PATENT Act

To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes. 1. Short title; table of contents (a) Short title This Act may be cited as the Protecting American Talent and Entrepreneurship Act of 2015 PATENT Act (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Pleading requirements for patent infringement actions. Sec. 4. Customer-suit exception. Sec. 5. Discovery limits. Sec. 6. Procedures and practices to implement recommendations of the Judicial Conference. Sec. 7. Fees and other expenses. Sec. 8. Requirement of clarity and specificity in demand letters. Sec. 9. Abusive demand letters. Sec. 10. Transparency of patent transfer. Sec. 11. Protection of intellectual property licenses in bankruptcy. Sec. 12. Small business education, outreach, and information access. Sec. 13. Studies on patent transactions, quality, and examination. Sec. 14. Technical corrections to the Leahy-Smith America Invents Act and other improvements. Sec. 15. Effective date. Sec. 16. Severability. 2. Definitions (1) Director The term Director (2) Office The term Office 3. Pleading requirements for patent infringement actions (a) Elimination of Form 18 Not later than 1 month after the date of enactment of this Act, the Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (Complaint for Patent Infringement). (b) Pleading requirements (1) Amendment Chapter 29 section 281 281A. Pleading requirements for patent infringement actions (a) Pleading requirements In a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in a complaint, counterclaim, or cross-claim for patent infringement, except as provided in subsection (c), the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number (or a representative model number) of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality. (5) For each claim identified under paragraph (2), a description of the elements thereof that are alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements. (6) For each claim of indirect infringement, a description of the acts of the alleged infringer that are alleged to contribute to or induce the direct infringement. (b) Dismissal for failure To meet pleading requirements The court shall, on the motion of any party, dismiss any count or counts of the complaint, counterclaim, or cross-claim for patent infringement if the requirements of paragraphs (1) through (6) of subsection (a) are not met with respect to such count or counts. The fact that a party pleads in accordance with subsection (c) shall not be a basis for dismissal if the party nonetheless states a plausible claim for relief sufficient under the Federal Rules of Civil Procedure. (c) Information not accessible If some subset of information required to comply with subsection (a) is not accessible to a party after an inquiry reasonable under the circumstances, consistent with rule 11 of the Federal Rules of Civil Procedure, an allegation requiring that information may be based upon a general description of that information, along with a statement as to why the information is not accessible. (d) Amendment of pleadings Nothing in this provision shall be construed to affect a party's leave to amend pleadings as specified in the Federal Rules of Civil Procedure. Amendments permitted by the court are subject to the pleading requirements set forth in this section. (e) Confidential information A party required to disclose information described under subsection (a) may file information believed to be confidential under seal, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended pleading. (f) Exemption Subsection (a) shall not apply to a civil action that includes a claim for relief arising under section 271(e)(2). 281B. Early disclosure requirements for patent infringement actions (a) Definitions In this section— (1) the term financial interest (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds from the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the patentee, direct or indirect ownership or control by a person of more than 20 percent of the patentee; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company or a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest; (2) the term patentee (3) the term proceeding (4) the term ultimate parent entity (b) Early disclosure requirements Notwithstanding the requirements of section 299B, a patentee shall disclose to the court and each adverse party, not later than 14 days after the date on which the patentee serves or files the pleading subject to the requirements of section 281A— (1) the identity of each— (A) assignee of the patent or patents at issue, and any ultimate parent entity thereof; (B) entity with a right to sublicense to unaffiliated entities or to enforce the patent or patents at issue, and any ultimate parent entity thereof; and (C) entity, other than an entity the ultimate parent of which is disclosed under subparagraph (A) or (B), that the patentee knows to have a financial interest in— (i) the patent or patents at issue; or (ii) the patentee, and any ultimate parent entity thereof; and (2) for each patent that the patentee alleges to be infringed— (A) a list of each complaint, counterclaim, or cross-claim filed by the patentee or an affiliate thereof in the United States during the 3-year period preceding the date of the filing of the action, and any other complaint, counterclaim, or cross-claim filed in the United States during that period of which the patentee has knowledge, that asserts or asserted such patent, including— (i) the caption; (ii) civil action number; (iii) the court where the action was filed; and (iv) if applicable, any court to which the action was transferred; (B) a statement as to whether the patent is subject to an assurance made by the party to a standards development organization to license others under such patent if— (i) the assurance specifically identifies such patent or claims therein; and (ii) the allegation of infringement relates to such standard; and (C) a statement as to whether the Federal Government has imposed specific licensing requirements with respect to such patent. (c) Disclosure of financial interest (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership, the address of the principal place of business, and the name and correspondence address of the registered agent; (B) in the case of a corporation, the name of the corporation, the location of incorporation, and the address of the principal place of business; and (C) for each individual, the name and correspondence address of that individual. (d) Provision of information to the United States Patent and Trademark Office Not later than 1 month after the date on which the disclosures required under subsection (b) are made, the patentee shall provide to the United States Patent and Trademark Office a filing containing the information disclosed pursuant to subsection (b)(1). (e) Confidential information (1) In general A patentee required to disclose information under subsection (b) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. (2) Home address information For purposes of this section, the home address of an individual shall be considered to be confidential information. . (2) Conforming amendment The table of sections for chapter 29 section 281 281A. Pleading requirements for patent infringement actions. 281B. Early disclosure requirements for patent infringement actions. . (c) Effective date The amendments made by this section shall take effect on the date of enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 4. Customer-suit exception (a) In general Chapter 29 299A. Customer stay (a) Definitions In this section— (1) the term covered customer (A) the sale, or offer for sale, of a covered product or covered process without material modification of the product or process in a manner that is alleged to infringe a patent or patents in dispute; or (B) the use by such retailer, the retailer’s end user customer, or an end user of a covered product or covered process without material modification of the product or process in a manner that is alleged to infringe a patent or patents in dispute; (2) the term covered manufacturer (3) the term covered process (4) the term covered product (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute; (5) for purposes of this section, the term end user (6) the term retailer (7) for purposes of the definitions in paragraphs (5) and (6), the terms use sale (b) Motion for stay In a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents (other than an action that includes a cause of action described in section 271(e)), the court shall grant a motion to stay at least the portion of the action against a covered customer that relates to infringement of a patent involving a covered product or covered process if— (1) the covered manufacturer is a party to the action or a separate action in a Federal court of the United States involving the same patent or patents relating to the same covered product or covered process; (2) the covered customer agrees to be bound as to issues determined in an action described in paragraph (1) without a full and fair opportunity to separately litigate any such issue, but only as to those issues for which all other elements of the common law doctrine of issue preclusion are met; and (3) the motion is filed after the first pleading in the action but not later than the later of— (A) 120 days after service of the first pleading or paper in the action that specifically identifies the covered product or covered process as a basis for the alleged infringement of the patent by the covered customer, and specifically identifies how the covered product or covered process is alleged to infringe the patent; or (B) the date on which the first scheduling order in the case is entered. (c) Manufacturer consent in certain cases If the covered manufacturer has been made a party to the action on motion by the covered customer, then a motion under subsection (b) may only be granted if the covered manufacturer and the covered customer agree in writing to the stay. (d) Lift of stay (1) In general A stay entered under this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve major issues in the suit against the covered customer, such as that a covered product or covered process identified in the motion to lift the stay is not a material part of the claimed invention or inventions in the patent or patents in dispute; or (B) the stay unreasonably prejudices or would be manifestly unjust to the party seeking to lift the stay. (2) Separate actions In the case of a stay entered under this section based on the participation of the covered manufacturer in a separate action described in subsection (b)(1), a motion under paragraph (1) may only be granted if the court in such separate action determines that the showing required under paragraph (1) has been made. (e) Waiver of estoppel effect If, following the grant of a motion to stay under this section, the covered manufacturer in an action described in subsection (b)(1)— (1) obtains or consents to entry of a consent judgment involving one or more of the issues that gave rise to the stay; or (2) fails to prosecute to a final, non-appealable judgment a final decision as to one or more of the issues that gave rise to the stay, the court may, upon motion, determine that such consent judgment or unappealed final decision shall not be binding on the covered customer with respect to one or more of the issues that gave rise to the stay based on a showing that such an outcome would unreasonably prejudice or be manifestly unjust to the covered customer in light of the circumstances of the case. (f) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, expand any stay granted pursuant to this section, or grant any motion to intervene, if otherwise permitted by law. . (b) Conforming amendment The table of sections for chapter 29 299A. Customer stay. . 5. Discovery limits (a) Amendment Chapter 29 299B. Discovery in patent infringement action (a) Discovery in patent infringement action (1) In general Except as provided in subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, discovery shall be stayed during the pendency of 1 or more motions described in paragraph (2) if the motion or motions were filed prior to the first responsive pleading. (2) Motions described The motions described in this paragraph are— (A) a motion to dismiss; (B) a motion to transfer venue; and (C) a motion to sever accused infringers. (b) Discretion To expand scope of discovery (1) Resolution of motions A court may allow limited discovery necessary to resolve a motion described in subsection (a) or a motion for preliminary relief properly raised by a party before or during the pendency of a motion described in subsection (a). (2) Additional discovery On motion, a court may allow additional discovery if the court finds that such discovery is necessary to preserve evidence or otherwise prevent specific prejudice to a party. (c) Exclusion from discovery limitation (1) Voluntary exclusion The parties to an action described in subsection (a) may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery under subsection (a). (2) Claims under section 271(e) This section shall not apply to a civil action that includes a claim for relief arising under section 271(e). (d) Rules of construction (1) Timeline for responsive pleadings Nothing in this section shall be construed to alter the time provided by the Federal Rules of Civil Procedure for the filing of responsive pleadings. (2) Exchange of contentions Nothing in this section shall prohibit a court from ordering or local rules from requiring the exchange of contentions regarding infringement, non-infringement, invalidity or other issues, by interrogatories or other written initial disclosures, at an appropriate time determined by the court. . (b) Conforming amendment The table of sections for chapter 29 299B. Discovery in patent infringement action. . (c) Effective date The amendments made by this section shall take effect on the date of enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 6. Procedures and practices to implement recommendations of the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, should develop rules and procedures to implement the discovery proposals described in paragraph (2) to address concerns regarding the asymmetries in discovery burdens and costs that may arise in a civil action arising under any Act of Congress relating to patents. (2) Rules and procedures to be considered The rules and procedures to be developed under paragraph (1) should address each of the following: (A) Discovery of core documentary evidence To what extent each party to the action is entitled to receive core documentary evidence and should be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and to what extent each party to the action may seek noncore documentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties request discovery of electronic communication, how such discovery should be phased to occur relative to the exchange of initial disclosures and core documentary evidence, and appropriate limitations to apply to such discovery. (C) Additional document discovery The manner and extent to which the following should apply: (i) In general Each party to the action may seek any additional document discovery beyond core documentary evidence as permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (iv) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope The manner and extent to which the parties shall discuss and address in the written report filed pursuant to rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case. (3) Scope of documentary evidence In developing rules or procedures under this section, the Judicial Conference should consider which kinds of evidence constitute core documentary evidence (4) Definitions In this subsection the term electronic communication (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, should develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. 