127 
vailing party (and the other party the prevailing party) 
for purposes of this section, unless the party asserting 
such claim would have been entitled, at the time that such 
covenant was extended, to voluntarily dismiss the action 
or claim without a court order under Rule 41 of the Fed-
eral Rules of Civil Procedure.’’. 
(2) CONFORMING
AMENDMENT
AND
AMEND-
MENT.— 
(A) CONFORMING AMENDMENT.—The item 
relating to section 285 of the table of sections 
for chapter 29 of title 35, United States Code, 
is amended to read as follows: 
‘‘285. Fees and other expenses.’’. 
(B) AMENDMENT.—Section 273 of title 
35, United States Code, is amended by striking 
subsections (f) and (g). 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to any action 
for which a complaint is filed on or after the first 
day of the 6-month period ending on that effective 
date. 
(c) JOINDER
OF INTERESTED PARTIES.—Section 
299 of title 35, United States Code, is amended by adding 
at the end the following new subsection: 
‘‘(d) JOINDER OF INTERESTED PARTIES.— 
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128 
‘‘(1) JOINDER.—In a civil action arising under 
any Act of Congress relating to patents in which 
fees and other expenses have been awarded under 
section 285 to a prevailing party defending against 
an allegation of infringement of a patent claim, and 
in which the nonprevailing party alleging infringe-
ment is unable to pay the award of fees and other 
expenses, the court shall grant a motion by the pre-
vailing party to join an interested party if such pre-
vailing party shows that the nonprevailing party has 
no substantial interest in the subject matter at issue 
other than asserting such patent claim in litigation. 
‘‘(2) LIMITATION ON JOINDER.— 
‘‘(A) DISCRETIONARY
DENIAL
OF
MO-
TION.—The court may deny a motion to join an 
interested party under paragraph (1) if— 
‘‘(i) the interested party is not subject 
to service of process; or 
‘‘(ii) joinder under paragraph (1) 
would deprive the court of subject matter 
jurisdiction or make venue improper. 
‘‘(B) REQUIRED DENIAL OF MOTION.—The 
court shall deny a motion to join an interested 
party under paragraph (1) if— 
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129 
‘‘(i) the interested party did not time-
ly receive the notice required by paragraph 
(3); or 
‘‘(ii) within 30 days after receiving 
the notice required by paragraph (3), the 
interested party renounces, in writing and 
with notice to the court and the parties to 
the action, any ownership, right, or direct 
financial interest (as described in para-
graph (4)) that the interested party has in 
the patent or patents at issue. 
‘‘(3) NOTICE
REQUIREMENT.—An interested 
party may not be joined under paragraph (1) unless 
it has been provided actual notice, within 30 days 
after the date on which it has been identified in the 
initial disclosure provided under section 290(b), that 
it has been so identified and that such party may 
therefore be an interested party subject to joinder 
under this subsection. Such notice shall be provided 
by the party who subsequently moves to join the in-
terested party under paragraph (1), and shall in-
clude language that— 
‘‘(A) identifies the action, the parties 
thereto, the patent or patents at issue, and the 
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130 
pleading or other paper that identified the 
party under section 290(b); and 
‘‘(B) informs the party that it may be 
joined in the action and made subject to paying 
an award of fees and other expenses under sec-
tion 285(b) if— 
‘‘(i) fees and other expenses are 
awarded in the action against the party al-
leging infringement of the patent or pat-
ents at issue under section 285(a); 
‘‘(ii) the party alleging infringement is 
unable to pay the award of fees and other 
expenses; 
‘‘(iii) the party receiving notice under 
this paragraph is determined by the court 
to be an interested party; and 
‘‘(iv) the party receiving notice under 
this paragraph has not, within 30 days 
after receiving such notice, renounced in 
writing, and with notice to the court and 
the parties to the action, any ownership, 
right, or direct financial interest (as de-
scribed in paragraph (4)) that the inter-
ested party has in the patent or patents at 
issue. 
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131 
‘‘(4) INTERESTED
PARTY
DEFINED.—In this 
subsection, the term ‘interested party’ means a per-
son, other than the party alleging infringement, 
that— 
‘‘(A) is an assignee of the patent or pat-
ents at issue; 
‘‘(B) has a right, including a contingent 
right, to enforce or sublicense the patent or pat-
ents at issue; or 
‘‘(C) has a direct financial interest in the 
patent or patents at issue, including the right 
to any part of an award of damages or any part 
of licensing revenue, except that a person with 
a direct financial interest does not include— 
‘‘(i) an attorney or law firm providing 
legal representation in the civil action de-
scribed in paragraph (1) if the sole basis 
for the financial interest of the attorney or 
law firm in the patent or patents at issue 
arises from the attorney or law firm’s re-
ceipt of compensation reasonably related to 
the provision of the legal representation; or 
‘‘(ii) a person whose sole financial in-
terest in the patent or patents at issue is 
ownership of an equity interest in the 
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132 
party alleging infringement, unless such 
person also has the right or ability to influ-
ence, direct, or control the civil action.’’. 
(d) DISCOVERY LIMITS.— 
(1) AMENDMENT.—Chapter 29 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 299A. Discovery in patent infringement action 
‘‘(a) DISCOVERY
IN PATENT INFRINGEMENT AC-
TION.—Except as provided in subsections (b) and (c), in 
a civil action arising under any Act of Congress relating 
to patents, if the court determines that a ruling relating 
to the construction of terms used in a patent claim as-
serted in the complaint is required, discovery shall be lim-
ited, until such ruling is issued, to information necessary 
for the court to determine the meaning of the terms used 
in the patent claim, including any interpretation of those 
terms used to support the claim of infringement. 
‘‘(b) DISCRETION TO EXPAND SCOPE
OF DIS-
COVERY.— 
‘‘(1) TIMELY RESOLUTION OF ACTIONS.—In the 
case of an action under any provision of Federal law 
(including an action that includes a claim for relief 
arising under section 271(e)), for which resolution 
within a specified period of time of a civil action 
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134 
any allegedly infringing instrumentality that com-
petes with a product sold or offered for sale, or a 
process used in manufacture, by a party alleging in-
fringement. 
