence that, with respect to the patent 


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1 at issue the patentee, or a patentee’s agent, or privy 

2 before issuance of the patent— 

3 ‘‘(A) failed to disclose material informa4 tion, or submitted false material information or 

5 statements; and 

6 ‘‘(B) did so with an intent to mislead or 

7 deceive the United States Patent and Trade8 mark Office. 

9 ‘‘(2) LIMITATIONS ON UNENFORCEABILITY.—A 

10 court shall not find that a patent in unenforceable 

11 under paragraph (1) if— 

12 ‘‘(A) the patentee, agent, or privy had an 

13 informed good faith belief that the specific in14 formation that was not disclosed was not mate15 rial; 

16 ‘‘(B) the patentee had no actual or con17 structive knowledge of the misconduct of an 

18 agent or privy, exercised due care in selecting 

19 and supervising such agent or privy, and rea20 sonably relied on counsel in obtaining the pat21 ent; 

22 ‘‘(C) establishes good faith by other evi23 dence a court may find sufficient; or 


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1 ‘‘(D) the court has not determined 1 or 

2 more claims in the patent at issue in the action 

3 to be invalid. 

4 ‘‘(3) LIMITATION ON PLEADING.—Before the 

5 date on which a determination has been made that 

6 the patent in suit is not invalid in whole and has 

7 been infringed by the infringer, a defendant may not 

8 plead, and a court may not determine, that the pat9 ent in question is unenforceable.’’. 

10 (d) DEFENSE TO INFRINGEMENT BASED ON EAR11 LIER INVENTOR.—Section 273 of title 35, United States 

12 Code, is amended— 

13 (1) in subsection (a)— 

14 (A) in paragraph (1)— 

15 (i) by striking ‘‘of a method’’; and 

16 (ii) by striking ‘‘review period;’’ and 

17 inserting ‘‘review period; and’’; 

18 (B) in paragraph (2)(B), by striking the 

19 semicolon at the end and inserting a period; 

20 and 

21 (C) by striking paragraphs (3) and (4); 

22 (2) in subsection (b)— 

23 (A) in paragraph (1)— 

24 (i) by striking ‘‘for a method’’; and 


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1 (ii) by striking ‘‘at least 1 year before 

2 the effective filing date of such patent, 

3 and’’ and all that follows through the pe4 riod and inserting ‘‘and commercially used, 

5 or made substantial preparations for com6 mercial use of, the subject matter before 

7 the effective filing date of the claimed in8 vention.’’; 

9 (B) in paragraph (2)— 

10 (i) by striking ‘‘The sale or other dis11 position of a useful end result produced by 

12 a patented method’’ and inserting ‘‘The 

13 sale or other disposition of subject matter 

14 that qualifies for the defense set forth in 

15 this section’’; and 

16 (ii) by striking ‘‘a defense under this 

17 section with respect to that useful end re18 sult’’ and inserting ‘‘such defense’’; and 

19 (C) in paragraph (3)— 

20 (i) by striking subparagraph (A); and 

21 (ii) by redesignating subparagraphs 

22 (B) and (C) as subparagraphs (A) and 

23 (B), respectively; 

24 (3) in paragraph (7), by striking ‘‘of the pat25 ent’’ and inserting ‘‘of the claimed invention’’; and 


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1 (4) by amending the heading to read as follows: 

2 ‘‘§ 273. Special defenses to and exemptions from in3 fringement’’. 

4 (e) TABLE OF SECTIONS.—The item related to sec5 tion 273 in the table of sections for chapter 28 is amended 

6 to read as follows: 

‘‘Sec. 273. Special defenses to and exemptions from infringement.’’. 

7 (f) EFFECT OF EXTRATERRITORIAL INFRINGE8 MENT.—Section 271(f) is repealed. 

9 SEC. 6. POST-GRANT PROCEDURES. 

10 (a) POST-GRANT OPPOSITION PROCEDURES.— 

11 (1) IN GENERAL.—Chapter 31 is amended to 

12 read as follows: 

13 ‘‘CHAPTER 31—POST-GRANT REVIEW 

14 PROCEEDINGS 

‘‘Sec. 

‘‘311. Petition for post-grant review. 

‘‘312. Timing of petition. 

‘‘313. Submission of petition. 

