Innovation Act

Bill: 113-hr-3309
Sponsor: full_name: Rep. Goodlatte, Bob [R-VA-6]
Introduced: 2013-10-23
Policy area: Commerce
Subjects: Administrative law and regulatory procedures

Administrative remedies

Bankruptcy

Civil actions and liability

Computers and information technology

Congressional oversight

Department of Commerce

Drug safety, medical device, and laboratory regulation

Evidence and witnesses

Foreign language and bilingual programs

Fraud offenses and financial crimes

Government buildings, facilities, and property

Government information and archives

Government studies and investigations

Intellectual property

Internet and video services

Internet, web applications, social media

Judicial procedure and administration

Judicial review and appeals

Lawyers and legal services

Legal fees and court costs

Licensing and registrations

Manufacturing

Minority and disadvantaged businesses

Small business

Veterinary medicine and animal diseases

Women in business
Latest action: action_date: 2013-12-09
text: Received in the Senate and Read twice and referred to the Committee on the Judiciary.

Summaries:
action_date: 2013-10-23
action_desc: Introduced in House
text: <p>Innovation Act - Directs a party alleging infringement in a civil action involving a claim for relief arising under any Act of Congress relating to patents to include in the court pleadings, unless the information is not reasonably accessible, specified details concerning: (1) each claim of each patent allegedly infringed, including each accused apparatus, feature, function, method, service, or other accused instrumentality; (2) the person alleged to be the direct infringer for each claim alleged to have been infringed indirectly; (3) the principal business of the party alleging infringement; (4) each complaint filed that asserts any of the same patents; and (5) whether the patent has been declared essential, potentially essential, or having potential to become essential to any standard-setting body as well as whether the United States or a foreign government has imposed any specific licensing requirements.</p> <p>Requires courts to award prevailing parties reasonable fees and other expenses incurred in connection with such actions, unless the position of the nonprevailing party was substantially justified or special circumstances make an award unjust.</p> <p>Allows the court, if a nonprevailing party is unable to pay such fees and expenses, to make the fees and expenses recoverable against any interested party that has been joined to the action. </p> <p>Requires the court to grant a motion by a party defending against an allegation of infringement to join an interested party if such defending party shows that the party alleging infringement has no substantial interest other than asserting the patent claim in litigation.</p> <p>Defines "interested party" as a person, other than the party alleging infringement, that: (1) is an assignee of the patent; (2) has a right, including a contingent right, to enforce or sublicense the patent; or (3) has a direct financial interest in the patent, including the right to any part of an award of damages or licensing revenue.</p> <p>Limits discovery to only the information necessary to determine the meaning of patent terms when the court requires a ruling relating to the construction of terms used in a patent claim asserted in the complaint.</p> <p>Requires plaintiffs, upon filing an initial complaint, to disclose to the U.S. Patent and Trademark Office (USPTO), the court, and each adverse party the identity of: (1) the assignee, (2) any entity with a right to sublicense or enforce the patent, (3) any entity that the plaintiff knows to have a financial interest in the patent or the plaintiff, and (4) the ultimate parent entity of any such identified assignee or entity.</p> <p>Requires courts to grant a motion to stay an action against a customer accused of infringing a patent based on a product or process under specified conditions when: (1) the manufacturer is a party to the action or to a separate action involving the same patent related to the same product or process, and (2) the customer agrees to be bound by any judgment entered against such manufacturer.