IB 
Union Calendar No. 54 
112TH CONGRESS 
1ST SESSION H. R. 1249 
[Report No. 112–98, Part I] 
To amend title 35, United States Code, to provide for patent reform. 
IN THE HOUSE OF REPRESENTATIVES 
MARCH 30, 2011 
Mr. SMITH of Texas (for himself, Mr. GOODLATTE, and Mr. ISSA) introduced 
the following bill; which was referred to the Committee on the Judiciary, 
and in addition to the Committee on the Budget, for a period to be subse-
quently determined by the Speaker, in each case for consideration of such 
provisions as fall within the jurisdiction of the committee concerned 
JUNE 1, 2011 
Additional sponsors: Mr. CHABOT, Mr. GALLEGLY, and Mr. DUNCAN of 
Tennessee 
JUNE 1, 2011 
Reported from the Committee on the Judiciary with an amendment 
[Strike out all after the enacting clause and insert the part printed in italic] 
JUNE 1, 2011 
The Committee on the Budget discharged; committed to the Committee of the 
Whole House on the State of the Union and ordered to be printed 
[For text of introduced bill, see copy of bill as introduced on March 30, 2011] 
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A BILL 
To amend title 35, United States Code, to provide for patent 
reform. 
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Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘America Invents Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. Definitions. 
Sec. 3. First inventor to file. 
Sec. 4. Inventor’s oath or declaration. 
Sec. 5. Defense to infringement based on earlier inventor. 
Sec. 6. Post-grant review proceedings. 
Sec. 7. Patent Trial and Appeal Board. 
Sec. 8. Preissuance submissions by third parties. 
Sec. 9. Venue. 
Sec. 10. Fee setting authority. 
Sec. 11. Fees for patent services. 
Sec. 12. Supplemental examination. 
Sec. 13. Funding agreements. 
Sec. 14. Tax strategies deemed within the prior art. 
Sec. 15. Best mode requirement. 
Sec. 16. Marking. 
Sec. 17. Advice of counsel. 
Sec. 18. Transitional program for covered business method patents. 
Sec. 19. Jurisdiction and procedural matters. 
Sec. 20. Technical amendments. 
Sec. 21. Travel expenses and payment of administrative judges. 
Sec. 22. Patent and Trademark Office funding. 
Sec. 23. Satellite offices. 
Sec. 24. Designation of Detroit satellite office. 
Sec. 25. Patent Ombudsman Program for small business concerns. 
Sec. 26. Priority examination for technologies important to American competi-
tiveness. 
Sec. 27. Calculation of 60-day period for application of patent term extension. 
Sec. 28. Study on implementation. 
Sec. 29. Pro bono program. 
Sec. 30. Effective date. 
Sec. 31. Budgetary effects. 
SEC. 2. DEFINITIONS. 
In this Act: 
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(1) DIRECTOR.—The term ‘‘Director’’ means the 
Under Secretary of Commerce for Intellectual Prop-
erty and Director of the United States Patent and 
Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
(3) PATENT PUBLIC ADVISORY COMMITTEE.—The 
term ‘‘Patent Public Advisory Committee’’ means the 
Patent Public Advisory Committee established under 
section 5(a)(1) of title 35, United States Code. 
(4) TRADEMARK ACT OF 1946.—The term ‘‘Trade-
mark Act of 1946’’ means the Act entitled ‘‘An Act to 
provide for the registration and protection of trade-
marks used in commerce, to carry out the provisions 
of certain international conventions, and for other 
purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et 
seq.) (commonly referred to as the ‘‘Trademark Act of 
1946’’ or the ‘‘Lanham Act’’). 
(5) 
TRADEMARK
PUBLIC
ADVISORY
COM-
MITTEE.—The term ‘‘Trademark Public Advisory 
Committee’’ means the Trademark Public Advisory 
Committee established under section 5(a)(1) of title 
35, United States Code. 
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SEC. 3. FIRST INVENTOR TO FILE. 
(a) DEFINITIONS.—Section 100 of title 35, United 
States Code, is amended— 
(1) in subsection (e), by striking ‘‘or inter partes 
reexamination under section 311’’; and 
(2) by adding at the end the following: 
‘‘(f) The term ‘inventor’ means the individual or, if 
a joint invention, the individuals collectively who invented 
or discovered the subject matter of the invention. 
‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 
any 1 of the individuals who invented or discovered the sub-
ject matter of a joint invention. 
‘‘(h) The term ‘joint research agreement’ means a writ-
ten contract, grant, or cooperative agreement entered into 
by 2 or more persons or entities for the performance of ex-
perimental, developmental, or research work in the field of 
the claimed invention. 
‘‘(i)(1) The term ‘effective filing date’ for a claimed 
invention in a patent or application for patent means— 
‘‘(A) if subparagraph (B) does not apply, the ac-
tual filing date of the patent or the application for 
the patent containing a claim to the invention; or 
‘‘(B) the filing date of the earliest application for 
which the patent or application is entitled, as to such 
invention, to a right of priority under section 119, 
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365(a), or 365(b) or to the benefit of an earlier filing 
date under section 120, 121, or 365(c). 
‘‘(2) The effective filing date for a claimed invention 
in an application for reissue or reissued patent shall be de-
termined by deeming the claim to the invention to have been 
contained in the patent for which reissue was sought. 
‘‘(j) The term ‘claimed invention’ means the subject 
matter defined by a claim in a patent or an application 
for a patent.’’. 
(b) CONDITIONS FOR PATENTABILITY.— 
(1) IN
GENERAL.—Section 102 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 102. Conditions for patentability; novelty 
‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled 
to a patent unless— 
‘‘(1) the claimed invention was patented, de-
scribed in a printed publication, or in public use, on 
sale, or otherwise available to the public before the ef-
fective filing date of the claimed invention; or 
‘‘(2) the claimed invention was described in a 
patent issued under section 151, or in an application 
for patent published or deemed published under sec-
tion 122(b), in which the patent or application, as 
the case may be, names another inventor and was ef-
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fectively filed before the effective filing date of the 
claimed invention. 
‘‘(b) EXCEPTIONS.— 
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE-
FORE THE EFFECTIVE FILING DATE OF THE CLAIMED 
INVENTION.—A disclosure made 1 year or less before 
the effective filing date of a claimed invention shall 
not be prior art to the claimed invention under sub-
section (a)(1) if— 
‘‘(A) the disclosure was made by the inven-
tor or joint inventor or by another who obtained 
the subject matter disclosed directly or indirectly 
from the inventor or a joint inventor; or 
‘‘(B) the subject matter disclosed had, before 
such disclosure, been publicly disclosed by the in-
ventor or a joint inventor or another who ob-
tained the subject matter disclosed directly or in-
directly from the inventor or a joint inventor. 
‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS 
AND PATENTS.—A disclosure shall not be prior art to 
a claimed invention under subsection (a)(2) if— 
‘‘(A) the subject matter disclosed was ob-
tained directly or indirectly from the inventor or 
a joint inventor; 
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‘‘(B) the subject matter disclosed had, before 
such subject matter was effectively filed under 
subsection (a)(2), been publicly disclosed by the 
inventor or a joint inventor or another who ob-
tained the subject matter disclosed directly or in-
directly from the inventor or a joint inventor; or 
‘‘(C) the subject matter disclosed and the 
claimed invention, not later than the effective fil-
ing date of the claimed invention, were owned by 
the same person or subject to an obligation of as-
signment to the same person. 
‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH 
AGREEMENTS.—Subject matter disclosed and a claimed in-
vention shall be deemed to have been owned by the same 
person or subject to an obligation of assignment to the same 
person in applying the provisions of subsection (b)(2)(C) 
if— 
‘‘(1) the subject matter disclosed was developed 
and the claimed invention was made by, or on behalf 
of, 1 or more parties to a joint research agreement 
that was in effect on or before the effective filing date 
of the claimed invention; 
‘‘(2) the claimed invention was made as a result 
of activities undertaken within the scope of the joint 
research agreement; and 
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‘‘(3) the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agreement. 
‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EFFEC-
TIVE AS PRIOR ART.—For purposes of determining whether 
a patent or application for patent is prior art to a claimed 
invention under subsection (a)(2), such patent or applica-
tion shall be considered to have been effectively filed, with 
respect to any subject matter described in the patent or ap-
plication— 
‘‘(1) if paragraph (2) does not apply, as of the 
actual filing date of the patent or the application for 
patent; or 
‘‘(2) if the patent or application for patent is en-
titled to claim a right of priority under section 119, 
365(a), or 365(b), or to claim the benefit of an earlier 
filing date under section 120, 121, or 365(c), based 
upon 1 or more prior filed applications for patent, as 
of the filing date of the earliest such application that 
describes the subject matter.’’. 
(2) CONTINUITY OF INTENT UNDER THE CREATE 
ACT.—The enactment of section 102(c) of title 35, 
United States Code, under paragraph (1) of this sub-
section is done with the same intent to promote joint 
research activities that was expressed, including in 
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the legislative history, through the enactment of the 
Cooperative Research and Technology Enhancement 
Act of 2004 (Public Law 108–453; the ‘‘CREATE 
Act’’), the amendments of which are stricken by sub-
section (c) of this section. The United States Patent 
and Trademark Office shall administer section 102(c) 
of title 35, United States Code, in a manner con-
sistent with the legislative history of the CREATE 
Act that was relevant to its administration by the 
United States Patent and Trademark Office. 
(3) CONFORMING AMENDMENT.—The item relat-
ing to section 102 in the table of sections for chapter 
10 of title 35, United States Code, is amended to read 
as follows: 
‘‘102. Conditions for patentability; novelty.’’. 
(c) CONDITIONS
FOR PATENTABILITY; NONOBVIOUS 
SUBJECT MATTER.—Section 103 of title 35, United States 
Code, is amended to read as follows: 
‘‘§ 103. Conditions for patentability; non-obvious sub-
ject matter 
‘‘A patent for a claimed invention may not be ob-
tained, notwithstanding that the claimed invention is not 
identically disclosed as set forth in section 102, if the dif-
ferences between the claimed invention and the prior art 
are such that the claimed invention as a whole would have 
been obvious before the effective filing date of the claimed 
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invention to a person having ordinary skill in the art to 
which the claimed invention pertains. Patentability shall 
not be negated by the manner in which the invention was 
made.’’. 
(d) REPEAL
OF REQUIREMENTS
FOR INVENTIONS 
MADE ABROAD.—Section 104 of title 35, United States 
Code, and the item relating to that section in the table of 
sections for chapter 10 of title 35, United States Code, are 
repealed. 
(e) REPEAL
OF STATUTORY INVENTION REGISTRA-
TION.— 
(1) IN
GENERAL.—Section 157 of title 35, 
United States Code, and the item relating to that sec-
tion in the table of sections for chapter 14 of title 35, 
United States Code, are repealed. 
(2) REMOVAL OF CROSS REFERENCES.—Section 
111(b)(8) of title 35, United States Code, is amended 
by striking ‘‘sections 115, 131, 135, and 157’’ and in-
serting ‘‘sections 131 and 135’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expiration 
of the 18-month period beginning on the date of the 
enactment of this Act, and shall apply to any request 
for a statutory invention registration filed on or after 
that effective date. 
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(f) EARLIER FILING DATE FOR INVENTOR AND JOINT 
INVENTOR.—Section 120 of title 35, United States Code, is 
amended by striking ‘‘which is filed by an inventor or in-
ventors named’’ and inserting ‘‘which names an inventor 
or joint inventor’’. 
(g) CONFORMING AMENDMENTS.— 
(1) RIGHT OF PRIORITY.—Section 172 of title 
35, United States Code, is amended by striking ‘‘and 
the time specified in section 102(d)’’. 
(2) 
LIMITATION
ON
REMEDIES.—Section 
287(c)(4) of title 35, United States Code, is amended 
by striking ‘‘the earliest effective filing date of which 
is prior to’’ and inserting ‘‘which has an effective fil-
ing date before’’. 
(3) INTERNATIONAL APPLICATION DESIGNATING 
THE UNITED STATES: EFFECT.—Section 363 of title 
35, United States Code, is amended by striking ‘‘ex-
cept as otherwise provided in section 102(e) of this 
title’’. 
(4) PUBLICATION OF INTERNATIONAL APPLICA-
TION: EFFECT.—Section 374 of title 35, United States 
Code, is amended by striking ‘‘sections 102(e) and 
154(d)’’ and inserting ‘‘section 154(d)’’. 
(5) PATENT ISSUED ON INTERNATIONAL APPLICA-
TION: EFFECT.—The second sentence of section 375(a) 
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of title 35, United States Code, is amended by strik-
ing ‘‘Subject to section 102(e) of this title, such’’ and 
inserting ‘‘Such’’. 
(6) LIMIT
ON
RIGHT
OF
PRIORITY.—Section 
119(a) of title 35, United States Code, is amended by 
striking ‘‘; but no patent shall be granted’’ and all 
that follows through ‘‘one year prior to such filing’’. 
(7) INVENTIONS MADE WITH FEDERAL ASSIST-
ANCE.—Section 202(c) of title 35, United States Code, 
is amended— 
(A) in paragraph (2)— 
(i) by striking ‘‘publication, on sale, or 
public use,’’ and all that follows through 
‘‘obtained in the United States’’ and insert-
ing ‘‘the 1-year period referred to in section 
102(b) would end before the end of that 2- 
year period’’; and 
(ii) by striking ‘‘prior to the end of the 
statutory’’ and inserting ‘‘before the end of 
that 1-year’’; and 
(B) in paragraph (3), by striking ‘‘any 
statutory bar date that may occur under this 
title due to publication, on sale, or public use’’ 
and inserting ‘‘the expiration of the 1-year pe-
riod referred to in section 102(b)’’. 
