‘‘333. Effect of decisions rendered in civil action on future post-grant review 
proceedings. 
‘‘334. Effect of final decision on future proceedings. 
‘‘335. Appeal. 
‘‘§ 321. Petition for post-grant review 
‘‘Subject to sections 322, 324, 332, and 333, a per-
son who is not the patent owner may file with the Office 
a petition for cancellation seeking to institute a post-grant 
review proceeding to cancel as unpatentable any claim of 
a patent on any ground that could be raised under para-
graph (2) or (3) of section 282(b) (relating to invalidity 
of the patent or any claim). The Director shall establish, 
by regulation, fees to be paid by the person requesting 
the proceeding, in such amounts as the Director deter-
mines to be reasonable. 
‘‘§ 322. Timing and bases of petition 
‘‘A post-grant proceeding may be instituted under 
this chapter pursuant to a cancellation petition filed under 
section 321 only if— 
‘‘(1) the petition is filed not later than 12 
months after the grant of the patent or issuance of 
a reissue patent, as the case may be; 
‘‘(2)(A) the petitioner establishes a substantial 
reason to believe that the continued existence of the 
challenged claim in the petition causes or is likely to 
cause the petitioner significant economic harm; or 
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‘‘(B) the petitioner has received notice from the 
patent holder alleging infringement by the petitioner 
of the patent; or 
‘‘(3) the patent owner consents in writing to the 
proceeding. 
‘‘§ 323. Requirements of petition 
‘‘A cancellation petition filed under section 321 may 
be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 
321; 
‘‘(2) the petition identifies the cancellation peti-
tioner; and 
‘‘(3) the petition sets forth in writing the basis 
for the cancellation, identifying each claim chal-
lenged and providing such information as the Direc-
tor may require by regulation, and includes copies of 
patents and printed publications that the cancella-
tion petitioner relies upon in support of the petition; 
and 
‘‘(4) the petitioner provides copies of those doc-
uments to the patent owner or, if applicable, the 
designated representative of the patent owner. 
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‘‘§ 324. Prohibited filings 
‘‘A post-grant review proceeding may not be insti-
tuted under paragraph (1), (2), or (3) of section 322 if 
the petition for cancellation requesting the proceeding 
identifies the same cancellation petitioner and the same 
patent as a previous petition for cancellation filed under 
the same paragraph of section 322. 
‘‘§ 325. Submission of additional information; show-
ing of sufficient grounds 
‘‘The cancellation petitioner shall file such additional 
information with respect to the petition as the Director 
may require. The Director may not authorize a post-grant 
review proceeding to commence unless the Director deter-
mines that the information presented provides sufficient 
grounds to proceed. 
‘‘§ 326. Conduct of post-grant review proceedings 
‘‘(a) IN GENERAL.—The Director shall— 
‘‘(1) prescribe regulations, in accordance with 
section 2(b)(2), establishing and governing post- 
grant review proceedings under this chapter and 
their relationship to other proceedings under this 
title; 
‘‘(2) prescribe regulations setting forth the 
standards for showings of substantial reason to be-
lieve and significant economic harm under section 
322(2) and sufficient grounds under section 325; 
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‘‘(3) prescribe regulations establishing proce-
dures for the submission of supplemental informa-
tion after the petition for cancellation is filed; and 
‘‘(4) prescribe regulations setting forth proce-
dures for discovery of relevant evidence, including 
that such discovery shall be limited to evidence di-
rectly related to factual assertions advanced by ei-
ther party in the proceeding, and the procedures for 
obtaining such evidence shall be consistent with the 
purpose and nature of the proceeding. 
‘‘(b) 
POST-GRANT
REGULATIONS.—Regulations 
under subsection (a)(1)— 
‘‘(1) shall require that the final determination 
in a post-grant proceeding issue not later than one 
year after the date on which the post-grant review 
proceeding is instituted under this chapter, except 
that, for good cause shown, the Director may extend 
the 1-year period by not more than six months; 
‘‘(2) shall provide for discovery upon order of 
the Director; 
‘‘(3) shall prescribe sanctions for abuse of dis-
covery, abuse of process, or any other improper use 
of the proceeding, such as to harass or to cause un-
necessary delay or unnecessary increase in the cost 
of the proceeding; 
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‘‘(4) may provide for protective orders gov-
erning the exchange and submission of confidential 
information; and 
‘‘(5) shall ensure that any information sub-
mitted by the patent owner in support of any 
amendment entered under section 328 is made avail-
able to the public as part of the prosecution history 
of the patent. 
