European Union and Japan, Canada, and Aus-
tralia. 
(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 Trade Representative, the Secretary of State, 
and the Attorney General. 
(n) EFFECTIVE DATE.— 
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(1) IN
GENERAL.—Except as otherwise pro-
vided 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 enact-
ment 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 
paragraph; 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 
contained 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 date 
of the enactment of this Act, shall apply to each 
claim of an application for patent, and any patent 
issued thereon, for which the amendments made by 
this section also apply, if such application or patent 
contains or contained at any time— 
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(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 
contained at any time such a claim. 
SEC. 3. 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: 
‘‘§ 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 
application. 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 exe-
cute an oath or declaration in connection with the applica-
tion. 
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‘‘(b) REQUIRED STATEMENTS.—An oath or declara-
tion under subsection (a) shall contain statements that— 
‘‘(1) the application was made or was author-
ized 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 inven-
tor 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 
additional circumstances that the Director may 
specify by regulation. 
‘‘(2) PERMITTED
CIRCUMSTANCES.—A sub-
stitute statement under paragraph (1) is permitted 
with respect to any individual who— 
‘‘(A) is unable to file the oath or declara-
tion under subsection (a) because the indi-
vidual— 
‘‘(i) is deceased; 
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‘‘(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 
declaration under subsection (a); and 
‘‘(C) contain any additional information, 
including any showing, required by the Direc-
tor. 
‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN-
MENT OF RECORD.—An individual who is under an obliga-
tion of assignment of an application for patent may in-
clude the required statements under subsections (b) and 
(c) in the assignment 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 
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only if the applicant for patent has filed each required 
oath or declaration under subsection (a) or has filed a sub-
stitute statement under subsection (d) or recorded an as-
signment 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 re-
spect to an application for patent in which the indi-
vidual 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 
requirements of subsection (a) was executed by 
the individual and was filed in connection with 
the earlier-filed application; 
‘‘(B) a substitute statement meeting the 
requirements of subsection (d) was filed in the 
earlier filed application with respect to the indi-
vidual; or 
‘‘(C) an assignment meeting the require-
ments of subsection (e) was executed with re-
spect to the earlier-filed application by the indi-
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vidual 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 the earlier-filed 
application be included in the later-filed application. 
‘‘(h) SUPPLEMENTAL
AND
CORRECTED
STATE-
MENTS; 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 in-
ventor requiring the filing of 1 or more additional 
statements under this section, the Director shall es-
tablish regulations 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 
subsection (e) with respect to an application for pat-
ent, the Director may not thereafter require that in-
dividual to make any additional oath, declaration, or 
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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 state-
ment 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, 
is amended by striking ‘‘If a divisional application’’ 
and all that follows through ‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL AP-
PLICATIONS.—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 
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(C) by inserting ‘‘or declaration’’ after 
‘‘and oath’’ each place it appears. 
(4) CONFORMING AMENDMENT.—The item re-
lating 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 suf-
ficient proprietary interest in the matter may make an ap-
plication for patent on behalf of and as agent for the in-
ventor 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 inven-
tor, the patent shall be granted to the real party in inter-
est 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 
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application 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— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(b) CONCLUSION.—The specification’’; 
and 
(B) by striking ‘‘applicant regards as his 
invention’’ and inserting ‘‘inventor or a joint in-
ventor regards as the invention’’; 
(3) in the third undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(c) FORM.—A 
claim’’; 
(4) in the fourth undesignated paragraph, by 
striking ‘‘Subject to the following paragraph,’’ and 
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inserting 
‘‘(d) 
REFERENCE
IN
DEPENDENT 
FORMS.—Subject to subsection (e),’’; 
(5) in the fifth undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(e) REFERENCE 
IN MULTIPLE DEPENDENT FORM.—A claim’’; and 
(6) in the last undesignated paragraph, by 
striking ‘‘An element’’ and inserting ‘‘(f) ELEMENT 
IN CLAIM FOR A COMBINATION.—An element’’. 