‘‘314. Prohibited filings. 

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

‘‘316. Proof and evidentiary standards. 

‘‘317. Showing of sufficient grounds; institution of post-grant review proceedings. 

‘‘318. Amendment of the patent. 

‘‘319. Decision of the Patent Trial and Appeal Board. 

‘‘320. Effect of decision. 

‘‘321. Relationship to other pending proceedings. 

‘‘322. Effect of decisions rendered in civil action on future post-grant review 

proceedings. 

‘‘323. Effect of final decision on future proceedings. 

15 ‘‘§ 311. Petition for post-grant review 

16 ‘‘Any person who is not the patent owner may file 

17 a petition for cancellation seeking to institute a post-grant 


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1 review proceeding before the Patent Trial and Appeal 

2 Board to cancel as unpatentable any claim of a patent on 

3 any ground which might be raised under section 282(a) 

4 (2) and (3) (relating to invalidity of the patent or any 

5 claim). 

6 ‘‘§ 312. Timing of petition 

7 ‘‘A post-grant review proceeding may be instituted 

8 only if the petition for cancellation is filed by a cancella9 tion petitioner— 

10 ‘‘(1) not later than 12 months after the date 

11 the patent was issued or reissued; or 

12 ‘‘(2) who establishes a substantial reason to be13 lieve that the continued existence of the challenged 

14 claim causes or is likely to cause the petitioner sig15 nificant economic harm. 

16 ‘‘§ 313. Submission of petition 

17 ‘‘The petition for cancellation shall— 

18 ‘‘(1) be accompanied by payment of the post19 grant review fee set forth in subsection 41(a); 

20 ‘‘(2) identify the cancellation petitioner; and 

21 ‘‘(3) set forth in writing the basis for the can22 cellation, identifying each claim challenged and pro23 viding such information as the Director may require 

24 by regulation. 


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1 ‘‘§ 314. Prohibited filings 

2 ‘‘No post-grant review proceeding shall be insti3 tuted— 

4 ‘‘(1) under subsection (a) of section 312 if the 

5 petition for cancellation identifies the same cancella6 tion petitioner and the same patent as a previous pe7 tition for cancellation filed under subsection (a) of 

8 section 312; or 

9 ‘‘(2) under subsection (b) of section 312 if the 

10 petition for cancellation identifies the same cancella11 tion petitioner and the same patent as a previous pe12 tition for cancellation filed under subsection (b) of 

13 section 312. 

14 ‘‘§ 315. Conduct of post-grant review proceedings 

15 ‘‘(a) IN GENERAL.—The Director shall— 

16 ‘‘(1) establish regulations, in accordance with 

17 section 2(b)(2), to govern post-grant review pro18 ceedings and their relationship to other proceedings; 

19 ‘‘(2) prescribe regulations setting forth the 

20 standards for showings of substantial reason to be21 lieve and significant economic harm under section 

22 312(b) and sufficient grounds in section 317; and 

23 ‘‘(3) prescribe regulations setting forth proce24 dures for discovery of relevant evidence, including 

25 that such discovery shall be limited to evidence di26 rectly related to factual assertions advanced by eiVerDate Aug 31 2005 03:32 Aug 09, 2006 Jkt 049200 PO 00000 Frm 00029 Fmt 6652 Sfmt 6201 E:\BILLS\S3818.IS S3818

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1 ther party in the proceeding, and the procedures for 

2 obtaining such evidence shall be consistent with the 

3 purpose and nature of the proceeding. 

4 ‘‘(b) POST-GRANT REGULATIONS.—Regulations 

5 under subsection (a)(1)— 

6 ‘‘(1) shall be designed to result in a final deci7 sion on a petition for cancellation within 12 months 

8 of the institution of the post-grant review pro9 ceeding; 

10 ‘‘(2) shall provide for discovery upon order of 

11 the Board; 

12 ‘‘(3) may prescribe sanctions for abuse of dis13 covery or abuse of process to the extent authorized 

14 in United States district courts by rule 11 and rule 

15 37 of the Federal Rules of Civil Procedure; 

16 ‘‘(4) may provide for protective orders gov17 erning the exchange and submission of confidential 

18 information; and 

19 ‘‘(5) shall ensure that any information sub20 mitted by the patent owner in support of any 

21 amendment entered under section 318 shall be made 

22 available to the public as part of the prosecution his23 tory of the patent. 