‘‘(c) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
on the economy, the integrity of the patent system, and 
the efficient administration of the Office. 
‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 
and Appeal Board shall, in accordance with section 6(b), 
conduct each post-grant review proceeding authorized by 
the Director. 
‘‘§ 327. Patent owner response 
‘‘After a post-grant proceeding under this chapter 
has been instituted with respect to a patent, the patent 
owner shall have the right to file, within a time period 
set by the Director, a response to the cancellation petition. 
The patent owner shall file with the response, through af-
fidavits or declarations, any additional factual evidence 
and expert opinions on which the patent owner relies in 
support of the response. 
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‘‘§ 328. Proof and evidentiary standards 
‘‘(a) IN GENERAL.—The presumption of validity set 
forth in section 282 shall not apply in a challenge to any 
patent claim under this chapter. 
‘‘(b) BURDEN OF PROOF.—The party advancing a 
proposition under this chapter shall have the burden of 
proving that proposition by a preponderance of the evi-
dence. 
‘‘§ 329. Amendment of the patent 
‘‘(a) IN GENERAL.—In response to a challenge in a 
petition for cancellation, the patent owner may file 1 mo-
tion to amend the patent in 1 or more of the following 
ways: 
‘‘(1) Cancel any challenged patent claim. 
‘‘(2) For each challenged claim, propose a sub-
stitute claim. 
‘‘(3) Amend the patent drawings or otherwise 
amend the patent other than the claims. 
‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 
amend may be permitted only for good cause shown. 
‘‘(c) SCOPE OF CLAIMS.—An amendment under this 
section may not enlarge the scope of the claims of the pat-
ent or introduce new matter. 
‘‘§ 330. Decision of the Board 
‘‘If the post-grant review proceeding is instituted and 
not dismissed under this chapter, the Patent Trial and 
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Appeal Board shall issue a final written decision with re-
spect to the patentability of any patent claim challenged 
and any new claim added under section 329. 
‘‘§ 331. Effect of decision 
‘‘(a) IN GENERAL.—If the Patent Trial and Appeal 
Board issues a final decision under section 330 and the 
time for appeal has expired or any appeal proceeding has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable and incorporating in the patent by op-
eration of the certificate any new claim determined to be 
patentable. 
‘‘(b) NEW CLAIMS.—Any new claim held to be pat-
entable and incorporated into a patent in a post-grant re-
view proceeding shall have the same effect as that speci-
fied in section 252 for reissued patents on the right of 
any person who made, purchased, offered to sell, or used 
within the United States, or imported into the United 
States, anything patented by such new claim, or who made 
substantial preparations therefore, prior to issuance of a 
certificate under subsection (a) of this section. 
‘‘§ 332. Relationship to other pending proceedings 
‘‘Notwithstanding subsection 135(a), sections 251 
and 252, and chapter 30, the Director may determine the 
manner in which any reexamination proceeding, reissue 
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proceeding, interference proceeding (commenced before 
the effective date of the Patent Reform Act of 2007), deri-
vation proceeding, or post-grant review proceeding, that 
is pending during a post-grant review proceeding, may 
proceed, including providing for stay, transfer, consolida-
tion, or termination of any such proceeding. 
‘‘§ 333. Effect of decisions rendered in civil action on 
future post-grant review proceedings 
‘‘If a final decision has been entered against a party 
in a civil action arising in whole or in part under section 
1338 of title 28 establishing that the party has not sus-
tained its burden of proving the invalidity of any patent 
claim— 
‘‘(1) that party to the civil action and the 
privies of that party may not thereafter request a 
post-grant review proceeding on that patent claim on 
the basis of any grounds, under the provisions of 
section 311, which that party or the privies of that 
party raised or had actual knowledge of; and 
‘‘(2) the Director may not thereafter maintain 
a post-grant review proceeding previously requested 
by that party or the privies of that party on the 
basis of such grounds. 
