(2) in subsection (b)— 
(A) in paragraph (1)— 
(i) by striking ‘‘for a method’’; and 
(ii) by striking ‘‘at least 1 year before 
the effective filing date of such patent, 
and’’ and all that follows through the pe-
riod and inserting ‘‘and commercially used, 
or made substantial preparations for com-
mercial use of, the subject matter before 
the effective filing date of the claimed in-
vention.’’; 
(B) in paragraph (2)— 
(i) by striking ‘‘The sale or other dis-
position of a useful end result produced by 
a patented method’’ and inserting ‘‘The 
sale or other disposition of subject matter 
that qualifies for the defense set forth in 
this section’’; and 
(ii) by striking ‘‘a defense under this 
section with respect to that useful end re-
sult’’ and inserting ‘‘such defense’’; and 
(C) in paragraph (3)— 
(i) by striking subparagraph (A); and
(ii) by redesignating subparagraphs 
(B) and (C) as subparagraphs (A) and 
(B), respectively; 
(3) in paragraph (7), by striking ‘‘of the pat-
ent’’ and inserting ‘‘of the claimed invention’’; and 
(4) by amending the heading to read as follows: 
‘‘§ 273. Special defenses to and exemptions from in-
fringement’’. 
(c) TABLE OF SECTIONS.—The item related to sec-
tion 273 in the table of sections for chapter 28 is amended 
to read as follows: 
‘‘273. Special defenses to and exemptions from infringement.’’. 
(d) REEXAMINATION.—Section 315(c) is amended by 
striking ‘‘or could have raised’’. 
(e) EFFECTIVE DATES.—Notwithstanding any other 
provision of law, sections 311 through 318 of title 35, 
United States Code, as amended by this Act, shall apply 
to any patent that issues from an original application filed 
on any date. 
(f) POST-GRANT OPPOSITION PROCEDURES.— 
(1) IN GENERAL.—Part III is amended by add-
ing at the end the following new chapter: 
‘‘CHAPTER 32—POST-GRANT OPPOSITION 
PROCEDURES 
‘‘321. Right to oppose patent; opposition request. 
‘‘322. Real party in interest. 
‘‘323. Timing of opposition request.
‘‘324. Limits on scope of validity issues raised. 
‘‘325. Institution of the opposition proceeding. 
‘‘326. Patent owner response. 
‘‘327. Amendment of claims. 
‘‘328. Discovery and sanctions. 
‘‘329. Supplemental submissions. 
‘‘330. Hearing and briefs. 
‘‘331. Written decision. 
‘‘332. Burden of proof and evidence. 
‘‘333. Reconsideration. 
‘‘334. Appeal. 
‘‘335. Certificate. 
‘‘336. Estoppel. 
‘‘337. Duration of opposition. 
‘‘338. Settlement. 
‘‘339. Intervening rights. 
‘‘340. Relationship with reexamination proceedings. 
‘‘§ 321. Right to oppose patent; opposition request 
‘‘(a) FILING OF OPPOSITION.—A person may request 
that the grant or reissue of a patent be reconsidered by 
the Office by filing an opposition seeking to invalidate one 
or more claims in the patent. The Director shall establish, 
by regulation, fees to be paid by the opposer. Copies of 
patents and printed publications to be relied upon in sup-
port of the request must be filed with the request. If an 
opposer relies on other factual evidence or on expert opin-
ions in support of the opposition, such evidence and opin-
ions must be filed with the request through one or more 
accompanying affidavits or declarations. 
‘‘(b) COPIES PROVIDED TO PATENT OWNER.—Copies 
of any documents filed under subsection (a) must be pro-
vided to the patent owner or, if applicable, the designated 
representative of the patent owner, at the time of filing 
under subsection (a), except that if a request is made
under section 322(b) that the identity of a real party in 
interest be kept separate, then the identity of the real 
party in interest may be redacted from the copies pro-
vided. 
‘‘(c) FILE AVAILABLE TO THE PUBLIC.—The file of 
any opposition proceeding shall be made available to the 
public except as provided in section 322. 
