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‘‘(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 inter partes review instituted under 
this chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During an inter partes re-
view instituted under this chapter, the patent owner 
may file 1 motion to amend the patent in 1 or more 
of the following ways: 
‘‘(A) Cancel any challenged patent claim. 
‘‘(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-
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. 
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‘‘(3) SCOPE OF CLAIMS.—An amendment under 
this subsection may not enlarge the scope of the 
claims of the patent or introduce new matter. 
‘‘(e) EVIDENTIARY STANDARDS.—In an inter partes 
review instituted under this chapter, the petitioner shall 
have 
the 
burden 
of 
proving 
a 
proposition 
of 
unpatentability by a preponderance of the evidence. 
‘‘§ 317. Settlement 
‘‘(a) IN GENERAL.—An inter partes review instituted 
under this chapter shall be terminated with respect to any 
petitioner upon the joint request of the petitioner and the 
patent owner, unless the Office has decided the merits of 
the proceeding before the request for termination is filed. 
If the inter partes review is terminated with respect to 
a petitioner under this section, no estoppel under section 
315(e) shall attach to the petitioner, or to the real party 
in interest or privy of the petitioner, on the basis of that 
petitioner’s institution of that inter partes review. If no 
petitioner remains in the inter partes review, the Office 
may terminate the review or proceed to a final written de-
cision under section 318(a). 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in such 
agreement or understanding, made in connection with, or 
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in contemplation of, the termination of an inter partes re-
view under this section shall be in writing and a true copy 
of such agreement or understanding shall be filed in the 
Office before the termination of the inter partes review 
as between the parties. At the request of a party to the 
proceeding, the agreement or understanding shall be treat-
ed as business confidential information, shall be kept sepa-
rate from the file of the involved patents, and shall be 
made available only to Federal Government agencies on 
written request, or to any person on a showing of good 
cause. 
‘‘§ 318. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If an inter partes 
review is instituted and not dismissed under this chapter, 
the Patent Trial and Appeal Board shall issue a final writ-
ten decision with respect to the patentability of any patent 
claim challenged by the petitioner and any new claim 
added under section 316(d). 
‘‘(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-
termined to be patentable, and incorporating in the patent 
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by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) INTERVENING RIGHTS.—Any proposed amended 
or new claim determined to be patentable and incorporated 
into a patent following an inter partes review under this 
chapter shall have the same effect as that specified in sec-
tion 252 for reissued patents on the right of any person 
who made, purchased, or used within the United States, 
or imported into the United States, anything patented by 
such proposed amended or new claim, or who made sub-
stantial preparation therefor, before the issuance of a cer-
tificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office 
shall make available to the public data describing the 
length of time between the institution of, and the issuance 
of a final written decision under subsection (a) for, each 
inter partes review. 
‘‘§ 319. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 
318(a) may appeal the decision pursuant to sections 141 
through 144. Any party to the inter partes review shall 
have the right to be a party to the appeal.’’. 
(b) CONFORMING AMENDMENT.—The table of chap-
ters for part III of title 35, United States Code, is amend-
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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 
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 inter partes re-
examinations that are ordered under chapter 31 
of title 35, United States Code, in the last fiscal 
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year ending before the effective date of the 
amendments made by subsection (a). 
(3) TRANSITION.— 
(A) IN GENERAL.—Chapter 31 of title 35, 
United States Code, is amended— 
(i) in section 312— 
(I) in subsection (a)— 
(aa) in the first sentence, by 
striking ‘‘a substantial new ques-
tion of patentability affecting any 
claim of the patent concerned is 
raised by the request,’’ and in-
serting ‘‘the information pre-
sented in the request shows that 
there is a reasonable likelihood 
that the requester would prevail 
with respect to at least 1 of the 
claims challenged in the re-
quest,’’; and 
(bb) in the second sentence, 
by striking ‘‘The existence of a 
substantial new question of pat-
entability’’ 
and 
inserting 
‘‘A 
showing that there is a reason-
able likelihood that the requester 
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would prevail with respect to at 
least 1 of the claims challenged 
in the request’’; and 
(II) in subsection (c), in the sec-
ond sentence, by striking ‘‘no substan-
tial new question of patentability has 
been raised,’’ and inserting ‘‘the show-
ing required by subsection (a) has not 
been made,’’; and 
(ii) in section 313, by striking ‘‘a sub-
stantial new question of patentability af-
fecting a claim of the patent is raised’’ and 
inserting ‘‘it has been shown that there is 
a reasonable likelihood that the requester 
would prevail with respect to at least 1 of 
the claims challenged in the request’’. 
