IB 
Union Calendar No. 200 
113TH CONGRESS 
1ST SESSION H. R. 3309 
[Report No. 113–279] 
To amend title 35, United States Code, and the Leahy-Smith America Invents 
Act to make improvements and technical corrections, and for other purposes. 
IN THE HOUSE OF REPRESENTATIVES 
OCTOBER 23, 2013 
Mr. GOODLATTE (for himself, Mr. DEFAZIO, Mr. COBLE, Ms. LOFGREN, Mr. 
SMITH of Texas, Ms. ESHOO, Mr. CHAFFETZ, Mr. BACHUS, Mr. MARINO, 
Mr. FARENTHOLD, and Mr. HOLDING) introduced the following bill; 
which was referred to the Committee on the Judiciary 
DECEMBER 2, 2013 
Additional sponsors: Mr. CHABOT, Ms. MCCOLLUM, Mr. HUFFMAN, Mr. 
HONDA, Mr. JOHNSON of Ohio, and Mr. LARSEN of Washington 
DECEMBER 2, 2013 
Reported with an amendment, committed to the Committee of the Whole 
House on the State of the Union, and ordered to be printed 
[Strike out all after the enacting clause and insert the part printed in italic] 
[For text of introduced bill, see copy of bill as introduced on October 23, 2013] 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00001
Fmt 6652
Sfmt 6652
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
A BILL 
To amend title 35, United States Code, and the Leahy- 
Smith America Invents Act to make improvements and 
technical corrections, and for other purposes. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00002
Fmt 6652
Sfmt 6652
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the ‘‘In-
novation Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. Definitions. 
Sec. 3. Patent infringement actions. 
Sec. 4. Transparency of patent ownership. 
Sec. 5. Customer-suit exception. 
Sec. 6. Procedures and practices to implement and recommendations to the Judi-
cial Conference. 
Sec. 7. Small business education, outreach, and information access. 
Sec. 8. Studies on patent transactions, quality, and examination. 
Sec. 9. Improvements and technical corrections to the Leahy-Smith America In-
vents Act. 
Sec. 10. Effective date. 
SEC. 2. DEFINITIONS. 
In this Act: 
(1) DIRECTOR.—The term ‘‘Director’’ means the 
Under Secretary of Commerce for Intellectual Prop-
erty and Director of the United States Patent and 
Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
SEC. 3. PATENT INFRINGEMENT ACTIONS. 
(a) PLEADING REQUIREMENTS.— 
(1) AMENDMENT.—Chapter 29 of title 35, United 
States Code, is amended by inserting after section 281 
the following: 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00003
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘§ 281A. Pleading requirements for patent infringe-
ment actions 
‘‘(a) PLEADING REQUIREMENTS.—Except as provided 
in subsection (b), in a civil action in which a party asserts 
a claim for relief arising under any Act of Congress relating 
to patents, a party alleging infringement shall include in 
the initial complaint, counterclaim, or cross-claim for pat-
ent infringement, unless the information is not reasonably 
accessible to such party, the following: 
‘‘(1) An identification of each patent allegedly 
infringed. 
‘‘(2) An identification of each claim of each pat-
ent identified under paragraph (1) that is allegedly 
infringed. 
‘‘(3) For each claim identified under paragraph 
(2), an identification of each accused process, ma-
chine, manufacture, or composition of matter (re-
ferred to in this section as an ‘accused instrumen-
tality’) alleged to infringe the claim. 
‘‘(4) For each accused instrumentality identified 
under paragraph (3), an identification with particu-
larity, if known, of— 
‘‘(A) the name or model number of each ac-
cused instrumentality; or 
‘‘(B) if there is no name or model number, 
a description of each accused instrumentality. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00004
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(10) For each patent identified under para-
graph (1), whether a standard-setting body has spe-
cifically declared such patent to be essential, poten-
tially essential, or having potential to become essen-
tial to that standard-setting body, and whether the 
United States Government or a foreign government 
has imposed specific licensing requirements with re-
spect to such patent. 
‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—If in-
formation required to be disclosed under subsection (a) is 
not readily accessible to a party, that information may in-
stead be generally described, along with an explanation of 
why such undisclosed information was not readily acces-
sible, and of any efforts made by such party to access such 
information. 
‘‘(c) CONFIDENTIAL INFORMATION.—A party required 
to disclose information described under subsection (a) may 
file, under seal, information believed to be confidential, with 
a motion setting forth good cause for such sealing. If such 
motion is denied by the court, the party may seek to file 
an amended complaint. 
