Leahy-Smith America Invents Act

Bill: 112-hr-1249
Sponsor: Rep. Smith, Lamar [R-TX-21]
Introduced: 2011-03-30 in the House
Policy area: Commerce
Subjects: Administrative law and regulatory procedures
Administrative remedies
Advanced technology and technological innovations
Civil actions and liability
Competitiveness, trade promotion, trade deficits
Congressional oversight
Congressional tributes
Department of Commerce
Evidence and witnesses
Executive agency funding and structure
Federal district courts
Government buildings, facilities, and property
Government employee pay, benefits, personnel management
Government studies and investigations
Government trust funds
Intellectual property
Judges
Judicial review and appeals
Jurisdiction and venue
Legal fees and court costs
Michigan
Small business
State and local courts
Tax administration and collection, taxpayers
User charges and fees
Virginia

Summary:
action_date: 2011-03-30
text: 
America Invents Act - Amends federal patent law to define the &quot;effective filing date&quot; of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus replacing the current first-to-invent system), except as specified.
 
Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter.
 
Sets forth derived patent provisions. Replaces: (1) interference proceedings with derivation proceedings, and (2) the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board). Modifies the earlier inventor to file defense to infringement.
 
Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the U.S. Patent and Trademark Office (USPTO) to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications.
 
Prohibits the USPTO Director (Director) from authorizing: (1) inter partes review unless information in the petition and any response shows a substantial new question of patentability exists; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications.
 
Allows: (1) preissuance submissions by third parties, and (2) citations of prior art and written statements by any person at any time.
 
Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
 
Sets forth: (1) USPTO fee setting authority, (2) reduced fees for qualified small entities and micro entities, and (3) filing fees and other specified fees.
 
Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
 
Revises and adds provisions addressing: (1) false marking actions, (2) virtual markings, (3) best mode requirements, (4) supplemental examinations, and (5) invention-related royalties given to small businesses when a nonprofit organization has a funding agreement with the federal government. 
 
Requires the Director to establish a four-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents. 
 
Denies state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. Grants the CAFC exclusive jurisdiction of appeals relating to patents or plant variety protection. 
 
Establishes the USPTO Public Enterprise Fund (replaces the Appropriation Account). 
 
Requires the Director to establish at least three U.S. satellite offices for the USPTO.
 
Allows the Director to establish a Patent Ombudsman Program.
 
Authorizes the USPTO to establish prioritized examination of applications important to the economy or national competitiveness.

action_date: 2011-06-01
text: 
America Invents Act - (Sec. 3) Amends federal patent law to define the &quot;effective filing date&quot; of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus replacing the current &quot;first inventor to use&quot; system with a &quot;first inventor to file&quot; system), except as specified. Requires the effective filing date for a claimed invention in an application for reissue or reissued patent to be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
 
 Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
 
Repeals provisions relating to inventions made abroad and statutory invention registration. 
 
Permits a civil action by a patent owner against another patent owner claiming to have the same invention and who has an earlier effective filing date if the invention claimed by the earlier patent owner was derived from the inventor claimed in the patent owned by the person seeking relief. Requires such an action to be filed before the end of a specified one-year period. 
 
Sets forth derived patent provisions. Replaces: (1) interference proceedings with derivation proceedings, and (2) the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board). 
 
Requires reports from: (1) the Small Business Administration (SBA) on the effects of eliminating the use of dates of invention in the patent application process, particularly on small businesses; and (2) the U.S. Patent and Trademark Office (USPTO) on the operation of prior user rights in selected countries in the industrialized world.
 
Directs the Comptroller General (GAO) to submit a report on the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims under specified federal patent laws and regulations.
 
Expresses the sense of Congress that converting from a &quot;first inventor to use&quot; to a &quot;first inventor to file&quot; patent registration system will: (1) provide inventors with greater certainty regarding the scope of protection, and (2) promote international uniformity by harmonizing the U.S. patent registration system with systems commonly used in other countries with whom the United States conducts trade.
 
(Sec. 4) Modifies requirements regarding the oath or declaration required of an inventor.
 
Allows a person to whom an inventor has assigned (or is under an obligation to assign) an invention to make an application for patent.
 
(Sec. 5) Modifies the earlier inventor to file defense to infringement by: (1) eliminating provisions that limited the defense to business methods, (2) applying the defense to commercial uses of the subject matter of a patent in the United States, (3) removing an existing definition of the applicable effective filing date, (4) specifying that the subject matter must be reduced to a practice and commercially used at least one year before the effective filing date, and (5) prohibiting such a defense for certain derived patents or disclosed inventions excepted from prior art when the commercialization date is less than a year before such disclosure.
 
(Sec. 6) Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the U.S. Patent and Trademark Office (USPTO) to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications.
 
Limits the filing of petitions for post-grant review to the one-year period beginning after the grant of patent or issuance of a reissue patent. Requires any petition for inter partes review to be filed after the later of: (1) one year after the grant or reissue, or (2) the date of termination of a post-grant review.
 
Directs the USPTO to make public data available on the length of time between the institution of, and issuance of a final written decision for, each post-grant and inter partes review.
 
Prohibits the USPTO Director (defined as the Under Secretary of Commerce for Intellectual Property and USPTO Director) from authorizing: (1) inter partes review unless the petition shows a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications.
 
Disallows: (1) post-grant review and inter partes review if the petitioner (or real party in interest, or privy) has filed a related civil action before filing the petition, and (2) inter partes review if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement. Prohibits the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews that result in a final Board decision. 
 
Allows any person, at any time, to cite to the USPTO: (1) prior art bearing on the patentability of a claim, and (2) statements of the patent owner filed in a proceeding before a federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. Requires, on written request of the person citing prior art or written statements, that that person's identity be kept confidential.
 
(Sec. 7) Sets forth the Board's required composition and duties. Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
 
(Sec. 8) Allows any third party to submit any publication of potential relevance to a patent application (commonly referred to as preissuance submissions).
 
(Sec. 10) Authorizes the Director, for a six-year period and subject to conditions, to set or adjust by rule any fee established, authorized, or charged by the USPTO under specified federal patent and trademark laws. Requires the Director to notify Congress of (and publish in the Federal Register) certain proposed fee changes.
 
Reduces certain fees to qualified small entities (including fees for prioritized examination of utility and plant applications) and any micro entity. 
 