‘‘(c) EXCLUSION FROM DISCOVERY LIMITATION.— 
The parties may voluntarily consent to be excluded, in 
whole or in part, from the limitation on discovery provided 
under subsection (a) if at least one plaintiff and one de-
fendant enter into a signed stipulation, to be filed with 
and signed by the court. With regard to any discovery ex-
cluded from the requirements of subsection (a) under the 
signed stipulation, with respect to such parties, such dis-
covery shall proceed according to the Federal Rules of 
Civil Procedure.’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 29 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘299A. Discovery in patent infringement action.’’. 
(e) SENSE OF CONGRESS.—It is the sense of Con-
gress that it is an abuse of the patent system and against 
public policy for a party to send out purposely evasive de-
mand letters to end users alleging patent infringement. 
Demand letters sent should, at the least, include basic in-
formation about the patent in question, what is being in-
fringed, and how it is being infringed. Any actions or liti-
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135 
gation that stem from these types of purposely evasive de-
mand letters to end users should be considered a fraudu-
lent or deceptive practice and an exceptional circumstance 
when considering whether the litigation is abusive. 
(f) DEMAND LETTERS.—Section 284 of title 35, 
United States Code, is amended— 
(1) in the first undesignated paragraph, by 
striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN-
ERAL.—Upon finding’’; 
(2) in the second undesignated paragraph, by 
striking ‘‘When the damages’’ and inserting ‘‘(b) AS-
SESSMENT BY COURT; TREBLE DAMAGES.—When 
the damages’’; 
(3) by inserting after subsection (b), as des-
ignated by paragraph (2) of this subsection, the fol-
lowing: 
‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking 
to establish willful infringement may not rely on evidence 
of pre-suit notification of infringement unless that notifi-
cation identifies with particularity the asserted patent, 
identifies the product or process accused, identifies the ul-
timate parent entity of the claimant, and explains with 
particularity, to the extent possible following a reasonable 
investigation or inquiry, how the product or process in-
fringes one or more claims of the patent.’’; and 
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136 
(4) in the last undesignated paragraph, by 
striking ‘‘The court’’ and inserting ‘‘(d) EXPERT 
TESTIMONY.—The court’’. 
(g) EFFECTIVE DATE.—Except as otherwise provided 
in this section, the amendments made by this section shall 
take effect on the date of the enactment of this Act and 
shall apply to any action for which a complaint is filed 
on or after that date. 
SEC. 3303. TRANSPARENCY OF PATENT OWNERSHIP. 
(a) AMENDMENTS.—Section 290 of title 35, United 
States Code, is amended— 
(1) in the heading, by striking ‘‘suits’’ and in-
serting ‘‘suits; disclosure of interests’’; 
(2) by striking ‘‘The clerks’’ and inserting ‘‘(a) 
NOTICE OF PATENT SUITS.—The clerks’’; and 
(3) by adding at the end the following new sub-
sections: 
‘‘(b) INITIAL DISCLOSURE.— 
‘‘(1) IN GENERAL.—Except as provided in para-
graph (2), upon the filing of an initial complaint for 
patent infringement, the plaintiff shall disclose to 
the Patent and Trademark Office, the court, and 
each adverse party the identity of each of the fol-
lowing: 
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137 
‘‘(A) The assignee of the patent or patents 
at issue. 
‘‘(B) Any entity with a right to sublicense 
or enforce the patent or patents at issue. 
‘‘(C) Any entity, other than the plaintiff, 
that the plaintiff knows to have a financial in-
terest in the patent or patents at issue or the 
plaintiff. 
‘‘(D) The ultimate parent entity of any as-
signee identified under subparagraph (A) and 
any entity identified under subparagraph (B) or 
(C). 
‘‘(2) EXEMPTION.—The requirements of para-
graph (1) shall not apply with respect to a civil ac-
tion filed under subsection (a) that includes a cause 
of action described under section 271(e)(2). 
‘‘(c) DISCLOSURE COMPLIANCE.— 
‘‘(1) PUBLICLY TRADED.—For purposes of sub-
section (b)(1)(C), if the financial interest is held by 
a corporation traded on a public stock exchange, an 
identification of the name of the corporation and the 
public exchange listing shall satisfy the disclosure re-
quirement. 
‘‘(2) NOT PUBLICLY TRADED.—For purposes of 
subsection (b)(1)(C), if the financial interest is not 
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138 
held by a publicly traded corporation, the disclosure 
shall satisfy the disclosure requirement if the infor-
mation identifies— 
‘‘(A) in the case of a partnership, the 
name of the partnership and the name and cor-
respondence address of each partner or other 
entity that holds more than a 5-percent share 
of that partnership; 
‘‘(B) in the case of a corporation, the 
name of the corporation, the location of incor-
poration, the address of the principal place of 
business, and the name of each officer of the 
corporation; and 
‘‘(C) for each individual, the name and 
correspondence address of that individual. 
‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT-
ENT AND TRADEMARK OFFICE.— 
‘‘(1) IN GENERAL.—A plaintiff required to sub-
mit information under subsection (b) or a subse-
quent owner of the patent or patents at issue shall, 
not later than 90 days after any change in the as-
signee of the patent or patents at issue or an entity 
described under subparagraph (B) or (D) of sub-
section (b)(1), submit to the Patent and Trademark 
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139 
Office the updated identification of such assignee or 
entity. 
‘‘(2) FAILURE TO COMPLY.—With respect to a 
patent for which the requirement of paragraph (1) 
has not been met— 
‘‘(A) the plaintiff or subsequent owner 
shall not be entitled to recover reasonable fees 
and other expenses under section 285 or in-
creased damages under section 284 with respect 
to infringing activities taking place during any 
period of noncompliance with paragraph (1), 
unless the denial of such damages or fees would 
be manifestly unjust; and 
‘‘(B) the court shall award to a prevailing 
party accused of infringement reasonable fees 
and other expenses under section 285 that are 
incurred to discover the updated assignee or en-
tity described under paragraph (1), unless such 
sanctions would be unjust. 