</p> <p>Exempts from pleading, disclosure, and lift of stay requirements patent actions that include certain claims relating to abbreviated new drug applications for generic drugs under the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act, including animal drugs, veterinary products, and other biological products. </p> <p>Directs the Judicial Conference of the United States to develop discovery rules and procedures, to be implemented by U.S. districts courts and the U.S. Court of Federal Claims, under which each party to the action is: (1)&nbsp;entitled to receive specified categories of core documentary evidence and is to be responsible for the costs of producing such evidence within its possession or control; and (2) permitted to&nbsp;seek any additional document discovery if the requesting party bears the reasonable costs, including reasonable attorney's fees, of the additional discovery. </p> <p>Provides for discovery of electronic communications to occur only if the parties determine that it is necessary and only after the parties have exchanged initial disclosures and core documentary evidence. </p> <p>Makes U.S. bankruptcy law applicable in cross-border bankruptcy cases in which the debtor is a licensor of intellectual property rights and a foreign proceeding is pending in the country where the debtor has the center of its main interests, thereby permitting a licensee to retain its right in such intellectual property if the trustee rejects the underlying executory contract.</p> <p>Directs the USPTO to notify the public on its website when a patent case is brought in federal court.</p> <p>Amends the Leahy-Smith America Invents Act (AIA) to:</p> <ul> <li>repeal a procedure that allows a patent applicant dissatisfied with a decision of the Patent Trial and Appeal Board (PTAB) to seek a patent through a civil action against the USPTO in the U.S. District Court for the Eastern District of Virginia (but retains provisions authorizing the applicant to appeal a PTAB decision to the U.S. Court of Appeals for the Federal Circuit); </li> <li>limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions (or certain U.S. International Trade Commission [USITC] proceedings) to only those grounds that the petitioner actually raised during post-grant review (currently, the petitioner is estopped from asserting claims that the petitioner raised or could have raised during such review);</li> <li>require claims of patent in post-grant and inter partes review proceedings to be construed in the same manner as a court would construe such claims in a civil action to invalidate the patent, including by interpreting the claim in accordance with its ordinary and customary meaning as well as the prosecution history pertaining to the patent (currently, the USPTO construes claims by considering the broadest reasonable interpretation);</li> <li>codify judicial doctrine relating to the consideration of prior art in cases of double patenting for the purpose of determining the nonobviousness of a second patent's claimed invention, thereby specifying that such doctrine continues to apply under the AIA's first-inventor-to-file patent system; and </li> <li>exclude any time consumed by an applicant's request for continued examination from the calculation of a patent term adjustment that is based on the USPTO failing to issue a patent within three years.</li> </ul> <p>Revises the post-issuance covered business method patent review program to: (1) limit the program to challenges against first-to-invent patents; (2) make the program permanent (currently, an eight-year transitional program); (3) require the definition of "covered business method patent," as it relates to a financial product or service, to be construed consistently with the PTAB institution decision in <i>SAP America, Inc. v. Versata Dev. Group, Inc.</i>, which was released on January 9, 2013; (4) expand the scope of prior art that may serve as the basis of a challenge; and (5) permit the USPTO to waive filing fees.</p>

