(10) The item relating to section 146 in the table of 
sections for chapter 13 is amended to read as follows: 
‘‘146. Civil action in case of derivation proceeding.’’. 
(11) CERTAIN APPEALS.—Subsection 1295(a)(4)(A) of 
title 28, United States Code, is amended to read as follows: 
‘‘(A) the Patent Trial and Appeal Board of 
the United States Patent and Trademark Office 
with respect to patent applications, derivation 
proceedings, and post-grant review proceedings, 
at the instance of an applicant for a patent or 
any party to a patent interference (commenced 
before the effective date provided in section 3(k) 
of the Patent Reform Act of 2007), derivation 
proceeding, or post-grant review proceeding, and 
any such appeal shall waive any right of such 
applicant or party to proceed under section 145 
or 146 of title 35;’’. 
(k) EFFECTIVE DATE.— 
(1) IN
GENERAL.—The amendments made by 
this section— 
(A) shall take effect 90 days after the date 
on which the President transmits to the Congress 
a finding that major patenting authorities have 
adopted a grace period having substantially the 
same effect as that contained under the amend-
ments made by this section; and 
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(B) shall apply to all applications for pat-
ent that are filed on or after the effective date 
under subparagraph (A). 
(2) DEFINITIONS.—In this subsection: 
(A) MAJOR PATENTING AUTHORITIES.—The 
term ‘‘major patenting authorities’’ means at 
least the patenting authorities in Europe and 
Japan. 
(B) GRACE PERIOD.—The term ‘‘grace pe-
riod’’ means the 1-year period ending on the ef-
fective filing date of a claimed invention, during 
which disclosures of the subject matter by the in-
ventor or a joint inventor, or by others who ob-
tained the subject matter disclosed directly or in-
directly from the inventor or a joint inventor, do 
not qualify as prior art to the claimed invention. 
(C) EFFECTIVE
FILING
DATE.—The term 
‘‘effective filing date of a claimed invention’’ 
means, with respect to a patenting authority in 
another country, a date equivalent to the effective 
filing date of a claimed invention as defined in 
section 100(h) of title 35, United States Code, as 
added by subsection (a) of this section. 
(l) REVIEW EVERY 7 YEARS.—Not later than the end 
of the 7-year period beginning on the effective date under 
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subsection (k), and the end of every 7-year period thereafter, 
the Under Secretary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark 
Office (in this subsection referred to as the ‘‘Director’’) 
shall— 
(1) conduct a study on the effectiveness and effi-
ciency of the amendments made by this section; 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 rec-
ommendations the Director has on amendments to the 
law and other recommendations of the Director with 
respect to the first-to-file system implemented under 
the amendments made by this section. 
SEC. 4. INVENTOR’S OATH OR DECLARATION. 
(a) INVENTOR’S OATH OR DECLARATION.— 
(1) IN GENERAL.—Section 115 is amended to 
read as follows: 
‘‘§ 115. Inventor’s oath or declaration 
‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR 
DECLARATION.—An application for patent that is filed 
under section 111(a), that commences the national stage 
under section 363, or that is filed by an inventor for an 
invention for which an application has previously been filed 
under this title by that inventor shall include, or be amend-
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ed to include, the name of the inventor of any claimed in-
vention in the application. Except as otherwise provided 
in this section, each individual who is the inventor or a 
joint inventor of a claimed invention in an application for 
patent shall execute an oath or declaration in connection 
with the application. 
‘‘(b) REQUIRED STATEMENTS.—An oath or declara-
tion by an individual under subsection (a) shall contain 
statements that— 
‘‘(1) the application was made or was authorized 
to be made by individual; and 
‘‘(2) the individual believes himself or herself to 
be the original inventor or an original joint inventor 
of a claimed invention in the application. 
‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may 
specify additional information relating to the inventor and 
the invention that is required to be included in an oath 
or declaration under subsection (a). 
‘‘(d) SUBSTITUTE STATEMENT.— 
‘‘(1) IN GENERAL.—In lieu of executing an oath 
or declaration under subsection (a), the applicant for 
patent may provide a substitute statement under the 
circumstances described in paragraph (2) and such 
additional circumstances that the Director may speci-
fy by regulation. 
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‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute 
statement under paragraph (1) is permitted with re-
spect to any individual who— 
‘‘(A) is unable to file the oath or declaration 
under subsection (a) because the individual— 
‘‘(i) is deceased; 
‘‘(ii) is under legal incapacity; or 
‘‘(iii) cannot be found or reached after 
diligent effort; or 
‘‘(B) is under an obligation to assign the 
invention and has refused to make the oath or 
declaration required under subsection (a). 
