‘‘(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. If any party filing such agreement or 
understanding so requests, the copy shall be kept separate 
from the file of the post-grant review, and shall be made 
available only to Federal Government agencies upon writ-
ten request, or to any other 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-
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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) 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. 
‘‘§ 330. Request for stay of certain proceedings 
‘‘If a party seeks a stay of a civil action alleging in-
fringement of a patent under section 281, or a proceeding 
before the International Trade Commission under section 
337 of the Tariff Act of 1930, relating to a post-grant 
review under this chapter, the court shall decide whether 
to enter a stay based on— 
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‘‘(1) whether a stay, or the denial thereof, will 
simplify the issues in question and streamline the 
trial; 
‘‘(2) whether discovery is complete and whether 
a trial date has been set; 
‘‘(3) whether a stay, or the denial thereof, 
would unduly prejudice the nonmoving party or 
present a clear tactical advantage for the moving 
party; and 
‘‘(4) whether a stay, or the denial thereof, will 
reduce the burden of litigation on the parties and on 
the court.’’. 
(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-
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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 to any patent that is described in 
section 2(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 4 years following the effective date set forth 
in subparagraph (A). 
(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) is to proceed, including whether such inter-
ference— 
(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. 
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(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), 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, and the jurisdiction to en-
tertain appeals from derivation proceedings in 
section 1295(a)(4)(A) of title 28, United States 
Code, shall be deemed to extend to any final de-
cision in an interference that is commenced be-
fore the effective date set forth in paragraph 
(2) of this subsection and that is not dismissed 
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: 
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‘‘§ 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-
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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, it shall 
be redacted to exclude information 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 
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‘‘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 that is 
pending before the Board of Patent Appeals 
and Interferences or the Patent Trial and Ap-
peal Board on or after the date of the enact-
ment of this Act. 
SEC. 6. 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: 
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‘‘§ 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. 
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‘‘(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— 
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(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 the 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 a post-grant or inter partes review who is dis-
satisfied with the final written decision of the Patent Trial 
and Appeal Board under section 318(a) or 328(a) may 
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appeal the Board’s decision 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 at the instance of a party 
who exercised that party’s right to participate 
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in the applicable proceeding before or appeal to 
the Board, except that an applicant or a party 
to a derivation proceeding may also have rem-
edy by civil action pursuant to section 145 or 
146 of title 35; an appeal under this subpara-
graph of a decision of the Board with respect 
to an application or derivation proceeding shall 
waive the right of such applicant 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) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
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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 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 date of the enactment of this Act 
shall continue to apply to inter partes reexamina-
tions that are requested under section 311 of such 
title before the effective date of the amendments 
made by this section; 
(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 
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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. 
SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 
(a) IN GENERAL.—Section 122 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing: 
‘‘(e) PREISSUANCE SUBMISSIONS
BY THIRD PAR-
TIES.— 
‘‘(1) IN GENERAL.—Any third party may sub-
mit for consideration and inclusion in the record of 
a patent application, any patent, published patent 
application, or other printed publication of potential 
relevance to the examination of the application, if 
such submission is made in writing before the earlier 
of— 
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‘‘(A) the date a notice of allowance under 
section 151 is given or mailed in the application 
for patent; or 
‘‘(B) the later of— 
‘‘(i) 6 months after the date on which 
the application for patent is first published 
under section 122 by the Office, 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. 
‘‘(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 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 
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this Act and shall apply to any patent application filed 
before, on, or after that effective date. 
SEC. 8. 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. 9. 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 
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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 (f) 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. 
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(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 
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(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. 
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(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 
trademark 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 
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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 examination fee for the 
application is being paid, have a gross income, as de-
fined in section 61(a) of the Internal Revenue Code 
of 1986, exceeding 3 times the median household in-
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come for that preceding calendar year, as 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 examination fee for the application 
is being paid, had a gross income, as defined in sec-
tion 61(a) of the Internal Revenue Code of 1986, ex-
ceeding 3 times the median household income for 
that preceding calendar year, as most recently re-
ported 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 year 
is not in United States dollars, the average currency ex-
change rate, as reported by the Internal Revenue Service, 
during the preceding year shall be used to determine 
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whether the applicant’s or entity’s gross income exceeds 
the threshold specified in paragraphs (3) or (4) of sub-
section (a). 