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(h) DERIVED PATENTS.— 
(1) IN
GENERAL.—Section 291 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 291. Derived Patents 
‘‘(a) IN GENERAL.—The owner of a patent may have 
relief by civil action against the owner of another patent 
that claims the same invention and has an earlier effective 
filing date, if the invention claimed in such other patent 
was derived from the inventor of the invention claimed in 
the patent owned by the person seeking relief under this 
section. 
‘‘(b) FILING LIMITATION.—An action under this sec-
tion may be filed only before the end of the 1-year period 
beginning on the date of the issuance of the first patent con-
taining a claim to the allegedly derived invention and nam-
ing an individual alleged to have derived such invention 
as the inventor or joint inventor.’’. 
(2) CONFORMING AMENDMENT.—The item relat-
ing to section 291 in the table of sections for chapter 
29 of title 35, United States Code, is amended to read 
as follows: 
‘‘291. Derived patents.’’. 
(i) DERIVATION PROCEEDINGS.—Section 135 of title 
35, United States Code, is amended to read as follows: 
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‘‘§ 135. Derivation proceedings 
‘‘(a) INSTITUTION OF PROCEEDING.—An applicant for 
patent may file a petition to institute a derivation pro-
ceeding in the Office. The petition shall set forth with par-
ticularity the basis for finding that an inventor named in 
an earlier application derived the claimed invention from 
an inventor named in the petitioner’s application and, 
without authorization, the earlier application claiming 
such invention was filed. Any such petition may be filed 
only within the 1-year period beginning on the date of the 
first publication of a claim to an invention that is the same 
or substantially the same as the earlier application’s claim 
to the invention, shall be made under oath, and shall be 
supported by substantial evidence. Whenever the Director 
determines that a petition filed under this subsection dem-
onstrates that the standards for instituting a derivation 
proceeding are met, the Director may institute a derivation 
proceeding. The determination by the Director whether to 
institute a derivation proceeding shall be final and non-
appealable. 
‘‘(b) DETERMINATION BY PATENT TRIAL AND APPEAL 
BOARD.—In a derivation proceeding instituted under sub-
section (a), the Patent Trial and Appeal Board shall deter-
mine whether an inventor named in the earlier application 
derived the claimed invention from an inventor named in 
the petitioner’s application and, without authorization, the 
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earlier application claiming such invention was filed. The 
Director shall prescribe regulations setting forth standards 
for the conduct of derivation proceedings. 
‘‘(c) DEFERRAL OF DECISION.—The Patent Trial and 
Appeal Board may defer action on a petition for a deriva-
tion proceeding until the expiration of the 3-month period 
beginning on the date on which the Director issues a patent 
that includes the claimed invention that is the subject of 
the petition. The Patent Trial and Appeal Board also may 
defer action on a petition for a derivation proceeding, or 
stay the proceeding after it has been instituted, until the 
termination of a proceeding under chapter 30, 31, or 32 
involving the patent of the earlier applicant. 
‘‘(d) EFFECT OF FINAL DECISION.—The final decision 
of the Patent Trial and Appeal Board, if adverse to claims 
in an application for patent, shall constitute the final re-
fusal by the Office on those claims. The final decision of 
the Patent Trial and Appeal Board, if adverse to claims 
in a patent, shall, if no appeal or other review of the deci-
sion has been or can be taken or had, constitute cancellation 
of those claims, and notice of such cancellation shall be en-
dorsed on copies of the patent distributed after such can-
cellation. 
‘‘(e) SETTLEMENT.—Parties to a proceeding instituted 
under subsection (a) may terminate the proceeding by filing 
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a written statement reflecting the agreement of the parties 
as to the correct inventors of the claimed invention in dis-
pute. Unless the Patent Trial and Appeal Board finds the 
agreement to be inconsistent with the evidence of record, if 
any, it shall take action consistent with the agreement. Any 
written settlement or understanding of the parties shall be 
filed with the Director. At the request of a party to the pro-
ceeding, the agreement or understanding shall be treated as 
business confidential information, shall be kept separate 
from the file of the involved patents or applications, and 
shall be made available only to Government agencies on 
written request, or to any person on a showing of good 
cause. 
‘‘(f) ARBITRATION.—Parties to a proceeding instituted 
under subsection (a) may, within such time as may be spec-
ified by the Director by regulation, determine such contest 
or any aspect thereof by arbitration. Such arbitration shall 
be governed by the provisions of title 9, to the extent such 
title is not inconsistent with this section. The parties shall 
give notice of any arbitration award to the Director, and 
such award shall, as between the parties to the arbitration, 
be dispositive of the issues to which it relates. The arbitra-
tion award shall be unenforceable until such notice is given. 
Nothing in this subsection shall preclude the Director from 
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determining the patentability of the claimed inventions in-
volved in the proceeding.’’. 
(j) 
ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 134, 145, 146, 154, and 305 of 
title 35, United States Code, are each amended by striking 
‘‘Board of Patent Appeals and Interferences’’ each place it 
appears and inserting ‘‘Patent Trial and Appeal Board’’. 
(2)(A) Section 146 of title 35, United States Code, is 
amended— 
(i) by striking ‘‘an interference’’ and insert-
ing ‘‘a derivation proceeding’’; and 
(ii) by striking ‘‘the interference’’ and in-
serting ‘‘the derivation proceeding’’. 
(B) The subparagraph heading for section 
154(b)(1)(C) of title 35, United States Code, is 
amended to read as follows: 
‘‘(C) GUARANTEE
OF
ADJUSTMENTS 
FOR
DELAYS
DUE
TO
DERIVATION
PRO-
CEEDINGS, 
SECRECY
ORDERS, 
AND
AP-
PEALS.—’’. 
(3) The section heading for section 134 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 
(4) The section heading for section 146 of title 35, 
United States Code, is amended to read as follows: 
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‘‘§ 146. Civil action in case of derivation proceeding’’. 
(5) The items relating to sections 134 and 135 in the 
table of sections for chapter 12 of title 35, United States 
Code, are amended to read as follows: 
‘‘134. Appeal to the Patent Trial and Appeal Board. 
‘‘135. Derivation proceedings.’’. 
(6) The item relating to section 146 in the table of 
sections for chapter 13 of title 35, United States Code, is 
amended to read as follows: 
‘‘146. Civil action in case of derivation proceeding.’’. 
(k) STATUTE OF LIMITATIONS.— 
(1) IN GENERAL.—Section 32 of title 35, United 
States Code, is amended by inserting between the 
third and fourth sentences the following: ‘‘A pro-
ceeding under this section shall be commenced not 
later than the earlier of either the date that is 10 
years after the date on which the misconduct forming 
the basis for the proceeding occurred, or 1 year after 
the date on which the misconduct forming the basis 
for the proceeding is made known to an officer or em-
ployee of the Office as prescribed in the regulations es-
tablished under section 2(b)(2)(D).’’. 
(2) REPORT TO CONGRESS.—The Director shall 
provide on a biennial basis to the Judiciary Commit-
tees of the Senate and House of Representatives a re-
port providing a short description of incidents made 
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known to an officer or employee of the Office as pre-
scribed in the regulations established under section 
2(b)(2)(D) of title 35, United States Code, that reflect 
substantial evidence of misconduct before the Office 
but for which the Office was barred from commencing 
a proceeding under section 32 of title 35, United 
States Code, by the time limitation established by the 
fourth sentence of that section. 
(3) EFFECTIVE DATE.—The amendment made by 
paragraph (1) shall apply in any case in which the 
time period for instituting a proceeding under section 
32 of title 35, United States Code, had not lapsed be-
fore the date of the enactment of this Act. 
(l) SMALL BUSINESS STUDY.— 
(1) DEFINITIONS.—In this subsection— 
(A) the term ‘‘Chief Counsel’’ means the 
Chief Counsel for Advocacy of the Small Busi-
ness Administration; 
(B) the term ‘‘General Counsel’’ means the 
General Counsel of the United States Patent and 
Trademark Office; and 
(C) the term ‘‘small business concern’’ has 
the meaning given that term under section 3 of 
the Small Business Act (15 U.S.C. 632). 
(2) STUDY.— 
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(iii) the cost savings and other poten-
tial benefits to small business concerns of 
the change; and 
(iv) the feasibility and costs and bene-
fits to small business concerns of alternative 
means of determining whether an applicant 
is entitled to a patent under title 35, 
United States Code. 
(3) REPORT.—Not later than the date that is 1 
year after the date of the enactment of this Act, the 
Chief Counsel shall submit to the Committee on Small 
Business and Entrepreneurship and the Committee on 
the Judiciary of the Senate and the Committee on 
Small Business and the Committee on the Judiciary 
of the House of Representatives a report on the results 
of the study under paragraph (2). 
(m) REPORT ON PRIOR USER RIGHTS.— 
(1) IN GENERAL.—Not later than the end of the 
4-month period beginning on the date of the enact-
ment of this Act, the Director shall report, to the 
Committee on the Judiciary of the Senate and the 
Committee on the Judiciary of the House of Rep-
resentatives, the findings and recommendations of the 
Director on the operation of prior user rights in se-
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lected countries in the industrialized world. The re-
port shall include the following: 
(A) A comparison between patent laws of 
the United States and the laws of other industri-
alized countries, including members of the Euro-
pean Union and Japan, Canada, and Australia. 
(B) An analysis of the effect of prior user 
rights on innovation rates in the selected coun-
tries. 
(C) An analysis of the correlation, if any, 
between prior user rights and start-up enter-
prises and the ability to attract venture capital 
to start new companies. 
(D) An analysis of the effect of prior user 
rights, if any, on small businesses, universities, 
and individual inventors. 
(E) An analysis of legal and constitutional 
issues, if any, that arise from placing trade se-
cret law in patent law. 
(F) An analysis of whether the change to a 
first-to-file patent system creates a particular 
need for prior user rights. 
(2) CONSULTATION WITH OTHER AGENCIES.—In 
preparing the report required under paragraph (1), 
the Director shall consult with the United States 
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Trade Representative, the Secretary of State, and the 
Attorney General. 
(n) EFFECTIVE DATE.— 
(1) IN GENERAL.—Except as otherwise provided 
in this section, the amendments made by this section 
shall take effect upon the expiration of the 18-month 
period beginning on the date of the enactment of this 
Act, and shall apply to any application for patent, 
and to any patent issuing thereon, that contains or 
contained at any time— 
(A) a claim to a claimed invention that has 
an effective filing date as defined in section 
100(i) of title 35, United States Code, that is on 
or after the effective date described in this para-
graph; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, to 
any patent or application that contains or con-
tained at any time such a claim. 
(2) INTERFERING PATENTS.—The provisions of 
sections 102(g), 135, and 291 of title 35, United 
States Code, as in effect on the day before the effective 
date set forth in paragraph (1) of this subsection, 
shall apply to each claim of an application for pat-
ent, and any patent issued thereon, for which the 
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amendments made by this section also apply, if such 
application or patent contains or contained at any 
time— 
(A) a claim to an invention having an ef-
fective filing date as defined in section 100(i) of 
title 35, United States Code, that occurs before 
the effective date set forth in paragraph (1) of 
this subsection; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, to 
any patent or application that contains or con-
tained at any time such a claim. 
(o) STUDY OF PATENT LITIGATION.— 
(1) GAO STUDY.—The Comptroller General of 
the United States shall conduct a study of the con-
sequences of litigation by non-practicing entities, or 
by patent assertion entities, related to patent claims 
made under title 35, United States Code, and regula-
tions authorized by that title. 
(2) CONTENTS OF STUDY.—The study conducted 
under this subsection shall include the following: 
(A) The annual volume of litigation de-
scribed in paragraph (1) over the 20-year period 
ending on the date of the enactment of this Act. 
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(B) The volume of cases comprising such 
litigation that are found to be without merit 
after judicial review. 
(C) The impacts of such litigation on the 
time required to resolve patent claims. 
(D) The estimated costs, including the esti-
mated cost of defense, associated with such litiga-
tion for patent holders, patent licensors, patent 
licensees, and inventors, and for users of alter-
nate or competing innovations. 
(E) The economic impact of such litigation 
on the economy of the United States, including 
the impact on inventors, job creation, employers, 
employees, and consumers. 
(F) The benefit to commerce, if any, sup-
plied by non-practicing entities or patent asser-
tion entities that prosecute such litigation. 
(3) REPORT
TO
CONGRESS.—The Comptroller 
General shall, not later than the date that is 1 year 
after the date of the enactment of this Act, submit to 
the Committee on the Judiciary of the House of Rep-
resentatives and the Committee on the Judiciary of 
the Senate a report on the results of the study re-
quired under this subsection, including recommenda-
tions for any changes to laws and regulations that 
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will minimize any negative impact of patent litiga-
tion that was the subject of such study. 
(p) SENSE OF CONGRESS.—It is the sense of the Con-
gress that converting the United States patent registration 
system from ‘‘first inventor to use’’ to a system of ‘‘first 
inventor to file’’ will promote the progress of science by se-
curing for limited times to inventors the exclusive rights 
to their discoveries and provide inventors with greater cer-
tainty regarding the scope of protection granted by the ex-
clusive rights to their discoveries. 