‘‘(e) DEFINITIONS.—In this section: 
‘‘(1) FINANCIAL INTEREST.—The term ‘finan-
cial interest’— 
‘‘(A) means— 
‘‘(i) with regard to a patent or pat-
ents, the right of a person to receive pro-
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140 
ceeds related to the assertion of the patent 
or patents, including a fixed or variable 
portion of such proceeds; and 
‘‘(ii) with regard to the plaintiff, di-
rect or indirect ownership or control by a 
person of more than 5 percent of such 
plaintiff; and 
‘‘(B) does not mean— 
‘‘(i) ownership of shares or other in-
terests in a mutual or common investment 
fund, unless the owner of such interest 
participates in the management of such 
fund; or 
‘‘(ii) the proprietary interest of a pol-
icyholder in a mutual insurance company 
or of a depositor in a mutual savings asso-
ciation, or a similar proprietary interest, 
unless the outcome of the proceeding could 
substantially affect the value of such inter-
est. 
‘‘(2) PROCEEDING.—The term ‘proceeding’ 
means all stages of a civil action, including pretrial 
and trial proceedings and appellate review. 
‘‘(3) ULTIMATE PARENT ENTITY.— 
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141 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent 
entity’ has the meaning given such term in sec-
tion 801.1(a)(3) of title 16, Code of Federal 
Regulations, or any successor regulation. 
‘‘(B) MODIFICATION OF DEFINITION.—The 
Director may modify the definition of ‘ultimate 
parent entity’ by regulation.’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The item relating to section 290 in the table of sections 
for chapter 29 of title 35, United States Code, is amended 
to read as follows: 
‘‘290. Notice of patent suits; disclosure of interests.’’. 
(c) REGULATIONS.—The Director may promulgate 
such regulations as are necessary to establish a registra-
tion fee in an amount sufficient to recover the estimated 
costs of administering subsections (b) through (e) of sec-
tion 290 of title 35, United States Code, as added by sub-
section (a), to facilitate the collection and maintenance of 
the information required by such subsections, and to en-
sure the timely disclosure of such information to the pub-
lic. 
(d) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
6-month period beginning on the date of the enactment 
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142 
of this Act and shall apply to any action for which a com-
plaint is filed on or after such effective date. 
SEC. 3304. CUSTOMER-SUIT EXCEPTION. 
(a) AMENDMENT.—Section 296 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 296. Stay of action against customer 
‘‘(a) STAY OF ACTION AGAINST CUSTOMER.—Except 
as provided in subsection (d), in any civil action arising 
under any Act of Congress relating to patents, the court 
shall grant a motion to stay at least the portion of the 
action against a covered customer related to infringement 
of a patent involving a covered product or process if the 
following requirements are met: 
‘‘(1) The covered manufacturer and the covered 
customer consent in writing to the stay. 
‘‘(2) The covered manufacturer is a party to 
the action or to a separate action involving the same 
patent or patents related to the same covered prod-
uct or process. 
‘‘(3) The covered customer agrees to be bound 
by any issues that the covered customer has in com-
mon with the covered manufacturer and are finally 
decided as to the covered manufacturer in an action 
described in paragraph (2). 
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143 
‘‘(4) The motion is filed after the first pleading 
in the action but not later than the later of— 
‘‘(A) the 120th day after the date on which 
the first pleading in the action is served that 
specifically identifies the covered product or 
process as a basis for the covered customer’s al-
leged infringement of the patent and that spe-
cifically identifies how the covered product or 
process is alleged to infringe the patent; or 
‘‘(B) the date on which the first scheduling 
order in the case is entered. 
‘‘(b) APPLICABILITY OF STAY.—A stay issued under 
subsection (a) shall apply only to the patents, products, 
systems, or components accused of infringement in the ac-
tion. 
‘‘(c) LIFT OF STAY.— 
‘‘(1) IN GENERAL.—A stay entered under this 
section may be lifted upon grant of a motion based 
on a showing that— 
‘‘(A) the action involving the covered man-
ufacturer will not resolve a major issue in suit 
against the covered customer; or 
‘‘(B) the stay unreasonably prejudices and 
would be manifestly unjust to the party seeking 
to lift the stay. 
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144 
‘‘(2) SEPARATE
MANUFACTURER
ACTION
IN-
VOLVED.—In the case of a stay entered based on the 
participation of the covered manufacturer in a sepa-
rate action involving the same patent or patents re-
lated to the same covered product or process, a mo-
tion under this subsection may only be made if the 
court in such separate action determines the show-
ing required under paragraph (1) has been met. 
‘‘(d) EXEMPTION.—This section shall not apply to an 
action that includes a cause of action described under sec-
tion 271(e)(2). 
‘‘(e) CONSENT JUDGMENT.—If, following the grant 
of a motion to stay under this section, the covered manu-
facturer seeks or consents to entry of a consent judgment 
relating to one or more of the common issues that gave 
rise to the stay, or declines to prosecute through appeal 
a final decision as to one or more of the common issues 
that gave rise to the stay, the court may, upon grant of 
a motion, determine that such consent judgment or 
unappealed final decision shall not be binding on the cov-
ered customer with respect to one or more of such common 
issues based on a showing that such an outcome would 
unreasonably prejudice and be manifestly unjust to the 
covered customer in light of the circumstances of the case. 
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145 
‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed to limit the ability of a court to 
grant any stay, expand any stay granted under this sec-
tion, or grant any motion to intervene, if otherwise per-
mitted by law. 
‘‘(g) DEFINITIONS.—In this section: 
‘‘(1) COVERED CUSTOMER.—The term ‘covered 
customer’ means a party accused of infringing a pat-
ent or patents in dispute based on a covered product 
or process. 