‘‘(3) CONTENTS.—A substitute statement under 
this subsection shall— 
‘‘(A) identify the individual with respect to 
whom the statement applies; 
‘‘(B) set forth the circumstances rep-
resenting the permitted basis for the filing of the 
substitute statement in lieu of the oath or dec-
laration under subsection (a); and 
‘‘(C) contain any additional information, 
including any showing, required by the Director. 
‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT 
OF RECORD.—An individual who is under an obligation 
of assignment of an application for patent may include the 
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required statements under subsections (b) and (c) in the as-
signment executed by the individual, in lieu of filing such 
statements separately. 
‘‘(f) TIME FOR FILING.—A notice of allowance under 
section 151 may be provided to an applicant for patent only 
if the applicant for patent has filed each required oath or 
declaration under subsection (a) or has filed a substitute 
statement under subsection (d) or recorded an assignment 
meeting the requirements of subsection (e). 
‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE-
QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—The 
requirements under this section shall not apply to an indi-
vidual with respect to an application for patent in which 
the individual is named as the inventor or a joint inventor 
and that claims the benefit of an earlier filing date under 
section 120 or 365(c), if— 
‘‘(1) an oath or declaration meeting the require-
ments of subsection (a) was executed by the indi-
vidual and was filed in connection with the earlier- 
filed application; 
‘‘(2) a substitute statement meeting the require-
ments of subsection (d) was filed in the earlier filed 
application with respect to the individual; or 
‘‘(3) an assignment meeting the requirements of 
subsection (e) was executed with respect to the earlier- 
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filed application by the individual and was recorded 
in connection with the earlier-filed application. 
‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; 
FILING ADDITIONAL STATEMENTS.— 
‘‘(1) IN GENERAL.—Any person making a state-
ment required under this section may withdraw, re-
place, or otherwise correct the statement at any time. 
If a change is made in the naming of the inventor re-
quiring the filing of 1 or more additional statements 
under this section, such additional statements shall be 
filed in accordance with regulations established by the 
Director. 
‘‘(2) SUPPLEMENTAL
STATEMENTS
NOT
RE-
QUIRED.—If an individual has executed an oath or 
declaration under subsection (a) or an assignment 
meeting the requirements of subsection (e) with re-
spect to an application for patent, the Director may 
not thereafter require that individual to make any 
additional oath, declaration, or other statement equiv-
alent to those required by this section in connection 
with the application for patent or any patent issuing 
thereon. 
‘‘(3) SAVINGS CLAUSE.—No patent shall be in-
valid or unenforceable based upon the failure to com-
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ply with a requirement under this section if the fail-
ure is remedied as provided under paragraph (1). 
‘‘(i) ACKNOWLEDGMENT
OF PENALTIES.—Any dec-
laration or statement filed under this section must contain 
an acknowledgment that any willful false statement is pun-
ishable by fine or imprisonment, or both, under section 
1001 of title 18.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 is amended by striking ‘‘If a di-
visional application’’ and all that follows through 
‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL APPLI-
CATIONS.—Section 111(a) is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
(B) in the heading for paragraph (3), by 
striking ‘‘AND OATH’’; and 
(C) by striking ‘‘and oath’’ each place it ap-
pears. 
(4) CONFORMING AMENDMENT.—The item relat-
ing to section 115 in the table of sections for chapter 
11 is amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) FILING BY OTHER THAN INVENTOR.—Section 118 
is amended to read as follows: 
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‘‘§ 118. Filing by other than inventor 
‘‘A person to whom the inventor has assigned or is 
under an obligation to assign the invention may make an 
application for patent. A person who otherwise shows suffi-
cient proprietary interest in the matter may make an ap-
plication for patent on behalf of and as agent for the inven-
tor on proof of the pertinent facts and a showing that such 
action is appropriate to preserve the rights of the parties. 
If the Director grants a patent on an application filed 
under this section by a person other than the inventor, the 
patent shall be granted to the real party in interest and 
upon such notice to the inventor as the Director considers 
to be sufficient.’’. 
(c) SPECIFICATION.—Section 112 is amended— 
(1) in the first paragraph—— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
and 
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; and 
(2) in the second paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(b) CONCLUSION.—The specification’’; 
and 
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(B) by striking ‘‘applicant regards as his 
invention’’ and inserting ‘‘inventor or a joint in-
ventor regards as the invention’’; 
(3) in the third paragraph, by striking ‘‘A 
claim’’ and inserting ‘‘(c) FORM.—A claim’’; 
(4) in the fourth paragraph, by striking ‘‘Subject 
to the following paragraph,’’ and inserting ‘‘(d) REF-
ERENCE
IN DEPENDENT FORMS.—Subject to sub-
section (e),’’; 
(5) in the fifth paragraph, by striking ‘‘A claim’’ 
and inserting ‘‘(e) REFERENCE
IN MULTIPLE DE-
PENDENT FORM.—A claim’’; and 
(6) in the last paragraph, by striking ‘‘An ele-
ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR A 
COMBINATION.—An element’’. 