(B) 
APPLICATION.—The 
amendments 
made by this paragraph— 
(i) shall take effect on the date of the 
enactment of this Act; and 
(ii) shall apply to requests for inter 
partes reexamination that are filed on or 
after such date of enactment, but before 
the effective date set forth in paragraph 
(2)(A) of this subsection. 
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(C) CONTINUED APPLICABILITY OF PRIOR 
PROVISIONS.—The provisions of chapter 31 of 
title 35, United States Code, as amended by 
this paragraph, shall continue to apply to re-
quests for inter partes reexamination that are 
filed before the effective date set forth in para-
graph (2)(A) as if subsection (a) had not been 
enacted. 
(d) POST-GRANT REVIEW.—Part III of title 35, 
United States Code, is amended by adding at the end the 
following: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
‘‘Sec. 
‘‘321. Post-grant review. 
‘‘322. Petitions. 
‘‘323. Preliminary response to petition. 
‘‘324. Institution of post-grant review. 
‘‘325. Relation to other proceedings or actions. 
‘‘326. Conduct of post-grant review. 
‘‘327. Settlement. 
‘‘328. Decision of the Board. 
‘‘329. Appeal. 
‘‘§ 321. Post-grant review 
‘‘(a) IN GENERAL.—Subject to the provisions of this 
chapter, a person who is not the owner of a patent may 
file with the Office a petition to institute a post-grant re-
view of the patent. The Director shall establish, by regula-
tion, fees to be paid by the person requesting the review, 
in such amounts as the Director determines to be reason-
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able, considering the aggregate costs of the post-grant re-
view. 
‘‘(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 
9 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 
evidence that supports the grounds for the challenge 
to each claim, including— 
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‘‘(A) copies of patents and printed publica-
tions that the petitioner relies upon in support 
of the petition; and 
‘‘(B) affidavits or declarations of sup-
porting evidence and opinions, if the petitioner 
relies on other factual evidence or on expert 
opinions; 
‘‘(4) the petition provides such other 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 
‘‘If a post-grant review petition is filed under section 
321, the patent owner shall have the right to file a prelimi-
nary response to the petition, within a time period set by 
the Director, that sets forth reasons why no post-grant 
review should be instituted based upon the failure of the 
petition to meet any requirement of this chapter. 
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‘‘§ 324. Institution of post-grant review 
‘‘(a) THRESHOLD.—The Director may not authorize 
a post-grant review to be instituted unless the Director 
determines 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 
‘‘(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-
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ticable. 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 or 
real party in interest filed a civil action challenging 
the validity of a claim of the patent. 
‘‘(2) STAY OF CIVIL ACTION.—If the petitioner 
or real party in interest files a civil action chal-
lenging the validity of a claim of the patent on or 
after the date on which the petitioner files a petition 
for post-grant review of the patent, that civil action 
shall be automatically stayed until either— 
‘‘(A) the patent owner moves the court to 
lift the stay; 
‘‘(B) the patent owner files a civil action or 
counterclaim alleging that the petitioner or real 
party in interest has infringed the patent; or 
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‘‘(C) the petitioner or real party in interest 
moves the court 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) PRELIMINARY INJUNCTIONS.—If a civil action 
alleging infringement of a patent is filed within 3 months 
after the date on which the patent is granted, the court 
may not stay its consideration of the patent owner’s mo-
tion for a preliminary injunction against infringement of 
the patent on the basis that a petition for post-grant re-
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-
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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 of a claim in a pat-
ent under this chapter that results in a final written 
decision under section 328(a), or the real party in 
interest or privy of the petitioner, may not request 
or maintain a proceeding before the Office with re-
spect to that claim on any ground that the petitioner 
raised or reasonably could have raised during that 
post-grant review. 