‘‘(2) COVERED
MANUFACTURER.—The term 
‘covered manufacturer’ means a person that manu-
factures or supplies, or causes the manufacture or 
supply of, a covered product or process or a relevant 
part thereof. 
‘‘(3) COVERED
PRODUCT
OR
PROCESS.—The 
term ‘covered product or process’ means a product, 
process, system, service, component, material, or ap-
paratus, or relevant part thereof, that— 
‘‘(A) is alleged to infringe the patent or 
patents in dispute; or 
‘‘(B) implements a process alleged to in-
fringe the patent or patents in dispute.’’. 
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, is 
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146 
amended by striking the item relating to section 296 and 
inserting the following: 
‘‘296. Stay of action against customer.’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall take effect on the date of the enactment 
of this Act and shall apply to any action for which a com-
plaint is filed on or after the first day of the 30-day period 
that ends on that date. 
SEC. 3305. PROCEDURES AND PRACTICES TO IMPLEMENT 
RECOMMENDATIONS OF THE JUDICIAL CON-
FERENCE. 
(a) JUDICIAL CONFERENCE RULES
AND PROCE-
DURES ON DISCOVERY BURDENS AND COSTS.— 
(1) RULES
AND
PROCEDURES.—The Judicial 
Conference of the United States, using existing re-
sources, shall develop rules and procedures to imple-
ment the issues and proposals described in para-
graph (2) to address the asymmetries in discovery 
burdens and costs in any civil action arising under 
any Act of Congress relating to patents. Such rules 
and procedures shall include how and when payment 
for document discovery in addition to the discovery 
of core documentary evidence is to occur, and what 
information must be presented to demonstrate finan-
cial capacity before permitting document discovery 
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147 
in addition to the discovery of core documentary evi-
dence. 
(2) RULES AND PROCEDURES TO BE CONSID-
ERED.—The rules and procedures required under 
paragraph (1) should address each of the following 
issues and proposals: 
(A) DISCOVERY OF CORE DOCUMENTARY 
EVIDENCE.—Whether and to what extent each 
party to the action is entitled to receive core 
documentary evidence and shall be responsible 
for the costs of producing core documentary 
evidence within the possession or control of 
each such party, and whether and to what ex-
tent each party to the action may seek non-
documentary discovery as otherwise provided in 
the Federal Rules of Civil Procedure. 
(B) ELECTRONIC COMMUNICATION.—If the 
parties determine that the discovery of elec-
tronic communication is appropriate, whether 
such discovery shall occur after the parties have 
exchanged initial disclosures and core documen-
tary evidence and whether such discovery shall 
be in accordance with the following: 
(i) Any request for the production of 
electronic communication shall be specific 
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148 
and may not be a general request for the 
production of information relating to a 
product or business. 
(ii) Each request shall identify the 
custodian of the information requested, the 
search terms, and a timeframe. The par-
ties shall cooperate to identify the proper 
custodians, the proper search terms, and 
the proper timeframe. 
(iii) A party may not submit produc-
tion requests to more than 5 custodians, 
unless the parties jointly agree to modify 
the number of production requests without 
leave of the court. 
(iv) The court may consider contested 
requests for up to 5 additional custodians 
per producing party, upon a showing of a 
distinct need based on the size, complexity, 
and issues of the case. 
(v) If a party requests the discovery 
of electronic communication for additional 
custodians beyond the limits agreed to by 
the parties or granted by the court, the re-
questing party shall bear all reasonable 
costs caused by such additional discovery. 
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(C) ADDITIONAL DOCUMENT DISCOVERY.— 
Whether the following should apply: 
(i) IN GENERAL.—Each party to the 
action may seek any additional document 
discovery otherwise permitted under the 
Federal Rules of Civil Procedure, if such 
party bears the reasonable costs, including 
reasonable attorney’s fees, of the additional 
document discovery. 
(ii) REQUIREMENTS FOR ADDITIONAL 
DOCUMENT DISCOVERY.—Unless the par-
ties mutually agree otherwise, no party 
may be permitted additional document dis-
covery unless such a party posts a bond, or 
provides other security, in an amount suffi-
cient to cover the expected costs of such 
additional document discovery, or makes a 
showing to the court that such party has 
the financial capacity to pay the costs of 
such additional document discovery. 
(iii) LIMITS
ON
ADDITIONAL
DOCU-
MENT DISCOVERY.—A court, upon motion, 
may determine that a request for addi-
tional document discovery is excessive, ir-
relevant, or otherwise abusive and may set 
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limits on such additional document dis-
covery. 
(iv) GOOD CAUSE MODIFICATION.—A 
court, upon motion and for good cause 
shown, may modify the requirements of 
subparagraphs (A) and (B) and any defini-
tion under paragraph (3). Not later than 
30 days after the pretrial conference under 
Rule 16 of the Federal Rules of Civil Pro-
cedure, the parties shall jointly submit any 
proposed modifications of the requirements 
of subparagraphs (A) and (B) and any def-
inition under paragraph (3), unless the 
parties do not agree, in which case each 
party shall submit any proposed modifica-
tion of such party and a summary of the 
disagreement over the modification. 
(v) COMPUTER CODE.—A court, upon 
motion and for good cause shown, may de-
termine that computer code should be in-
cluded in the discovery of core documen-
tary evidence. The discovery of computer 
code shall occur after the parties have ex-
changed initial disclosures and other core 
documentary evidence. 
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151 
(D) DISCOVERY SEQUENCE AND SCOPE.— 
Whether the parties shall discuss and address 
in the written report filed pursuant to Rule 
26(f) of the Federal Rules of Civil Procedure 
the views and proposals of each party on the 
following: 
(i) When the discovery of core docu-
mentary evidence should be completed. 
(ii) Whether additional document dis-
covery will be sought under subparagraph 
(C). 
(iii) Any issues about infringement, 
invalidity, or damages that, if resolved be-
fore the additional discovery described in 
subparagraph (C) commences, might sim-
plify or streamline the case, including the 
identification of any terms or phrases re-
lating to any patent claim at issue to be 
construed by the court and whether the 
early construction of any of those terms or 
phrases would be helpful. 