‘‘(d) EXEMPTION.—A civil action that includes a 
claim for relief arising under section 271(e)(2) shall not 
be subject to the requirements of subsection (a).’’. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00006
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(2) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, 
is amended by inserting after the item relating to sec-
tion 281 the following new item: 
‘‘281A. Pleading requirements for patent infringement actions.’’. 
(b) FEES AND OTHER EXPENSES.— 
(1) AMENDMENT.—Section 285 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 285. Fees and other expenses 
‘‘(a) AWARD.—The court shall award, to a prevailing 
party, reasonable fees and other expenses incurred by that 
party in connection with a civil action in which any party 
asserts a claim for relief arising under any Act of Congress 
relating to patents, unless the court finds that the position 
and conduct of the nonprevailing party or parties were rea-
sonably justified in law and fact or that special cir-
cumstances (such as severe economic hardship to a named 
inventor) make an award unjust. 
‘‘(b) CERTIFICATION AND RECOVERY.—Upon motion 
of any party to the action, the court shall require another 
party to the action to certify whether or not the other party 
will be able to pay an award of fees and other expenses 
if such an award is made under subsection (a). If a nonpre-
vailing party is unable to pay an award that is made 
against it under subsection (a), the court may make a party 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00007
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
that has been joined under section 299(d) with respect to 
such party liable for the unsatisfied portion of the award. 
‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac-
tion that asserts a claim for relief arising under any Act 
of Congress relating to patents against another party, and 
that subsequently unilaterally extends to such other party 
a covenant not to sue for infringement with respect to the 
patent or patents at issue, shall be deemed to be a nonpre-
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 cov-
enant was extended, to voluntarily dismiss the action or 
claim without a court order under Rule 41 of the Federal 
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 sub-
sections (f) and (g). 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00008
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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.— 
‘‘(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 alle-
gation of infringement of a patent claim, and in 
which the nonprevailing party alleging infringement 
is unable to pay the award of fees and other expenses, 
the court shall grant a motion by the prevailing party 
to join an interested party if such prevailing party 
shows that the nonprevailing party has no substantial 
interest in the subject matter at issue other than as-
serting such patent claim in litigation. 
‘‘(2) LIMITATION ON JOINDER.— 
‘‘(A) DISCRETIONARY DENIAL OF MOTION.— 
The court may deny a motion to join an inter-
ested party under paragraph (1) if— 
‘‘(i) the interested party is not subject 
to service of process; or 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00009
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(ii) joinder under paragraph (1) 
would deprive the court of subject matter ju-
risdiction or make venue improper. 
‘‘(B) REQUIRED DENIAL OF MOTION.—The 
court shall deny a motion to join an interested 
party under paragraph (1) if— 
‘‘(i) the interested party did not timely 
receive the notice required by paragraph 
(3); or 
‘‘(ii) within 30 days after receiving the 
notice required by paragraph (3), the inter-
ested party renounces, in writing and with 
notice to the court and the parties to the ac-
tion, any ownership, right, or direct finan-
cial interest (as described in paragraph (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 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00010
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
by the party who subsequently moves to join the inter-
ested party under paragraph (1), and shall include 
language that— 
‘‘(A) identifies the action, the parties there-
to, the patent or patents at issue, and the plead-
ing 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 award-
ed in the action against the party alleging 
infringement of the patent or patents 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 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00011
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
the parties to the action, any ownership, 
right, or direct financial interest (as de-
scribed in paragraph (4)) that the interested 
party has in the patent or patents at issue. 
‘‘(4) INTERESTED PARTY DEFINED.—In this sub-
section, the term ‘interested party’ means a person, 
other than the party alleging infringement, that— 
‘‘(A) is an assignee of the patent or patents 
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 receipt of 
compensation reasonably related to the pro-
vision of the legal representation; or 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00012
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(ii) a person whose sole financial in-
terest in the patent or patents at issue is 
ownership of an equity interest in the party 
alleging infringement, unless such person 
also has the right or ability to influence, di-
rect, 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 fol-
lowing new section: 
‘‘§ 299A. Discovery in patent infringement action 
‘‘(a) DISCOVERY IN PATENT INFRINGEMENT ACTION.— 
Except as provided in subsection (b), in a civil action aris-
ing 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 asserted in the complaint 
is required, discovery shall be limited, until such ruling is 
issued, to information necessary for the court to determine 
the meaning of the terms used in the patent claim, includ-
ing 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.—If, 
under any provision of Federal law (including the 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00013
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
amendments made by the Drug Price Competition 
and Patent Term Restoration Act of 1984 (Public 
Law 98–417)), resolution within a specified period of 
time of a civil action arising under any Act of Con-
gress relating to patents will necessarily affect the 
rights of a party with respect to the patent, the court 
shall permit discovery, in addition to the discovery 
authorized under subsection (a), before the ruling de-
scribed in subsection (a) is issued as necessary to en-
sure timely resolution of the action. 