‘‘(2) 
CIVIL
ACTIONS
AND
OTHER
PRO-
CEEDINGS.—The petitioner in a post-grant review of 
a claim in a patent under this chapter that results 
in a final written decision under section 328(a), or 
the real party in interest or privy of the petitioner, 
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may not assert either in a civil action arising in 
whole or in part under section 1338 of title 28 or 
in a proceeding before the International Trade Com-
mission under section 337 of the Tariff Act of 1930 
that the claim is invalid on any ground that the peti-
tioner raised or reasonably could have raised during 
that post-grant review. 
‘‘(f) REISSUE PATENTS.—A post-grant review may 
not be instituted under this chapter if the petition requests 
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. 
‘‘§ 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; 
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‘‘(2) setting forth the standards for the showing 
of sufficient grounds to institute a review under sub-
sections (a) and (b) of section 324; 
‘‘(3) establishing procedures for the submission 
of supplemental information after the petition is 
filed; 
‘‘(4) establishing and governing a post-grant re-
view under this chapter and the relationship of such 
review to other proceedings under this title; 
‘‘(5) setting forth standards and procedures for 
discovery of relevant evidence, including that such 
discovery shall be limited to evidence directly related 
to factual assertions advanced by either party in the 
proceeding; 
‘‘(6) prescribing sanctions for abuse of 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; 
‘‘(7) providing for protective orders governing 
the exchange and submission of confidential infor-
mation; 
‘‘(8) providing for the filing by the patent 
owner of a response to the petition under section 
323 after a post-grant review has been instituted, 
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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; 
‘‘(9) setting forth standards and procedures for 
allowing the patent owner to move to amend the pat-
ent under subsection (d) to cancel a challenged claim 
or propose a reasonable number of substitute claims, 
and ensuring that any information submitted by the 
patent owner in support of any amendment entered 
under subsection (d) is made available to the public 
as part of the prosecution history of the patent; 
‘‘(10) providing either party with the right to 
an oral hearing as part of the proceeding; 
‘‘(11) requiring that the final determination in 
any post-grant review be issued not later than 1 
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); and 
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‘‘(12) providing the petitioner with at least 1 
opportunity to file written comments within a time 
period established by the Director. 
‘‘(b) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
of any such regulation on the economy, the integrity of 
the patent system, the efficient administration of the 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 post-grant review instituted under 
this chapter. 
‘‘(d) AMENDMENT OF THE PATENT.— 
‘‘(1) IN GENERAL.—During a post-grant review 
instituted under this chapter, the patent owner may 
file 1 motion to amend the patent in 1 or more of 
the following ways: 
‘‘(A) Cancel any challenged patent claim. 
‘‘(B) For each challenged claim, propose a 
reasonable number of substitute claims. 
‘‘(2) ADDITIONAL
MOTIONS.—Additional 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 
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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 attach to the petitioner, or to the real party 
in interest or privy of the petitioner, on the basis of that 
petitioner’s institution of that post-grant review. If no pe-
titioner remains in the post-grant review, the Office may 
terminate the post-grant review or proceed to a final writ-
ten decision under section 328(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 a post-grant review 
under this section shall be in writing, and a true copy of 
such agreement or understanding shall be filed in the Of-
fice before the termination of the post-grant review as be-
tween the parties. At the request of a party to the pro-
ceeding, the agreement or understanding shall be treated 
as business confidential information, shall be kept sepa-
rate from the file of the involved patents, and shall be 
made available only to Federal Government agencies on 
written request, or to any person on a showing of good 
cause. 
‘‘§ 328. Decision of the Board 
‘‘(a) FINAL WRITTEN DECISION.—If a post-grant re-
view is instituted and not dismissed under this chapter, 
the Patent Trial and Appeal Board shall issue a final writ-
ten decision with respect to the patentability of any patent 
claim challenged by the petitioner and any new claim 
added under section 326(d). 