(3) DEFINITIONS.—In this subsection: 
(A) CORE DOCUMENTARY EVIDENCE.—The 
term ‘‘core documentary evidence’’— 
(i) includes— 
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(I) documents relating to the 
conception of, reduction to practice of, 
and application for, the patent or pat-
ents at issue; 
(II) documents sufficient to show 
the technical operation of the product 
or process identified in the complaint 
as infringing the patent or patents at 
issue; 
(III) documents relating to po-
tentially invalidating prior art; 
(IV) documents relating to any 
licensing of, or other transfer of rights 
to, the patent or patents at issue be-
fore the date on which the complaint 
is filed; 
(V) documents sufficient to show 
profit attributable to the claimed in-
vention of the patent or patents at 
issue; 
(VI) documents relating to any 
knowledge by the accused infringer of 
the patent or patents at issue before 
the date on which the complaint is 
filed; 
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(VII) documents relating to any 
knowledge by the patentee of infringe-
ment of the patent or patents at issue 
before the date on which the com-
plaint is filed; 
(VIII) documents relating to any 
licensing term or pricing commitment 
to which the patent or patents may be 
subject through any agency or stand-
ard-setting body; and 
(IX) 
documents 
sufficient 
to 
show any marking or other notice pro-
vided of the patent or patents at 
issue; and 
(ii) does not include computer code, 
except as specified in paragraph (2)(C)(v). 
(B) ELECTRONIC
COMMUNICATION.—The 
term ‘‘electronic communication’’ means any 
form of electronic communication, including 
email, text message, or instant message. 
(4) 
IMPLEMENTATION
BY
THE
DISTRICT 
COURTS.—Not later than 6 months after the date on 
which the Judicial Conference has developed the 
rules and procedures required by this subsection, 
each United States district court and the United 
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States Court of Federal Claims shall revise the ap-
plicable local rules for such court to implement such 
rules and procedures. 
(5) AUTHORITY FOR JUDICIAL CONFERENCE TO 
REVIEW AND MODIFY.— 
(A) STUDY OF EFFICACY OF RULES AND 
PROCEDURES.—The Judicial Conference shall 
study the efficacy of the rules and procedures 
required by this subsection during the 4-year 
period beginning on the date on which such 
rules and procedures by the district courts and 
the United States Court of Federal Claims are 
first implemented. The Judicial Conference may 
modify such rules and procedures following 
such 4-year period. 
(B) INITIAL MODIFICATIONS.—Before the 
expiration of the 4-year period described in sub-
paragraph (A), the Judicial Conference may 
modify the requirements under this sub-
section— 
(i) by designating categories of ‘‘core 
documentary evidence’’, in addition to 
those designated under paragraph (3)(A), 
as the Judicial Conference determines to 
be appropriate and necessary; and 
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155 
(ii) as otherwise necessary to prevent 
a manifest injustice, the imposition of a re-
quirement the costs of which clearly out-
weigh its benefits, or a result that could 
not reasonably have been intended by the 
Congress. 
(b) JUDICIAL CONFERENCE PATENT CASE MANAGE-
MENT.—The Judicial Conference of the United States, 
using existing resources, shall develop case management 
procedures to be implemented by the United States dis-
trict courts and the United States Court of Federal Claims 
for any civil action arising under any Act of Congress re-
lating to patents, including initial disclosure and early case 
management conference practices that— 
(1) will identify any potential dispositive issues 
of the case; and 
(2) focus on early summary judgment motions 
when resolution of issues may lead to expedited dis-
position of the case. 
(c) REVISION
OF FORM
FOR PATENT INFRINGE-
MENT.— 
(1) ELIMINATION
OF
FORM.—The Supreme 
Court, using existing resources, shall eliminate Form 
18 in the Appendix to the Federal Rules of Civil 
Procedure (relating to Complaint for Patent In-
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fringement), effective on the date of the enactment 
of this Act. 
(2) REVISED FORM.—The Supreme Court may 
prescribe a new form or forms setting out model al-
legations of patent infringement that, at a minimum, 
notify accused infringers of the asserted claim or 
claims, the products or services accused of infringe-
ment, and the plaintiff’s theory for how each ac-
cused product or service meets each limitation of 
each asserted claim. The Judicial Conference should 
exercise the authority under section 2073 of title 28, 
United States Code, to make recommendations with 
respect to such new form or forms. 
(d) PROTECTION OF INTELLECTUAL-PROPERTY LI-
CENSES IN BANKRUPTCY.— 
(1) IN
GENERAL.—Section 1522 of title 11, 
United States Code, is amended by adding at the 
end the following: 
‘‘(e) Section 365(n) shall apply to cases under this 
chapter. If the foreign representative rejects or repudiates 
a contract under which the debtor is a licensor of intellec-
tual property, the licensee under such contract shall be 
entitled to make the election and exercise the rights de-
scribed in section 365(n).’’. 
(2) TRADEMARKS.— 
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(A) IN
GENERAL.—Section 101(35A) of 
title 11, United States Code, is amended— 
(i) in subparagraph (E), by striking 
‘‘or’’; 
(ii) in subparagraph (F), by striking 
‘‘title 17;’’ and inserting ‘‘title 17; or’’; and 
(iii) by adding after subparagraph (F) 
the following new subparagraph: 
‘‘(G) a trademark, service mark, or trade 
name, as those terms are defined in section 45 
of the Act of July 5, 1946 (commonly referred 
to as the ‘Trademark Act of 1946’) (15 U.S.C. 
1127);’’. 
