SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Leahy-Smith America Invents 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. First inventor to file. 
Sec. 4. Inventor’s oath or declaration. 
Sec. 5. Defense to infringement based on prior commercial use. 
Sec. 6. Post-grant review proceedings. 
Sec. 7. Patent Trial and Appeal Board. 
Sec. 8. Preissuance submissions by third parties. 
Sec. 9. Venue. 
Sec. 10. Fee setting authority. 
Sec. 11. Fees for patent services. 
Sec. 12. Supplemental examination. 
Sec. 13. Funding agreements. 
Sec. 14. Tax strategies deemed within the prior art. 
Sec. 15. Best mode requirement. 
Sec. 16. Marking. 
Sec. 17. Advice of counsel. 
Sec. 18. Transitional program for covered business method patents. 
Sec. 19. Jurisdiction and procedural matters. 
Sec. 20. Technical amendments. 
Sec. 21. Travel expenses and payment of administrative judges. 
Sec. 22. Patent and Trademark Office funding. 
Sec. 23. Satellite offices. 
Sec. 24. Designation of Detroit satellite office. 
Sec. 25. Priority examination for important technologies. 
Sec. 26. Study on implementation. 
Sec. 27. Study on genetic testing. 
Sec. 28. Patent Ombudsman Program for small business concerns. 
Sec. 29. Establishment of methods for studying the diversity of applicants. 
Sec. 30. Sense of Congress. 
Sec. 31. USPTO study on international patent protections for small businesses. 
Sec. 32. Pro bono program. 
Sec. 33. Limitation on issuance of patents. 
Sec. 34. Study of patent litigation. 
Sec. 35. Effective date. 
Sec. 36. Budgetary effects. 
Sec. 37. Calculation of 60-day period for application of patent term extension. 
SEC. 2. DEFINITIONS. 
In this Act:
(1) DIRECTOR.—The term ‘‘Director’’ means 
the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent 
and Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
(3) PATENT PUBLIC ADVISORY COMMITTEE.— 
The term ‘‘Patent Public Advisory Committee’’ 
means the Patent Public Advisory Committee estab-
lished under section 5(a) of title 35, United States 
Code. 
(4) TRADEMARK
ACT
OF
1946.—The term 
‘‘Trademark Act of 1946’’ means the Act entitled 
‘‘An Act to provide for the registration and protec-
tion of trademarks used in commerce, to carry out 
the provisions of certain international conventions, 
and for other purposes’’, approved July 5, 1946 (15 
U.S.C. 1051 et seq.) (commonly referred to as the 
‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 
(5) 
TRADEMARK
PUBLIC
ADVISORY
COM-
MITTEE.—The term ‘‘Trademark Public Advisory 
Committee’’ means the Trademark Public Advisory 
Committee established under section 5(a) of title 35, 
United States Code.
SEC. 3. FIRST INVENTOR TO FILE. 
(a) DEFINITIONS.—Section 100 of title 35, United 
States Code, is amended— 
(1) in subsection (e), by striking ‘‘or inter 
partes reexamination under section 311’’; and 
(2) by adding at the end the following: 
‘‘(f) The term ‘inventor’ means the individual or, if 
a joint invention, the individuals collectively who invented 
or discovered the subject matter of the invention. 
‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 
any 1 of the individuals who invented or discovered the 
subject matter of a joint invention. 
‘‘(h) The term ‘joint research agreement’ means a 
written contract, grant, or cooperative agreement entered 
into by 2 or more persons or entities for the performance 
of experimental, developmental, or research work in the 
field of the claimed invention. 
‘‘(i)(1) The term ‘effective filing date’ for a claimed 
invention in a patent or application for patent means— 
‘‘(A) if subparagraph (B) does not apply, the 
actual filing date of the patent or the application for 
the patent containing a claim to the invention; or 
‘‘(B) the filing date of the earliest application 
for which the patent or application is entitled, as to 
such invention, to a right of priority under section
119, 365(a), or 365(b) or to the benefit of an earlier 
filing date under section 120, 121, or 365(c). 
‘‘(2) The effective filing date for a claimed invention 
in an application for reissue or reissued patent shall be 
determined by deeming the claim to the invention to have 
been contained in the patent for which reissue was sought. 
‘‘(j) The term ‘claimed invention’ means the subject 
matter defined by a claim in a patent or an application 
for a patent.’’. 
(b) CONDITIONS FOR PATENTABILITY.— 
(1) IN
GENERAL.—Section 102 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 102. Conditions for patentability; novelty 
‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti-
tled to a patent unless— 
‘‘(1) the claimed invention was patented, de-
scribed in a printed publication, or in public use, on 
sale, or otherwise available to the public before the 
effective filing date of the claimed invention; or 
‘‘(2) the claimed invention was described in a 
patent issued under section 151, or in an application 
for patent published or deemed published under sec-
tion 122(b), in which the patent or application, as 
the case may be, names another inventor and was
effectively filed before the effective filing date of the 
claimed invention. 
‘‘(b) EXCEPTIONS.— 
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE-
FORE
THE
EFFECTIVE
FILING
DATE
OF
THE 
CLAIMED INVENTION.—A disclosure made 1 year or 
less before the effective filing date of a claimed in-
vention shall not be prior art to the claimed inven-
tion under subsection (a)(1) if— 
‘‘(A) the disclosure was made by the inven-
tor or joint inventor or by another who obtained 
the subject matter disclosed directly or indi-
rectly from the inventor or a joint inventor; or 
‘‘(B) the subject matter disclosed had, be-
fore such disclosure, been publicly disclosed by 
the inventor or a joint inventor or another who 
obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor. 
‘‘(2) DISCLOSURES
APPEARING
IN
APPLICA-
TIONS
AND
PATENTS.—A disclosure shall not be 
prior art to a claimed invention under subsection 
(a)(2) if— 
‘‘(A) the subject matter disclosed was ob-
tained directly or indirectly from the inventor or 
a joint inventor;
‘‘(B) the subject matter disclosed had, be-
fore such subject matter was effectively filed 
under subsection (a)(2), been publicly disclosed 
by the inventor or a joint inventor or another 
who obtained the subject matter disclosed di-
rectly or indirectly from the inventor or a joint 
inventor; or 
‘‘(C) the subject matter disclosed and the 
claimed invention, not later than the effective 
filing date of the claimed invention, were owned 
by the same person or subject to an obligation 
of assignment to the same person. 
‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH 
AGREEMENTS.—Subject matter disclosed and a claimed 
invention shall be deemed to have been owned by the same 
person or subject to an obligation of assignment to the 
same person in applying the provisions of subsection 
(b)(2)(C) if— 
‘‘(1) the subject matter disclosed was developed 
and the claimed invention was made by, or on behalf 
of, 1 or more parties to a joint research agreement 
that was in effect on or before the effective filing 
date of the claimed invention;
‘‘(2) the claimed invention was made as a result 
of activities undertaken within the scope of the joint 
research agreement; and 
‘‘(3) the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agree-
ment. 
‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF-
FECTIVE AS PRIOR ART.—For purposes of determining 
whether a patent or application for patent is prior art to 
a claimed invention under subsection (a)(2), such patent 
or application shall be considered to have been effectively 
filed, with respect to any subject matter described in the 
patent or application— 
‘‘(1) if paragraph (2) does not apply, as of the 
actual filing date of the patent or the application for 
patent; or 
‘‘(2) if the patent or application for patent is 
entitled to claim a right of priority under section 
119, 365(a), or 365(b), or to claim the benefit of an 
earlier filing date under section 120, 121, or 365(c), 
based upon 1 or more prior filed applications for 
patent, as of the filing date of the earliest such ap-
plication that describes the subject matter.’’.
(2) CONTINUITY OF INTENT UNDER THE CRE-
ATE ACT.—The enactment of section 102(c) of title 
35, United States Code, under paragraph (1) of this 
subsection is done with the same intent to promote 
joint research activities that was expressed, includ-
ing in the legislative history, through the enactment 
of the Cooperative Research and Technology En-
hancement Act of 2004 (Public Law 108–453; the 
‘‘CREATE Act’’), the amendments of which are 
stricken by subsection (c) of this section. The United 
States Patent and Trademark Office shall admin-
ister section 102(c) of title 35, United States Code, 
in a manner consistent with the legislative history of 
the CREATE Act that was relevant to its adminis-
tration by the United States Patent and Trademark 
Office. 
(3) CONFORMING AMENDMENT.—The item re-
lating to section 102 in the table of sections for 
chapter 10 of title 35, United States Code, is 
amended to read as follows: 
‘‘102. Conditions for patentability; novelty.’’. 
(c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS 
SUBJECT MATTER.—Section 103 of title 35, United 
States Code, is amended to read as follows:
‘‘§ 103. Conditions for patentability; non-obvious sub-
ject matter 
‘‘A patent for a claimed invention may not be ob-
tained, notwithstanding that the claimed invention is not 
identically disclosed as set forth in section 102, if the dif-
ferences between the claimed invention and the prior art 
are such that the claimed invention as a whole would have 
been obvious before the effective filing date of the claimed 
invention to a person having ordinary skill in the art to 
which the claimed invention pertains. Patentability shall 
not be negated by the manner in which the invention was 
made.’’. 
(d) REPEAL OF REQUIREMENTS FOR INVENTIONS 
MADE ABROAD.—Section 104 of title 35, United States 
Code, and the item relating to that section in the table 
of sections for chapter 10 of title 35, United States Code, 
are repealed. 
(e) REPEAL OF STATUTORY INVENTION REGISTRA-
TION.— 
(1) IN
GENERAL.—Section 157 of title 35, 
United States Code, and the item relating to that 
section in the table of sections for chapter 14 of title 
35, United States Code, are repealed. 
(2) REMOVAL OF CROSS REFERENCES.—Section 
111(b)(8) of title 35, United States Code, is amend-
ed by striking ‘‘sections 115, 131, 135, and 157’’ 
and inserting ‘‘sections 131 and 135’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 18-month period beginning on the date 
of the enactment of this Act, and shall apply to any 
request for a statutory invention registration filed on 
or after that effective date. 
(f) EARLIER FILING DATE
FOR INVENTOR
AND 
JOINT INVENTOR.—Section 120 of title 35, United States 
Code, is amended by striking ‘‘which is filed by an inven-
tor or inventors named’’ and inserting ‘‘which names an 
inventor or joint inventor’’. 
(g) CONFORMING AMENDMENTS.— 
(1) RIGHT OF PRIORITY.—Section 172 of title 
35, United States Code, is amended by striking 
‘‘and the time specified in section 102(d)’’. 
(2) 
LIMITATION
ON
REMEDIES.—Section 
287(c)(4) of title 35, United States Code, is amend-
ed by striking ‘‘the earliest effective filing date of 
which is prior to’’ and inserting ‘‘which has an effec-
tive filing date before’’. 
(3) 
INTERNATIONAL
APPLICATION
DESIG-
NATING
THE
UNITED
STATES: EFFECT.—Section 
363 of title 35, United States Code, is amended by
striking ‘‘except as otherwise provided in section 
102(e) of this title’’. 
(4) PUBLICATION OF INTERNATIONAL APPLICA-
TION: EFFECT.—Section 374 of title 35, United 
States Code, is amended by striking ‘‘sections 102(e) 
and 154(d)’’ and inserting ‘‘section 154(d)’’. 
(5) PATENT ISSUED ON INTERNATIONAL APPLI-
CATION: EFFECT.—The second sentence of section 
375(a) of title 35, United States Code, is amended 
by striking ‘‘Subject to section 102(e) of this title, 
such’’ and inserting ‘‘Such’’. 
(6) LIMIT
ON
RIGHT
OF
PRIORITY.—Section 
119(a) of title 35, United States Code, is amended 
by striking ‘‘; but no patent shall be granted’’ and 
all that follows through ‘‘one year prior to such fil-
ing’’. 
(7) INVENTIONS MADE WITH FEDERAL ASSIST-
ANCE.—Section 202(c) of title 35, United States 
Code, is amended— 
(A) in paragraph (2)— 
(i) by striking ‘‘publication, on sale, 
or public use,’’ and all that follows through 
‘‘obtained in the United States’’ and in-
serting ‘‘the 1-year period referred to in
section 102(b) would end before the end of 
that 2-year period’’; and 
(ii) by striking ‘‘prior to the end of 
the statutory’’ and inserting ‘‘before the 
end of that 1-year’’; and 
(B) in paragraph (3), by striking ‘‘any 
statutory bar date that may occur under this 
title due to publication, on sale, or public use’’ 
and inserting ‘‘the expiration of the 1-year pe-
riod referred to in section 102(b)’’. 