‘‘(b) CERTIFICATE.—If the Patent Trial and Appeal 
Board issues a final written decision under subsection (a) 
and the time for appeal has expired or any appeal has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
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to be unpatentable, confirming any claim of the patent de-
termined to be patentable, and incorporating in the patent 
by operation of the certificate any new or amended claim 
determined to be patentable. 
‘‘(c) INTERVENING RIGHTS.—Any proposed amended 
or new claim determined to be patentable and incorporated 
into a patent following a post-grant review under this 
chapter shall have the same effect as that specified in sec-
tion 252 of this title for reissued patents on the right of 
any person who made, purchased, or used within the 
United States, or imported into the United States, any-
thing patented by such proposed amended or new claim, 
or who made substantial preparation therefor, before the 
issuance of a certificate under subsection (b). 
‘‘(d) DATA ON LENGTH OF REVIEW.—The Office 
shall make available to the public data describing the 
length of time between the institution of, and the issuance 
of a final written decision under subsection (a) for, each 
post-grant review. 
‘‘§ 329. Appeal 
‘‘A party dissatisfied with the final written decision 
of the Patent Trial and Appeal Board under section 
328(a) may appeal the decision pursuant to sections 141 
through 144. Any party to the post-grant review shall have 
the right to be a party to the appeal.’’. 
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(e) CONFORMING AMENDMENT.—The table of chap-
ters for part III of title 35, United States Code, is amend-
ed by adding at the end the following: 
‘‘32. Post-Grant Review ............................................................................
321’’. 
(f) REGULATIONS AND EFFECTIVE DATE.— 
(1) REGULATIONS.—The Director shall, not 
later than the date that is 1 year after the date of 
the enactment of this Act, issue regulations to carry 
out chapter 32 of title 35, United States Code, as 
added by subsection (d) of this section. 
(2) APPLICABILITY.— 
(A) IN GENERAL.—The amendments made 
by subsection (d) shall take effect upon the ex-
piration of the 1-year period beginning on the 
date of the enactment of this Act and, except 
as provided in section 18 and in paragraph (3), 
shall apply only to patents described in section 
3(n)(1). 
(B) LIMITATION.—The Director may im-
pose a limit on the number of post-grant re-
views that may be instituted under chapter 32 
of title 35, United States Code, during each of 
the first 4 1-year periods in which the amend-
ments made by subsection (d) are in effect. 
(3) PENDING INTERFERENCES.— 
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(A) PROCEDURES IN GENERAL.—The Di-
rector shall determine, and include in the regu-
lations issued under paragraph (1), the proce-
dures under which an interference commenced 
before the effective date set forth in paragraph 
(2)(A) is to proceed, including whether such in-
terference— 
(i) is to be dismissed without preju-
dice to the filing of a petition for a post- 
grant review under chapter 32 of title 35, 
United States Code; or 
(ii) is to proceed as if this Act had not 
been enacted. 
(B) PROCEEDINGS BY PATENT TRIAL AND 
APPEAL
BOARD.—For purposes of an inter-
ference that is commenced before the effective 
date set forth in paragraph (2)(A), the Director 
may deem the Patent Trial and Appeal Board 
to be the Board of Patent Appeals and Inter-
ferences, and may allow the Patent Trial and 
Appeal Board to conduct any further pro-
ceedings in that interference. 
(C) APPEALS.—The authorization to ap-
peal or have remedy from derivation pro-
ceedings in sections 141(d) and 146 of title 35, 
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United States Code, as amended by this Act, 
and the jurisdiction to entertain appeals from 
derivation proceedings in section 1295(a)(4)(A) 
of title 28, United States Code, as amended by 
this Act, shall be deemed to extend to any final 
decision in an interference that is commenced 
before the effective date set forth in paragraph 
(2)(A) of this subsection and that is not dis-
missed pursuant to this paragraph. 
