‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac-
tion that asserts a claim for relief arising under any Act 
of Congress relating to patents against another party, and 
that subsequently unilaterally extends to such other party 
a covenant not to sue for infringement with respect to the 
patent or patents at issue, shall be deemed to be a nonpre-
vailing party (and the other party the prevailing party) 
for purposes of this section, unless the party asserting 
such claim would have been entitled, at the time that such 
covenant was extended, to voluntarily dismiss the action 
or claim without a court order under Rule 41 of the Fed-
eral Rules of Civil Procedure.’’. 
(2) CONFORMING
AMENDMENT
AND
AMEND-
MENT.— 
(A) CONFORMING AMENDMENT.—The item 
relating to section 285 of the table of sections 
for chapter 29 of title 35, United States Code, 
is amended to read as follows: 
‘‘285. Fees and other expenses.’’. 
(B) AMENDMENT.—Section 273 of title 
35, United States Code, is amended by striking 
subsections (f) and (g). 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to any action 
for which a complaint is filed on or after that date. 
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(c) JOINDER
OF INTERESTED PARTIES.—Section 
299 of title 35, United States Code, is amended by adding 
at the end the following new subsection: 
‘‘(d) JOINDER OF INTERESTED PARTIES.— 
‘‘(1) JOINDER.—In a civil action arising under 
any Act of Congress relating to patents, the court 
shall grant a motion by a party defending against an 
allegation of infringement of a patent claim to join 
an interested party if such defending party shows 
that the party alleging infringement has no substan-
tial interest in the patent or patents at issue other 
than asserting such patent claim in litigation. 
‘‘(2) LIMITATION ON JOINDER.—The court may 
deny a motion to join an interested party under 
paragraph (1) if— 
‘‘(A) the interested party is not subject to 
service of process; or 
‘‘(B) joinder under paragraph (1) would 
deprive the court of subject matter jurisdiction 
or make venue improper. 
‘‘(3) INTERESTED
PARTY
DEFINED.—In this 
subsection, the term ‘interested party’ means a per-
son, other than the party alleging infringement, 
that— 
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‘‘(A) is an assignee of the patent or pat-
ents at issue; 
‘‘(B) has a right, including a contingent 
right, to enforce or sublicense the patent or pat-
ents at issue; or 
‘‘(C) has a direct financial interest in the 
patent or patents at issue, including the right 
to any part of an award of damages or any part 
of licensing revenue, except that a person with 
a direct financial interest does not include— 
‘‘(i) an attorney or law firm providing 
legal representation in the civil action de-
scribed in paragraph (1) if the sole basis 
for the financial interest of the attorney or 
law firm in the patent or patents at issue 
arises from the attorney or law firm’s re-
ceipt of compensation reasonably related to 
the provision of the legal representation; or 
‘‘(ii) a person whose sole financial in-
terest in the patent or patents at issue is 
ownership of an equity interest in the 
party alleging infringement, unless such 
person also has the right or ability to influ-
ence, direct, or control the civil action.’’. 
(d) DISCOVERY LIMITS.— 
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(1) AMENDMENT.—Chapter 29 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 299A. Discovery in patent infringement action 
‘‘(a) DISCOVERY
IN PATENT INFRINGEMENT AC-
TION.—Except as provided in subsection (b), in a civil ac-
tion arising under any Act of Congress relating to patents, 
if the court determines that a ruling relating to the con-
struction of terms used in a patent claim asserted in the 
complaint is required, discovery shall be limited, until such 
ruling is issued, to information necessary for the court to 
determine the meaning of the terms used in the patent 
claim, including any interpretation of those terms used to 
support the claim of infringement. 
‘‘(b) DISCRETION TO EXPAND SCOPE
OF DIS-
COVERY.— 
‘‘(1) TIMELY
RESOLUTION
OF
ACTIONS.—If, 
under any provision of Federal law (including the 
amendments made by the Drug Price Competition 
and Patent Term Restoration Act of 1984 (Public 
Law 98–417)), resolution within a specified period 
of time of a civil action arising under any Act of 
Congress relating to patents will necessarily affect 
the rights of a party with respect to the patent, the 
court may permit discovery, in addition to the dis-
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covery authorized under subsection (a), before the 
ruling described in subsection (a) is issued as nec-
essary to ensure timely resolution of the action. 
‘‘(2) RESOLUTION
OF
MOTIONS.—When nec-
essary to resolve a motion properly raised by a party 
before a ruling relating to the construction of terms 
described in subsection (a), the court may allow lim-
ited discovery in addition to the discovery authorized 
under subsection (a) as necessary to resolve the mo-
tion.’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 29 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘299A. Discovery in patent infringement action.’’. 