‘‘§ 322. Real party in interest 
‘‘(a) IDENTIFICATION.—The person making the re-
quest under section 321 shall identify in writing each real 
party in interest, and the opposition shall proceed in the 
name of the real party in interest. 
‘‘(b) IDENTITY KEPT SECRET UPON REQUEST.— 
‘‘(1) IN GENERAL.—Subject to paragraph (2), 
if requested by the opposer, the identity of a real 
party in interest shall be kept separate from the file 
of the opposition and made available only to Govern-
ment agencies upon written request, or to any per-
son upon a showing of good cause. If the identity of 
a real party in interest is kept separate from the file 
under this subsection, then the opposition shall pro-
ceed in the name of the individual filing the request 
as representative of the real party in interest. 
‘‘(2) EXCEPTION.—No request under this para-
graph (1) to keep the identity of a real party in in-
terest separate from the file of the opposition may 
be made or maintained if the opposer relies upon 
factual evidence or expert opinions in the form of af-
fidavits or declarations during the opposition pro-
ceeding or if the opposer becomes a party to an ap-
peal under section 141. 
‘‘§ 323. Timing of opposition request 
‘‘An person may not make an opposition request 
under section 321 later than 9 months after the grant of 
the patent or issuance of a reissue patent, or later than 
6 months after receiving notice from the patent holder al-
leging infringement, except that, if the patent owner con-
sents in writing, an opposition request may be filed at any 
time during the period of enforceability of the patent. A 
court having jurisdiction over an issue of validity of a pat-
ent may not require the patent owner to consent to such 
a request. 
‘‘§ 324. Limits on scope of validity issues raised 
‘‘An opposition request must identify with particu-
larity the claims that are alleged to be invalid and, as to 
each claim, one or more issues of invalidity on which the 
opposition is based. The issues of invalidity that may be 
considered during the opposition proceeding are double 
patenting and any of the requirements for patentability 
set forth in sections 101, 102, 103, 112, and 251(d).
‘‘§ 325. Institution of the opposition proceeding; stay 
upon timely filed suit 
‘‘(a) DETERMINATION ON OPPOSITION REQUEST; IN-
STITUTION OF OPPOSITION PROCEEDING.— 
‘‘(1) DETERMINATION BY THE DIRECTOR.—For 
each opposition request submitted under section 
321(a), the Director shall determine if the written 
statement, and any evidence submitted with the re-
quest, establish that a substantial question of pat-
entability exists for at least one claim in the patent. 
The Director shall notify the patent owner and each 
opposer in writing of the Director’s findings, not 
later than the date in which an opposition pro-
ceeding is instituted pursuant to the request. Any 
determination made by the Director under this para-
graph shall not be appealable. 
‘‘(2) INSTITUTION.—If the Director makes a 
determination under paragraph (1) that a substan-
tial question of patentability exists, the Director 
shall commence an opposition proceeding. The Di-
rector shall institute such proceeding not earlier 
than the date on which the applicable period speci-
fied in section 323 expires, and not later than the 
date that is three months after such date. Absent a 
showing of good cause, the opposition proceeding
shall be limited to review of the claim or claims and 
the issues identified in the opposition request. 
‘‘(3) CONSOLIDATED PROCEEDING.—If an op-
position is instituted based upon more than one op-
position request, the opposition shall proceed as a 
single consolidated proceeding, unless later divided 
under subsection (c). 
‘‘(b) PARTIES.—The parties to the opposition pro-
ceeding shall be the patent owner and each opposer who 
has filed a request that results in a determination under 
subsection (a)(2) to institute the opposition proceeding. 
‘‘(c) ASSIGNMENT TO PANEL.—The Director shall as-
sign the opposition proceeding to a panel of three adminis-
trative patent judges (in this chapter referred to as the 
‘panel’). The panel shall decide the questions of patent-
ability raised in the opposition request. The decision shall 
be based upon the prosecution record that was the basis 
for the grant or reissue of the patent and the additional 
submissions by the parties to the opposition proceeding 
authorized under this chapter. The panel may, in appro-
priate cases, divide the opposition into separate pro-
ceedings if the opposition involves multiple opposition re-
quests by different parties. 