(q) SENSE OF CONGRESS.—It is the sense of the Con-
gress that converting the United States patent registration 
system from ‘‘first inventor to use’’ to a system of ‘‘first 
inventor to file’’ will harmonize the United States patent 
registration system with the patent registration systems 
commonly used in nearly all other countries throughout the 
world with whom the United States conducts trade and 
thereby promote a greater sense of international uniformity 
and certainty in the procedures used for securing the exclu-
sive rights of inventors to their discoveries. 
SEC. 4. INVENTOR’S OATH OR DECLARATION. 
(a) INVENTOR’S OATH OR DECLARATION.— 
(1) IN
GENERAL.—Section 115 of title 35, 
United States Code, is amended to read as follows: 
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‘‘§ 115. Inventor’s oath or declaration 
‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR 
DECLARATION.—An application for patent that is filed 
under section 111(a) or commences the national stage under 
section 371 shall include, or be amended to include, the 
name of the inventor for any invention claimed in the ap-
plication. Except as otherwise provided in this section, each 
individual who is the inventor or a joint inventor of a 
claimed invention in an application for patent shall execute 
an oath or declaration in connection with the application. 
‘‘(b) REQUIRED STATEMENTS.—An oath or declara-
tion under subsection (a) shall contain statements that— 
‘‘(1) the application was made or was authorized 
to be made by the affiant or declarant; and 
‘‘(2) such individual believes himself or herself to 
be the original inventor or an original joint inventor 
of a claimed invention in the application. 
‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may 
specify additional information relating to the inventor and 
the invention that is required to be included in an oath 
or declaration under subsection (a). 
‘‘(d) SUBSTITUTE STATEMENT.— 
‘‘(1) IN GENERAL.—In lieu of executing an oath 
or declaration under subsection (a), the applicant for 
patent may provide a substitute statement under the 
circumstances described in paragraph (2) and such 
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additional circumstances that the Director may speci-
fy by regulation. 
‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute 
statement under paragraph (1) is permitted with re-
spect to any individual who— 
‘‘(A) is unable to file the oath or declaration 
under subsection (a) because the individual— 
‘‘(i) is deceased; 
‘‘(ii) is under legal incapacity; or 
‘‘(iii) cannot be found or reached after 
diligent effort; or 
‘‘(B) is under an obligation to assign the 
invention but has refused to make the oath or 
declaration required under subsection (a). 
‘‘(3) CONTENTS.—A substitute statement under 
this subsection shall— 
‘‘(A) identify the individual with respect to 
whom the statement applies; 
‘‘(B) set forth the circumstances rep-
resenting the permitted basis for the filing of the 
substitute statement in lieu of the oath or dec-
laration under subsection (a); and 
‘‘(C) contain any additional information, 
including any showing, required by the Director. 
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‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT 
OF RECORD.—An individual who is under an obligation 
of assignment of an application for patent may include the 
required statements under subsections (b) and (c) in the as-
signment executed by the individual, in lieu of filing such 
statements separately. 
‘‘(f) TIME FOR FILING.—A notice of allowance under 
section 151 may be provided to an applicant for patent only 
if the applicant for patent has filed each required oath or 
declaration under subsection (a) or has filed a substitute 
statement under subsection (d) or recorded an assignment 
meeting the requirements of subsection (e). 
‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE-
QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 
‘‘(1) EXCEPTION.—The requirements under this 
section shall not apply to an individual with respect 
to an application for patent in which the individual 
is named as the inventor or a joint inventor and who 
claims the benefit under section 120, 121, or 365(c) 
of the filing of an earlier-filed application, if— 
‘‘(A) an oath or declaration meeting the re-
quirements of subsection (a) was executed by the 
individual and was filed in connection with the 
earlier-filed application; 
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‘‘(B) a substitute statement meeting the re-
quirements of subsection (d) was filed in connec-
tion with the earlier filed application with re-
spect to the individual; or 
‘‘(C) an assignment meeting the require-
ments of subsection (e) was executed with respect 
to the earlier-filed application by the individual 
and was recorded in connection with the earlier- 
filed application. 
‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE-
MENTS, OR
ASSIGNMENTS.—Notwithstanding para-
graph (1), the Director may require that a copy of the 
executed oath or declaration, the substitute statement, 
or the assignment filed in connection with the earlier- 
filed application be included in the later-filed appli-
cation. 
‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; 
FILING ADDITIONAL STATEMENTS.— 
‘‘(1) IN GENERAL.—Any person making a state-
ment required under this section may withdraw, re-
place, or otherwise correct the statement at any time. 
If a change is made in the naming of the inventor re-
quiring the filing of 1 or more additional statements 
under this section, the Director shall establish regula-
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tions under which such additional statements may be 
filed. 
‘‘(2) SUPPLEMENTAL
STATEMENTS
NOT
RE-
QUIRED.—If an individual has executed an oath or 
declaration meeting the requirements of subsection (a) 
or an assignment meeting the requirements of sub-
section (e) with respect to an application for patent, 
the Director may not thereafter require that indi-
vidual to make any additional oath, declaration, or 
other statement equivalent to those required by this 
section in connection with the application for patent 
or any patent issuing thereon. 
‘‘(3) SAVINGS CLAUSE.—A patent shall not be 
invalid or unenforceable based upon the failure to 
comply with a requirement under this section if the 
failure is remedied as provided under paragraph (1). 
‘‘(i) ACKNOWLEDGMENT
OF PENALTIES.—Any dec-
laration or statement filed pursuant to this section shall 
contain an acknowledgment that any willful false statement 
made in such declaration or statement is punishable under 
section 1001 of title 18 by fine or imprisonment of not more 
than 5 years, or both.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 of title 35, United States Code, 
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is amended by striking ‘‘If a divisional application’’ 
and all that follows through ‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL APPLI-
CATIONS.—Section 111(a) of title 35, United States 
Code, is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
(B) in the heading for paragraph (3), by 
inserting ‘‘OR DECLARATION’’ after ‘‘AND OATH’’; 
and 
(C) by inserting ‘‘or declaration’’ after ‘‘and 
oath’’ each place it appears. 
(4) CONFORMING AMENDMENT.—The item relat-
ing to section 115 in the table of sections for chapter 
11 of title 35, United States Code, is amended to read 
as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) FILING BY OTHER THAN INVENTOR.— 
(1) IN
GENERAL.—Section 118 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 118. Filing by other than inventor 
‘‘A person to whom the inventor has assigned or is 
under an obligation to assign the invention may make an 
application for patent. A person who otherwise shows suffi-
cient proprietary interest in the matter may make an ap-
plication for patent on behalf of and as agent for the inven-
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tor on proof of the pertinent facts and a showing that such 
action is appropriate to preserve the rights of the parties. 
If the Director grants a patent on an application filed 
under this section by a person other than the inventor, the 
patent shall be granted to the real party in interest and 
upon such notice to the inventor as the Director considers 
to be sufficient.’’. 
(2) CONFORMING AMENDMENT.—Section 251 of 
title 35, United States Code, is amended in the third 
undesignated paragraph by inserting ‘‘or the applica-
tion for the original patent was filed by the assignee 
of the entire interest’’ after ‘‘claims of the original 
patent’’. 
(c) SPECIFICATION.—Section 112 of title 35, United 
States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
and 
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; 
(2) in the second undesignated paragraph— 
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(2) Section 111(b)(2) of title 35, United States 
Code, is amended by striking ‘‘the second through fifth 
paragraphs of section 112,’’ and inserting ‘‘sub-
sections (b) through (e) of section 112,’’. 
(e) EFFECTIVE DATE.—The amendments made by this 
section shall take effect upon the expiration of the 1-year 
period beginning on the date of the enactment of this Act 
and shall apply to any patent application that is filed on 
or after that effective date. 
SEC. 5. DEFENSE TO INFRINGEMENT BASED ON EARLIER 
INVENTOR. 
Section 273 of title 35, United States Code, is amended 
as follows: 
(1) Subsection (a) is amended— 
(A) in paragraph (1)— 
(i) by striking ‘‘use of a method in’’ 
and inserting ‘‘use of the subject matter of 
a patent in’’; and 
(ii) by adding ‘‘and’’ after the semi-
colon; 
(B) in paragraph (2), by striking the semi-
colon at the end of subparagraph (B) and insert-
ing a period; and 
(C) by striking paragraphs (3) and (4). 
(2) Subsection (b) is amended— 
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(A) in paragraph (1)— 
(i) by striking ‘‘for a method’’; and 
(ii) by striking ‘‘at least 1 year’’ and 
all that follows through the end and insert-
ing ‘‘and commercially used the subject 
matter at least 1 year before the effective fil-
ing date of the claimed invention that is the 
subject matter of the patent.’’; 
(B) in paragraph (2), by striking ‘‘patented 
method’’ and inserting ‘‘patented process’’; 
(C) in paragraph (3)— 
(i) by striking subparagraph (A); 
(ii) by striking subparagraph (B) and 
inserting the following: 
‘‘(A) DERIVATION AND PRIOR DISCLOSURE 
TO THE PUBLIC.—A person may not assert the 
defense under this section if— 
‘‘(i) the subject matter on which the de-
fense is based was derived from the patentee 
or persons in privity with the patentee; or 
‘‘(ii) the claimed invention that is the 
subject of the defense was disclosed to the 
public in a manner that qualified for the 
exception from the prior art under section 
102(b) and the commercialization date re-
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lied upon under paragraph (1) of this sub-
section for establishing entitlement to the 
defense is less than 1 year before the date of 
such disclosure to the public;’’; 
(iii) by redesignating subparagraph 
(C) as subparagraph (B); and 
(iv) by adding at the end the following: 
‘‘(C) FUNDING.— 
‘‘(i) DEFENSE NOT AVAILABLE IN CER-
TAIN CASES.—A person may not assert the 
defense under this section if the subject mat-
ter of the patent on which the defense is 
based was developed pursuant to a funding 
agreement under chapter 18 or by a non-
profit institution of higher education, or a 
technology transfer organization affiliated 
with such an institution, that did not re-
ceive funding from a private business enter-
prise in support of that development. 
‘‘(ii) DEFINITIONS.—In this subpara-
graph— 
‘‘(I) the term ‘institution of higher 
education’ has the meaning given that 
term in section 101(a) of the Higher 
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Education Act of 1965 (20 U.S.C. 
1001(a)); and 
‘‘(II) the term ‘technology transfer 
organization’ means an organization 
the primary purpose of which is to fa-
cilitate the commercialization of tech-
nologies developed by one or more in-
stitutions of higher education.’’; and 
(D) by amending paragraph (6) to read as 
follows: 
‘‘(6) PERSONAL DEFENSE.— 
‘‘(A) IN GENERAL.—The defense under this 
section may be asserted only by the person who 
performed or caused the performance of the acts 
necessary to establish the defense, as well as any 
other entity that controls, is controlled by, or is 
under common control with such person, and, ex-
cept for any transfer to the patent owner, the 
right to assert the defense shall not be licensed or 
assigned or transferred to another person except 
as an ancillary and subordinate part of a good 
faith assignment or transfer for other reasons of 
the entire enterprise or line of business to which 
the defense relates. 
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‘‘(B) EXCEPTION.—Notwithstanding sub-
paragraph (A), any person may, on the person’s 
own behalf, assert a defense based on the exhaus-
tion of rights provided under paragraph (2), in-
cluding any necessary elements thereof.’’. 
SEC. 6. POST-GRANT REVIEW PROCEEDINGS. 
(a) INTER PARTES REVIEW.—Chapter 31 of title 35, 
United States Code, is amended to read as follows: 
‘‘CHAPTER 31—INTER PARTES REVIEW 
‘‘Sec. 
‘‘311. Inter partes review. 
‘‘312. Petitions. 
‘‘313. Preliminary response to petition. 
‘‘314. Institution of inter partes review. 
‘‘315. Relation to other proceedings or actions. 
‘‘316. Conduct of inter partes review. 
‘‘317. Settlement. 
‘‘318. Decision of the Board. 
‘‘319. Appeal. 
‘‘§ 311. Inter partes review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the owner of a patent may 
file with the Office a petition to institute an inter partes 
review of the patent. The Director shall establish, by regula-
tion, fees to be paid by the person requesting the review, 
in such amounts as the Director determines to be reason-
able, considering the aggregate costs of the 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 
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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 1 year after the grant of a 
patent or issuance of a reissue of a patent; or 
‘‘(2) if a post-grant review is instituted under 
chapter 32, the date of the termination of such post- 
grant review. 
‘‘§ 312. Petitions 
‘‘(a) REQUIREMENTS OF PETITION.—A petition filed 
under section 311 may be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 311; 
‘‘(2) the petition identifies all real parties in in-
terest; 
‘‘(3) the petition identifies, in writing and with 
particularity, each claim challenged, the grounds on 
which the challenge to each claim is based, and the 
evidence that supports the grounds for the challenge to 
each claim, including— 
‘‘(A) copies of patents and printed publica-
tions that the petitioner relies upon in support 
of the petition; and 
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‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on expert opinions; 
‘‘(4) the petition provides such other information 
as the Director may require by regulation; and 
‘‘(5) the petitioner provides copies of any of the 
documents required under paragraphs (2), (3), and 
(4) to the patent owner or, if applicable, the des-
ignated representative of the patent owner. 
‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 
after the receipt of a petition under section 311, the Director 
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 commence unless the Director de-
termines that the information presented in the petition filed 
under section 311 and any response filed under section 313 
shows that there is a reasonable likelihood that the peti-
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tioner 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 pursu-
ant to a petition filed under section 311 within 3 months 
after— 
‘‘(1) receiving a preliminary response to the pe-
tition under section 313; or 
‘‘(2) if no such preliminary response is filed, the 
last date on which such response may be filed. 