(d) 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 
(2) shall apply to any application for patent, or 
application for reissue patent, that is filed on or after 
the effective date under paragraph (1). 
SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 
(a) DAMAGES.—Section 284 is amended— 
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(1) in the first paragraph, by striking ‘‘Upon’’ 
and inserting ‘‘(a) IN GENERAL.—Upon’’; 
(2) by designating the second undesignated para-
graph as subsection (c); 
(3) by inserting after subsection (a) (as des-
ignated by paragraph (1) of this subsection) the fol-
lowing: 
‘‘(b) REASONABLE ROYALTY.— 
‘‘(1) IN GENERAL.— An award pursuant to sub-
section (a) that is based upon a reasonable royalty 
shall be determined in accordance with this sub-
section. Based on the facts of the case, the court shall 
determine whether paragraph (2), (3), or (5) will be 
used by the court or the jury in calculating a reason-
able royalty. The court shall identify the factors that 
are relevant to the determination of a reasonable roy-
alty under the applicable paragraph, and the court or 
jury, as the case may be, shall consider only those fac-
tors in making the determination. 
‘‘(2) RELATIONSHIP OF DAMAGES TO CONTRIBU-
TIONS OVER PRIOR ART.—The court shall conduct an 
analysis to ensure that a reasonable royalty under 
subsection (a) is applied only to that economic value 
properly attributable to the patent’s specific contribu-
tion over the prior art. The court shall exclude from 
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the analysis the economic value properly attributable 
to the prior art, and other features or improvements, 
whether or not themselves patented, that contribute 
economic value to the infringing product or process. 
‘‘(3) ENTIRE MARKET VALUE.—Unless the claim-
ant shows that the patent’s specific contribution over 
the prior art is the predominant basis for market de-
mand for an infringing product or process, damages 
may not be based upon the entire market value of the 
products or processes involved that satisfy that de-
mand. 
‘‘(4) COMBINATION
INVENTIONS.—For purposes 
of paragraphs (2) and (3), in the case of a combina-
tion invention the elements of which are present indi-
vidually in the prior art, the patentee may show that 
the contribution over the prior art may include the 
value of the additional function resulting from the 
combination, as well as the enhanced value, if any, of 
some or all of the prior art elements resulting from 
the combination. 
‘‘(5) OTHER FACTORS.—In determining a rea-
sonable royalty, the court may also consider, or direct 
the jury to consider, the terms of any nonexclusive 
marketplace licensing of the invention, where appro-
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priate, as well as any other relevant factors under ap-
plicable law.’’; 
(4) by amending subsection (c) (as designated by 
paragraph (1) of this subsection) to read as follows: 
‘‘(c) WILLFUL INFRINGEMENT.— 
‘‘(1) INCREASED DAMAGES.—A court that has 
determined that the infringer has willfully infringed 
a patent or patents may increase the damages up to 
three times the amount of damages found or assessed 
under subsection (a), except that increased damages 
under this paragraph shall not apply to provisional 
rights under section 154(d). 
‘‘(2) PERMITTED GROUNDS FOR WILLFULNESS.— 
A court may find that an infringer has willfully in-
fringed a patent only if the patent owner presents 
clear and convincing evidence that— 
‘‘(A) after receiving written notice from the 
patentee— 
‘‘(i) alleging acts of infringement in a 
manner sufficient to give the infringer an 
objectively reasonable apprehension of suit 
on such patent, and 
‘‘(ii) identifying with particularity 
each claim of the patent, each product or 
process that the patent owner alleges in-
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fringes the patent, and the relationship of 
such product or process to such claim, 
the infringer, after a reasonable opportunity to 
investigate, thereafter performed one or more of 
the alleged acts of infringement; 
‘‘(B) the infringer intentionally copied the 
patented invention with knowledge that it was 
patented; or 
‘‘(C) after having been found by a court to 
have infringed that patent, the infringer engaged 
in conduct that was not colorably different from 
the conduct previously found to have infringed 
the patent, and that resulted in a separate find-
ing of infringement of the same patent. 
‘‘(3) LIMITATIONS
ON
WILLFULNESS.—(A) A 
court may not find that an infringer has willfully in-
fringed a patent under paragraph (2) for any period 
of time during which the infringer had an informed 
good faith belief that the patent was invalid or unen-
forceable, or would not be infringed by the conduct 
later shown to constitute infringement of the patent. 