action_date: 2013-12-02
action_desc: Reported to House with amendment(s)
text: <p>Innovation Act - (Sec. 3) Directs a party alleging infringement in a civil action involving a claim for relief arising under any Act of Congress relating to patents to include in the court pleadings, unless the information is not reasonably accessible, specified details concerning: </p> <ul> <li>each claim of each patent allegedly infringed, including each accused process, machine, manufacture, or composition of matter (referred to as an &quot;accused instrumentality&quot;) alleged to infringe the claim; </li> <li>for each claim of indirect infringement, the acts of the alleged indirect infringer that contribute to, or are inducing, a direct infringement;</li> <li> the principal business, if any, of the party alleging infringement; </li> <li>the authority of the party alleging infringement to assert each patent and the grounds for the court's jurisdiction;</li> <li>each complaint filed that asserts any of the same patents; and</li> <li>whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that body, as well as whether the United States or a foreign government has imposed any specific licensing requirements.</li> </ul> <p>Requires courts to award prevailing parties reasonable fees and other expenses incurred in connection with such actions unless: (1) the position and conduct of the nonprevailing party was reasonably justified in law and fact, or (2) special circumstances (such as severe economic hardship to a named inventor) make an award unjust.</p> <p>Directs courts, upon a motion of a party, to require another party to certify whether it will be able to pay any award of such fees and expenses in the event that such an award is made against such other party. Allows the court, if a nonprevailing party is unable to pay such a fee award made against it, to make a party that has been joined to the action with respect to such party liable for the unsatisfied portion of such award. </p> <p>Deems to be a nonprevailing party a party asserting a patent claim against another party who subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent at issue (thus providing for the other party to be considered the prevailing party), unless the party asserting the claim, at the time the covenant was extended, would have been entitled to voluntarily dismiss the claim without a court order. </p> <p>Requires the court, upon a motion by a prevailing party defending against an allegation of infringement in a case in which the nonprevailing party alleging infringement is unable to pay an award of fees and expenses, to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting the patent claim in litigation.</p> <p>Defines "interested party" as a person, other than the party alleging infringement, that: (1) is an assignee of the patent; (2) has a right, including a contingent right, to enforce or sublicense the patent; or (3) has a direct financial interest in the patent, including the right to any part of an award of damages or licensing revenue, subject to exceptions for attorneys providing legal representation and owners of equity interests in the party alleging infringement.</p> <p>Permits a court to deny a joinder motion if: (1) the interested party is not subject to service of process, or (2) the joinder would deprive the court of subject matter jurisdiction or make venue improper.</p> <p>Prohibits an interested party from being joined unless it has been provided actual notice, within 30 days after it has been identified in a disclosure made upon the filing of an initial complaint, that it may be an interested party subject to joinder. Requires such notice to be provided by the party who subsequently moves to join the interested party after fees and expenses have been awarded and the nonprevailing party alleging infringement is unable to pay.</p> <p>Requires the court to deny a joinder motion if the interested party, after receiving such notice, renounces any ownership, right, or direct financial interest in the patents at issue.</p> <p>Limits discovery to only the information necessary to determine the meaning of patent terms when the court requires a ruling relating to the construction of terms used in a patent claim asserted in the complaint.</p> <p>Requires a court to permit additional discovery if resolution of the action within a specified period of time will necessarily affect the rights of a party with respect to the patent.</p> <p>Allows a court to permit additional discovery in special circumstances as necessary to prevent a manifest injustice.</p> <p>Expresses the sense of Congress that: (1) parties who send purposely evasive demand letters to end users alleging patent infringement are abusing the patent system in a manner that is against public policy, and (2) actions or litigation stemming from such purposeful evasion should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive.</p> <p>Prohibits a claimant seeking to establish willful infringement from relying on evidence of pre-suit notification of infringement unless such notification: (1) identifies the asserted patent and the product or process accused; and (2) explains, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes the claims of the patent.