‘‘(c) NOTICE.—The Director shall notify the petitioner 
and patent owner, in writing, of the Director’s determina-
tion under subsection (a), and shall make such notice avail-
able 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 Director 
whether to institute an inter partes review under this sec-
tion 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, real party in interest, 
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or privy of the petitioner filed a civil action chal-
lenging the validity of a claim of the patent. 
‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, 
real party in interest, or privy of the petitioner files 
a civil action challenging the validity of a claim of 
the patent on or after the date on which the petitioner 
files a petition for inter partes review of the patent, 
that civil action shall be automatically stayed until 
either— 
‘‘(A) the patent owner moves the court to 
lift the stay; 
‘‘(B) the patent owner files a civil action or 
counterclaim alleging that the petitioner, real 
party in interest, or privy of the petitioner has 
infringed the patent; or 
‘‘(C) the petitioner, real party in interest, 
or privy of the petitioner moves the court to dis-
miss 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 
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proceeding is filed more than 1 year after the date on which 
the petitioner, real party in interest, or privy of the peti-
tioner is served with a complaint alleging infringement of 
the patent. The time limitation set forth in the preceding 
sentence shall not apply to a request for joinder under sub-
section (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 Director, 
after receiving a preliminary response under section 313 
or the expiration of the time for filing such a response, de-
termines warrants the institution of an inter partes review 
under section 314. 
‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sec-
tions 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 Di-
rector may determine the manner in which the inter partes 
review or other proceeding or matter may proceed, includ-
ing providing for stay, transfer, consolidation, or termi-
nation 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 
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patent under this chapter that results in a final writ-
ten 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 re-
spect to that claim on any ground that the petitioner 
raised or reasonably could have raised during that 
inter partes review. 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in an inter partes review 
of a claim in a patent under this chapter that results 
in a final written decision under section 318(a), or 
the real party in interest or privy of the petitioner, 
may not assert either in a civil action arising in 
whole or in part under section 1338 of title 28 or in 
a proceeding before the International Trade Commis-
sion under section 337 of the Tariff Act of 1930 that 
the claim is invalid on any ground that the petitioner 
raised or reasonably could have raised during that 
inter partes review. 
‘‘§ 316. Conduct of inter partes review 
‘‘(a) REGULATIONS.—The Director shall prescribe reg-
ulations— 
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the pub-
lic, except that any petition or document filed with 
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the intent that it be sealed shall, if accompanied by 
a motion to seal, be treated as sealed pending the out-
come of the ruling on the motion; 
‘‘(2) setting forth the standards for the showing 
of sufficient grounds to institute a review under sec-
tion 314(a); 
‘‘(3) establishing procedures for the submission of 
supplemental information after the petition is filed; 
‘‘(4) establishing and governing inter partes re-
view under this chapter and the relationship of such 
review to other proceedings under this title; 
‘‘(5) setting forth standards and procedures for 
discovery of relevant evidence, including that such 
discovery shall be limited to— 
‘‘(A) the deposition of witnesses submitting 
affidavits or declarations; and 
‘‘(B) what is otherwise necessary in the in-
terest of justice; 
‘‘(6) prescribing sanctions for abuse of discovery, 
abuse of process, or any other improper use of the 
proceeding, such as to harass or to cause unnecessary 
delay or an unnecessary increase in the cost of the 
proceeding; 
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‘‘(7) providing for protective orders governing 
the exchange and submission of confidential informa-
tion; 
‘‘(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 re-
quiring that the patent owner file with such response, 
through affidavits or declarations, any additional fac-
tual evidence and expert opinions on which the patent 
owner relies in support of the response; 
‘‘(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 insti-
tution of a review under this chapter, except that the 
Director may, for good cause shown, extend the 1-year 
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period by not more than 6 months, and may adjust 
the time periods in this paragraph in the case of join-
der under section 315(c); 
‘‘(12) setting a time period for requesting joinder 
under section 315(c); and 
‘‘(13) providing the petitioner with at least 1 op-
portunity to file written comments within a time pe-
riod established by the Director. 
‘‘(b) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect of 
any such regulation on the economy, the integrity of the 
patent system, the efficient administration of the Office, 
and the ability of the Office to timely complete proceedings 
instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent 
Trial and Appeal Board shall, in accordance with section 
6, conduct each inter partes review instituted under this 
chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During an inter partes re-
view instituted under this chapter, the patent owner 
may file 1 motion to amend the patent in 1 or more 
of the following ways: 
‘‘(A) Cancel any challenged patent claim. 
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‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL MOTIONS.—Additional motions 
to amend may be permitted upon the joint request of 
the petitioner and the patent owner to materially ad-
vance the settlement of a proceeding under section 
317, or as permitted by regulations prescribed by the 
Director. 
‘‘(3) SCOPE OF CLAIMS.—An amendment under 
this subsection may not enlarge the scope of the 
claims of the patent or introduce new matter. 
‘‘(e) EVIDENTIARY STANDARDS.—In an inter partes 
review instituted under this chapter, the petitioner shall 
have the burden of proving a proposition of unpatentability 
by a preponderance of the evidence. 
‘‘§ 317. Settlement 
‘‘(a) IN GENERAL.—An inter partes review instituted 
under this chapter shall be terminated with respect to any 
petitioner upon the joint request of the petitioner and the 
patent owner, unless the Office has decided the merits of 
the proceeding before the request for termination is filed. 
If the inter partes review is terminated with respect to a 
petitioner under this section, no estoppel under section 
315(e) shall attach to the petitioner, or to the real party 
in interest or privy of the petitioner, on the basis of that 
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petitioner’s institution of that inter partes review. If no pe-
titioner remains in the inter partes review, the Office may 
terminate the review or proceed to a final written decision 
under section 318(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in such 
agreement or understanding, made in connection with, or 
in contemplation of, the termination of an inter partes re-
view under this section shall be in writing and a true copy 
of such agreement or understanding shall be filed in the 
Office before the termination of the inter partes review as 
between the parties. At the request of a party to the pro-
ceeding, the agreement or understanding shall be treated as 
business confidential information, shall be kept separate 
from the file of the involved patents, and shall be made 
available only to Federal Government agencies on written 
request, or to any person on a showing of good cause. 
‘‘§ 318. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If an inter partes 
review is instituted and not dismissed under this chapter, 
the Patent Trial and Appeal Board shall issue a final writ-
ten decision with respect to the patentability of any patent 
claim challenged by the petitioner and any new claim 
added under section 316(d). 
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‘‘(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 ter-
minated, the Director shall issue and publish a certificate 
canceling any claim of the patent finally determined to be 
unpatentable, confirming any claim of the patent deter-
mined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) AMENDED
OR
NEW
CLAIM.—Any proposed 
amended or new claim determined to be patentable and in-
corporated into a patent following an inter partes review 
under this chapter shall have the same effect as that speci-
fied in section 252 for reissued patents on the right of any 
person who made, purchased, or used within the United 
States, or imported into the United States, anything pat-
ented by such proposed amended or new claim, or who made 
substantial preparation therefor, before the issuance of a 
certificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall 
make available to the public data describing the length of 
time between the institution of, and the issuance of a final 
written decision under subsection (a) for, each inter partes 
review. 
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‘‘§ 319. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 318(a) 
may appeal the decision pursuant to sections 141 through 
144. Any party to the inter partes review shall have the 
right to be a party to the appeal.’’. 
(b) CONFORMING AMENDMENT.—The table of chapters 
for part III of title 35, United States Code, is amended by 
striking the item relating to chapter 31 and inserting the 
following: 
‘‘31. Inter Partes Review .................................................................................
311’’. 
(c) REGULATIONS AND EFFECTIVE DATE.— 
(1) REGULATIONS.—The Director shall, not later 
than the date that is 1 year after the date of the en-
actment of this Act, issue regulations to carry out 
chapter 31 of title 35, United States Code, as amend-
ed by subsection (a) of this section. 
(2) APPLICABILITY.— 
(A) IN GENERAL.—The amendments made 
by subsection (a) shall take effect upon the expi-
ration 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 effec-
tive date. 
(B) GRADUATED
IMPLEMENTATION.—The 
Director may impose a limit on the number of 
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inter partes reviews that may be instituted 
under chapter 31 of title 35, United States Code, 
during each of the first 4 1-year periods in 
which the amendments made by subsection (a) 
are in effect, if such number in each year equals 
or exceeds the number of inter partes reexamina-
tions that are ordered under chapter 31 of title 
35, United States Code, in the last fiscal year 
ending before the effective date of the amend-
ments made by subsection (a). 
(d) POST-GRANT REVIEW.—Part III of title 35, 
United States Code, is amended by adding at the end the 
following: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
‘‘Sec. 
‘‘321. Post-grant review. 
‘‘322. Petitions. 
‘‘323. Preliminary response to petition. 
‘‘324. Institution of post-grant review. 
‘‘325. Relation to other proceedings or actions. 
‘‘326. Conduct of post-grant review. 
‘‘327. Settlement. 
‘‘328. Decision of the Board. 
‘‘329. Appeal. 
‘‘§ 321. Post-grant review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the patent owner may file with 
the Office a petition to institute a post-grant review of a 
patent. The Director shall establish, by regulation, fees to 
be paid by the person requesting the review, in such 
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amounts as the Director determines to be reasonable, consid-
ering the aggregate costs of the post-grant review. 
‘‘(b) SCOPE.—A petitioner in a post-grant review may 
request to cancel as unpatentable 1 or more claims of a pat-
ent on any ground that could be raised under paragraph 
(2) or (3) of section 282(b) (relating to invalidity of the 
patent or any claim). 
‘‘(c) FILING DEADLINE.—A petition for a post-grant 
review may only be filed not later than the date that is 
1 year after the date of the grant of the patent or of the 
issuance of a reissue patent (as the case may be). 
‘‘§ 322. Petitions 
‘‘(a) REQUIREMENTS OF PETITION.—A petition filed 
under section 321 may be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 321; 
‘‘(2) the petition identifies all real parties in in-
terest; 
‘‘(3) the petition identifies, in writing and with 
particularity, each claim challenged, the grounds on 
which the challenge to each claim is based, and the 
evidence that supports the grounds for the challenge to 
each claim, including— 
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‘‘(A) copies of patents and printed publica-
tions that the petitioner relies upon in support 
of the petition; and 
‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on other factual evidence or on expert 
opinions; 
‘‘(4) the petition provides such other information 
as the Director may require by regulation; and 
‘‘(5) the petitioner provides copies of any of the 
documents required under paragraphs (2), (3), and 
(4) to the patent owner or, if applicable, the des-
ignated representative of the patent owner. 
‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 
after the receipt of a petition under section 321, the Director 
shall make the petition available to the public. 
‘‘§ 323. Preliminary response to petition 
‘‘If a post-grant review petition is filed under section 
321, the patent owner shall have the right to file a prelimi-
nary response to the petition, within a time period set by 
the Director, that sets forth reasons why no post-grant re-
view should be instituted based upon the failure of the peti-
tion to meet any requirement of this chapter. 
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‘‘§ 324. Institution of post-grant review 
‘‘(a) THRESHOLD.—The Director may not authorize a 
post-grant review to commence unless the Director deter-
mines that the information presented in the petition filed 
under section 321, if such information is not rebutted, 
would demonstrate that it is more likely than not that at 
least 1 of the claims challenged in the petition is 
unpatentable. 
‘‘(b) ADDITIONAL GROUNDS.—The determination re-
quired under subsection (a) may also be satisfied by a show-
ing that the petition raises a novel or unsettled legal ques-
tion that is important to other patents or patent applica-
tions. 
‘‘(c) TIMING.—The Director shall determine whether to 
institute a post-grant review under this chapter pursuant 
to a petition filed under section 321 within 3 months 
after— 
‘‘(1) receiving a preliminary response to the pe-
tition under section 323; or 
‘‘(2) if no such preliminary response is filed, the 
last date on which such response may be filed. 
‘‘(d) NOTICE.—The Director shall notify the petitioner 
and patent owner, in writing, of the Director’s determina-
tion under subsection (a) or (b), and shall make such notice 
available to the public as soon as is practicable. The Direc-
tor shall make each notice of the institution of a post-grant 
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review available to the public. Such notice shall include the 
date on which the review shall commence. 
‘‘(e) NO APPEAL.—The determination by the Director 
whether to institute a post-grant review under this section 
shall be final and nonappealable. 
‘‘§ 325. Relation to other proceedings or actions 
‘‘(a) INFRINGER’S CIVIL ACTION.— 
‘‘(1) POST-GRANT REVIEW BARRED BY CIVIL AC-
TION.—A post-grant review may not be instituted 
under this chapter if, before the date on which the pe-
tition for such a review is filed, the petitioner, real 
party in interest, or privy of the petitioner filed a 
civil action challenging the validity of a claim of the 
patent. 
‘‘(2) STAY OF CIVIL ACTION.—If the petitioner, 
real party in interest, or privy of the petitioner files 
a civil action challenging the validity of a claim of 
the patent on or after the date on which the petitioner 
files a petition for post-grant review of the patent, 
that civil action shall be automatically stayed until 
either— 
‘‘(A) the patent owner moves the court to 
lift the stay; 
‘‘(B) the patent owner files a civil action or 
counterclaim alleging that the petitioner, real 
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party in interest, or privy of the petitioner has 
infringed the patent; or 
‘‘(C) the petitioner, real party in interest, 
or privy of the petitioner moves the court to dis-
miss the civil action. 