Defines the term &quot;micro entity&quot; as a certifying applicant who: (1) qualifies as a small entity as defined in regulations issued by the Director; (2) has not been named as an inventor on more than four previously filed patent applications, as specified; and (3) has gross income below a designated level without having transferred ownership interest in the application to an entity with gross income exceeding such limit. Authorizes the Director to impose income, annual filing, and other micro entity qualification limits under provisions related to public institutions of higher education.
 
Establishes a $400 fee for original patent applications filed non-electronically.
 
(Sec. 11) Sets forth fees for filing, excess claims, examination, issue, disclaimer, appeal, revival, extension, maintenance, patent search, small entity, national fees (for certain international applications), and other specified fees.
 
 
(Sec. 12) Establishes supplemental examinations to consider, reconsider, and correct information. Requires the Director to order reexamination if a substantial new question of patentability is raised by at least one item of information in the request.
 
 
(Sec. 13) Decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and correspondingly increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. (An existing provision defines the term &quot;funding agreement&quot; as a contract, grant, or cooperative agreement entered into between a federal agency and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the federal government.)
 
(Sec. 14) Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
 
(Sec. 15) Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
 
(Sec. 16) Allows virtual markings (markings that direct the public to a freely-accessible Internet address where a patented article is associated with its patent number) to provide public notice that an article is patented. Requires the Director, within three years, to report to Congress on the ability of the public to obtain information from such virtual marking and related legal issues.
 
Revises provisions addressing false marking actions to: (1) prohibit anyone other than the United States from suing for the applicable penalty, and (2) allow only a person who has suffered a competitive injury to file a civil action for recovery of damages adequate to compensate for the injury. (Current law allows any person to sue for a penalty of $500 for every such offense, in which event one-half is awarded to the person and one-half to the United States.)
 
Exempts from false marking liability activity engaged in: (1) during the three-year period beginning after the patent expires, or (2) after that three-year period if the word &quot;expired&quot; is placed before the patent identification on either the article or its virtual marking.
 
(Sec. 17) Bars using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
 
 
(Sec. 18) Requires the Director to establish, with specified standards and procedures, a ten-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents (claiming a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except technological inventions). 
 
 
(Sec. 19) Amends the federal judicial code to deny state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. Grants the CAFC exclusive jurisdiction of appeals relating to patents or plant variety protection. Adds procedural provisions regarding joinder of accused infringers in patent cases.
 
Provides for the removal to a U.S. district court of legal actions involving patents, plant variety protection, or copyrights, and for the remand of unrelated matters.
 
Requires the CAFC to transfer any appeal concerning designs and unfair competition to the court of appeals for the regional circuit embracing the district from which the appeal has been taken.
 
(Sec. 21) Permits the USPTO to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. Authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges appointed under specified provisions.
 
(Sec. 22) Establishes the USPTO Public Enterprise Fund (replaces the Appropriation Account) as a revolving fund available to the Director without fiscal year limitation. 
 
Requires all fees paid to the Director and all appropriations for defraying the costs of USPTO activities to be credited to the Fund. Requires fees charged or established by the Director to be collected by the Director and available to carry out USPTO activities until expended. Directs fees from specified sources to be deposited in the Fund, recorded as offsetting receipts, and available to cover appropriate expenses. 
 
Requires the Director to submit an annual report to Congress including: (1) the USPTO's operating plan, expenses, and staff levels; (2) long term modernization plans and related progress updates; and (3) the results of an annual independent audit of the USPTO's financial statements required by this section. Requires the Director to annually: (1) notify Congress of its spending plan, and (2) submit to the President a business-type budget as prescribed by regulation for the federal budget.
 
 
(Sec. 23) Requires the Director, within a three-year period using specified criteria, to establish at least three U.S. satellite offices for the USPTO and submit a related report to Congress.
 
(Sec. 24) Designates the satellite office to be located in Detroit, Michigan, as the &quot;Elijah J. McCoy United States Patent and Trademark Office.&quot;
 
 
(Sec. 25) Requires the Director to establish a Patent Ombudsman Program using available resources.
 
(Sec. 26) Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
 
 
(Sec. 28) Requires the Director, within four years, to submit a report to Congress assessing federal patent policies, the implementation of this Act, competitiveness of U.S. markets, and access to capital for investment by small businesses.
 
(Sec. 29) Directs the Director to support intellectual property law associations in establishing pro bono programs to assist financially under-resourced independent inventors and small businesses.

action_date: 2011-06-23
text: 
Leahy-Smith America Invents Act - (Sec. 3) Amends federal patent law to define the &quot;effective filing date&quot; of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus replacing the current &quot;first to invent&quot; system with a &quot;first inventor to file&quot; system), except as specified. Requires the effective filing date for a claimed invention in an application for reissue or reissued patent to be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
 
 Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
 
Repeals provisions relating to inventions made abroad and statutory invention registration. 
 
Permits a civil action by a patent owner against another patent owner claiming to have the same invention and who has an earlier effective filing date if the invention claimed by the earlier patent owner was derived from the inventor claimed in the patent owned by the person seeking relief. Requires such an action to be filed before the end of a specified one-year period. 
 
Sets forth derived patent provisions. Replaces: (1) interference proceedings with derivation proceedings, and (2) the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board). 
 
Requires reports from: (1) the Small Business Administration (SBA) on the effects of eliminating the use of dates of invention in the patent application process, particularly on small businesses; and (2) the U.S. Patent and Trademark Office (USPTO) on the operation of prior user rights in selected countries in the industrialized world.
 
Expresses the sense of Congress that converting from a &quot;first to invent&quot; to a &quot;first inventor to file&quot; patent registration system will: (1) provide inventors with greater certainty regarding the scope of protection, and (2) promote international uniformity by harmonizing the U.S. patent system with systems commonly used in other countries with whom the United States conducts trade.
 
(Sec. 4) Modifies requirements regarding the oath or declaration required of an inventor.
 
Allows a person to whom an inventor has assigned (or is under an obligation to assign) an invention to make an application for patent.
 