‘‘(d) PUBLIC
INSTITUTIONS
OF
HIGHER
EDU-
CATION.— 
‘‘(1) IN GENERAL.—For purposes of this sec-
tion, a micro entity shall include an applicant who 
certifies that— 
‘‘(A) the applicant’s employer, from which 
the applicant obtains the majority of the appli-
cant’s income, is an institution of higher edu-
cation, as defined in section 101 of the Higher 
Education Act of 1965 (20 U.S.C. 1001), that 
is a public institution; or 
‘‘(B) the applicant has assigned, granted, 
conveyed, or is under an obligation by contract 
or law to assign, grant, or convey, a license or 
other ownership interest in the particular appli-
cation to such State public institution. 
‘‘(2) DIRECTOR’S
AUTHORITY.—The Director 
may, in the Director’s discretion, impose income lim-
its, annual filing limits, or other limits on who may 
qualify as a micro entity pursuant to this subsection 
if the Director determines that such additional limits 
are reasonably necessary to avoid an undue impact 
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on other patent applicants or owners or are other-
wise reasonably necessary and appropriate. At least 
3 months before any limits proposed to be imposed 
pursuant to this paragraph shall take effect, the Di-
rector 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, a fee of $400 shall be es-
tablished for each application for an original 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 obli-
gation or expenditure. 
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(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.—This section and the amend-
ments made by this section shall take effect on the date 
of the enactment of this Act. 
SEC. 10. 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. 
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‘‘(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 
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‘‘(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. 
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‘‘(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. 
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‘‘(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— 
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‘‘(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 
‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A patent’’. 
(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 
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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. 
‘‘(E) APPLICATIONS SUBJECT TO SECRECY 
ORDER.—A search of an application that is the 
subject of a secrecy order under section 181 or 
otherwise involves classified information may be 
conducted only by Office personnel. 
‘‘(F) CONFLICTS OF INTEREST.—A quali-
fied search authority that is a commercial enti-
ty may not conduct a search of a patent appli-
cation if the entity has any direct or indirect fi-
nancial interest in any patent or in any pending 
or imminent application for patent filed or to be 
filed in the Office. 
‘‘(2) OTHER FEES.— 
‘‘(A) IN GENERAL.—The Director shall es-
tablish fees for all other processing, services, or 
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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-
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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 
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(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 
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(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) Division B of Public Law 108–447 is amended by 
striking ‘‘and shall apply only with respect to the remain-
ing portion of fiscal year 2005 and fiscal year 2006’’. 
(h) ELECTRONIC FILING INCENTIVE.— 
(1) IN GENERAL.—Notwithstanding any other 
provision of this section, a fee of $400 shall be es-
tablished for each application for an original 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 obli-
gation 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. 
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(i) REDUCTION IN FEES FOR SMALL ENTITY PAT-
ENTS.—The Director shall reduce fees for providing 
prioritized examination of utility and plant patent applica-
tions by 50 percent for small entities that qualify for re-
duced fees under section 41(h)(1) of title 35, United 
States Code, so long as the fees of the prioritized examina-
tion program are set to recover the estimated cost of the 
program. 
(j) EFFECTIVE DATE.—Except as provided in sub-
section (h), this section and the amendments made by this 
section shall take effect on the date of the enactment of 
this Act. 
SEC. 11. SUPPLEMENTAL EXAMINATION. 
(a) IN GENERAL.—Chapter 25 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing: 
‘‘§ 257. Supplemental examinations to consider, re-
consider, or correct information 
‘‘(a) REQUEST
FOR
SUPPLEMENTAL
EXAMINA-
TION.—A patent owner may request supplemental exam-
ination of a patent in the Office to consider, reconsider, 
or correct information believed to be relevant to the pat-
ent, in accordance with such requirements as the Director 
may establish. Within 3 months after the date a request 
for supplemental examination meeting the requirements of 
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100 
this section is received, the Director shall conduct the sup-
plemental examination and shall conclude such examina-
tion by issuing a certificate indicating whether the infor-
mation presented in the request raises a substantial new 
question of patentability. 