(B) CONFORMING
AMENDMENT.—Section 
365(n)(2) of title 11, United States Code, is 
amended— 
(i) in subparagraph (B)— 
(I) by striking ‘‘royalty pay-
ments’’ and inserting ‘‘royalty or 
other payments’’; and 
(II) by striking ‘‘and’’ after the 
semicolon; 
(ii) in subparagraph (C), by striking 
the period at the end of clause (ii) and in-
serting ‘‘; and’’; and 
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(iii) by adding at the end the fol-
lowing new subparagraph: 
‘‘(D) in the case of a trademark, service mark, 
or trade name, the trustee shall not be relieved of 
a contractual obligation to monitor and control the 
quality of a licensed product or service.’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to any case 
that is pending on, or for which a petition or com-
plaint is filed on or after, such date of enactment. 
SEC. 3306. SMALL BUSINESS EDUCATION, OUTREACH, AND 
INFORMATION ACCESS. 
(a) SMALL
BUSINESS
EDUCATION
AND
OUT-
REACH.— 
(1) RESOURCES FOR SMALL BUSINESS.—Using 
existing resources, the Director shall develop edu-
cational resources for small businesses to address 
concerns arising from patent infringement. 
(2) SMALL BUSINESS PATENT OUTREACH.—The 
existing small business patent outreach programs of 
the Office, and the relevant offices at the Small 
Business Administration and the Minority Business 
Development Agency, shall provide education and 
awareness on abusive patent litigation practices. The 
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Director may give special consideration to the 
unique needs of small firms owned by disabled vet-
erans, service-disabled veterans, women, and minor-
ity entrepreneurs in planning and executing the out-
reach efforts by the Office. 
(b) IMPROVING INFORMATION TRANSPARENCY FOR 
SMALL BUSINESS AND THE UNITED STATES PATENT AND 
TRADEMARK OFFICE USERS.— 
(1) WEB SITE.—Using existing resources, the 
Director shall create a user-friendly section on the 
official Web site of the Office to notify the public 
when a patent case is brought in Federal court and, 
with respect to each patent at issue in such case, the 
Director shall include— 
(A) information disclosed under sub-
sections (b) and (d) of section 290 of title 35, 
United States Code, as added by section 3303 
of this subtitle; and 
(B) any other information the Director de-
termines to be relevant. 
(2) FORMAT.—In order to promote accessibility 
for the public, the information described in para-
graph (1) shall be searchable by patent number, pat-
ent art area, and entity. 
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SEC. 3307. STUDIES ON PATENT TRANSACTIONS, QUALITY, 
AND EXAMINATION. 
(a) STUDY ON SECONDARY MARKET OVERSIGHT FOR 
PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY 
AND ETHICAL BUSINESS PRACTICES.— 
(1) STUDY REQUIRED.—The Director, in con-
sultation with the Secretary of Commerce, the Sec-
retary of the Treasury, the Chairman of the Securi-
ties and Exchange Commission, the heads of other 
relevant agencies, and interested parties, shall, using 
existing resources of the Office, conduct a study— 
(A) to develop legislative recommendations 
to ensure greater transparency and account-
ability in patent transactions occurring on the 
secondary market; 
(B) to examine the economic impact that 
the patent secondary market has on the United 
States; 
(C) to examine licensing and other over-
sight requirements that may be placed on the 
patent secondary market, including on the par-
ticipants in such markets, to ensure that the 
market is a level playing field and that brokers 
in the market have the requisite expertise and 
adhere to ethical business practices; and 
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(D) to examine the requirements placed on 
other markets. 
(2) REPORT
ON
STUDY.—Not later than 18 
months after the date of the enactment of this Act, 
the Director shall submit a report to the Committee 
on the Judiciary of the House of Representatives 
and the Committee on the Judiciary of the Senate 
on the findings and recommendations of the Director 
from the study required under paragraph (1). 
(b) STUDY ON PATENTS OWNED BY THE UNITED 
STATES GOVERNMENT.— 
(1) STUDY REQUIRED.—The Director, in con-
sultation with the heads of relevant agencies and in-
terested parties, shall, using existing resources of the 
Office, conduct a study on patents owned by the 
United States Government that— 
(A) examines how such patents are li-
censed and sold, and any litigation relating to 
the licensing or sale of such patents; 
(B) provides legislative and administrative 
recommendations on whether there should be 
restrictions placed on patents acquired from the 
United States Government; 
(C) examines whether or not each relevant 
agency maintains adequate records on the pat-
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ents owned by such agency, specifically whether 
such agency addresses licensing, assignment, 
and Government grants for technology related 
to such patents; and 
(D) provides recommendations to ensure 
that each relevant agency has an adequate 
point of contact that is responsible for man-
aging the patent portfolio of the agency. 
(2) REPORT ON STUDY.—Not later than 1 year 
after the date of the enactment of this Act, the Di-
rector shall submit to the Committee on the Judici-
ary of the House of Representatives and the Com-
mittee on the Judiciary of the Senate a report on 
the findings and recommendations of the Director 
from the study required under paragraph (1). 
(c) STUDY ON PATENT QUALITY AND ACCESS TO 
THE BEST INFORMATION DURING EXAMINATION.— 
(1) GAO STUDY.—The Comptroller General of 
the United States shall, using existing resources, 
conduct a study on patent examination at the Office 
and the technologies available to improve examina-
tion and improve patent quality. 
(2) CONTENTS OF THE STUDY.—The study re-
quired under paragraph (1) shall include the fol-
lowing: 
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(A) An examination of patent quality at 
the Office. 
(B) An examination of ways to improve 
patent quality, specifically through technology, 
that shall include examining best practices at 
foreign patent offices and the use of existing 
off-the-shelf technologies to improve patent ex-
amination. 
(C) A description of how patents are clas-
sified. 
(D) An examination of procedures in place 
to prevent double patenting through filing by 
applicants in multiple art areas. 
(E) An examination of the types of off-the- 
shelf prior art databases and search software 
used by foreign patent offices and governments, 
particularly in Europe and Asia, and whether 
those databases and search tools could be used 
by the Office to improve patent examination. 
(F) An examination of any other areas the 
Comptroller General determines to be relevant. 