(g) CITATION OF PRIOR ART AND WRITTEN STATE-
MENTS.— 
(1) IN
GENERAL.—Section 301 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 301. Citation of prior art and written statements 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a 
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) statements of the patent owner filed in a 
proceeding before a Federal court or the Office in 
which the patent owner took a position on the scope 
of any claim of a particular patent. 
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‘‘(b) OFFICIAL FILE.—If the person citing prior art 
or written statements pursuant to subsection (a) explains 
in writing the pertinence and manner of applying the prior 
art or written statements to at least 1 claim of the patent, 
the citation of the prior art or written statements and the 
explanation thereof shall become a part of the official file 
of the patent. 
‘‘(c) ADDITIONAL INFORMATION.—A party that sub-
mits a written statement pursuant to subsection (a)(2) 
shall include any other documents, pleadings, or evidence 
from the proceeding in which the statement was filed that 
addresses the written statement. 
‘‘(d) LIMITATIONS.—A written statement submitted 
pursuant to subsection (a)(2), and additional information 
submitted pursuant to subsection (c), shall not be consid-
ered by the Office for any purpose other than to determine 
the proper meaning of a patent claim in a proceeding that 
is ordered or instituted pursuant to section 304, 314, or 
324. If any such written statement or additional informa-
tion is subject to an applicable protective order, such 
statement or information shall be redacted to exclude in-
formation that is subject to that order. 
‘‘(e) CONFIDENTIALITY.—Upon the written request 
of the person citing prior art or written statements pursu-
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ant to subsection (a), that person’s identity shall be ex-
cluded from the patent file and kept confidential.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 301 in the table of sections for 
chapter 30 of title 35, United States Code, is 
amended to read as follows: 
‘‘301. Citation of prior art and written statements.’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 1-year period beginning on the date of 
the enactment of this Act and shall apply to any 
patent issued before, on, or after that effective date. 
(h) REEXAMINATION.— 
(1) DETERMINATION BY DIRECTOR.— 
(A) IN GENERAL.—Section 303(a) of title 
35, United States Code, is amended by striking 
‘‘section 301 of this title’’ and inserting ‘‘sec-
tion 301 or 302’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect upon 
the expiration of the 1-year period beginning on 
the date of the enactment of this Act and shall 
apply to any patent issued before, on, or after 
that effective date. 
(2) APPEAL.— 
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(A) IN GENERAL.—Section 306 of title 35, 
United States Code, is amended by striking 
‘‘145’’ and inserting ‘‘144’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect on the 
date of the enactment of this Act and shall 
apply to any appeal of a reexamination before 
the Board of Patent Appeals and Interferences 
or the Patent Trial and Appeal Board that is 
pending on, or brought on or after, the date of 
the enactment of this Act. 
SEC. 7. PATENT TRIAL AND APPEAL BOARD. 
(a) COMPOSITION AND DUTIES.— 
(1) IN GENERAL.—Section 6 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) IN GENERAL.—There shall be in the Office a 
Patent Trial and Appeal Board. The Director, the Deputy 
Director, the Commissioner for Patents, the Commissioner 
for Trademarks, and the administrative patent judges 
shall constitute the Patent Trial and Appeal Board. The 
administrative patent judges shall be persons of competent 
legal knowledge and scientific ability who are appointed 
by the Secretary, in consultation with the Director. Any 
reference in any Federal law, Executive order, rule, regu-
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lation, or delegation of authority, or any document of or 
pertaining to the Board of Patent Appeals and Inter-
ferences is deemed to refer to the Patent Trial and Appeal 
Board. 
‘‘(b) DUTIES.—The Patent Trial and Appeal Board 
shall— 
‘‘(1) on written appeal of an applicant, review 
adverse decisions of examiners upon applications for 
patents pursuant to section 134(a); 
‘‘(2) review appeals of reexaminations pursuant 
to section 134(b); 
‘‘(3) conduct derivation proceedings pursuant to 
section 135; and 
‘‘(4) conduct inter partes reviews and post- 
grant reviews pursuant to chapters 31 and 32. 
