notice of such determination to each of the sub-
ject parties not later than 1 month after the 
conclusion of the investigation. A determination 
of the Director under this subparagraph is final 
and may not be appealed. 
‘‘(B) IF
MISCONDUCT
MAY
HAVE
OC-
CURRED.—If the Director makes a preliminary 
determination in an investigation under para-
graph (2) that misconduct under subsection (b) 
may have occurred, the Director shall provide 
written notice of the preliminary determination 
to each of the subject parties not later than 1 
month after the conclusion of the investigation. 
Such written notice shall provide a description 
with particularity of the separate acts alleged to 
constitute such possible misconduct. The Direc-
tor shall afford the subject parties an oppor-
tunity to respond to the preliminary determina-
tion and a period of time within which to reach 
a settlement of the issue before taking any fur-
ther action. 
‘‘(4) FINAL
DETERMINATION; 
APPEAL
TO 
BOARD.— 
‘‘(A) IN GENERAL.—If a matter relating to 
possible misconduct is not settled under para-
graph (3), the preliminary determination shall 
become final and may not be appealed unless 1 
or more of the subject parties contests the pre-
liminary determination by requesting a hearing 
on the matter, within 2 months after the end of 
the settlement period provided under paragraph 
(3)(B), before a panel of the Board of Patent 
Appeals. 
‘‘(B) HEARING.—If a hearing is timely re-
quested under subparagraph (A), the hearing 
shall provide the Director and the patent owner 
an opportunity to present evidence and argu-
ments. 
‘‘(C) DETERMINATION
OF
PANEL.—The 
panel shall, not later than 1 year after the date 
of the request by 1 or more of the subject par-
ties for a hearing under subparagraph (B), 
issue a written determination containing find-
ings of facts and conclusions of law on the mat-
ters before it. If the written determination by 
the panel concludes that one or more alleged 
violations of the duty of candor and good faith 
do not constitute acts of misconduct, then the 
determination is final with respect to such 
issues of possible misconduct and may not be
appealed, and no penalty shall be imposed with 
respect to such issues. If the written determina-
tion by the panel concludes that one or more al-
leged violations of the duty of candor and good 
faith do constitute acts of misconduct, then the 
decision of the panel shall represent a final de-
termination of the Office on the matters in-
volved. 
‘‘(5) NOTICE OF FINAL DETERMINATION.—If a 
matter of possible misconduct is not settled or other-
wise terminated following the opportunity for settle-
ment and hearing under paragraphs (3) and (4), the 
Director shall notify the subject parties in writing of 
the final determination on the matter under para-
graph (4), setting forth— 
‘‘(A) the factual findings of the investiga-
tion; 
‘‘(B) the legal conclusions reached; 
‘‘(C) a description of each separate act of 
misconduct determined to have taken place; 
‘‘(D) the amount of any civil monetary 
penalty imposed against the subject parties 
under paragraph (6); and 
‘‘(E) a deadline for payment of any penalty 
imposed, which may not be earlier than 6
months after the date on which the notice is 
provided to the patent owner under this para-
graph of the final determination. 
‘‘(6) PENALTY AMOUNT.— 
‘‘(A) IN GENERAL.—Subject to the limita-
tions of this paragraph, the Director may im-
pose civil monetary penalties on each subject 
party for each act of misconduct of which notice 
is given under paragraph (5), in amounts that 
the Director considers sufficient in the Direc-
tor’s discretion to act as a deterrent to future 
such violations of the duty of candor and good 
faith under this section, taking into account the 
totality of the circumstances in each individual 
case. 
‘‘(B) 
LIMITATION
ON
AMOUNT.—The 
amount of a civil penalty imposed under sub-
paragraph (A) may not exceed $1,000,000 for 
each separate act of misconduct, except that in 
a case in which the violation of the duty of can-
dor and good faith is found to be the result of 
fraudulent or other particularly egregious mis-
conduct, the penalty imposed may not exceed 
$5,000,000 for such act of misconduct. In an 
exceptional case, the Director may impose an
additional penalty in an amount equal to the 
costs incurred by the Director in conducting the 
investigation. 
‘‘(C) LIMITATION ON PARTIES ON WHICH 
PENALTIES
MAY
BE
IMPOSED.—No penalty 
based upon an act of misconduct may be im-
posed under subparagraph (A) on a subject 
party other than the patent owner unless the 
subject party was the owner of a claimed inven-
tion in the patent or application for patent (or 
entitled to an assignment thereof), at the time 
the act of misconduct giving rise to the penalty 
occurred. Unless otherwise specified in the final 
determination, subject parties shall be jointly 
and severally liable for any penalty imposed. 