(d) CONFORMING AMENDMENTS.— 
(1) Sections 111(b)(1)(A) is amended by strik-
ing ‘‘the first paragraph of section 112 of this title’’ 
and inserting ‘‘section 112(a)’’. 
(2) Section 111(b)(2) is amended by striking 
‘‘the second through fifth paragraphs of section 
112,’’ and inserting ‘‘subsections (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. 4. DEFENSE TO INFRINGEMENT BASED ON EARLIER 
INVENTOR. 
Section 273 of title 35, United States Code, is 
amended as follows: 
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(1) Subsection (a) is amended— 
(A) in paragraph (1), by striking ‘‘use of 
a method in’’ and inserting ‘‘use of the subject 
matter of a patent in or outside’’ ; 
(B) by striking paragraph (3); and 
(C) by redesignating paragraph (4) as 
paragraph (3). 
(2) Subsection (b) is amended— 
(A) in paragraph (1), by striking ‘‘for a 
method’’; 
(B) in paragraph (2), by striking ‘‘pat-
ented method’’ and inserting ‘‘patented proc-
ess’’; 
(C) in paragraph (3)— 
(i) by striking subparagraph (A); 
(ii) by redesignating subparagraphs 
(B) and (C) as subparagraph (A) and (C), 
respectively; and 
(iii) by adding at the end the fol-
lowing: 
‘‘(D) FUNDING.— 
‘‘(i) DEFENSE
NOT
AVAILABLE
IN 
CERTAIN CASES.—A person may not assert 
the defense under this section if the sub-
ject matter of the patent on which the de-
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fense is based was developed pursuant to a 
funding agreement under chapter 18 of 
this title or by a nonprofit institution of 
higher education, or a technology transfer 
organization affiliated with such an institu-
tion, that did not receive funding from a 
private business enterprise in support of 
that development. 
‘‘(ii) DEFINITIONS.—In this subpara-
graph— 
‘‘(I) the term ‘institution of high-
er education’ has the meaning given 
that term in section 101(a) of the 
Higher Education Act of 1965 (20 
U.S.C. 1001(a)); and 
‘‘(II) the term ‘technology trans-
fer organization’ means an organiza-
tion the primary purpose of which is 
to facilitate the commercialization of 
technologies developed by one or more 
institutions of higher education.’’; and 
(D) by amending paragraph (6) to read as 
follows: 
‘‘(6) PERSONAL DEFENSE.— 
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‘‘(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 con-
trolled by, or is under common control with 
such person, and, except 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 enter-
prise or line of business to which the defense 
relates. 
‘‘(B) EXCEPTION.—Notwithstanding sub-
paragraph (A), any person may, on the person’s 
own behalf, assert a defense based on the ex-
haustion of rights provided under paragraph 
(2), including any necessary elements thereof.’’. 
SEC. 5. 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. 
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‘‘315. Relation to other proceedings or actions. 
‘‘316. Conduct of inter partes review. 
‘‘317. Settlement. 
‘‘318. Decision of the Board. 
‘‘319. Appeal. 
‘‘320. Request for stay of certain proceedings. 
‘‘§ 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 regu-
lation, 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 
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 12 months 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. 
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‘‘§ 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 
‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on expert opinions; 
‘‘(4) the petition provides such other informa-
tion 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. 
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‘‘(b) PUBLIC AVAILABILITY.—As soon as practicable 
after the receipt of a petition under section 311, the Direc-
tor shall make the petition available to the public. 
‘‘§ 313. Preliminary response to petition 
‘‘(a) PRELIMINARY RESPONSE.—If an inter partes 
review petition is filed under section 311, the patent owner 
shall have the right to file a preliminary response within 
a time period set by the Director. 