‘‘(2) RESOLUTION OF MOTIONS.—When necessary 
to resolve a motion properly raised by a party before 
a ruling relating to the construction of terms de-
scribed in subsection (a) is issued, the court may 
allow limited discovery in addition to the discovery 
authorized under subsection (a) as necessary to resolve 
the motion. 
‘‘(3) SPECIAL CIRCUMSTANCES.—In special cir-
cumstances that would make denial of discovery a 
manifest injustice, the court may permit discovery, in 
addition to the discovery authorized under subsection 
(a), as necessary to prevent the manifest injustice.’’. 
(2) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00014
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 Congress 
that it is an abuse of the patent system and against public 
policy for a party to send out purposely evasive demand 
letters to end users alleging patent infringement. Demand 
letters sent should, at the least, include basic information 
about the patent in question, what is being infringed, and 
how it is being infringed. Any actions or litigation that 
stem from these types of purposely evasive demand letters 
to end users should be considered a fraudulent 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: 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00015
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking to 
establish willful infringement may not rely on evidence of 
pre-suit notification of infringement unless that notifica-
tion identifies with particularity the asserted patent, iden-
tifies the product or process accused, and explains with par-
ticularity, to the extent possible following a reasonable in-
vestigation or inquiry, how the product or process infringes 
one or more claims of the patent.’’; and 
(4) in the last undesignated paragraph, by strik-
ing ‘‘The court’’ and inserting ‘‘(d) EXPERT TESTI-
MONY.—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. 4. 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: 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00016
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(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 ad-
verse party the identity of each of the following: 
‘‘(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 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00017
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 
held by a publicly traded corporation, the disclosure 
shall satisfy the disclosure requirement if the informa-
tion identifies— 
‘‘(A) in the case of a partnership, the name 
of the partnership and the name and correspond-
ence address of each partner or other entity that 
holds more than a 5-percent share of that part-
nership; 
‘‘(B) in the case of a corporation, the name 
of the corporation, the location of incorporation, 
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 cor-
respondence address of that individual. 
‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PATENT 
AND TRADEMARK OFFICE.— 
‘‘(1) IN GENERAL.—A plaintiff required to sub-
mit information under subsection (b) or a subsequent 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00018
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
owner of the patent or patents at issue shall, not later 
than 90 days after any change in the assignee of the 
patent or patents at issue or an entity described 
under subparagraph (B) or (D) of subsection (b)(1), 
submit to the Patent and Trademark Office the up-
dated 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 increased 
damages under section 284 with respect to in-
fringing activities taking place during any pe-
riod of noncompliance with paragraph (1), un-
less 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 in-
curred to discover the updated assignee or entity 
described under paragraph (1), unless such sanc-
tions would be unjust. 
‘‘(e) DEFINITIONS.—In this section: 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00019
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(1) FINANCIAL INTEREST.—The term ‘financial 
interest’— 
‘‘(A) means— 
‘‘(i) with regard to a patent or patents, 
the right of a person to receive proceeds re-
lated to the assertion of the patent or pat-
ents, including a fixed or variable portion 
of such proceeds; and 
‘‘(ii) with regard to the plaintiff, direct 
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 inter-
ests in a mutual or common investment 
fund, unless the owner of such interest par-
ticipates 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. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00020
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(2) 
PROCEEDING.—The 
term 
‘proceeding’ 
means all stages of a civil action, including pretrial 
and trial proceedings and appellate review. 
‘‘(3) ULTIMATE PARENT ENTITY.— 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent en-
tity’ has the meaning given such term in section 
801.1(a)(3) of title 16, Code of Federal Regula-
tions, 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 chap-
ter 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 registration 
fee in an amount sufficient to recover the estimated costs 
of administering subsections (b) through (e) of section 290 
of title 35, United States Code, as added by subsection (a), 
to facilitate the collection and maintenance of the informa-
tion required by such subsections, and to ensure the timely 
disclosure of such information to the public. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00021
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(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 of this Act 
and shall apply to any action for which a complaint is 
filed on or after such effective date. 
