HR 1908 PCS
(f) and (g) shall apply to patents issued on or after 
the effective date under paragraph (1). 
(j) REGULATIONS.—The Under Secretary of Com-
merce for Intellectual Property and Director of the United 
States Patent and Trademark Office (in this subsection 
referred to as 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 (f) of this sec-
tion. 
SEC. 7. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD. 
(a) DEFINITIONS.—Section 100 (as amended by this 
Act) is further amended by adding at the end the fol-
lowing: 
‘‘(k) The term ‘cancellation petitioner’ means the real 
party in interest requesting cancellation of any claim of 
a patent under chapter 32 of this title and the privies of 
the real party in interest.’’. 
(a) PATENT TRIAL AND APPEAL BOARD.—Section 6 
is amended to read as follows: 
‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) ESTABLISHMENT
AND COMPOSITION.—There 
shall be in the Office a Patent Trial and Appeal Board. 
The administrative patent judges shall constitute the Pat-
ent Trial and Appeal Board. The administrative patent 
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judges shall be persons of competent legal knowledge and 
scientific ability who are appointed by the Secretary of 
Commerce. Any reference in any Federal law, Executive 
order, rule, regulation, or delegation of authority, or any 
document of or pertaining to the Board of Patent Appeals 
and Interferences 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 application for 
patents; 
‘‘(2) on written appeal of a patent owner, re-
view adverse decisions of examiners upon patents in 
reexamination proceedings under chapter 30; 
‘‘(3) review appeals by patent owners and third- 
party requesters under section 315; 
‘‘(4) determine priority and patentability of in-
vention in derivation proceedings under section 
135(a); and 
‘‘(5) 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 
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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.’’. 
(b) EFFECTIVE DATE.—The amendments made by 
this section shall take effect at the end of the 1-year period 
beginning on the date of the enactment of this Act. 
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 2 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 
any other recommendations the Director has with 
respect to patent reexamination proceedings. 
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SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 
QUALITY ENHANCEMENTS. 
(a) 
PUBLICATION.—Section 
122(b)(2)(B)(i) 
is 
amended by striking ‘‘published as provided in paragraph 
(1).’’ and inserting the following: ‘‘published until the later 
of— 
‘‘(I) three months after a second action is 
taken pursuant to section 132 on the applica-
tion, of which notice has been given or mailed 
to the applicant; or 
‘‘(II) the date specified in paragraph (1).’’. 
(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— 
‘‘(A) the date a notice of allowance under 
section 151 is mailed in the application for pat-
ent; or 
‘‘(B) either— 
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‘‘(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; 
‘‘(C) include a statement by the submitter 
affirming that the submission was made in 
compliance with this section; and 
‘‘(D) identify the real party-in-interest 
making the submission.’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section— 
(1) shall take effect at the end of the 1-year pe-
riod beginning on the date of the enactment of this 
Act; and 
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(2) shall apply to any application for patent 
filed before, on, or after the effective date under 
paragraph (1). 
SEC. 10. TAX PLANNING METHODS NOT PATENTABLE. 
(a) IN GENERAL.—Section 101 is amended— 
(1) by striking ‘‘Whoever’’ and inserting ‘‘(a) 
PATENTABLE INVENTIONS.—Whoever’’; and 
(2) by adding at the end the following: 
‘‘(b) TAX PLANNING METHODS.— 
‘‘(1) UNPATENTABLE
SUBJECT
MATTER.—A 
patent may not be obtained for a tax planning meth-
od. 
‘‘(2) DEFINITIONS.—For purposes of paragraph 
(1)— 
‘‘(A) the term ‘tax planning method’ 
means a plan, strategy, technique, or scheme 
that is designed to reduce, minimize, or defer, 
or has, when implemented, the effect of reduc-
ing, minimizing, or deferring, a taxpayer’s tax 
liability, but does not include the use of tax 
preparation software or other tools used solely 
to perform or model mathematical calculations 
or prepare tax or information returns; 
‘‘(B) the term ‘taxpayer’ means an indi-
vidual, entity, or other person (as defined in 
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section 7701 of the Internal Revenue Code of 
1986) that is subject to taxation directly, is re-
quired to prepare a tax return or information 
statement to enable one or more other persons 
to determine their tax liability, or is otherwise 
subject to a tax law; 
‘‘(C) the terms ‘tax’, ‘tax laws’, ‘tax liabil-
ity’, and ‘taxation’ refer to any Federal, State, 
county, city, municipality, or other govern-
mental levy, assessment, or imposition, whether 
measured by income, value, or otherwise; and 
‘‘(D) the term ‘State’ means each of the 
several States, the District of Columbia, and 
any commonwealth, territory, or possession of 
the United States.’’. 
(b) APPLICABILITY.—The amendments made by this 
section— 
(1) shall take effect on the date of the enact-
ment of this Act; 
(2) shall apply to any application for patent or 
application for a reissue patent that is— 
(A) filed on or after the date of the enact-
ment of this Act; or 
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