(3) REPORT ON STUDY.—Not later than 1 year 
after the date of the enactment of this Act, the 
Comptroller General shall submit to the Committee 
on the Judiciary of the House of Representatives 
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and the Committee on the Judiciary of the Senate 
a report on the findings and recommendations from 
the study required by this subsection, including rec-
ommendations for any changes to laws and regula-
tions that will improve the examination of patent ap-
plications and patent quality. 
(d) STUDY ON PATENT SMALL CLAIMS COURT.— 
(1) STUDY REQUIRED.— 
(A) IN
GENERAL.—The Director of the 
Administrative Office of the United States 
Courts, in consultation with the Director of the 
Federal Judicial Center and the United States 
Patent and Trademark Office, shall, using ex-
isting resources, conduct a study to examine the 
idea of developing a pilot program for patent 
small claims procedures in certain judicial dis-
tricts within the existing patent pilot program 
mandated by Public Law 111–349. 
(B) CONTENTS
OF
STUDY.—The study 
under subparagraph (A) shall examine— 
(i) the necessary criteria for using 
small claims procedures; 
(ii) the costs that would be incurred 
for establishing, maintaining, and oper-
ating such a pilot program; and 
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(iii) the steps that would be taken to 
ensure that the procedures used in the 
pilot program are not misused for abusive 
patent litigation. 
(2) REPORT ON STUDY.—Not later than 1 year 
after the date of the enactment of this Act, the Di-
rector of the Administrative Office of the United 
States Courts shall submit a report to the Com-
mittee on the Judiciary of the House of Representa-
tives and the Committee on the Judiciary of the 
Senate on the findings and recommendations of the 
Director of the Administrative Office from the study 
required under paragraph (1). 
(e) STUDY ON DEMAND LETTERS.— 
(1) STUDY.—The Director, in consultation with 
the heads of other appropriate agencies, shall, using 
existing resources, conduct a study of the prevalence 
of the practice of sending patent demand letters in 
bad faith and the extent to which that practice may, 
through fraudulent or deceptive practices, impose a 
negative impact on the marketplace. 
(2) REPORT TO CONGRESS.—Not later than 1 
year after the date of the enactment of this Act, the 
Director shall submit a report to the Committee on 
the Judiciary of the House of Representatives and 
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the Committee on the Judiciary of the Senate on the 
findings and recommendations of the Director from 
the study required under paragraph (1). 
(3) PATENT
DEMAND
LETTER
DEFINED.—In 
this subsection, the term ‘‘patent demand letter’’ 
means a written communication relating to a patent 
that states or indicates, directly or indirectly, that 
the recipient or anyone affiliated with the recipient 
is or may be infringing the patent. 
(f) STUDY ON BUSINESS METHOD PATENT QUAL-
ITY.— 
(1) GAO STUDY.—The Comptroller General of 
the United States shall, using existing resources, 
conduct a study on the volume and nature of litiga-
tion involving business method patents. 
(2) CONTENTS OF STUDY.—The study required 
under paragraph (1) shall focus on examining the 
quality of business method patents asserted in suits 
alleging patent infringement, and may include an ex-
amination of any other areas that the Comptroller 
General determines to be relevant. 
(3) REPORT TO CONGRESS.—Not later than 1 
year after the date of the enactment of this Act, the 
Comptroller General shall submit to the Committee 
on the Judiciary of the House of Representatives 
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167 
and the Committee on the Judiciary of the Senate 
a report on the findings and recommendations from 
the study required by this subsection, including rec-
ommendations for any changes to laws or regula-
tions that the Comptroller General considers appro-
priate on the basis of the study. 
(g) STUDY ON IMPACT OF LEGISLATION ON ABILITY 
OF INDIVIDUALS AND SMALL BUSINESSES TO PROTECT 
EXCLUSIVE
RIGHTS
TO
INVENTIONS
AND
DISCOV-
ERIES.— 
(1) STUDY REQUIRED.—The Director, in con-
sultation with the Secretary of Commerce, the Direc-
tor of the Administrative Office of the United States 
Courts, the Director of the Federal Judicial Center, 
the heads of other relevant agencies, and interested 
parties, shall, using existing resources of the Office, 
conduct a study to examine the economic impact of 
sections 3, 4, and 5 of this Act, and any amend-
ments made by such sections, on the ability of indi-
viduals and small businesses owned by women, vet-
erans, and minorities to assert, secure, and vindicate 
the constitutionally guaranteed exclusive right to in-
ventions and discoveries by such individuals and 
small business. 
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168 
(2) REPORT
ON
STUDY.—Not later than 2 
years after the date of the enactment of this Act, the 
Director shall submit to the Committee on the Judi-
ciary of the House of Representatives and the Com-
mittee on the Judiciary of the Senate a report on 
the findings and recommendations of the Director 
from the study required under paragraph (1). 
SEC. 3308. IMPROVEMENTS AND TECHNICAL CORRECTIONS 
TO THE LEAHY-SMITH AMERICA INVENTS 
ACT. 
(a) POST-GRANT REVIEW AMENDMENT.—Section 
325(e)(2) of title 35, United States Code is amended by 
striking ‘‘or reasonably could have raised’’. 
(b) USE OF DISTRICT COURT CLAIM CONSTRUCTION 
IN POST-GRANT AND INTER PARTES REVIEWS.— 
(1) INTER PARTES REVIEW.—Section 316(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (12), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (13), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by adding at the end the following new 
paragraph: 
‘‘(14) providing that for all purposes under this 
chapter— 
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‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
cluding construing each claim of the patent in 
accordance with the ordinary and customary 
meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution 
history pertaining to the patent; and 
‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(2) POST-GRANT
REVIEW.—Section 326(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (11), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (12), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by adding at the end the following new 
paragraph: 
‘‘(13) providing that for all purposes under this 
chapter— 
‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
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cluding construing each claim of the patent in 
accordance with the ordinary and customary 
meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution 
history pertaining to the patent; and 
‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(3) TECHNICAL
AND
CONFORMING
AMEND-
MENT.—Section 18(a)(1)(A) of the Leahy-Smith 
America Invents Act (Public Law 112–29; 126 Stat. 