‘‘(7) TOLLING OF PENALTY; FAILURE OF TIME-
LY
PAYMENT.—The deadline for payment of any 
penalty imposed shall be tolled during the pendency 
of an appeal brought by a subject party under para-
graph (8). If the patent owner fails to make timely 
payment of any penalty imposed on the patent 
owner, including any penalty for which the patent 
owner is jointly liable, before the expiration of the 
deadline provided under paragraph (5)(E), the fail-
ure to pay the penalty constitutes a disclaimer of all
enforceable rights in each patent involved in the vio-
lation of the duty of candor and good faith for which 
the penalty was imposed. 
‘‘(8) APPEAL.—A subject party dissatisfied with 
the final determination of the Director under this 
section may, unless the penalty has been paid pursu-
ant to the final determination, appeal the determina-
tion under sections 141 through 144. 
‘‘(f) OTHER ACTIONS NOT SUBJECT TO PREEMP-
TION.—Nothing in this section shall in any manner oper-
ate to— 
‘‘(1) prevent or otherwise obstruct a criminal 
investigation or supersede any criminal law, or any 
penalty imposed pursuant thereto, in connection 
with any matter involving a patent or application for 
patent; 
‘‘(2) limit the ability of the courts of any State 
or the District of Columbia to investigate and make 
determinations with respect to issues of attorney 
malpractice and impose sanctions on an attorney for 
malpractice; or 
‘‘(3) limit the ability of any entity before which 
an individual is registered or otherwise entitled to 
practice a profession to investigate and sanction 
such individual based upon professional misconduct.
‘‘(g) ACTIONS BASED UPON PRIOR MISCONDUCT AD-
JUDICATION.—If a final, nonappealable adjudication of 
misconduct has been made based upon a criminal action 
not subject to preemption under subsection (f)(1), a fraud 
pleading described in subsection (d), or a misconduct pro-
ceeding instituted pursuant to a referral described in sub-
section (e)(1), such adjudication of misconduct may be 
used as a basis for pursuing further remedies under any 
Federal or State law, including common law, except that 
nothing in this subsection shall authorize any investigation 
or determination of misconduct that is otherwise pre-
empted under this section. 
‘‘§ 137. Duty of candor: parties adverse to a patent or 
application 
‘‘(a) DUTY.—The Director shall prescribe by regula-
tion a duty of candor and good faith applicable to individ-
uals who are parties adverse to a patent or application 
for patent in contested cases before the Office. The duty 
shall apply to individuals associated with such a pro-
ceeding on behalf of a party adverse to the patent or appli-
cation. Each such individual shall timely disclose informa-
tion known to that individual to be material to issues 
raised or responded to by the adverse party on whose be-
half the individual is involved and shall not materially mis-
represent information.
‘‘(b) MISCONDUCT.—Misconduct under this section 
shall be defined with respect to individuals described in 
subsection (a) in the same manner as that provided in sec-
tion 136(b) with respect to individuals under that section. 
The Director may conduct an investigation of possible 
misconduct by an individual based upon a violation of the 
duty described in subsection (a) in the manner provided 
in section 136(e), except that the written notice described 
in section 136(e)(2)(B) shall be given by the Director to 
each party on whose behalf an individual is acting who 
is being investigated for possible violation of the duty of 
candor and good faith under this section. The persons re-
ceiving such written notice shall be the subject parties of 
the investigation. If, on the basis of an investigation the 
Director determines that there is a basis for concluding 
that a violation of the duty that amounts to misconduct 
may have occurred, the Director shall provide written no-
tice of the preliminary determination to each subject party 
and shall afford the subject party an opportunity to reach 
a settlement of the issue before taking any further action. 
‘‘(c) PENALTIES.—If an issue of misconduct arising 
from a possible violation of the duty of candor and good 
faith under this section is not settled or otherwise termi-
nated following the opportunity for settlement and hearing 
described in subsection (b), the Director may impose a
civil monetary penalty against the subject parties. The 
procedures described in section 136(e) shall be followed 
in imposing a civil penalty under this subsection, except 
that the maximum civil monetary penalty that may be im-
posed on a subject party under this section may not exceed 
$500,000.’’. 
(b) TABLE OF SECTIONS.—The table of sections for 
chapter 12 is amended by adding at the end the following 
new items: 
‘‘136. Duty of candor: patents and applications for patent. 
‘‘137. Duty of candor: parties adverse to a patent or application.’’. 