‘‘(b) CONTENT OF RESPONSE.—A preliminary re-
sponse to a petition for inter partes review shall set forth 
reasons why no inter partes review should be instituted 
based upon the failure of the petition to meet any require-
ment 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 
determines that the information presented in the petition 
filed under section 311 and any response filed under sec-
tion 313 shows that a substantial new question of patent-
ability exists. 
‘‘(b) TIMING.—The Director shall determine whether 
to institute an inter partes review under this chapter pur-
suant to a petition filed under section 311 within 3 months 
after— 
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‘‘(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 peti-
tioner and patent owner, in writing, of the Director’s de-
termination under subsection (a), and shall make such no-
tice available 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 Direc-
tor whether to institute an inter partes review under this 
section 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, 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 peti-
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tioner files a petition for inter partes review of the 
patent, that civil action shall be automatically stayed 
until either— 
‘‘(A) the patent owner requests 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 requests to dismiss 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 
proceeding is filed more than 9 months after the date on 
which the petitioner, real party in interest, or privy of the 
petitioner is served with a complaint alleging infringement 
of the patent. The time limitation set forth in the pre-
ceding sentence shall not apply to a request for joinder 
under subsection (c). 
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‘‘(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 Direc-
tor, after receiving a preliminary response under section 
313 or the expiration of the time for filing such a re-
sponse, determines warrants the institution of an inter 
partes review under section 314. 
‘‘(d) MULTIPLE
PROCEEDINGS.—Notwithstanding 
sections 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 
Director may determine the manner in which the inter 
partes review or other proceeding or matter may proceed, 
including providing for stay, transfer, consolidation, or 
termination of any such matter or proceeding. 
‘‘(e) ESTOPPEL.— 
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The 
petitioner in an inter partes review under this chap-
ter, or the real party in interest or privy of the peti-
tioner, may not request or maintain a proceeding be-
fore the Office with respect to a claim on any 
ground that the petitioner raised or reasonably could 
have raised during an inter partes review of the 
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claim that resulted in a final written decision under 
section 318(a). 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in an inter partes review 
under this chapter, 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 Inter-
national Trade Commission under section 337 of the 
Tariff Act of 1930 that a claim in a patent is invalid 
on any ground that the petitioner raised or reason-
ably could have raised during an inter partes review 
of the claim that resulted in a final written decision 
under section 318(a). 
‘‘§ 316. Conduct of inter partes review 
‘‘(a) REGULATIONS.—The Director shall prescribe 
regulations— 
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the 
public, except that any petition or document filed 
with the intent that it be sealed shall, if accom-
panied by a motion to seal, be treated as sealed 
pending the outcome of the ruling on the motion; 
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‘‘(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) in accordance with section 2(b)(2), estab-
lishing and governing inter partes review under this 
chapter and the relationship of such review to other 
proceedings under this title; 
‘‘(5) setting a time period for requesting joinder 
under section 315(c); 
‘‘(6) 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; 
‘‘(7) prescribing 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 an unnecessary increase in the 
cost of the proceeding; 
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‘‘(8) providing for protective orders governing 
the exchange and submission of confidential infor-
mation; 
‘‘(9) 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 requiring that the patent owner file with such 
response, through affidavits or declarations, any ad-
ditional factual evidence and expert opinions on 
which the patent owner relies in support of the re-
sponse; 
‘‘(10) setting forth standards and procedures 
for allowing the patent owner to move to amend the 
patent 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 pat-
ent; 
‘‘(11) providing either party with the right to 
an oral hearing as part of the proceeding; and 
‘‘(12) 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 
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institution of a review 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 adjust the time periods in this paragraph in the 
case of joinder under section 315(c). 
‘‘(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 Of-
fice, and the ability of the Office to timely complete pro-
ceedings instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat-
ent Trial and Appeal Board shall, in accordance with sec-
tion 6, conduct each proceeding authorized by the Direc-
tor. 
‘‘(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. 
‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL
MOTIONS.—Additional mo-
tions to amend may be permitted upon the joint re-
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quest of the petitioner and the patent owner to ma-
terially advance the settlement of a proceeding under 
section 317, or as permitted by regulations pre-
scribed 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 apply to that petitioner. If no petitioner re-
mains in the inter partes review, the Office may terminate 
the review or proceed to a final written decision under sec-
tion 318(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
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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. If any party filing such agreement 
or understanding so requests, the copy shall be kept sepa-
rate from the file of the inter partes review, and shall be 
made available only to Federal Government agencies upon 
written request, or to any other 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). 
‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 
Board issues a final written decision under subsection (a) 
and the time for appeal has expired or any appeal has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable, confirming any claim of the patent de-
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termined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) DATA ON LENGTH OF REVIEW.—The Office 
shall make available to the public data describing the 
length of time between the institution of, and the issuance 
of a final written decision under subsection (a) for, each 
inter partes review. 
‘‘§ 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. 
‘‘§ 320. Request for stay of certain proceedings 
‘‘If a party seeks a stay of a civil action alleging in-
fringement of a patent under section 281, or a proceeding 
before the International Trade Commission under section 
337 of the Tariff Act of 1930, relating to an inter partes 
review under this chapter, the court shall decide whether 
to enter a stay based on— 
‘‘(1) whether a stay, or the denial thereof, will 
simplify the issues in question and streamline the 
trial; 
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‘‘(2) whether discovery is complete and whether 
a trial date has been set; 
‘‘(3) whether a stay, or the denial thereof, 
would unduly prejudice the nonmoving party or 
present a clear tactical advantage for the moving 
party; and 
‘‘(4) whether a stay, or the denial thereof, will 
reduce the burden of litigation on the parties and on 
the court.’’. 
(b) CONFORMING AMENDMENT.—The table of chap-
ters for part III of title 35, United States Code, is amend-
ed by striking the item relating to chapter 31 and insert-
ing 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 enactment of this Act, issue regulations to carry 
out chapter 31 of title 35, United States Code, as 
amended by subsection (a) of this section. 
(2) APPLICABILITY.— 
(A) IN GENERAL.—The amendments made 
by subsection (a) shall take effect upon the ex-
piration of the 1-year period beginning on the 
date of the enactment of this Act and shall 
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apply to any patent issued before, on, or after 
that effective date. 
(B) GRADUATED IMPLEMENTATION.—The 
Director may impose a limit on the number of 
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 such inter 
partes reexaminations that are ordered in the 
last fiscal year ending before the effective date 
of the amendments 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. 
‘‘330. Request for stay of certain proceedings. 
‘‘§ 321. Post-grant review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the patent owner may file 
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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 amounts as the Director determines to be reasonable, 
considering 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 
patent on any ground that could be raised under para-
graph (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 
12 months 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 
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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 
‘‘(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 informa-
tion 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 Direc-
tor shall make the petition available to the public. 
‘‘§ 323. Preliminary response to petition 
‘‘(a) PRELIMINARY RESPONSE.—If a post-grant re-
view petition is filed under section 321, the patent owner 
shall have the right to file a preliminary response to the 
petition within 2 months after the date on which the peti-
tion is filed. 
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‘‘(b) CONTENT OF RESPONSE.—A preliminary re-
sponse to a petition for post-grant review shall set forth 
reasons why no post-grant review should be instituted 
based upon the failure of the petition to meet any require-
ment of this chapter. 
‘‘§ 324. Institution of post-grant review 
‘‘(a) THRESHOLD.—The Director may not authorize 
a post-grant review to commence unless the Director de-
termines that the information presented in the petition 
filed under section 321, if such information is not rebut-
ted, 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 
showing that the petition raises a novel or unsettled legal 
question that is important to other patents or patent ap-
plications. 