(h) DERIVED PATENTS.— 
(1) IN
GENERAL.—Section 291 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 291. Derived Patents 
‘‘(a) IN GENERAL.—The owner of a patent may have 
relief by civil action against the owner of another patent 
that claims the same invention and has an earlier effective 
filing date, if the invention claimed in such other patent 
was derived from the inventor of the invention claimed in 
the patent owned by the person seeking relief under this 
section. 
‘‘(b) FILING LIMITATION.—An action under this sec-
tion may be filed only before the end of the 1-year period 
beginning on the date of the issuance of the first patent 
containing a claim to the allegedly derived invention and
naming an individual alleged to have derived such inven-
tion as the inventor or joint inventor.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 291 in the table of sections for 
chapter 29 of title 35, United States Code, is 
amended to read as follows: 
‘‘291. Derived patents.’’. 
(i) DERIVATION PROCEEDINGS.—Section 135 of title 
35, United States Code, is amended to read as follows: 
‘‘§ 135. Derivation proceedings 
‘‘(a) INSTITUTION OF PROCEEDING.—An applicant 
for patent may file a petition to institute a derivation pro-
ceeding in the Office. The petition shall set forth with par-
ticularity the basis for finding that an inventor named in 
an earlier application derived the claimed invention from 
an inventor named in the petitioner’s application and, 
without authorization, the earlier application claiming 
such invention was filed. Any such petition may be filed 
only within the 1-year period beginning on the date of the 
first publication of a claim to an invention that is the same 
or substantially the same as the earlier application’s claim 
to the invention, shall be made under oath, and shall be 
supported by substantial evidence. Whenever the Director 
determines that a petition filed under this subsection dem-
onstrates that the standards for instituting a derivation 
proceeding are met, the Director may institute a deriva-
tion proceeding. The determination by the Director wheth-
er to institute a derivation proceeding shall be final and 
nonappealable. 
‘‘(b) DETERMINATION BY PATENT TRIAL AND AP-
PEAL BOARD.—In a derivation proceeding instituted 
under subsection (a), the Patent Trial and Appeal Board 
shall determine whether an inventor named in the earlier 
application derived the claimed invention from an inventor 
named in the petitioner’s application and, without author-
ization, the earlier application claiming such invention was 
filed. In appropriate circumstances, the Patent Trial and 
Appeal Board may correct the naming of the inventor in 
any application or patent at issue. The Director shall pre-
scribe regulations setting forth standards for the conduct 
of derivation proceedings, including requiring parties to 
provide sufficient evidence to prove and rebut a claim of 
derivation. 
‘‘(c) DEFERRAL OF DECISION.—The Patent Trial 
and Appeal Board may defer action on a petition for a 
derivation proceeding until the expiration of the 3-month 
period beginning on the date on which the Director issues 
a patent that includes the claimed invention that is the 
subject of the petition. The Patent Trial and Appeal 
Board also may defer action on a petition for a derivation 
proceeding, or stay the proceeding after it has been insti-
tuted, until the termination of a proceeding under chapter 
30, 31, or 32 involving the patent of the earlier applicant. 
‘‘(d) EFFECT OF FINAL DECISION.—The final deci-
sion of the Patent Trial and Appeal Board, if adverse to 
claims in an application for patent, shall constitute the 
final refusal by the Office on those claims. The final deci-
sion of the Patent Trial and Appeal Board, if adverse to 
claims in a patent, shall, if no appeal or other review of 
the decision has been or can be taken or had, constitute 
cancellation of those claims, and notice of such cancella-
tion shall be endorsed on copies of the patent distributed 
after such cancellation. 
‘‘(e) SETTLEMENT.—Parties to a proceeding insti-
tuted under subsection (a) may terminate the proceeding 
by filing a written statement reflecting the agreement of 
the parties as to the correct inventors of the claimed inven-
tion in dispute. Unless the Patent Trial and Appeal Board 
finds the agreement to be inconsistent with the evidence 
of record, if any, it shall take action consistent with the 
agreement. Any written settlement or understanding of 
the parties shall be filed with the Director. At the request 
of a party to the proceeding, the agreement or under-
standing shall be treated as business confidential informa-
tion, shall be kept separate from the file of the involved 
patents or applications, and shall be made available only
to Government agencies on written request, or to any per-
son on a showing of good cause. 
‘‘(f) ARBITRATION.—Parties to a proceeding insti-
tuted under subsection (a) may, within such time as may 
be specified by the Director by regulation, determine such 
contest or any aspect thereof by arbitration. Such arbitra-
tion shall be governed by the provisions of title 9, to the 
extent such title is not inconsistent with this section. The 
parties shall give notice of any arbitration award to the 
Director, and such award shall, as between the parties to 
the arbitration, be dispositive of the issues to which it re-
lates. The arbitration award shall be unenforceable until 
such notice is given. Nothing in this subsection shall pre-
clude the Director from determining the patentability of 
the claimed inventions involved in the proceeding.’’. 
(j) ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 134, 145, 146, 154, and 305 
of title 35, United States Code, are each amended by strik-
ing ‘‘Board of Patent Appeals and Interferences’’ each 
place it appears and inserting ‘‘Patent Trial and Appeal 
Board’’. 
(2)(A) Section 146 of title 35, United States Code, 
is amended— 
(i) by striking ‘‘an interference’’ and in-
serting ‘‘a derivation proceeding’’; and
(ii) by striking ‘‘the interference’’ and in-
serting ‘‘the derivation proceeding’’. 
(B) The subparagraph heading for section 
154(b)(1)(C) of title 35, United States Code, is 
amended to read as follows: 
‘‘(C) GUARANTEE
OF
ADJUSTMENTS 
FOR
DELAYS
DUE
TO
DERIVATION
PRO-
CEEDINGS, SECRECY
ORDERS, AND
AP-
PEALS.—’’. 
(3) The section heading for section 134 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 
(4) The section heading for section 146 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 146. Civil action in case of derivation proceeding’’. 
(5) The items relating to sections 134 and 135 in 
the table of sections for chapter 12 of title 35, United 
States Code, are amended to read as follows: 
‘‘134. Appeal to the Patent Trial and Appeal Board. 
‘‘135. Derivation proceedings.’’. 
(6) The item relating to section 146 in the table of 
sections for chapter 13 of title 35, United States Code, 
is amended to read as follows: 
‘‘146. Civil action in case of derivation proceeding.’’. 
(k) STATUTE OF LIMITATIONS.—
(1) IN
GENERAL.—Section 32 of title 35, 
United States Code, is amended by inserting be-
tween the third and fourth sentences the following: 
‘‘A proceeding under this section shall be com-
menced not later than the earlier of either the date 
that is 10 years after the date on which the mis-
conduct forming the basis for the proceeding oc-
curred, or 1 year after the date on which the mis-
conduct forming the basis for the proceeding is 
made known to an officer or employee of the Office 
as prescribed in the regulations established under 
section 2(b)(2)(D).’’. 
(2) REPORT TO CONGRESS.—The Director shall 
provide on a biennial basis to the Judiciary Commit-
tees of the Senate and House of Representatives a 
report providing a short description of incidents 
made known to an officer or employee of the Office 
as prescribed in the regulations established under 
section 2(b)(2)(D) of title 35, United States Code, 
that reflect substantial evidence of misconduct be-
fore the Office but for which the Office was barred 
from commencing a proceeding under section 32 of 
title 35, United States Code, by the time limitation 
established by the fourth sentence of that section.
(3) EFFECTIVE DATE.—The amendment made 
by paragraph (1) shall apply in any case in which 
the time period for instituting a proceeding under 
section 32 of title 35, United States Code, had not 
lapsed before the date of the enactment of this Act. 
(l) SMALL BUSINESS STUDY.— 
(1) DEFINITIONS.—In this subsection— 
(A) the term ‘‘Chief Counsel’’ means the 
Chief Counsel for Advocacy of the Small Busi-
ness Administration; 
(B) the term ‘‘General Counsel’’ means the 
General Counsel of the United States Patent 
and Trademark Office; and 
(C) the term ‘‘small business concern’’ has 
the meaning given that term under section 3 of 
the Small Business Act (15 U.S.C. 632). 
(2) STUDY.— 
(A) IN GENERAL.—The Chief Counsel, in 
consultation with the General Counsel, shall 
conduct a study of the effects of eliminating the 
use of dates of invention in determining wheth-
er an applicant is entitled to a patent under 
title 35, United States Code. 
(B) AREAS
OF
STUDY.—The study con-
ducted under subparagraph (A) shall include
examination of the effects of eliminating the use 
of invention dates, including examining— 
(i) how the change would affect the 
ability of small business concerns to obtain 
patents and their costs of obtaining pat-
ents; 
(ii) whether the change would create, 
mitigate, or exacerbate any disadvantages 
for applicants for patents that are small 
business concerns relative to applicants for 
patents that are not small business con-
cerns, and whether the change would cre-
ate any advantages for applicants for pat-
ents that are small business concerns rel-
ative to applicants for patents that are not 
small business concerns; 
(iii) the cost savings and other poten-
tial benefits to small business concerns of 
the change; and 
(iv) the feasibility and costs and bene-
fits to small business concerns of alter-
native means of determining whether an 
applicant is entitled to a patent under title 
35, United States Code.
(3) REPORT.—Not later than the date that is 
1 year after the date of the enactment of this Act, 
the Chief Counsel shall submit to the Committee on 
Small Business and Entrepreneurship and the Com-
mittee on the Judiciary of the Senate and the Com-
mittee on Small Business and the Committee on the 
Judiciary of the House of Representatives a report 
on the results of the study under paragraph (2). 
(m) REPORT ON PRIOR USER RIGHTS.— 
(1) IN GENERAL.—Not later than the end of 
the 4-month period beginning on the date of the en-
actment of this Act, the Director shall report, to the 
Committee on the Judiciary of the Senate and the 
Committee on the Judiciary of the House of Rep-
resentatives, the findings and recommendations of 
the Director on the operation of prior user rights in 
selected countries in the industrialized world. The 
report shall include the following: 
(A) A comparison between patent laws of 
the United States and the laws of other indus-
trialized countries, including members of the 
European Union and Japan, Canada, and Aus-
tralia.
(B) An analysis of the effect of prior user 
rights on innovation rates in the selected coun-
tries. 
(C) An analysis of the correlation, if any, 
between prior user rights and start-up enter-
prises and the ability to attract venture capital 
to start new companies. 
(D) An analysis of the effect of prior user 
rights, if any, on small businesses, universities, 
and individual inventors. 
(E) An analysis of legal and constitutional 
issues, if any, that arise from placing trade se-
cret law in patent law. 
(F) An analysis of whether the change to 
a first-to-file patent system creates a particular 
need for prior user rights. 
(2) CONSULTATION WITH OTHER AGENCIES.— 
In preparing the report required under paragraph 
(1), the Director shall consult with the United 
States Trade Representative, the Secretary of State, 
and the Attorney General. 
(n) EFFECTIVE DATE.— 
(1) IN
GENERAL.—Except as otherwise pro-
vided in this section, the amendments made by this 
section shall take effect upon the expiration of the
18-month period beginning on the date of the enact-
ment of this Act, and shall apply to any application 
for patent, and to any patent issuing thereon, that 
contains or contained at any time— 
(A) a claim to a claimed invention that has 
an effective filing date as defined in section 
100(i) of title 35, United States Code, that is 
on or after the effective date described in this 
paragraph; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, 
to any patent or application that contains or 
contained at any time such a claim. 
(2) INTERFERING PATENTS.—The provisions of 
sections 102(g), 135, and 291 of title 35, United 
States Code, as in effect on the day before the effec-
tive date set forth in paragraph (1) of this sub-
section, shall apply to each claim of an application 
for patent, and any patent issued thereon, for which 
the amendments made by this section also apply, if 
such application or patent contains or contained at 
any time— 
(A) a claim to an invention having an ef-
fective filing date as defined in section 100(i) of 
title 35, United States Code, that occurs before
the effective date set forth in paragraph (1) of 
this subsection; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, 
to any patent or application that contains or 
contained at any time such a claim. 
(o) SENSE OF CONGRESS.—It is the sense of the Con-
gress that converting the United States patent system 
from ‘‘first to invent’’ to a system of ‘‘first inventor to 
file’’ will promote the progress of science and the useful 
arts by securing for limited times to inventors the exclu-
sive rights to their discoveries and provide inventors with 
greater certainty regarding the scope of protection pro-
vided by the grant of exclusive rights to their discoveries. 
(p) SENSE OF CONGRESS.—It is the sense of the 
Congress that converting the United States patent system 
from ‘‘first to invent’’ to a system of ‘‘first inventor to 
file’’ will improve the United States patent system and 
promote harmonization of the United States patent system 
with the patent systems commonly used in nearly all other 
countries throughout the world with whom the United 
States conducts trade and thereby promote greater inter-
national uniformity and certainty in the procedures used 
for securing the exclusive rights of inventors to their dis-
coveries.