7. Fees and other expenses (a) Sense of Congress It is the sense of Congress that, in patent cases, reasonable attorney fees should be paid by a non-prevailing party whose litigation position or conduct is not objectively reasonable. As the Supreme Court wrote in adopting this legal standard in the context of fee shifting under section 1447 of title 28, United States Code, this standard is intended to strike a balance; in patent cases, a more appropriate balance between protecting the right of a patent holder to enforce its patent on the one hand, and deterring abuses in patent litigation and threats thereof on the other. (b) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award In connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, upon motion by a prevailing party, the court shall determine whether the position of the non-prevailing party was objectively reasonable in law and fact, and whether the conduct of the non-prevailing party was objectively reasonable. If the court finds that the position of the non-prevailing party was not objectively reasonable in law or fact or that the conduct of the non-prevailing party was not objectively reasonable, the court shall award reasonable attorney fees to the prevailing party unless special circumstances would make an award unjust. (b) Covenant not To sue A party to a civil action who asserts a claim for relief arising under any Act of Congress relating to patents against another party, and who subsequently unilaterally (i) seeks dismissal of the action without consent of the other party and (ii) extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, may be the subject of a motion for attorney fees under subsection (a) as if it were a non-prevailing party, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to dismiss voluntarily the action without a court order under rule 41 of the Federal Rules of Civil Procedure, or the interests of justice require otherwise. (c) Recovery of award (1) Certification; disclosure of interested parties (A) Initial statement A party defending against a claim of infringement may file, not later than 14 days before a scheduling conference is to be held or a scheduling order is due under rule 16(b) of the Federal Rules of Civil Procedure, a statement that such party holds a good faith belief, based on publicly-available information and any other information known to such party, that the primary business of the party alleging infringement is the assertion and enforcement of patents or the licensing resulting therefrom. (B) Certification Not later than 45 days after being served with an initial statement under subparagraph (A), a party alleging infringement shall file a certification that— (i) establishes and certifies to the court, under oath, that it will have sufficient funds available to satisfy any award of reasonable attorney fees under this section if an award is assessed; (ii) demonstrates that its primary business is not the assertion and enforcement of patents or the licensing resulting therefrom; (iii) identifies interested parties, if any, as defined in paragraph (2) of this subsection; or (iv) states that it has no such interested parties. A party alleging infringement shall have an ongoing obligation to supplement its certification under this subparagraph within 30 days after a material change to the information provided in its certification. (C) Notice to interested party A party that files a certification under subparagraph (B)(iii) shall, prior to filing the certification, provide each identified interested party actual notice in writing by service of notice in any district where the interested party may be found, such that jurisdiction shall be established over each interested party to the action for purposes of enforcing an award of attorney fees under this section, consistent with the Constitution of the United States. The notice shall identify the action, the parties, the patents at issue, and the interest qualifying the party to be an interested party. The notice shall inform the recipient that the recipient may be held accountable under this subsection for any award of attorney fees, or a portion thereof, resulting from the action in the event the party alleging infringement cannot satisfy the full amount of such an award, unless the recipient renounces its interest pursuant to subparagraph (E) or is otherwise exempt from the applicability of this subsection. (D) Accountability for interested parties Any interested parties who are timely served with actual notice pursuant to subparagraph (C) and do not renounce their interests pursuant to subparagraph (E) or are not otherwise exempt from the applicability of this subsection may be held accountable for any fees, or a portion thereof, awarded under this section in the event that the party alleging infringement cannot satisfy the full amount of the award. If a true and correct certification under clause (i) or (ii) of subparagraph (B) is timely filed with the court, interested parties shall not be subject to this subparagraph. (E) Renunciation of interest Any recipient of a notice under subparagraph (C) may submit a statement of renunciation of interest in a binding document with notice to the court and parties in the action not later than 120 days after receipt of the notice under subparagraph (C). The statement shall be required to renounce only such interest as would qualify the recipient as an interested party. (F) Institutions of higher education exception Any institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) (G) Interest of justice exception Any recipient of a notice under subparagraph (C) may intervene in the action for purposes of contesting its identification as an interested party or its liability under this subsection, and a court may exempt any party identified as an interested party from the applicability of this subsection as the interest of justice requires. (2) Interested party In this section, the term interested party (A) means a person who has a substantial financial interest related to the proceeds from any settlement, license, or damages award resulting from the enforcement of the patent in the action by the party alleging infringement; (B) does not include an attorney or law firm providing legal representation in the action if the sole basis for the financial interest of the attorney or law firm in the outcome of the action arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; (C) does not include a person who has assigned all right, title, and interest in a patent, except for passive receipt of income, to an entity described in paragraph (1)(F), or who has a right to receive any portion of such passive income; and (D) does not include a person who would be an interested party under subparagraph (A) but whose financial interest is based solely on an equity or security interest established when the party alleging infringement’s primary business was not the assertion and enforcement of patents or the licensing resulting therefrom. (d) Claims under section 271( e (1) Applicability Subsections (a), (b), and (c) shall not apply to a civil action that includes a claim for relief arising under section 271(e). (2) Award in certain claims under section 271(e) In a civil action that includes a claim for relief arising under section 271(e), the court may in exceptional cases award reasonable attorney fees to the prevailing party. . (c) Conforming amendment and amendment (1) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 285. Fees and other expenses. . (2) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). (d) Effective date The amendments made by this section shall take effect on the date of enactment of this Act and shall apply to any action filed on or after such date. 8. Requirement of clarity and specificity in demand letters (a) In general Chapter 29 299C. Pre-suit written notice (a) Applicability Subsection (b) shall not apply— (1) to written communication between parties— (A) regarding existing licensing agreements; (B) as part of an ongoing licensing negotiation, provided that the initial written notice complied with the requirements of subsection (b) of this section; or (C) sent after the initial written notice, provided that the initial written notice complied with the requirements of subsection (b) of this section; or (2) if the court determines it is in the interest of justice to waive the requirements of subsection (b). (b) Written notification requirements (1) In general In a civil action alleging infringement of a patent in which the plaintiff has provided written notice of the accusation of infringement to the party accused of infringement prior to filing the action, the initial written notice shall contain the information required under paragraph (2) or be subject to paragraph (3). (2) Required information provided in initial written notice The initial written notice described in paragraph (1) shall contain, at a minimum— (A) an identification of— (i) each patent believed to be infringed, including the patent number; and (ii) at least one claim of each patent that is believed to be infringed; (B) an identification of each product, process, apparatus, or chemical composition, including any manufacturer thereof, that is believed to infringe one or more claims of each patent under subparagraph (A); (C) a clear and detailed description of the reasons why the plaintiff believes each patent identified under subparagraph (A) is infringed; (D) notice to the intended recipient that the intended recipient may have the right to a stay of any suit in accordance with section 299A; (E) the identity of any person with the right to enforce each patent under subparagraph (A); and (F) if compensation is proposed, a short and plain statement as to how that proposed compensation was determined. (3) Additional time to respond If the initial written notice provided to the defendant prior to the filing of the civil action did not contain the information required by paragraph (2), the defendant’s time to respond to the complaint shall be extended by an additional 30 days. . (b) Conforming amendment The table of sections for chapter 29 299C. Pre-suit written notice. . (c) Willful infringement Section 284 of title 35, United States Code, is amended— (1) in the first undesignated paragraph, by striking Upon finding (a) In general (2) in the second undesignated paragraph, by striking When the damages (b) Assessment by court; treble damages (3) by inserting after subsection (b), as designated by subparagraph (B), the following: (c) Willful infringement A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification complies with the standards set out in section 299C(b)(2). ; and (4) in the last undesignated paragraph, by striking The court (d) Expert testimony (d) Effective date The amendments made by this section shall take effect on the date that is 1 year after the date of enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 9. Abusive demand letters (a) Bad-Faith demand letters Chapter 29 299D. Bad-faith demand letters (a) Definition In this section, the term affiliated person (b) Civil penalties for certain unfair or deceptive acts or practices in connection with abusive demand letters A person who commits an unfair or deceptive act or practice within the meaning of section 5(a)(1) of the Federal Trade Commission Act ( 15 U.S.C. 45(a)(1) 15 U.S.C. 57a(a)(1)(B) (1) (A) the communications falsely— (i) represent that administrative or judicial relief has been sought against the recipient or others; or (ii) threaten litigation if compensation is not paid, the infringement issue is not otherwise resolved, or the communication is not responded to; and (B) there is a pattern of false statements or threats described in subparagraph (A) having been made without litigation or other relief then having been pursued; (2) the assertions contained in the communications lack a reasonable basis in fact or law, because— (A) the person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipients or any affiliated persons; (B) the communications seek compensation on account of activities undertaken after the patent has expired; (C) the communications seek compensation for a patent that has been held to be invalid or unenforceable in a final judicial or administrative proceeding that is unappealable or for which any opportunity for appeal is no longer available; (D) the communications seek compensation for activities by the recipient that the sender knows do not infringe the patent because such activities are authorized by the patentee; (E) the communications falsely represent that an investigation of the recipient’s alleged infringement has occurred; or (F) the communications falsely state that litigation has been filed against, or a license has been paid by persons similarly situated to the recipient; or (3) the content of the written communications is likely to materially mislead a reasonable recipient because the content fails to include facts reasonably necessary to inform the recipient— (A) of the identity of the person asserting a right to license the patent to, or enforce the patent against, the intended recipient or any affiliated person; (B) of the patent issued by the United States Patent and Trademark Office alleged to have been infringed; and (C) if infringement or the need to pay compensation for a license is alleged, of an identification of at least one product, service, or other activity of the recipient that is alleged to infringe the identified patent or patents and, unless the information is not readily accessible, an explanation of the basis for such allegation. (c) Enforcement by Federal Trade Commission (1) Powers of Commission The Federal Trade Commission shall enforce this section in the same manner, by the same means, and with the same jurisdiction, powers, and duties as though all applicable terms and provisions of the Federal Trade Commission Act ( 15 U.S.C. 41 et seq. (2) Privileges and immunities Any person who engages in an act or practice described in subsection (b) shall be subject to the penalties and entitled to the privileges and immunities provided in the Federal Trade Commission Act ( 15 U.S.C. 41 et seq. . (b) Technical and conforming amendment The table of sections for chapter 29 299D. Bad-faith demand letters. . 