(e) EFFECTIVE DATE.—Except as otherwise provided 
in this section, the amendments made by this section shall 
take effect on the date of the enactment of this Act and 
shall apply to any action for which a complaint is filed 
on or after that date. 
SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 
(a) AMENDMENTS.—Section 290 of title 35, United 
States Code, is amended— 
(1) in the heading, by striking ‘‘suits’’ and in-
serting ‘‘suits; disclosure of interests’’; 
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(2) by striking ‘‘The clerks’’ and inserting ‘‘(a) 
NOTICE OF PATENT SUITS.—The clerks’’; and 
(3) by adding at the end the following new sub-
sections: 
‘‘(b) INITIAL DISCLOSURE.— 
‘‘(1) IN GENERAL.—Except as provided in para-
graph (2), upon the filing of an initial complaint for 
patent infringement, the plaintiff shall disclose to 
the Patent and Trademark Office, the court, and 
each adverse party the identity of each of the fol-
lowing: 
‘‘(A) The assignee of the patent or patents 
at issue. 
‘‘(B) Any entity with a right to sublicense 
or enforce the patent or patents at issue. 
‘‘(C) Any entity, other than the plaintiff, 
that the plaintiff knows to have a financial in-
terest in the patent or patents at issue or the 
plaintiff. 
‘‘(D) The ultimate parent entity of any as-
signee identified under subparagraph (A) and 
any entity identified under subparagraphs (B) 
and (C). 
‘‘(2) EXEMPTION.—The requirements of para-
graph (1) shall not apply with respect to a civil ac-
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tion filed under subsection (a) that includes a cause 
of action described under section 271(e)(2). 
‘‘(c) DISCLOSURE COMPLIANCE.— 
‘‘(1) PUBLICLY TRADED.—For purposes of sub-
section (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 re-
quirement. 
‘‘(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 infor-
mation identifies— 
‘‘(A) in the case of a partnership, the 
name of the partnership and the name and cor-
respondence address of each partner or other 
entity that holds more than a 5-percent share 
of that partnership; 
‘‘(B) in the case of a corporation, the 
name of the corporation, the location of incor-
poration, the address of the principal place of 
business, and the name of each officer of the 
corporation; and 
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‘‘(C) for each individual, the name and 
correspondence address of that individual. 
‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT-
ENT AND TRADEMARK OFFICE.— 
‘‘(1) IN GENERAL.—A plaintiff required to sub-
mit information under subsection (b) or a subse-
quent owner of the patent or patents at issue shall, 
not later than 90 days after any change in the as-
signee of the patent or patents at issue or an entity 
described under subparagraphs (B) and (D) of sub-
section (b)(1), submit to the Patent and Trademark 
Office the updated identification of such assignee or 
entity. 
‘‘(2) FAILURE TO COMPLY.—With respect to a 
patent for which the requirement of paragraph (1) 
has not been met— 
‘‘(A) the plaintiff or subsequent owner 
shall not be entitled to recover reasonable fees 
and other expenses under section 285 or in-
creased damages under section 284 with respect 
to infringing activities taking place during any 
period of noncompliance with paragraph (1), 
unless the denial of such damages or fees would 
be manifestly unjust; and 
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‘‘(B) the court shall award to a prevailing 
party accused of infringement reasonable fees 
and other expenses incurred to discover the up-
dated assignee or entity described under para-
graph (1), unless such sanctions would be un-
just. 
‘‘(e) DEFINITIONS.—In this section: 
‘‘(1) FINANCIAL INTEREST.—The term ‘finan-
cial interest’— 
‘‘(A) means— 
‘‘(i) with regard to a patent or pat-
ents, the right of a person to receive pro-
ceeds related to the assertion of the patent 
or patents, including a fixed or variable 
portion of such proceeds; and 
‘‘(ii) with regard to the plaintiff, di-
rect or indirect ownership or control by a 
person of more than 5 percent of such 
plaintiff; and 
‘‘(B) does not mean— 
‘‘(i) ownership of shares or other in-
terests in a mutual or common investment 
fund, unless the owner of such interest 
participates in the management of such 
fund; or 
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‘‘(ii) the proprietary interest of a pol-
icyholder in a mutual insurance company, 
of a depositor in a mutual savings associa-
tion, or a similar proprietary interest, un-
less the outcome of the proceeding could 
substantially affect the value of such inter-
est. 
‘‘(2) PROCEEDING.—The term ‘proceeding’ 
means all stages of a civil action, including pretrial 
and trial proceedings and appellate review. 
‘‘(3) ULTIMATE PARENT ENTITY.— 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent 
entity’ has the meaning given such term in sec-
tion 801.1(a)(3) of title 16, Code of Federal 
Regulations, or any successor regulation. 