‘‘(B) An informed good faith belief within the 
meaning of subparagraph (A) may be established 
by— 
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‘‘(i) reasonable reliance on advice of coun-
sel; 
‘‘(ii) evidence that the infringer sought to 
modify its conduct to avoid infringement once it 
had discovered the patent; or 
‘‘(iii) other evidence a court may find suffi-
cient to establish such good faith belief. 
‘‘(C) The decision of the infringer not to present 
evidence of advice of counsel is not relevant to a deter-
mination of willful infringement under paragraph 
(2). 
‘‘(4) LIMITATION ON PLEADING.—Before the date 
on which a court determines that the patent in suit 
is not invalid, is enforceable, and has been infringed 
by the infringer, a patentee may not plead and a 
court may not determine that an infringer has will-
fully infringed a patent. The court’s determination of 
an infringer’s willfulness shall be made without a 
jury.’’; and 
(5) in the third undesignated paragraph, by 
striking ‘‘The court’’ and inserting ‘‘(d) EXPERT TES-
TIMONY.—The court’’. 
(b) DEFENSE TO INFRINGEMENT BASED ON EARLIER 
INVENTOR.—Section 273 is amended— 
(1) in subsection (a)— 
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(A) in paragraph (1)— 
(i) by striking ‘‘of a method’’; and 
(ii) by striking ‘‘review period;’’ and 
inserting ‘‘review period; and’’; 
(B) in paragraph (2)(B), by striking the 
semicolon at the end and inserting a period; and 
(C) by striking paragraphs (3) and (4); 
(2) in subsection (b)— 
(A) in paragraph (1)— 
(i) by striking ‘‘for a method’’; and 
(ii) by striking ‘‘at least 1 year before 
the effective filing date of such patent, and’’ 
and all that follows through the period and 
inserting ‘‘and commercially used, or made 
substantial preparations for commercial use 
of, the subject matter before the effective fil-
ing date of the claimed invention.’’; 
(B) in paragraph (2)— 
(i) by striking ‘‘The sale or other dis-
position of a useful end product produced 
by a patented method’’ and inserting ‘‘The 
sale or other disposition of subject matter 
that qualifies for the defense set forth in this 
section’’; and 
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(ii) by striking ‘‘a defense under this 
section with respect to that useful end re-
sult’’ and inserting ‘‘such defense’’; 
(C) in paragraph (3)— 
(i) by striking subparagraph (A); and 
(ii) by redesignating subparagraphs 
(B) and (C) as subparagraphs (A) and (B), 
respectively; and 
(D) in paragraph (7), by striking ‘‘of the 
patent’’ and inserting ‘‘of the claimed inven-
tion’’; and 
(3) by amending the heading to read as follows: 
‘‘§ 273. Special defenses to and exemptions from in-
fringement’’. 
(c) TABLE OF SECTIONS.—The item relating to section 
273 in the table of sections for chapter 28 is amended to 
read as follows: 
‘‘273. Special defenses to and exemptions from infringement.’’. 
(d) EFFECTIVE DATE.—The amendments made by this 
section shall apply to any civil action commenced on or 
after the date of the enactment of this Act. 
(e) REVIEW EVERY 7 YEARS.—Not later than the end 
of the 7-year period beginning on the date of the enactment 
of this Act, and the end of every 7-year period thereafter, 
the Under Secretary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark 
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Office (in this subsection referred to as the ‘‘Director’’) 
shall— 
(1) conduct a study on the effectiveness and effi-
ciency of the amendments made by this section; 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 rec-
ommendations the Director has on amendments to the 
law and other recommendations of the Director with 
respect to the right of the inventor to obtain damages 
for patent infringement. 
SEC. 6. POST-GRANT PROCEDURES AND OTHER QUALITY 
ENHANCEMENTS. 
(a) CITATION OF PRIOR ART.— 
(1) IN GENERAL.—Section 301 is amended to 
read as follows: 
‘‘§ 301. Citation of prior art 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a 
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) written statements of the patent owner filed 
in a proceeding before a Federal court or the Patent 
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and Trademark Office in which the patent owner 
takes a position on the scope of one or more patent 
claims. 
‘‘(b) SUBMISSIONS PART OF OFFICIAL FILE.—If the 
person citing prior art or written submissions under sub-
section (a) explains in writing the pertinence and manner 
of applying the prior art or written submissions to at least 
one claim of the patent, the citation of the prior art or writ-
ten submissions (as the case may be) and the explanation 
thereof shall become a part of the official file of the patent. 
‘‘(c) PROCEDURES FOR WRITTEN STATEMENTS.— 
‘‘(1) SUBMISSION OF ADDITIONAL MATERIALS.— 
A party that submits written statements under sub-
section (a)(2) in a proceeding shall include any other 
documents, pleadings, or evidence from the proceeding 
that address the patent owner’s statements or the 
claims addressed by the written statements. 