SEC. 5. 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 ac-
tion against a covered customer related to infringement of 
a patent involving a covered product or process if the fol-
lowing 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 pat-
ent or patents related to the same covered product or 
process. 
‘‘(3) The covered customer agrees to be bound by 
any issues that the covered customer has in common 
with the covered manufacturer and are finally de-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00022
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
cided as to the covered manufacturer in an action de-
scribed in paragraph (2). 
‘‘(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 specifi-
cally identifies how the covered product or proc-
ess 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, sys-
tems, or components accused of infringement in the action. 
‘‘(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 manu-
facturer will not resolve a major issue in suit 
against the covered customer; or 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00023
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(B) the stay unreasonably prejudices and 
would be manifestly unjust to the party seeking 
to lift the stay. 
‘‘(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 motion 
under this subsection may only be made if the court 
in such separate action determines the showing re-
quired 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 manufac-
turer seeks or consents to entry of a consent judgment relat-
ing to one or more of the common issues that gave rise to 
the stay, or declines to prosecute through appeal a final de-
cision 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 covered customer with 
respect to one or more of such common issues based on a 
showing that such an outcome would unreasonably preju-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00024
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
dice and be manifestly unjust to the covered customer in 
light of the circumstances of the case. 
‘‘(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 section, 
or grant any motion to intervene, if otherwise permitted 
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 ‘cov-
ered manufacturer’ means a person that manufactures 
or supplies, or causes the manufacture or supply of, 
a covered product or process or a relevant part there-
of. 
‘‘(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 pat-
ents in dispute; or 
‘‘(B) implements a process alleged to in-
fringe the patent or patents in dispute.’’. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00025
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(b) CONFORMING AMENDMENT.—The table of sections 
for chapter 29 of title 35, United States Code, is 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 complaint 
is filed on or after the first day of the 30-day period that 
ends on that date. 
SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC-
OMMENDATIONS 
OF 
THE 
JUDICIAL 
CON-
FERENCE. 
(a) JUDICIAL CONFERENCE RULES AND PROCEDURES 
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 paragraph 
(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 proce-
dures shall include how and when payment for docu-
ment discovery in addition to the discovery of core 
documentary evidence is to occur, and what informa-
tion must be presented to demonstrate financial ca-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00026
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
pacity before permitting document discovery in addi-
tion to the discovery of core documentary evidence. 
(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 doc-
umentary 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 extent each 
party to the action may seek nondocumentary 
discovery as otherwise provided in the Federal 
Rules of Civil Procedure. 
(B) ELECTRONIC COMMUNICATION.—If the 
parties determine that the discovery of electronic 
communication is appropriate, whether such dis-
covery shall occur after the parties have ex-
changed initial disclosures and core documentary 
evidence and whether such discovery shall be in 
accordance with the following: 
(i) Any request for the production of 
electronic communication shall be specific 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00027
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
and may not be a general request for the 
production of information relating to a 
product or business. 
(ii) Each request shall identify the cus-
todian of the information requested, the 
search terms, and a time frame. The parties 
shall cooperate to identify the proper 
custodians, the proper search terms, and the 
proper time frame. 
(iii) A party may not submit produc-
tion requests to more than 5 custodians, un-
less 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. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00028
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(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 parties 
mutually agree otherwise, no party may be 
permitted additional document discovery 
unless such a party posts a bond, or pro-
vides other security, in an amount sufficient 
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 additional 
document discovery is excessive, irrelevant, 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00029
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
or otherwise abusive and may set limits on 
such additional document discovery. 