(c) REMOVAL
OF DECEPTIVE INTENT RESTRIC-
TION.— 
(1) INVENTOR.— 
(A) IN GENERAL.—The third paragraph of 
section 116 is amended— 
(i) by striking ‘‘Whenever’’ and insert-
ing ‘‘(c) CORRECTION OF ERRORS IN AP-
PLICATION.—Whenever’’; and 
(ii) by striking ‘‘, and such error 
arose without any deceptive intention on 
his part’’. 
(B) CORRECTION OF NAMED INVENTOR.— 
Section 256 is amended— 
(i) in the first paragraph—
(I) by striking ‘‘Whenever’’ and 
inserting ‘‘(a) CORRECTION.—When-
ever’’; and 
(II) by striking ‘‘and such error 
arose without any deceptive intention 
on his part’’; and 
(ii) in the second paragraph, by strik-
ing ‘‘The error’’ and inserting ‘‘(b) PAT-
ENT VALID IF ERROR CORRECTED.—The 
error’’. 
(2) FILING.— 
(A) FILING OF APPLICATION IN FOREIGN 
COUNTRY.—The first paragraph of section 184 
is amended— 
(i) by striking ‘‘Except when’’ and in-
serting ‘‘(a) FILING IN FOREIGN COUN-
TRY.—Except when’’; and 
(ii) by striking ‘‘and without deceptive 
intent’’. 
(B) PATENT BARRED FOR FILING WITH-
OUT
LICENSE.—Section 185 is amended by 
striking ‘‘and without deceptive intent’’. 
(3) REISSUE
OF
DEFECTIVE
PATENTS.—The 
first paragraph of section 251 is amended—
(A) by striking ‘‘Whenever’’ and inserting 
‘‘(a) IN GENERAL.—Whenever’’; and 
(B) by striking ‘‘, through error without 
any deceptive intention,’’. 
(4) DISCLAIMER.—The first paragraph of sec-
tion 253 is amended— 
(A) by striking ‘‘Whenever’’ and inserting 
‘‘(a) IN GENERAL.—Whenever’’; and 
(B) by striking ‘‘, without any deceptive 
intention,’’. 
(5) ACTION FOR INFRINGEMENT.—Section 288 
is amended by striking ‘‘, without deceptive inten-
tion,’’. 
(d) TECHNICAL AMENDMENTS.—(1) Section 116 is 
amended— 
(A) in the first paragraph, by striking ‘‘When’’ 
and inserting ‘‘(a) JOINT INVENTIONS.—When’’; 
and 
(B) in the second paragraph, by striking ‘‘If a 
joint inventor’’ and inserting ‘‘(b) OMITTED INVEN-
TOR.—If a joint inventor’’. 
(2) Section 184 is amended— 
(A) in the second paragraph, by striking ‘‘The 
term’’ 
and 
inserting 
‘‘(b) 
APPLICATION.—The 
term’’; and
(B) in the third paragraph, by striking ‘‘The 
scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA-
TIONS, AMENDMENTS, AND
SUPPLEMENTS.—The 
scope’’. 
(3) Section 251 is amended— 
(A) in the second paragraph, by striking ‘‘The 
Director’’ and inserting ‘‘(b) MULTIPLE REISSUED 
PATENTS.—The Director’’; 
(B) in the third paragraph, by striking ‘‘The 
provision’’ and inserting ‘‘(c) APPLICABILITY
OF 
THIS TITLE.—The provisions’’; and 
(C) in the last paragraph, by striking ‘‘No re-
issued patent’’ and inserting ‘‘(d) REISSUE PATENT 
ENLARGING SCOPE OF CLAIMS.—No reissued pat-
ent’’. 
(4) Section 253 is amended in the second paragraph, 
by striking ‘‘in like manner’’ and inserting ‘‘(b) ADDI-
TIONAL DISCLAIMER OR DEDICATION.—In the manner set 
forth in subsection (a),’’. 
SEC. 6. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 
Section 284 is amended— 
(1) in the first paragraph— 
(A) by striking ‘‘Upon’’ and inserting ‘‘(a) 
AWARD OF DAMAGES.—Upon’’; and
(B) by adding at the end the following: ‘‘In 
determining a reasonable royalty in the case of 
a combination, the court shall consider, if rel-
evant and among other factors, the portion of 
the realizable profit that should be credited to 
the inventive contribution as distinguished from 
other features of the combination, the manufac-
turing process, business risks, or significant 
features or improvements added by the in-
fringer.’’; 
(2) by amending the second paragraph to read 
as follows: 
‘‘(b) WILLFUL INFRINGEMENT.— 
‘‘(1) INCREASED DAMAGES.—A court that has 
determined that the infringer has willfully infringed 
a patent or patents may increase the damages up to 
three times the amount of damages found or as-
sessed under subsection (a), except that increased 
damages under this paragraph shall not apply to 
provisional rights under section 154(d) of this title. 