‘‘(d) STAY OF OPPOSITION.—If the owner of a patent 
files suit alleging infringement of the patent before the
expiration of the 9-month or 6-month period for filing an 
opposition request under section 321, the Director, if re-
quested by the patent owner, shall stay the opposition pro-
ceeding until judgment in the suit, and all appeals thereof, 
have become final. 
‘‘§ 326. Patent owner response 
‘‘After the Director has instituted an opposition pro-
ceeding under section 325, the patent owner shall have 
the right to file, within a time period set by the panel, 
a response to each opposition request that results in a de-
termination under section 325(a)(2) to institute an opposi-
tion proceeding. The patent owner shall file with the re-
sponse, through affidavits or declarations, any additional 
factual evidence and expert opinions on which the patent 
owner relies in support of the response. 
‘‘§ 327. Amendment of claims 
‘‘The patent owner is entitled to request amendment 
of any claims that are the subject of an opposition pro-
ceeding under this chapter, including by the addition of 
new claims. Any such request for amendment shall be filed 
with the patent owner’s response to an opposition request. 
The panel may permit further requests for amendment of 
the claims only upon good cause shown by the patent 
owner. No amendment enlarging the scope of the claims
of the patent shall be permitted in the opposition pro-
ceeding. 
‘‘§ 328. Discovery and sanctions 
‘‘(a) DEPOSITIONS.—After an opposition proceeding 
under this chapter is instituted, the patent owner shall 
have the right to depose each person submitting an affi-
davit or declaration on behalf of any opposer, and each 
opposer shall have the right to depose each person submit-
ting an affidavit or declaration on behalf of the patent 
owner. Such depositions shall be limited to cross-examina-
tion on matters relevant to the affidavit or declaration. 
‘‘(b) ADDITIONAL DISCOVERY.—No discovery other 
than that provided for in subsection (a) shall be permitted 
unless the panel determines that additional discovery is 
required in the interest of justice. 
‘‘(c) SCHEDULE.—The panel shall determine the 
schedule for the taking of discovery under subsections (a) 
and (b). 
‘‘(d) CONSEQUENCES
FOR FAILURE
TO RESPOND 
PROPERLY.—If any party to an opposition proceeding 
fails to properly respond to any discovery under subsection 
(a) or (b), the panel may draw appropriate adverse infer-
ences and take other action permitted by statute, rule, or 
regulation.
‘‘§ 329. Supplemental submissions 
‘‘The panel may permit one or more supplemental 
submissions to be made by any party to an opposition pro-
ceeding under this chapter, subject to the rights and limi-
tations on discovery under section 328. 
‘‘§ 330. Hearing and briefs 
‘‘A party to an opposition proceeding under this 
chapter may request an oral hearing by the date set by 
the panel. If a hearing is requested or the panel deter-
mines sua sponte that a hearing is warranted, the panel 
shall set a time for the hearing. The panel may permit 
the parties to file briefs for the hearing, and shall permit 
cross-examination of all affiants and declarants in the 
hearing, either before the panel or by deposition taken 
under section 328. 
‘‘§ 331. Written decision 
‘‘The panel shall issue a written decision on each 
issue of patentability with respect to each claim that is 
the subject of an opposition proceeding under this chapter. 
The written decision shall consist of findings of fact and 
conclusions of law. The written decision shall become a 
final determination of the Office on the issues raised in 
the opposition unless a party to the opposition files a re-
quest for reconsideration and modification of the written 
decision within a period of time set by the panel. Such
time period shall not be less than two weeks after the date 
of the written decision. 
‘‘§ 332. Burden of proof and evidence 
‘‘(a) BURDEN OF PROOF.—The opposer in an opposi-
tion proceeding under this chapter shall have the burden 
to prove the invalidity of a claim by a preponderance of 
the evidence. The determination of invalidity shall be 
based upon the broadest reasonable construction of the 
claim. 