‘‘(d) SUBSTITUTE STATEMENT.— 
‘‘(1) IN GENERAL.—In lieu of executing an oath 
or declaration under subsection (a), the applicant for 
patent may provide a substitute statement under the 
circumstances described in paragraph (2) and such 
additional circumstances that the Director may 
specify by regulation. 
‘‘(2) PERMITTED
CIRCUMSTANCES.—A sub-
stitute statement under paragraph (1) is permitted 
with respect to any individual who— 
‘‘(A) is unable to file the oath or declara-
tion under subsection (a) because the indi-
vidual— 
‘‘(i) is deceased; 
‘‘(ii) is under legal incapacity; or 
‘‘(iii) cannot be found or reached after 
diligent effort; or 
‘‘(B) is under an obligation to assign the 
invention but has refused to make the oath or 
declaration required under subsection (a). 
‘‘(3) CONTENTS.—A substitute statement under 
this subsection shall— 
‘‘(A) identify the individual with respect to 
whom the statement applies;
‘‘(B) set forth the circumstances rep-
resenting the permitted basis for the filing of 
the substitute statement in lieu of the oath or 
declaration under subsection (a); and 
‘‘(C) contain any additional information, 
including any showing, required by the Direc-
tor. 
‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN-
MENT OF RECORD.—An individual who is under an obliga-
tion of assignment of an application for patent may in-
clude the required statements under subsections (b) and 
(c) in the assignment executed by the individual, in lieu 
of filing such statements separately. 
‘‘(f) TIME FOR FILING.—A notice of allowance under 
section 151 may be provided to an applicant for patent 
only if the applicant for patent has filed each required 
oath or declaration under subsection (a) or has filed a sub-
stitute statement under subsection (d) or recorded an as-
signment meeting the requirements of subsection (e). 
‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE-
QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 
‘‘(1) EXCEPTION.—The requirements under 
this section shall not apply to an individual with re-
spect to an application for patent in which the indi-
vidual is named as the inventor or a joint inventor
and who claims the benefit under section 120, 121, 
or 365(c) of the filing of an earlier-filed application, 
if— 
‘‘(A) an oath or declaration meeting the 
requirements of subsection (a) was executed by 
the individual and was filed in connection with 
the earlier-filed application; 
‘‘(B) a substitute statement meeting the 
requirements of subsection (d) was filed in con-
nection with the earlier filed application with 
respect to the individual; or 
‘‘(C) an assignment meeting the require-
ments of subsection (e) was executed with re-
spect to the earlier-filed application by the indi-
vidual and was recorded in connection with the 
earlier-filed application. 
‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE-
MENTS, OR ASSIGNMENTS.—Notwithstanding para-
graph (1), the Director may require that a copy of 
the executed oath or declaration, the substitute 
statement, or the assignment filed in connection 
with the earlier-filed application be included in the 
later-filed application. 
‘‘(h) SUPPLEMENTAL
AND
CORRECTED
STATE-
MENTS; FILING ADDITIONAL STATEMENTS.—
‘‘(1) IN GENERAL.—Any person making a state-
ment required under this section may withdraw, re-
place, or otherwise correct the statement at any 
time. If a change is made in the naming of the in-
ventor requiring the filing of 1 or more additional 
statements under this section, the Director shall es-
tablish regulations under which such additional 
statements may be filed. 
‘‘(2) SUPPLEMENTAL
STATEMENTS
NOT
RE-
QUIRED.—If an individual has executed an oath or 
declaration meeting the requirements of subsection 
(a) or an assignment meeting the requirements of 
subsection (e) with respect to an application for pat-
ent, the Director may not thereafter require that in-
dividual to make any additional oath, declaration, or 
other statement equivalent to those required by this 
section in connection with the application for patent 
or any patent issuing thereon. 
‘‘(3) SAVINGS CLAUSE.—A patent shall not be 
invalid or unenforceable based upon the failure to 
comply with a requirement under this section if the 
failure is remedied as provided under paragraph (1). 
‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec-
laration or statement filed pursuant to this section shall 
contain an acknowledgment that any willful false state-
ment made in such declaration or statement is punishable 
under section 1001 of title 18 by fine or imprisonment 
of not more than 5 years, or both.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 of title 35, United States Code, 
is amended by striking ‘‘If a divisional application’’ 
and all that follows through ‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL AP-
PLICATIONS.—Section 111(a) of title 35, United 
States Code, is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
(B) in the heading for paragraph (3), by 
inserting 
‘‘OR
DECLARATION’’ 
after 
‘‘AND 
OATH’’; and 
(C) by inserting ‘‘or declaration’’ after 
‘‘and oath’’ each place it appears. 
(4) CONFORMING AMENDMENT.—The item re-
lating to section 115 in the table of sections for 
chapter 11 of title 35, United States Code, is 
amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) FILING BY OTHER THAN INVENTOR.— 
(1) IN
GENERAL.—Section 118 of title 35, 
United States Code, is amended to read as follows:
‘‘§ 118. Filing by other than inventor 
‘‘A person to whom the inventor has assigned or is 
under an obligation to assign the invention may make an 
application for patent. A person who otherwise shows suf-
ficient proprietary interest in the matter may make an ap-
plication for patent on behalf of and as agent for the in-
ventor on proof of the pertinent facts and a showing that 
such action is appropriate to preserve the rights of the 
parties. If the Director grants a patent on an application 
filed under this section by a person other than the inven-
tor, the patent shall be granted to the real party in inter-
est and upon such notice to the inventor as the Director 
considers to be sufficient.’’. 
(2) CONFORMING
AMENDMENT.—Section 251 
of title 35, United States Code, is amended in the 
third undesignated paragraph by inserting ‘‘or the 
application for the original patent was filed by the 
assignee of the entire interest’’ after ‘‘claims of the 
original patent’’. 
(c) SPECIFICATION.—Section 112 of title 35, United 
States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
and
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; 
(2) in the second undesignated paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(b) CONCLUSION.—The specification’’; 
and 
(B) by striking ‘‘applicant regards as his 
invention’’ and inserting ‘‘inventor or a joint in-
ventor regards as the invention’’; 
(3) in the third undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(c) FORM.—A 
claim’’; 
(4) in the fourth undesignated paragraph, by 
striking ‘‘Subject to the following paragraph,’’ and 
inserting 
‘‘(d) 
REFERENCE
IN
DEPENDENT 
FORMS.—Subject to subsection (e),’’; 
(5) in the fifth undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(e) REFERENCE 
IN MULTIPLE DEPENDENT FORM.—A claim’’; and 
(6) in the last undesignated paragraph, by 
striking ‘‘An element’’ and inserting ‘‘(f) ELEMENT 
IN CLAIM FOR A COMBINATION.—An element’’. 
(d) CONFORMING AMENDMENTS.—
(1) Sections 111(b)(1)(A) of title 35, United 
States Code, is amended by striking ‘‘the first para-
graph of section 112 of this title’’ and inserting 
‘‘section 112(a)’’. 
(2) Section 111(b)(2) of title 35, United States 
Code, is amended by striking ‘‘the second through 
fifth paragraphs of section 112,’’ and inserting 
‘‘subsections (b) through (e) of section 112,’’. 
(e) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
1-year period beginning on the date of the enactment of 
this Act and shall apply to any patent application that 
is filed on or after that effective date. 
SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR 
COMMERCIAL USE. 
(a) IN GENERAL.—Section 273 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 273. Defense to infringement based on prior com-
mercial use 
‘‘(a) IN GENERAL.—A person shall be entitled to a 
defense under section 282(b) with respect to subject mat-
ter consisting of a process, or consisting of a machine, 
manufacture, or composition of matter used in a manufac-
turing or other commercial process, that would otherwise
infringe a claimed invention being asserted against the 
person if— 
‘‘(1) such person, acting in good faith, commer-
cially used the subject matter in the United States, 
either in connection with an internal commercial use 
or an actual arm’s length sale or other arm’s length 
commercial transfer of a useful end result of such 
commercial use; and 
‘‘(2) such commercial use occurred at least 1 
year before the earlier of either— 
‘‘(A) the effective filing date of the claimed 
invention; or 
‘‘(B) the date on which the claimed inven-
tion was disclosed to the public in a manner 
that qualified for the exception from prior art 
under section 102(b). 
‘‘(b) BURDEN OF PROOF.—A person asserting a de-
fense under this section shall have the burden of estab-
lishing the defense by clear and convincing evidence. 
‘‘(c) ADDITIONAL COMMERCIAL USES.— 
‘‘(1) PREMARKETING REGULATORY REVIEW.— 
Subject matter for which commercial marketing or 
use is subject to a premarketing regulatory review 
period during which the safety or efficacy of the sub-
ject matter is established, including any period speci-
fied in section 156(g), shall be deemed to be com-
mercially used for purposes of subsection (a)(1) dur-
ing such regulatory review period. 
‘‘(2) NONPROFIT LABORATORY USE.—A use of 
subject matter by a nonprofit research laboratory or 
other nonprofit entity, such as a university or hos-
pital, for which the public is the intended bene-
ficiary, shall be deemed to be a commercial use for 
purposes of subsection (a)(1), except that a defense 
under this section may be asserted pursuant to this 
paragraph only for continued and noncommercial 
use by and in the laboratory or other nonprofit enti-
ty. 
‘‘(d) EXHAUSTION
OF
RIGHTS.—Notwithstanding 
subsection (e)(1), the sale or other disposition of a useful 
end result by a person entitled to assert a defense under 
this section in connection with a patent with respect to 
that useful end result shall exhaust the patent owner’s 
rights under the patent to the extent that such rights 
would have been exhausted had such sale or other disposi-
tion been made by the patent owner. 
‘‘(e) LIMITATIONS AND EXCEPTIONS.— 
‘‘(1) PERSONAL DEFENSE.— 
‘‘(A) IN GENERAL.—A defense under this 
section may be asserted only by the person who
performed or directed the performance of the 
commercial use described in subsection (a), or 
by an entity that controls, is controlled by, or 
is under common control with such person. 
‘‘(B) TRANSFER
OF
RIGHT.—Except for 
any transfer to the patent owner, the right to 
assert a defense under this section shall not be 
licensed or assigned or transferred to another 
person except as an ancillary and subordinate 
part of a good-faith assignment or transfer for 
other reasons of the entire enterprise or line of 
business to which the defense relates. 
‘‘(C) RESTRICTION ON SITES.—A defense 
under this section, when acquired by a person 
as part of an assignment or transfer described 
in subparagraph (B), may only be asserted for 
uses at sites where the subject matter that 
would otherwise infringe a claimed invention is 
in use before the later of the effective filing 
date of the claimed invention or the date of the 
assignment or transfer of such enterprise or 
line of business. 
‘‘(2) DERIVATION.—A person may not assert a 
defense under this section if the subject matter on
which the defense is based was derived from the pat-
entee or persons in privity with the patentee. 
‘‘(3) NOT A GENERAL LICENSE.—The defense 
asserted by a person under this section is not a gen-
eral license under all claims of the patent at issue, 
but extends only to the specific subject matter for 
which it has been established that a commercial use 
that qualifies under this section occurred, except 
that the defense shall also extend to variations in 
the quantity or volume of use of the claimed subject 
matter, and to improvements in the claimed subject 
matter that do not infringe additional specifically 
claimed subject matter of the patent. 
‘‘(4) ABANDONMENT OF USE.—A person who 
has abandoned commercial use (that qualifies under 
this section) of subject matter may not rely on ac-
tivities performed before the date of such abandon-
ment in establishing a defense under this section 
with respect to actions taken on or after the date of 
such abandonment. 
‘‘(5) UNIVERSITY EXCEPTION.— 
‘‘(A) IN
GENERAL.—A person commer-
cially using subject matter to which subsection 
(a) applies may not assert a defense under this 
section if the claimed invention with respect to
which the defense is asserted was, at the time 
the invention was made, owned or subject to an 
obligation of assignment to either an institution 
of higher education (as defined in section 
101(a) of the Higher Education Act of 1965 
(20 U.S.C. 1001(a)), or a technology transfer 
organization whose primary purpose is to facili-
tate the commercialization of technologies devel-
oped by one or more such institutions of higher 
education. 
‘‘(B) 
EXCEPTION.—Subparagraph 
(A) 
shall not apply if any of the activities required 
to reduce to practice the subject matter of the 
claimed invention could not have been under-
taken using funds provided by the Federal Gov-
ernment. 
‘‘(f) UNREASONABLE ASSERTION OF DEFENSE.—If 
the defense under this section is pleaded by a person who 
is found to infringe the patent and who subsequently fails 
to demonstrate a reasonable basis for asserting the de-
fense, the court shall find the case exceptional for the pur-
pose of awarding attorney fees under section 285. 
‘‘(g) INVALIDITY.—A patent shall not be deemed to 
be invalid under section 102 or 103 solely because a de-
fense is raised or established under this section.’’.