‘‘(b) REEXAMINATION ORDERED.—If the certificate 
issued under subsection (a) indicates that a substantial 
new question of patentability is raised by 1 or more items 
of information in the request, the Director shall order re-
examination of the patent. The reexamination shall be 
conducted according to procedures established by chapter 
30, except that the patent owner shall not have the right 
to file a statement pursuant to section 304. During the 
reexamination, the Director shall address each substantial 
new question of patentability identified during the supple-
mental examination, notwithstanding the limitations in 
chapter 30 relating to patents and printed publication or 
any other provision of such chapter. 
‘‘(c) EFFECT.— 
‘‘(1) IN GENERAL.—A patent shall not be held 
unenforceable on the basis of conduct relating to in-
formation that had not been considered, was inad-
equately considered, or was incorrect in a prior ex-
amination of the patent if the information was con-
sidered, reconsidered, or corrected during a supple-
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101 
mental examination of the patent. The making of a 
request under subsection (a), or the absence thereof, 
shall not be relevant to enforceability of the patent 
under section 282. 
‘‘(2) EXCEPTIONS.— 
‘‘(A) 
PRIOR
ALLEGATIONS.—Paragraph 
(1) shall not apply to an allegation pled with 
particularity, or set forth with particularity in 
a notice received by the patent owner under sec-
tion 505(j)(2)(B)(iv)(II) of the Federal Food, 
Drug, 
and 
Cosmetic 
Act 
(21 
U.S.C. 
355(j)(2)(B)(iv)(II)), before the date of a sup-
plemental examination request under subsection 
(a) to consider, reconsider, or correct informa-
tion forming the basis for the allegation. 
‘‘(B) PATENT ENFORCEMENT ACTIONS.— 
In an action brought under section 337(a) of 
the Tariff Act of 1930 (19 U.S.C. 1337(a)), or 
section 281 of this title, paragraph (1) shall not 
apply to any defense raised in the action that 
is based upon information that was considered, 
reconsidered, or corrected pursuant to a supple-
mental examination request under subsection 
(a), unless the supplemental examination, and 
any reexamination ordered pursuant to the re-
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102 
quest, are concluded before the date on which 
the action is brought. 
‘‘(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) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed— 
‘‘(1) to preclude the imposition of sanctions 
based upon criminal or antitrust laws (including sec-
tion 1001(a) of title 18, the first section of the Clay-
ton Act, and section 5 of the Federal Trade Com-
mission Act to the extent that section relates to un-
fair methods of competition); 
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103 
‘‘(2) to limit the authority of the Director to in-
vestigate issues of possible misconduct and impose 
sanctions for misconduct in connection with matters 
or proceedings before the Office; or 
‘‘(3) to limit the authority of the Director to 
issue regulations under chapter 3 relating to sanc-
tions for misconduct by representatives practicing 
before the Office.’’. 
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 25 of title 35, United States Code, is 
amended by adding at the end the following new item: 
‘‘257. Supplemental examinations to consider, reconsider, or correct informa-
tion.’’. 
(c) 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 issued before, on, 
or after that effective date. 
SEC. 12. FUNDING AGREEMENTS. 
(a) IN GENERAL.—Section 202(c)(7)(E)(i) of title 
35, United States Code, is amended— 
(1) by striking ‘‘75 percent’’ and inserting ‘‘15 
percent’’; and 
(2) by striking ‘‘25 percent’’ and inserting ‘‘85 
percent’’. 
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104 
(b) EFFECTIVE DATE.—The amendments made by 
this section shall take effect on the date of enactment of 
this Act and shall apply to any patent issued before, on, 
or after that date. 
SEC. 13. TAX STRATEGIES DEEMED WITHIN THE PRIOR 
ART. 