‘‘(b) EVIDENCE.—The Federal Rules of Evidence 
shall apply to the opposition proceeding, except to the ex-
tent inconsistent with any provision of this chapter. 
‘‘§ 333. Reconsideration 
‘‘If a request is filed for reconsideration of the written 
decision in an opposition proceeding under this chapter, 
the panel may authorize a party to the proceeding who 
did not file such a request to file a response to the request 
for reconsideration. Following any reconsideration, the 
panel shall either deny the request for modification of the 
written decision or grant the request and issue a modified 
written decision, which shall constitute the final deter-
mination of the Office on the issues raised in the opposi-
tion proceeding.
‘‘§ 334. Appeal 
‘‘A party dissatisfied with the final determination of 
the panel in an opposition proceeding under this chapter 
may appeal the determination under sections 141 through 
144. Any party to the opposition proceeding shall have the 
right to be a party to the appeal. 
‘‘§ 335. Certificate 
‘‘When a decision of a panel in an opposition pro-
ceeding under this chapter has become final under section 
331, 333, or 334, the Director shall issue and publish a 
certificate in accordance with the decision, canceling any 
claim of the patent determined to be unpatentable, and 
shall incorporate into the patent any new or amended 
claims determined to be patentable. The issuance of the 
certificate shall terminate the opposition proceeding. 
‘‘§ 336. Estoppel 
‘‘(a) ESTOPPEL.— 
‘‘(1) IN GENERAL.—Subject to paragraph (2), 
after a certificate has been issued under section 335 
in accordance with the decision of the panel in an 
opposition proceeding, the determination with re-
spect to an issue of invalidity raised by an opposer 
shall bar the opposer from asserting, in any subse-
quent proceeding before the Office or a court involv-
ing that opposer under this title, that any claim of 
that patent addressed in the opposition proceeding is
invalid on the basis of any issue of fact or law actu-
ally decided by the panel and necessary to the deter-
mination of that issue. 
‘‘(2) EXCEPTION.—If an opposer in an opposi-
tion proceeding demonstrates in a subsequent pro-
ceeding referred to in paragraph (1) that there is 
additional factual evidence that is material to an 
issue of fact actually decided and necessary to the 
final determination in the opposition proceeding, 
that could not reasonably have been discovered by 
that opposer, the opposer may raise, in that subse-
quent proceeding, that issue of fact and any deter-
mined issue of law for which the issue of fact was 
necessary. 
‘‘(b) EXPANDED DEFINITION
OF OPPOSER.—For 
purposes of this section, the term ‘opposer’ includes the 
person making the request under section 321, any real 
party in interest, and their successors in interest. 
‘‘(c) NEW PARTY IN INTEREST.—If a proceeding 
arising by reason of additional factual evidence raised 
under subsection (a)(2) involves a real party in interest 
not identified to the patent owner under section 322, the 
real party in interest shall notify the Director and the pat-
ent owner of that fact and of the subsequent proceeding,
within 30 days after receiving notice that the subsequent 
proceeding has been filed. 
‘‘§ 337. Duration of opposition 
‘‘The final determination of a panel described in sec-
tion 333 shall issue not later than one year after the date 
on which the opposition proceeding is instituted under sec-
tion 325. Upon good cause shown, the Director may ex-
tend the 1-year period by not more than six months. 