(b) CONFORMING AMENDMENT.—The item relating 
to section 273 in the table of sections for chapter 28 of 
title 35, United States Code, is amended to read as fol-
lows: 
‘‘273. Defense to infringement based on prior commercial use.’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall apply to any patent issued on or after 
the date of the enactment of this Act. 
SEC. 6. POST-GRANT REVIEW PROCEEDINGS. 
(a) INTER PARTES REVIEW.—Chapter 31 of title 35, 
United States Code, is amended to read as follows: 
‘‘CHAPTER 31—INTER PARTES REVIEW 
‘‘Sec. 
‘‘311. Inter partes review. 
‘‘312. Petitions. 
‘‘313. Preliminary response to petition. 
‘‘314. Institution of inter partes review. 
‘‘315. Relation to other proceedings or actions. 
‘‘316. Conduct of inter partes review. 
‘‘317. Settlement. 
‘‘318. Decision of the Board. 
‘‘319. Appeal. 
‘‘§ 311. Inter partes review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the owner of a patent may 
file with the Office a petition to institute an inter partes 
review of the patent. The Director shall establish, by regu-
lation, fees to be paid by the person requesting the review, 
in such amounts as the Director determines to be reason-
able, considering the aggregate costs of the review.
‘‘(b) SCOPE.—A petitioner in an inter partes review 
may request to cancel as unpatentable 1 or more claims 
of a patent only on a ground that could be raised under 
section 102 or 103 and only on the basis of prior art con-
sisting of patents or printed publications. 
‘‘(c) FILING DEADLINE.—A petition for inter partes 
review shall be filed after the later of either— 
‘‘(1) the date that is 9 months after the grant 
of a patent or issuance of a reissue of a patent; or 
‘‘(2) if a post-grant review is instituted under 
chapter 32, the date of the termination of such post- 
grant review. 
‘‘§ 312. Petitions 
‘‘(a) REQUIREMENTS OF PETITION.—A petition filed 
under section 311 may be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 
311; 
‘‘(2) the petition identifies all real parties in in-
terest; 
‘‘(3) the petition identifies, in writing and with 
particularity, each claim challenged, the grounds on 
which the challenge to each claim is based, and the 
evidence that supports the grounds for the challenge 
to each claim, including—
‘‘(A) copies of patents and printed publica-
tions that the petitioner relies upon in support 
of the petition; and 
‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on expert opinions; 
‘‘(4) the petition provides such other informa-
tion as the Director may require by regulation; and 
‘‘(5) the petitioner provides copies of any of the 
documents required under paragraphs (2), (3), and 
(4) to the patent owner or, if applicable, the des-
ignated representative of the patent owner. 
‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 
after the receipt of a petition under section 311, the Direc-
tor shall make the petition available to the public. 
‘‘§ 313. Preliminary response to petition 
‘‘If an inter partes review petition is filed under sec-
tion 311, the patent owner shall have the right to file a 
preliminary response to the petition, within a time period 
set by the Director, that sets forth reasons why no inter 
partes review should be instituted based upon the failure 
of the petition to meet any requirement of this chapter. 
‘‘§ 314. Institution of inter partes review 
‘‘(a) THRESHOLD.—The Director may not authorize 
an inter partes review to be instituted unless the Director
determines that the information presented in the petition 
filed under section 311 and any response filed under sec-
tion 313 shows that there is a reasonable likelihood that 
the petitioner would prevail with respect to at least 1 of 
the claims challenged in the petition. 
‘‘(b) TIMING.—The Director shall determine whether 
to institute an inter partes review under this chapter pur-
suant to a petition filed under section 311 within 3 months 
after— 
‘‘(1) receiving a preliminary response to the pe-
tition under section 313; or 
‘‘(2) if no such preliminary response is filed, 
the last date on which such response may be filed. 
‘‘(c) NOTICE.—The Director shall notify the peti-
tioner and patent owner, in writing, of the Director’s de-
termination under subsection (a), and shall make such no-
tice available to the public as soon as is practicable. Such 
notice shall include the date on which the review shall 
commence. 
‘‘(d) NO APPEAL.—The determination by the Direc-
tor whether to institute an inter partes review under this 
section shall be final and nonappealable. 
‘‘§ 315. Relation to other proceedings or actions 
‘‘(a) INFRINGER’S CIVIL ACTION.—
‘‘(1) INTER PARTES REVIEW BARRED BY CIVIL 
ACTION.—An inter partes review may not be insti-
tuted if, before the date on which the petition for 
such a review is filed, the petitioner or real party in 
interest filed a civil action challenging the validity of 
a claim of the patent. 
‘‘(2) STAY OF CIVIL ACTION.—If the petitioner 
or real party in interest files a civil action chal-
lenging the validity of a claim of the patent on or 
after the date on which the petitioner files a petition 
for inter partes review of the patent, that civil action 
shall be automatically stayed until either— 
‘‘(A) the patent owner moves the court to 
lift the stay; 
‘‘(B) the patent owner files a civil action or 
counterclaim alleging that the petitioner or real 
party in interest has infringed the patent; or 
‘‘(C) the petitioner or real party in interest 
moves the court to dismiss the civil action. 
‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun-
terclaim challenging the validity of a claim of a pat-
ent does not constitute a civil action challenging the 
validity of a claim of a patent for purposes of this 
subsection.
‘‘(b) PATENT OWNER’S ACTION.—An inter partes re-
view may not be instituted 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 the patent. The time limitation set forth in the pre-
ceding sentence shall not apply to a request for joinder 
under subsection (c). 
‘‘(c) JOINDER.—If the Director institutes an inter 
partes review, the Director, in his or her discretion, may 
join as a party to that inter partes review any person who 
properly files a petition under section 311 that the Direc-
tor, after receiving a preliminary response under section 
313 or the expiration of the time for filing such a re-
sponse, determines warrants the institution of an inter 
partes review under section 314. 
‘‘(d) MULTIPLE
PROCEEDINGS.—Notwithstanding 
sections 135(a), 251, and 252, and chapter 30, during the 
pendency of an inter partes review, if another proceeding 
or matter involving the patent is before the Office, the 
Director may determine the manner in which the inter 
partes review or other proceeding or matter may proceed, 
including providing for stay, transfer, consolidation, or 
termination of any such matter or proceeding. 
‘‘(e) ESTOPPEL.—
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 
petitioner in an inter partes review of a claim in a 
patent under this chapter that results in a final 
written decision under section 318(a), or the real 
party in interest or privy of the petitioner, may not 
request or maintain a proceeding before the Office 
with respect to that claim on any ground that the 
petitioner raised or reasonably could have raised 
during that inter partes review. 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in an inter partes review 
of a claim in a patent under this chapter that results 
in a final written decision under section 318(a), or 
the real party in interest or privy of the petitioner, 
may not assert either in a civil action arising in 
whole or in part under section 1338 of title 28 or 
in a proceeding before the International Trade Com-
mission under section 337 of the Tariff Act of 1930 
that the claim is invalid on any ground that the peti-
tioner raised or reasonably could have raised during 
that inter partes review. 
‘‘§ 316. Conduct of inter partes review 
‘‘(a) REGULATIONS.—The Director shall prescribe 
regulations—
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the 
public, except that any petition or document filed 
with the intent that it be sealed shall, if accom-
panied by a motion to seal, be treated as sealed 
pending the outcome of the ruling on the motion; 
‘‘(2) setting forth the standards for the showing 
of sufficient grounds to institute a review under sec-
tion 314(a); 
‘‘(3) establishing procedures for the submission 
of supplemental information after the petition is 
filed; 
‘‘(4) establishing and governing inter partes re-
view under this chapter and the relationship of such 
review to other proceedings under this title; 
‘‘(5) setting forth standards and procedures for 
discovery of relevant evidence, including that such 
discovery shall be limited to— 
‘‘(A) the deposition of witnesses submitting 
affidavits or declarations; and 
‘‘(B) what is otherwise necessary in the in-
terest of justice; 
‘‘(6) prescribing 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 an unnecessary increase in the 
cost of the proceeding; 
‘‘(7) providing for protective orders governing 
the exchange and submission of confidential infor-
mation; 
‘‘(8) providing for the filing by the patent 
owner of a response to the petition under section 
313 after an inter partes review has been instituted, 
and requiring that the patent owner file with such 
response, through affidavits or declarations, any ad-
ditional factual evidence and expert opinions on 
which the patent owner relies in support of the re-
sponse; 
‘‘(9) setting forth standards and procedures for 
allowing the patent owner to move to amend the pat-
ent under subsection (d) to cancel a challenged claim 
or propose a reasonable number of substitute claims, 
and ensuring that any information submitted by the 
patent owner in support of any amendment entered 
under subsection (d) is made available to the public 
as part of the prosecution history of the patent; 
‘‘(10) providing either party with the right to 
an oral hearing as part of the proceeding; 
‘‘(11) requiring that the final determination in 
an inter partes review be issued not later than 1
year after the date on which the Director notices the 
institution of a review under this chapter, except 
that the Director may, for good cause shown, extend 
the 1-year period by not more than 6 months, and 
may adjust the time periods in this paragraph in the 
case of joinder under section 315(c); 
‘‘(12) setting a time period for requesting join-
der under section 315(c); and 
‘‘(13) providing the petitioner with at least 1 
opportunity to file written comments within a time 
period established by the Director. 
‘‘(b) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
of any such regulation on the economy, the integrity of 
the patent system, the efficient administration of the Of-
fice, and the ability of the Office to timely complete pro-
ceedings instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat-
ent Trial and Appeal Board shall, in accordance with sec-
tion 6, conduct each inter partes review instituted under 
this chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During an inter partes re-
view instituted under this chapter, the patent owner
may file 1 motion to amend the patent in 1 or more 
of the following ways: 
‘‘(A) Cancel any challenged patent claim. 
‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL
MOTIONS.—Additional mo-
tions to amend may be permitted upon the joint re-
quest of the petitioner and the patent owner to ma-
terially advance the settlement of a proceeding under 
section 317, or as permitted by regulations pre-
scribed by the Director. 
‘‘(3) SCOPE OF CLAIMS.—An amendment under 
this subsection may not enlarge the scope of the 
claims of the patent or introduce new matter. 
‘‘(e) EVIDENTIARY STANDARDS.—In an inter partes 
review instituted under this chapter, the petitioner shall 
have 
the 
burden 
of 
proving 
a 
proposition 
of 
unpatentability by a preponderance of the evidence. 
‘‘§ 317. Settlement 
‘‘(a) IN GENERAL.—An inter partes review instituted 
under this chapter shall be terminated with respect to any 
petitioner upon the joint request of the petitioner and the 
patent owner, unless the Office has decided the merits of 
the proceeding before the request for termination is filed. 
If the inter partes review is terminated with respect to
a petitioner under this section, no estoppel under section 
315(e) shall attach to the petitioner, or to the real party 
in interest or privy of the petitioner, on the basis of that 
petitioner’s institution of that inter partes review. If no 
petitioner remains in the inter partes review, the Office 
may terminate the review or proceed to a final written de-
cision under section 318(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in such 
agreement or understanding, made in connection with, or 
in contemplation of, the termination of an inter partes re-
view under this section shall be in writing and a true copy 
of such agreement or understanding shall be filed in the 
Office before the termination of the inter partes review 
as between the parties. At the request of a party to the 
proceeding, the agreement or understanding shall be treat-
ed as business confidential information, shall be kept sepa-
rate from the file of the involved patents, and shall be 
made available only to Federal Government agencies on 
written request, or to any person on a showing of good 
cause. 
‘‘§ 318. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If an inter partes 
review is instituted and not dismissed under this chapter,
the Patent Trial and Appeal Board shall issue a final writ-
ten decision with respect to the patentability of any patent 
claim challenged by the petitioner and any new claim 
added under section 316(d). 
‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 
Board issues a final written decision under subsection (a) 
and the time for appeal has expired or any appeal has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable, confirming any claim of the patent de-
termined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) INTERVENING RIGHTS.—Any proposed amended 
or new claim determined to be patentable and incorporated 
into a patent following an inter partes review under this 
chapter shall have the same effect as that specified in sec-
tion 252 for reissued patents on the right of any person 
who made, purchased, or used within the United States, 
or imported into the United States, anything patented by 
such proposed amended or new claim, or who made sub-
stantial preparation therefor, before the issuance of a cer-
tificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office 
shall make available to the public data describing the
length of time between the institution of, and the issuance 
of a final written decision under subsection (a) for, each 
inter partes review. 
‘‘§ 319. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 
318(a) may appeal the decision pursuant to sections 141 
through 144. Any party to the inter partes review shall 
have the right to be a party to the appeal.’’. 
(b) CONFORMING AMENDMENT.—The table of chap-
ters for part III of title 35, United States Code, is amend-
ed by striking the item relating to chapter 31 and insert-
ing the following: 
‘‘31. Inter Partes Review ..........................................................................
