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not be joined in one action as defendants or counterclaim 
defendants, or have their actions consolidated for trial, 
based solely on allegations that they each have infringed 
the patent or patents in suit. 
‘‘(c) WAIVER.—A party that is an accused infringer 
may waive the limitations set forth in this section with 
respect to that party.’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 29 of title 35, United States 
Code, as amended by this Act, is further amended 
by adding 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’’; 
(2) in the second undesignated paragraph, 
by striking ‘‘If a joint inventor’’ and inserting 
‘‘(b) OMITTED INVENTOR.—If a joint inven-
tor’’; and 
(3) in the third undesignated paragraph— 
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(A) by striking ‘‘Whenever’’ and in-
serting ‘‘(c) CORRECTION OF ERRORS IN 
APPLICATION.—Whenever’’; and 
(B) by striking ‘‘and such error arose 
without any deceptive intention on his 
part,’’. 
(b) FILING
OF APPLICATION
IN FOREIGN COUN-
TRY.—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.—Ex-
cept 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) SUBSE-
QUENT MODIFICATIONS, AMENDMENTS, AND SUP-
PLEMENTS.—The scope’’. 
(c) FILING WITHOUT A LICENSE.—Section 185 of 
title 35, United States Code, is amended by striking ‘‘and 
without deceptive intent’’. 
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(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) MUL-
TIPLE 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 
striking ‘‘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— 
(1) in the first undesignated paragraph, by 
striking ‘‘Whenever, without any deceptive inten-
tion,’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 
and 
(2) in the second undesignated paragraph, by 
striking ‘‘In like manner’’ and inserting ‘‘(b) ADDI-
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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— 
(A) by striking ‘‘The following’’ and insert-
ing ‘‘(b) DEFENSES.—The following’’; 
(B) 
in 
paragraph 
(1), 
by 
striking 
‘‘uneforceability,’’ and inserting ‘‘unenforce-
ability.’’; and 
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(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 DUR-
ING EXTENSION OF PATENT TERM.—In an ac-
tion involving the validity or infringement of a 
patent’’; 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.— 
(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 
‘‘except where it proves’’ and all that follows 
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through ‘‘small business firms; and’’ and insert-
ing: ‘‘except where it is determined to be infea-
sible following a reasonable inquiry, a pref-
erence 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.— 
(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. 
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(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) ADDITIONAL TECHNICAL AMENDMENTS.—Sec-
tions 155 and 155A of title 35, United States Code, and 
the items relating to those sections in the table of sections 
for chapter 14 of such title, are repealed. 
(l) 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. 
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SEC. 21. TRAVEL EXPENSES AND PAYMENT OF ADMINIS-
TRATIVE JUDGES. 
(a) AUTHORITY TO COVER CERTAIN TRAVEL RE-
LATED EXPENSES.—Section 2(b)(11) of title 35, United 
States Code, is amended by inserting ‘‘, and the Office 
is authorized to expend funds to cover the subsistence ex-
penses and travel-related expenses, including per diem, 
lodging costs, and transportation costs, of persons attend-
ing such programs who are not Federal employees’’ after 
‘‘world’’. 
(b) PAYMENT OF ADMINISTRATIVE JUDGES.—Sec-
tion 3(b) of title 35, United States Code, is amended by 
adding at the end the following: 
‘‘(6) ADMINISTRATIVE
PATENT
JUDGES
AND 
ADMINISTRATIVE TRADEMARK JUDGES.—The Direc-
tor may fix the rate of basic pay for the administra-
tive patent judges appointed pursuant to section 6 
and the administrative trademark judges appointed 
pursuant to section 17 of the Trademark Act of 
1946 (15 U.S.C. 1067) at not greater than the rate 
of basic pay payable for level III of the Executive 
Schedule under section 5314 of title 5. The payment 
of a rate of basic pay under this paragraph shall not 
be subject to the pay limitation under section 
5306(e) or 5373 of title 5.’’. 
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SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING. 
(a) IN GENERAL.—Section 42(c) of title 35, United 
States Code, is amended— 
(1) by striking ‘‘(c)’’ and inserting ‘‘(c)(1)’’; 
(2) in the first sentence, by striking ‘‘shall be 
available’’ and inserting ‘‘shall, subject to paragraph 
(3), be available’’; 
(3) by striking the second sentence; and 
(4) by adding at the end the following: 
‘‘(2) There is established in the Treasury a Patent 
and Trademark Fee Reserve Fund. If fee collections by 
the Patent and Trademark Office for a fiscal year exceed 
the amount appropriated to the Office for that fiscal year, 
fees collected in excess of the appropriated amount shall 
be deposited in the Patent and Trademark Fee Reserve 
Fund. To the extent and in the amounts provided in ap-
propriations Acts, amounts in the Fund shall be made 
available until expended only for obligation and expendi-
ture by the Office in accordance with paragraph (3). 