‘‘(3) TREATMENT OF COUNTERCLAIM.—A coun-
terclaim challenging the validity of a claim of a pat-
ent does not constitute a civil action challenging the 
validity of a claim of a patent for purposes of this 
subsection. 
‘‘(b) PRELIMINARY INJUNCTIONS.—If a civil action al-
leging infringement of a patent is filed within 3 months 
after the date on which the patent is granted, the court may 
not stay its consideration of the patent owner’s motion for 
a preliminary injunction against infringement of the pat-
ent on the basis that a petition for post-grant review has 
been filed under this chapter or that such a post-grant re-
view has been instituted under this chapter. 
‘‘(c) JOINDER.—If more than 1 petition for a post- 
grant review under this chapter is properly filed against 
the same patent and the Director determines that more than 
1 of these petitions warrants the institution of a post-grant 
review under section 324, the Director may consolidate such 
reviews into a single post-grant review. 
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‘‘(d) MULTIPLE PROCEEDINGS.—Notwithstanding sec-
tions 135(a), 251, and 252, and chapter 30, during the 
pendency of any post-grant review under this chapter, if 
another proceeding or matter involving the patent is before 
the Office, the Director may determine the manner in which 
the post-grant review or other proceeding or matter may 
proceed, including providing for the stay, transfer, consoli-
dation, or termination of any such matter or proceeding. 
In determining whether to institute or order a proceeding 
under this chapter, chapter 30, or chapter 31, the Director 
may take into account whether, and reject the petition or 
request because, the same or substantially the same prior 
art or arguments previously were presented to the Office. 
‘‘(e) ESTOPPEL.— 
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 
petitioner in a post-grant review of a claim in a pat-
ent under this chapter that results in a final written 
decision under section 328(a), or the real party in in-
terest 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 post- 
grant review. 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in a post-grant review of 
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a claim in a patent under this chapter that results 
in a final written decision under section 328(a), or 
the real party in interest or privy of the petitioner, 
may not assert either in a civil action arising in 
whole or in part under section 1338 of title 28 or in 
a proceeding before the International Trade Commis-
sion under section 337 of the Tariff Act of 1930 that 
the claim is invalid on any ground that the petitioner 
raised or reasonably could have raised during that 
post-grant review. 
‘‘(f) REISSUE PATENTS.—A post-grant review may not 
be instituted under this chapter if the petition requests can-
cellation of a claim in a reissue patent that is identical 
to or narrower than a claim in the original patent from 
which the reissue patent was issued, and the time limita-
tions in section 321(c) would bar filing a petition for a 
post-grant review for such original patent. 
‘‘§ 326. Conduct of post-grant review 
‘‘(a) REGULATIONS.—The Director shall prescribe reg-
ulations— 
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the pub-
lic, except that any petition or document filed with 
the intent that it be sealed shall, if accompanied by 
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a motion to seal, be treated as sealed pending the out-
come of the ruling on the motion; 
‘‘(2) setting forth the standards for the showing 
of sufficient grounds to institute a review under sub-
sections (a) and (b) of section 324; 
‘‘(3) establishing procedures for the submission of 
supplemental information after the petition is filed; 
‘‘(4) establishing and governing a post-grant re-
view under this chapter and the relationship of such 
review to other proceedings under this title; 
‘‘(5) setting forth standards and procedures for 
discovery of relevant evidence, including that such 
discovery shall be limited to evidence directly related 
to factual assertions advanced by either party in the 
proceeding; 
‘‘(6) prescribing sanctions for abuse of discovery, 
abuse of process, or any other improper use of the 
proceeding, such as to harass or to cause unnecessary 
delay or an unnecessary increase in the cost of the 
proceeding; 
‘‘(7) providing for protective orders governing 
the exchange and submission of confidential informa-
tion; 
‘‘(8) providing for the filing by the patent owner 
of a response to the petition under section 323 after 
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a post-grant review has been instituted, and requiring 
that the patent owner file with such response, through 
affidavits or declarations, any additional factual evi-
dence and expert opinions on which the patent owner 
relies in support of the response; 
‘‘(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; and 
‘‘(11) requiring that the final determination in 
any post-grant review be issued not later than 1 year 
after the date on which the Director notices the insti-
tution of a proceeding under this chapter, except that 
the Director may, for good cause shown, extend the 1- 
year period by not more than 6 months, and may ad-
just the time periods in this paragraph in the case of 
joinder under section 325(c). 
‘‘(b) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect of 
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any such regulation on the economy, the integrity of the 
patent system, the efficient administration of the Office, 
and the ability of the Office to timely complete proceedings 
instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Patent 
Trial and Appeal Board shall, in accordance with section 
6, conduct each post-grant review instituted under this 
chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During a post-grant review 
instituted under this chapter, the patent owner may 
file 1 motion to amend the patent in 1 or more of the 
following ways: 
‘‘(A) Cancel any challenged patent claim. 
‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL MOTIONS.—Additional motions 
to amend may be permitted upon the joint request of 
the petitioner and the patent owner to materially ad-
vance the settlement of a proceeding under section 
327, or upon the request of the patent owner for good 
cause shown. 
‘‘(3) SCOPE OF CLAIMS.—An amendment under 
this subsection may not enlarge the scope of the 
claims of the patent or introduce new matter. 
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‘‘(e) EVIDENTIARY STANDARDS.—In a post-grant re-
view instituted under this chapter, the petitioner shall have 
the burden of proving a proposition of unpatentability by 
a preponderance of the evidence. 
‘‘§ 327. Settlement 
‘‘(a) IN GENERAL.—A post-grant review instituted 
under this chapter shall be terminated with respect to any 
petitioner upon the joint request of the petitioner and the 
patent owner, unless the Office has decided the merits of 
the proceeding before the request for termination is filed. 
If the post-grant review is terminated with respect to a peti-
tioner under this section, no estoppel under section 325(e) 
shall attach to the petitioner, or to the real party in interest 
or privy of the petitioner, on the basis of that petitioner’s 
institution of that post-grant review. If no petitioner re-
mains in the post-grant review, the Office may terminate 
the post-grant review or proceed to a final written decision 
under section 328(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in such 
agreement or understanding, made in connection with, or 
in contemplation of, the termination of a post-grant review 
under this section shall be in writing, and a true copy of 
such agreement or understanding shall be filed in the Office 
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before the termination of the post-grant review as between 
the parties. At the request of a party to the proceeding, the 
agreement or understanding shall be treated as business 
confidential information, shall be kept separate from the file 
of the involved patents, and shall be made available only 
to Federal Government agencies on written request, or to 
any person on a showing of good cause. 
‘‘§ 328. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re-
view is instituted and not dismissed under this chapter, the 
Patent Trial and Appeal Board shall issue a final written 
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 ter-
minated, the Director shall issue and publish a certificate 
canceling any claim of the patent finally determined to be 
unpatentable, confirming any claim of the patent deter-
mined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) AMENDED
OR
NEW
CLAIM.—Any proposed 
amended or new claim determined to be patentable and in-
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corporated into a patent following a post-grant review 
under this chapter shall have the same effect as that speci-
fied 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, any-
thing patented by such proposed amended or new claim, 
or who made substantial preparation therefor, before the 
issuance of a certificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office shall 
make available to the public data describing the length of 
time between the institution of, and the issuance of a final 
written decision under subsection (a) for, each post-grant 
review. 
‘‘§ 329. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 328(a) 
may appeal the decision pursuant to sections 141 through 
144. Any party to the post-grant review shall have the right 
to be a party to the appeal.’’. 
(e) CONFORMING AMENDMENT.—The table of chapters 
for part III of title 35, United States Code, is amended 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 en-
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actment 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 expi-
ration of the 1-year period beginning on the date 
of the enactment of this Act and, except as pro-
vided in section 18 and in paragraph (3), shall 
apply to any patent that is described in section 
3(n)(1). 
(B) LIMITATION.—The Director may impose 
a limit on the number of post-grant reviews that 
may be instituted under chapter 32 of title 35, 
United States Code, during each of the first 4 1- 
year periods in which the amendments made by 
subsection (d) are in effect. 
(3) PENDING INTERFERENCES.— 
(A) PROCEDURES IN GENERAL.—The Direc-
tor shall determine, and include in the regula-
tions issued under paragraph (1), the procedures 
under which an interference commenced before 
the effective date set forth in paragraph (2)(A) is 
to proceed, including whether such interference— 
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(i) is to be dismissed without prejudice 
to the filing of a petition for a post-grant 
review under chapter 32 of title 35, United 
States Code; or 
(ii) is to proceed as if this Act had not 
been enacted. 
(B) PROCEEDINGS BY PATENT TRIAL AND 
APPEAL BOARD.—For purposes of an interference 
that is commenced before the effective date set 
forth in paragraph (2)(A), the Director may 
deem the Patent Trial and Appeal Board to be 
the Board of Patent Appeals and Interferences, 
and may allow the Patent Trial and Appeal 
Board to conduct any further proceedings in that 
interference. 
(C) APPEALS.—The authorization to appeal 
or have remedy from derivation proceedings in 
sections 141(d) and 146 of title 35, United States 
Code, as amended by this Act, and the jurisdic-
tion to entertain appeals from derivation pro-
ceedings in section 1295(a)(4)(A) of title 28, 
United States Code, as amended by this Act, 
shall be deemed to extend to any final decision 
in an interference that is commenced before the 
effective date set forth in paragraph (2)(A) of 
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this subsection and that is not dismissed pursu-
ant to this paragraph. 
(g) CITATION OF PRIOR ART AND WRITTEN STATE-
MENTS.— 
(1) IN
GENERAL.—Section 301 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 301. Citation of prior art and written statements 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a 
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) statements of the patent owner filed in a 
proceeding before a Federal court or the Office in 
which the patent owner took a position on the scope 
of any claim of a particular patent. 
‘‘(b) OFFICIAL FILE.—If the person citing prior art 
or written statements pursuant to subsection (a) explains 
in writing the pertinence and manner of applying the prior 
art or written statements to at least 1 claim of the patent, 
the citation of the prior art or written statements and the 
explanation thereof shall become a part of the official file 
of the patent. 
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‘‘(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 ad-
dresses 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 considered 
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 information is 
subject to an applicable protective order, such statement or 
information 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 pursuant 
to subsection (a), that person’s identity shall be excluded 
from the patent file and kept confidential.’’. 
(2) CONFORMING AMENDMENT.—The item relat-
ing 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 expiration 
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of the 1-year period beginning on the date of the en-
actment of this Act and shall apply to any patent 
issued before, on, or after that effective date. 
(h) REEXAMINATION.— 
(1) DETERMINATION BY DIRECTOR.— 
(A) IN GENERAL.—Section 303(a) of title 
35, United States Code, is amended by striking 
‘‘section 301 of this title’’ and inserting ‘‘section 
301 or 302’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect upon 
the expiration of the 1-year period beginning on 
the date of the enactment of this Act and shall 
apply to any patent issued before, on, or after 
that effective date. 
(2) APPEAL.— 
(A) IN GENERAL.—Section 306 of title 35, 
United States Code, is amended by striking 
‘‘145’’ and inserting ‘‘144’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect on the 
date of the enactment of this Act and shall apply 
to any appeal of a reexamination before the 
Board of Patent Appeals and Interferences or the 
Patent Trial and Appeal Board that is pending 
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on, or brought on or after, the date of the enact-
ment of this Act. 
SEC. 7. PATENT TRIAL AND APPEAL BOARD. 
(a) COMPOSITION AND DUTIES.— 
(1) IN GENERAL.—Section 6 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) IN GENERAL.—There shall be in the Office a Pat-
ent Trial and Appeal Board. The Director, the Deputy Di-
rector, the Commissioner for Patents, the Commissioner for 
Trademarks, and the administrative patent judges shall 
constitute the Patent Trial and Appeal Board. The admin-
istrative 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, regulation, or 
delegation of authority, or any document of or pertaining 
to the Board of Patent Appeals and Interferences 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); 
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‘‘(2) review appeals of reexaminations pursuant 
to section 134(b); 
‘‘(3) conduct derivation proceedings pursuant to 
section 135; and 
‘‘(4) conduct inter partes reviews and post-grant 
reviews pursuant to chapters 31 and 32. 
‘‘(c) 3-MEMBER PANELS.—Each appeal, derivation 
proceeding, post-grant review, and inter partes review shall 
be heard by at least 3 members of the Patent Trial and 
Appeal Board, who shall be designated by the Director. 
Only the Patent Trial and Appeal Board may grant re-
hearings. 
‘‘(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 administrative patent 
judge on the basis of the judge’s having been originally ap-
pointed by the Director that the administrative patent 
judge so appointed was acting as a de facto officer.’’. 
(2) CONFORMING AMENDMENT.—The item relat-
ing to section 6 in the table of sections for chapter 1 
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of title 35, United States Code, is amended to read as 
follows: 
‘‘6. Patent Trial and Appeal Board.’’. 
(b) ADMINISTRATIVE APPEALS.—Section 134 of title 
35, United States Code, is amended— 
(1) in subsection (b), by striking ‘‘any reexam-
ination proceeding’’ and inserting ‘‘a reexamination’’; 
and 
(2) by striking subsection (c). 
(c) CIRCUIT APPEALS.— 
(1) IN
GENERAL.—Section 141 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 141. Appeal to Court of Appeals for the Federal Cir-
cuit 
‘‘(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 applicant 
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 section 
134(b) may appeal the Board’s decision only to the United 
States Court of Appeals for the Federal Circuit. 