329; 35 U.S.C. 321 note) is amended by striking 
‘‘Section 321(c)’’ and inserting ‘‘Sections 321(c) and 
326(a)(13)’’. 
(4) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 90-day period beginning on the date of 
the enactment of this Act, and shall apply to any 
proceeding under chapter 31 or 32 of title 35, 
United States Code, as the case may be, for which 
the petition for review is filed on or after such effec-
tive date. 
(c) CODIFICATION
OF
THE
DOUBLE-PATENTING 
DOCTRINE FOR FIRST-INVENTOR-TO-FILE PATENTS.— 
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171 
(1) AMENDMENT.—Chapter 10 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 106. Prior art in cases of double patenting 
‘‘A claimed invention of a patent issued under section 
151 (referred to as the ‘first patent’) that is not prior art 
to a claimed invention of another patent (referred to as 
the ‘second patent’) shall be considered prior art to the 
claimed invention of the second patent for the purpose of 
determining the nonobviousness of the claimed invention 
of the second patent under section 103 if— 
‘‘(1) the claimed invention of the first patent 
was effectively filed under section 102(d) on or be-
fore the effective filing date of the claimed invention 
of the second patent; 
‘‘(2) either— 
‘‘(A) the first patent and second patent 
name the same individual or individuals as the 
inventor; or 
‘‘(B) the claimed invention of the first pat-
ent would constitute prior art to the claimed in-
vention of the second patent under section 
102(a)(2) 
if 
an 
exception 
under 
section 
102(b)(2) were deemed to be inapplicable and 
the claimed invention of the first patent was, or 
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172 
were deemed to be, effectively filed under sec-
tion 102(d) before the effective filing date of 
the claimed invention of the second patent; and 
‘‘(3) the patentee of the second patent has not 
disclaimed the rights to enforce the second patent 
independently from, and beyond the statutory term 
of, the first patent.’’. 
(2) REGULATIONS.—The Director shall promul-
gate regulations setting forth the form and content 
of any disclaimer required for a patent to be issued 
in compliance with section 106 of title 35, United 
States Code, as added by paragraph (1). Such regu-
lations shall apply to any disclaimer filed after a 
patent has issued. A disclaimer, when filed, shall be 
considered for the purpose of determining the valid-
ity of the patent under section 106 of title 35, 
United States Code. 
(3) CONFORMING AMENDMENT.—The table of 
sections for chapter 10 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘106. Prior art in cases of double patenting.’’. 
(4) EXCLUSIVE RULE.—A patent subject to sec-
tion 106 of title 35, United States Code, as added 
by paragraph (1), shall not be held invalid on any 
nonstatutory, double-patenting ground based on a 
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173 
patent described in section 3(n)(1) of the Leahy- 
Smith America Invents Act (35 U.S.C. 100 note). 
(5) 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 a pat-
ent or patent application only if both the first and 
second patents described in section 106 of title 35, 
United States Code, as added by paragraph (1), are 
patents or patent applications that are described in 
section 3(n)(1) of the Leahy-Smith America Invents 
Act (35 U.S.C. 100 note). 
(d) PTO PATENT REVIEWS.— 
(1) CLARIFICATION.— 
(A) 
SCOPE
OF
PRIOR
ART.—Section 
18(a)(1)(C)(i) of the Leahy-Smith America In-
vents Act (35 U.S.C. 321 note) is amended by 
striking ‘‘section 102(a)’’ and inserting ‘‘sub-
section (a) or (e) of section 102’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall take effect on 
the date of the enactment of this Act and shall 
apply to any proceeding pending on, or filed on 
or after, such date of enactment. 
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195 
(1) REQUIREMENT.—Not later than 120 days 
after final action is taken under the National Envi-
ronmental Policy Act of 1969 (42 U.S.C. 4321 et 
seq.) with respect to a cross-border segment for 
which a request is received under this section, the 
relevant official identified under paragraph (2), in 
consultation with appropriate Federal agencies, shall 
issue a certificate of crossing for the cross-border 
segment unless the relevant official finds that the 
construction, connection, operation, or maintenance 
of the cross-border segment is not in the public in-
terest of the United States. 
(2) RELEVANT OFFICIAL.—The relevant official 
referred to in paragraph (1) is— 
(A) the Secretary of State with respect to 
oil pipelines; and 
(B) the Secretary of Energy with respect 
to electric transmission facilities. 
(3) ADDITIONAL REQUIREMENT FOR ELECTRIC 
TRANSMISSION FACILITIES.—In the case of a request 
for a certificate of crossing for the construction, con-
nection, operation, or maintenance of a cross-border 
segment of an electric transmission facility, the Sec-
retary of Energy shall require, as a condition of 
issuing the certificate of crossing for the request 
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203 
‘‘(c) TRANSPARENCY OF STATE REGULATIONS.— 
‘‘(1) IN GENERAL.—Each State shall submit to 
the Bureau of Land Management a copy of its regu-
lations that apply to hydraulic fracturing operations 
on Federal land. 
‘‘(2) AVAILABILITY.—The Secretary of the In-
terior shall make available to the public State regu-
lations submitted under this subsection. 
‘‘(d) TRANSPARENCY OF STATE DISCLOSURE RE-
QUIREMENTS.— 
‘‘(1) IN GENERAL.—Each State shall submit to 
the Bureau of Land Management a copy of any reg-
ulations of the State that require disclosure of 
chemicals used in hydraulic fracturing operations on 
Federal land. 
‘‘(2) AVAILABILITY.—The Secretary of the In-
terior shall make available to the public State regu-
lations submitted under this subsection. 
‘‘(e) HYDRAULIC FRACTURING DEFINED.—In this 
section the term ‘hydraulic fracturing’ means the process 
by which fracturing fluids (or a fracturing fluid system) 
are pumped into an underground geologic formation at a 
calculated, predetermined rate and pressure to generate 
fractures or cracks in the target formation and thereby 
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