‘‘§ 338. Settlement 
‘‘(a) IN GENERAL.—An opposition proceeding under 
this chapter shall be terminated with respect to any op-
poser upon the joint request of the opposer and the patent 
owner, unless the panel has issued a written decision 
under section 331 before the request for termination is 
filed. If the opposition is terminated with respect to an 
opposer under this section, no estoppel under section 336 
shall apply to that opposer. If no opposer remains in the 
proceeding, the panel may terminate the proceeding or 
proceed without the opposer to issue a written decision 
under section 331. 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and an opposer, 
including any collateral agreements referred to therein, 
that is made in connection with or in contemplation of 
the termination of an opposition proceeding, shall be in
writing. An opposition proceeding as between the parties 
to the agreement or understanding shall not be terminated 
until a true copy of the agreement or understanding, in-
cluding any such collateral agreements, has been filed in 
the Office. If any party filing an agreement or under-
standing requests, the agreement or understanding shall 
be kept separate from the file of the opposition, and shall 
be made available only to Government agencies on written 
request, or to any person on a showing of good cause. 
‘‘(c) DISCRETIONARY ACTIONS REVIEWABLE.—Any 
discretionary action of the Director under subsection (b) 
shall be reviewable under chapter 7 of title 5. 
‘‘§ 339. Intervening rights 
‘‘Any proposed amended or new claim determined to 
be patentable and incorporated into a patent following an 
opposition proceeding under this chapter shall have the 
same effect as that specified in section 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, anything patented by such pro-
posed amended or new claim, or who made substantial 
preparation therefor, before the certificate is issued under 
section 335 with respect to that amended or new claim.
‘‘§ 340. Relationship with reexamination proceedings 
‘‘A patent for which an opposition proceeding has 
been instituted under this chapter may not thereafter be 
made the subject of a request under section 302 or 311 
for reexamination by the same opposer or on behalf of the 
same real party in interest, on the same claim and on the 
same issue that was the basis of the opposition proceeding. 
An ex parte reexamination request made by a person other 
than the patent owner during the 9-month or 6-month pe-
riod specified in section 323, or an inter partes reexamina-
tion request made during the 9-month or 6-month period 
specified in section 323, shall be treated as a request 
under section 321, and no ex parte reexamination or inter 
partes reexamination may be ordered based on such re-
quest. A request for ex parte reexamination or inter partes 
reexamination made after the 9-month or 6-month period 
specified in section 323, and a request for ex parte reex-
amination made by the patent owner at any time, shall 
be stayed during the pendency of any opposition pro-
ceeding under this chapter.’’. 
(g) 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 Opposition Procedures ....................................
321’’.
SEC. 10. SUBMISSIONS BY THIRD PARTIES. 
Section 122 is amended by adding at the end the fol-
lowing: 
‘‘(e) PREISSUANCE SUBMISSIONS
BY THIRD PAR-
TIES.— 
‘‘(1) IN GENERAL.—Any person may submit for 
consideration and inclusion in the record of a patent 
application, any patent, published patent application 
or other publication of potential relevance to the ex-
amination of the application, if such submission is 
made in writing before the earlier of— 
‘‘(A) the date a notice of allowance under 
section 151 is mailed in the application for pat-
ent; or 
‘‘(B) either— 
‘‘(i) six months after the date on 
which the application for patent is pub-
lished under section 122, or 
‘‘(ii) the date of the first rejection 
under section 132 of any claim by the ex-
aminer during the examination of the ap-
plication for patent, 
whichever occurs later. 
‘‘(2) OTHER REQUIREMENTS.—Any submission 
under paragraph (1) shall—
‘‘(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 submitter 
affirming that the submission was made in 
compliance with this section.’’. 
SEC. 11. APPLICABILITY; TRANSITIONAL PROVISIONS. 
(a) SECTION 3.—The amendments made by section 
3 shall apply to applications for patent, and any patents 
issued thereon, that contain a claim to a claimed invention 
that has an effective filing date (as defined in section 
100(h) of title 35, United States Code) that is one year 
or more after the date of the enactment of this Act. With 
respect to any patent or application for patent to which 
the amendments made by section 3 apply, no claim in the 
patent or in the application shall be entitled to an effective 
filing date that is before the date of the enactment of this 
Act. 
(b) SECTIONS 4, 6, AND 7.—The amendments made 
by sections 4, 6, and 7 shall take effect on the date of 
the enactment of this Act, except that such amendments 
shall not apply to any action brought in any court before 
such date of the enactment.