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‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.—A 
party to an inter partes review or a post-grant review who 
is dissatisfied with the final written decision of the Patent 
Trial and Appeal Board under section 318(a) or 328(a) (as 
the case may be) may appeal the Board’s 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 decision 
of the Patent Trial and Appeal Board in the proceeding 
may appeal the decision to the United States Court of Ap-
peals for the Federal Circuit, but such appeal shall be dis-
missed 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 notice with the Direc-
tor that the party elects to have all further proceedings con-
ducted 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 deci-
sion 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 
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proceeding, reexamination, post-grant review, or 
inter partes review under title 35, at the in-
stance of a party who exercised that party’s right 
to participate in the applicable proceeding before 
or appeal to the Board, except that an applicant 
or a party to a derivation proceeding may also 
have remedy by civil action pursuant to section 
145 or 146 of title 35; an appeal under this sub-
paragraph of a decision of the Board with re-
spect 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 decision 
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 
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(B) by striking the last sentence. 
(d) EFFECTIVE DATE.—The amendments made by this 
section shall take effect upon the expiration of the 1-year 
period beginning on the date of the enactment of this Act 
and shall apply to proceedings commenced on or after that 
effective date, except that— 
(1) the extension of jurisdiction to the United 
States Court of Appeals for the Federal Circuit to en-
tertain appeals of decisions of the Patent Trial and 
Appeal Board in reexaminations under the amend-
ment made by subsection (c)(2) shall be deemed to 
take effect on the date of the enactment of this Act 
and shall extend to any decision of the Board of Pat-
ent Appeals and Interferences with respect to a reex-
amination that is entered before, on, or after the date 
of the enactment of this Act; 
(2) the provisions of sections 6, 134, and 141 of 
title 35, United States Code, as in effect on the day 
before the effective date of the amendments made by 
this section shall continue to apply to inter partes re-
examinations that are requested under section 311 of 
such title before such effective date; 
(3) the Patent Trial and Appeal Board may be 
deemed to be the Board of Patent Appeals and Inter-
ferences for purposes of appeals of inter partes reex-
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aminations that are requested under section 311 of 
title 35, United States Code, before the effective date 
of the amendments made by this section; and 
(4) the Director’s right under the fourth sentence 
of section 143 of title 35, United States Code, as 
amended by subsection (c)(3) of this section, to inter-
vene in an appeal from a decision entered by the Pat-
ent Trial and Appeal Board shall be deemed to extend 
to inter partes reexaminations that are requested 
under section 311 of such title before the effective date 
of the amendments made by this section. 
SEC. 8. PREISSUANCE SUBMISSIONS BY THIRD PARTIES. 
(a) IN GENERAL.—Section 122 of title 35, United 
States Code, is amended by adding at the end the following: 
‘‘(e) PREISSUANCE SUBMISSIONS
BY THIRD PAR-
TIES.— 
‘‘(1) IN GENERAL.—Any third party may submit 
for consideration and inclusion in the record of a pat-
ent application, any patent, published patent appli-
cation, or other printed publication of potential rel-
evance to the examination 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 given or mailed in the application 
for patent; or 
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‘‘(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 Di-
rector may prescribe; and 
‘‘(C) include a statement by the person 
making such submission affirming that the sub-
mission was made in compliance with this sec-
tion.’’. 
(b) EFFECTIVE DATE.—The amendments made by this 
section shall take effect upon the expiration of the 1-year 
period beginning on the date of the enactment of this Act 
and shall apply to any patent application filed before, on, 
or after that effective date. 
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SEC. 9. VENUE. 
(a) TECHNICAL AMENDMENTS RELATING TO VENUE.— 
Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, 
United States Code, and section 21(b)(4) of the Trademark 
Act of 1946 (15 U.S.C. 1071(b)(4)), are each amended by 
striking ‘‘United States District Court for the District of 
Columbia’’ each place that term appears and inserting 
‘‘United States District Court for the Eastern District of 
Virginia’’. 
(b) EFFECTIVE DATE.—The amendments made by this 
section shall take effect on the date of the enactment of this 
Act and shall apply to any civil action commenced on or 
after that date. 
SEC. 10. FEE SETTING AUTHORITY. 
(a) FEE SETTING.— 
(1) IN GENERAL.—The Director may set or ad-
just by rule any fee established, authorized, or charged 
under title 35, United States Code, or the Trademark 
Act of 1946 (15 U.S.C. 1051 et seq.), for any services 
performed by or materials furnished by, the Office, 
subject to paragraph (2). 
(2) FEES TO RECOVER COSTS.—Fees may be set 
or adjusted under paragraph (1) only to recover the 
aggregate estimated costs to the Office for processing, 
activities, services, and materials relating to patents 
(in the case of patent fees) and trademarks (in the 
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case of trademark fees), including administrative 
costs of the Office with respect to such patent or 
trademark fees (as the case may be). 
(b) SMALL AND MICRO ENTITIES.—The fees set or ad-
justed under subsection (a) for filing, searching, examining, 
issuing, appealing, and maintaining patent applications 
and patents shall be reduced by 50 percent with respect to 
the application of such fees to any small entity that quali-
fies 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 sub-
section (g) of this section). 
(c) REDUCTION
OF
FEES
IN
CERTAIN
FISCAL 
YEARS.—In each fiscal year, the Director— 
(1) shall consult with the Patent Public Advisory 
Committee and the Trademark Public Advisory Com-
mittee on the advisability of reducing any fees de-
scribed in subsection (a); and 
(2) after the consultation required under para-
graph (1), may reduce such fees. 
(d) ROLE OF THE PUBLIC ADVISORY COMMITTEE.— 
The Director shall— 
(1) not less than 45 days before publishing any 
proposed fee under subsection (a) in the Federal Reg-
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ister, submit the proposed fee to the Patent Public Ad-
visory 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 delib-
erate, consider, and comment on such proposal; 
(B) require that, during that 30-day period, the 
relevant advisory committee hold a public hearing re-
lating to such proposal; and 
(C) assist the relevant advisory committee in 
carrying out that public hearing, including by offer-
ing the use of the resources of the Office to notify and 
promote the hearing to the public and interested 
stakeholders; 
(3) require the relevant advisory committee to 
make available to the public a written report setting 
forth in detail the comments, advice, and rec-
ommendations of the committee regarding the pro-
posed fee; and 
(4) consider and analyze any comments, advice, 
or recommendations received from the relevant advi-
sory committee before setting or adjusting (as the case 
may be) the fee. 
(e) PUBLICATION IN THE FEDERAL REGISTER.— 
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(1) PUBLICATION AND RATIONALE.—The Direc-
tor shall— 
(A) publish any proposed fee change under 
this section in the Federal Register; 
(B) include, in such publication, the specific 
rationale and purpose for the proposal, including 
the possible expectations or benefits resulting 
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 pub-
lished under subparagraph (A). 
(2) PUBLIC
COMMENT
PERIOD.—The Director 
shall, in the publication under paragraph (1), provide 
the public a period of not less than 45 days in which 
to submit comments on the proposed change in fees. 
(3) PUBLICATION
OF
FINAL
RULE.—The final 
rule setting or adjusting a fee under this section shall 
be published in the Federal Register and in the Offi-
cial Gazette of the Patent and Trademark Office. 
(4) CONGRESSIONAL COMMENT PERIOD.—A fee 
set or adjusted under subsection (a) may not become 
effective— 
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(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 set-
ting the fee under paragraph (3); or 
(B) if a law is enacted disapproving such 
fee. 
(5) RULE OF CONSTRUCTION.—Rules prescribed 
under this section shall not diminish— 
(A) the rights of an applicant for a patent 
under title 35, United States Code, or for a mark 
under the Trademark Act of 1946; or 
(B) any rights under a ratified treaty. 
(f) RETENTION OF AUTHORITY.—The Director retains 
the authority under subsection (a) to set or adjust fees only 
during such period as the Patent and Trademark Office re-
mains an agency within the Department of Commerce. 
(g) MICRO ENTITY DEFINED.— 
(1) IN GENERAL.—Chapter 11 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing new section: 
‘‘§ 123. Micro entity defined 
‘‘(a) IN GENERAL.—For purposes of this title, the term 
‘micro entity’ means an applicant who makes a certifi-
cation that the applicant— 
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‘‘(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, provi-
sional 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-
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 as-
sign, 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 section 
61(a) of the Internal Revenue Code of 1986, exceeding 
3 times the median household income for that pre-
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ceding calendar year, as reported by the Bureau of 
the Census. 
‘‘(b) APPLICATIONS RESULTING FROM PRIOR EMPLOY-
MENT.—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 em-
ployment. 
‘‘(c) FOREIGN CURRENCY EXCHANGE RATE.—If an 
applicant’s or entity’s gross income in the preceding cal-
endar year is not in United States dollars, the average cur-
rency exchange rate, as reported by the Internal Revenue 
Service, during that calendar year shall be used to deter-
mine whether the applicant’s or entity’s gross income ex-
ceeds 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 section, 
a micro entity shall include an applicant who cer-
tifies 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-
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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 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 
on other patent applicants or owners or are otherwise 
reasonably necessary and appropriate. At least 3 
months before any limits proposed to be imposed pur-
suant to this paragraph take effect, the Director shall 
inform the Committee on the Judiciary of the House 
of Representatives and the Committee on the Judici-
ary 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.— 
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(1) IN
GENERAL.—Notwithstanding any other 
provision of this section, a fee of $400 shall be estab-
lished for each application for an original patent, ex-
cept 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 sub-
section shall be deposited in the Treasury as an offset-
ting receipt that shall not be available for obligation 
or expenditure. 
(2) EFFECTIVE DATE.—This subsection shall take 
effect upon the expiration of the 60-day period begin-
ning on the date of the enactment of this Act. 
(i) EFFECTIVE DATE; SUNSET.— 
(1) EFFECTIVE
DATE.—This section and the 
amendments made by this section shall take effect on 
the date of the enactment of this Act. 
(2) SUNSET.—The authority of the Director to 
set or adjust any fee under subsection (a) shall termi-
nate upon the expiration of the 6-year period begin-
ning on the date of the enactment of this Act. 
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SEC. 11. FEES FOR PATENT SERVICES. 
(a) GENERAL PATENT SERVICES.—Subsections (a) 
and (b) of section 41 of title 35, United States Code, are 
amended to read as follows: 
‘‘(a) GENERAL FEES.—The Director shall charge the 
following fees: 
‘‘(1) FILING AND BASIC NATIONAL FEES.— 
‘‘(A) On filing each application for an 
original patent, except for design, plant, or pro-
visional applications, $330. 
‘‘(B) On filing each application for an 
original design patent, $220. 
‘‘(C) On filing each application for an 
original plant patent, $220. 
‘‘(D) On filing each provisional application 
for an original patent, $220. 
‘‘(E) On filing each application for the re-
issue of a patent, $330. 
‘‘(F) The basic national fee for each inter-
national application filed under the treaty de-
fined in section 351(a) entering the national 
stage under section 371, $330. 
‘‘(G) In addition, excluding any sequence 
listing or computer program listing filed in an 
electronic medium as prescribed by the Director, 
for any application the specification and draw-
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ings of which exceed 100 sheets of paper (or 
equivalent as prescribed by the Director if filed 
in an electronic medium), $270 for each addi-
tional 50 sheets of paper (or equivalent as pre-
scribed by the Director if filed in an electronic 
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 (whether 
dependent or independent) in excess of 20; 
and 
‘‘(iii) for each application containing 
a multiple dependent claim, $390. 
‘‘(B) MULTIPLE DEPENDENT CLAIMS.—For 
the purpose of computing fees under subpara-
graph (A), a multiple dependent claim referred 
to in section 112 or any claim depending there-
from shall be considered as separate dependent 
claims in accordance with the number of claims 
to which reference is made. 
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‘‘(C) REFUNDS; ERRORS IN PAYMENT.—The 
Director may by regulation provide for a refund 
of any part of the fee specified in subparagraph 
(A) for any claim that is canceled before an ex-
amination on the merits, as prescribed by the 
Director, has been made of the application under 
section 131. Errors in payment of the additional 
fees under this paragraph may be rectified in ac-
cordance with regulations prescribed by the Di-
rector. 
‘‘(3) EXAMINATION FEES.— 
‘‘(A) IN GENERAL.— 
‘‘(i) For examination of each applica-
tion for an original patent, except for de-
sign, plant, provisional, or international 
applications, $220. 
‘‘(ii) For examination of each applica-
tion for an original design patent, $140. 
‘‘(iii) For examination of each appli-
cation 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. 
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‘‘(B) APPLICABILITY OF OTHER FEE PROVI-
SIONS.—The provisions of paragraphs (3) and 
(4) of section 111(a) relating to the payment of 
the fee for filing the application shall apply to 
the payment of the fee specified in subparagraph 
(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 specified in sub-
paragraph (A) with respect to an international 
application. 
‘‘(4) ISSUE FEES.— 
‘‘(A) For issuing each original patent, ex-
cept for design or plant patents, $1,510. 
‘‘(B) For issuing each original design pat-
ent, $860. 
‘‘(C) For issuing each original plant patent, 
$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 examiner 
to the Patent Trial and Appeal Board, $540. 
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‘‘(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 applica-
tion for a patent, for the unintentionally delayed 
payment of the fee for issuing each patent, or for an 
unintentionally delayed response by the patent owner 
in any reexamination proceeding, $1,620, unless the 
petition is filed under section 133 or 151, in which 
case the fee shall be $540. 
‘‘(8) EXTENSION
FEES.—For petitions for 1- 
month extensions of time to take actions required by 
the Director in an application— 
‘‘(A) on filing a first petition, $130; 
‘‘(B) on filing a second petition, $360; and 
‘‘(C) on filing a third or subsequent peti-
tion, $620. 