10. Transparency of patent transfer (a) Patent and Trademark Office proceedings (1) In general Chapter 26 section 261 261A. Disclosure of information relating to patent ownership (a) Definitions In this section: (1) Period of noncompliance The term period of noncompliance (2) Ultimate patent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity (B) Modification of definition The Director may by regulation modify the definition of the term ultimate parent entity (b) Requirement To disclose assignment An assignment of all substantial rights in an issued patent shall be recorded in the Patent and Trademark Office— (1) not later than the date on which the patent is issued; and (2) when any subsequent assignment is made that results in a change to the ultimate parent entity— (A) not later than 3 months after the date on which such assignment is made; or (B) in the case of an assignment made as part of a corporate acquisition that meets the reporting thresholds under section 7A(a)(2) of the Clayton Act ( 15 U.S.C. 18a(a)(2) (c) Disclosure requirements A disclosure under subsection (b) shall include the name of the assignee and the ultimate parent entity of the assignee. (d) Failure To comply In a civil action in which a party asserts a claim for infringement of a patent, if there was a failure to comply with subsection (b) for the patent— (1) the party asserting infringement of the patent may not recover increased damages under section 284 or attorney fees under section 285 with respect to infringing activities taking place during any period of noncompliance, unless the denial of such damages or fees would be manifestly unjust; and (2) the court shall award to a prevailing accused infringer reasonable attorney fees and expenses incurred in discovering the identity of any undisclosed entity required to be disclosed under subsection (b), unless such sanctions would be manifestly unjust. . (2) Applicability The amendment made by paragraph (1) shall apply to any patent for which a notice of allowance is issued on or after the date of enactment of this Act. (3) Conforming amendment The table of sections for chapter 26 261A. Disclosure of information relating to patent ownership. . (b) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering section 261A of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by the amendments made by this section and section 3(b) of this Act, and to ensure the timely disclosure of such information to the public. 11. Protection of intellectual property licenses in bankruptcy (a) In general Section 1522 of title 11, United States Code, is amended by adding at the end the following: (e) Section 365(n) shall apply to cases under this chapter. If the foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract shall be entitled to make the election and exercise the rights described in section 365(n). . (b) Trademarks (1) Amendment Section 101(35A) of title 11, United States Code, is amended— (A) in subparagraph (E), by striking or (B) in subparagraph (F), by adding or (C) by adding after subparagraph (F) the following new subparagraph: (G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 15 U.S.C. 1127 . (2) Conforming amendment Section 365(n)(2) of title 11, United States Code, is amended— (A) in subparagraph (B)— (i) by striking royalty payments royalty or other payments (ii) by striking and (B) in subparagraph (C), by striking the period at the end of clause (ii) and inserting ; and (C) by adding at the end the following new subparagraph: (D) in the case of a trademark, service mark, or trade name, the licensee shall not be relieved of any of its obligations to maintain the quality of the products and services offered under or in connection with the licensed trademark, service mark or trade name, and the trustee shall retain the right to oversee and enforce quality control for said products and/or services. . (c) Effective date The amendments made by this section shall take effect on the date of enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment. 12. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small business patent ombudsman The existing small business patent outreach programs of the Office, in consultation with the relevant offices at the Small Business Administration and the Minority Business Development Agency, shall provide education and awareness regarding resources available for those persons responding to allegations of patent infringement. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include— (A) information disclosed under section 261A of title 35, United States Code, as added by section 10, and section 281B(b) of title 35, United States Code, as added by section 3; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 13. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Report on study Not later than 18 months after the date of enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on Patent Small Claims procedures (1) Study Required (A) In general The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims procedures in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349 (B) Contents of study The study under subparagraph (A) shall examine— (i) the necessary criteria for using small claims procedures; (ii) the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and (iii) the steps that would be taken to ensure that the procedures used in the pilot program are not misused for abusive patent litigation. (2) Report on study Not later than 1 year after the date of enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1). (c) Study on business method patent quality (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on the volume and nature of litigation involving business method patents. (2) Contents of study The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant. (3) Report to congress Not later than 1 year after the date of enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study. 14. Technical corrections to the Leahy-Smith America Invents Act and other improvements (a) Section 325(e)(2) of title 35, United States Code, is amended by striking or reasonably could have raised (b) PTO patent reviews (1) Clarification (A) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 section 102(a) subsection (a) or (e) of section 102 (B) Effective date The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (2) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 (c) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another the inventor or a joint inventor or another (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (2) Inventor’s oath or declaration (A) Requirement to execute Section 115(a) of title 35, United States Code, is amended in the second sentence by striking shall execute may be required by the Director to execute (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named that names the inventor or a joint inventor (B) Benefit of earlier filing date in the united states Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor names the inventor or a joint inventor (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor or a joint inventor (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 (6) Time limit for commencing misconduct proceedings (A) Amendment The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year 18 months (B) Effective date The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. (7) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 the petition under section 311 (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 the petition under section 321 (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (d) Management of the United States Patent and Trademark Office (1) In general Section 3(b)(1) of title 35, United States Code, is amended in the first sentence— (A) by striking be vested with the authority to act in the capacity of the serve as Acting, (B) by inserting before the period or in the event of a vacancy in the office of the Director. (2) Effective date The amendments made by paragraph (1) shall take effect on the date of enactment of this Act and shall apply with respect to appointments and vacancies occurring before, on, or after the date of enactment of this Act. 15. Effective date Except as otherwise provided in this Act, the provisions of this Act shall take effect on the date of enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date. 16. Severability If any provision of this Act, or an amendment made by this Act, or the application of such provision or amendment to any person or circumstance, is held to be invalid, the remainder of this Act, or an amendment made by this Act, or the application of such provision to other persons or circumstances, shall not be affected. 1. Short title; table of contents (a) Short title This Act may be cited as the Protecting American Talent and Entrepreneurship Act of 2015 PATENT Act (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Pleading requirements for patent infringement actions. Sec. 4. Customer-suit exception. Sec. 5. Discovery limits. Sec. 6. Procedures and practices to implement recommendations of the Judicial Conference. Sec. 7. Fees and other expenses. Sec. 8. Requirement of clarity and specificity in demand letters. Sec. 9. Abusive demand letters. Sec. 10. Transparency of patent transfer. Sec. 11. Inter partes review and post-grant proceedings. Sec. 12. Protection of intellectual property licenses in bankruptcy. Sec. 13. Small business education, outreach, and information access. Sec. 14. Studies on patent transactions, quality, and examination. Sec. 15. Technical corrections to the Leahy-Smith America Invents Act and other improvements. Sec. 16. Institutions of higher education and nonprofit research. Sec. 17. Effective date. Sec. 18. Severability. 2. Definitions In this Act: (1) Director The term Director (2) Office The term Office 3. Pleading requirements for patent infringement actions (a) Elimination of Form 18 Not later than 1 month after the date of enactment of this Act, the Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (Complaint for Patent Infringement). (b) Pleading requirements (1) Amendment Chapter 29 section 281 281A. Pleading requirements for patent infringement actions (a) Pleading requirements In a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in a complaint, counterclaim, or cross-claim for patent infringement, except as provided in subsection (c), the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number (or a representative model number) of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality. (5) For each claim identified under paragraph (2), a description of the elements thereof that are alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements. (6) For each claim of indirect infringement, a description of the acts of the alleged infringer that are alleged to contribute to or induce the direct infringement. (b) Dismissal for failure To meet pleading requirements The court shall, on the motion of any party, dismiss any count or counts of the complaint, counterclaim, or cross-claim for patent infringement if the requirements of paragraphs (1) through (6) of subsection (a) are not met with respect to such count or counts. The fact that a party pleads in accordance with subsection (c) shall not be a basis for dismissal if the party nonetheless states a plausible claim for relief sufficient under the Federal Rules of Civil Procedure. (c) Information not accessible If some subset of information required to comply with subsection (a) is not accessible to a party after an inquiry reasonable under the circumstances, consistent with rule 11 of the Federal Rules of Civil Procedure, an allegation requiring that information may be based upon a general description of that information, along with a statement as to why the information is not accessible. (d) Amendment of pleadings Nothing in this provision shall be construed to affect a party's leave to amend pleadings as specified in the Federal Rules of Civil Procedure. Amendments permitted by the court are subject to the pleading requirements set forth in this section. (e) Confidential information A party required to disclose information described under subsection (a) may file information believed to be confidential under seal, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended pleading. (f) Exemption Subsection (a) shall not apply to a civil action that includes a claim for relief arising under section 271(e). 