‘‘(2) PERMITTED
GROUNDS
FOR
WILLFUL-
NESS.—A court may find that an infringer has will-
fully infringed a patent only if the patent owner pre-
sents clear and convincing evidence that—
‘‘(A) after receiving written notice from 
the patentee— 
‘‘(i) alleging acts of infringement in a 
manner sufficient to give the infringer an 
objectively reasonable apprehension of suit 
on such patent, and 
‘‘(ii) identifying with particularity 
each claim of the patent, each product or 
process that the patent owner alleges in-
fringes the patent, and the relationship of 
such product or process to such claim, 
the infringer, after a reasonable opportunity to 
investigate, thereafter performed one or more of 
the alleged acts of infringement; 
‘‘(B) the infringer intentionally copied the 
patented invention with knowledge that it was 
patented; or 
‘‘(C) after having been found by a court to 
have infringed that patent, the infringer en-
gaged in conduct that was not colorably dif-
ferent from the conduct previously found to 
have infringed the patent, and which resulted in 
a separate finding of infringement of the same 
patent.
‘‘(3) LIMITATIONS
ON
WILLFULNESS.—(A) A 
court shall not find that an infringer has willfully in-
fringed a patent under paragraph (2) for any period 
of time during which the infringer had an informed 
good faith belief that the patent was invalid or unen-
forceable, or would not be infringed by the conduct 
later shown to constitute infringement of the patent. 
‘‘(B) Reasonable reliance on advice of counsel 
shall establish an informed good faith belief within 
the meaning of subparagraph (A). 
‘‘(C) The decision of the infringer not to 
present evidence of advice of counsel shall have no 
relevance to a determination of willful infringement 
under paragraph (2). 
‘‘(4) LIMITATION
ON
PLEADING.—A patentee 
may not plead, and a court may not determine, that 
an infringer has willfully infringed a patent before 
the date on which a determination has been made 
that the patent in suit is not invalid, is enforceable, 
and has been infringed by the infringer.’’; and 
(3) in the third paragraph, by striking ‘‘The 
court’’ and inserting ‘‘(c) EXPERT TESTIMONY.— 
The court’’.
SEC. 7. INJUNCTIONS. 
Section 283 is amended by adding at the end the fol-
lowing: 
‘‘In determining equity, the court shall consider the fair-
ness of the remedy in light of all the facts and the relevant 
interests of the parties associated with the invention. Un-
less the injunction is entered pursuant to a nonappealable 
judgment of infringement, a court shall stay the injunction 
pending an appeal upon an affirmative showing that the 
stay would not result in irreparable harm to the owner 
of the patent and that the balance of hardships from the 
stay does not favor the owner of the patent.’’. 
SEC. 8. CONTINUATION APPLICATIONS. 
(a) IN GENERAL.—Chapter 11 is amended by adding 
at the end the following: 
‘‘§ 123. Limitations on continuation applications 
‘‘The Director may by regulation limit the cir-
cumstances under which an application for patent, other 
than a divisional application that meets the requirements 
for filing under section 121, may be entitled to the benefit 
under section 120 of the filing date of a prior-filed applica-
tion. No such regulation may deny applicants an adequate 
opportunity to obtain claims for any invention disclosed 
in an application for patent.’’.
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 11 is amended by adding at the end the 
following new item: 
‘‘123. Limitations on continuation applications.’’. 
SEC. 9. POST-GRANT PROCEDURES AND OTHER QUALITY 
ENHANCEMENTS. 
(a) PUBLICATION.—Section 122(b)(2) is amended— 
(1) by striking subparagraph (B); and 
(2) in subparagraph (A)— 
(A) by striking ‘‘(A) An application’’ and 
inserting ‘‘An application’’; and 
(B) by redesignating clauses (i) through 
(iv) as subparagraphs (A) through (D), respec-
tively. 
(b) DEFENSE TO INFRINGEMENT BASED ON EAR-
LIER INVENTOR.—Section 273 of title 35, United States 
Code, is amended— 
(1) in subsection (a)— 
(A) in paragraph (1)— 
(i) by striking ‘‘of a method’’; and 
(ii) by striking ‘‘review period;’’ and 
inserting ‘‘review period; and’’; 
(B) in paragraph (2)(B), by striking the 
semicolon at the end and inserting a period; 
and 
(C) by striking paragraphs (3) and (4);