(iv) GOOD
CAUSE
MODIFICATION.—A 
court, upon motion and for good cause 
shown, may modify the requirements of sub-
paragraphs (A) and (B) and any definition 
under paragraph (3). Not later than 30 
days after the pretrial conference under 
Rule 16 of the Federal Rules of Civil Proce-
dure, the parties shall jointly submit any 
proposed modifications of the requirements 
of subparagraphs (A) and (B) and any defi-
nition under paragraph (3), unless the par-
ties do not agree, in which case each party 
shall submit any proposed modification of 
such party and a summary of the disagree-
ment 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 documentary 
evidence. The discovery of computer code 
shall occur after the parties have exchanged 
initial disclosures and other core documen-
tary evidence. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00030
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(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 relat-
ing to any patent claim at issue to be con-
strued 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— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00031
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(I) documents relating to the con-
ception of, reduction to practice of, and 
application for, the patent or patents 
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 poten-
tially invalidating prior art; 
(IV) documents relating to any li-
censing of, or other transfer of rights 
to, the patent or patents at issue before 
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; 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00032
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(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 complaint 
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 provided 
of the patent or patents at issue; and 
(ii) does not include computer code, ex-
cept 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 States 
Court of Federal Claims shall revise the applicable 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00033
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 re-
quired by this subsection during the 4-year pe-
riod 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 mod-
ify such rules and procedures following such 4- 
year period. 
(B) INITIAL MODIFICATIONS.—Before the ex-
piration of the 4-year period described in sub-
paragraph (A), the Judicial Conference may 
modify the requirements under this subsection— 
(i) by designating categories of ‘‘core 
documentary evidence’’, in addition to those 
designated under paragraph (3)(A), as the 
Judicial Conference determines to be appro-
priate and necessary; and 
(ii) as otherwise necessary to prevent a 
manifest injustice, the imposition of a re-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00034
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
quirement the costs of which clearly out-
weigh its benefits, or a result that could not 
reasonably have been intended by the Con-
gress. 
(b) JUDICIAL CONFERENCE PATENT CASE MANAGE-
MENT.—The Judicial Conference of the United States, using 
existing resources, shall develop case management proce-
dures to be implemented by the United States district courts 
and the United States Court of Federal Claims for any civil 
action arising under any Act of Congress relating to pat-
ents, including initial disclosure and early case manage-
ment 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 Pro-
cedure (relating to Complaint for Patent Infringe-
ment), effective on the date of the enactment of this 
Act. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00035
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(2) REVISED FORM.—The Supreme Court may 
prescribe a new form or forms setting out model alle-
gations 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 accused 
product or service meets each limitation of each as-
serted 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 1520(a) of title 11, 
United States Code, is amended— 
(A) in paragraph (3), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (4), by striking the period 
at the end and inserting ‘‘; and’’; and 
(C) by inserting at the end the following 
new paragraph: 
‘‘(5) section 365(n) applies to intellectual prop-
erty of which the debtor is a licensor or which the 
debtor has transferred.’’. 
(2) TRADEMARKS.— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00036
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(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 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00037
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(iii) by adding at the end the following 
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. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND IN-
FORMATION ACCESS. 
(a) SMALL BUSINESS EDUCATION AND OUTREACH.— 
(1) RESOURCES FOR SMALL BUSINESS.—Using 
existing resources, the Director shall develop edu-
cational resources for small businesses to address con-
cerns arising from patent infringement. 
(2) SMALL BUSINESS PATENT OMBUDSMAN.—The 
Patent Ombudsman Program established under sec-
tion 28 of the Leahy-Smith America Invents Act 
(Public Law 112–29; 125 Stat. 339; 35 U.S.C. 2 note) 
shall coordinate with the existing small business out-
reach programs of the Office, and the relevant offices 
at the Small Business Administration and the Minor-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00038
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
ity Business Development Agency, to provide edu-
cation and awareness on abusive patent litigation 
practices. The Director may give special consideration 
to the unique needs of small firms owned by disabled 
veterans, service-disabled veterans, women, and mi-
nority entrepreneurs in planning and executing the 
outreach 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 Di-
rector shall create a user-friendly section on the offi-
cial 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 Direc-
tor shall include— 
(A) information disclosed under subsections 
(b) and (d) of section 290 of title 35, United 
States Code, as added by section 4(a) of this Act; 
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 paragraph 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00039
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(1) shall be searchable by patent number, patent art 
area, and entity. 
SEC. 8. 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 Securities 
and Exchange Commission, the heads of other rel-
evant agencies, and interested parties, shall, using ex-
isting 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 oversight 
requirements that may be placed on the patent 
secondary market, including on the participants 
in such markets, to ensure that the market is a 
level playing field and that brokers in the market 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00040
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
have the requisite expertise and adhere to ethical 
business practices; and 
(D) to examine the requirements placed on 
other markets. 