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

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1 ation the effect on the economy, the integrity of the patent 

2 system, and the efficient administration of the Office. 

3 ‘‘§ 316. Proof and evidentiary standards 

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

5 forth in section 282 shall not apply in a challenge to any 

6 patent claim under this chapter. 

7 ‘‘(b) BURDEN OF PROOF.—The party advancing a 

8 proposition under this chapter shall have the burden of 

9 proving that proposition. 

10 ‘‘§ 317. Showing of sufficient grounds; institution of 

11 post-grant review proceedings 

12 ‘‘Within such time as may be prescribed by regula13 tion, the cancellation petitioner shall file any information 

14 known to it that supports its allegation of the 

15 unpatentability of any challenged claim. The Patent Trial 

16 and Appeal Board shall not institute a post-grant review 

17 proceeding unless it determines that the information pre18 sented provides sufficient grounds to proceed. If the Pat19 ent Trial and Appeal Board does not institute a post-grant 

20 review proceeding under this section then the cancellation 

21 petitioner may not assert the same grounds against the 

22 same claims in any other proceeding within the Office. 

23 ‘‘§ 318. Amendment of the patent 

24 ‘‘(a) IN GENERAL.—In response to a challenge in a 

25 petition for cancellation, the patent owner may file 1 moVerDate Aug 31 2005 03:32 Aug 09, 2006 Jkt 049200 PO 00000 Frm 00031 Fmt 6652 Sfmt 6201 E:\BILLS\S3818.IS S3818

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1 tion to amend the patent in 1 or more of the following 

2 ways: 

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

4 ‘‘(2) For each challenged claim, propose a sub5 stitute claim that includes all the limitations of the 

6 challenged claim. 

7 ‘‘(3) Amend the patent drawings or otherwise 

8 amend the patent other than the claims. 

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

10 amend may be permitted only for good cause shown. 

11 ‘‘(c) SCOPE OF CLAIMS.—No amendment shall en12 large the scope of the claims of the patent. No amendment 

13 shall introduce new matter. 

14 ‘‘§ 319. Decision of the Patent Trial and Appeal Board 

15 ‘‘If the post-grant review proceeding is instituted 

16 under section 317 and not dismissed under section 320 

17 or subsection (b) of section 323, the Patent Trial and Ap18 peal Board shall issue a final decision with respect to pat19 entability of any patent claim challenged and any new 

20 claim added under this section 318. 

21 ‘‘§ 320. Effect of decision 

22 ‘‘(a) IN GENERAL.—Where a final decision of the 

23 Patent Trial and Appeal Board is issued under section 

24 319 and the time for appeal has expired or any appeal 

25 proceeding has terminated, the Director shall issue and 


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1 publish a certificate canceling any claim of the patent fi2 nally determined to be unpatentable and incorporating in 

3 the patent by operation of the certificate any new claim 

4 determined to be patentable. 

5 ‘‘(b) NEW CLAIMS.—Any new claim held to be pat6 entable and incorporated into a patent in a post-grant re7 view proceeding shall have the same effect as that speci8 fied in section 252 for reissued patents on the right of 

9 any person who made, purchased, offered to sell, or used 

10 within the United States, or imported into the United 

11 States, anything patented by such new claim, or who made 

12 substantial preparations therefore, prior to issuance of a 

13 certificate under the provisions of subsection (a) of this 

14 section. 

15 ‘‘§ 321. Relationship to other pending proceedings 

16 ‘‘Notwithstanding subsection 135(a), sections 251 

17 and 252, and chapter 30, the Director may determine the 

18 manner in which any reexamination proceeding, reissue 

19 proceeding, interference proceeding, or post-grant review 

20 proceeding that is pending during a post-grant review pro21 ceeding, may proceed, including providing for stay, trans22 fer, consolidation, or termination of such proceedings. 