‘‘(B) MODIFICATION OF DEFINITION.—The 
Director may modify the definition of ‘ultimate 
parent entity’ by regulation.’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The item relating to section 290 in the table of sections 
for chapter 29 of title 35, United States Code, is amended 
to read as follows: 
‘‘290. Notice of patent suits; disclosure of interests.’’. 
(c) REGULATIONS.—The Director may promulgate 
such regulations as are necessary to establish a registra-
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tion fee in an amount sufficient to recover the estimated 
costs of administering subsections (b) through (e) of sec-
tion 290 of title 35, United States Code, as added by sub-
section (a), to facilitate the collection and maintenance of 
the information required by such subsections, and to en-
sure the timely disclosure of such information to the pub-
lic. 
(d) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
6-month period beginning on the date of the enactment 
of this Act and shall apply to any action for which a com-
plaint is filed on or after such effective date. 
SEC. 5. CUSTOMER-SUIT EXCEPTION. 
(a) AMENDMENT.—Section 296 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 296. Stay of action against customer 
‘‘(a) STAY OF ACTION AGAINST CUSTOMER.—Except 
as provided in subsection (d), in any civil action arising 
under any Act of Congress relating to patents, the court 
shall grant a motion to stay at least the portion of the 
action against a covered customer related to infringement 
of a patent involving a covered product or process if the 
following requirements are met: 
‘‘(1) The covered manufacturer and the covered 
customer consent in writing to the stay. 
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‘‘(1) IN GENERAL.—A stay entered pursuant to 
this section may be lifted upon grant of a motion 
based on a showing that— 
‘‘(A) the action involving the covered man-
ufacturer will not resolve a major issue in suit 
against the covered customer; or 
‘‘(B) the stay unreasonably prejudices and 
would be manifestly unjust to the party seeking 
to lift the stay. 
‘‘(2) SEPARATE
MANUFACTURER
ACTION
IN-
VOLVED.—In the case of a stay entered based on the 
participation of the covered manufacturer in a sepa-
rate action involving the same patent or patents re-
lated to the same covered product or process, a mo-
tion under this subsection may only be made if the 
court in such separate action determines the show-
ing required under paragraph (1) has been met. 
‘‘(d) EXEMPTION.—This section shall not apply to an 
action that includes a cause of action described under sec-
tion 271(e). 
‘‘(e) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed to limit the ability of a court to 
grant any stay, or expand any stay granted pursuant to 
this section, if otherwise permitted by law. 
‘‘(f) DEFINITIONS.—In this section: 
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‘‘(1) COVERED CUSTOMER.—The term ‘covered 
customer’ means a party accused of infringing a pat-
ent or patents in dispute based on a covered product 
or process. 
‘‘(2) COVERED
MANUFACTURER.—The term 
‘covered manufacturer’ means a person that manu-
factures or supplies, or causes the manufacture or 
supply of, a covered product or process or a relevant 
part of such product or process. 
‘‘(3) COVERED
PRODUCT
OR
PROCESS.—The 
term ‘covered product or process’ means a product, 
process, system, service, component, material, or ap-
paratus, or relevant part thereof, that— 
‘‘(A) is alleged to infringe the patent or 
patents in dispute; or 
‘‘(B) implements a process alleged to in-
fringe the patent or patents in dispute.’’. 
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, is 
amended by striking the item relating to section 296 and 
inserting the following: 
‘‘296. Stay of action against customer.’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall take effect on the date of the enactment 
of this Act and shall apply to any action for which a com-
plaint is filed on or after that date. 
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SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT AND 
RECOMMENDATIONS TO THE JUDICIAL CON-
FERENCE. 
(a) JUDICIAL CONFERENCE RULES
AND PROCE-
DURES ON DISCOVERY BURDENS AND COSTS.— 
(1) RULES
AND
PROCEDURES.—The Judicial 
Conference of the United States, using existing re-
sources, shall develop rules and procedures to imple-
ment the requirements described in paragraph (2) to 
address the asymmetries in discovery burdens and 
costs in any civil action arising under any Act of 
Congress relating to patents. Such rules and proce-
dures shall include how and when payment for docu-
ment discovery in addition to the discovery of core 
documentary evidence is to occur, and what informa-
tion must be presented to demonstrate financial ca-
pacity before permitting document discovery in addi-
tion to the discovery of core documentary evidence. 
(2) RULES AND PROCEDURES TO BE CONSID-
ERED.—The rules and procedures required under 
paragraph (1) shall include each of the following re-
quirements: 
(A) DISCOVERY OF CORE DOCUMENTARY 
EVIDENCE.—Each party to the action is enti-
tled to receive core documentary evidence and 
shall be responsible for the costs of producing 
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core documentary evidence within the posses-
sion or control of each such party. Each party 
to the action may seek nondocumentary dis-
covery as otherwise provided in the Federal 
Rules of Civil Procedure. 