281B. Early disclosure requirements for patent infringement actions (a) Definitions In this section— (1) the term financial interest (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds from the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the patentee, direct or indirect ownership or control by a person of more than 20 percent of the patentee; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company or a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest; (2) the term patentee (3) the term proceeding (4) the term ultimate parent entity (b) Early disclosure requirements Notwithstanding the requirements of section 299B, a patentee shall disclose to the court and each adverse party, not later than 14 days after the date on which the patentee serves or files the pleading subject to the requirements of section 281A— (1) the identity of each— (A) assignee of the patent or patents at issue, and any ultimate parent entity thereof; (B) entity with a right to sublicense to unaffiliated entities or to enforce the patent or patents at issue, and any ultimate parent entity thereof; and (C) entity, other than an entity the ultimate parent of which is disclosed under subparagraph (A) or (B), that the patentee knows to have a financial interest in— (i) the patent or patents at issue; or (ii) the patentee, and any ultimate parent entity thereof; and (2) for each patent that the patentee alleges to be infringed— (A) a list of each complaint, counterclaim, or cross-claim filed by the patentee or an affiliate thereof in the United States during the 3-year period preceding the date of the filing of the action, and any other complaint, counterclaim, or cross-claim filed in the United States during that period of which the patentee has knowledge, that asserts or asserted such patent, including— (i) the caption; (ii) the civil action number; (iii) the court where the action was filed; and (iv) if applicable, any court to which the action was transferred; (B) a statement as to whether the patent is subject to an assurance made by the party to a standards development organization to license others under such patent if— (i) the assurance specifically identifies such patent or claims therein; and (ii) the allegation of infringement relates to such standard; and (C) a statement as to whether the Federal Government has imposed specific licensing requirements with respect to such patent. (c) Disclosure of financial interest (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership, the address of the principal place of business, and the name and correspondence address of the registered agent; (B) in the case of a corporation, the name of the corporation, the location of incorporation, and the address of the principal place of business; and (C) for each individual, the name and correspondence address of that individual. (d) Provision of information to the United States Patent and Trademark Office Not later than 1 month after the date on which the disclosures required under subsection (b) are made, the patentee shall provide to the United States Patent and Trademark Office a filing containing the information disclosed pursuant to subsection (b)(1). (e) Confidential information (1) In general A patentee required to disclose information under subsection (b) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. (2) Home address information For purposes of this section, the home address of an individual shall be considered to be confidential information. . (2) Conforming amendment The table of sections for chapter 29 section 281 281A. Pleading requirements for patent infringement actions. 281B. Early disclosure requirements for patent infringement actions. . 4. Customer-suit exception (a) In general Chapter 29 299A. Customer stay (a) Definitions In this section— (1) the term covered customer (A) the sale, or offer for sale, of a covered product or covered process without material modification of the product or process in a manner that is alleged to infringe a patent or patents in dispute; or (B) the use by such retailer, the retailer’s end user customer, or an end user of a covered product or covered process without material modification of the product or process in a manner that is alleged to infringe a patent or patents in dispute; (2) the term covered manufacturer (3) the term covered process (4) the term covered product (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute; (5) for purposes of this section, the term end user (6) the term retailer (7) for purposes of the definitions in paragraphs (5) and (6), the terms use sale (b) Motion for stay In a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents (other than an action that includes a cause of action described in section 271(e)), the court shall grant a motion to stay at least the portion of the action against a covered customer that relates to infringement of a patent involving a covered product or covered process if— (1) the covered manufacturer is a party to the action or a separate action in a Federal court of the United States involving the same patent or patents relating to the same covered product or covered process; (2) the covered customer agrees to be bound as to issues determined in an action described in paragraph (1) without a full and fair opportunity to separately litigate any such issue, but only as to those issues for which all other elements of the common law doctrine of issue preclusion are met; and (3) the motion is filed after the first pleading in the action but not later than the later of— (A) 90 days after service of the first pleading or paper in the action that specifically identifies the covered product or covered process as a basis for the alleged infringement of the patent by the covered customer, and specifically identifies how the covered product or covered process is alleged to infringe the patent; or (B) the date on which the first scheduling order in the case is entered. (c) Manufacturer consent in certain cases If the covered manufacturer has been made a party to the action on motion by the covered customer, then a motion under subsection (b) may only be granted if the covered manufacturer and the covered customer agree in writing to the stay. (d) Lift of stay (1) In general A stay entered under this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve major issues in the suit against the covered customer, such as that a covered product or covered process identified in the motion to lift the stay is not a material part of the claimed invention or inventions in the patent or patents in dispute; or (B) the stay unreasonably prejudices or would be manifestly unjust to the party seeking to lift the stay. (2) Separate actions In the case of a stay entered under this section based on the participation of the covered manufacturer in a separate action described in subsection (b)(1), a motion under paragraph (1) may only be granted if the court in such separate action determines that the showing required under paragraph (1) has been made. (e) Waiver of estoppel effect If, following the grant of a motion to stay under this section, the covered manufacturer in an action described in subsection (b)(1)— (1) obtains or consents to entry of a consent judgment involving one or more of the issues that gave rise to the stay; or (2) fails to prosecute to a final, non-appealable judgment a final decision as to one or more of the issues that gave rise to the stay, the court may, upon motion, determine that such consent judgment or unappealed final decision shall not be binding on the covered customer with respect to one or more of the issues that gave rise to the stay based on a showing that such an outcome would unreasonably prejudice or be manifestly unjust to the covered customer in light of the circumstances of the case. (f) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, expand any stay granted pursuant to this section, or grant any motion to intervene, if otherwise permitted by law. . (b) Conforming amendment The table of sections for chapter 29 299A. Customer stay. . 5. Discovery limits (a) Amendment Chapter 29 299B. Discovery in patent infringement action (a) Discovery in patent infringement action (1) In general Except as provided in subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, discovery shall be stayed during the pendency of 1 or more motions described in paragraph (2) if the motion or motions were filed prior to the first responsive pleading. (2) Motions described The motions described in this paragraph are— (A) a motion to dismiss; (B) a motion to transfer venue; and (C) a motion to sever accused infringers. (b) Discretion To expand scope of discovery (1) Resolution of motions A court may allow limited discovery necessary to resolve a motion described in subsection (a) or a motion for preliminary relief properly raised by a party before or during the pendency of a motion described in subsection (a). (2) Additional discovery On motion, a court may allow additional discovery if the court finds that such discovery is necessary to preserve evidence or otherwise prevent specific prejudice to a party. (c) Exclusion from discovery limitation (1) Voluntary exclusion The parties to an action described in subsection (a) may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery under subsection (a). (2) Claims under section 271(e) This section shall not apply to a civil action that includes a claim for relief arising under section 271(e). (d) Rules of construction (1) Timeline for responsive pleadings Nothing in this section shall be construed to alter the time provided by the Federal Rules of Civil Procedure for the filing of responsive pleadings. (2) Exchange of contentions Nothing in this section shall prohibit a court from ordering, or local rules from requiring, the exchange of contentions regarding infringement, non-infringement, invalidity, or other issues, by interrogatories or other written initial disclosures, at an appropriate time determined by the court. . (b) Conforming amendment The table of sections for chapter 29 299B. Discovery in patent infringement action. . 6. Procedures and practices to implement recommendations of the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, should develop rules and procedures to implement the discovery proposals described in paragraph (2) to address concerns regarding the asymmetries in discovery burdens and costs that may arise in a civil action arising under any Act of Congress relating to patents. (2) Rules and procedures to be considered The rules and procedures to be developed under paragraph (1) should address each of the following: (A) Discovery of core documentary evidence To what extent each party to the action is entitled to receive core documentary evidence and should be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and to what extent each party to the action may seek noncore documentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties request discovery of electronic communication, how such discovery should be phased to occur relative to the exchange of initial disclosures and core documentary evidence, and appropriate limitations to apply to such discovery. (C) Additional document discovery The manner and extent to which the following should apply: (i) In general Each party to the action may seek any additional document discovery beyond core documentary evidence as permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (iv) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope The manner and extent to which the parties shall discuss and address in the written report filed pursuant to rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case. (3) Scope of documentary evidence In developing rules or procedures under this section, the Judicial Conference should consider which kinds of evidence constitute core documentary evidence (4) Definitions In this subsection, the term electronic communication (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, should develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. 7. Fees and other expenses (a) Sense of Congress It is the sense of Congress that, in patent cases, reasonable attorney fees should be paid by a non-prevailing party whose litigation position or conduct is not objectively reasonable. As the Supreme Court wrote in adopting this legal standard in the context of fee shifting under section 1447 of title 28, United States Code, this standard is intended to strike a balance; in patent cases, a more appropriate balance between protecting the right of a patent holder to enforce its patent on the one hand, and deterring abuses in patent litigation and threats thereof on the other. (b) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award In connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, upon motion by a prevailing party, the court shall determine whether the position of the non-prevailing party was objectively reasonable in law and fact, and whether the conduct of the non-prevailing party was objectively reasonable. If the court finds that the position of the non-prevailing party was not objectively reasonable in law or fact or that the conduct of the non-prevailing party was not objectively reasonable, the court shall award reasonable attorney fees to the prevailing party unless special circumstances, such as undue economic hardship to a named inventor or an institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) (b) Covenant not To sue A party to a civil action who asserts a claim for relief arising under any Act of Congress relating to patents against another party, and who subsequently unilaterally (i) seeks dismissal of the action without consent of the other party and (ii) extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, may be the subject of a motion for attorney fees under subsection (a) as if it were a non-prevailing party, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to dismiss voluntarily the action without a court order under rule 41 of the Federal Rules of Civil Procedure, or the interests of justice require otherwise. (c) Recovery of award (1) Certification; disclosure of interested parties (A) Initial statement A party defending against a claim of infringement may file, not later than 14 days before a scheduling conference is to be held or a scheduling order is due under rule 16(b) of the Federal Rules of Civil Procedure, a statement that such party holds a good faith belief, based on publicly-available information and any other information known to such party, that the primary