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‘‘§ 334. Effect of final decision on future proceedings 
‘‘(a) IN GENERAL.—If a final decision under section 
330 is favorable to the patentability of any original or new 
claim of the patent challenged by the cancellation peti-
tioner, the cancellation petitioner may not thereafter, 
based on any ground which the cancellation petitioner 
raised during the post-grant review proceeding— 
‘‘(1) request or pursue a reexamination of such 
claim under chapter 31; 
‘‘(2) request or pursue a derivation proceeding 
with respect to such claim; 
‘‘(3) request or pursue a post-grant review pro-
ceeding under this chapter with respect to such 
claim; or 
‘‘(4) assert the invalidity of any such claim, in 
any civil action arising in whole or in part under sec-
tion 1338 of title 28. 
‘‘(b) EXTENSION OF PROHIBITION.—If the final deci-
sion is the result of a petition for cancellation filed on the 
basis of paragraph (2) of section 322, the prohibition 
under this section shall extend to any ground which the 
cancellation petitioner raised during the post-grant review 
proceeding. 
‘‘§ 335. Appeal 
‘‘A party dissatisfied with the final determination of 
the Patent Trial and Appeal Board in a post-grant pro-
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ceeding under this chapter may appeal the determination 
under sections 141 through 144. Any party to the post- 
grant proceeding shall have the right to be a party to the 
appeal.’’. 
(f) CONFORMING AMENDMENT.—The table of chap-
ters for part III is amended by adding at the end the fol-
lowing: 
‘‘32. Post-Grant Review Proceedings .........................................
321’’. 
(g) REGULATIONS AND EFFECTIVE DATE.— 
(1) REGULATIONS.—The Under Secretary of 
Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office (in 
this subsection referred to as the ‘‘Director’’) shall, 
not later than the date that is 1 year after the date 
of the enactment of this Act, issue regulations to 
carry out chapter 32 of title 35, United States Code, 
as added by subsection (e) of this section 
(2) APPLICABILITY.—The amendments made 
by subsection (e) shall take effect on the date that 
is 1 year after the date of the enactment of this Act 
and shall apply to patents issued before, on, or after 
that date, except that, in the case of a patent issued 
before that date, a petition for cancellation under 
section 321 of title 35, United States Code, may be 
filed only if a circumstance described in paragraph 
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(2), (3), or (4) of section 322 of title 35, United 
States Code, applies to the petition. 
(3) PENDING INTERFERENCES.—The Director 
shall determine the procedures under which inter-
ferences commenced before the effective date under 
paragraph (2) are to proceed, including whether any 
such interference is to be dismissed without preju-
dice to the filing of a cancellation petition for a post- 
grant opposition proceeding under chapter 32 of title 
35, United States Code, or is to proceed as if this 
Act had not been enacted. The Director shall include 
such procedures in regulations issued under para-
graph (1). 
SEC. 7. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD. 
(a) DEFINITIONS.—Section 100 (as amended by this 
Act) is further amended— 
(1) in subsection (e), by striking ‘‘or inter 
partes reexamination under section 311’’; 
(2) by adding at the end the following: 
‘‘(k) The term ‘cancellation petitioner’ means the real 
party in interest requesting cancellation of any claim of 
a patent under chapter 31 of this title and the privies of 
the real party in interest.’’. 
(b) PATENT TRIAL AND APPEAL BOARD.—Section 6 
is amended to read as follows: 
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‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) ESTABLISHMENT
AND COMPOSITION.—There 
shall be in the Office a Patent Trial and Appeal Board. 
The Director, the Deputy Director, the Commissioner for 
Patents, the Commissioner for Trademarks, and the ad-
ministrative patent judges shall constitute the Patent 
Trial and Appeal Board. The administrative patent judges 
shall be persons of competent legal knowledge and sci-
entific ability who are appointed by the Director. Any ref-
erence in any Federal law, Executive order, rule, regula-
tion, or delegation of authority, or any document of or 
pertaining to the Board of Patent Appeals and Inter-
ferences is deemed to refer to the Patent Trial and Appeal 
Board. 
‘‘(b) DUTIES.—The Patent Trial and Appeal Board 
shall— 
‘‘(1) on written appeal of an applicant, review 
adverse decisions of examiners upon application for 
patents; 
‘‘(2) on written appeal of a patent owner, re-
view adverse decisions of examiners upon patents in 
reexamination proceedings under chapter 30; and 
‘‘(3) determine priority and patentability of in-
vention in derivation proceedings under subsection 
135(a); and 
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