(B) ELECTRONIC COMMUNICATION.—If the 
parties determine that the discovery of elec-
tronic communication is necessary, such dis-
covery shall occur after the parties have ex-
changed initial disclosures and core documen-
tary evidence and shall be in accordance with 
the following: 
(i) Any request for the production of 
electronic communication shall be specific 
and may not be a general request for the 
production of information relating to a 
product or business. 
(ii) Each request shall identify the 
custodian of the information requested, the 
search terms, and a time frame. The par-
ties shall cooperate to identify the proper 
custodians, the proper search terms, and 
the proper time frame. 
(iii) A party may not submit produc-
tion requests to more than 5 custodians, 
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unless the parties jointly agree to modify 
the number of production requests without 
leave of the court. 
(iv) The court may consider contested 
requests for up to 5 additional custodians 
per producing party, upon a showing of a 
distinct need based on the size, complexity, 
and issues of the case. 
(v) If a party requests the discovery 
of electronic communication for additional 
custodians beyond the limits agreed to by 
the parties or granted by the court, the re-
questing party shall bear all reasonable 
costs caused by such additional discovery. 
(C) ADDITIONAL DOCUMENT DISCOVERY.— 
(i) IN GENERAL.—Each party to the 
action may seek any additional document 
discovery otherwise 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 par-
ties mutually agree otherwise, no party 
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may be permitted additional document dis-
covery unless such a party posts a bond, or 
provides other security, in an amount suffi-
cient 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) LIMITS
ON
ADDITIONAL
DOCU-
MENT DISCOVERY.—A court, upon motion, 
may determine that a request for addi-
tional document discovery is excessive, ir-
relevant, or otherwise abusive and may set 
limits on such additional document dis-
covery. 
(iv) GOOD CAUSE MODIFICATION.—A 
court, upon motion and for good cause 
shown, may modify the requirements of 
subparagraphs (A) and (B) and any defini-
tion under paragraph (3). Not later than 
30 days after the pretrial conference under 
Rule 16 of the Federal Rules of Civil Pro-
cedure, the parties shall jointly submit any 
proposed modifications of the requirements 
of subparagraphs (A) and (B) and any def-
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inition under paragraph (3), unless the 
parties do not agree, in which case each 
party shall submit any proposed modifica-
tion of such party and a summary of the 
disagreement over the modification. 
(v) COMPUTER CODE.—A court, upon 
motion and for good cause shown, may de-
termine that computer code should be in-
cluded in the discovery of core documen-
tary evidence. The discovery of computer 
code shall occur after the parties have ex-
changed initial disclosures and other core 
documentary evidence. 
(D) DISCOVERY SEQUENCE AND SCOPE.— 
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 docu-
mentary evidence should be completed. 
(ii) Whether additional document dis-
covery will be sought under subparagraph 
(C). 
(iii) Any issues about infringement, 
invalidity, or damages that, if resolved be-
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fore the additional discovery described in 
subparagraph (C) commences, might sim-
plify or streamline the case, including the 
identification of any terms or phrases re-
lating to any patent claim at issue to be 
construed by the court and whether the 
early construction of any of those terms or 
phrases would be helpful. 
(3) DEFINITIONS.—In this subsection: 
(A) CORE DOCUMENTARY EVIDENCE.—In 
this subsection, the term ‘‘core documentary 
evidence’’— 
(i) includes— 
(I) documents relating to the 
conception of, reduction to practice of, 
and application for, the patent or pat-
ents at issue; 
(II) documents sufficient to show 
the technical operation of the product 
or process identified in the complaint 
as infringing the patent or patents at 
issue; 
(III) documents relating to po-
tentially invalidating prior art; 
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(IV) documents relating to any 
licensing of, or other transfer of rights 
to, the patent or patents at issue be-
fore the date on which the complaint 
is filed; 
(V) documents sufficient to show 
profit attributable to the claimed in-
vention of the patent or patents at 
issue; 
(VI) documents relating to any 
knowledge by the accused infringer of 
the patent or patents at issue before 
the date on which the complaint is 
filed; 
(VII) documents relating to any 
knowledge by the patentee of infringe-
ment of the patent or patents at issue 
before the date on which the com-
plaint is filed; 
(VIII) documents relating to any 
licensing term or pricing commitment 
to which the patent or patents may be 
subject through any agency or stand-
ard-setting body; and 
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(IX) 
documents 
sufficient 
to 
show any marking or other notice pro-
vided of the patent or patents at 
issue; and 
(ii) does not include computer code, 
except as specified in paragraph (2)(C)(v). 
(B) ELECTRONIC
COMMUNICATION.—The 
term ‘‘electronic communication’’ means any 
form of electronic communication, including 
email, text message, or instant message. 
