109 
implemented pursuant to this subsection shall be re-
garded as, and shall employ the standards and pro-
cedures of, a post-grant review under chapter 32, 
subject to the following: 
(A) Section 321(c) and subsections (b), 
(e)(2), and (f) of section 325 shall not apply to 
a transitional proceeding. 
(B) A person may not file a petition for a 
transitional proceeding with respect to a cov-
ered 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, as 
in effect on the day before the date of the en-
actment of this Act, may support such ground 
only on the basis of— 
(i) prior art that is described by sec-
tion 102(a) (as in effect on the day before 
the date of the enactment of this Act); or 
(ii) prior art that— 
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(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) (as in effect on the day before 
the date of the enactment of this Act) 
if the disclosure had been made by an-
other before the invention thereof by 
the applicant for patent. 
(D) The petitioner in a transitional pro-
ceeding, or the petitioner’s real party in inter-
est, may not assert, either in a civil action aris-
ing in whole or in part under section 1338 of 
title 28, United States Code, or in a proceeding 
before the International Trade Commission, 
that a claim in a patent is invalid on any 
ground that the petitioner raised during a tran-
sitional proceeding that resulted in a final writ-
ten decision. 
(E) The Director may institute a transi-
tional proceeding only for a patent that is a 
covered business method patent. 
(2) EFFECTIVE DATE.—The regulations issued 
under paragraph (1) shall take effect upon the expi-
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111 
ration 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 such effective date, except that the regulations 
shall not apply to a patent described in the first sen-
tence of section 5(f)(2) of this Act during the period 
that a petition for post-grant review of that patent 
would satisfy the requirements of section 321(c). 
(3) SUNSET.— 
(A) IN
GENERAL.—This subsection, and 
the regulations issued under this subsection, are 
repealed effective upon the expiration of the 4- 
year period beginning on the date that the reg-
ulations issued under to paragraph (1) take ef-
fect. 
(B) 
APPLICABILITY.—Notwithstanding 
subparagraph (A), this subsection and the regu-
lations issued under this subsection shall con-
tinue to apply, after the date of the repeal 
under subparagraph (A), to any petition for a 
transitional proceeding that is filed before the 
date of such repeal. 
(c) REQUEST FOR STAY.— 
(1) IN GENERAL.—If a party seeks a stay of a 
civil action alleging infringement of a patent under 
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section 281 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 mov-
ing 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 
Appeals for the Federal Circuit shall review de novo 
the district court’s decision to ensure consistent ap-
plication of established precedent. 
(d) VENUE OF INFRINGEMENT ACTIONS.—Notwith-
standing section 1400(b) of title 28, United States Code, 
an action for infringement under section 281 of title 35, 
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113 
United States Code, of a covered business method patent 
may be brought only in a judicial district— 
(1) where the defendant has its principal place 
of business or is incorporated; 
(2) where the defendant has committed acts of 
infringement and has a regular and established place 
of business; 
(3) where the defendant has agreed or con-
sented to be sued; or 
(4) for foreign defendants that do not meet the 
requirements of paragraphs (1) or (2), in accordance 
with section 1391(d) of title 28, United States Code. 
(e) ATTORNEY’S FEES AND COSTS.—In an action for 
infringement under section 281 of title 35, United States 
Code, of a covered business method patent, the prevailing 
party shall be entitled to reasonable attorney’s fees and 
costs. 
(f) 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 automated teller machine shall not be deemed to be 
a physical facility for purposes of section 1400(b)(2) of 
title 28, United States Code. 
(g) DEFINITION.— 
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(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 techno-
logical inventions. 
(2) REGULATIONS.—To assist in implementing 
the transitional proceeding authorized by this sub-
section, the Director shall issue regulations for de-
termining whether a patent is for a technological in-
vention. 
(h) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed as amending or interpreting cat-
egories of patent-eligible subject matter set forth under 
section 101. 
SEC. 19. CLARIFICATION OF JURISDICTION. 
(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 aris-
ing under any Act of Congress relating to patents, plant 
variety protection, or copyrights.’’. 
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(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— 
(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 intent 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— 
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(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’’. 
(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’’; 
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(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-
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 
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(2) in the second undesignated paragraph, by 
striking ‘‘The error’’ and inserting ‘‘(b) PATENT 
VALID IF ERROR CORRECTED.—The error’’. 
(g) OWNERSHIP; ASSIGNMENT.—The fourth undesig-
nated paragraph of section 261 of title 35, United States 
Code, is amended by inserting before the period the fol-
lowing: ‘‘and identifies all real parties in interest’’. 
(h) 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, by 
striking ‘‘The following’’ and inserting ‘‘(b) DE-
FENSES.—The following’’; 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 
patent, the party asserting infringement shall 
identify, in the pleadings or otherwise in writing 
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to the adverse party, all of its real parties in in-
terest, and’’; and 
(B) by striking ‘‘Claims Court’’ and insert-
ing ‘‘Court of Federal Claims’’. 
(i) ACTION
FOR INFRINGEMENT.—Section 288 of 
title 35, United States Code, is amended by striking ‘‘, 
without deceptive intention,’’. 
(j) 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)— 
(i) in subparagraph (D), by striking 
‘‘except where it proves’’ and all that fol-
lows through ‘‘small business firms; and’’ 
and inserting: ‘‘except where it is deter-
mined to be infeasible following a reason-
able inquiry, a preference in the licensing 
of subject inventions shall be given to 
small business firms; and’’; and 
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(ii) in subparagraph (E)(i), by strik-
ing ‘‘as described above in this clause 
(D);’’ and inserting ‘‘described above in 
this clause;’’. 
(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.’’. 
(k) 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 100. 
(C) Section 101. 
(D) Subsections (a) and (b) of section 105. 
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(E) The first instance of the use of such 
term in section 111(b)(8). 
(F) Section 157(a), in the matter pre-
ceding paragraph (1). 
(G) Section 161. 
(H) Section 164. 
(I) Section 171. 
(J) Section 251(c), as so designated by 
this section. 
(K) Section 261. 
(L) Subsections (a), (g), and (h) of section 
271. 
(M) Section 287(b)(1). 
(N) Section 289. 
(O) The first instance of the use of such 
term in section 375(a). 
(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. 
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 
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