‘‘(2) LIMITATION
ON
USE
OF
STATEMENTS.— 
Written statements submitted under subsection (a)(2) 
shall not be considered for any purpose other than to 
determine the proper meaning of the claims that are 
the subject of the request in a proceeding ordered pur-
suant to section 304 or 313. Any such written state-
ments, and any materials submitted under paragraph 
(1), that are subject to an applicable protective order 
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shall be redacted to exclude information subject to the 
order. 
‘‘(d) IDENTITY WITHHELD.—Upon the written request 
of the person citing prior art or written statements under 
subsection (a), the person’s identity shall be excluded from 
the patent file and kept confidential.’’. 
(b) REEXAMINATION.—Section 303(a) is amended to 
read as follows: 
‘‘(a) Within three months after the owner of a patent 
files a request for reexamination under section 302, the Di-
rector shall determine whether a substantial new question 
of patentability affecting any claim of the patent concerned 
is raised by the request, with or without consideration of 
other patents or printed publications. On the Director’s own 
initiative, and at any time, the Director may determine 
whether a substantial new question of patentability is 
raised by patents and publications discovered by the Direc-
tor, is cited under section 301, or is cited by any person 
other than the owner of the patent under section 302 or 
section 311. The existence of a substantial new question of 
patentability is not precluded by the fact that a patent or 
printed publication was previously cited by or to the Office 
or considered by the Office.’’. 
(c) CONDUCT OF INTER PARTES PROCEEDINGS.—Sec-
tion 314 is amended— 
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(1) in the first sentence of subsection (a), by 
striking ‘‘conducted according to the procedures estab-
lished for initial examination under the provisions of 
sections 132 and 133’’ and inserting ‘‘heard by an 
administrative patent judge in accordance with pro-
cedures which the Director shall establish’’; 
(2) in subsection (b), by striking paragraph (2) 
and inserting the following: 
‘‘(2) The third-party requester shall have the oppor-
tunity to file written comments on any action on the merits 
by the Office in the inter partes reexamination proceeding, 
and on any response that the patent owner files to such 
an action, if those written comments are received by the 
Office within 60 days after the date of service on the third- 
party requester of the Office action or patent owner re-
sponse, as the case may be.’’; and 
(3) by adding at the end the following: 
‘‘(d) ORAL HEARING.—At the request of a third party 
requestor or the patent owner, the administrative patent 
judge shall conduct an oral hearing, unless the judge finds 
cause lacking for such hearing.’’. 
(d) ESTOPPEL.—Section 315(c) is amended by strik-
ing ‘‘or could have raised’’. 
(e) REEXAMINATION PROHIBITED AFTER DISTRICT 
COURT DECISION.—Section 317(b) is amended— 
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(1) in the subsection heading, by striking ‘‘FINAL 
DECISION’’ and inserting ‘‘DISTRICT COURT DECI-
SION’’; and 
(2) by striking ‘‘Once a final decision has been 
entered’’ and inserting ‘‘Once the judgment of the dis-
trict court has been entered’’. 
(f) POST-GRANT OPPOSITION PROCEDURES.— 
(1) IN GENERAL.—Part III is amended by add-
ing at the end the following new chapter: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
PROCEDURES 
‘‘Sec. 
‘‘321. Petition for post-grant review. 
‘‘322. Timing and bases of petition. 
‘‘323. Requirements of petition. 
‘‘324. Prohibited filings. 
‘‘325. Submission of additional information; showing of sufficient grounds. 
‘‘326. Conduct of post-grant review proceedings. 
‘‘327. Patent owner response. 
‘‘328. Proof and evidentiary standards. 
‘‘329. Amendment of the patent. 
‘‘330. Decision of the Board. 
‘‘331. Effect of decision. 
‘‘332. Settlement. 
‘‘333. Relationship to other pending proceedings. 
‘‘334. Effect of decisions rendered in civil action on post-grant review proceedings. 
‘‘335. Effect of final decision on future proceedings. 
‘‘336. Appeal. 
‘‘§ 321. Petition for post-grant review 
‘‘Subject to sections 322, 324, 332, and 333, a person 
who is not the patent owner may file with the Office a peti-
tion for cancellation seeking to institute a post-grant review 
proceeding to cancel as unpatentable any claim of a patent 
on any ground that could be raised under paragraph (2) 
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or (3) of section 282(b) (relating to invalidity of the patent 
or any claim). The Director shall establish, by regulation, 
fees to be paid by the person requesting the proceeding, in 
such amounts as the Director determines to be reasonable. 
‘‘§ 322. Timing and bases of petition 
‘‘A post-grant proceeding may be instituted under this 
chapter pursuant to a cancellation petition filed under sec-
tion 321 only if— 
‘‘(1) the petition is filed not later than 12 
months after the grant of the patent or issuance of a 
reissue patent, as the case may be; or 
‘‘(2) the patent owner consents in writing to the 
proceeding. 