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1 ‘‘§ 322. Effect of decisions rendered in civil action on 

2 future post-grant review proceedings 

3 ‘‘If a final decision has been entered against a party 

4 in a civil action arising in whole or in part under section 

5 1338 of title 28 establishing that the party has not sus6 tained its burden of proving the invalidity of any patent 

7 claim— 

8 ‘‘(1) that party to the civil action and the 

9 privies of that party may not thereafter request a 

10 post-grant review proceeding on such patent claim 

11 on the basis of any grounds, under the provisions of 

12 section 311, which that party or the privies of that 

13 party raised or could have raised in such civil action; 

14 and 

15 ‘‘(2) the Office may not thereafter maintain a 

16 post-grant review proceeding previously requested by 

17 that party or the privies of that party on the basis 

18 of such grounds. 

19 ‘‘§ 323. Effect of final decision on future proceedings 

20 ‘‘(a) IN GENERAL.—If a final decision under section 

21 319 is favorable to the patentability of any original or new 

22 claim of the patent, the cancellation petitioner may not 

23 thereafter, based on any ground which the cancellation pe24 titioner raised during the post-grant review proceeding— 

25 ‘‘(1) request or pursue a reexamination of such 

26 claims; 


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1 ‘‘(2) request or pursue an interference of such 

2 claims; 

3 ‘‘(3) request or pursue a post-grant review pro4 ceeding of such claims; or 

5 ‘‘(4) assert the invalidity of any such claims, in 

6 any civil action arising in whole or in part under sec7 tion 1338 of title 28. 

8 ‘‘(b) EXTENSION OF PROHIBITION.—If the final deci9 sion is the result of a petition for cancellation under sec10 tion 312(b), the prohibition under this section shall extend 

11 to any ground which the cancellation petitioner raised or 

12 could have raised during the post-grant review pro13 ceeding.’’. 

14 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

15 The table of chapters is amended to read as follows: 

‘‘31. Post-grant review proceedings.’’. 

16 SEC. 7. SUBMISSIONS BY THIRD PARTIES AND OTHER 

17 QUALITY ENHANCEMENTS. 

18 (a) PUBLICATION.—Section 122(b)(2) is amended— 

19 (1) by striking subparagraph (B); and 

20 (2) in subparagraph (A)— 

21 (A) by striking ‘‘(A) An application’’ and 

22 inserting ‘‘An application’’; and 

23 (B) by redesignating clauses (i) through 

24 (iv) as subparagraphs (A) through (D), respec25 tively. 


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1 (b) REEXAMINATION.—Subsection 303(a) is amended 

2 to read as follows: 

3 ‘‘(a) Within 3 months following the filing of a request 

4 for reexamination under the provisions of section 302, by 

5 the owner of the patent, the Director shall determine 

6 whether a substantial new question of patentability affect7 ing any claim of the patent concerned is raised by the re8 quest, with or without consideration of other patents or 

9 printed publications. On his own initiative, and at any 

10 time, the Director may determine whether a substantial 

11 new question of patentability is raised by patents and pub12 lications discovered by him, cited under the provisions of 

13 section 301, or cited by any person other than the owner 

14 of the patent under the provisions of section 302 or section 

15 311. The existence of a substantial new question of pat16 entability is not precluded by the fact that a patent or 

17 printed publication was previously cited by or to the Office 

18 or considered by the Office.’’. 

19 (c) PREISSUANCE SUBMISSIONS BY THIRD PAR20 TIES.—Section 122 is amended by adding at the end the 

21 following: 

22 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR23 TIES.— 

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

25 consideration and inclusion in the record of a patent 


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1 application, any patent, published patent application, 

2 or other publication of potential relevance to the ex3 amination of the application, if such submission is 

4 made in writing before the earlier of— 

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

6 section 151 is mailed in the application for pat7 ent; or 

8 ‘‘(B) either— 

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

10 the application for patent is published 

11 under section 122; or 

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

13 under section 132 of any claim by the ex14 aminer during the examination of the ap15 plication for patent, whichever occurs later. 

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

17 under paragraph (1) shall— 

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

19 asserted relevance of each submitted document; 

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

21 Director may prescribe; and 

22 ‘‘(C) include a statement by the submitter 

23 affirming that the submission was made in 

24 compliance with this section.’’. 


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1 (d) EFFECTIVE DATES.—Notwithstanding any other 

2 provision of law, sections 311 through 318 of title 35, 

3 United States Code, as amended by this Act, shall apply 

4 to any patent that issues from an original application filed 

5 on any date. 