(4) 
IMPLEMENTATION
BY
THE
DISTRICT 
COURTS.—Not later than 6 months after the date on 
which the Judicial Conference has developed the 
rules and procedures required by this subsection, 
each United States district court and the United 
States Court of Federal Claims shall revise the ap-
plicable local rules for such court to implement such 
rules and procedures. 
(5) AUTHORITY FOR JUDICIAL CONFERENCE TO 
REVIEW
AND
MODIFY.—The Judicial Conference 
shall study the efficacy of the rules and procedures 
required by this subsection during the first 4 years 
following the implementation of such rules and pro-
cedures by the district courts and the United States 
Court of Federal Claims. The Judicial Conference 
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may modify such rules and procedures following 
such 4-year period. 
(b) JUDICIAL CONFERENCE PATENT CASE MANAGE-
MENT.—The Judicial Conference of the United States, 
using existing resources, shall develop case management 
procedures to be implemented by the United States dis-
trict courts and the United States Court of Federal Claims 
for any civil action arising under any Act of Congress re-
lating 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 dis-
position of the case. 
(c) REVISION
OF FORM
FOR PATENT INFRINGE-
MENT.— 
(1) ELIMINATION
OF
FORM.—The Supreme 
Court, using existing resources, shall eliminate Form 
18 in the Appendix to the Federal Rules of Civil 
Procedure (relating to Complaint for Patent In-
fringement), effective on the date of the enactment 
of this Act. 
(2) REVISED FORM.—The Supreme Court may 
prescribe a new form or forms setting out model al-
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legations of patent infringement that, at a minimum, 
notify accused infringers of the asserted claim or 
claims, the products or services accused of infringe-
ment, and the plaintiff’s theory for how each ac-
cused product or service meets each limitation of 
each asserted claim. The Judicial Conference should 
exercise the authority under section 2073 of title 28, 
United States Code, to make recommendations with 
respect to such new form or forms. 
(d) PROTECTION OF INTELLECTUAL-PROPERTY LI-
CENSES IN BANKRUPTCY.— 
(1) IN GENERAL.—Section 1520(a) of title 11, 
United States Code, is amended— 
(A) in paragraph (3), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (4), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by inserting at the end the following 
new paragraph: 
‘‘(5) section 365(n) applies to intellectual prop-
erty of which the debtor is a licensor or which the 
debtor has transferred.’’. 
(2) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to any action 
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for which a complaint is pending on, or filed on or 
after, such date of enactment. 
SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND IN-
FORMATION ACCESS. 
(a) SMALL
BUSINESS
EDUCATION
AND
OUT-
REACH.— 
(1) RESOURCES FOR SMALL BUSINESS.—Using 
existing resources, the Director shall develop edu-
cational resources for small businesses to address 
concerns arising from patent infringement. 
(2) SMALL BUSINESS PATENT OMBUDSMAN.— 
The Patent Ombudsman Program established under 
section 28 of the Leahy-Smith America Invents Act 
(Public Law 112–29; 125 Stat. 339; 35 U.S.C. 2 
note) shall coordinate with the existing small busi-
ness outreach programs of the Office to provide edu-
cation and awareness on abusive patent litigation 
practices. 
(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 
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with respect to each patent at issue in such case, the 
Director shall include— 
(A) information disclosed pursuant to sub-
sections (b) and (d) of section 290 of title 35, 
United States Code, as added by section 4(a) of 
this Act; and 
(B) any other information the Director de-
termines to be relevant. 
(2) FORMAT.—In order to promote accessibility 
for the public, the information described in para-
graph (1) shall be searchable by patent number, pat-
ent art area, and entity. 
SEC. 8. 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 con-
sultation with the Secretary of Commerce, the Sec-
retary of the Treasury, the Chairman of the Securi-
ties 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 account-
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ability 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 over-
sight requirements that may be placed on the 
patent secondary market, including on the par-
ticipants 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) SUBMISSION OF STUDY.—Not later than 1 
year after the date of the 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 PATENTS OWNED BY THE UNITED 
STATES GOVERNMENT.— 
(1) STUDY REQUIRED.—The Director, in con-
sultation with the heads of relevant agencies and in-
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terested parties, shall, using existing resources of the 
Office, conduct a study on patents owned by the 
United States Government that— 
(A) examines how such patents are li-
censed and sold, and any litigation relating to 
the licensing or sale of such patents; 
(B) provides legislative and administrative 
recommendations on whether there should be 
restrictions placed on patents acquired from the 
United States Government; 
(C) examines whether or not each relevant 
agency maintains adequate records on the pat-
ents owned by such agency, specifically whether 
such agency addresses licensing, assignment, 
and Government grants for technology related 
to such patents; and 
(D) provides recommendations to ensure 
that each relevant agency has an adequate 
point of contact that is responsible for man-
aging the patent portfolio of the agency. 