business of the party alleging infringement is the assertion and enforcement of patents or the licensing resulting therefrom. (B) Certification Not later than 45 days after being served with an initial statement under subparagraph (A), a party alleging infringement shall file a certification that— (i) establishes and certifies to the court, under oath, that it will have sufficient funds available to satisfy any award of reasonable attorney fees under this section if an award is assessed; (ii) demonstrates that its primary business is not the assertion and enforcement of patents or the licensing resulting therefrom; (iii) identifies interested parties, if any, as defined in paragraph (2) of this subsection; or (iv) states that it has no such interested parties. A party alleging infringement shall have an ongoing obligation to supplement its certification under this subparagraph within 30 days after a material change to the information provided in its certification. (C) Notice to interested party A party that files a certification under subparagraph (B)(iii) shall, prior to filing the certification, provide each identified interested party actual notice in writing by service of notice in any district where the interested party may be found, such that jurisdiction shall be established over each interested party to the action for purposes of enforcing an award of attorney fees under this section, consistent with the Constitution of the United States. The notice shall identify the action, the parties, the patents at issue, and the interest qualifying the party to be an interested party. The notice shall inform the recipient that the recipient may be held accountable under this subsection for any award of attorney fees, or a portion thereof, resulting from the action in the event the party alleging infringement cannot satisfy the full amount of such an award, unless the recipient renounces its interest pursuant to subparagraph (E) or is otherwise exempt from the applicability of this subsection. (D) Accountability for interested parties Any interested parties who are timely served with actual notice pursuant to subparagraph (C) and do not renounce their interests pursuant to subparagraph (E) or are not otherwise exempt from the applicability of this subsection may be held accountable for any fees, or a portion thereof, awarded under this section in the event that the party alleging infringement cannot satisfy the full amount of the award. If a true and correct certification under clause (i) or (ii) of subparagraph (B) is timely filed with the court, interested parties shall not be subject to this subparagraph. (E) Renunciation of interest Any recipient of a notice under subparagraph (C) may submit a statement of renunciation of interest in a binding document with notice to the court and parties in the action not later than 90 days after receipt of the notice under subparagraph (C). The statement shall be required to renounce only such interest as would qualify the recipient as an interested party. (F) Institutions of higher education exception Any institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) (G) Interest of justice exception Any recipient of a notice under subparagraph (C) may intervene in the action for purposes of contesting its identification as an interested party or its liability under this subsection, and a court may exempt any party identified as an interested party from the applicability of this subsection as the interest of justice requires. (2) Interested party In this section, the term interested party (A) means a person who has a substantial financial interest related to the proceeds from any settlement, license, or damages award resulting from the enforcement of the patent in the action by the party alleging infringement; (B) does not include an attorney or law firm providing legal representation in the action if the sole basis for the financial interest of the attorney or law firm in the outcome of the action arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; (C) does not include a person who has assigned all right, title, and interest in a patent, except for passive receipt of income, to an entity described in paragraph (1)(F), or who has a right to receive any portion of such passive income; (D) does not include a person who would be an interested party under subparagraph (A) but whose financial interest is based solely on an equity or security interest established when the party alleging infringement’s primary business was not the assertion and enforcement of patents or the licensing resulting therefrom; and (E) does not include a depository institution as defined in section 19(b)(1)(A) of the Federal Reserve Act ( 12 U.S.C. 461(b)(1)(A) (d) Claims under section 271( e (1) Applicability Subsections (a), (b), and (c) shall not apply to a civil action that includes a claim for relief arising under section 271(e). (2) Award in certain claims under section 271(e) In a civil action that includes a claim for relief arising under section 271(e), the court may in exceptional cases award reasonable attorney fees to the prevailing party. . (c) Conforming amendment and amendment (1) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 285. Fees and other expenses. . (2) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). 8. Requirement of clarity and specificity in demand letters (a) In general Chapter 29 299C. Pre-suit written notice (a) Applicability Subsection (b) shall not apply— (1) to written communication between parties— (A) regarding existing licensing agreements; (B) as part of an ongoing licensing negotiation, provided that the initial written notice complied with the requirements of subsection (b) of this section; or (C) sent after the initial written notice, provided that the initial written notice complied with the requirements of subsection (b) of this section; or (2) if the court determines it is in the interest of justice to waive the requirements of subsection (b). (b) Written notification requirements (1) In general In a civil action alleging infringement of a patent in which the plaintiff has provided written notice of the accusation of infringement to the party accused of infringement prior to filing the action, the initial written notice shall be subject to paragraph (4) if it does not contain the information required under paragraph (2) or if it contains a specific monetary amount described in paragraph (3). (2) Required information provided in initial written notice The initial written notice described in paragraph (1) shall contain, at a minimum— (A) an identification of— (i) each patent believed to be infringed, including the patent number; and (ii) at least one claim of each patent that is believed to be infringed; (B) an identification of each product, process, apparatus, or chemical composition, including any manufacturer thereof, that is believed to infringe one or more claims of each patent under subparagraph (A); (C) a clear and detailed description of the reasons why the plaintiff believes each patent identified under subparagraph (A) is infringed; (D) notice to the intended recipient that the intended recipient may have the right to a stay of any suit in accordance with section 299A; and (E) the identity of any person with the right to enforce each patent under subparagraph (A). (3) Specific monetary amounts in demand letters Except with the consent of the intended recipient, the initial written notice described in paragraph (1) is prohibited from containing— (A) a request for, demand for, or offer to accept a specific monetary amount in exchange for a license, settlement, or similar agreement to resolve allegations of patent infringement; or (B) a specific monetary amount demanded based on the cost of legal defense in a lawsuit concerning any asserted claim or claims. (4) Additional time to respond If the initial written notice provided to the defendant prior to the filing of the civil action did not contain the information required by paragraph (2), or contained a statement prohibited under paragraph (3), the defendant’s time to respond to the complaint shall be extended by an additional 30 days. . (b) Conforming amendment The table of sections for chapter 29 299C. Pre-suit written notice. . (c) Willful infringement Section 284 of title 35, United States Code, is amended— (1) in the first undesignated paragraph, by striking Upon finding (a) In general (2) in the second undesignated paragraph, by striking When the damages (b) Assessment by court; treble damages (3) by inserting after subsection (b), as designated by paragraph (2), the following: (c) Willful infringement A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification complies with the standards set out in paragraphs (2) and (3) of section 299C(b). ; and (4) in the last undesignated paragraph, by striking The court (d) Expert testimony (d) Effective date The amendments made by this section shall take effect on the date that is 1 year after the date of enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 9. Abusive demand letters (a) Bad-Faith demand letters Chapter 29 299D. Bad-faith demand letters (a) Definition In this section, the term affiliated person (b) Civil penalties for certain unfair or deceptive acts or practices in connection with abusive demand letters An unfair or deceptive act or practice within the meaning of section 5(a)(1) of the Federal Trade Commission Act ( 15 U.S.C. 45(a)(1) 15 U.S.C. 57a(a)(1)(B) (1) (A) the communications falsely— (i) represent that administrative or judicial relief has been sought against the recipient or others; or (ii) threaten litigation if compensation is not paid, the infringement issue is not otherwise resolved, or the communication is not responded to; and (B) there is a pattern of false representations or threats described in subparagraph (A) having been made without litigation or other relief then having been pursued; (2) the assertions contained in the communications lack a reasonable basis in fact or law, because— (A) the person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipients or any affiliated persons; (B) the communications seek compensation on account of activities undertaken after the patent has expired; (C) the communications seek compensation for a patent that has been held to be invalid or unenforceable in a final judicial or administrative proceeding that is unappealable or for which any opportunity for appeal is no longer available; (D) the communications seek compensation for activities by the recipient that the sender knows do not infringe the patent because such activities are authorized by the patentee; (E) the communications falsely represent that an investigation of the recipient’s alleged infringement has occurred; or (F) the communications falsely represent that litigation has been filed against, or a license has been paid by, persons similarly situated to the recipient; or (3) the content of the written communications is likely to materially mislead a reasonable recipient because the content fails to include facts reasonably necessary to inform the recipient— (A) of the identity of the person asserting a right to license the patent to, or enforce the patent against, the intended recipient or any affiliated person; (B) of the patent issued by the United States Patent and Trademark Office alleged to have been infringed; and (C) if infringement or the need to pay compensation for a license is alleged, of an identification of at least one product, service, or other activity of the recipient that is alleged to infringe the identified patent or patents and, unless the information is not readily accessible, an explanation of the basis for such allegation. (c) Enforcement by Federal Trade Commission (1) Powers of Commission The Federal Trade Commission shall enforce this section in the same manner, by the same means, and with the same jurisdiction, powers, and duties as though all applicable terms and provisions of the Federal Trade Commission Act ( 15 U.S.C. 41 et seq. (2) Privileges and immunities Any person who engages in an act or practice described in subsection (b) shall be subject to the penalties and entitled to the privileges and immunities provided in the Federal Trade Commission Act ( 15 U.S.C. 41 et seq. (d) Authority preserved Nothing in this section shall be construed to— (1) limit, modify, or expand the authority of the Federal Trade Commission under any other provision of law; or (2) alter any defense currently available under the Federal Trade Commission Act ( 15 U.S.C. 41 et seq. . (b) Technical and conforming amendment The table of sections for chapter 29 299D. Bad-faith demand letters. . 10. Transparency of patent transfer (a) Patent and Trademark Office proceedings (1) In general Chapter 26 section 261 261A. Disclosure of information relating to patent ownership (a) Definitions In this section: (1) Period of noncompliance The term period of noncompliance (2) Ultimate parent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity (B) Modification of definition The Director may by regulation modify the definition of the term ultimate parent entity (b) Requirement To disclose assignment An assignment of all substantial rights in an issued patent shall be recorded in the Patent and Trademark Office— (1) not later than the date on which the patent is issued; and (2) when any subsequent assignment is made that results in a change to the ultimate parent entity— (A) not later than 3 months after the date on which such assignment is made; or (B) in the case of an assignment made as part of a corporate acquisition that meets the reporting thresholds under section 7A(a)(2) of the Clayton Act ( 15 U.S.C. 18a(a)(2) (c) Disclosure requirements A disclosure under subsection (b) shall include the name of the assignee and the ultimate parent entity of the assignee. (d) Failure To comply In a civil action in which a party asserts a claim for infringement of a patent, if there was a failure to comply with subsection (b) for the patent— (1) the party asserting infringement of the patent may not recover increased damages under section 284 or attorney fees under section 285 with respect to infringing activities taking place during any period of noncompliance, unless the denial of such damages or fees would be manifestly unjust; and (2) the court shall award to a prevailing accused infringer reasonable attorney fees and expenses incurred in discovering the identity of any undisclosed entity required to be disclosed under subsection (b), unless such sanctions would be manifestly unjust. . (2) Applicability The amendment made by paragraph (1) shall apply to any patent for which a notice of allowance is issued on or after the date of enactment of this Act. (3) Conforming amendment The table of sections for chapter 26 261A. Disclosure of information relating to patent ownership. . (b) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering section 261A of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by the amendments made by this section and section 3(b) of this Act, and to ensure the timely disclosure of such information to the public. 