‘‘§ 323. Requirements of petition 
‘‘A cancellation petition filed under section 321 may 
be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 321; 
‘‘(2) the petition identifies the cancellation peti-
tioner; and 
‘‘(3) the petition sets forth in writing the basis 
for the cancellation, identifying each claim challenged 
and providing such information as the Director may 
require by regulation, and includes copies of patents 
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and printed publications that the cancellation peti-
tioner relies upon in support of the petition; and 
‘‘(4) the petitioner provides copies of those docu-
ments to the patent owner or, if applicable, the des-
ignated representative of the patent owner. 
‘‘§ 324. Prohibited filings 
‘‘A post-grant review proceeding may not be instituted 
under section 322 if the petition for cancellation requesting 
the proceeding identifies the same cancellation petitioner 
and the same patent as a previous petition for cancellation 
filed under such section. 
‘‘§ 325. Submission of additional information; showing 
of sufficient grounds 
‘‘(a) IN GENERAL.—The cancellation petitioner shall 
file such additional information with respect to the petition 
as the Director may require. For each petition submitted 
under section 321, the Director shall determine if the writ-
ten statement, and any evidence submitted with the request, 
establish that a substantial question of patentability exists 
for at least one claim in the patent. The Director may ini-
tiate a post-grant review proceeding if the Director deter-
mines that the information presented provides sufficient 
grounds to believe that there is a substantial question of 
patentability concerning one or more claims of the patent 
at issue. 
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‘‘(b) NOTIFICATION; DETERMINATIONS NOT REVIEW-
ABLE.—The Director shall notify the patent owner and each 
petitioner in writing of the Director’s determination under 
subsection (a), including a determination to deny the peti-
tion. The Director shall make that determination in writing 
not later than 60 days after receiving the petition. Any de-
termination made by the Director under subsection (a), in-
cluding whether or not to institute a post-grant review pro-
ceeding or to deny the petition, shall not be reviewable. 
‘‘§ 326. Conduct of post-grant review proceedings 
‘‘(a) IN GENERAL.—The Director shall prescribe regu-
lations, in accordance with section 2(b)(2)— 
‘‘(1) establishing and governing post-grant re-
view proceedings under this chapter and their rela-
tionship to other proceedings under this title; 
‘‘(2) establishing procedures for the submission of 
supplemental information after the petition for can-
cellation is filed; and 
‘‘(3) setting forth procedures for discovery of rel-
evant evidence, including that such discovery shall be 
limited to evidence directly related to factual asser-
tions advanced by either party in the proceeding, and 
the procedures for obtaining such evidence shall be 
consistent with the purpose and nature of the pro-
ceeding. 
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‘‘(b) POST-GRANT REGULATIONS.—Regulations under 
subsection (a)(1)— 
‘‘(1) shall require that the final determination in 
a post-grant proceeding issue not later than one year 
after the date on which the post-grant review pro-
ceeding is instituted under this chapter, except that, 
for good cause shown, the Director may extend the 1- 
year period by not more than six months; 
‘‘(2) shall provide for discovery upon order of the 
Director; 
‘‘(3) shall provide for publication of notice in the 
Federal Register of the filing of a petition for post- 
grant review under this chapter, for publication of the 
petition, and documents, orders, and decisions relat-
ing to the petition, on the website of the Patent and 
Trademark Office, and for filings under seal exempt 
from publication requirements; 
‘‘(4) shall prescribe sanctions for abuse of dis-
covery, abuse of process, or any other improper use of 
the proceeding, such as to harass or to cause unneces-
sary delay or unnecessary increase in the cost of the 
proceeding; 
‘‘(5) may provide for protective orders governing 
the exchange and submission of confidential informa-
tion; and 
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‘‘(6) shall ensure that any information submitted 
by the patent owner in support of any amendment 
entered under section 329 is made available to the 
public as part of the prosecution history of the patent. 
‘‘(c) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect on 
the economy, the integrity of the patent system, and the effi-
cient administration of the Office. 
‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 
and Appeal Board shall, in accordance with section 6(b), 
conduct each post-grant review proceeding authorized by the 
Director. 
‘‘§ 327. Patent owner response 
‘‘After a post-grant proceeding under this chapter has 
been instituted with respect to a patent, the patent owner 
shall have the right to file, within a time period set by the 
Director, a response to the cancellation petition. The patent 
owner shall file with the response, through affidavits or dec-
larations, any additional factual evidence and expert opin-
ions on which the patent owner relies in support of the re-
sponse. 
‘‘§ 328. Proof and evidentiary standards 
‘‘(a) IN GENERAL.—The presumption of validity set 
forth in section 282 shall not apply in a challenge to any 
patent claim under this chapter. 