(a) IN GENERAL.—For purposes of evaluating an in-
vention under section 102 or 103 of title 35, United States 
Code, any strategy for reducing, avoiding, or deferring tax 
liability, whether known or unknown at the time of the 
invention or application for patent, shall be deemed insuf-
ficient to differentiate a claimed invention from the prior 
art. 
(b) DEFINITION.—For purposes of this section, the 
term ‘‘tax liability’’ refers to any liability for a tax under 
any Federal, State, or local law, or the law of any foreign 
jurisdiction, including any statute, rule, regulation, or or-
dinance that levies, imposes, or assesses such tax liability. 
(c) EXCLUSIONS.—This section does not apply to 
that part of an invention that— 
(1) is a method, apparatus, technology, com-
puter program product, or system, that is used sole-
ly for preparing a tax or information return or other 
tax filing, including one that records, transmits, 
transfers, or organizes data related to such filing; or 
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(2) is a method, apparatus, technology, com-
puter program product, or system used solely for fi-
nancial management, to the extent that it is sever-
able from any tax strategy or does not limit the use 
of any tax strategy by any taxpayer or tax advisor. 
(d) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed to imply that other business meth-
ods are patentable or that other business-method patents 
are valid. 
(e) EFFECTIVE DATE; APPLICABILITY.—This section 
shall take effect on the date of enactment of this Act and 
shall apply to any patent application pending, and any 
patent issued, on or after that date. 
SEC. 14. BEST MODE REQUIREMENT. 
(a) IN GENERAL.—Section 282 of title 35, United 
State Code, is amended in its second undesignated para-
graph by striking paragraph (3) and inserting the fol-
lowing: 
‘‘(3) Invalidity of the patent or any claim in 
suit for failure to comply with— 
‘‘(A) any requirement of section 112, ex-
cept that the failure to disclose the best mode 
shall not be a basis on which any claim of a 
patent may be canceled or held invalid or other-
wise unenforceable; or 
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‘‘(B) any requirement of section 251.’’. 
(b) CONFORMING AMENDMENT.—Sections 119(e)(1) 
and 120 of title 35, United States Code, are each amended 
by striking ‘‘the first paragraph of section 112 of this 
title’’ and inserting ‘‘section 112(a) (other than the re-
quirement to disclose the best mode)’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the date of the enact-
ment of this Act and shall apply to proceedings com-
menced on or after that date. 
SEC. 15. MARKING. 
(a) VIRTUAL MARKING.— 
(1) IN GENERAL.—Section 287(a) of title 35, 
United States Code, is amended by striking ‘‘or 
when,’’ and inserting ‘‘or by fixing thereon the word 
‘patent’ or the abbreviation ‘pat.’ together with an 
address of a posting on the Internet, accessible to 
the public without charge for accessing the address, 
that associates the patented article with the number 
of the patent, or when,’’. 
(2) EFFECTIVE DATE.—The amendment made 
by this subsection shall apply to any case that is 
pending on, or commenced on or after, the date of 
the enactment of this Act. 
(b) FALSE MARKING.— 
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(1) CIVIL
PENALTY.—Section 292(a) of title 
35, United States, Code, is amended by adding at 
the end the following: ‘‘Only the United States may 
sue for the penalty authorized by this subsection.’’. 
(2) CIVIL ACTION FOR DAMAGES.—Subsection 
(b) of section 292 of title 35, United States Code, 
is amended to read as follows: 
‘‘(b) A person who has suffered a competitive injury 
as a result of a violation of this section may file a civil 
action in a district court of the United States for recovery 
of damages adequate to compensate for the injury.’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall apply to any case that is 
pending on, or commenced on or after, the date of 
the enactment of this Act. 
SEC. 16. ADVICE OF COUNSEL. 
(a) IN GENERAL.—Chapter 29 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing: 
‘‘§ 298. Advice of counsel 
‘‘The failure of an infringer to obtain the advice of 
counsel with respect to any allegedly infringed patent, or 
the failure of the infringer to present such advice to the 
court or jury, may not be used to prove that the accused 
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infringer willfully infringed the patent or that the in-
fringer intended to induce infringement of the patent.’’. 