(2) REPORT ON STUDY.—Not later than 1 year 
after the date of the enactment of this Act, the Direc-
tor shall submit a report to the Committee on the Ju-
diciary of the House of Representatives and the Com-
mittee 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 licensed 
and sold, and any litigation relating to the li-
censing or sale of such patents; 
(B) provides legislative and administrative 
recommendations on whether there should be re-
strictions placed on patents acquired from the 
United States Government; 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00041
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(C) examines whether or not each relevant 
agency maintains adequate records on the pat-
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 managing the 
patent portfolio of the agency. 
(2) REPORT
ON
STUDY.—Not later than 6 
months after the date of the enactment of this Act, the 
Director 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 conduct a study on patent ex-
amination at the Office and the technologies available 
to improve examination and improve patent quality. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00042
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(2) CONTENTS OF THE STUDY.—The study re-
quired under paragraph (1) shall include the fol-
lowing: 
(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 examina-
tion. 
(C) A description of how patents are classi-
fied. 
(D) An examination of procedures in place 
to prevent double patenting through filing by ap-
plicants 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. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00043
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(3) REPORT
ON
STUDY.—Not later than 6 
months 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 and the 
Committee on the Judiciary of the Senate a report on 
the findings and recommendations from the study re-
quired by this subsection, including recommendations 
for any changes to laws and regulations that will im-
prove the examination of patent applications and 
patent quality. 
(d) STUDY ON PATENT SMALL CLAIMS COURT.— 
(1) STUDY REQUIRED.— 
(A) IN GENERAL.—The Director of the Ad-
ministrative 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 existing re-
sources, conduct a study to examine the idea of 
developing a pilot program for patent small 
claims courts in certain judicial districts within 
the existing patent pilot program mandated by 
Public Law 111–349. 
(B) CONTENTS
OF
STUDY.—The study 
under subparagraph (A) shall examine— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00044
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(i) the number of and qualifications 
for judges that could serve on such small 
claims courts; 
(ii) how such small claims courts 
would be designated and the necessary cri-
teria for such designation; 
(iii) the costs that would be incurred 
for establishing, maintaining, and oper-
ating such a pilot program; and 
(iv) the steps that would be taken to 
ensure that the courts in the pilot program 
are not misused for abusive patent litiga-
tion. 
(2) REPORT ON STUDY.—Not later than 1 year 
after the date of the enactment of this Act, the Direc-
tor of the Administrative Office of the United States 
Courts 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 find-
ings and recommendations of the Director of the Ad-
ministrative 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 conduct 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00045
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 decep-
tive practices, impose a negative impact on the mar-
ketplace. 
(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 the 
Committee on the Judiciary of the Senate on the find-
ings 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 re-
cipient or anyone affiliated with the recipient is or 
may be infringing the patent. 
(f) STUDY ON BUSINESS METHOD PATENT QUALITY.— 
(1) GAO STUDY.—The Comptroller General of 
the United States shall conduct a study on the volume 
and nature of litigation involving business method 
patents. 
(2) CONTENTS OF STUDY.—The study required 
under paragraph (1) shall focus on examining the 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00046
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 6 
months 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 and the 
Committee on the Judiciary of the Senate a report on 
the findings and recommendations from the study re-
quired by this subsection, including recommendations 
for any changes to laws or regulations that the Comp-
troller General considers appropriate on the basis of 
the study. 
SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 
THE LEAHY-SMITH AMERICA INVENTS ACT. 
(a) REPEAL OF CIVIL ACTION TO OBTAIN A PAT-
ENT.— 
(1) REPEAL.—Section 145 of title 35, United 
States Code, is repealed. 
(2) CONFORMING AMENDMENTS.— 
(A) FEDERAL CIRCUIT JURISDICTION.—Sec-
tion 1295(a)(4) of title 28, United States Code, 
is amended— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00047
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(i) in subparagraph (A), by striking 
‘‘except that an applicant or a party’’ and 
all that follows through the end of the sub-
paragraph and inserting the following: ‘‘ex-
cept that a party to a derivation proceeding 
may also have remedy by civil action under 
section 146 of title 35; an appeal under this 
subparagraph of a decision of the Board 
with respect to a derivation proceeding shall 
waive the right of such party to proceed 
under section 146 of title 35;’’; and 
(ii) in subparagraph (C), by striking 
‘‘section 145, 146, or’’ and inserting ‘‘sec-
tion 146 or’’. 