(Sec. 5) Replaces the earlier inventor to file defense to infringement for business methods with enumerated personal defenses available in actions involving validity or infringement, under specified conditions and subject to exceptions, with respect to subject matter consisting of a process, or of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted if: (1) the person commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and (2) the commercial use occurred at least one year before the earlier of either the effective filing date of the claimed invention or the date on which the claimed invention was disclosed to the public in a manner that qualified as an exception from prior art.
 
Sets forth guidelines for assessing commercial use in a premarketing regulatory review period and by nonprofit research laboratories or entities. Prohibits certain institutions of higher education and technology transfer organizations from asserting such defenses. 
 
Restricts transfers of the right to assert such defenses.
 
Prohibits deeming a patent invalid on novelty or non-obvious subject matter grounds solely because such prior commercial use defenses are raised or established. 
 
(Sec. 6) Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the U.S. Patent and Trademark Office (USPTO) to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications.
 
Limits the filing of petitions for post-grant review to the nine-month period beginning after the grant of patent or issuance of a reissue patent. Requires any petition for inter partes review to be filed after the later of: (1) nine months after the grant or reissue, or (2) the date of termination of a post-grant review.
 
Directs the USPTO to make public data available on the length of time between the institution of, and issuance of a final written decision for, each post-grant and inter partes review.
 
Prohibits the USPTO Director (defined as the Under Secretary of Commerce for Intellectual Property and USPTO Director) from authorizing: (1) inter partes review unless the petition shows a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications.
 
Disallows: (1) post-grant review and inter partes review if the petitioner (or real party in interest) has filed a related civil action before filing the petition, and (2) inter partes review if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement. Prohibits the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews that result in a final Board decision. 
 
Allows any person, at any time, to cite to the USPTO: (1) prior art bearing on the patentability of a claim, and (2) statements of the patent owner filed in a proceeding before a federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. Requires, on written request of the person citing prior art or written statements, that that person's identity be kept confidential.
 
Sets forth the standards applicable to inter partes reexamination during the intervening period between the enactment of this Act and the effective date of inter partes review.
 
(Sec. 7) Sets forth the Board's required composition and duties. Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
 
(Sec. 8) Allows any third party to submit any publication of potential relevance to a patent application (commonly referred to as preissuance submissions).
 
(Sec. 10) Authorizes the Director, for a seven-year period and subject to conditions, to set or adjust by rule any fee established, authorized, or charged by the USPTO under specified federal patent and trademark laws. Requires the Director to notify Congress of (and publish in the Federal Register) certain proposed fee changes.
 
Reduces certain fees to qualified small entities (including fees for prioritized examination of utility and plant applications) and any micro entity. 
 
Defines the term &quot;micro entity&quot; as a certifying applicant who: (1) qualifies as a small entity as defined in regulations issued by the Director; (2) has not been named as an inventor on more than four previously filed patent applications, as specified; and (3) has gross income below a designated level without having transferred ownership interest in the application to an entity with gross income exceeding such limit. Authorizes the Director to impose income, annual filing, and other micro entity qualification limits under provisions related to institutions of higher education.
 
Establishes an additional fee of $400 for original patent applications filed non-electronically.
 
(Sec. 11) Sets forth fees for filing, excess claims, examination, issue, disclaimer, appeal, revival, extension, maintenance, patent search, small entity, national fees (for certain international applications), and other specified fees.
 
Establishes prioritized examination fees and a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Terminates such surcharges and prioritized examination fees on the effective date of the setting or adjustment of the underlying fee pursuant to the Director's exercise of authority under section 10 of this Act for the first time with respect to that fee.
 
(Sec. 12) Establishes supplemental examinations to consider, reconsider, and correct information. Requires the Director to order reexamination if a substantial new question of patentability is raised by at least one item of information in the request.
 
Requires the Director to confidentially refer to the Attorney General (DOJ) any material fraud on the USPTO that may have been committed in connection with a patent when the Director becomes aware of such fraud during an ordered supplemental examination or reexamination proceeding.
 
 
(Sec. 13) Decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and correspondingly increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. (An existing provision defines the term &quot;funding agreement&quot; as a contract, grant, or cooperative agreement entered into between a federal agency and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the federal government.)
 
(Sec. 14) Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
 
(Sec. 15) Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
 
(Sec. 16) Allows virtual markings (markings that direct the public to a freely-accessible Internet address where a patented article is associated with its patent number) to provide public notice that an article is patented. Requires the Director, within three years, to report to Congress on the ability of the public to obtain information from such virtual marking and related legal issues.
 
Revises provisions addressing false marking actions to: (1) prohibit anyone other than the United States from suing for the applicable penalty, and (2) allow only a person who has suffered a competitive injury to file a civil action for recovery of damages adequate to compensate for the injury. (Current law allows any person to sue for a penalty of $500 for every such offense, in which event one-half is awarded to the person and one-half to the United States.)
 
Exempts from false marking liability virtual markings with matter relating to a patent that covered that product but has expired.
 
(Sec. 17) Bars using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
 
 
(Sec. 18) Requires the Director to establish, with specified standards and procedures, an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents (claiming a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except technological inventions). 
 
 
(Sec. 19) Amends the federal judicial code to deny state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. Grants the CAFC exclusive jurisdiction of appeals relating to patents or plant variety protection. Adds procedural provisions regarding joinder of accused infringers in patent cases.
 
Provides for the removal to a U.S. district court of legal actions involving patents, plant variety protection, or copyrights, and for the remand of unrelated matters.
 
(Sec. 21) Permits the USPTO to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. Authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges appointed under specified provisions.
 
(Sec. 22) Establishes in the Treasury a Patent and Trademark Fee Reserve Fund in which any USPTO fee collections for a fiscal year in excess of the amount appropriated for that fiscal year must be deposited. Directs, to the extent and in the amounts provided in appropriations Acts, amounts in the Fund to be available until expended only for obligation and expenditure by the USPTO in accordance with provisions requiring: (1) specified patent fees and any related surcharges to be used only for expenses relating to processing patent applications and other activities, services, and materials relating to patents and to cover a share of administrative costs; and (2) specified trademark fees collected under the Trademark Act of 1946 and any related surcharges to be used only for such costs relating to trademarks.
 
 (Sec. 23) Requires the Director, within a three-year period using specified criteria, to establish at least three U.S. satellite offices for the USPTO and submit a related report to Congress.
 