311’’. 
(c) REGULATIONS AND EFFECTIVE DATE.— 
(1) REGULATIONS.—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 31 of title 35, United States Code, as 
amended by subsection (a) of this section. 
(2) APPLICABILITY.— 
(A) IN GENERAL.—The amendments made 
by subsection (a) shall take effect upon the ex-
piration of the 1-year period beginning on the 
date of the enactment of this Act and shall
apply to any patent issued before, on, or after 
that effective date. 
(B) GRADUATED IMPLEMENTATION.—The 
Director may impose a limit on the number of 
inter partes reviews that may be instituted 
under chapter 31 of title 35, United States 
Code, during each of the first 4 1-year periods 
in which the amendments made by subsection 
(a) are in effect, if such number in each year 
equals or exceeds the number of inter partes re-
examinations that are ordered under chapter 31 
of title 35, United States Code, in the last fiscal 
year ending before the effective date of the 
amendments made by subsection (a). 
(3) TRANSITION.— 
(A) IN GENERAL.—Chapter 31 of title 35, 
United States Code, is amended— 
(i) in section 312— 
(I) in subsection (a)— 
(aa) in the first sentence, by 
striking ‘‘a substantial new ques-
tion of patentability affecting any 
claim of the patent concerned is 
raised by the request,’’ and in-
serting ‘‘the information pre-
sented in the request shows that 
there is a reasonable likelihood 
that the requester would prevail 
with respect to at least 1 of the 
claims challenged in the re-
quest,’’; and 
(bb) in the second sentence, 
by striking ‘‘The existence of a 
substantial new question of pat-
entability’’ 
and 
inserting 
‘‘A 
showing that there is a reason-
able likelihood that the requester 
would prevail with respect to at 
least 1 of the claims challenged 
in the request’’; and 
(II) in subsection (c), in the sec-
ond sentence, by striking ‘‘no substan-
tial new question of patentability has 
been raised,’’ and inserting ‘‘the show-
ing required by subsection (a) has not 
been made,’’; and 
(ii) in section 313, by striking ‘‘a sub-
stantial new question of patentability af-
fecting a claim of the patent is raised’’ and 
inserting ‘‘it has been shown that there is
a reasonable likelihood that the requester 
would prevail with respect to at least 1 of 
the claims challenged in the request’’. 
(B) 
APPLICATION.—The 
amendments 
made by this paragraph— 
(i) shall take effect on the date of the 
enactment of this Act; and 
(ii) shall apply to requests for inter 
partes reexamination that are filed on or 
after such date of enactment, but before 
the effective date set forth in paragraph 
(2)(A) of this subsection. 
(C) CONTINUED APPLICABILITY OF PRIOR 
PROVISIONS.—The provisions of chapter 31 of 
title 35, United States Code, as amended by 
this paragraph, shall continue to apply to re-
quests for inter partes reexamination that are 
filed before the effective date set forth in para-
graph (2)(A) as if subsection (a) had not been 
enacted. 
(d) POST-GRANT REVIEW.—Part III of title 35, 
United States Code, is amended by adding at the end the 
following: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
‘‘Sec. 
‘‘321. Post-grant review. 
‘‘322. Petitions.
‘‘323. Preliminary response to petition. 
‘‘324. Institution of post-grant review. 
‘‘325. Relation to other proceedings or actions. 
‘‘326. Conduct of post-grant review. 
‘‘327. Settlement. 
‘‘328. Decision of the Board. 
‘‘329. Appeal. 
‘‘§ 321. Post-grant review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the owner of a patent may 
file with the Office a petition to institute a post-grant re-
view of the patent. The Director shall establish, by regula-
tion, fees to be paid by the person requesting the review, 
in such amounts as the Director determines to be reason-
able, considering the aggregate costs of the post-grant re-
view. 
‘‘(b) SCOPE.—A petitioner in a post-grant review may 
request to cancel as unpatentable 1 or more claims 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). 
‘‘(c) FILING DEADLINE.—A petition for a post-grant 
review may only be filed not later than the date that is 
9 months after the date of the grant of the patent or of 
the issuance of a reissue patent (as the case may be). 
‘‘§ 322. Petitions 
‘‘(a) REQUIREMENTS OF PETITION.—A 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 all real parties in in-
terest; 
‘‘(3) the petition identifies, in writing and with 
particularity, each claim challenged, the grounds on 
which the challenge to each claim is based, and the 
evidence that supports the grounds for the challenge 
to each claim, including— 
‘‘(A) copies of patents and printed publica-
tions that the petitioner relies upon in support 
of the petition; and 
‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on other factual evidence or on expert 
opinions; 
‘‘(4) the petition provides such other informa-
tion as the Director may require by regulation; and 
‘‘(5) the petitioner provides copies of any of the 
documents required under paragraphs (2), (3), and 
(4) to the patent owner or, if applicable, the des-
ignated representative of the patent owner.
‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 
after the receipt of a petition under section 321, the Direc-
tor shall make the petition available to the public. 
‘‘§ 323. Preliminary response to petition 
‘‘If a post-grant review petition is filed under section 
321, the patent owner shall have the right to file a prelimi-
nary response to the petition, within a time period set by 
the Director, that sets forth reasons why no post-grant 
review should be instituted based upon the failure of the 
petition to meet any requirement of this chapter. 
‘‘§ 324. Institution of post-grant review 
‘‘(a) THRESHOLD.—The Director may not authorize 
a post-grant review to be instituted unless the Director 
determines that the information presented in the petition 
filed under section 321, if such information is not rebut-
ted, would demonstrate that it is more likely than not that 
at least 1 of the claims challenged in the petition is 
unpatentable. 
‘‘(b) ADDITIONAL GROUNDS.—The determination re-
quired under subsection (a) may also be satisfied by a 
showing that the petition raises a novel or unsettled legal 
question that is important to other patents or patent ap-
plications. 
‘‘(c) TIMING.—The Director shall determine whether 
to institute a post-grant review under this chapter pursu-
ant to a petition filed under section 321 within 3 months 
after— 
‘‘(1) receiving a preliminary response to the pe-
tition under section 323; or 
‘‘(2) if no such preliminary response is filed, 
the last date on which such response may be filed. 
‘‘(d) NOTICE.—The Director shall notify the peti-
tioner and patent owner, in writing, of the Director’s de-
termination under subsection (a) or (b), and shall make 
such notice available to the public as soon as is prac-
ticable. Such notice shall include the date on which the 
review shall commence. 
‘‘(e) NO APPEAL.—The determination by the Direc-
tor whether to institute a post-grant review under this sec-
tion shall be final and nonappealable. 
‘‘§ 325. Relation to other proceedings or actions 
‘‘(a) INFRINGER’S CIVIL ACTION.— 
‘‘(1) POST-GRANT
REVIEW
BARRED
BY
CIVIL 
ACTION.—A post-grant review may not be instituted 
under this chapter if, before the date on which the 
petition for such a review is filed, the petitioner or 
real party in interest filed a civil action challenging 
the validity of a claim of the patent. 
‘‘(2) STAY OF CIVIL ACTION.—If the petitioner 
or real party in interest files a civil action chal-
lenging the validity of a claim of the patent on or 
after the date on which the petitioner files a petition 
for post-grant review of the patent, that civil action 
shall be automatically stayed until either— 
‘‘(A) the patent owner moves the court to 
lift the stay; 
‘‘(B) the patent owner files a civil action or 
counterclaim alleging that the petitioner or real 
party in interest has infringed the patent; or 
‘‘(C) the petitioner or real party in interest 
moves the court to dismiss the civil action. 
‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun-
terclaim challenging the validity of a claim of a pat-
ent does not constitute a civil action challenging the 
validity of a claim of a patent for purposes of this 
subsection. 
‘‘(b) PRELIMINARY INJUNCTIONS.—If a civil action 
alleging infringement of a patent is filed within 3 months 
after the date on which the patent is granted, the court 
may not stay its consideration of the patent owner’s mo-
tion for a preliminary injunction against infringement of 
the patent on the basis that a petition for post-grant re-
view has been filed under this chapter or that such a post- 
grant review has been instituted under this chapter.
‘‘(c) JOINDER.—If more than 1 petition for a post- 
grant review under this chapter is properly filed against 
the same patent and the Director determines that more 
than 1 of these petitions warrants the institution of a post- 
grant review under section 324, the Director may consoli-
date such reviews into a single post-grant review. 
‘‘(d) MULTIPLE
PROCEEDINGS.—Notwithstanding 
sections 135(a), 251, and 252, and chapter 30, during the 
pendency of any post-grant review under this chapter, if 
another proceeding or matter involving the patent is be-
fore the Office, the Director may determine the manner 
in which the post-grant review or other proceeding or mat-
ter may proceed, including providing for the stay, transfer, 
consolidation, or termination of any such matter or pro-
ceeding. In determining whether to institute or order a 
proceeding under this chapter, chapter 30, or chapter 31, 
the Director may take into account whether, and reject 
the petition or request because, the same or substantially 
the same prior art or arguments previously were presented 
to the Office. 
‘‘(e) ESTOPPEL.— 
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 
petitioner in a post-grant review of a claim in a pat-
ent under this chapter that results in a final written 
decision under section 328(a), or the real party in
‘‘§ 326. Conduct of post-grant review 
‘‘(a) REGULATIONS.—The Director shall prescribe 
regulations— 
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the 
public, except that any petition or document filed 
with the intent that it be sealed shall, if accom-
panied by a motion to seal, be treated as sealed 
pending the outcome of the ruling on the motion; 
‘‘(2) setting forth the standards for the showing 
of sufficient grounds to institute a review under sub-
sections (a) and (b) of section 324; 
‘‘(3) establishing procedures for the submission 
of supplemental information after the petition is 
filed; 
‘‘(4) establishing and governing a post-grant re-
view under this chapter and the relationship of such 
review to other proceedings under this title; 
‘‘(5) setting forth standards and procedures for 
discovery of relevant evidence, including that such 
discovery shall be limited to evidence directly related 
to factual assertions advanced by either party in the 
proceeding; 
‘‘(6) prescribing 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 an unnecessary increase in the 
cost of the proceeding; 
‘‘(7) providing for protective orders governing 
the exchange and submission of confidential infor-
mation; 
‘‘(8) providing for the filing by the patent 
owner of a response to the petition under section 
323 after a post-grant review has been instituted, 
and requiring that the patent owner file with such 
response, through affidavits or declarations, any ad-
ditional factual evidence and expert opinions on 
which the patent owner relies in support of the re-
sponse; 
‘‘(9) setting forth standards and procedures for 
allowing the patent owner to move to amend the pat-
ent under subsection (d) to cancel a challenged claim 
or propose a reasonable number of substitute claims, 
and ensuring that any information submitted by the 
patent owner in support of any amendment entered 
under subsection (d) is made available to the public 
as part of the prosecution history of the patent; 
‘‘(10) providing either party with the right to 
an oral hearing as part of the proceeding; 
‘‘(11) requiring that the final determination in 
any post-grant review be issued not later than 1
year after the date on which the Director notices the 
institution of a proceeding under this chapter, except 
that the Director may, for good cause shown, extend 
the 1-year period by not more than 6 months, and 
may adjust the time periods in this paragraph in the 
case of joinder under section 325(c); and 
‘‘(12) providing the petitioner with at least 1 
opportunity to file written comments within a time 
period established by the Director. 
‘‘(b) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
of any such regulation on the economy, the integrity of 
the patent system, the efficient administration of the Of-
fice, and the ability of the Office to timely complete pro-
ceedings instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat-
ent Trial and Appeal Board shall, in accordance with sec-
tion 6, conduct each post-grant review instituted under 
this chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During a post-grant review 
instituted under this chapter, the patent owner may 
file 1 motion to amend the patent in 1 or more of 
the following ways: 
‘‘(A) Cancel any challenged patent claim.
‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL
MOTIONS.—Additional mo-
tions to amend may be permitted upon the joint re-
quest of the petitioner and the patent owner to ma-
terially advance the settlement of a proceeding under 
section 327, or upon the request of the patent owner 
for good cause shown. 
‘‘(3) SCOPE OF CLAIMS.—An amendment under 
this subsection may not enlarge the scope of the 
claims of the patent or introduce new matter. 
‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re-
view instituted under this chapter, the petitioner shall 
have 
the 
burden 
of 
proving 
a 
proposition 
of 
unpatentability by a preponderance of the evidence. 
‘‘§ 327. Settlement 
‘‘(a) IN GENERAL.—A post-grant review instituted 
under this chapter shall be terminated with respect to any 
petitioner upon the joint request of the petitioner and the 
patent owner, unless the Office has decided the merits of 
the proceeding before the request for termination is filed. 
