HR 1908 PCS
cluding copies of patents and printed publications, 
or written testimony of a witness attested to under 
oath or declaration by the witness, or any other in-
formation that the Director may require by regula-
tion; and 
‘‘(4) the petitioner provides copies of the peti-
tion, including any evidence submitted with the peti-
tion and any other information submitted under 
paragraph (3), to the patent owner or, if applicable, 
the designated representative of the patent owner. 
‘‘§ 324. Prohibited filings 
‘‘A post-grant review proceeding may not be insti-
tuted under section 322 if the petition for cancellation re-
questing the proceeding— 
‘‘(1) identifies the same cancellation petitioner 
and the same patent as a previous petition for can-
cellation filed under such section; or 
‘‘(2) is based on the best mode requirement 
contained in section 112. 
‘‘§ 325. Submission of additional information; show-
ing of sufficient grounds 
‘‘(a) IN GENERAL.—The cancellation petitioner shall 
file such additional information with respect to the peti-
tion as the Director may require. For each petition sub-
mitted under section 321, the Director shall determine if 
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the written statement, and any evidence submitted with 
the request, establish that a substantial question of pat-
entability exists for at least one claim in the patent. The 
Director may initiate a post-grant review proceeding if the 
Director determines that the information presented pro-
vides sufficient grounds to believe that there is a substan-
tial question of patentability concerning one or more 
claims of the patent at issue. 
‘‘(b) NOTIFICATION; DETERMINATIONS NOT RE-
VIEWABLE.—The Director shall notify the patent owner 
and each petitioner in writing of the Director’s determina-
tion under subsection (a), including a determination to 
deny the petition. The Director shall make that determina-
tion in writing not later than 60 days after receiving the 
petition. Any determination made by the Director under 
subsection (a), including whether or not to institute a 
post-grant review proceeding or to deny the petition, shall 
not be reviewable. 
‘‘§ 326. Conduct of post-grant review proceedings 
‘‘(a) IN GENERAL.—The Director shall prescribe reg-
ulations, in accordance with section 2(b)(2)— 
‘‘(1) establishing and governing post-grant re-
view proceedings under this chapter and their rela-
tionship to other proceedings under this title; 
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‘‘(2) establishing procedures for the submission 
of supplemental information after the petition for 
cancellation is filed; and 
‘‘(3) setting forth procedures for discovery of 
relevant evidence, including that such discovery shall 
be limited to evidence directly related to factual as-
sertions advanced by either party in the proceeding, 
and the procedures for obtaining such evidence shall 
be consistent with the purpose and nature of the 
proceeding. 
In carrying out paragraph (3), the Director shall bear in 
mind that discovery must be in the interests of justice. 
‘‘(b) 
POST-GRANT
REGULATIONS.—Regulations 
under subsection (a)(1)— 
‘‘(1) shall require that the final determination 
in a post-grant proceeding issue not later than one 
year after the date on which the post-grant review 
proceeding is instituted under this chapter, except 
that, for good cause shown, the Director may extend 
the 1-year period by not more than six months; 
‘‘(2) shall provide for discovery upon order of 
the Director; 
‘‘(3) shall provide for publication of notice in 
the Federal Register of the filing of a petition for 
post-grant review under this chapter, for publication 
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of the petition, and documents, orders, and decisions 
relating to the petition, on the website of the Patent 
and Trademark Office, and for filings under seal ex-
empt from publication requirements; 
‘‘(4) shall prescribe sanctions for abuse of dis-
covery, abuse of process, or any other improper use 
of the proceeding, such as to harass or to cause un-
necessary delay or unnecessary increase in the cost 
of the proceeding; 
‘‘(5) may provide for protective orders gov-
erning the exchange and submission of confidential 
information; and 
‘‘(6) shall ensure that any information sub-
mitted by the patent owner in support of any 
amendment entered under section 329 is made avail-
able to the public as part of the prosecution history 
of the patent. 
‘‘(c) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
on the economy, the integrity of the patent system, and 
the efficient administration of the Office. 
‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 
and Appeal Board shall, in accordance with section 6(b), 
conduct each post-grant review proceeding authorized by 
the Director. 
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‘‘§ 327. Patent owner response 
‘‘After a post-grant proceeding under this chapter 
has been instituted with respect to a patent, the patent 
owner shall have the right to file, within a time period 
set by the Director, a response to the cancellation petition. 
The patent owner shall file with the response, through af-
fidavits or declarations, any additional factual evidence 
and expert opinions on which the patent owner relies in 
support of the response. 
‘‘§ 328. Proof and evidentiary standards 
‘‘(a) IN GENERAL.—The presumption of validity set 
forth in section 282 shall not apply in a challenge to any 
patent claim under this chapter. 
‘‘(b) BURDEN OF PROOF.—The party advancing a 
proposition under this chapter shall have the burden of 
proving that proposition by a preponderance of the evi-
dence. 
‘‘§ 329. Amendment of the patent 
‘‘(a) IN GENERAL.—In response to a challenge in a 
petition for cancellation, the patent owner may file one 
motion to amend the patent in one or more of the fol-
lowing ways: 
‘‘(1) Cancel any challenged patent claim. 
‘‘(2) For each challenged claim, propose a sub-
stitute claim. 
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‘‘(3) Amend the patent drawings or otherwise 
amend the patent other than the claims. 
‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 
amend may be permitted only for good cause shown. 
‘‘(c) SCOPE OF CLAIMS.—An amendment under this 
section may not enlarge the scope of the claims of the pat-
ent or introduce new matter. 
‘‘§ 330. Decision of the Board 
‘‘If the post-grant review proceeding is instituted and 
not dismissed under this chapter, the Patent Trial and 
Appeal Board shall issue a final written decision address-
ing the patentability of any patent claim challenged and 
any new claim added under section 329. 
‘‘§ 331. Effect of decision 
‘‘(a) IN GENERAL.—If the Patent Trial and Appeal 
Board issues a final decision under section 330 and the 
time for appeal has expired or any appeal proceeding has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable and incorporating in the patent by op-
eration of the certificate any new claim determined to be 
patentable. 
‘‘(b) NEW CLAIMS.—Any new claim held to be pat-
entable and incorporated into a patent in a post-grant re-
view proceeding shall have the same effect as that speci-
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fied in section 252 for reissued patents on the right of 
any person who made, purchased, offered to sell, or used 
within the United States, or imported into the United 
States, anything patented by such new claim, or who made 
substantial preparations therefor, before a certificate 
under subsection (a) of this section is issued. 
‘‘§ 332. Settlement 
‘‘(a) IN GENERAL.—A post-grant review proceeding 
shall be terminated with respect to any petitioner upon 
the joint request of the petitioner and the patent owner, 
unless the Patent Trial and Appeal Board has issued a 
written decision before the request for termination is filed. 
If the post-grant review proceeding is terminated with re-
spect to a petitioner under this paragraph, no estoppel 
shall apply to that petitioner. If no petitioner remains in 
the proceeding, the panel of administrative patent judges 
assigned to the proceeding shall terminate the proceeding. 
‘‘(b) AGREEMENT IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in the 
agreement or understanding, that is made in connection 
with or in contemplation of the termination of a post-grant 
review proceeding, must be in writing. A post-grant review 
proceeding as between the parties to the agreement or un-
derstanding may not be terminated until a copy of the 
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agreement or understanding, including any such collateral 
agreements, has been filed in the Office. If any party filing 
such an agreement or understanding requests, the agree-
ment or understanding shall be kept separate from the 
file of the post-grant review proceeding, and shall be made 
available only to Government agencies on written request, 
or to any person on a showing of good cause. 