</p> <p>(Sec. 4) Requires plaintiffs, upon filing an initial complaint, to disclose to the U.S. Patent and Trademark Office (USPTO), the court, and each adverse party the identity of: (1) the assignee, (2) any entity with a right to sublicense or enforce the patent, (3) any entity that the plaintiff knows to have a specified financial interest in the patent or the plaintiff, and (4) the ultimate parent entity of any such identified assignee or entity. Directs plaintiffs, or subsequent owners of the patent, to provide the USPTO with updates regarding such information after the initial identification. </p> <p>(Sec. 5) Requires courts to grant a motion to stay an action against a customer accused of infringing a patent based on a product or process under specified conditions when: (1) the manufacturer is a party to the action or to a separate action involving the same patent related to the same product or process; and (2) the customer agrees to be bound by any issues in common with, and finally decided as to, such manufacturer in the action to which the manufacturer is a party.</p> <p>Authorizes the court, if the manufacturer consents to or declines to appeal a judgment with respect an issue in common with such a customer, to determine, upon grant of a motion, that the consent judgment or unappealed decision is not binding on the customer based on a showing that such an outcome would unreasonably prejudice and be manifestly unjust to such customer.</p> <p>Exempts from pleading, disclosure, and lift of stay requirements patent actions that include certain claims relating to abbreviated new drug applications for generic drugs under the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act, including animal drugs, veterinary products, and other biological products.</p> <p>(Sec. 6) Directs the Judicial Conference of the United States to develop discovery rules and procedures, to be implemented by U.S. districts courts and the U.S. Court of Federal Claims, that address whether and to what extent each party to the action is: (1)&nbsp;entitled to receive specified categories of core documentary evidence and is to be responsible for the costs of producing such evidence within its possession or control; and (2) permitted to&nbsp;seek any additional document discovery if the requesting party bears the reasonable costs, including reasonable attorney's fees, of the additional discovery. </p> <p>Provides for discovery of electronic communications (including emails, text messages, or instant messages) only if the parties determine that it is appropriate under procedures that address whether such discovery is to occur after the parties have exchanged initial disclosures and core documentary evidence. </p> <p>Directs the Judicial Conference to consider a prohibition that would bar additional document discovery unless: (1) the parties mutually agree otherwise; or (2) the requesting party posts a bond, or provides security, in an amount sufficient to cover the expected costs or shows that it has the financial capacity to pay such costs.</p> <p>Requires the Judicial Conference to consider whether courts, in response to a motion, may: (1) determine that a request for additional document discovery is excessive, irrelevant, or abusive; (2) modify discovery rules; or (3) include computer code in the discovery of core documentary evidence.</p> <p>Directs the Judicial Conference to study the efficacy of such rules and procedures during the four-year period after implementation by the courts. Specifies the circumstances under which the Judicial Conference is authorized to modify rules during and after such period.</p> <p>Requires the Supreme Court to eliminate the model patent infringement complaint form currently provided in the Federal Rules of Civil Procedure. Permits the Supreme Court to prescribe new model allegations that, at a minimum, notify accused infringers of: (1) the asserted claims, (2) the products or services accused of infringement, and (3) the plaintiff's theory for how each accused product or service meets each limitation of each asserted claim.</p> <p>Makes U.S. bankruptcy law applicable in cross-border bankruptcy cases in which the debtor is a licensor of intellectual property rights and a foreign proceeding is pending in the country where the debtor has the center of its main interests, thereby permitting a licensee to retain its right in such intellectual property if the trustee rejects the underlying executory contract.</p> <p>Expands the definition of &quot;intellectual property&quot; as it applies to federal bankruptcy code to include trademarks, service marks, or trade names (thereby providing for trademark licenses to be retained instead of voided in bankruptcy).</p> <p>Prohibits trustees, if a trademark licensee elects to retain such rights, from being relieved of a contractual obligation to monitor and control the quality of a licensed product or service.</p> <p>(Sec. 7) Requires the USPTO Director to develop educational resources for small businesses to address patent infringement concerns.