6 SEC. 8. VENUE AND JURISDICTION. 

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

8 title 28, United States Code, is amended by striking sub9 section (b) and inserting the following: 

10 ‘‘(b) Any civil action arising under any Act of Con11 gress relating to patents, other than an action for declara12 tory judgment or an action seeking review of a decision 

13 of the Patent Trial and Appeal Board under chapter 13 

14 of title 35, may be brought only— 

15 ‘‘(1) in the judicial district where either party 

16 resides; or 

17 ‘‘(2) in the judicial district where the defendant 

18 has committed acts of infringement and has a reg19 ular and established place of business. 

20 ‘‘(c) Notwithstanding section 1391(c) of this title, for 

21 purposes of venue under subsection (b), a corporation 

22 shall be deemed to reside in the judicial district in which 

23 the corporation has its principal place of business or in 

24 the State in which the corporation is incorporated.’’. 


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1 (b) INTERLOCUTORY APPEALS.—Subsection (c)(2) of 

2 section 1292 of title 28, United States Code, is amended 

3 by adding at the end: 

4 ‘‘(3) of an appeal from an interlocutory order 

5 or decree determining construction of claims in a 

6 civil action for patent infringement under section 

7 271 of title 35. 

8 ‘‘(A) Application for an appeal hereunder 

9 shall be made to the court within 10 days after 

10 entry of the order or decree. 

11 ‘‘(B) Proceedings in the district court shall 

12 be stayed during pendency of the appeal.’’. 

13 SEC. 9. OTHER STATUTORY AND CONFORMING AMEND14 MENTS. 

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

16 Code is amended— 

17 (1) by redesignating paragraphs (8), (9), (10), 

18 (11), (12), (13), (14), and (15) as paragraphs (10), 

19 (11), (12), (13), (14), (15), (16), and (17) respec20 tively; and 

21 (2) by inserting after paragraph (7) the fol22 lowing: 

23 ‘‘(8) On filing a petition for cancellation under 

24 subsection (a) of section 312, a fee established by 


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the Director to recover 1 1 ⁄2 the estimated average cost 

2 to the Office of a post-grant review proceeding. 

3 ‘‘(9) On filing a petition for cancellation under 

4 subsection (b) of section 312, a fee established by 

5 the Director to recover the estimated average cost to 

6 the Office of a post-grant review proceeding.’’. 

7 (b) DEFINITIONS.—Section 100 (as amended by this 

8 Act) is further amended— 

9 (1) in subsection (e), by striking ‘‘or inter 

10 partes reexamination under section 311’’; 

11 (2) by inserting the following: 

12 ‘‘(k) The term ‘cancellation petitioner’ means the real 

13 party in interest requesting cancellation of any claim of 

14 a patent under chapter 31 of this title and the privies of 

15 the real party in interest.’’. 

16 (c) PATENT TRIAL AND APPEAL BOARD.— 

17 (1) Section 6 is amended to read as follows: 

18 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

21 The Director, the Deputy Director, the Commissioner for 

22 Patents, the Commissioner for Trademarks, and the ad23 ministrative patent judges shall constitute the Patent 

24 Trial and Appeal Board. The administrative patent judges 

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1 entific ability who are appointed by the Director. Any ref2 erence in any Federal law, Executive order, rule, regula3 tion, or delegation of authority, or any document of or 

4 pertaining to the Board of Patent Appeals and Inter5 ferences is deemed to refer to the Patent Trial and Appeal 

6 Board. 

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

8 shall, on written appeal of an applicant, review adverse 

9 decisions of examiners upon application for patents; shall, 

10 on written appeal of a patent owner, review adverse deci11 sions of examiners upon patents in reexamination pro12 ceedings under chapter 30; shall determine priority and 

13 patentability of invention in inventor’s rights contests de14 clared under subsection 135(a); and shall preside over 

15 post-grant review proceedings under chapter 31. Each ap16 peal, inventor’s rights contest, and post-grant review pro17 ceeding shall be heard by at least 3 members of the Patent 

18 Trial and Appeal Board, who shall be designated by the 

19 Director. Only the Patent Trial and Appeal Board may 

20 grant rehearings.’’. 