‘‘(b) MAINTENANCE FEES.— 
‘‘(1) IN GENERAL.—The Director shall charge the 
following fees for maintaining in force all patents 
based on applications filed on or after December 12, 
1980: 
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‘‘(A) Three years and 6 months after grant, 
$980. 
‘‘(B) Seven years and 6 months after grant, 
$2,480. 
‘‘(C) Eleven years and 6 months after 
grant, $4,110. 
‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay-
ment of the applicable maintenance fee under para-
graph (1) is received in the Office on or before the 
date the fee is due or within a grace period of 6 
months thereafter, the patent shall expire as of the 
end of such grace period. The Director may require 
the payment of a surcharge as a condition of accept-
ing within such 6-month grace period the payment of 
an applicable maintenance fee. 
‘‘(3) NO
MAINTENANCE
FEE
FOR
DESIGN
OR 
PLANT PATENT.—No fee may be established for main-
taining 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 insert-
ing: 
‘‘(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.— 
‘‘(1) ACCEPTANCE.—The Director’’; and 
(2) by striking ‘‘(2) A patent’’ and inserting: 
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‘‘(2) EFFECT ON RIGHTS OF OTHERS.—A pat-
ent’’. 
(c) PATENT SEARCH FEES.—Subsection (d) of section 
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 patent, 
except for provisional applications. The Director 
shall adjust the fees charged under this para-
graph to ensure that the fees recover an amount 
not to exceed the estimated average cost to the 
Office of searching applications for patent either 
by acquiring a search report from a qualified 
search authority, or by causing a search by Of-
fice personnel to be made, of each application for 
patent. 
‘‘(B) SPECIFIC FEES.—The fees referred to 
in subparagraph (A) are— 
‘‘(i) $540 for each application for an 
original patent, except for design, plant, 
provisional, or international applications; 
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‘‘(ii) $100 for each application for an 
original design patent; 
‘‘(iii) $330 for each application for an 
original plant patent; 
‘‘(iv) $540 for the national stage of 
each international application; and 
‘‘(v) $540 for each application for the 
reissue of a patent. 
‘‘(C) APPLICABILITY
OF
OTHER
PROVI-
SIONS.—The provisions of paragraphs (3) and 
(4) of section 111(a) relating to the payment of 
the fee for filing the application shall apply to 
the payment of the fee specified in this para-
graph with respect to an application filed under 
section 111(a). The provisions of section 371(d) 
relating to the payment of the national fee shall 
apply to the payment of the fee specified in this 
paragraph with respect to an international ap-
plication. 
‘‘(D) REFUNDS.—The Director may by reg-
ulation provide for a refund of any part of the 
fee specified in this paragraph for any applicant 
who files a written declaration of express aban-
donment as prescribed by the Director before an 
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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 qualified 
search authority that is a commercial entity 
may not conduct a search of a patent applica-
tion if the entity has any direct or indirect fi-
nancial interest in any patent or in any pend-
ing 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 
materials relating to patents not specified in this 
section to recover the estimated average cost to 
the Office of such processing, services, or mate-
rials, except that the Director shall charge the 
following fees for the following services: 
‘‘(i) For recording a document affect-
ing title, $40 per property. 
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‘‘(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 specifica-
tions 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 respect to 
their application to any small business concern as de-
fined under section 3 of the Small Business Act, and 
to any independent inventor or nonprofit organiza-
tion 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 sur-
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100 
charge 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 re-
duced by 75 percent with respect to its application to 
any entity to which paragraph (1) applies, if the ap-
plication 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 Director’’; 
(2) in subsection (f), by striking ‘‘The fees’’ and 
inserting ‘‘ADJUSTMENT OF FEES.—The fees’’; 
(3) by repealing subsection (g); and 
(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 Di-
rector’’; 
(B) by striking ‘‘(2) The Director’’ and in-
serting the following: 
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101 
‘‘(2) AVAILABILITY OF AUTOMATED SEARCH SYS-
TEMS.—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 fis-
cal years 2005, 2006, and 2007,’’, and inserting 
‘‘Until such time as the Director sets or adjusts the 
fees otherwise,’’; and 
(2) in the second sentence, by striking ‘‘During 
fiscal years 2005, 2006, and 2007, the’’ and inserting 
‘‘The’’. 
(g) EFFECTIVE DATE, APPLICABILITY, AND TRANSI-
TION PROVISIONS.—Section 803(a) of division B of the 
Consolidated Appropriations Act, 2005 (Public Law 108– 
447) is amended by striking ‘‘and shall apply only with 
respect to the remaining portion of fiscal year 2005 and 
fiscal year 2006’’. 
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102 
(h) REDUCTION IN FEES FOR SMALL ENTITY PAT-
ENTS.—The Director shall reduce fees for providing 
prioritized examination of utility and plant patent appli-
cations 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 examination pro-
gram are set to recover the estimated cost of the program. 
(i) 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. 12. SUPPLEMENTAL EXAMINATION. 
(a) IN GENERAL.—Chapter 25 of title 35, United 
States Code, is amended by adding at the end the following: 
‘‘§ 257. Supplemental examinations to consider, recon-
sider, or correct information 
‘‘(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.— 
A patent owner may request supplemental examination of 
a patent in the Office to consider, reconsider, or correct in-
formation believed to be relevant to the patent, in accord-
ance with such requirements as the Director may establish. 
Within 3 months after the date a request for supplemental 
examination meeting the requirements of this section is re-
ceived, the Director shall conduct the supplemental exam-
ination and shall conclude such examination by issuing a 
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103 
certificate indicating whether the information presented in 
the request raises a substantial new question of patent-
ability. 
‘‘(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 reexam-
ination 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 state-
ment pursuant to section 304. During the reexamination, 
the Director shall address each substantial new question of 
patentability identified during the supplemental examina-
tion, 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 exam-
ination of the patent if the information was consid-
ered, reconsidered, or corrected during a supplemental 
examination of the patent. The making of a request 
under subsection (a), or the absence thereof, shall not 
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104 
be relevant to enforceability of the patent under sec-
tion 282. 
‘‘(2) EXCEPTIONS.— 
‘‘(A) PRIOR ALLEGATIONS.—Paragraph (1) 
shall not apply to an allegation pled with par-
ticularity in a civil action, or set forth with par-
ticularity in a notice received by the patent 
owner under section 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 
supplemental examination request under sub-
section (a) to consider, reconsider, or correct in-
formation 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 sec-
tion 281 of this title, paragraph (1) shall not 
apply to any defense raised in the action that is 
based upon information that was considered, re-
considered, or corrected pursuant to a supple-
mental examination request under subsection (a), 
unless the supplemental examination, and any 
reexamination ordered pursuant to the request, 
are concluded before the date on which the action 
is brought. 
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‘‘(C) FRAUD.—No supplemental examina-
tion may be commenced by the Director on, and 
any pending supplemental examination shall be 
immediately terminated regarding, an applica-
tion or patent in connection with which fraud on 
the Office was practiced or attempted. If the Di-
rector determines that such a fraud on the Office 
was practiced or attempted, the Director shall 
also refer the matter to the Attorney General for 
such action as the Attorney General may deem 
appropriate. 
‘‘(d) FEES AND REGULATIONS.— 
‘‘(1) FEES.—The Director shall, by regulation, 
establish fees for the submission of a request for sup-
plemental examination of a patent, and to consider 
each item of information submitted in the request. If 
reexamination is ordered under subsection (b), fees es-
tablished and applicable to ex parte reexamination 
proceedings under chapter 30 shall be paid, in addi-
tion to fees applicable to supplemental examination. 
‘‘(2) REGULATIONS.—The Director shall issue 
regulations governing the form, content, and other re-
quirements of requests for supplemental examination, 
and establishing procedures for reviewing information 
submitted in such requests. 
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‘‘(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 Commis-
sion Act to the extent that section relates to unfair 
methods of competition); 
‘‘(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 be-
fore the Office.’’. 
(b) CONFORMING AMENDMENT.—The table of sections 
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 information.’’. 
(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. 
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SEC. 13. 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’’; 
(2) by striking ‘‘25 percent’’ and inserting ‘‘85 
percent’’; and 
(3) by striking ‘‘as described above in this clause 
(D);’’ and inserting ‘‘described above in this clause;’’. 
(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 patent issued before, on, or after 
that date. 
SEC. 14. 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 in-
vention or application for patent, shall be deemed insuffi-
cient 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. 
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(c) EXCLUSIONS.—This section does not apply to that 
part of an invention that— 
(1) is a method, apparatus, technology, computer 
program product, or system, that is used solely for 
preparing a tax or information return or other tax 
filing, including one that records, transmits, trans-
fers, or organizes data related to such filing; or 
(2) is a method, apparatus, technology, computer 
program product, or system used solely for financial 
management, to the extent that it is severable 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 section 
shall be construed to imply that other business methods are 
patentable or that other business method patents are valid. 
(e) EFFECTIVE DATE; APPLICABILITY.—This section 
shall take effect on the date of the enactment of this Act 
and shall apply to any patent application that is pending 
on, or filed on or after, that date, and to any patent that 
is issued on or after that date. 
SEC. 15. BEST MODE REQUIREMENT. 
(a) IN GENERAL.—Section 282 of title 35, United 
States Code, is amended in the second undesignated para-
graph by striking paragraph (3) and inserting the fol-
lowing: 
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‘‘(3) Invalidity of the patent or any claim in 
suit for failure to comply with— 
‘‘(A) any requirement of section 112, except 
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 otherwise unen-
forceable; or 
‘‘(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 requirement 
to disclose the best mode)’’. 
(c) EFFECTIVE DATE.—The amendments made by this 
section shall take effect upon the date of the enactment of 
this Act and shall apply to proceedings commenced on or 
after that date. 
SEC. 16. 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 ad-
dress of a posting on the Internet, accessible to the 
public without charge for accessing the address, that 
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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 pend-
ing on, or commenced on or after, the date of the en-
actment of this Act. 
(3) REPORT.—Not later than the date that is 3 
years after the date of the enactment of this Act, the 
Director shall submit a report to Congress that pro-
vides— 
(A) an analysis of the effectiveness of ‘‘vir-
tual marking’’, as provided in the amendment 
made by paragraph (1) of this subsection, as an 
alternative to the physical marking of articles; 
(B) an analysis of whether such virtual 
marking has limited or improved the ability of 
the general public to access information about 
patents; 
(C) an analysis of the legal issues, if any, 
that arise from such virtual marking; and 
(D) an analysis of the deficiencies, if any, 
of such virtual marking. 
(b) FALSE MARKING.— 
(1) CIVIL PENALTY.—Section 292(a) of title 35, 
United States, Code, is amended by adding at the end 
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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) EXPIRED PATENTS.—Section 292 of title 35, 
United States Code, is amended by adding at the end 
the following: 
‘‘(c) Whoever engages in an activity under subsection 
(a) for which liability would otherwise be imposed shall not 
be liable for such activity— 
‘‘(1) that is engaged in during the 3-year period 
beginning on the date on which the patent at issue ex-
pires; or 
‘‘(2) that is engaged in after the end of that 3- 
year period if the word ‘expired’ is placed before the 
word ‘patent’, ‘patented’, the abbreviation ‘pat’, or the 
patent number, either on the article or through a 
posting on the Internet, as provided in section 
287(a).’’. 
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(4) 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. 17. ADVICE OF COUNSEL. 
(a) IN GENERAL.—Chapter 29 of title 35, United 
States Code, is amended by adding at the end the following: 
‘‘§ 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 
infringer willfully infringed the patent or that the infringer 
intended to induce infringement of the patent.’’. 
(b) CONFORMING AMENDMENT.—The table of sections 
for chapter 29 of title 35, United States Code, is amended 
by adding at the end the following: 
‘‘298. Advice of counsel.’’. 
SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSINESS 
METHOD PATENTS. 
(a) 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-
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ness method patents. The transitional proceeding im-
plemented pursuant to this subsection shall be re-
garded as, and shall employ the standards and proce-
dures of, a post-grant review under chapter 32 of title 
35, United States Code, subject to the following: 
(A) Section 321(c) of title 35, United States 
Code, and subsections (b), (e)(2), and (f) of sec-
tion 325 of such title shall not apply to a transi-
tional proceeding. 
(B) A person may not file a petition for a 
transitional proceeding with respect to a covered 
business method patent unless the person or the 
person’s real party in interest has been sued for 
infringement of the patent or has been charged 
with infringement under that patent. 
(C) A petitioner in a transitional pro-
ceeding who challenges the validity of 1 or more 
claims in a covered business method patent on a 
ground raised under section 102 or 103 of title 
35, United States Code, as in effect on the day 
before the effective date set forth in section 
3(n)(1), may support such ground only on the 
basis of— 
(i) prior art that is described by sec-
tion 102(a) of such title of such title (as in 
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effect on the day before such effective date); 
or 
(ii) prior art that— 
(I) discloses the invention more 
than 1 year before the date of the ap-
plication for patent in the United 
States; and 
(II) would be described by section 
102(a) of such title (as in effect on the 
day before the effective date set forth in 
section 3(n)(1)) if the disclosure had 
been made by another before the inven-
tion thereof by the applicant for pat-
ent. 
(D) The petitioner in a transitional pro-
ceeding, or the petitioner’s real party in interest, 
may not assert, either in a civil action arising 
in whole or in part under section 1338 of title 
28, United States Code, or in a proceeding before 
the International Trade Commission under sec-
tion 337 of the Tariff Act of 1930 (19 U.S.C. 