(Sec. 24) Designates the satellite office to be located in Detroit, Michigan, as the &quot;Elijah J. McCoy United States Patent and Trademark Office.&quot;
 
 
(Sec. 25) Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
 
 
(Sec. 26) Requires the Director, within four years, to submit a report to Congress assessing federal patent policies, the implementation of this Act, competitiveness of U.S. markets, and access to capital for investment by small businesses.
 
(Sec. 27) Requires the Director to conduct a study and report to Congress on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. Defines &#147;confirming genetic diagnostic test activity&#148; as the performance of a genetic diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an independent confirmation of results obtained from another test provider&#146;s prior performance of the test on the individual.
 
(Sec. 28) Requires the Director to establish a Patent Ombudsman Program using available resources.
 
(Sec. 29) Directs the Director to establish methods for studying the diversity of patent applicants, including applicants who are minorities, women, or veterans. Prohibits using the results to provide any preferential treatment to patent applicants.
 
(Sec. 30) Expresses the sense of Congress that the patent system should protect small businesses and inventors from predatory behavior that could result in cutting off innovation.
 
(Sec. 31) Requires the Director to study and report to Congress on how the USPTO, in coordination with other federal agencies, can help small businesses with international patent protection and whether a revolving fund loan or grant program should be established to help pay the costs of filing, maintaining, and enforcing such international patent applications.
 
 
(Sec. 32) Directs the Director to support intellectual property law associations in establishing pro bono programs to assist financially under-resourced independent inventors and small businesses.
 
(Sec. 33) Prohibits issuing a patent on a claim directed to or encompassing a human organism in any application pending or filed on or after the enactment of this Act.
 
(Sec. 34) Directs the Comptroller General (GAO) to submit a report on the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims under specified federal patent laws and regulations.
 
(Sec. 35) Declares that this Act shall take effect one year after enactment and apply to any patent issued on or after that effective date, except as otherwise provided.
 
(Sec. 37) Sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.

action_date: 2011-09-08
text: 

(This measure has not been amended since it was passed by the House on June 23, 2011. The summary of that version is repeated here.)
 
 
Leahy-Smith America Invents Act - (Sec. 3) Amends federal patent law to define the &quot;effective filing date&quot; of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus replacing the current &quot;first to invent&quot; system with a &quot;first inventor to file&quot; system), except as specified. Requires the effective filing date for a claimed invention in an application for reissue or reissued patent to be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
 
 Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
 
Repeals provisions relating to inventions made abroad and statutory invention registration. 
 
Permits a civil action by a patent owner against another patent owner claiming to have the same invention and who has an earlier effective filing date if the invention claimed by the earlier patent owner was derived from the inventor claimed in the patent owned by the person seeking relief. Requires such an action to be filed before the end of a specified one-year period. 
 
Sets forth derived patent provisions. Replaces: (1) interference proceedings with derivation proceedings, and (2) the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board). 
 
Requires reports from: (1) the Small Business Administration (SBA) on the effects of eliminating the use of dates of invention in the patent application process, particularly on small businesses; and (2) the U.S. Patent and Trademark Office (USPTO) on the operation of prior user rights in selected countries in the industrialized world.
 
Expresses the sense of Congress that converting from a &quot;first to invent&quot; to a &quot;first inventor to file&quot; patent registration system will: (1) provide inventors with greater certainty regarding the scope of protection, and (2) promote international uniformity by harmonizing the U.S. patent system with systems commonly used in other countries with whom the United States conducts trade.
 
(Sec. 4) Modifies requirements regarding the oath or declaration required of an inventor.
 
Allows a person to whom an inventor has assigned (or is under an obligation to assign) an invention to make an application for patent.
 
(Sec. 5) Replaces the earlier inventor to file defense to infringement for business methods with enumerated personal defenses available in actions involving validity or infringement, under specified conditions and subject to exceptions, with respect to subject matter consisting of a process, or of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted if: (1) the person commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and (2) the commercial use occurred at least one year before the earlier of either the effective filing date of the claimed invention or the date on which the claimed invention was disclosed to the public in a manner that qualified as an exception from prior art.
 
Sets forth guidelines for assessing commercial use in a premarketing regulatory review period and by nonprofit research laboratories or entities. Prohibits certain institutions of higher education and technology transfer organizations from asserting such defenses. 
 
Restricts transfers of the right to assert such defenses.
 
Prohibits deeming a patent invalid on novelty or non-obvious subject matter grounds solely because such prior commercial use defenses are raised or established. 
 
(Sec. 6) Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the U.S. Patent and Trademark Office (USPTO) to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications.
 
Limits the filing of petitions for post-grant review to the nine-month period beginning after the grant of patent or issuance of a reissue patent. Requires any petition for inter partes review to be filed after the later of: (1) nine months after the grant or reissue, or (2) the date of termination of a post-grant review.
 
Directs the USPTO to make public data available on the length of time between the institution of, and issuance of a final written decision for, each post-grant and inter partes review.
 
Prohibits the USPTO Director (defined as the Under Secretary of Commerce for Intellectual Property and USPTO Director) from authorizing: (1) inter partes review unless the petition shows a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications.
 
Disallows: (1) post-grant review and inter partes review if the petitioner (or real party in interest) has filed a related civil action before filing the petition, and (2) inter partes review if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement. Prohibits the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews that result in a final Board decision. 
 
Allows any person, at any time, to cite to the USPTO: (1) prior art bearing on the patentability of a claim, and (2) statements of the patent owner filed in a proceeding before a federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. Requires, on written request of the person citing prior art or written statements, that that person's identity be kept confidential.
 
Sets forth the standards applicable to inter partes reexamination during the intervening period between the enactment of this Act and the effective date of inter partes review.
 
(Sec. 7) Sets forth the Board's required composition and duties. Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
 
(Sec. 8) Allows any third party to submit any publication of potential relevance to a patent application (commonly referred to as preissuance submissions).
 
(Sec. 10) Authorizes the Director, for a seven-year period and subject to conditions, to set or adjust by rule any fee established, authorized, or charged by the USPTO under specified federal patent and trademark laws. Requires the Director to notify Congress of (and publish in the Federal Register) certain proposed fee changes.
 
Reduces certain fees to qualified small entities (including fees for prioritized examination of utility and plant applications) and any micro entity. 
 