(2) REPORT
ON
STUDY.—Not later than 6 
months after the date of the enactment of this Act, 
the Director shall submit to the Committee on the 
Judiciary of the House of Representatives and the 
Committee on the Judiciary of the Senate a report 
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on the findings and recommendations of the Director 
from the study required under paragraph (1). 
(c) STUDY ON PATENT QUALITY AND ACCESS TO 
THE BEST INFORMATION DURING EXAMINATION.— 
(1) GAO STUDY.—The Comptroller General of 
the United States shall conduct a study on patent 
examination at the Office and the technologies avail-
able to improve examination and improve patent 
quality. 
(2) CONTENTS OF THE STUDY.—The study re-
quired under paragraph (1) shall include the fol-
lowing: 
(A) An examination of patent quality at 
the Office. 
(B) An examination of ways to improve 
quality, specifically through technology, that 
shall include examining best practices at foreign 
patent offices and the use of existing off-the- 
shelf technologies to improve patent examina-
tion. 
(C) A description of how patents are clas-
sified. 
(D) An examination of procedures in place 
to prevent double patenting through filing by 
applicants in multiple art areas. 
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(E) An examination of the types of off-the- 
shelf prior art databases and search software 
used by foreign patent offices and governments, 
particularly in Europe and Asia, and whether 
those databases and search tools could be used 
by the Office to improve patent examination. 
(F) An examination of any other areas the 
Comptroller General determines to be relevant. 
(3) REPORT TO CONGRESS.—Not later than 6 
months after the date of the enactment of this Act, 
the Comptroller General shall submit to the Com-
mittee on the Judiciary of the House of Representa-
tives and the Committee on the Judiciary of the 
Senate a report on the findings and recommenda-
tions from the study required by this subsection, in-
cluding recommendations for any changes to laws 
and regulations that will improve the examination of 
patent applications and patent quality. 
SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 
THE LEAHY-SMITH AMERICA INVENTS ACT. 
(a) REPEAL OF CIVIL ACTION TO OBTAIN A PAT-
ENT.— 
(1) REPEAL.—Section 145 of title 35, United 
States Code, is repealed. 
(2) CONFORMING AMENDMENTS.— 
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(A) FEDERAL
CIRCUIT
JURISDICTION.— 
Section 1295(a)(4) of title 28, United States 
Code, is amended— 
(i) in subparagraph (A), by striking 
‘‘except that an applicant or a party’’ and 
all that follows through the end of the sub-
paragraph and inserting the following: ‘‘ex-
cept that a party to a derivation pro-
ceeding may also have remedy by civil ac-
tion pursuant to section 146 of title 35; an 
appeal under this subparagraph of a deci-
sion of the Board with respect to a deriva-
tion proceeding shall waive the right of 
such party to proceed under section 146 of 
title 35;’’; and 
(ii) in subparagraph (C), by striking 
‘‘section 145, 146, or’’ and inserting ‘‘sec-
tion 146 or’’. 
(B) FEDERAL CIRCUIT APPEAL.—Section 
141(a) of title 35, United States Code, is 
amended— 
(i) by striking ‘‘may appeal the 
Board’s decision to’’ and inserting ‘‘may 
appeal the Board’s decision only to’’; and 
(ii) by striking the second sentence. 
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(C) ADJUSTMENT OF PATENT TERM.—Sec-
tion 154(b)(1)(A)(iii) of title 35, United States 
Code, is amended by striking ‘‘section 141, 145, 
or 146’’ and inserting ‘‘section 141 or 146’’. 
(D) CLERICAL AMENDMENT.—The table of 
sections for chapter 13 of title 35, United 
States Code, is amended by repealing the item 
relating to section 145. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall apply to any proceeding in 
which a decision is made by the Patent Trial and 
Appeal Board on or after the date of the enactment 
of this Act. 
(b) POST-GRANT REVIEW AMENDMENT.—Section 
325(e)(2) of title 35, United States Code is amended by 
striking ‘‘or reasonably could have raised’’. 
(c) USE OF DISTRICT-COURT CLAIM CONSTRUCTION 
IN POST-GRANT AND INTER PARTES REVIEWS.— 
(1) INTER PARTES REVIEW.—Section 316(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (12), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (13), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
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(C) by adding at the end the following new 
paragraph: 
‘‘(14) providing that for all purposes under this 
chapter— 
‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
cluding 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 
‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(2) POST-GRANT
REVIEW.—Section 326(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (11), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (12), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by adding at the end the following new 
paragraph: 
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‘‘(13) providing that for all purposes under this 
chapter— 
‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
cluding 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 
‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(3) TECHNICAL
AND
CONFORMING
AMEND-
MENT.—Section 18(a)(1)(A) of the Leahy-Smith 
America Invents Act (Public Law 112–29; 126 Stat. 