‘‘§ 333. Relationship to other proceedings 
‘‘(a) IN
GENERAL.—Notwithstanding subsection 
135(a), sections 251 and 252, and chapter 30, the Direc-
tor may determine the manner in which any reexamination 
proceeding, reissue proceeding, interference proceeding 
(commenced with respect to an application for patent filed 
before the effective date provided in section 3(k) of the 
Patent Reform Act of 2007), derivation proceeding, or 
post-grant review proceeding, that is pending during a 
post-grant review proceeding, may proceed, including pro-
viding for stay, transfer, consolidation, or termination of 
any such proceeding. 
‘‘(b) STAYS.—The Director may stay a post-grant re-
view proceeding if a pending civil action for infringement 
of a patent addresses the same or substantially the same 
questions of patentability raised against the patent in a 
petition for post-grant review. 
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‘‘(c) 
EFFECT
OF
COMMENCEMENT
OF
PRO-
CEEDING.—The commencement of a post-grant review 
proceeding— 
‘‘(1) shall not limit in any way the right of the 
patent owner to commence an action for infringe-
ment of the patent; and 
‘‘(2) shall not be cited as evidence relating to 
the validity of any claim of the patent in any pro-
ceeding before a court or the International Trade 
Commission concerning the patent. 
‘‘§ 334. Effect of decisions rendered in civil action on 
post-grant review proceedings 
‘‘If a final decision is entered against a party in a 
civil action arising in whole or in part under section 1338 
of title 28 establishing that the party has not sustained 
its burden of proving the invalidity of any patent claim— 
‘‘(1) that party to the civil action and the 
privies of that party may not thereafter request a 
post-grant review proceeding on that patent claim on 
the basis of any grounds, under the provisions of 
section 321, which that party or the privies of that 
party raised or could have raised; and 
‘‘(2) the Director may not thereafter maintain 
a post-grant review proceeding that was requested, 
before the final decision was so entered, by that 
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party or the privies of that party on the basis of 
such grounds. 
‘‘§ 335. Effect of final decision on future proceedings 
‘‘If a final decision under section 330 is favorable to 
the patentability of any original or new claim of the patent 
challenged by the cancellation petitioner, the cancellation 
petitioner may not thereafter, based on any ground that 
the cancellation petitioner raised during the post-grant re-
view proceeding— 
‘‘(1) request or pursue a reexamination of such 
claim under chapter 31; 
‘‘(2) request or pursue a derivation proceeding 
with respect to such claim; 
‘‘(3) request or pursue a post-grant review pro-
ceeding under this chapter with respect to such 
claim; 
‘‘(4) assert the invalidity of any such claim in 
any civil action arising in whole or in part under sec-
tion 1338 of title 28; or 
‘‘(5) assert the invalidity of any such claim in 
defense to an action brought under section 337 of 
the Tariff Act of 1930 (19 U.S.C. 1337). 
‘‘§ 336. Appeal 
‘‘A party dissatisfied with the final determination of 
the Patent Trial and Appeal Board in a post-grant pro-
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ceeding under this chapter may appeal the determination 
under sections 141 through 144. Any party to the post- 
grant proceeding shall have the right to be a party to the 
appeal.’’. 
(g) CONFORMING AMENDMENT.—The table of chap-
ters for part III is amended by adding at the end the fol-
lowing: 
‘‘32. Post-Grant Review Proceedings .........................................
321’’. 
(h) REPEAL.—Section 4607 of the Intellectual Prop-
erty and Communications Omnibus Reform Act of 1999, 
as enacted by section 1000(a)(9) of Public Law 106–113, 
is repealed. 
(i) EFFECTIVE DATES.— 
(1) IN GENERAL.—The amendments and repeal 
made by this section shall take effect at the end of 
the 1-year period beginning on the date of the enact-
ment of this Act. 
(2) APPLICABILITY TO EX PARTE AND INTER 
PARTES PROCEEDINGS.—Notwithstanding any other 
provision of law, sections 301 and 311 through 318 
of title 35, United States Code, as amended by this 
section, shall apply to any patent that issues before, 
on, or after the effective date under paragraph (1) 
from an original application filed on any date. 
(3) 
APPLICABILITY
TO
POST-GRANT
PRO-
CEEDINGS.—The amendments made by subsections 
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