Defines the term &quot;micro entity&quot; as a certifying applicant who: (1) qualifies as a small entity as defined in regulations issued by the Director; (2) has not been named as an inventor on more than four previously filed patent applications, as specified; and (3) has gross income below a designated level without having transferred ownership interest in the application to an entity with gross income exceeding such limit. Authorizes the Director to impose income, annual filing, and other micro entity qualification limits under provisions related to institutions of higher education.
 
Establishes an additional fee of $400 for original patent applications filed non-electronically.
 
(Sec. 11) Sets forth fees for filing, excess claims, examination, issue, disclaimer, appeal, revival, extension, maintenance, patent search, small entity, national fees (for certain international applications), and other specified fees.
 
Establishes prioritized examination fees and a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Terminates such surcharges and prioritized examination fees on the effective date of the setting or adjustment of the underlying fee pursuant to the Director's exercise of authority under section 10 of this Act for the first time with respect to that fee.
 
(Sec. 12) Establishes supplemental examinations to consider, reconsider, and correct information. Requires the Director to order reexamination if a substantial new question of patentability is raised by at least one item of information in the request.
 
Requires the Director to confidentially refer to the Attorney General (DOJ) any material fraud on the USPTO that may have been committed in connection with a patent when the Director becomes aware of such fraud during an ordered supplemental examination or reexamination proceeding.
 
(Sec. 13) Decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and correspondingly increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. (An existing provision defines the term &quot;funding agreement&quot; as a contract, grant, or cooperative agreement entered into between a federal agency and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the federal government.)
 
(Sec. 14) Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
 
(Sec. 15) Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
 
(Sec. 16) Allows virtual markings (markings that direct the public to a freely-accessible Internet address where a patented article is associated with its patent number) to provide public notice that an article is patented. Requires the Director, within three years, to report to Congress on the ability of the public to obtain information from such virtual marking and related legal issues.
 
Revises provisions addressing false marking actions to: (1) prohibit anyone other than the United States from suing for the applicable penalty, and (2) allow only a person who has suffered a competitive injury to file a civil action for recovery of damages adequate to compensate for the injury. (Current law allows any person to sue for a penalty of $500 for every such offense, in which event one-half is awarded to the person and one-half to the United States.)
 
Exempts from false marking liability virtual markings with matter relating to a patent that covered that product but has expired.
 
(Sec. 17) Bars using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
 
(Sec. 18) Requires the Director to establish, with specified standards and procedures, an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents (claiming a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except technological inventions). 
 
(Sec. 19) Amends the federal judicial code to deny state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. Grants the CAFC exclusive jurisdiction of appeals relating to patents or plant variety protection. Adds procedural provisions regarding joinder of accused infringers in patent cases.
 
Provides for the removal to a U.S. district court of legal actions involving patents, plant variety protection, or copyrights, and for the remand of unrelated matters.
 
(Sec. 21) Permits the USPTO to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. Authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges appointed under specified provisions.
 
(Sec. 22) Establishes in the Treasury a Patent and Trademark Fee Reserve Fund in which any USPTO fee collections for a fiscal year in excess of the amount appropriated for that fiscal year must be deposited. Directs, to the extent and in the amounts provided in appropriations Acts, amounts in the Fund to be available until expended only for obligation and expenditure by the USPTO in accordance with provisions requiring: (1) specified patent fees and any related surcharges to be used only for expenses relating to processing patent applications and other activities, services, and materials relating to patents and to cover a share of administrative costs; and (2) specified trademark fees collected under the Trademark Act of 1946 and any related surcharges to be used only for such costs relating to trademarks.
 
 (Sec. 23) Requires the Director, within a three-year period using specified criteria, to establish at least three U.S. satellite offices for the USPTO and submit a related report to Congress.
 
(Sec. 24) Designates the satellite office to be located in Detroit, Michigan, as the &quot;Elijah J. McCoy United States Patent and Trademark Office.&quot;
 
(Sec. 25) Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
 
(Sec. 26) Requires the Director, within four years, to submit a report to Congress assessing federal patent policies, the implementation of this Act, competitiveness of U.S. markets, and access to capital for investment by small businesses.
 
(Sec. 27) Requires the Director to conduct a study and report to Congress on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. Defines &#147;confirming genetic diagnostic test activity&#148; as the performance of a genetic diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an independent confirmation of results obtained from another test provider&#146;s prior performance of the test on the individual.
 
(Sec. 28) Requires the Director to establish a Patent Ombudsman Program using available resources.
 
(Sec. 29) Directs the Director to establish methods for studying the diversity of patent applicants, including applicants who are minorities, women, or veterans. Prohibits using the results to provide any preferential treatment to patent applicants.
 
(Sec. 30) Expresses the sense of Congress that the patent system should protect small businesses and inventors from predatory behavior that could result in cutting off innovation.
 
(Sec. 31) Requires the Director to study and report to Congress on how the USPTO, in coordination with other federal agencies, can help small businesses with international patent protection and whether a revolving fund loan or grant program should be established to help pay the costs of filing, maintaining, and enforcing such international patent applications.
 
(Sec. 32) Directs the Director to support intellectual property law associations in establishing pro bono programs to assist financially under-resourced independent inventors and small businesses.
 
(Sec. 33) Prohibits issuing a patent on a claim directed to or encompassing a human organism in any application pending or filed on or after the enactment of this Act.
 
(Sec. 34) Directs the Comptroller General (GAO) to submit a report on the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims under specified federal patent laws and regulations.
 
(Sec. 35) Declares that this Act shall take effect one year after enactment and apply to any patent issued on or after that effective date, except as otherwise provided.
 
(Sec. 37) Sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.

action_date: 2011-09-16
text: 

(This measure has not been amended since it was passed by the House on June 23, 2011. The summary of that version is repeated here.)
 
 
Leahy-Smith America Invents Act - (Sec. 3) Amends federal patent law to define the &quot;effective filing date&quot; of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus replacing the current &quot;first to invent&quot; system with a &quot;first inventor to file&quot; system), except as specified. Requires the effective filing date for a claimed invention in an application for reissue or reissued patent to be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
 
 Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
 
Repeals provisions relating to inventions made abroad and statutory invention registration. 
 
Permits a civil action by a patent owner against another patent owner claiming to have the same invention and who has an earlier effective filing date if the invention claimed by the earlier patent owner was derived from the inventor claimed in the patent owned by the person seeking relief. Requires such an action to be filed before the end of a specified one-year period. 
 