</p> <p>Requires education and awareness on abusive patent litigation practices to be provided through the Patent Ombudsman Program in coordination with the Small Business Administration (SBA) and the Minority Business Development Agency.</p> <p>Directs the USPTO to notify the public on its website when a patent case is brought in federal court, including by providing patent ownership information with respect to each patent at issue in a manner that is searchable by patent number, art area, and entity. </p> <p>(Sec. 8) Requires the USPTO to study and report to Congress with recommendations regarding: (1) secondary market patent transactions, including transparency, accountability, licensing, and other oversight requirements; (2) patents owned by the U.S. government, including an examination of how such patents are licensed and sold, whether restrictions should be placed on patents acquired from the U.S. government, and whether agencies owning such patents maintain adequate records and a point of contact responsible for managing such portfolios; and (3) the prevalence of patent demand letters (indicating that the recipient or anyone affiliated with the recipient is or may be infringing the patent) sent in bad faith and the extent to which such practices may, through fraudulent or deceptive practices, impose a negative impact on the marketplace. </p> <p>Requires reports from the Comptroller General (GAO) concerning: (1) technologies available to improve USPTO patent examination and patent quality, including an examination of best practices at foreign patent offices, procedures to prevent double patenting through applicant filings in multiple art areas, and prior art databases and search software; and (2) business method patents, including the volume and nature of litigation involving such patents and an examination of the quality of such patents asserted in suits alleging infringement. </p> <p>Directs the Administrative Office of the United States Courts to study and report to Congress with recommendations regarding the potential development of a pilot program for patent small claims courts in certain judicial districts.</p> <p>(Sec. 9) Amends the Leahy-Smith America Invents Act (AIA) to:</p> <ul> <li>repeal a procedure that allows a patent applicant dissatisfied with a decision of the Patent Trial and Appeal Board (PTAB) to seek a patent through a civil action against the USPTO in the U.S. District Court for the Eastern District of Virginia (but retains provisions authorizing the applicant to appeal a PTAB decision to the U.S. Court of Appeals for the Federal Circuit); </li> <li>limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions (or certain U.S. International Trade Commission [USITC] proceedings) to only those grounds that the petitioner actually raised during post-grant review (currently, the petitioner is estopped from asserting claims that the petitioner raised or could have raised during such review);</li> <li>require claims of patent in post-grant and inter partes review proceedings to be construed in the same manner as a court would construe such claims in a civil action to invalidate the patent, including by interpreting the claim in accordance with its ordinary and customary meaning, as well as the prosecution history pertaining to the patent (currently, the USPTO construes claims by considering the broadest reasonable interpretation);</li> <li>codify judicial doctrine relating to the consideration of prior art in cases of double patenting for the purpose of determining the nonobviousness of a second patent's claimed invention, thereby specifying that such doctrine continues to apply under the AIA's first-inventor-to-file patent system;</li> <li>revise the transitional covered business method patent review program to expand the scope of prior art that may serve as the basis of a challenge and permit the USPTO to waive filing fees; and </li> <li>exclude any time consumed by an applicant's request for continued examination from the calculation of a patent term adjustment that is based on the USPTO failing to issue a patent within three years.</li> </ul> <p>Declares that the federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial federal issue that is important to the federal system as a whole.</p> <p>Extends by an additional 10 years the duration of the patent pilot program under which U.S. district court judges in designated judicial districts can request to be assigned to hear patent cases.</p> <p>Extends from one to two years the time limit for the USPTO Director to commence a misconduct proceeding to suspend or exclude a person from practicing before the USPTO once the misconduct forming the basis for the proceeding is made known to a USPTO officer or employee.</p> <p>Repeals an amendment to USPTO procedures for receiving international applications, scheduled to become effective under the Patent Law Treaties Implementation Act of 2012, that would allow international applications to be filed with the USPTO in a language other than English, provided that the applicant subsequently filed an English translation (thereby retaining a requirement that international applications be filed in English).</p>