329) is amended by striking ‘‘Section 321(c)’’ and 
inserting ‘‘Sections 321(c) and 326(a)(13)’’. 
(4) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 90-day period beginning on the date of 
the enactment of this Act, and shall apply to any 
proceeding under chapter 31 or 32 of title 35, 
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United States Code, for which the petition for review 
is filed on or after such effective date. 
(d) CODIFICATION
OF
THE
DOUBLE-PATENTING 
DOCTRINE FOR FIRST-INVENTOR-TO-FILE PATENTS.— 
(1) AMENDMENT.—Chapter 10 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 106. Prior art in cases of double patenting 
‘‘A claimed invention of a patent issued under section 
151 (referred to as the ‘first patent’) that is not prior art 
to a claimed invention of another patent (referred to as 
the ‘second patent’) shall be considered prior art to the 
claimed invention of the second patent for the purpose of 
determining the nonobviousness of the claimed invention 
of the second patent under section 103 if— 
‘‘(1) the claimed invention of the first patent 
was effectively filed under section 102(d) on or be-
fore the effective filing date of the claimed invention 
of the second patent; 
‘‘(2) either— 
‘‘(A) the first patent and second patent 
name the same inventor; or 
‘‘(B) the claimed invention of the first pat-
ent would constitute prior art to the claimed in-
vention of the second patent under section 
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102(a)(2) 
if 
an 
exception 
under 
section 
102(b)(2) were deemed to be inapplicable and 
the claimed invention of the first patent was, or 
were deemed to be, effectively filed under sec-
tion 102(d) before the effective filing date of 
the claimed invention of the second patent; and 
‘‘(3) the patentee of the second patent has not 
disclaimed the rights to enforce the second patent 
independently from, and beyond the statutory term 
of, the first patent.’’. 
(2) REGULATIONS.—The Director shall promul-
gate regulations setting forth the form and content 
of any disclaimer required for a patent to be issued 
in compliance with section 106 of title 35, United 
States Code, as added by paragraph (1). Such regu-
lations shall apply to any disclaimer filed after a 
patent has issued. A disclaimer, when filed, shall be 
considered for the purpose of determining the valid-
ity of the patent under section 106 of title 35, 
United States Code. 
(3) CONFORMING AMENDMENT.—The table of 
sections for chapter 10 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘106. Prior art in cases of double patenting.’’. 
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(4) EXCLUSIVE RULE.—A patent subject to sec-
tion 106 of title 35, United States Code, as added 
by paragraph (1), shall not be held invalid on any 
nonstatutory, double-patenting ground. 
(5) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to a patent or 
patent application only if both the first and second 
patents described in section 106 of title 35, United 
States Code, as added by paragraph (1), are patents 
or patent applications that are described in section 
3(n)(1) of the Leahy-Smith America Invents Act (35 
U.S.C. 100 note). 
(e) COVERED
BUSINESS
METHOD
PATENT
RE-
VIEWS.— 
(1) LIMITATION; REPEAL.— 
(A) LIMITATION TO FIRST-TO-INVENT PAT-
ENTS.—Section 18(a)(2) of the Leahy-Smith 
America Invents Act is amended by striking 
‘‘shall not apply to a patent described in section 
6(f)(2)(A) of this Act during the period in 
which a petition for post-grant review of that 
patent would satisfy the requirements of section 
321(c) of title 35, United States Code’’ and in-
serting ‘‘shall not apply to a patent that is de-
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scribed in section 3(n)(1) of this Act (but is not 
described in section 3(n)(2) of this Act)’’. 
(B) REPEAL OF SUNSET.—Section 18(a) 
of the Leahy-Smith America Invents Act (35 
U.S.C. 321 note) is amended by striking para-
graph (3). 
(C) EFFECTIVE DATE.—The amendments 
made by subparagraphs (A) and (B) shall take 
effect on the date of the enactment of this Act. 
(2) DEFINITION; CLARIFICATION.— 
(A) DEFINITION.—For purposes of section 
18(d) of the Leahy-Smith America Invents Act, 
the words ‘‘used in the practice, administration, 
or management of a financial product or serv-
ice’’ shall be construed consistently with the in-
stitution decision of the Patent Trial and Ap-
peal Board of the United States Patent and 
Trademark Office in SAP America, Inc. v. 
Versata Dev. Group, Inc., CBM2012–00001, 
Paper 36 (January 9, 2013). 