Sets forth derived patent provisions. Replaces: (1) interference proceedings with derivation proceedings, and (2) the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board). 
 
Requires reports from: (1) the Small Business Administration (SBA) on the effects of eliminating the use of dates of invention in the patent application process, particularly on small businesses; and (2) the U.S. Patent and Trademark Office (USPTO) on the operation of prior user rights in selected countries in the industrialized world.
 
Expresses the sense of Congress that converting from a &quot;first to invent&quot; to a &quot;first inventor to file&quot; patent registration system will: (1) provide inventors with greater certainty regarding the scope of protection, and (2) promote international uniformity by harmonizing the U.S. patent system with systems commonly used in other countries with whom the United States conducts trade.
 
(Sec. 4) Modifies requirements regarding the oath or declaration required of an inventor.
 
Allows a person to whom an inventor has assigned (or is under an obligation to assign) an invention to make an application for patent.
 
(Sec. 5) Replaces the earlier inventor to file defense to infringement for business methods with enumerated personal defenses available in actions involving validity or infringement, under specified conditions and subject to exceptions, with respect to subject matter consisting of a process, or of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted if: (1) the person commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and (2) the commercial use occurred at least one year before the earlier of either the effective filing date of the claimed invention or the date on which the claimed invention was disclosed to the public in a manner that qualified as an exception from prior art.
 
Sets forth guidelines for assessing commercial use in a premarketing regulatory review period and by nonprofit research laboratories or entities. Prohibits certain institutions of higher education and technology transfer organizations from asserting such defenses. 
 
Restricts transfers of the right to assert such defenses.
 
Prohibits deeming a patent invalid on novelty or non-obvious subject matter grounds solely because such prior commercial use defenses are raised or established. 
 
(Sec. 6) Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the U.S. Patent and Trademark Office (USPTO) to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications.
 
Limits the filing of petitions for post-grant review to the nine-month period beginning after the grant of patent or issuance of a reissue patent. Requires any petition for inter partes review to be filed after the later of: (1) nine months after the grant or reissue, or (2) the date of termination of a post-grant review.
 
Directs the USPTO to make public data available on the length of time between the institution of, and issuance of a final written decision for, each post-grant and inter partes review.
 
Prohibits the USPTO Director (defined as the Under Secretary of Commerce for Intellectual Property and USPTO Director) from authorizing: (1) inter partes review unless the petition shows a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications.
 
Disallows: (1) post-grant review and inter partes review if the petitioner (or real party in interest) has filed a related civil action before filing the petition, and (2) inter partes review if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement. Prohibits the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews that result in a final Board decision. 
 
Allows any person, at any time, to cite to the USPTO: (1) prior art bearing on the patentability of a claim, and (2) statements of the patent owner filed in a proceeding before a federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. Requires, on written request of the person citing prior art or written statements, that that person's identity be kept confidential.
 
Sets forth the standards applicable to inter partes reexamination during the intervening period between the enactment of this Act and the effective date of inter partes review.
 
(Sec. 7) Sets forth the Board's required composition and duties. Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
 
(Sec. 8) Allows any third party to submit any publication of potential relevance to a patent application (commonly referred to as preissuance submissions).
 
(Sec. 10) Authorizes the Director, for a seven-year period and subject to conditions, to set or adjust by rule any fee established, authorized, or charged by the USPTO under specified federal patent and trademark laws. Requires the Director to notify Congress of (and publish in the Federal Register) certain proposed fee changes.
 
Reduces certain fees to qualified small entities (including fees for prioritized examination of utility and plant applications) and any micro entity. 
 
Defines the term &quot;micro entity&quot; as a certifying applicant who: (1) qualifies as a small entity as defined in regulations issued by the Director; (2) has not been named as an inventor on more than four previously filed patent applications, as specified; and (3) has gross income below a designated level without having transferred ownership interest in the application to an entity with gross income exceeding such limit. Authorizes the Director to impose income, annual filing, and other micro entity qualification limits under provisions related to institutions of higher education.
 
Establishes an additional fee of $400 for original patent applications filed non-electronically.
 
(Sec. 11) Sets forth fees for filing, excess claims, examination, issue, disclaimer, appeal, revival, extension, maintenance, patent search, small entity, national fees (for certain international applications), and other specified fees.
 
Establishes prioritized examination fees and a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Terminates such surcharges and prioritized examination fees on the effective date of the setting or adjustment of the underlying fee pursuant to the Director's exercise of authority under section 10 of this Act for the first time with respect to that fee.
 
(Sec. 12) Establishes supplemental examinations to consider, reconsider, and correct information. Requires the Director to order reexamination if a substantial new question of patentability is raised by at least one item of information in the request.
 
Requires the Director to confidentially refer to the Attorney General (DOJ) any material fraud on the USPTO that may have been committed in connection with a patent when the Director becomes aware of such fraud during an ordered supplemental examination or reexamination proceeding.
 
(Sec. 13) Decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and correspondingly increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. (An existing provision defines the term &quot;funding agreement&quot; as a contract, grant, or cooperative agreement entered into between a federal agency and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the federal government.)
 
(Sec. 14) Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
 
(Sec. 15) Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
 
(Sec. 16) Allows virtual markings (markings that direct the public to a freely-accessible Internet address where a patented article is associated with its patent number) to provide public notice that an article is patented. Requires the Director, within three years, to report to Congress on the ability of the public to obtain information from such virtual marking and related legal issues.
 
Revises provisions addressing false marking actions to: (1) prohibit anyone other than the United States from suing for the applicable penalty, and (2) allow only a person who has suffered a competitive injury to file a civil action for recovery of damages adequate to compensate for the injury. (Current law allows any person to sue for a penalty of $500 for every such offense, in which event one-half is awarded to the person and one-half to the United States.)
 
Exempts from false marking liability virtual markings with matter relating to a patent that covered that product but has expired.
 
(Sec. 17) Bars using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
 
(Sec. 18) Requires the Director to establish, with specified standards and procedures, an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents (claiming a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except technological inventions). 
 
(Sec. 19) Amends the federal judicial code to deny state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. Grants the CAFC exclusive jurisdiction of appeals relating to patents or plant variety protection. Adds procedural provisions regarding joinder of accused infringers in patent cases.
 