‘‘(c) 3-MEMBER PANELS.—Each appeal, derivation 
proceeding, post-grant review, and inter partes review 
shall be heard by at least 3 members of the Patent Trial 
and Appeal Board, who shall be designated by the Direc-
tor. Only the Patent Trial and Appeal Board may grant 
rehearings. 
‘‘(d) TREATMENT OF PRIOR APPOINTMENTS.—The 
Secretary of Commerce may, in the Secretary’s discretion, 
deem the appointment of an administrative patent judge 
who, before the date of the enactment of this subsection, 
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held office pursuant to an appointment by the Director 
to take effect on the date on which the Director initially 
appointed the administrative patent judge. It shall be a 
defense to a challenge to the appointment of an adminis-
trative patent judge on the basis of the judge’s having 
been originally appointed by the Director that the admin-
istrative patent judge so appointed was acting as a de 
facto officer.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 6 in the table of sections for chap-
ter 1 of title 35, United States Code, is amended to 
read as follows: 
‘‘6. Patent Trial and Appeal Board.’’. 
(b) ADMINISTRATIVE APPEALS.—Section 134 of title 
35, United States Code, is amended— 
(1) in subsection (b), by striking ‘‘any reexam-
ination proceeding’’ and inserting ‘‘a reexamina-
tion’’; and 
(2) by striking subsection (c). 
(c) CIRCUIT APPEALS.— 
(1) IN
GENERAL.—Section 141 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 141. Appeal to Court of Appeals for the Federal 
Circuit 
‘‘(a) EXAMINATIONS.—An applicant who is dissatis-
fied with the final decision in an appeal to the Patent Trial 
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and Appeal Board under section 134(a) may appeal the 
Board’s decision to the United States Court of Appeals 
for the Federal Circuit. By filing such an appeal, the ap-
plicant waives his or her right to proceed under section 
145. 
‘‘(b) REEXAMINATIONS.—A patent owner who is dis-
satisfied with the final decision in an appeal of a reexam-
ination to the Patent Trial and Appeal Board under sec-
tion 134(b) may appeal the Board’s decision only to the 
United States Court of Appeals for the Federal Circuit. 
‘‘(c) POST-GRANT AND INTER PARTES REVIEWS.— 
A party to an inter partes review or a post-grant review 
who is dissatisfied with the final written decision of the 
Patent Trial and Appeal Board under section 318(a) or 
328(a) (as the case may be) may appeal the Board’s deci-
sion only to the United States Court of Appeals for the 
Federal Circuit. 
‘‘(d) DERIVATION PROCEEDINGS.—A party to a deri-
vation proceeding who is dissatisfied with the final deci-
sion of the Patent Trial and Appeal Board in the pro-
ceeding may appeal the decision to the United States 
Court of Appeals for the Federal Circuit, but such appeal 
shall be dismissed if any adverse party to such derivation 
proceeding, within 20 days after the appellant has filed 
notice of appeal in accordance with section 142, files no-
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tice with the Director that the party elects to have all fur-
ther proceedings conducted as provided in section 146. If 
the appellant does not, within 30 days after the filing of 
such notice by the adverse party, file a civil action under 
section 146, the Board’s decision shall govern the further 
proceedings in the case.’’. 
(2) JURISDICTION.—Section 1295(a)(4)(A) of 
title 28, United States Code, is amended to read as 
follows: 
‘‘(A) the Patent Trial and Appeal Board of 
the United States Patent and Trademark Office 
with respect to a patent application, derivation 
proceeding, reexamination, post-grant review, or 
inter partes review under title 35, at the in-
stance of a party who exercised that party’s 
right to participate in the applicable proceeding 
before or appeal to the Board, except that an 
applicant or a party to a derivation proceeding 
may also have remedy by civil action pursuant 
to section 145 or 146 of title 35; an appeal 
under this subparagraph of a decision of the 
Board with respect to an application or deriva-
tion proceeding shall waive the right of such ap-
plicant or party to proceed under section 145 or 
146 of title 35;’’. 
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