11. Inter partes review and post-grant proceedings (a) Amendments to chapter 31 Chapter 31 (1) in section 313— (A) by striking If an (a) In general (B) by adding at the end the following: (b) Supporting evidence A preliminary response filed under subsection (a) may be supported by affidavits or declarations of supporting evidence and opinions, or such other information as the Director may require by regulation. The petitioner may seek leave to file a reply to respond to new issues raised in the preliminary response, within a time period set by the Director. ; (2) in section 314— (A) in subsection (a)— (i) by striking The Director (1) The Director ; (ii) by inserting and any reply any response (iii) by adding at the end the following: (2) The Director may choose not to institute a proceeding under this section if the Director determines that institution would not serve the interests of justice. In making this determination, the Director shall consider, among other appropriate factors, whether the grounds of unpatentability on prior art or arguments set forth in the petition are the same or substantially the same as those considered and decided in a prior judicial proceeding, or in a prior proceeding before the Office involving the same claim or claims (including a decision by the Director not to institute a proceeding under this chapter), and whether there is another proceeding or matter involving the same patent pending before the Office. (3) An inter partes review shall not be instituted on the basis that the evidentiary standard before the Office differs from the evidentiary standard that was used in a proceeding before a court of the United States to adjudicate the claim or claims challenged in the petition. ; and (B) in subsection (b)— (i) in paragraph (1), by striking receiving a preliminary response to the petition receiving the last of a preliminary response to the petition or a reply (ii) in paragraph (2)— (I) by striking is filed, the is filed or reply is requested, the (II) by inserting or reply may be requested may be filed (3) in section 315— (A) by amending subsection (b) to read as follows: (b) Patent owner's action An inter partes review may not be instituted with respect to a particular claim of a patent if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of that patent claim. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). ; (B) in subsection (c), by adding at the end the following: A petitioner may petition to add additional patent claims in an instituted inter partes review in which the petitioner is a party, if such petition is made within 1 year after the date on which that petitioner, or the real party in interest or privy of that petitioner, is served with an amended complaint or other paper in a pending litigation for the first time alleging infringement by one or more of them of those patent claims to be added. (C) in subsection (e), by adding at the end the following: (3) Representation by either party A party in an inter partes review of a claim in a patent under this chapter, or the real party in interest or privy of such party, shall be bound in a subsequent proceeding before the Office or civil action in a court of the United States by any representations regarding claim construction made by the party during the inter partes review with respect to the prosecution history of the patent that were finally adopted by the Office in deciding the inter partes review. ; and (4) in section 316— (A) in subsection (a)— (i) in paragraph (5), by redesignating subparagraphs (A) and (B) as clauses (i) and (ii), respectively, and by adjusting the margins accordingly; (ii) by redesignating paragraphs (1) through (13) as subparagraphs (A) through (M), respectively, and adjusting the margins accordingly; (iii) by striking The Director shall prescribe regulations— (1) In general The Director shall prescribe regulations— ; (iv) by amending subparagraph (J), as redesignated, to read as follows: (J) providing either party with the right to have testimony (including cross examination of adverse witnesses) heard live by the panel deciding the review where the panel finds that such testimony would facilitate resolution of the case because genuine issues of material fact, conflicting expert opinions, or issues of witness credibility exist, followed by an oral hearing before that panel as part of the proceeding; ; (v) in subparagraph (L), as redesignated, by striking and (vi) in subparagraph (M), as redesignated, by striking the period at the end and inserting the following: , including not less than 1 meaningful opportunity to respond to any substitute claim offered as an amendment to the patent under subsection (d); (vii) by adding at the end the following: (N) providing that for all purposes under this chapter— (i) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (ii) if a court of the United States has previously construed the claim or a claim term, or made a determination as to the patent’s validity, in a proceeding or an action in which the patent owner was a party, the Office shall consider such claim construction or determination; and (O) requiring that all decisions of the Patent Trial and Appeal Board in its proceedings be available to the public in an easily accessible, searchable form. (2) Requirements The regulations prescribed under paragraph (1)(I) shall provide that— (A) an amendment to propose 1 or more substitute claims shall be made in the patent holder’s first paper following institution (other than a request for rehearing) and not later than 30 days after the institution of the proceeding, unless otherwise agreed to by the parties; (B) any substitute claim must narrow the scope of the cancelled claim and may not introduce new subject matter; (C) any amendment shall respond to a ground of unpatentability involved in the trial; (D) the petitioner shall have a meaningful opportunity to file a written response as to whether the substitute claim meets the requirements of subparagraphs (A) through (C) and whether the substitute claim is unpatentable; and (E) if a substitute claim meets the requirements of subparagraphs (A) through (C), the petitioner shall have the burden of proving a proposition of unpatentability of the substitute claim by a preponderance of the evidence. ; (B) in subsection (b), by inserting the interests in clarity in scope and reliance on intellectual property rights, patent system, (C) in subsection (e)— (i) by striking In an inter partes (1) In general (ii) by striking the petitioner the challenged patent shall be presumed to be valid. The petitioner (iii) by adding at the end the following: (2) Rule of construction Nothing in this subsection shall be construed to impact the operation of section 282(a) in proceedings in a court of the United States. . (b) Amendments to chapter 32 Chapter 32 (1) in section 323— (A) by striking If a post-grant (a) In general (B) by adding at the end the following: (b) Supporting evidence A preliminary response filed under subsection (a) may be supported by affidavits or declarations of supporting evidence and opinions, or such other information as the Director may require by regulation. The petitioner may seek leave to file a reply to respond to new issues raised in the preliminary response, within a time period set by the Director. ; (2) in section 324— (A) in subsection (a)— (i) by striking The Director (1) The Director ; and (ii) by adding at the end the following: (2) The Director may choose not to institute a proceeding under this section if the Director determines that institution would not serve the interests of justice. In making this determination, the Director shall consider, among other appropriate factors, the grounds of unpatentability on prior art or arguments set forth in the petition are the same or substantially the same as those considered and decided in a prior judicial proceeding, or in a prior proceeding before the Office involving the same claim or claims (including a decision by the Director not to institute a proceeding under this chapter), and whether there is another proceeding or matter involving the same patent pending before the Office. ; and (B) in subsection (c)— (i) in paragraph (1), by striking receiving a preliminary response to the petition receiving the last of a preliminary response to the petition or a reply (ii) in paragraph (2)— (I) by striking is filed, the is filed or reply is requested, the (II) by inserting or reply may be requested may be filed (3) in section 325(e), by adding at the end the following: (3) Representations by either party A party in a post grant review of a claim in a patent under this chapter, or the real party in interest or privy of such party, shall be bound in a subsequent proceeding before the Office or civil action in a court of the United States by any representations regarding claim construction made by the party during the post grant review with respect to the prosecution history of the patent that were finally adopted by the Office in deciding the post grant review. ; and (4) in section 326— (A) in subsection (a)— (i) by redesignating paragraphs (1) through (12) as subparagraphs (A) through (L), respectively, and adjusting the margins accordingly; (ii) by striking The Director shall prescribe regulations— (1) In general The Director shall prescribe regulations— ; (iii) by amending subparagraph (J), as redesignated, to read as follows: (J) providing either party with the right to have testimony (including cross examination of adverse witnesses) heard live by the panel deciding the review where the panel finds that such testimony would facilitate resolution of the case because genuine issues of material fact, conflicting expert opinions, or issues of witness credibility exist, followed by an oral hearing before that panel as part of the proceeding; ; (iv) in subparagraph (K), as redesignated, by striking and (v) in subparagraph (L), as redesignated, by striking the period at the end and inserting the following: , including not less than 1 meaningful opportunity to respond to any substitute claim offered as an amendment to the patent under subsection (d); (vi) by adding at the end the following: (M) providing that for all purposes under this chapter— (i) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (ii) if a court of the United States has previously construed the claim or a claim term, or made a determination as to the patent’s validity, in a proceeding or an action in which the patent owner was a party, the Office shall consider such claim construction or determination; and (N) requiring that all decisions of the Patent Trial and Appeal Board in its proceedings be available to the public in an easily accessible, searchable form. (2) Requirements The regulations prescribed under paragraph (1)(I) shall provide that— (A) an amendment to propose 1 or more substitute claims shall be made in the patent holder’s first paper following institution (other than a request for a rehearing) and not later than 30 days after the institution of the proceeding, unless otherwise agreed to by the parties; (B) any substitute claim must narrow the scope of the cancelled claim and may not introduce new subject matter; (C) any amendment shall respond to a ground of unpatentability involved in the trial; (D) the petitioner shall have a meaningful opportunity to file a written response as to whether the substitute claim meets the requirements of subparagraphs (A) through (C) and whether the substitute claim is unpatentable; and (E) if a substitute claim meets the requirements of subparagraphs (A) through (C), the petitioner shall have the burden of proving a proposition of unpatentability of the substitute claim by a preponderance of the evidence. ; (B) in subsection (b), by inserting the interests in clarity in scope and reliance on intellectual property rights, patent system, (C) in subsection (e)— (i) by striking In a post-grant (1) In general (ii) by striking the petitioner the challenged patent shall be presumed to be valid. The petitioner (iii) by adding at the end the following: (2) Rule of construction Nothing in this subsection shall be construed to impact the operation of section 282(a) in proceedings in a court of the United States. . (c) Director requirements (1) Three-member panels Not later than 1 year after the date of enactment of this Act, the Director shall prescribe regulations governing the composition of panels convened to adjudicate a post-grant review or inter partes review under section 6 of title 35, United States Code, to ensure that the panel adjudicating such proceeding consists of not more than 1 individual, if any, who participated in the decision to institute such proceeding. Such regulations may prescribe that the decision to institute a proceeding shall be made by designees of the Director other than members of the Patent Trial and Appeal Board. (2) Representations to the Office (A) Regulations Not later than 1 year after the date of enactment of this Act, the Director shall issue regulations to make clear that an attorney or unrepresented party presenting a statement, petition, or other submission to the Office does so under an obligation substantially similar to the obligations contained in rule 11 of the Federal Rules of Civil Procedure. (B) Interaction with existing rules Regulations promulgated under this paragraph shall not be construed to undermine or otherwise limit existing regulations governing professional conduct before the Office, including regulations recognizing the duty of candor and good faith, the duty to disclose in a proceeding under section 311 or 321 of title 35, United States Code, information that is inconsistent with a position advanced by the party during such proceeding, and the duty to disclose information material to patentability. (d) Effective date (1) In general Except as provided in paragraph (2), the Director shall, not later than the date that is 1 year after the date of enactment of this Act, issue regulations implementing the amendments made by this section to chapters 31 and 32 of title 35, United States Code. (2) Exception The Director shall, not later than the date that is 6 months after the date of enactment of this Act, issue regulations implementing the amendments made by this section to paragraph (10) of sections 316(a) and 326(a) of title 35, United States Code, the amendment adding paragraph (14) to section 316(a) of title 35, United States Code, and the amendment adding paragraph (13) to section 326(a) of title 35, United States Code. (3) Regulations The regulations issued under this section shall take effect on the date on which they are issued and shall apply to all proceedings under chapters 31 and 32 of title 35, United States Code, for which a petition for review under section 311 or 321 of title 35, United States Code, is filed on or after such date of issuance. 