(c) SECTION 5.—The amendments made by section 
5 shall take effect on the date of the enactment of this 
Act and shall apply to patents issued on or after such date 
of enactment, except that, in any action brought on or 
after the date of the enactment of this Act in any court 
involving a patent issued before the date of the enactment 
of this Act, the patent owner may consent to— 
(1) the jurisdiction of the United States Patent 
and Trademark Office based on a referral by the 
court under section 136(c)(4) of title 35, United 
States Code; and 
(2) any penalty imposed by the Patent and 
Trademark Office under section 136(e) of such title 
pursuant to such referral. 
(d) SECTION 8.—Any regulations issued under sec-
tion 123 of title 35, United States Code, as added by sec-
tion 8 of this Act, shall apply to any application for patent 
that is filed on or after the effective date of such regula-
tions. Such regulations may not take effect before the end 
of the 1-year period beginning on the date of the enact-
ment of this Act. 
(e) SECTION 9.—(1) The amendments made by sec-
tion 9(a) shall apply to applications for patent filed on 
or after the date of the enactment of this Act.
(2) The amendments made by section 9(b) shall apply 
to patents issuing on applications filed on or after the date 
of the enactment of this Act. 
(3) The amendments made by subsections (c) and (d) 
of section 9 shall apply to any request made under section 
311 of title 35, United States Code, on or after the date 
of the enactment of this Act. 
(4) The amendments made by section 9(e) shall take 
effect on the date of the enactment of this Act, except 
that— 
(A) no request for institution of an opposition 
proceeding under chapter 32 of title 35, United 
States Code, may be made until— 
(i) the end of the 1-year period beginning 
on the date of the enactment of this Act; or 
(ii) such later date that the Director may 
establish through notice published in the Fed-
eral Register; and 
(B) no such request may be made unless the 
amendments made by section 3 apply with respect to 
the patent that is the subject of the request. 
(f) SECTION 10.—The amendments made by section 
10 shall take effect at the end of the 1-year period begin-
ning on the date of the enactment of this Act.
(g) DETERMINING VALIDITY OF CLAIMS.—For the 
purpose of determining the validity of a claim in any pat-
ent or the patentability of any claim in a nonprovisional 
application for patent that is made before the effective 
date of the amendments made by section 3, other than 
in an action brought in a court before the date of the en-
actment of this Act— 
(1) the provisions of sections 102(c) and 102(d) 
of title 35, United States Code, shall be deemed to 
be repealed; 
(2) the provisions of sections 102(f) of title 35, 
United States Code, shall be deemed to be repealed 
and replaced by the provisions of section 101 of title 
35, United States Code, as amended by section 4(a) 
of this Act, relating to the inventor’s right to seek 
and obtain a patent, except that a claim in a patent 
that is otherwise valid shall not be invalidated by 
reason of this paragraph; and 
(3) the term ‘‘in public use or on sale’’ as used 
in section 102(b) of title 35, United States Code, 
shall be deemed to exclude the use, sale, or offer for 
sale of any subject matter that had not become rea-
sonably and effectively accessible to persons of ordi-
nary skill in the art to which the subject matter per-
tains, as defined in the amendments made by section 
3 of this Act. 
(h) EFFECT OF EUROPEAN PATENT CONVENTION 
AND PATENT LAWS OF JAPAN.—Before the date, if ever, 
that the Director of the United States Patent and Trade-
mark Office publishes a notice in the Official Gazette of 
the Office declaring that both the European Patent Con-
vention and the patent laws of Japan afford inventors 
seeking patents a 1-year period prior to the effective filing 
date of a claimed invention during which disclosures made 
by the inventor or by others who obtained the subject mat-
ter disclosed directly or indirectly from the inventor do not 
constitute prior art, the term ‘‘effective filing date’’ as 
used in section 102(a)(1)(A) of title 35, United States 
Code, shall be construed by disregarding any right of pri-
ority except that provided under section 119(e) of title 35, 
United States Code. 
Æ