‘‘(3)(A) Any fees that are collected under sections 41, 
42, and 376, and any surcharges on such fees, may only 
be used for expenses of the Office relating to the proc-
essing of patent applications and for other activities, serv-
ices, and materials relating to patents and to cover a share 
of the administrative costs of the Office relating to pat-
ents. 
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‘‘(B) Any fees that are collected under section 31 of 
the Trademark Act of 1946, and any surcharges on such 
fees, may only be used for expenses of the Office relating 
to the processing of trademark registrations and for other 
activities, services, and materials relating to trademarks 
and to cover a share of the administrative costs of the 
Office relating to trademarks.’’. 
(b) EFFECTIVE DATE.—The amendments made by 
this section shall take effect on October 1, 2011. 
SEC. 23. SATELLITE OFFICES. 
(a) ESTABLISHMENT.—Subject to available re-
sources, the Director shall, by not later than the date that 
is 3 years after the date of the enactment of this Act, 
establish 3 or more satellite offices in the United States 
to carry out the responsibilities of the Office. 
(b) PURPOSES.—The purposes of the satellite offices 
established under subsection (a) are to— 
(1) increase outreach activities to better connect 
patent filers and innovators with the Office; 
(2) enhance patent examiner retention; 
(3) improve recruitment of patent examiners; 
(4) decrease the number of patent applications 
waiting for examination; and 
(5) improve the quality of patent examination. 
(c) REQUIRED CONSIDERATIONS.— 
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(1) IN GENERAL.—In selecting the location of 
each satellite office to be established under sub-
section (a), the Director— 
(A) shall ensure geographic diversity 
among the offices, including by ensuring that 
such offices are established in different States 
and regions throughout the Nation; 
(B) may rely upon any previous evalua-
tions by the Office of potential locales for sat-
ellite offices, including any evaluations prepared 
as part of the Office’s Nationwide Workforce 
Program that resulted in the 2010 selection of 
Detroit, Michigan, as the first satellite office of 
the Office; 
(C) shall evaluate and consider the extent 
to which the purposes of satellite offices listed 
under subsection (b) will be achieved; 
(D) shall consider the availability of sci-
entific and technically knowledgeable personnel 
in the region from which to draw new patent 
examiners at minimal recruitment cost; and 
(E) shall consider the economic impact to 
the region. 
(2) OPEN
SELECTION
PROCESS.—Nothing in 
paragraph (1) shall constrain the Office to only con-
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sider its evaluations in selecting the Detroit, Michi-
gan, satellite office. 
(d) REPORT TO CONGRESS.—Not later than the end 
of the third fiscal year that begins after the date of the 
enactment of this Act, the Director shall submit a report 
to Congress on— 
(1) the rationale of the Director in selecting the 
location of any satellite office required under sub-
section (a), including an explanation of how the se-
lected location will achieve the purposes of satellite 
offices listed under subsection (b) and how the re-
quired considerations listed under subsection (c) 
were met; 
(2) the progress of the Director in establishing 
all such satellite offices; and 
(3) whether the operation of existing satellite 
offices is achieving the purposes under subsection 
(b). 
SEC. 24. DESIGNATION OF DETROIT SATELLITE OFFICE. 
(a) DESIGNATION.—The satellite office of the United 
States Patent and Trademark Office to be located in De-
troit, Michigan, shall be known and designated as the 
‘‘Elijah J. McCoy United States Patent and Trademark 
Office’’. 
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(b) REFERENCES.—Any reference in a law, map, reg-
ulation, document, paper, or other record of the United 
States to the satellite office of the United States Patent 
and Trademark Office to be located in Detroit, Michigan, 
referred to in subsection (a) shall be deemed to be a ref-
erence to the ‘‘Elijah J. McCoy United States Patent and 
Trademark Office’’. 
SEC. 25. PRIORITY EXAMINATION FOR IMPORTANT TECH-
NOLOGIES. 
Section 2(b)(2) of title 35, United States Code, is 
amended— 
(1) in subparagraph (E), by striking ‘‘and’’ 
after the semicolon; 
(2) in subparagraph (F), by inserting ‘‘and’’ 
after the semicolon; and 
(3) by adding at the end the following: 
‘‘(G) may, subject to any conditions pre-
scribed by the Director and at the request of 
the patent applicant, provide for prioritization 
of examination of applications for products, 
processes, or technologies that are important to 
the national economy or national competitive-
ness without recovering the aggregate extra cost 
of 
providing 
such 
prioritization, 
notwith-
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standing section 41 or any other provision of 
law;’’. 
