‘‘(4) conduct post-grant opposition proceedings 
under chapter 32. 
Each appeal and derivation proceeding shall be heard by 
at least 3 members of the Patent Trial and Appeal Board, 
who shall be designated by the Director. Only the Patent 
Trial and Appeal Board may grant rehearings. The Direc-
tor shall assign each post-grant review proceeding to a 
panel of 3 administrative patent judges. Once assigned, 
each such panel of administrative patent judges shall have 
the responsibilities under chapter 32 in connection with 
post-grant review proceedings.’’. 
SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO-
CEEDINGS. 
The Under Secretary of Commerce for Intellectual 
Property and Director of the Patent and Trademark Of-
fice shall, not later than 3 years after the date of the en-
actment of this Act— 
(1) conduct a study of the effectiveness and ef-
ficiency of the different forms of proceedings avail-
able under title 35, United States Code, for the re-
examination of patents; and 
(2) submit to the Committees on the Judiciary 
of the House of Representatives and the Senate a 
report on the results of the study, including any of 
the Director’s suggestions for amending the law, and 
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any other recommendations the Director has with 
respect to patent reexamination proceedings. 
SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 
QUALITY ENHANCEMENTS. 
(a) PUBLICATION.—Section 122(b)(2) is amended— 
(1) by striking subparagraph (B); and 
(2) in subparagraph (A)— 
(A) by striking ‘‘(A) An application’’ and 
inserting ‘‘An application’’; and 
(B) by redesignating clauses (i) through 
(iv) as subparagraphs (A) through (D), respec-
tively. 
(b) PREISSUANCE SUBMISSIONS
BY THIRD PAR-
TIES.—Section 122 is amended by adding at the end the 
following: 
‘‘(e) PREISSUANCE SUBMISSIONS
BY THIRD PAR-
TIES.— 
‘‘(1) IN GENERAL.—Any person may submit for 
consideration and inclusion in the record of a patent 
application, any patent, published patent application 
or other publication of potential relevance to the ex-
amination of the application, if such submission is 
made in writing before the earlier of— 
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‘‘(A) the date a notice of allowance under 
section 151 is mailed in the application for pat-
ent; or 
‘‘(B) either— 
‘‘(i) 6 months after the date on which 
the application for patent is published 
under section 122, or 
‘‘(ii) the date of the first rejection 
under section 132 of any claim by the ex-
aminer during the examination of the ap-
plication for patent, 
whichever occurs later. 
‘‘(2) OTHER REQUIREMENTS.—Any submission 
under paragraph (1) shall— 
‘‘(A) set forth a concise description of the 
asserted relevance of each submitted document; 
‘‘(B) be accompanied by such fee as the 
Director may prescribe; and 
‘‘(C) include a statement by the submitter 
affirming that the submission was made in 
compliance with this section.’’. 
SEC. 10. VENUE AND JURISDICTION. 
(a) VENUE FOR PATENT CASES.—Section 1400 of 
title 28, United States Code, is amended by striking sub-
section (b) and inserting the following: 
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‘‘(b) Any civil action arising under any Act of Con-
gress relating to patents, other than an action for declara-
tory judgment or an action seeking review of a decision 
of the Patent Trial and Appeal Board under chapter 13 
of title 35, may be brought only— 
‘‘(1) in the judicial district where either party 
resides; or 
‘‘(2) in the judicial district where the defendant 
has committed acts of infringement and has a reg-
ular and established place of business. 
‘‘(c) Notwithstanding section 1391(c) of this title, for 
purposes of venue under subsection (b), a corporation 
shall be deemed to reside in the judicial district in which 
the corporation has its principal place of business or in 
the State in which the corporation is incorporated.’’. 
(b) INTERLOCUTORY APPEALS.—Subsection (c)(2) of 
section 1292 of title 28, United States Code, is amended 
by adding at the end the following: 
‘‘(3) of an appeal from an interlocutory order 
or decree determining construction of claims in a 
civil action for patent infringement under section 
271 of title 35. 
Application for an appeal under paragraph (3) shall be 
made to the court within 10 days after entry of the order 
or decree, and proceedings in the district court under such 
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paragraph shall be stayed during pendency of the ap-
peal.’’. 
SEC. 11. REGULATORY AUTHORITY. 