21 (2) Title 35, United States Code, is amended by 

22 striking ‘‘Board of Patent Appeals’’ each place it ap23 pears and inserting in its place ‘‘Patent Trial and 

24 Appeal Board’’. 


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1 (d) AUTHORITY OF PANELS OF ADMINISTRATIVE

2 PATENT JUDGES.—Section 6 (as amended by this section) 

3 is further amended by adding at the end the following: 

4 ‘‘(c) ADDITIONAL RESPONSIBILITIES OF ADMINIS5 TRATIVE PATENT JUDGES.—Panels of administrative pat6 ent judges, once assigned by the Director, shall have the 

7 responsibilities under chapter 32 in connection with post8 grant opposition proceedings.’’. 

9 (e) RULEMAKING AUTHORITY.—Section 3(a) is 

10 amended by adding at the end the following: 

11 ‘‘(5) RULEMAKING AUTHORITY.—In addition to 

12 the authority conferred by other provisions of this 

13 title, the Director may promulgate such rules, regu14 lations, and orders as the Director determines ap15 propriate to carry out the provisions of this title or 

16 any other law applicable to the United States Patent 

17 and Trademark Office or that the Director deter18 mines necessary to govern the operation and organi19 zation of the Office.’’. 

20 (f) REEXAMINATION.— 

21 (1) Section 304 is amended by striking the final 

22 3 sentences. 

23 (2) Section 305 is amended by striking, in the 

24 first sentence, ‘‘and reply’’ and also striking ‘‘have’’ 

25 and inserting ‘‘has’’ in its place. 


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1 (3) Section 315(c) is amended by striking ‘‘or 

2 could have raised’’. 

3 (4) Section 4607 of the Intellectual Property 

4 and Communications Omnibus Reform Act of 1999, 

5 as enacted by section 1000(a)(9) of Public Law 

6 106–113, is repealed. 

7 (g) APPEAL TO THE COURT OF APPEALS FOR THE

8 FEDERAL CIRCUIT.— 

9 (1) IN GENERAL.—Section 141 is amended to 

10 read as follows: 

11 ‘‘§ 141. Appeal to the Court of Appeals for the Federal 

12 Circuit 

13 ‘‘(a) EXAMINATIONS.—An applicant dissatisfied with 

14 the final decision in an appeal to the Patent Trial and 

15 Appeal Board under section 134 may appeal the decision 

16 to the United States Court of Appeals for the Federal Cir17 cuit. By filing such an appeal, the applicant waives his 

18 right to proceed under section 145. 

19 ‘‘(b) REEXAMINATIONS.—A patent owner in any re20 examination proceeding who is dissatisfied with the final 

21 decision in an appeal to the Patent Trial and Appeal 

22 Board under section 134 may appeal the decision to the 

23 United States Court of Appeals for the Federal Circuit. 

24 ‘‘(c) INVENTOR’S RIGHTS CONTEST.—A party to an 

25 inventor’s rights contest dissatisfied with the final decision 


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1 of the Patent Trial and Appeal Board on the interference 

2 may appeal the decision to the United States Court of Ap3 peals for the Federal Circuit. 

4 ‘‘(d) POST-GRANT REVIEW.—A party to a post-grant 

5 review proceeding dissatisfied with the final decision of the 

6 Patent Trial and Appeal Board under section 319 may 

7 appeal the decision only to the United States Court of Ap8 peals for the Federal Circuit. Any decision of the Patent 

9 Trial and Appeal Board under subsection 312(b) or sec10 tion 317 shall be final and nonappealable. A decision by 

11 the Board under section 320 not to issue a final decision 

12 under subsection 319 as a result of settlement shall also 

13 be final and nonappealable.’’. 

14 (2) CERTAIN APPEALS.—Subsection 

15 1295(a)(4)(A) of title 28, United States Code, is 

16 amended to read as follows: 

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

18 the United States Patent and Trademark Office 

19 with respect to patent applications, reexamina20 tions, and inventor’s rights contests, at the in21 stance of an applicant for a patent or any party 

22 to a patent interference, reexamination, or post23 grant review proceeding, and any such appeal 

24 shall waive any right of such applicant or party 


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1 to proceed under section 145 or 146 of title 

2 35;’’. 

3 SEC. 10. EFFECTIVE DATE. 

4 Except as otherwise provided in this Act, the provi5 sions of this Act shall take effect 12 months after the date 

6 of enactment of this Act and shall apply to any patent 

7 issued on or after that effective date. 

Æ 


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