(B) FEDERAL
CIRCUIT
APPEAL.—Section 
141(a) of title 35, United States Code, is amend-
ed— 
(i) by striking ‘‘may appeal the 
Board’s decision to’’ and inserting ‘‘may 
appeal the Board’s decision only to’’; and 
(ii) by striking the second sentence. 
(C) ADJUSTMENT OF PATENT TERM.—Sec-
tion 154(b)(1)(A)(iii) of title 35, United States 
Code, is amended by striking ‘‘section 141, 145, 
or 146’’ and inserting ‘‘section 141 or 146’’. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00048
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(D) CLERICAL AMENDMENT.—The table of 
sections for chapter 13 of title 35, United States 
Code, is amended by repealing the item relating 
to section 145. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and apply to any proceeding in 
which a decision is made by the Patent Trial and Ap-
peal Board on or after such date of enactment. 
(b) 
POST-GRANT
REVIEW
AMENDMENT.—Section 
325(e)(2) of title 35, United States Code is amended by 
striking ‘‘or reasonably could have raised’’. 
(c) 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— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00049
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
‘‘(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 his-
tory 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-
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00050
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 his-
tory 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 expiration 
of the 90-day period beginning on the date of the en-
actment of this Act, and shall apply to any pro-
ceeding under chapter 31 or 32 of title 35, United 
States Code, as the case may be, for which the peti-
tion for review is filed on or after such effective date. 
(d) CODIFICATION OF THE DOUBLE-PATENTING DOC-
TRINE FOR FIRST-INVENTOR-TO-FILE PATENTS.— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00051
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(1) AMENDMENT.—Chapter 10 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing 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 deter-
mining 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 before the 
effective filing date of the claimed invention of the sec-
ond patent; 
‘‘(2) either— 
‘‘(A) the first patent and second patent 
name the same 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 were deemed 
to be, effectively filed under section 102(d) before 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00052
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
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 regulations 
shall apply to any disclaimer filed after a patent has 
issued. A disclaimer, when filed, shall be considered 
for the purpose of determining the validity of the pat-
ent under section 106 of title 35, United States Code. 
(3) CONFORMING AMENDMENT.—The table of sec-
tions 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 non-
statutory, double-patenting ground. 
(5) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00053
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
enactment of this Act and shall apply to a patent 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). 
(e) 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. 
(2) AUTHORITY
TO
WAIVE
FEE.—Subject to 
available resources, the Director may waive payment 
of a filing fee for a transitional proceeding described 
under section 18(a) of the Leahy-Smith America In-
vents Act (35 U.S.C. 321 note). 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00054
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(f) CLARIFICATION OF LIMITS ON PATENT TERM AD-
JUSTMENT.— 
(1) AMENDMENTS.—Section 154(b)(1)(B) of title 
35, United States Code, is amended— 
(A) in the matter preceding clause (i), by 
striking ‘‘not including—’’ and inserting ‘‘the 
term of the patent shall be extended 1 day for 
each day after the end of that 3-year period until 
the patent is issued, not including—’’; 
(B) in clause (i), by striking ‘‘consumed by 
continued examination of the application re-
quested by the applicant’’ and inserting ‘‘con-
sumed after continued examination of the appli-
cation is requested by the applicant’’; 
(C) in clause (iii), by striking the comma at 
the end and inserting a period; and 
(D) by striking the matter following clause 
(iii). 
(2) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and apply to any patent appli-
cation or patent that is pending on, or filed on or 
after, such date of enactment. 
(g) CLARIFICATION OF JURISDICTION.— 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00055
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(1) IN GENERAL.—The Federal interest in pre-
venting inconsistent final judicial determinations as 
to the legal force or effect of the claims in a patent 
presents a substantial Federal issue that is important 
to the Federal system as a whole. 
(2) APPLICABILITY.—Paragraph (1)— 
(A) shall apply to all cases filed on or after, 
or pending on, the date of the enactment of this 
Act; and 
(B) shall not apply to a case in which a 
Federal court has issued a ruling on whether the 
case or a claim arises under any Act of Congress 
relating to patents or plant variety protection 
before the date of the enactment of this Act. 
(h) PATENT PILOT PROGRAM IN CERTAIN DISTRICT 
COURTS DURATION.— 
(1) DURATION.—Section 1(c) of Public Law 
111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is 
amended to read as follows: 
‘‘(c) DURATION.—The program established under sub-
section (a) shall be maintained using existing resources, 
and shall terminate 20 years after the end of the 6-month 
period described in subsection (b).’’. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00056
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(2) EFFECTIVE DATE.—The amendment made by 
paragraph (1) shall take effect on the date of the en-
actment of this Act. 