SEC. 26. STUDY ON IMPLEMENTATION. 
(a) PTO STUDY.—The Director shall conduct a study 
on the manner in which this Act and the amendments 
made by this Act are being implemented by the Office, 
and on such other aspects of the patent policies and prac-
tices of the Federal Government with respect to patent 
rights, innovation in the United States, competitiveness of 
United States markets, access by small businesses to cap-
ital for investment, and such other issues, as the Director 
considers appropriate. 
(b) REPORT TO CONGRESS.—The Director shall, not 
later than the date that is 4 years after the date of the 
enactment of this Act, submit to the Committees on the 
Judiciary of the House of Representatives and the Senate 
a report on the results of the study conducted under sub-
section (a), including recommendations for any changes to 
laws and regulations that the Director considers appro-
priate. 
SEC. 27. STUDY ON GENETIC TESTING. 
(a) IN GENERAL.—The Director shall conduct a 
study on effective ways to provide independent, confirming 
genetic diagnostic test activity where gene patents and ex-
clusive licensing for primary genetic diagnostic tests exist. 
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(b) ITEMS INCLUDED IN STUDY.—The study shall in-
clude an examination of at least the following: 
(1) The impact that the current lack of inde-
pendent second opinion testing has had on the abil-
ity to provide the highest level of medical care to pa-
tients and recipients of genetic diagnostic testing, 
and on inhibiting innovation to existing testing and 
diagnoses. 
(2) The effect that providing independent sec-
ond opinion genetic diagnostic testing would have on 
the existing patent and license holders of an exclu-
sive genetic test. 
(3) The impact that current exclusive licensing 
and patents on genetic testing activity has on the 
practice of medicine, including but not limited to: 
the interpretation of testing results and performance 
of testing procedures. 
(4) The role that cost and insurance coverage 
have on access to and provision of genetic diagnostic 
tests. 
(c) CONFIRMING GENETIC DIAGNOSTIC TEST ACTIV-
ITY DEFINED.—For purposes of this section, the term 
‘‘confirming genetic diagnostic test activity’’ means the 
performance of a genetic diagnostic test, by a genetic diag-
nostic test provider, on an individual solely for the purpose 
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of providing the individual with an independent confirma-
tion of results obtained from another test provider’s prior 
performance of the test on the individual. 
(d) REPORT.—Not later than 9 months after the date 
of enactment of this Act, the Director shall report to the 
Committee on the Judiciary of the Senate and the Com-
mittee on the Judiciary of the House of Representatives 
on the findings of the study and provide recommendations 
for establishing the availability of such independent con-
firming genetic diagnostic test activity. 
SEC. 28. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSI-
NESS CONCERNS. 
Using available resources, the Director shall establish 
and maintain in the Office a Patent Ombudsman Pro-
gram. The duties of the Program’s staff shall include pro-
viding support and services relating to patent filings to 
small business concerns and independent inventors. 
SEC. 29. ESTABLISHMENT OF METHODS FOR STUDYING 
THE DIVERSITY OF APPLICANTS. 
The Director shall, not later than the end of the 6- 
month period beginning on the date of the enactment of 
this Act, establish methods for studying the diversity of 
patent applicants, including those applicants who are mi-
norities, women, or veterans. The Director shall not use 
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the results of such study to provide any preferential treat-
ment to patent applicants. 
SEC. 30. SENSE OF CONGRESS. 
It is the sense of Congress that the patent system 
should promote industries to continue to develop new tech-
nologies that spur growth and create jobs across the coun-
try which includes protecting the rights of small busi-
nesses and inventors from predatory behavior that could 
result in the cutting off of innovation. 
SEC. 31. USPTO STUDY ON INTERNATIONAL PATENT PRO-
TECTIONS FOR SMALL BUSINESSES. 
(a) STUDY REQUIRED.—The Director, in consulta-
tion with the Secretary of Commerce and the Adminis-
trator of the Small Business Administration, shall, using 
the existing resources of the Office, carry out a study— 
(1) to determine how the Office, in coordination 
with other Federal departments and agencies, can 
best help small businesses with international patent 
protection; and 
(2) whether, in order to help small businesses 
pay for the costs of filing, maintaining, and enforc-
ing international patent applications, there should be 
established either— 
(A) a revolving fund loan program to make 
loans to small businesses to defray the costs of 
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Calendar No. 87 
112TH CONGRESS 
1ST SESSION 
H. R. 1249 
AN ACT 
To amend title 35, United States Code, to provide 
for patent reform. 
JUNE 28, 2011 
Read the second time and placed on the calendar 
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