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‘‘(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. 
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‘‘(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 
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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. 
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‘‘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. 
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‘‘§ 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. 
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‘‘(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 
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‘‘(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— 
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‘‘(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 
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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 
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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; 
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‘‘(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 
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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. 
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