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‘‘(b) BURDEN OF PROOF.—The party advancing a 
proposition under this chapter shall have the burden of 
proving that proposition by a preponderance of the evi-
dence. 
‘‘§ 329. Amendment of the patent 
‘‘(a) IN GENERAL.—In response to a challenge in a 
petition for cancellation, the patent owner may file one mo-
tion to amend the patent in one or more of the following 
ways: 
‘‘(1) Cancel any challenged patent claim. 
‘‘(2) For each challenged claim, propose a sub-
stitute claim. 
‘‘(3) Amend the patent drawings or otherwise 
amend the patent other than the claims. 
‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 
amend may be permitted only for good cause shown. 
‘‘(c) SCOPE OF CLAIMS.—An amendment under this 
section may not enlarge the scope of the claims of the patent 
or introduce new matter. 
‘‘§ 330. Decision of the Board 
‘‘If the post-grant review proceeding is instituted and 
not dismissed under this chapter, the Patent Trial and Ap-
peal Board shall issue a final written decision with respect 
to the patentability of any patent claim challenged and any 
new claim added under section 329. 
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‘‘§ 331. Effect of decision 
‘‘(a) IN GENERAL.—If the Patent Trial and Appeal 
Board issues a final decision under section 330 and the 
time for appeal has expired or any appeal proceeding has 
terminated, the Director shall issue and publish a certificate 
canceling any claim of the patent finally determined to be 
unpatentable and incorporating in the patent by operation 
of the certificate any new claim determined to be patentable. 
‘‘(b) NEW CLAIMS.—Any new claim held to be patent-
able and incorporated into a patent in a post-grant review 
proceeding shall have the same effect as that specified in 
section 252 for reissued patents on the right of any person 
who made, purchased, offered to sell, or used within the 
United States, or imported into the United States, anything 
patented by such new claim, or who made substantial prep-
arations therefor, before a certificate under subsection (a) 
of this section is issued. 
‘‘§ 332. Settlement 
‘‘(a) IN GENERAL.—A post-grant review proceeding 
shall be terminated with respect to any petitioner upon the 
joint request of the petitioner and the patent owner, unless 
the Patent Trial and Appeal Board has issued a written 
decision before the request for termination is filed. If the 
post-grant review proceeding is terminated with respect to 
a petitioner under this paragraph, no estoppel shall apply 
to that petitioner. If no petitioner remains in the pro-
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ceeding, the panel of administrative patent judges assigned 
to the proceeding shall terminate the proceeding. 
‘‘(b) AGREEMENT IN WRITING.—Any agreement or un-
derstanding between the patent owner and a petitioner, in-
cluding any collateral agreements referred to in the agree-
ment or understanding, that is made in connection with 
or in contemplation of the termination of a post-grant re-
view proceeding, must be in writing. A post-grant review 
proceeding as between the parties to the agreement or un-
derstanding may not be terminated until a copy of the 
agreement or understanding, including any such collateral 
agreements, has been filed in the Office. If any party filing 
such an agreement or understanding requests, the agreement 
or understanding shall be kept separate from the file of the 
post-grant review proceeding, and shall be made available 
only to Government agencies on written request, or to any 
person on a showing of good cause. 
‘‘§ 333. Relationship to other pending proceedings 
‘‘(a) 
IN
GENERAL.—Notwithstanding 
subsection 
135(a), sections 251 and 252, and chapter 30, the Director 
may determine the manner in which any reexamination 
proceeding, reissue proceeding, interference proceeding 
(commenced before the effective date provided in section 3(k) 
of the Patent Reform Act of 2007), derivation proceeding, 
or post-grant review proceeding, that is pending during a 
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post-grant review proceeding, may proceed, including pro-
viding for stay, transfer, consolidation, or termination of 
any such proceeding. 
‘‘(b) STAYS.—The Director may stay a post-grant re-
view proceeding if a pending civil action for infringement 
addresses the same or substantially the same questions of 
patentability. 
‘‘§ 334. Effect of decisions rendered in civil action on 
post-grant review proceedings 
‘‘If a final decision is entered against a party in a 
civil action arising in whole or in part under section 1338 
of title 28 establishing that the party has not sustained its 
burden of proving the invalidity of any patent claim— 
‘‘(1) that party to the civil action and the 
privies of that party may not thereafter request a 
post-grant review proceeding on that patent claim on 
the basis of any grounds, under the provisions of sec-
tion 321, which that party or the privies of that 
party raised or could have raised; and 
‘‘(2) the Director may not thereafter maintain a 
post-grant review proceeding that was requested, be-
fore the final decision was so entered, by that party 
or the privies of that party on the basis of such 
grounds. 