If the post-grant review is terminated with respect to a 
petitioner under this section, no estoppel under section 
325(e) shall attach to the petitioner, or to the real party 
in interest or privy of the petitioner, on the basis of that
petitioner’s institution of that post-grant review. If no pe-
titioner remains in the post-grant review, the Office may 
terminate the post-grant review or proceed to a final writ-
ten decision under section 328(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in such 
agreement or understanding, made in connection with, or 
in contemplation of, the termination of a post-grant review 
under this section shall be in writing, and a true copy of 
such agreement or understanding shall be filed in the Of-
fice before the termination of the post-grant review as be-
tween the parties. At the request of a party to the pro-
ceeding, the agreement or understanding shall be treated 
as business confidential information, shall be kept sepa-
rate from the file of the involved patents, and shall be 
made available only to Federal Government agencies on 
written request, or to any person on a showing of good 
cause. 
‘‘§ 328. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re-
view is instituted and not dismissed under this chapter, 
the Patent Trial and Appeal Board shall issue a final writ-
ten decision with respect to the patentability of any patent
claim challenged by the petitioner and any new claim 
added under section 326(d). 
‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 
Board issues a final written decision under subsection (a) 
and the time for appeal has expired or any appeal has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable, confirming any claim of the patent de-
termined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) INTERVENING RIGHTS.—Any proposed amended 
or new claim determined to be patentable and incorporated 
into a patent following a post-grant review under this 
chapter shall have the same effect as that specified in sec-
tion 252 of this title for reissued patents on the right of 
any person who made, purchased, or used within the 
United States, or imported into the United States, any-
thing patented by such proposed amended or new claim, 
or who made substantial preparation therefor, before the 
issuance of a certificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office 
shall make available to the public data describing the 
length of time between the institution of, and the issuance
of a final written decision under subsection (a) for, each 
post-grant review. 
‘‘§ 329. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 
328(a) may appeal the decision pursuant to sections 141 
through 144. Any party to the post-grant review shall have 
the right to be a party to the appeal.’’. 
(e) CONFORMING AMENDMENT.—The table of chap-
ters for part III of title 35, United States Code, is amend-
ed by adding at the end the following: 
‘‘32. Post-Grant Review ............................................................................
321’’. 
(f) REGULATIONS AND EFFECTIVE DATE.— 
(1) REGULATIONS.—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 (d) of this section. 
(2) APPLICABILITY.— 
(A) IN GENERAL.—The amendments made 
by subsection (d) shall take effect upon the ex-
piration of the 1-year period beginning on the 
date of the enactment of this Act and, except 
as provided in section 18 and in paragraph (3), 
shall apply only to patents described in section 
3(n)(1).
(B) LIMITATION.—The Director may im-
pose a limit on the number of post-grant re-
views that may be instituted under chapter 32 
of title 35, United States Code, during each of 
the first 4 1-year periods in which the amend-
ments made by subsection (d) are in effect. 
(3) PENDING INTERFERENCES.— 
(A) PROCEDURES IN GENERAL.—The Di-
rector shall determine, and include in the regu-
lations issued under paragraph (1), the proce-
dures under which an interference commenced 
before the effective date set forth in paragraph 
(2)(A) is to proceed, including whether such in-
terference— 
(i) is to be dismissed without preju-
dice to the filing of a petition for a post- 
grant review under chapter 32 of title 35, 
United States Code; or 
(ii) is to proceed as if this Act had not 
been enacted. 
(B) PROCEEDINGS BY PATENT TRIAL AND 
APPEAL
BOARD.—For purposes of an inter-
ference that is commenced before the effective 
date set forth in paragraph (2)(A), the Director 
may deem the Patent Trial and Appeal Board
to be the Board of Patent Appeals and Inter-
ferences, and may allow the Patent Trial and 
Appeal Board to conduct any further pro-
ceedings in that interference. 
(C) APPEALS.—The authorization to ap-
peal or have remedy from derivation pro-
ceedings in sections 141(d) and 146 of title 35, 
United States Code, as amended by this Act, 
and the jurisdiction to entertain appeals from 
derivation proceedings in section 1295(a)(4)(A) 
of title 28, United States Code, as amended by 
this Act, shall be deemed to extend to any final 
decision in an interference that is commenced 
before the effective date set forth in paragraph 
(2)(A) of this subsection and that is not dis-
missed pursuant to this paragraph. 
(g) CITATION OF PRIOR ART AND WRITTEN STATE-
MENTS.— 
(1) IN
GENERAL.—Section 301 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 301. Citation of prior art and written statements 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) statements of the patent owner filed in a 
proceeding before a Federal court or the Office in 
which the patent owner took a position on the scope 
of any claim of a particular patent. 
‘‘(b) OFFICIAL FILE.—If the person citing prior art 
or written statements pursuant to subsection (a) explains 
in writing the pertinence and manner of applying the prior 
art or written statements to at least 1 claim of the patent, 
the citation of the prior art or written statements and the 
explanation thereof shall become a part of the official file 
of the patent. 
‘‘(c) ADDITIONAL INFORMATION.—A party that sub-
mits a written statement pursuant to subsection (a)(2) 
shall include any other documents, pleadings, or evidence 
from the proceeding in which the statement was filed that 
addresses the written statement. 
‘‘(d) LIMITATIONS.—A written statement submitted 
pursuant to subsection (a)(2), and additional information 
submitted pursuant to subsection (c), shall not be consid-
ered by the Office for any purpose other than to determine 
the proper meaning of a patent claim in a proceeding that 
is ordered or instituted pursuant to section 304, 314, or 
324. If any such written statement or additional informa-
tion is subject to an applicable protective order, such 
statement or information shall be redacted to exclude in-
formation that is subject to that order. 
‘‘(e) CONFIDENTIALITY.—Upon the written request 
of the person citing prior art or written statements pursu-
ant to subsection (a), that person’s identity shall be ex-
cluded from the patent file and kept confidential.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 301 in the table of sections for 
chapter 30 of title 35, United States Code, is 
amended to read as follows: 
‘‘301. Citation of prior art and written statements.’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 1-year period beginning on the date of 
the enactment of this Act and shall apply to any 
patent issued before, on, or after that effective date. 
(h) REEXAMINATION.— 
(1) DETERMINATION BY DIRECTOR.— 
(A) IN GENERAL.—Section 303(a) of title 
35, United States Code, is amended by striking 
‘‘section 301 of this title’’ and inserting ‘‘sec-
tion 301 or 302’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect upon 
the expiration of the 1-year period beginning on
the date of the enactment of this Act and shall 
apply to any patent issued before, on, or after 
that effective date. 
(2) APPEAL.— 
(A) IN GENERAL.—Section 306 of title 35, 
United States Code, is amended by striking 
‘‘145’’ and inserting ‘‘144’’. 
(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 appeal of a reexamination before 
the Board of Patent Appeals and Interferences 
or the Patent Trial and Appeal Board that is 
pending on, or brought on or after, the date of 
the enactment of this Act. 
SEC. 7. PATENT TRIAL AND APPEAL BOARD. 
(a) COMPOSITION AND DUTIES.— 
(1) IN GENERAL.—Section 6 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) IN GENERAL.—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 administrative patent judges 
shall constitute the Patent Trial and Appeal Board. The
administrative patent judges shall be persons of competent 
legal knowledge and scientific ability who are appointed 
by the Secretary, in consultation with the Director. Any 
reference in any Federal law, Executive order, rule, regu-
lation, 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 applications for 
patents pursuant to section 134(a); 
‘‘(2) review appeals of reexaminations pursuant 
to section 134(b); 
‘‘(3) conduct derivation proceedings pursuant to 
section 135; and 
‘‘(4) conduct inter partes reviews and post- 
grant reviews pursuant to chapters 31 and 32. 
‘‘(c) 3-MEMBER PANELS.—Each appeal, derivation 
proceeding, post-grant review, and inter partes review 
shall be heard by at least 3 members of the Patent Trial 
and Appeal Board, who shall be designated by the Direc-
tor. Only the Patent Trial and Appeal Board may grant 
rehearings.
‘‘(d) TREATMENT OF PRIOR APPOINTMENTS.—The 
Secretary of Commerce may, in the Secretary’s discretion, 
deem the appointment of an administrative patent judge 
who, before the date of the enactment of this subsection, 
held office pursuant to an appointment by the Director 
to take effect on the date on which the Director initially 
appointed the administrative patent judge. It shall be a 
defense to a challenge to the appointment of an adminis-
trative patent judge on the basis of the judge’s having 
been originally appointed by the Director that the admin-
istrative patent judge so appointed was acting as a de 
facto officer.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 6 in the table of sections for chap-
ter 1 of title 35, United States Code, is amended to 
read as follows: 
‘‘6. Patent Trial and Appeal Board.’’. 
(b) ADMINISTRATIVE APPEALS.—Section 134 of title 
35, United States Code, is amended— 
(1) in subsection (b), by striking ‘‘any reexam-
ination proceeding’’ and inserting ‘‘a reexamina-
tion’’; and 
(2) by striking subsection (c). 
(c) CIRCUIT APPEALS.— 
(1) IN
GENERAL.—Section 141 of title 35, 
United States Code, is amended to read as follows:
‘‘§ 141. Appeal to Court of Appeals for the Federal 
Circuit 
‘‘(a) EXAMINATIONS.—An applicant who is dissatis-
fied with the final decision in an appeal to the Patent Trial 
and Appeal Board under section 134(a) may appeal the 
Board’s decision to the United States Court of Appeals 
for the Federal Circuit. By filing such an appeal, the ap-
plicant waives his or her right to proceed under section 
145. 
‘‘(b) REEXAMINATIONS.—A patent owner who is dis-
satisfied with the final decision in an appeal of a reexam-
ination to the Patent Trial and Appeal Board under sec-
tion 134(b) may appeal the Board’s decision only to the 
United States Court of Appeals for the Federal Circuit. 
‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.— 
A party to an inter partes review or a post-grant review 
who is dissatisfied with the final written decision of the 
Patent Trial and Appeal Board under section 318(a) or 
328(a) (as the case may be) may appeal the Board’s deci-
sion only to the United States Court of Appeals for the 
Federal Circuit. 
‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri-
vation proceeding who is dissatisfied with the final deci-
sion of the Patent Trial and Appeal Board in the pro-
ceeding may appeal the decision to the United States 
Court of Appeals for the Federal Circuit, but such appeal
shall be dismissed if any adverse party to such derivation 
proceeding, within 20 days after the appellant has filed 
notice of appeal in accordance with section 142, files no-
tice with the Director that the party elects to have all fur-
ther proceedings conducted as provided in section 146. If 
the appellant does not, within 30 days after the filing of 
such notice by the adverse party, file a civil action under 
section 146, the Board’s decision shall govern the further 
proceedings in the case.’’. 
(2) JURISDICTION.—Section 1295(a)(4)(A) of 
title 28, United States Code, is amended to read as 
follows: 
‘‘(A) the Patent Trial and Appeal Board of 
the United States Patent and Trademark Office 
with respect to a patent application, derivation 
proceeding, reexamination, post-grant review, or 
inter partes review under title 35, at the in-
stance of a party who exercised that party’s 
right to participate in the applicable proceeding 
before or appeal to the Board, except that an 
applicant or a party to a derivation proceeding 
may also have remedy by civil action pursuant 
to section 145 or 146 of title 35; an appeal 
under this subparagraph of a decision of the 
Board with respect to an application or deriva-
tion proceeding shall waive the right of such ap-
plicant or party to proceed under section 145 or 
146 of title 35;’’. 
(3) PROCEEDINGS ON APPEAL.—Section 143 of 
title 35, United States Code, is amended— 
(A) by striking the third sentence and in-
serting the following: ‘‘In an ex parte case, the 
Director shall submit to the court in writing the 
grounds for the decision of the Patent and 
Trademark Office, addressing all of the issues 
raised in the appeal. The Director shall have 
the right to intervene in an appeal from a deci-
sion entered by the Patent Trial and Appeal 
Board in a derivation proceeding under section 
135 or in an inter partes or post-grant review 
under chapter 31 or 32.’’; and 
(B) by striking the last sentence. 
(d) CONFORMING AMENDMENTS.— 
(1) ATOMIC
ENERGY
ACT
OF 1954.—Section 
152 of the Atomic Energy Act of 1954 (42 U.S.C. 
2182) is amended in the third undesignated para-
graph— 
(A) by striking ‘‘Board of Patent Appeals 
and Interferences’’ each place it appears and
inserting ‘‘Patent Trial and Appeal Board’’; 
and 
(B) by inserting ‘‘and derivation’’ after 
‘‘established for interference’’. 
(2) TITLE 51.—Section 20135 of title 51, 
United States Code, is amended— 
(A) in subsections (e) and (f), by striking 
‘‘Board of Patent Appeals and Interferences’’ 
each place it appears and inserting ‘‘Patent 
Trial and Appeal Board’’; and 
(B) in subsection (e), by inserting ‘‘and 
derivation’’ after ‘‘established for interference’’. 