(B) 
SCOPE
OF
PRIOR
ART.—Section 
18(a)(1)(C)(i) of the Leahy-Smith America In-
vents Act is amended by striking ‘‘section 
102(a)’’ and inserting ‘‘subsection (a), (d), or 
(e) of section 102’’. 
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(C) EFFECTIVE DATE.—Subparagraph (A) 
and the amendment made by subparagraph (B) 
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. 
(3) 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 In-
vents Act (35 U.S.C. 321 note). 
(f) CLARIFICATION OF LIMITS ON PATENT TERM AD-
JUSTMENT.— 
(1) AMENDMENTS.—Section 154(b)(1)(B) of 
title 35, United States Code, is amended— 
(A) in the matter preceding clause (i), by 
striking ‘‘not including—’’ and inserting ‘‘the 
term of the patent shall be extended 1 day for 
each day after the end of that 3-year period 
until the patent is issued, not including—’’; 
(B) in clause (i), by striking ‘‘consumed by 
continued examination of the application re-
quested by the applicant’’ and inserting ‘‘con-
sumed after continued examination of the appli-
cation is requested by the applicant’’; 
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(C) in clause (iii), by striking the comma 
at the end and inserting a period; and 
(D) by striking the matter following clause 
(iii). 
(2) EFFECTIVE DATE.—The amendments made 
by this subsection shall apply to any patent applica-
tion or patent that is pending on, or filed on or 
after, the date of the enactment of this Act. 
(g) CLARIFICATION OF JURISDICTION.— 
(1) IN GENERAL.—The Federal interest in pre-
venting inconsistent final judicial determinations as 
to the legal force or effect of the claims in a patent 
presents a substantial Federal issue that is impor-
tant to the Federal system as a whole. 
(2) APPLICABILITY.—Paragraph (1)— 
(A) shall apply to all cases filed on, after, 
or pending on, the date of the enactment of this 
Act; and 
(B) shall not apply to a case in which a 
Federal court has issued a ruling on whether 
the case or a claim arises under any Act of 
Congress relating to patents or plant variety 
protection before the date of the enactment of 
this Act. 
(h) TECHNICAL CORRECTIONS.— 
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(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’’ and inserting ‘‘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 No. 112–29). 
(2) INVENTOR’S OATH OR DECLARATION.— 
(A) AMENDMENT.—Subsection (g)(1) of 
section 115 of title 35, United States Code, is 
amended— 
(i) by striking ‘‘claims the benefit’’ 
and inserting ‘‘is entitled, as to each inven-
tion claimed in the application, to the ben-
efit’’; and 
(ii) in subparagraph (A), by striking 
‘‘meeting the requirements of subsection 
(a) was executed by the individual and was 
filed in connection with the earlier-filed ap-
plication’’ and inserting the following: ‘‘ex-
ecuted by or on behalf of the individual 
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was filed in connection with the earlier- 
filed application and meets the require-
ments of this section as effective on the 
date such oath or declaration was filed’’. 
(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 No. 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 inven-
tors named’’ and inserting ‘‘that names the in-
ventor 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’’ and inserting ‘‘names the inven-
tor 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 
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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’’ and inserting ‘‘or a joint in-
ventor’’. 
(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 No. 112–29). 
(5) SPECIFICATION.—Notwithstanding section 
4(e) of the Leahy-Smith America Invents Act (Pub-
lic Law 112–29; 125 Stat. 297), the amendments 
made by subsections (c) and (d) of section 4 of such 
Act shall apply to any proceeding or matter, that is 
pending on, or filed on or after, the date of the en-
actment of this Act. 
(6) PATENT OWNER RESPONSE.— 
(A) CONDUCT
OF
INTER
PARTES
RE-
VIEW.—Paragraph (8) of section 316(a) of title 
35, United States Code, is amended by striking 
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‘‘the petition under section 313’’ and inserting 
‘‘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’’ and inserting 
‘‘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. 
(7) INTERNATIONAL APPLICATIONS.— 
(A) AMENDMENTS.—Section 202(b) of the 
Patent Law Treaties Implementation Act of 
2012 (Public Law 112–211; 126 Stat. 1536) is 
amended— 
(i) by striking paragraph (7); and 
(ii) by redesignating paragraphs (8) 
and (9) as paragraphs (7) and (8). 
(B) EFFECTIVE DATE.—The amendments 
made by subparagraph (A) shall be effective as 
if included in title II of the Patent Law Trea-
ties Implementation Act of 2012 (Public Law 
112–21). 
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rfrederick on DSK6VPTVN1PROD with BILLS
SEC. 10. EFFECTIVE DATE. 
Except as otherwise provided in this Act, the provi-
sions of this Act shall take effect on the date of the enact-
ment of this Act, and shall apply to any patent issued, 
or any action filed, on or after that date. 
Æ 
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