12. Protection of intellectual property licenses in bankruptcy (a) In general Section 1522 of title 11, United States Code, is amended by adding at the end the following: (e) Section 365(n) shall apply to cases under this chapter. If the foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract shall be entitled to make the election and exercise the rights described in section 365(n). . (b) Trademarks (1) Amendment Section 101(35A) of title 11, United States Code, is amended— (A) in subparagraph (E), by striking or (B) in subparagraph (F), by adding or (C) by adding after subparagraph (F) the following new subparagraph: (G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 15 U.S.C. 1127 . (2) Conforming amendment Section 365(n)(2) of title 11, United States Code, is amended— (A) in subparagraph (B)— (i) by striking royalty payments royalty or other payments (ii) by striking and (B) in subparagraph (C), by striking the period at the end of clause (ii) and inserting ; and (C) by adding at the end the following new subparagraph: (D) in the case of a trademark, service mark, or trade name, the licensee shall not be relieved of any of its obligations to maintain the quality of the products and services offered under or in connection with the licensed trademark, service mark, or trade name, and the trustee shall retain the right to oversee and enforce quality control for said products and/or services. . (c) Effective date The amendments made by this section shall take effect on the date of enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment. 13. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small business patent ombudsman The existing small business patent outreach programs of the Office, in consultation with the relevant offices at the Small Business Administration and the Minority Business Development Agency, shall provide education and awareness regarding resources available for those persons responding to allegations of patent infringement. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include— (A) information disclosed under section 261A of title 35, United States Code, as added by section 10, and section 281B(b) of title 35, United States Code, as added by section 3; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 14. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Report on study Not later than 18 months after the date of enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on Patent Small Claims procedures (1) Study Required (A) In general The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims procedures in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349 (B) Contents of study The study under subparagraph (A) shall examine— (i) the necessary criteria for using small claims procedures; (ii) the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and (iii) the steps that would be taken to ensure that the procedures used in the pilot program are not misused for abusive patent litigation. (2) Report on study Not later than 1 year after the date of enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1). (c) Study on business method patent quality (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on the volume and nature of litigation involving business method patents. (2) Contents of study The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant. (3) Report to congress Not later than 1 year after the date of enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study. 15. Technical corrections to the Leahy-Smith America Invents Act and other improvements (a) Estoppel Section 325(e)(2) of title 35, United States Code, is amended by striking or reasonably could have raised (b) PTO patent reviews (1) Clarification (A) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 section 102(a) subsection (a) or (e) of section 102 (B) Effective date The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (2) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 (c) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another the inventor or a joint inventor or another (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (2) Inventor’s oath or declaration (A) Requirement to execute Section 115(a) of title 35, United States Code, is amended in the second sentence by striking shall execute may be required by the Director to execute (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named that names the inventor or a joint inventor (B) Benefit of earlier filing date in the united states Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor names the inventor or a joint inventor (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor or a joint inventor (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 (6) Time limit for commencing misconduct proceedings (A) Amendment The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year 18 months (B) Effective date The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. (7) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 the petition under section 311 (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 the petition under section 321 (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (8) Global worksharing Section 122 of title 35, United States Code, is amended— (A) in subsection (a), by striking subsection (b) subsections (b) and (f) (B) by adding at the end the following: (f) Foreign or international filing The Director may provide information concerning an application for a patent to a foreign country or international intergovernmental organization if a corresponding application is filed in such foreign country or with such international intergovernmental organization. If the corresponding application is an international application, such information may also be provided to an International Searching Authority, an International Preliminary Examining Authority, and the International Bureau (as defined in section 351). . (9) Appointments clarification Section 3(b)(3) of title 35, United State Code, is amended— (A) by redesignating subparagraphs (A) and (B) as subparagraphs (B) and (C), respectively; (B) by inserting before subparagraph (B), as redesignated, the following: (A) nominate, for appointment by the Secretary of Commerce, such officers as the Director considers necessary to carry out the functions of the Office and who may exercise any authority delegated by the Director or a Commissioner; ; and (C) in subparagraph (B), as redesignated, by striking officers, employees (including attorneys), employees (including attorneys) (10) Public advisory committees Section 5(h) of title 35, United States Code, is amended by inserting before the period at the end the following: , except that members of each Advisory Committee shall be considered to be serving on an advisory committee within the meaning of the Federal Advisory Committee Act for purposes of section 208(b)(3) of title 18 (11) Electronic filing timezone alignment (A) Amendment Section 21 of title 35, United States Code, is amended by— (i) redesignating subsection (b) as subsection (c), and (ii) inserting after subsection (a) the following: (b) The Director may by rule prescribe that any paper or fee required to be filed in the United States Patent and Trademark Office will be considered filed in the Office on the date on which it is submitted using the electronic filing system prescribed by the Director or would have been submitted but for filing system interruptions or emergencies designated by the Director. . (B) Effective date The amendments made by this paragraph shall take effect on the date that is 1 year after the date of enactment of this Act and shall apply to papers or fees that are filed on or after that effective date. (d) Management of the United States Patent and Trademark Office (1) In general Section 3(b)(1) of title 35, United States Code, is amended in the first sentence— (A) by striking be vested with the authority to act in the capacity of the serve as Acting (B) by inserting before the period or in the event of a vacancy in the office of the Director (2) Effective date The amendments made by paragraph (1) shall take effect on the date of enactment of this Act and shall apply with respect to appointments and vacancies occurring before, on, or after the date of enactment of this Act. (e) Extension of fee setting authority Section 10(i)(2) of the Leahy-Smith America Invents Act ( Public Law 112–29 7-year 14-year (f) Patents for humanity program (1) Short title This subsection may be cited as the Patents for Humanity Program Improvement Act (2) Transferability of acceleration certificates A holder of an acceleration certificate issued pursuant to the Patents for Humanity Program (established in the notice entitled Humanitarian Awards Pilot Program (3) Requirement An acceleration certificate transferred under paragraph (1) shall be subject to any other applicable limitations under the notice entitled Humanitarian Awards Pilot Program 16. Institutions of higher education and nonprofit research Section 123(d) of title 35, United States Code, is amended to read as follows: (d) Institutions of higher education and nonprofit research organizations For purposes of this section, a micro entity shall include an applicant who certifies that— (1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education; (3) the applicant is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) (4) the applicant is an organization described in section 501(c)(3) (5) the applicant is an organization described in section 501(c)(3) (A) the applicant performs, at least in part, research or development activities for the Federal Government; or (B) the applicant has assigned, granted, or conveyed, or is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular applications to an organization described in section 501(c)(3) . 17. Effective date Except as otherwise provided in this Act, this Act and the amendments made by this Act shall take effect on the date of enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date. 18. Severability If any provision of this Act, or an amendment made by this Act, or the application of such provision or amendment to any person or circumstance, is held to be invalid, the remainder of this Act, or an amendment made by this Act, or the application of such provision to other persons or circumstances, shall not be affected. September 8, 2015 Reported with an amendment

Summary: Highlights: This bill amends federal patent law to add pleading and disclosure requirements for patent infringement actions. The bill sets standards for a court's consideration of a motion to stay an action against retailers or end users that agree to be bound as to issues determined in an action to which the manufacturer is a party. The bill provides for a stay of discovery during the pendency of a motion to dismiss, transfer venue, or sever accused infringers. The Judicial Conference of the United States must develop rules regarding whether a party seeking additional discovery beyond core documentary evidence should bear the costs for the additional discovery. Prevailing parties may seek an award of attorney's fees. Parties defending against infringement may require a party alleging infringement whose primary business is the assertion of patents to identify other parties with a financial interest in the proceedings that may be held accountable for an award of attorney's fees if the party alleging infringement cannot satisfy the full amount of such an award. The Federal Trade Commission is authorized to enforce against demand letters that falsely represent that the recipients bear liability or owe compensation for infringing a patent. The bill also requires a pre-suit notification to meet certain standards before it may be used as evidence of willful infringement, revises procedures for post-issuance proceedings at the U.S. Patent and Trademark Office (USPTO), sets forth standards for intellectual property license elections in foreign bankruptcy proceedings and the treatment of trademarks under the bankruptcy code, allows transfers of entitlements to accelerate USPTO proceedings for humanitarian purposes, and makes institutions of higher education and nonprofit organizations eligible for reduced patent fees. The USPTO's authority to set or adjust its own fees under the Leahy-Smith America Invents Act is extended an additional seven years. Full Summary: Protecting American Talent and Entrepreneurship Act of 2015 or the PATENT Act (Sec. 3) Amends federal patent law to add requirements for court pleadings in patent infringement actions. Requires the Supreme Court to eliminate the current model patent infringement complaint form from the Federal Rules of Civil Procedure. Directs parties alleging infringement to include in their court pleadings specified details concerning: each claim of each patent allegedly infringed; each process, machine, manufacture, or composition of matter ("accused instrumentalities") alleged to infringe