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‘‘§ 335. Effect of final decision on future proceedings 
‘‘If a final decision under section 330 is favorable to 
the patentability of any original or new claim of the patent 
challenged by the cancellation petitioner, the cancellation 
petitioner may not thereafter, based on any ground that the 
cancellation petitioner raised during the post-grant review 
proceeding— 
‘‘(1) request or pursue a reexamination of such 
claim under chapter 31; 
‘‘(2) request or pursue a derivation proceeding 
with respect to such claim; 
‘‘(3) request or pursue a post-grant review pro-
ceeding under this chapter with respect to such claim; 
or 
‘‘(4) assert the invalidity of any such claim in 
any civil action arising in whole or in part under 
section 1338 of title 28. 
‘‘§ 336. Appeal 
‘‘A party dissatisfied with the final determination of 
the Patent Trial and Appeal Board in a post-grant pro-
ceeding under this chapter may appeal the determination 
under sections 141 through 144. Any party to the post-grant 
proceeding shall have the right to be a party to the appeal.’’. 
(g) CONFORMING AMENDMENT.—The table of chapters 
for part III is amended by adding at the end the following: 
‘‘32. Post-Grant Review Proceedings ..............................................
321’’. 
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(h) REPEAL.—Section 4607 of the Intellectual Prop-
erty and Communications Omnibus Reform Act of 1999, 
as enacted by section 1000(a)(9) of Public Law 106–113, 
is repealed. 
(i) EFFECTIVE DATES.— 
(1) IN GENERAL.—The amendments and repeal 
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. 
(2) APPLICABILITY
TO
EX
PARTE
AND
INTER 
PARTES
PROCEEDINGS.—Notwithstanding any other 
provision of law, sections 301 and 311 through 318 
of title 35, United States Code, as amended by this 
section, shall apply to any patent that issues before, 
on, or after the effective date under paragraph (1) 
from an original application filed on any date. 
(3) 
APPLICABILITY
TO
POST-GRANT
PRO-
CEEDINGS.—The amendments made by subsection (f) 
shall apply to patents issued on or after the effective 
date under paragraph (1). 
(j) REGULATIONS.— 
(1) REGULATIONS.—The Under Secretary of 
Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office (in 
this subsection referred to as the ‘‘Director’’) shall, not 
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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 section. 
(2) PENDING
INTERFERENCES.—The Director 
shall determine the procedures under which inter-
ferences under title 35, United States Code, that are 
commenced before the effective date under subsection 
(i)(1) are to proceed, including whether any such in-
terference is to be dismissed without prejudice to the 
filing of a cancellation petition for a post-grant oppo-
sition proceeding under chapter 32 of title 35, United 
States Code, or is to proceed as if this Act had not 
been enacted. The Director shall include such proce-
dures in regulations issued under paragraph (1). 
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 following: 
‘‘(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: 
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‘‘§ 6. Patent Trial and Appeal Board 
‘‘(a) ESTABLISHMENT AND COMPOSITION.—There shall 
be in the Office a Patent Trial and Appeal Board. The Di-
rector, the Deputy Director, the Commissioner for Patents, 
the Commissioner for Trademarks, and the administrative 
patent judges shall constitute the Patent Trial and Appeal 
Board. The administrative patent judges shall be persons 
of competent legal knowledge and scientific ability who are 
appointed by the Director. Any reference in any Federal 
law, Executive order, rule, regulation, or delegation of au-
thority, 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, review 
adverse decisions of examiners upon patents in reex-
amination 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 
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‘‘(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 
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 begin-
ning 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 Office 
shall, not later than 2 years after the date of the enactment 
of this Act— 
(1) conduct a study of the effectiveness and effi-
ciency of the different forms of proceedings available 
under title 35, United States Code, for the reexamina-
tion of patents; and 
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(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 Di-
rector’s suggestions for amending the law, and 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), respectively. 
(b) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— 
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 applica-
tion, or other publication of potential relevance to the 
examination 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 Di-
rector may prescribe; and 
‘‘(C) include a statement by the submitter 
affirming that the submission was made in com-
pliance with this section.’’. 
(c) EFFECTIVE DATE.—The amendments made by this 
section— 
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(1) shall take effect at the end of the 1-year pe-
riod beginning on the date of the enactment of this 
Act; and 
(2) shall apply to any application for patent 
filed before, on, or after the effective date under para-
graph (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 pat-
ent may not be obtained for a tax planning method. 
‘‘(2) DEFINITIONS.—For purposes of paragraph 
(1)— 
‘‘(A) the term ‘tax planning method’ means 
a plan, strategy, technique, or scheme that is de-
signed to reduce, minimize, or defer, or has, 
when implemented, the effect of reducing, mini-
mizing, 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; 
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