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, is 
amended by adding at the end the following: 
‘‘298. Advice of counsel.’’. 
SEC. 17. OWNERSHIP; ASSIGNMENT. 
The fourth undesignated paragraph of section 261 of 
title 35, United States Code, is amended by inserting be-
fore the period the following: ‘‘and identifies all real par-
ties in interest and those entities that control, directly or 
indirectly, such real parties in interest’’. 
SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSI-
NESS METHOD PATENTS. 
(a) REFERENCES.—Except as otherwise expressly 
provided, wherever in this section language is expressed 
in terms of a section or chapter, the reference shall be 
considered to be made to that section or chapter in title 
35, United States Code. 
(b) TRANSITIONAL PROGRAM.— 
(1) ESTABLISHMENT.—Not later than the date 
that is 1 year after the date of the enactment of this 
Act, the Director shall issue regulations establishing 
and implementing a transitional post-grant review 
proceeding for review of the validity of covered busi-
ness method patents. The transitional proceeding 
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(b) COURT OF APPEALS FOR THE FEDERAL CIR-
CUIT.—Section 1295(a)(1) of title 28, United States Code, 
is amended to read as follows: 
‘‘(1) of an appeal from a final decision of a dis-
trict court of the United States, the District Court 
of Guam, the District Court of the Virgin Islands, 
or the District Court of the Northern Mariana Is-
lands, in any civil action arising under, or in any 
civil action in which a party has asserted a compul-
sory counterclaim arising under, any Act of Con-
gress relating to patents or plant variety protec-
tion;’’. 
(c) REMOVAL.— 
(1) IN
GENERAL.—Chapter 89 of title 28, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 1454. Patent, plant variety protection, and copy-
right cases 
‘‘(a) IN GENERAL.—A civil action in which any party 
asserts a claim for relief arising under any Act of Con-
gress relating to patents, plant variety protection, or copy-
rights may be removed to the district court of the United 
States for the district and division embracing the place 
where the action is pending. 
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‘‘(b) SPECIAL RULES.—The removal of an action 
under this section shall be made in accordance with sec-
tion 1446 of this chapter, except that if the removal is 
based solely on this section— 
‘‘(1) the action may be removed by any party; 
and 
‘‘(2) the time limitations contained in section 
1446(b) may be extended at any time for cause 
shown. 
‘‘(c) CLARIFICATION OF JURISDICTION IN CERTAIN 
CASES.—The court to which a civil action is removed 
under this section is not precluded from hearing and de-
termining any claim in the civil action because the State 
court from which the civil action is removed did not have 
jurisdiction over that claim. 
‘‘(d) REMAND.—If a civil action is removed solely 
under this section, the district court— 
‘‘(1) shall remand all claims that are neither a 
basis for removal under subsection (a) nor within 
the original or supplemental jurisdiction of the dis-
trict court under any Act of Congress; and 
‘‘(2) may, under the circumstances specified in 
section 1367(c), remand any claims within the sup-
plemental jurisdiction of the district court under sec-
tion 1367.’’. 
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(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 89 of title 28, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘1454. Patent, plant variety protection, and copyright cases.’’. 
(d) TRANSFER BY COURT OF APPEALS FOR THE 
FEDERAL CIRCUIT.— 
(1) IN
GENERAL.—Chapter 99 of title 28, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 1632. Transfer by the Court of Appeals for the Fed-
eral Circuit 
‘‘When a case is appealed to the Court of Appeals 
for the Federal Circuit under section 1295(a)(1), and no 
claim for relief arising under any Act of Congress relating 
to patents or plant variety protection is the subject of the 
appeal by any party, the Court of Appeals for the Federal 
Circuit shall transfer the appeal to the court of appeals 
for the regional circuit embracing the district from which 
the appeal has been taken.’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 99 of title 28, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘1632. Transfer by the Court of Appeals for the Federal Circuit.’’. 
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