Provides for the removal to a U.S. district court of legal actions involving patents, plant variety protection, or copyrights, and for the remand of unrelated matters.
 
(Sec. 21) Permits the USPTO to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. Authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges appointed under specified provisions.
 
(Sec. 22) Establishes in the Treasury a Patent and Trademark Fee Reserve Fund in which any USPTO fee collections for a fiscal year in excess of the amount appropriated for that fiscal year must be deposited. Directs, to the extent and in the amounts provided in appropriations Acts, amounts in the Fund to be available until expended only for obligation and expenditure by the USPTO in accordance with provisions requiring: (1) specified patent fees and any related surcharges to be used only for expenses relating to processing patent applications and other activities, services, and materials relating to patents and to cover a share of administrative costs; and (2) specified trademark fees collected under the Trademark Act of 1946 and any related surcharges to be used only for such costs relating to trademarks.
 
 (Sec. 23) Requires the Director, within a three-year period using specified criteria, to establish at least three U.S. satellite offices for the USPTO and submit a related report to Congress.
 
(Sec. 24) Designates the satellite office to be located in Detroit, Michigan, as the &quot;Elijah J. McCoy United States Patent and Trademark Office.&quot;
 
(Sec. 25) Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
 
(Sec. 26) Requires the Director, within four years, to submit a report to Congress assessing federal patent policies, the implementation of this Act, competitiveness of U.S. markets, and access to capital for investment by small businesses.
 
(Sec. 27) Requires the Director to conduct a study and report to Congress on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. Defines &#147;confirming genetic diagnostic test activity&#148; as the performance of a genetic diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an independent confirmation of results obtained from another test provider&#146;s prior performance of the test on the individual.
 
(Sec. 28) Requires the Director to establish a Patent Ombudsman Program using available resources.
 
(Sec. 29) Directs the Director to establish methods for studying the diversity of patent applicants, including applicants who are minorities, women, or veterans. Prohibits using the results to provide any preferential treatment to patent applicants.
 
(Sec. 30) Expresses the sense of Congress that the patent system should protect small businesses and inventors from predatory behavior that could result in cutting off innovation.
 
(Sec. 31) Requires the Director to study and report to Congress on how the USPTO, in coordination with other federal agencies, can help small businesses with international patent protection and whether a revolving fund loan or grant program should be established to help pay the costs of filing, maintaining, and enforcing such international patent applications.
 
(Sec. 32) Directs the Director to support intellectual property law associations in establishing pro bono programs to assist financially under-resourced independent inventors and small businesses.
 
(Sec. 33) Prohibits issuing a patent on a claim directed to or encompassing a human organism in any application pending or filed on or after the enactment of this Act.
 
(Sec. 34) Directs the Comptroller General (GAO) to submit a report on the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims under specified federal patent laws and regulations.
 
(Sec. 35) Declares that this Act shall take effect one year after enactment and apply to any patent issued on or after that effective date, except as otherwise provided.
 
(Sec. 37) Sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.