Section 3(a) is amended by adding at the end the 
following: 
‘‘(5) REGULATORY AUTHORITY.—In addition to 
the authority conferred by other provisions of this 
title, the Director may promulgate such rules, regu-
lations, and orders that the Director determines ap-
propriate to carry out the provisions of this title or 
any other law applicable to the United States Patent 
and Trademark Office or that the Director deter-
mines necessary to govern the operation and organi-
zation of the Office.’’. 
SEC. 12. TECHNICAL AMENDMENTS. 
(a) JOINT INVENTIONS.—Section 116 is amended— 
(1) in the first paragraph, by striking 
‘‘When’’ and inserting ‘‘(a) JOINT
INVEN-
TIONS.—When’’; 
(2) in the second paragraph, by striking 
‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT-
TED INVENTOR.—If a joint inventor’’; and 
(3) in the third paragraph, by striking 
‘‘Whenever’’ and inserting ‘‘(c) CORRECTION OF 
ERRORS IN APPLICATION.—Whenever’’. 
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(b) FILING
OF APPLICATION
IN FOREIGN COUN-
TRY.—Section 184 is amended— 
(1) in the first paragraph, by striking ‘‘Except 
when’’ and inserting ‘‘(a) FILING
IN
FOREIGN 
COUNTRY.—Except when’’; 
(2) in the second paragraph, by striking ‘‘The 
term’’ 
and 
inserting 
‘‘(b) 
APPLICATION.—The 
term’’; and 
(3) in the third paragraph, by striking ‘‘The 
scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA-
TIONS, AMENDMENTS, AND
SUPPLEMENTS.—The 
scope’’. 
(c) REISSUE OF DEFECTIVE PATENTS.—Section 251 
is amended— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 
(2) in the second paragraph, by striking ‘‘The 
Director’’ and inserting ‘‘(b) MULTIPLE REISSUED 
PATENTS.—The Director’’; 
(3) in the third paragraph, by striking ‘‘The 
provision’’ and inserting ‘‘(c) APPLICABILITY
OF 
THIS TITLE.—The provisions’’; and 
(4) in the last paragraph, by striking ‘‘No re-
issued patent’’ and inserting ‘‘(d) REISSUE PATENT 
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ENLARGING SCOPE OF CLAIMS.—No reissued pat-
ent’’. 
(d) EFFECT OF REISSUE.—Section 253 is amend-
ed— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 
and 
(2) in the second paragraph, by striking ‘‘in 
like manner’’ and inserting ‘‘(b) ADDITIONAL DIS-
CLAIMER OR DEDICATION.—In the manner set forth 
in subsection (a),’’. 
(e) CORRECTION
OF NAMED INVENTOR.—Section 
256 is amended— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 
and 
(2) in the second paragraph, by striking ‘‘The 
error’’ and inserting ‘‘(b) PATENT VALID IF ERROR 
CORRECTED.—The error’’. 
(f) PRESUMPTION
OF VALIDITY.—Section 282 is 
amended— 
(1) in the first undesignated paragraph, by 
striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN-
ERAL.—A patent’’; 
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(2) in the second undesignated paragraph, by 
striking ‘‘The following’’ and inserting ‘‘(b) DE-
FENSES.—The following’’; and 
(3) in the third undesignated paragraph, by 
striking ‘‘In actions’’ and inserting ‘‘(c) NOTICE OF 
ACTIONS; ACTIONS DURING EXTENSION OF PATENT 
TERM.—In actions’’. 
SEC. 13. EFFECTIVE DATE; RULE OF CONSTRUCTION. 
(a) EFFECTIVE DATE.—Except as otherwise provided 
in this Act, the provisions of this Act shall take effect 12 
months after the date of the enactment of this Act and 
shall apply to any patent issued on or after that effective 
date. 
(b) CONTINUITY OF INTENT UNDER THE CREATE 
ACT.—The enactment of section 102(b)(3) of title 35, 
United States Code, under section (3)(b) of this Act is 
done with the same intent to promote joint research activi-
ties that was expressed, including in the legislative history, 
through the enactment of the Cooperative Research and 
Technology Enhancement Act of 2004 (Public Law 108– 
453; the ‘‘CREATE Act’’), the amendments of which are 
stricken by section 3(c) of this Act. The United States 
Patent and Trademark Office shall administer section 
102(b)(3) of title 35, United States Code, in a manner 
consistent with the legislative history of the CREATE Act 
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that was relevant to its administration by the Patent and 
Trademark Office. 
Æ 
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