(e) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
1-year period beginning on the date of the enactment of 
this Act and shall apply to proceedings commenced on or 
after that effective date, except that— 
(1) the extension of jurisdiction to the United 
States Court of Appeals for the Federal Circuit to 
entertain appeals of decisions of the Patent Trial 
and Appeal Board in reexaminations under the 
amendment made by subsection (c)(2) shall be 
deemed to take effect on the date of the enactment 
of this Act and shall extend to any decision of the 
Board of Patent Appeals and Interferences with re-
spect to a reexamination that is entered before, on, 
or after the date of the enactment of this Act; 
(2) the provisions of sections 6, 134, and 141 
of title 35, United States Code, as in effect on the 
day before the effective date of the amendments 
made by this section shall continue to apply to inter 
partes reexaminations that are requested under sec-
tion 311 of such title before such effective date; 
(3) the Patent Trial and Appeal Board may be 
deemed to be the Board of Patent Appeals and 
Interferences for purposes of appeals of inter partes 
reexaminations that are requested under section 311 
of title 35, United States Code, before the effective 
date of the amendments made by this section; and 
(4) the Director’s right under the fourth sen-
tence of section 143 of title 35, United States Code, 
as amended by subsection (c)(3) of this section, to 
intervene in an appeal from a decision entered by 
the Patent Trial and Appeal Board shall be deemed 
to extend to inter partes reexaminations that are re-
quested under section 311 of such title before the ef-
fective date of the amendments made by this section.
‘‘(A) set forth a concise description of the 
asserted relevance of each submitted document; 
‘‘(B) be accompanied by such fee as the 
Director may prescribe; and 
‘‘(C) include a statement by the person 
making such submission affirming that the sub-
mission was made in compliance with this sec-
tion.’’. 
(b) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
1-year period beginning on the date of the enactment of 
this Act and shall apply to any patent application filed 
before, on, or after that effective date. 
SEC. 9. VENUE. 
(a) 
TECHNICAL
AMENDMENTS
RELATING
TO 
VENUE.—Sections 32, 145, 146, 154(b)(4)(A), and 293 
of title 35, United States Code, and section 21(b)(4) of 
the Trademark Act of 1946 (15 U.S.C. 1071(b)(4)), are 
each amended by striking ‘‘United States District Court 
for the District of Columbia’’ each place that term appears 
and inserting ‘‘United States District Court for the East-
ern District of Virginia’’. 
(b) 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 civil action commenced 
on or after that date. 
SEC. 10. FEE SETTING AUTHORITY. 
(a) FEE SETTING.— 
(1) IN GENERAL.—The Director may set or ad-
just by rule any fee established, authorized, or 
charged under title 35, United States Code, or the 
Trademark Act of 1946 (15 U.S.C. 1051 et seq.), 
for any services performed by or materials furnished 
by, the Office, subject to paragraph (2). 
(2) FEES TO RECOVER COSTS.—Fees may be 
set or adjusted under paragraph (1) only to recover 
the aggregate estimated costs to the Office for proc-
essing, activities, services, and materials relating to 
patents (in the case of patent fees) and trademarks 
(in the case of trademark fees), including adminis-
trative costs of the Office with respect to such pat-
ent or trademark fees (as the case may be). 
(b) SMALL AND MICRO ENTITIES.—The fees set or 
adjusted under subsection (a) for filing, searching, exam-
ining, issuing, appealing, and maintaining patent applica-
tions and patents shall be reduced by 50 percent with re-
spect to the application of such fees to any small entity 
that qualifies for reduced fees under section 41(h)(1) of 
title 35, United States Code, and shall be reduced by 75
percent with respect to the application of such fees to any 
micro entity as defined in section 123 of that title (as 
added by subsection (g) of this section). 
(c) REDUCTION
OF
FEES
IN
CERTAIN
FISCAL 
YEARS.—In each fiscal year, the Director— 
(1) shall consult with the Patent Public Advi-
sory Committee and the Trademark Public Advisory 
Committee on the advisability of reducing any fees 
described in subsection (a); and 
(2) after the consultation required under para-
graph (1), may reduce such fees. 
(d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.— 
The Director shall— 
(1) not less than 45 days before publishing any 
proposed fee under subsection (a) in the Federal 
Register, submit the proposed fee to the Patent Pub-
lic Advisory Committee or the Trademark Public 
Advisory Committee, or both, as appropriate; 
(2)(A) provide the relevant advisory committee 
described in paragraph (1) a 30-day period following 
the submission of any proposed fee, in which to de-
liberate, consider, and comment on such proposal; 
(B) require that, during that 30-day period, the 
relevant advisory committee hold a public hearing 
relating to such proposal; and
(C) assist the relevant advisory committee in 
carrying out that public hearing, including by offer-
ing the use of the resources of the Office to notify 
and promote the hearing to the public and interested 
stakeholders; 
(3) require the relevant advisory committee to 
make available to the public a written report setting 
forth in detail the comments, advice, and rec-
ommendations of the committee regarding the pro-
posed fee; and 
(4) consider and analyze any comments, advice, 
or recommendations received from the relevant advi-
sory committee before setting or adjusting (as the 
case may be) the fee. 
(e) PUBLICATION IN THE FEDERAL REGISTER.— 
(1) PUBLICATION
AND
RATIONALE.—The Di-
rector shall— 
(A) publish any proposed fee change under 
this section in the Federal Register; 
(B) include, in such publication, the spe-
cific rationale and purpose for the proposal, in-
cluding the possible expectations or benefits re-
sulting from the proposed change; and 
(C) notify, through the Chair and Ranking 
Member of the Committees on the Judiciary of
the Senate and the House of Representatives, 
the Congress of the proposed change not later 
than the date on which the proposed change is 
published under subparagraph (A). 
(2) PUBLIC COMMENT PERIOD.—The Director 
shall, in the publication under paragraph (1), pro-
vide the public a period of not less than 45 days in 
which to submit comments on the proposed change 
in fees. 
(3) PUBLICATION OF FINAL RULE.—The final 
rule setting or adjusting a fee under this section 
shall be published in the Federal Register and in the 
Official Gazette of the Patent and Trademark Of-
fice. 
(4) CONGRESSIONAL COMMENT PERIOD.—A fee 
set or adjusted under subsection (a) may not become 
effective— 
(A) before the end of the 45-day period be-
ginning on the day after the date on which the 
Director publishes the final rule adjusting or 
setting the fee under paragraph (3); or 
(B) if a law is enacted disapproving such 
fee. 
(5) RULE
OF
CONSTRUCTION.—Rules pre-
scribed under this section shall not diminish—
(A) the rights of an applicant for a patent 
under title 35, United States Code, or for a 
mark under the Trademark Act of 1946; or 
(B) any rights under a ratified treaty. 
(f) RETENTION OF AUTHORITY.—The Director re-
tains the authority under subsection (a) to set or adjust 
fees only during such period as the Patent and Trademark 
Office remains an agency within the Department of Com-
merce. 
(g) MICRO ENTITY DEFINED.— 
(1) IN
GENERAL.—Chapter 11 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 123. Micro entity defined 
‘‘(a) IN GENERAL.—For purposes of this title, the 
term ‘micro entity’ means an applicant who makes a cer-
tification that the applicant— 
‘‘(1) qualifies as a small entity, as defined in 
regulations issued by the Director; 
‘‘(2) has not been named as an inventor on 
more than 4 previously filed patent applications, 
other than applications filed in another country, pro-
visional applications under section 111(b), or inter-
national applications filed under the treaty defined
in section 351(a) for which the basic national fee 
under section 41(a) was not paid; 
‘‘(3) did not, in the calendar year preceding the 
calendar year in which the applicable fee is being 
paid, have a gross income, as defined in section 
61(a) of the Internal Revenue Code of 1986, exceed-
ing 3 times the median household income for that 
preceding calendar year, as most recently reported 
by the Bureau of the Census; and 
‘‘(4) has not assigned, granted, or conveyed, 
and is not under an obligation by contract or law to 
assign, grant, or convey, a license or other ownership 
interest in the application concerned to an entity 
that, in the calendar year preceding the calendar 
year in which the applicable fee is being paid, had 
a gross income, as defined in section 61(a) of the In-
ternal Revenue Code of 1986, exceeding 3 times the 
median household income for that preceding cal-
endar year, as most recently reported by the Bureau 
of the Census. 
‘‘(b) APPLICATIONS RESULTING FROM PRIOR EM-
PLOYMENT.—An applicant is not considered to be named 
on a previously filed application for purposes of subsection 
(a)(2) if the applicant has assigned, or is under an obliga-
tion by contract or law to assign, all ownership rights in
the application as the result of the applicant’s previous 
employment. 
‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an 
applicant’s or entity’s gross income in the preceding cal-
endar year is not in United States dollars, the average 
currency exchange rate, as reported by the Internal Rev-
enue Service, during that calendar year shall be used to 
determine whether the applicant’s or entity’s gross income 
exceeds the threshold specified in paragraphs (3) or (4) 
of subsection (a). 
‘‘(d) INSTITUTIONS OF HIGHER EDUCATION.—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 in-
come, is an institution of higher education as de-
fined in section 101(a) of the Higher Education Act 
of 1965 (20 U.S.C. 1001(a)); or 
‘‘(2) the applicant has assigned, granted, con-
veyed, or is under an obligation by contract or law, 
to assign, grant, or convey, a license or other owner-
ship interest in the particular applications to such 
an institution of higher education. 
‘‘(e) DIRECTOR’S AUTHORITY.—In addition to the 
limits imposed by this section, the Director may, in the
Director’s discretion, impose income limits, annual filing 
limits, or other limits on who may qualify as a micro entity 
pursuant to this section if the Director determines that 
such additional limits are reasonably necessary to avoid 
an undue impact on other patent applicants or owners or 
are otherwise reasonably necessary and appropriate. At 
least 3 months before any limits proposed to be imposed 
pursuant to this subsection take effect, the Director shall 
inform the Committee on the Judiciary of the House of 
Representatives and the Committee on the Judiciary of 
the Senate of any such proposed limits.’’. 
(2) CONFORMING AMENDMENT.—Chapter 11 of 
title 35, United States Code, is amended by adding 
at the end the following new item: 
‘‘123. Micro entity defined.’’. 
(h) ELECTRONIC FILING INCENTIVE.— 
(1) IN GENERAL.—Notwithstanding any other 
provision of this section, an additional fee of $400 
shall be established for each application for an origi-
nal patent, except for a design, plant, or provisional 
application, that is not filed by electronic means as 
prescribed by the Director. The fee established by 
this subsection shall be reduced by 50 percent for 
small entities that qualify for reduced fees under 
section 41(h)(1) of title 35, United States Code. All 
fees paid under this subsection shall be deposited in
the Treasury as an offsetting receipt that shall not 
be available for obligation or expenditure. 
(2) EFFECTIVE
DATE.—This subsection shall 
take effect upon the expiration of the 60-day period 
beginning on the date of the enactment of this Act. 
(i) EFFECTIVE DATE; SUNSET.— 
(1) EFFECTIVE DATE.—Except as provided in 
subsection (h), this section and the amendments 
made by this section shall take effect on the date of 
the enactment of this Act. 
(2) SUNSET.—The authority of the Director to 
set or adjust any fee under subsection (a) shall ter-
minate upon the expiration of the 7-year period be-
ginning on the date of the enactment of this Act. 
(3) PRIOR REGULATIONS NOT AFFECTED.—The 
termination of authority under this subsection shall 
not affect any regulations issued under this section 
before the effective date of such termination or any 
rulemaking proceeding for the issuance of regula-
tions under this section that is pending on such 
date. 
SEC. 11. FEES FOR PATENT SERVICES. 
(a) GENERAL PATENT SERVICES.—Subsections (a) 
and (b) of section 41 of title 35, United States Code, are 
amended to read as follows:
‘‘(a) GENERAL FEES.—The Director shall charge the 
following fees: 
‘‘(1) FILING AND BASIC NATIONAL FEES.— 
‘‘(A) On filing each application for an 
original patent, except for design, plant, or pro-
visional applications, $330. 
‘‘(B) On filing each application for an 
original design patent, $220. 
‘‘(C) On filing each application for an 
original plant patent, $220. 
‘‘(D) On filing each provisional application 
for an original patent, $220. 
‘‘(E) On filing each application for the re-
issue of a patent, $330. 
‘‘(F) The basic national fee for each inter-
national application filed under the treaty de-
fined in section 351(a) entering the national 
stage under section 371, $330. 
‘‘(G) In addition, excluding any sequence 
listing or computer program listing filed in an 
electronic medium as prescribed by the Direc-
tor, for any application the specification and 
drawings of which exceed 100 sheets of paper 
(or equivalent as prescribed by the Director if 
filed in an electronic medium), $270 for each
additional 50 sheets of paper (or equivalent as 
prescribed by the Director if filed in an elec-
tronic medium) or fraction thereof. 