Legislative actions:
action_date: 2011-09-16
text: Became Public Law No: 112-29.
action_date: 2011-09-16
text: Became Public Law No: 112-29.
action_date: 2011-09-16
text: Signed by President.
action_date: 2011-09-16
text: Signed by President.
action_date: 2011-09-12
text: Presented to President.
action_date: 2011-09-12
text: Presented to President.
action_date: 2011-09-08
text: Message on Senate action sent to the House.
action_date: 2011-09-08
text: Passed Senate without amendment by Yea-Nay Vote. 89 - 9. Record Vote Number: 129.
action_date: 2011-09-08
text: Passed/agreed to in Senate: Passed Senate without amendment by Yea-Nay Vote. 89 - 9. Record Vote Number: 129.
action_date: 2011-09-08
text: Considered by Senate. (consideration: CR S5402-5443)
action_date: 2011-09-07
text: Measure laid before Senate by motion.
action_date: 2011-09-07
text: Motion to proceed to consideration of measure agreed to in Senate. (consideration: CR S5370-5377)
action_date: 2011-09-07
text: Motion to proceed to measure considered in Senate. (consideration: CR S5353-5357)
action_date: 2011-09-06
text: Cloture on the motion to proceed to the measure invoked in Senate by Yea-Nay Vote. 93 - 5. Record Vote Number: 125. (consideration: CR S5328; text: CR S5328)
action_date: 2011-08-02
text: Cloture motion on the motion to proceed to the measure presented in Senate. (consideration: CR S5281; text: CR S5281)
action_date: 2011-08-02
text: Motion to proceed to consideration of measure made in Senate. (consideration: CR S5281)
action_date: 2011-06-28
text: Read the second time. Placed on Senate Legislative Calendar under General Orders. Calendar No. 87.
action_date: 2011-06-27
text: Received in the Senate. Read the first time. Placed on Senate Legislative Calendar under Read the First Time.
action_date: 2011-06-23
text: The Clerk was authorized to correct section numbers, punctuation, and cross references, and to make other necessary technical and conforming corrections in the engrossment of H.R. 1249.
action_date: 2011-06-23
text: On passage Passed by recorded vote: 304 - 117 (Roll no. 491).
action_date: 2011-06-23
text: Motion to reconsider laid on the table Agreed to without objection.
action_date: 2011-06-23
text: Passed/agreed to in House: On passage Passed by recorded vote: 304 - 117 (Roll no. 491).
action_date: 2011-06-23
text: On motion to recommit with instructions Failed by recorded vote: 172 - 251 (Roll no. 490).
action_date: 2011-06-23
text: The previous question on the motion to recommit with instructions was ordered without objection. (consideration: CR H4504)
action_date: 2011-06-23
text: DEBATE - The House proceeded with ten minutes of debate on the motion to recommit with instructions. The instructions contained in the motion seek to report the same to the House with an amendment to require the U.S. Patent Office to prioritize patent applications filed by entities that pledge to develop or manufacture their products, processes, and technologies in the U.S., including, specifically, those filed by small businesses and individuals.
action_date: 2011-06-23
text: Mr. Miller (NC) moved to recommit with instructions to Judiciary. (consideration: CR H4503-4505; text: CR H4503)
action_date: 2011-06-23
text: The House adopted the amendment in the nature of a substitute as agreed to by the Committee of the Whole House on the state of the Union. (text: CR 6/22/2011 H4433-4438)
action_date: 2011-06-23
text: The previous question was ordered pursuant to the rule. (consideration: CR H4503)
action_date: 2011-06-23
text: The House rose from the Committee of the Whole House on the state of the Union to report H.R. 1249.
action_date: 2011-06-23
text: Mr. Jackson (IL) raised a point of order. Subsequent to the completion of a roll call vote on the Conyers amendment No. 9, the final disposition was called into question and by unanimous consent, the proceedings were vacated and the Conyers amendment No. 9 was redesignated and the question of adoption was put again by the Chair de novo for a re-vote by the Committee of the Whole.
action_date: 2011-06-23
text: UNFINISHED BUSINESS - The Chair announced that the unfinished business was on the adoption of amendments which had been debated earlier and on which further proceedings were postponed.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Schock amendment, the Chair put t he question on adoption of the amendment and by voice vote, announced the ayes had prevailed. Mr. Smith (TX) demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Schock amendment no. 15.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Rohrabacher amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Rohrabacher demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Rohrabacher amendment no. 14.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Manzullo amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Manzullo demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Manzullo amendment no. 13.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Sensenbrenner amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Sensenbrenner demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Sensenbrenner amendment no. 12.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Watt amendment no. 11.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Speier amendment no. 10.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Conyers amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Conyers demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Conyers amendment no. 9.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Polis (CO) amendment no. 8.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Peters amendment no. 7.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Lujan amendment no. 6.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Jackson Lee (TX) amendment no. 5.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Moore amendment no. 4.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Baldwin amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Ms. Baldwin demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Baldwin amendment no. 3.
action_date: 2011-06-23
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Conyers amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Conyers demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-23
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Conyers amendment no. 2.
action_date: 2011-06-23
text: UNFINISHED BUSINESS - The Chair announced the unfinished business was on the question of adoption of an amendment which had been debated earlier and on which further proceedings were postponed.
action_date: 2011-06-23
text: The House resolved into Committee of the Whole House on the state of the Union for further consideration.
action_date: 2011-06-23
text: Considered as unfinished business. (consideration: CR H4480-4505)
action_date: 2011-06-22
text: Committee of the Whole House on the state of the Union rises leaving H.R. 1249 as unfinished business.
action_date: 2011-06-22
text: On motion to rise Agreed to by voice vote.
action_date: 2011-06-22
text: Mr. Smith (TX) moved to rise.
action_date: 2011-06-22
text: POSTPONED PROCEEDINGS - At the conclusion of debate on the Smith (TX) amendment, the Chair put the question on adoption of the amendment and by voice vote, announced the noes had prevailed. Mr. Smith (TX) demanded a recorded vote and the Chair postponed further proceedings on the question of adoption of the amendment until a time to be announced.
action_date: 2011-06-22
text: DEBATE - Pursuant to the provsions of H. Res. 316, the Committee of the Whole proceeded with 10 minutes of debate on the Smith (TX) amendment.
action_date: 2011-06-22
text: GENERAL DEBATE - The Committee of the Whole proceeded with one hour of general debate on H.R. 1249.
action_date: 2011-06-22
text: DEBATE - The Committee of the Whole proceeded with twenty minutes of debate on the question of constitutionality of the measure.
action_date: 2011-06-22
text: The Speaker designated the Honorable Tom Graves to act as Chairman of the Committee.
action_date: 2011-06-22
text: House resolved itself into the Committee of the Whole House on the state of the Union pursuant to H. Res. 316 and Rule XVIII.
action_date: 2011-06-22
text: Rule provides for consideration of H.R. 2021 and H.R. 1249. Previous question shall be considered as ordered without intervening motions except motion to recommit with or without instructions. Measures will be considered read. Specified amendments are in order. The resolution provides for one hour of general debate for H.R. 2021 and 80 minutes of general debate for H.R. 1249. The resolution also provides that for H.R. 1249, the amendment in the nature of a substitute recommended by the Committee on the Judiciary shall be considered as an original bill for the purpose of amendment under the five-minute rule.
action_date: 2011-06-22
text: Considered under the provisions of rule H. Res. 316. (consideration: CR H4420-4452)
action_date: 2011-06-22
text: Rule H. Res. 316 passed House.
action_date: 2011-06-21
text: Rules Committee Resolution H. Res. 316 Reported to House. Rule provides for consideration of H.R. 2021 and H.R. 1249. Previous question shall be considered as ordered without intervening motions except motion to recommit with or without instructions. Measure will be considered read. Specified amendments are in order. The resolution provides for one hour of general debate for H.R. 2021 and 80 minutes of general debate for H.R. 1249. The resolution also provides that for H.R. 1249, the amendment in the nature of a substitute recommended by the Committee on the Judiciary shall be considered as an original bill for the purpose of amendment under the five-minute rule.
action_date: 2011-06-01
text: Placed on the Union Calendar, Calendar No. 54.
action_date: 2011-06-01
text: Committee on The Budget discharged.
action_date: 2011-06-01
text: Committee on The Budget discharged.
action_date: 2011-06-01
text: Reported (Amended) by the Committee on Judiciary. H. Rept. 112-98, Part I.
action_date: 2011-06-01
text: Reported (Amended) by the Committee on Judiciary. H. Rept. 112-98, Part I.
action_date: 2011-04-14
text: Ordered to be Reported (Amended) by the Yeas and Nays: 32 - 3.
action_date: 2011-04-14
text: Committee Consideration and Mark-up Session Held.
action_date: 2011-04-11
text: Subcommittee on Intellectual Property, Competition and the Internet Discharged.
action_date: 2011-03-30
text: Subcommittee Hearings Held.
action_date: 2011-03-30
text: Referred to the Subcommittee on Intellectual Property, Competition and the Internet.
action_date: 2011-03-30
text: Referred to the Committee on the Judiciary, and in addition to the Committee on the Budget, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concerned.
action_date: 2011-03-30
text: Referred to the Committee on the Judiciary, and in addition to the Committee on the Budget, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concerned.
action_date: 2011-03-30
text: Introduced in House
action_date: 2011-03-30
text: Introduced in House

Enacted as: number: 112-29