1337), that a claim in a patent is invalid on 
any ground that the petitioner raised during a 
transitional proceeding that resulted in a final 
written decision. 
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(E) The Director may institute a transi-
tional proceeding only for a patent that is a cov-
ered business method patent. 
(2) EFFECTIVE
DATE.—The regulations issued 
under paragraph (1) 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 covered 
business method patent issued before, on, or after that 
effective date, except that the regulations shall not 
apply to a patent described in section 6(f)(2)(A) of 
this Act during the period in which a petition for 
post-grant review of that patent would satisfy the re-
quirements of section 321(c) of title 35, United States 
Code. 
(3) SUNSET.— 
(A) IN GENERAL.—This subsection, and the 
regulations issued under this subsection, are re-
pealed effective upon the expiration of the 10- 
year period beginning on the date that the regu-
lations issued under to paragraph (1) take effect. 
(B) APPLICABILITY.—Notwithstanding sub-
paragraph (A), this subsection and the regula-
tions issued under this subsection shall continue 
to apply, after the date of the repeal under sub-
paragraph (A), to any petition for a transitional 
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proceeding that is filed before the date of such re-
peal. 
(b) REQUEST FOR STAY.— 
(1) IN GENERAL.—If a party seeks a stay of a 
civil action alleging infringement of a patent under 
section 281 of title 35, United States Code, relating 
to a transitional proceeding for that patent, the court 
shall decide whether to enter a stay based on— 
(A) whether a stay, or the denial thereof, 
will simplify the issues in question and stream-
line the trial; 
(B) whether discovery is complete and 
whether a trial date has been set; 
(C) whether a stay, or the denial thereof, 
would unduly prejudice the nonmoving party or 
present a clear tactical advantage for the moving 
party; and 
(D) whether a stay, or the denial thereof, 
will reduce the burden of litigation on the par-
ties and on the court. 
(2) REVIEW.—A party may take an immediate 
interlocutory appeal from a district court’s decision 
under paragraph (1). The United States Court of Ap-
peals for the Federal Circuit shall review the district 
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court’s decision to ensure consistent application of es-
tablished precedent, and such review may be de novo. 
(c) ATM EXEMPTION FOR VENUE PURPOSES.—In an 
action for infringement under section 281 of title 35, United 
States Code, of a covered business method patent, an auto-
mated teller machine shall not be deemed to be a regular 
and established place of business for purposes of section 
1400(b) of title 28, United States Code. 
(d) DEFINITION.— 
(1) IN GENERAL.—For purposes of this section, 
the term ‘‘covered business method patent’’ means a 
patent that claims a method or corresponding appa-
ratus for performing data processing or other oper-
ations used in the practice, administration, or man-
agement of a financial product or service, except that 
the term does not include patents for technological in-
ventions. 
(2) REGULATIONS.—To assist in implementing 
the transitional proceeding authorized by this sub-
section, the Director shall issue regulations for deter-
mining whether a patent is for a technological inven-
tion. 
(e) RULE OF CONSTRUCTION.—Nothing in this section 
shall be construed as amending or interpreting categories 
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of patent-eligible subject matter set forth under section 101 
of title 35, United States Code. 
SEC. 19. JURISDICTION AND PROCEDURAL MATTERS. 
(a) STATE COURT JURISDICTION.—Section 1338(a) of 
title 28, United States Code, is amended by striking the 
second sentence and inserting the following: ‘‘No State court 
shall have jurisdiction over any claim for relief arising 
under any Act of Congress relating to patents, plant variety 
protection, or copyrights. For purposes of this subsection, 
the term ‘State’ includes any State of the United States, 
the District of Columbia, the Commonwealth of Puerto Rico, 
the United States Virgin Islands, American Samoa, Guam, 
and the Northern Mariana Islands.’’. 
(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 Islands, in 
any civil action arising under, or in any civil action 
in which a party has asserted a compulsory counter-
claim arising under, any Act of Congress relating to 
patents or plant variety protection;’’. 
(c) REMOVAL.— 
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(1) IN GENERAL.—Chapter 89 of title 28, United 
States Code, is amended by adding at the end the fol-
lowing 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 Congress 
relating to patents, plant variety protection, or copyrights 
may be removed to the district court of the United States 
for the district and division embracing the place where the 
action is pending. 
‘‘(b) SPECIAL RULES.—The removal of an action 
under this section shall be made in accordance with section 
1446, except that if the removal is based solely on this sec-
tion— 
‘‘(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 determining 
any claim in the civil action because the State court from 
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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 district 
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.’’. 
(2) CONFORMING AMENDMENT.—The table of sec-
tions 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 FED-
ERAL CIRCUIT.— 
(1) IN GENERAL.—Chapter 99 of title 28, United 
States Code, is amended by adding at the end the fol-
lowing 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 
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for relief arising under any Act of Congress relating to pat-
ents 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 re-
gional circuit embracing the district from which the appeal 
has been taken.’’. 
(2) CONFORMING AMENDMENT.—The table of sec-
tions 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.’’. 
(e) PROCEDURAL MATTERS IN PATENT CASES.— 
(1) JOINDER
OF
PARTIES
AND
STAY
OF
AC-
TIONS.—Chapter 29 of title 35, United States Code, 
as amended by this Act, is further amended by add-
ing at the end the following new section: 
‘‘§ 299. Joinder of parties 
‘‘(a) JOINDER
OF ACCUSED INFRINGERS.—In any 
civil action arising under any Act of Congress relating to 
patents, other than an action or trial in which an act of 
infringement under section 271(e)(2) has been pled, parties 
that are accused infringers may be joined in one action as 
defendants or counterclaim defendants only if— 
‘‘(1) any right to relief is asserted against the 
parties jointly, severally, or in the alternative with 
respect to or arising out of the same transaction, oc-
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currence, or series of transactions or occurrences re-
lating to the making, using, importing into the 
United States, offering for sale, or selling of the same 
accused product or process; and 
‘‘(2) questions of fact common to all defendants 
or counterclaim defendants will arise in the action. 
‘‘(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—For 
purposes of this subsection, accused infringers may not be 
joined in one action or trial as defendants or counterclaim 
defendants based solely on allegations that they each have 
infringed the patent or patents in suit.’’. 
(2) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, 
as amended by this Act, is further amended by add-
ing at the end the following new item: 
‘‘299. Joinder of parties.’’. 
(e) EFFECTIVE DATE.—The amendments made by this 
section shall apply to any civil action commenced on or 
after the date of the enactment of this Act. 
SEC. 20. TECHNICAL AMENDMENTS. 
(a) JOINT INVENTIONS.—Section 116 of title 35, 
United States Code, is amended— 
(1) in the first undesignated paragraph, by 
striking ‘‘When’’ and inserting ‘‘(a) JOINT IN-
VENTIONS.—When’’; 
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(2) in the second undesignated paragraph, 
by striking ‘‘If a joint inventor’’ and inserting 
‘‘(b) OMITTED INVENTOR.—If a joint inventor’’; 
and 
(3) in the third undesignated paragraph— 
(A) by striking ‘‘Whenever’’ and insert-
ing ‘‘(c) CORRECTION OF ERRORS IN APPLI-
CATION.—Whenever’’; and 
(B) by striking ‘‘and such error arose 
without any deceptive intention on his 
part,’’. 
(b) FILING OF APPLICATION IN FOREIGN COUNTRY.— 
Section 184 of title 35, United States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘Except when’’ and insert-
ing ‘‘(a) FILING IN FOREIGN COUNTRY.—Except 
when’’; and 
(B) by striking ‘‘and without deceptive in-
tent’’; 
(2) in the second undesignated paragraph, by 
striking ‘‘The term’’ and inserting ‘‘(b) APPLICA-
TION.—The term’’; and 
(3) in the third undesignated paragraph, by 
striking ‘‘The scope’’ and inserting ‘‘(c) SUBSEQUENT 
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MODIFICATIONS, 
AMENDMENTS, 
AND
SUPPLE-
MENTS.—The scope’’. 
(c) FILING WITHOUT A LICENSE.—Section 185 of title 
35, United States Code, is amended by striking ‘‘and with-
out deceptive intent’’. 
(d) REISSUE OF DEFECTIVE PATENTS.—Section 251 
of title 35, United States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘Whenever’’ and inserting 
‘‘(a) IN GENERAL.—Whenever’’; and 
(B) by striking ‘‘without any deceptive in-
tention’’; 
(2) in the second undesignated paragraph, by 
striking ‘‘The Director’’ and inserting ‘‘(b) MULTIPLE 
REISSUED PATENTS.—The Director’’; 
(3) in the third undesignated paragraph, by 
striking ‘‘The provisions’’ and inserting ‘‘(c) APPLI-
CABILITY OF THIS TITLE.—The provisions’’; and 
(4) in the last undesignated paragraph, by strik-
ing ‘‘No reissued patent’’ and inserting ‘‘(d) REISSUE 
PATENT ENLARGING SCOPE OF CLAIMS.—No reissued 
patent’’. 
(e) EFFECT OF REISSUE.—Section 253 of title 35, 
United States Code, is amended— 
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125 
(1) in the first undesignated paragraph, by 
striking ‘‘Whenever, without any deceptive intention,’’ 
and inserting ‘‘(a) IN GENERAL.—Whenever’’; and 
(2) in the second undesignated paragraph, by 
striking ‘‘In like manner’’ and inserting ‘‘(b) ADDI-
TIONAL DISCLAIMER OR DEDICATION.—In the man-
ner set forth in subsection (a),’’. 
(f) CORRECTION OF NAMED INVENTOR.—Section 256 
of title 35, United States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘Whenever’’ and inserting 
‘‘(a) CORRECTION.—Whenever’’; and 
(B) by striking ‘‘and such error arose with-
out any deceptive intention on his part’’; and 
(2) in the second undesignated paragraph, by 
striking ‘‘The error’’ and inserting ‘‘(b) PATENT 
VALID IF ERROR CORRECTED.—The error’’. 
(g) PRESUMPTION OF VALIDITY.—Section 282 of title 
35, United States Code, is amended— 
(1) in the first undesignated paragraph— 
(A) by striking ‘‘A patent’’ and inserting 
‘‘(a) IN GENERAL.—A patent’’; and 
(B) by striking the third sentence; 
(2) in the second undesignated paragraph— 
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126 
(A) by striking ‘‘The following’’ and insert-
ing ‘‘(b) DEFENSES.—The following’’; 
(B) 
in 
paragraph 
(1), 
by 
striking 
‘‘uneforceability,’’ and inserting ‘‘unenforce-
ability.’’; and 
(C) in paragraph (2), by striking ‘‘patent-
ability,’’ and inserting ‘‘patentability.’’ ; and 
(3) in the third undesignated paragraph— 
(A) by striking ‘‘In actions involving the 
validity or infringement of a patent’’ and insert-
ing ‘‘(c) NOTICE OF ACTIONS; ACTIONS DURING 
EXTENSION OF PATENT TERM.—In an action 
involving the validity or infringement of patent, 
the party asserting infringement shall identify, 
in the pleadings or otherwise in writing to the 
adverse party, all of its real parties in interest, 
and’’; and 
(B) by striking ‘‘Claims Court’’ and insert-
ing ‘‘Court of Federal Claims’’. 
(h) ACTION FOR INFRINGEMENT.—Section 288 of title 
35, United States Code, is amended by striking ‘‘, without 
deceptive intention,’’. 
(i) REVISER’S NOTES.— 
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127 
(1) Section 3(e)(2) of title 35, United States 
Code, is amended by striking ‘‘this Act,’’ and insert-
ing ‘‘that Act,’’. 
(2) Section 202 of title 35, United States Code, 
is amended— 
(A) in subsection (b)(3), by striking ‘‘the 
section 203(b)’’ and inserting ‘‘section 203(b)’’; 
and 
(B) in subsection (c)(7)(D), by striking ‘‘ex-
cept where it proves’’ and all that follows 
through ‘‘small business firms; and’’ and insert-
ing: ‘‘except where it is determined to be infeasi-
ble following a reasonable inquiry, a preference 
in the licensing of subject inventions shall be 
given to small business firms; and’’. 
(3) Section 209(d)(1) of title 35, United States 
Code, is amended by striking ‘‘nontransferrable’’ and 
inserting ‘‘nontransferable’’. 
(4) Section 287(c)(2)(G) of title 35, United 
States Code, is amended by striking ‘‘any state’’ and 
inserting ‘‘any State’’. 
(5) Section 371(b) of title 35, United States 
Code, is amended by striking ‘‘of the treaty’’ and in-
serting ‘‘of the treaty.’’. 
(j) UNNECESSARY REFERENCES.— 
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(1) IN GENERAL.—Title 35, United States Code, 
is amended by striking ‘‘of this title’’ each place that 
term appears. 
(2) EXCEPTION.—The amendment made by 
paragraph (1) shall not apply to the use of such term 
in the following sections of title 35, United States 
Code: 
(A) Section 1(c). 
(B) Section 101. 
(C) Subsections (a) and (b) of section 105. 
(D) The first instance of the use of such 
term in section 111(b)(8). 
(E) Section 161. 
(F) Section 164. 
(G) Section 171. 
(H) Section 251(c), as so designated by this 
section. 
(I) Section 261. 
(J) Subsections (g) and (h) of section 271. 
(K) Section 287(b)(1). 
(L) Section 289. 
(M) The first instance of the use of such 
term in section 375(a). 
(k) EFFECTIVE DATE.—The amendments made by this 
section shall take effect upon the expiration of the 1-year 
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