‘‘(2) EXCESS CLAIMS FEES.— 
‘‘(A) IN GENERAL.—In addition to the fee 
specified in paragraph (1)— 
‘‘(i) on filing or on presentation at 
any other time, $220 for each claim in 
independent form in excess of 3; 
‘‘(ii) on filing or on presentation at 
any other time, $52 for each claim (wheth-
er dependent or independent) in excess of 
20; and 
‘‘(iii) for each application containing a 
multiple dependent claim, $390. 
‘‘(B) MULTIPLE
DEPENDENT
CLAIMS.— 
For the purpose of computing fees under sub-
paragraph (A), a multiple dependent claim re-
ferred to in section 112 or any claim depending 
therefrom shall be considered as separate de-
pendent claims in accordance with the number 
of claims to which reference is made. 
‘‘(C) REFUNDS; ERRORS
IN
PAYMENT.— 
The Director may by regulation provide for a 
refund of any part of the fee specified in sub-
paragraph (A) for any claim that is canceled 
before an examination on the merits, as pre-
scribed by the Director, has been made of the 
application under section 131. Errors in pay-
ment of the additional fees under this para-
graph may be rectified in accordance with regu-
lations prescribed by the Director. 
‘‘(3) EXAMINATION FEES.— 
‘‘(A) IN GENERAL.— 
‘‘(i) For examination of each applica-
tion for an original patent, except for de-
sign, plant, provisional, or international 
applications, $220. 
‘‘(ii) For examination of each applica-
tion for an original design patent, $140. 
‘‘(iii) For examination of each applica-
tion for an original plant patent, $170. 
‘‘(iv) For examination of the national 
stage of each international application, 
$220. 
‘‘(v) For examination of each applica-
tion for the reissue of a patent, $650. 
‘‘(B) APPLICABILITY OF OTHER FEE PRO-
VISIONS.—The provisions of paragraphs (3) and 
(4) of section 111(a) relating to the payment of
the fee for filing the application shall apply to 
the payment of the fee specified in subpara-
graph (A) with respect to an application filed 
under section 111(a). The provisions of section 
371(d) relating to the payment of the national 
fee shall apply to the payment of the fee speci-
fied in subparagraph (A) with respect to an 
international application. 
‘‘(4) ISSUE FEES.— 
‘‘(A) For issuing each original patent, ex-
cept for design or plant patents, $1,510. 
‘‘(B) For issuing each original design pat-
ent, $860. 
‘‘(C) For issuing each original plant pat-
ent, $1,190. 
‘‘(D) For issuing each reissue patent, 
$1,510. 
‘‘(5) DISCLAIMER
FEE.—On filing each dis-
claimer, $140. 
‘‘(6) APPEAL FEES.— 
‘‘(A) On filing an appeal from the exam-
iner to the Patent Trial and Appeal Board, 
$540. 
‘‘(B) In addition, on filing a brief in sup-
port of the appeal, $540, and on requesting an
oral hearing in the appeal before the Patent 
Trial and Appeal Board, $1,080. 
‘‘(7) REVIVAL FEES.—On filing each petition 
for the revival of an unintentionally abandoned ap-
plication for a patent, for the unintentionally delayed 
payment of the fee for issuing each patent, or for an 
unintentionally delayed response by the patent owner 
in any reexamination proceeding, $1,620, unless the 
petition is filed under section 133 or 151, in which 
case the fee shall be $540. 
‘‘(8) EXTENSION FEES.—For petitions for 1- 
month extensions of time to take actions required by 
the Director in an application— 
‘‘(A) on filing a first petition, $130; 
‘‘(B) on filing a second petition, $360; and 
‘‘(C) on filing a third or subsequent peti-
tion, $620. 
‘‘(b) MAINTENANCE FEES.— 
‘‘(1) IN GENERAL.—The Director shall charge 
the following fees for maintaining in force all pat-
ents based on applications filed on or after Decem-
ber 12, 1980: 
‘‘(A) Three years and 6 months after 
grant, $980.
‘‘(B) Seven years and 6 months after 
grant, $2,480. 
‘‘(C) Eleven years and 6 months after 
grant, $4,110. 
‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay-
ment of the applicable maintenance fee under para-
graph (1) is received in the Office on or before the 
date the fee is due or within a grace period of 6 
months thereafter, the patent shall expire as of the 
end of such grace period. The Director may require 
the payment of a surcharge as a condition of accept-
ing within such 6-month grace period the payment 
of an applicable maintenance fee. 
‘‘(3) NO MAINTENANCE FEE FOR DESIGN OR 
PLANT
PATENT.—No fee may be established for 
maintaining a design or plant patent in force.’’. 
(b) DELAYS IN PAYMENT.—Subsection (c) of section 
41 of title 35, United States Code, is amended— 
(1) by striking ‘‘(c)(1) The Director’’ and in-
serting: 
‘‘(c) DELAYS
IN
PAYMENT
OF
MAINTENANCE 
FEES.— 
‘‘(1) ACCEPTANCE.—The Director’’; and 
(2) by striking ‘‘(2) A patent’’ and inserting:
100 
‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A pat-
ent’’. 
(c) PATENT SEARCH FEES.—Subsection (d) of sec-
tion 41 of title 35, United States Code, is amended to 
read as follows: 
‘‘(d) PATENT SEARCH AND OTHER FEES.— 
‘‘(1) PATENT SEARCH FEES.— 
‘‘(A) IN
GENERAL.—The Director shall 
charge the fees specified under subparagraph 
(B) for the search of each application for a pat-
ent, except for provisional applications. The Di-
rector shall adjust the fees charged under this 
paragraph to ensure that the fees recover an 
amount not to exceed the estimated average 
cost to the Office of searching applications for 
patent by Office personnel. 
‘‘(B) SPECIFIC FEES.—The fees referred 
to in subparagraph (A) are— 
‘‘(i) $540 for each application for an 
original patent, except for design, plant, 
provisional, or international applications; 
‘‘(ii) $100 for each application for an 
original design patent; 
‘‘(iii) $330 for each application for an 
original plant patent;
101 
‘‘(iv) $540 for the national stage of 
each international application; and 
‘‘(v) $540 for each application for the 
reissue of a patent. 
‘‘(C) APPLICABILITY
OF
OTHER
PROVI-
SIONS.—The provisions of paragraphs (3) and 
(4) of section 111(a) relating to the payment of 
the fee for filing the application shall apply to 
the payment of the fee specified in this para-
graph with respect to an application filed under 
section 111(a). The provisions of section 371(d) 
relating to the payment of the national fee shall 
apply to the payment of the fee specified in this 
paragraph with respect to an international ap-
plication. 
‘‘(D) REFUNDS.—The Director may by 
regulation provide for a refund of any part of 
the fee specified in this paragraph for any ap-
plicant who files a written declaration of ex-
press abandonment as prescribed by the Direc-
tor before an examination has been made of the 
application under section 131. 
‘‘(2) OTHER FEES.— 
‘‘(A) IN GENERAL.—The Director shall es-
tablish fees for all other processing, services, or
102 
materials relating to patents not specified in 
this section to recover the estimated average 
cost to the Office of such processing, services, 
or materials, except that the Director shall 
charge the following fees for the following serv-
ices: 
‘‘(i) For recording a document affect-
ing title, $40 per property. 
‘‘(ii) For each photocopy, $.25 per 
page. 
‘‘(iii) For each black and white copy 
of a patent, $3. 
‘‘(B) COPIES FOR LIBRARIES.—The yearly 
fee for providing a library specified in section 
12 with uncertified printed copies of the speci-
fications and drawings for all patents in that 
year shall be $50.’’. 
(d) FEES FOR SMALL ENTITIES.—Subsection (h) of 
section 41 of title 35, United States Code, is amended to 
read as follows: 
‘‘(h) FEES FOR SMALL ENTITIES.— 
‘‘(1) REDUCTIONS IN FEES.—Subject to para-
graph (3), fees charged under subsections (a), (b), 
and (d)(1) shall be reduced by 50 percent with re-
spect to their application to any small business con-
103 
cern as defined under section 3 of the Small Busi-
ness Act, and to any independent inventor or non-
profit organization as defined in regulations issued 
by the Director. 
‘‘(2) SURCHARGES AND OTHER FEES.—With re-
spect to its application to any entity described in 
paragraph (1), any surcharge or fee charged under 
subsection (c) or (d) shall not be higher than the 
surcharge or fee required of any other entity under 
the same or substantially similar circumstances. 
‘‘(3) REDUCTION FOR ELECTRONIC FILING.— 
The fee charged under subsection (a)(1)(A) shall be 
reduced by 75 percent with respect to its application 
to any entity to which paragraph (1) applies, if the 
application is filed by electronic means as prescribed 
by the Director.’’. 
(e) TECHNICAL AMENDMENTS.—Section 41 of title 
35, United States Code, is amended— 
(1) in subsection (e), in the first sentence, by 
striking ‘‘The Director’’ and inserting ‘‘WAIVER OF 
FEES; COPIES REGARDING NOTICE.—The Direc-
tor’’; 
(2) in subsection (f), by striking ‘‘The fees’’ 
and inserting ‘‘ADJUSTMENT OF FEES.—The fees’’; 
(3) by repealing subsection (g); and
104 
(4) in subsection (i)— 
(A) by striking ‘‘(i)(1) The Director’’ and 
inserting the following: 
‘‘(i) 
ELECTRONIC
PATENT
AND
TRADEMARK 
DATA.— 
‘‘(1) MAINTENANCE
OF
COLLECTIONS.—The 
Director’’; 
(B) by striking ‘‘(2) The Director’’ and in-
serting the following: 
‘‘(2) AVAILABILITY
OF
AUTOMATED
SEARCH 
SYSTEMS.—The Director’’; 
(C) by striking ‘‘(3) The Director’’ and in-
serting the following: 
‘‘(3) ACCESS FEES.—The Director’’; and 
(D) by striking ‘‘(4) The Director’’ and in-
serting the following: 
‘‘(4) ANNUAL REPORT TO CONGRESS.—The Di-
rector’’. 
(f) ADJUSTMENT
OF TRADEMARK FEES.—Section 
802(a) of division B of the Consolidated Appropriations 
Act, 2005 (Public Law 108–447) is amended— 
(1) in the first sentence, by striking ‘‘During 
fiscal years 2005, 2006, and 2007,’’, and inserting 
‘‘Until such time as the Director sets or adjusts the 
fees otherwise,’’; and
105 
(2) in the second sentence, by striking ‘‘During 
fiscal years 2005, 2006, and 2007, the’’ and insert-
ing ‘‘The’’. 
(g) EFFECTIVE DATE, APPLICABILITY, AND TRANSI-
TION PROVISIONS.—Section 803(a) of division B of the 
Consolidated Appropriations Act, 2005 (Public Law 108– 
447) is amended by striking ‘‘and shall apply only with 
respect to the remaining portion of fiscal year 2005 and 
fiscal year 2006’’. 
(h) PRIORITIZED EXAMINATION FEE.— 
(1) IN GENERAL.— 
(A) FEE.— 
(i) 
PRIORITIZED
EXAMINATION 
FEE.—A fee of $4,800 shall be established 
for filing a request, pursuant to section 
2(b)(2)(G) of title 35, United States Code, 
for prioritized examination of a nonprovi-
sional application for an original utility or 
plant patent. 
(ii) ADDITIONAL
FEES.—In addition 
to the prioritized examination fee under 
clause (i), the fees due on an application 
for which prioritized examination is being 
sought are the filing, search, and examina-
tion fees (including any applicable excess
112 
‘‘(d) FEES AND REGULATIONS.— 
‘‘(1) FEES.—The Director shall, by regulation, 
establish fees for the submission of a request for 
supplemental examination of a patent, and to con-
sider each item of information submitted in the re-
quest. If reexamination is ordered under subsection 
(b), fees established and applicable to ex parte reex-
amination proceedings under chapter 30 shall be 
paid, in addition to fees applicable to supplemental 
examination. 
‘‘(2) REGULATIONS.—The Director shall issue 
regulations governing the form, content, and other 
requirements of requests for supplemental examina-
tion, and establishing procedures for reviewing infor-
mation submitted in such requests. 
‘‘(e) FRAUD.—If the Director becomes aware, during 
the course of a supplemental examination or reexamina-
tion proceeding ordered under this section, that a material 
fraud on the Office may have been committed in connec-
tion with the patent that is the subject of the supplemental 
examination, then in addition to any other actions the Di-
rector is authorized to take, including the cancellation of 
any claims found to be invalid under section 307 as a re-
sult of a reexamination ordered under this section, the Di-
rector shall also refer the matter to the Attorney General