the claim; for each identified claim, a description of the elements alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements; and for each claim of indirect infringement, the acts of the alleged infringer that contribute to or induce direct infringement. Requires courts, upon a motion, to dismiss claims that do not meet such pleading requirements unless a party with a plausible claim provides a general description of information that was inaccessible after a reasonable inquiry. Requires parties alleging infringement to disclose to the court, adverse parties, and the U.S. Patent and Trademark Office (USPTO): (1) assignees of the patent and their ultimate parent entities, (2) entities and ultimate parent entities with a right to sublicense to unaffiliated entities or to enforce the patent; and (3) entities known to have a financial interest in the patent, the patentee, or any ultimate parent entity. Directs alleging parties to further disclose to the court and adverse parties: (1) claims by the patentee, an affiliate, or other claimants during the previous three years; (2) certain assurances made to a standards development organization to license others under such patent; and (3) whether the federal government has imposed specific licensing requirements. (Sec. 4) Requires courts to grant a motion to stay an action against a retailer or end user accused of infringing a patent based on a product or process under specified conditions, if: (1) the manufacturer is a party to the action or a separate action in a federal court involving the same patent; and (2) the retailer or end user agrees to be bound as to issues determined in the action to which the manufacturer is a party, without a full and fair opportunity to separately litigate any such issue, but only as to those issues for which all other elements of the common law doctrine of issue preclusion are met. (Sec. 5) Directs courts to stay discovery in patent actions during the pendency of certain preliminary motions (motions to dismiss, transfer venue, or sever accused infringers), but allows a court to permit further discovery to resolve a motion or preserve evidence. Permits parties to voluntarily exclude themselves from such discovery limits. (Sec. 6) Requires the Judicial Conference of the United States to develop discovery rules for patent actions that address the extent to which: (1) parties should be responsible for the costs of producing core documentary evidence, and (2) a party may seek additional noncore document discovery and bear the additional costs. Requires the rules to address discovery of electronic communications and computer code. Directs the Judicial Conference to develop case management procedures to be implemented by federal district courts and the U.S. Court of Federal Claims for patent actions, including initial disclosure and early case management conference practices that: (1) identify any potential dispositive issues, and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. (Sec. 7) Requires a court, upon a motion, to award attorney's fees to the prevailing party if the position or conduct of the nonprevailing party was not objectively reasonable. Provides an exception if special circumstances would make an award unjust. Allows parties defending against a claim of infringement, if they hold a good faith belief that the primary business of the party alleging infringement is the assertion and enforcement of patents or the resulting licensing, to require the party alleging infringement to: (1) certify that it will have sufficient funds to satisfy an award of attorney's fees; (2) demonstrate that its primary business is not the assertion and enforcement of patents or related licensing activities; (3) identify any other parties with a substantial financial interest related to the proceeds from any settlement, license, or damages award resulting from the enforcement of the patent; or (4) state that there are no such interested parties. Makes identified interested parties accountable for an award of attorney's fees (unless they renounce their interest in the claim) if the party alleging infringement cannot satisfy the full amount. Allows institutions of higher education, or nonprofit technology transfer organizations whose primary purpose is to facilitate the commercialization of technologies of such institutions, to exempt themselves from being considered interested parties accountable for attorney's fees. Excludes from being identified as accountable interested parties: (1) attorneys or law firms whose sole financial interest is compensation reasonably related to the provision of legal representation, (2) persons who receive only passive income from a patent that they assigned to an institution of higher education, (3) persons whose financial interest is based solely on an equity or security interest established when the party alleging infringement's primary business was not the assertion and enforcement of patents or the resulting licensing, and (4) depository institutions whose sole basis for the financial interest arises from a loan or other debt obligation. Exempts from the process of identifying parties accountable for attorney's fees, and from certain other requirements of this Act, patent actions that include claims relating to abbreviated new drug applications for generic drugs under the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act, including animal drugs, veterinary products, and other biological products. Authorizes a court in such cases to award reasonable attorney's fees only in exceptional circumstances. (Sec. 8) Prohibits a claimant seeking to establish willful infringement from relying on evidence of a pre-suit notification sent to the alleged infringer, unless the notice included details regarding the patent and specific infringement, the possible right of a retailer or end user to stay the action, and the identity of any person who can enforce the patent. Bars an initial written notice from containing: (1) a request for, demand for, or offer to accept a specific monetary amount in exchange for a license, settlement, or agreement to resolve allegations of patent infringement; or (2) a specific monetary amount demanded based on the cost of legal defense in a lawsuit concerning any asserted claim. Allows defendants an additional 30 days to respond to a complaint if the initial notice did not contain such details or contained such a monetary request or demand. (Sec. 9) Subjects to penalties under the Federal Trade Commission Act an unfair or deceptive act or practice in connection with the widespread sending of demand letters representing falsely, without a reasonable basis, or in a misleading manner that the intended recipients or their affiliates may bear liability or owe compensation for infringement. Provides the Federal Trade Commission with authority to enforce against such violations. (Sec. 10) Requires patent holders to disclose to the USPTO any assignment resulting in a change to the ultimate parent entity. Prohibits a party that fails to comply with such disclosure requirements from recovering increased damages or attorney's fees for any period of noncompliance, unless the denial of such damages or fees would be manifestly unjust. (Sec. 11) Allows patent owners filing a preliminary response to a petition for inter partes or post-grant review to include affidavits or declarations of supporting evidence and opinions. Permits petitioners to reply to new issues raised in a preliminary response. Permits the USPTO to choose not to institute a review that would not serve the interests of justice. Requires the USPTO to consider whether: (1) the grounds of unpatentability on prior art or arguments in the petition are substantially the same as those considered and decided in a prior judicial or USPTO proceeding involving the same claims, and (2) there is another proceeding involving the same patent pending before the USPTO. Prohibits an inter partes review from being instituted on the basis that the evidentiary standard before the USPTO differs from that used in a U.S. court. Allows a petitioner to petition to add additional patent claims in an instituted inter partes review if such petition is made within one year after that petitioner, or the real party in interest or privy of that petitioner, is served with an amended complaint for the first time alleging that any of them infringed the patent claims to be added. Binds inter partes and post-grant review parties in subsequent USPTO or court proceedings (or their real parties in interest or privy) to any representations they made regarding claim construction with respect to the prosecution history of the patent that were finally adopted by the USPTO in deciding the review. Directs the USPTO to prescribe regulations providing USPTO panels with the authority to determine whether to hear live testimony offered by a party to an inter partes or post-grant review if it would facilitate resolution of the case because genuine issues of material fact, conflicting expert opinions, or issues of witness credibility exist. Requires each claim of a patent to be construed as such claim would be in a civil action to invalidate a patent, including by construing each claim in accordance with the ordinary and customary meaning as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Directs the USPTO to consider previous claim constructions or determinations of U.S. courts in proceedings in which the patent owner was a party. Requires USPTO regulations to ensure that the panel adjudicating such review proceeding consists of not more than one individual who participated in the decision to institute such a proceeding. Allows such regulations to prescribe that the decision to institute a proceeding be made by designees of the USPTO Director other than members of the Patent Trial and Appeal Board. (Sec. 12) Requires courts in cross-border bankruptcy cases involving the recognition of a foreign proceeding to apply U.S. bankruptcy laws relating to the retention or termination of licensed intellectual property rights after a trustee has rejected an executory contract. Allows a licensee to elect to retain its right to intellectual property if a foreign representative rejects or repudiates a contract under which the debtor is the licensor. Expands the definition of "intellectual property" as it applies to the federal bankruptcy code to include trademarks, service marks, or trade names, thereby providing for trademark licenses to be retained instead of voided in bankruptcy. (Sec. 13) Requires the USPTO to: (1) develop educational resources for small businesses to address concerns arising from patent infringement, and (2) provide education and awareness regarding resources available for those persons responding to allegations of patent infringement. Directs the USPTO to notify the public on its website when a patent case is brought in federal court. (Sec. 14) Requires the USPTO to report to Congress regarding: (1) legislative recommendations for transparency and accountability in patent transactions occurring on the secondary market, (2) the economic impact that the secondary market has on the United States, and (3) licensing and oversight requirements to ensure that the market is a level playing field and that brokers adhere to ethical business practices. Directs the Administrative Office of the U.S. Courts to submit recommendations to Congress regarding the development of a pilot program for patent small claims procedures in certain judicial districts. Requires the Government Accountability Office to submit recommendations regarding the volume and nature of litigation involving business method patents, including the quality of business method patents asserted in suits alleging patent infringement. (Sec. 15) Amends the Leahy-Smith America Invents Act (AIA) to: limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions or certain U.S. International Trade Commission proceedings to only those grounds that the petitioner actually raised during post-grant review; and revise the transitional covered business method patent review program to expand the scope of prior art that may serve as the basis of a challenge and permit the USPTO to waive filing fees. Allows the USPTO to provide information concerning an application for a patent to a foreign country or international intergovernmental organization if a corresponding application is filed in such foreign country or with such organization. Requires the USPTO Director to nominate, for appointment by the Secretary of Commerce, such officers as the Director considers necessary to carry out the functions of the USPTO and who may exercise any authority delegated by the Director or a Commissioner. Allows the USPTO to prescribe filing date rules for papers or fees submitted using an electronic filing system. Authorizes the USPTO Deputy Director to serve as Acting Director in the event of the absence or incapacity of the Director or a vacancy in the office of the Director. Extends by an additional seven years the USPTO's authority under the AIA to set or adjust its own fees. Patents for Humanity Program Improvement Act Allows the holder or successor of an acceleration certificate issued pursuant to the Patents for Humanity Program (a pilot awards program that entitles awardees to accelerate certain USPTO proceedings for patented technologies addressing humanitarian needs among an impoverished population or for further research on humanitarian technologies) to transfer, including by sale, the entitlement to such certificate to another person. (Sec. 16) Provides micro entity status (which makes certain small entities eligible for reduced patent fees) to certifying: (1) institutions of higher education or comparable organizations outside the United States; (2) tax exempt, nonprofit organizations, or comparable organizations outside the United States, that hold title to patents and patent applications on behalf of such an institution of higher education for the purpose of facilitating commercialization of the technologies; or (3) tax exempt, nonprofit organizations that perform research or development activities for the federal government or that assign, grant, or convey a license or ownership interest to such an organization that performs such activities for the federal government.