‘‘(c) TIMING.—The Director shall determine whether 
to institute a post-grant review under this chapter pursu-
ant to a petition filed under section 321 within 3 months 
after— 
‘‘(1) receiving a preliminary response to the pe-
tition under section 323; or 
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‘‘(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 peti-
tioner and patent owner, in writing, of the Director’s de-
termination under subsection (a) or (b), and shall make 
such notice available to the public as soon as is prac-
ticable. The Director shall make each notice of the institu-
tion of a post-grant review available to the public. Such 
notice shall include the date on which the review shall 
commence. 
‘‘(e) NO APPEAL.—The determination by the Direc-
tor whether to institute a post-grant review under this sec-
tion shall be final and nonappealable. 
‘‘§ 325. Relation to other proceedings or actions 
‘‘(a) INFRINGER’S CIVIL ACTION.— 
‘‘(1) POST-GRANT
REVIEW
BARRED
BY
CIVIL 
ACTION.—A post-grant review may not be instituted 
under this chapter if, before the date on which the 
petition 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 
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view has been filed under this chapter or that such a post- 
grant review 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 consoli-
date such reviews into a single post-grant review. 
‘‘(d) MULTIPLE
PROCEEDINGS.—Notwithstanding 
sections 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 be-
fore the Office, the Director may determine the manner 
in which the post-grant review or other proceeding or mat-
ter may proceed, including providing for the stay, transfer, 
consolidation, or termination of any such matter or pro-
ceeding. 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 under this chapter, 
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or the real party in interest or privy of the peti-
tioner, may not request or maintain a proceeding be-
fore the Office with respect to a claim on any 
ground that the petitioner raised or reasonably could 
have raised during a post-grant review of the claim 
that resulted in a final written decision under sec-
tion 328(a). 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in a post-grant review 
under this chapter, 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 Inter-
national Trade Commission under section 337 of the 
Tariff Act of 1930 that a claim in a patent is invalid 
on any ground that the petitioner raised during a 
post-grant review of the claim that resulted in a 
final written decision under section 328(a). 
‘‘(f) REISSUE PATENTS.—A post-grant review may 
not be instituted under this chapter if the petition requests 
cancellation 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. 
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‘‘§ 326. Conduct of post-grant review 
‘‘(a) REGULATIONS.—The Director shall prescribe 
regulations— 
‘‘(1) providing that the file of any proceeding 
under this chapter shall be made available to the 
public, except that any petition or document filed 
with the intent that it be sealed shall, if accom-
panied by a motion to seal, be treated as sealed 
pending the outcome 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) in accordance with section 2(b)(2), estab-
lishing and governing a post-grant review 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 dis-
covery, abuse of process, or any other improper use 
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of the proceeding, such as to harass or to cause un-
necessary delay or an unnecessary increase in the 
cost of the proceeding; 
‘‘(7) providing for protective orders governing 
the exchange and submission of confidential infor-
mation; 
‘‘(8) allowing the patent owner to file a re-
sponse to the petition after a post-grant review has 
been instituted, and requiring that the patent owner 
file with such response, through affidavits or dec-
larations, any additional factual 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; and 
‘‘(11) requiring that the final determination in 
any post-grant review be issued not later than 1 
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year after the date on which the Director notices the 
institution 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 adjust 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 any such regulation on the economy, the integrity of 
the patent system, the efficient administration of the Of-
fice, and the ability of the Office to timely complete pro-
ceedings instituted under this chapter. 
‘‘(c) PATENT TRIAL AND APPEAL BOARD.—The Pat-
ent Trial and Appeal Board shall, in accordance with sec-
tion 6, conduct each proceeding authorized by the Direc-
tor. 
‘‘(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. 
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‘‘(2) ADDITIONAL
MOTIONS.—Additional mo-
tions to amend may be permitted upon the joint re-
quest of the petitioner and the patent owner to ma-
terially advance 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. 
‘‘(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 
petitioner under this section, no estoppel under section 
325(e) shall apply to that petitioner. 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). 
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