(i) TECHNICAL CORRECTIONS.— 
(1) NOVELTY.— 
(A) AMENDMENT.—Section 102(b)(1)(A) of 
title 35, United States Code, is amended by 
striking ‘‘the inventor or joint inventor or by an-
other’’ and inserting ‘‘the inventor or a joint in-
ventor or another’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
3(b)(1) of the Leahy-Smith America Invents Act 
(Public Law 112–29). 
(2) INVENTOR’S OATH OR DECLARATION.— 
(A) AMENDMENT.—The second sentence of 
section 115(a) of title 35, United States Code, is 
amended— 
(i) by striking ‘‘Except as otherwise 
provided’’ and inserting ‘‘Except for an ap-
plication filed under section 118 or as oth-
erwise provided’’; and 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00057
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(ii) by striking ‘‘shall execute’’ and in-
serting ‘‘may be required by the Director to 
execute’’. 
(B) EFFECTIVE
DATE.—The amendments 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
4(a)(1) of the Leahy-Smith America Invents Act 
(Public Law 112–29). 
(3) ASSIGNEE FILERS.— 
(A) BENEFIT
OF
EARLIER
FILING
DATE; 
RIGHT OF PRIORITY.—Section 119(e)(1) of title 
35, United States Code, is amended, in the first 
sentence, by striking ‘‘by an inventor or inven-
tors named’’ and inserting ‘‘that names the in-
ventor or a joint inventor’’. 
(B) BENEFIT OF EARLIER FILING DATE IN 
THE UNITED STATES.—Section 120 of title 35, 
United States Code, is amended, in the first sen-
tence, by striking ‘‘names an inventor or joint 
inventor’’ and inserting ‘‘names the inventor or 
a joint inventor’’. 
(C) EFFECTIVE
DATE.—The amendments 
made by this paragraph shall take effect on the 
date of the enactment of this Act and shall apply 
to any patent application, and any patent 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00058
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
issuing from such application, that is filed on or 
after September 16, 2012. 
(4) DERIVED PATENTS.— 
(A) AMENDMENT.—Section 291(b) of title 
35, United States Code, is amended by striking 
‘‘or joint inventor’’ and inserting ‘‘or a joint in-
ventor’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
3(h)(1) of the Leahy-Smith America Invents Act 
(Public Law No. 112–29). 
(5) SPECIFICATION.—Notwithstanding section 
4(e) of the Leahy-Smith America Invents Act (Public 
Law 112–29; 125 Stat. 297), the amendments made 
by subsections (c) and (d) of section 4 of such Act 
shall apply to any proceeding or matter that is pend-
ing on, or filed on or after, the date of the enactment 
of this Act. 
(6) TIME LIMIT FOR COMMENCING MISCONDUCT 
PROCEEDINGS.— 
(A) AMENDMENT.—The fourth sentence of 
section 32 of title 35, United States Code, is 
amended by striking ‘‘1 year’’ and inserting ‘‘2 
years’’. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00059
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
(ii) by redesignating paragraphs (8) 
and (9) as paragraphs (7) and (8), respec-
tively. 
(B) EFFECTIVE
DATE.—The amendments 
made by subparagraph (A) shall be effective as 
if included in title II of the Patent Law Treaties 
Implementation Act of 2012 (Public Law 112– 
21). 
SEC. 10. EFFECTIVE DATE. 
Except as otherwise provided in this Act, the provi-
sions of this Act shall take effect on the date of the enact-
ment of this Act, and shall apply to any patent issued, or 
any action filed, on or after that date. 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00061
Fmt 6652
Sfmt 6203
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS
Union Calendar No. 200 
113TH CONGRESS 
1ST SESSION 
H. R. 3309 
[Report No. 113–279] 
A BILL 
To amend title 35, United States Code, and the 
Leahy-Smith America Invents Act to make im-
provements and technical corrections, and for 
other purposes. 
DECEMBER 2, 2013 
Reported with an amendment, committed to the Com-
mittee of the Whole House on the State of the Union, 
and ordered to be printed 
VerDate Mar 15 2010 
21:53 Dec 02, 2013
Jkt 039200
PO 00000
Frm 00062
Fmt 6651
Sfmt 6651
E:\BILLS\H3309.RH
H3309
emcdonald on DSK67QTVN1PROD with BILLS