action_date: 2013-12-05
action_desc: Passed House amended
text: <p>Innovation Act - (Sec. 3) Directs a party alleging infringement in a civil action involving a claim for relief arising under any Act of Congress relating to patents to include in the court pleadings, unless the information is not reasonably accessible, specified details concerning: </p> <ul> <li>each claim of each patent allegedly infringed, including each accused process, machine, manufacture, or composition of matter (referred to as an &quot;accused instrumentality&quot;) alleged to infringe the claim; </li> <li>for each claim of indirect infringement, the acts of the alleged indirect infringer that contribute to, or are inducing, a direct infringement;</li> <li> the principal business, if any, of the party alleging infringement; </li> <li>the authority of the party alleging infringement to assert each patent and the grounds for the court's jurisdiction;</li> <li>each complaint filed that asserts any of the same patents; and</li> <li>whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that body, as well as whether the United States or a foreign government has imposed any specific licensing requirements.</li> </ul> <p>Requires courts to award prevailing parties reasonable fees and other expenses incurred in connection with such actions unless: (1) the position and conduct of the nonprevailing party was reasonably justified in law and fact, or (2) special circumstances (such as severe economic hardship to a named inventor) make an award unjust.</p> <p>Directs courts, upon a motion of a party, to require another party to certify whether it will be able to pay any award of such fees and expenses in the event that such an award is made against such other party. Allows the court, if a nonprevailing party is unable to pay such a fee award made against it, to make a party that has been joined to the action with respect to such party liable for the unsatisfied portion of such award. </p> <p>Deems to be a nonprevailing party a party asserting a patent claim against another party who subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent at issue (thus providing for the other party to be considered the prevailing party), unless the party asserting the claim, at the time the covenant was extended, would have been entitled to voluntarily dismiss the claim without a court order. </p> <p>Requires the court, upon a motion by a prevailing party defending against an allegation of infringement in a case in which the nonprevailing party alleging infringement is unable to pay an award of fees and expenses, to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting the patent claim in litigation.</p> <p>Defines "interested party" as a person, other than the party alleging infringement, that: (1) is an assignee of the patent; (2) has a right, including a contingent right, to enforce or sublicense the patent; or (3) has a direct financial interest in the patent, including the right to any part of an award of damages or licensing revenue, subject to exceptions for attorneys providing legal representation and owners of equity interests in the party alleging infringement.</p> <p>Permits a court to deny a joinder motion if: (1) the interested party is not subject to service of process, or (2) the joinder would deprive the court of subject matter jurisdiction or make venue improper.</p> <p>Prohibits an interested party from being joined unless it has been provided actual notice, within 30 days after it has been identified in a disclosure made upon the filing of an initial complaint, that it may be an interested party subject to joinder. Requires such notice to be provided by the party who subsequently moves to join the interested party after fees and expenses have been awarded and the nonprevailing party alleging infringement is unable to pay.</p> <p>Requires the court to deny a joinder motion if the interested party, after receiving such notice, renounces any ownership, right, or direct financial interest in the patents at issue.</p> <p>Limits discovery to only the information necessary to determine the meaning of patent terms when the court requires a ruling relating to the construction of terms used in a patent claim asserted in the complaint. Makes such limitation inapplicable to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale of any allegedly infringing instrumentality that competes with a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement.</p> <p>Requires a court to permit additional discovery if resolution of the action within a specified period of time will necessarily affect the rights of a party with respect to the patent.</p> <p>Allows a court to permit additional discovery in special circumstances as necessary to prevent a manifest injustice.</p> <p>Allows parties to voluntarily consent to be excluded from specified discovery limitations under this Act and to instead proceed according to the Federal Rules of Civil Procedure. </p> <p>Expresses the sense of Congress that: (1) parties who send purposely evasive demand letters to end users alleging patent infringement are abusing the patent system in a manner that is against public policy, and (2) actions or litigation stemming from such purposeful evasion should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive.</p> <p>Prohibits a claimant seeking to establish willful infringement from relying on evidence of pre-suit notification of infringement unless such notification: (1) identifies the asserted patent, the product or process accused, and the ultimate parent entity of the claimant; and (2) explains, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes the claims of the patent.</p> <p>(Sec. 4) Requires plaintiffs, upon filing an initial complaint, to disclose to the U.S. Patent and Trademark Office (USPTO), the court, and each adverse party the identity of: (1) the assignee, (2) any entity with a right to sublicense or enforce the patent, (3) any entity that the plaintiff knows to have a specified financial interest in the patent or the plaintiff, and (4) the ultimate parent entity of any such identified assignee or entity. Directs plaintiffs, or subsequent owners of the patent, to provide the USPTO with updates regarding such information after the initial identification. </p> <p>(Sec. 5) Requires courts to grant a motion to stay an action against a customer accused of infringing a patent based on a product or process under specified conditions when: (1) the manufacturer is a party to the action or to a separate action involving the same patent related to the same product or process; and (2) the customer agrees to be bound by any issues in common with, and finally decided as to, such manufacturer in the action to which the manufacturer is a party.</p> <p>Authorizes the court, if the manufacturer consents to or declines to appeal a judgment with respect an issue in common with such a customer, to determine, upon grant of a motion, that the consent judgment or unappealed decision is not binding on the customer based on a showing that such an outcome would unreasonably prejudice and be manifestly unjust to such customer.</p> <p>Exempts from pleading, disclosure, and lift of stay requirements patent actions that include certain claims relating to abbreviated new drug applications for generic drugs under the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act, including animal drugs, veterinary products, and other biological products.</p> <p>(Sec. 6) Directs the Judicial Conference of the United States to develop discovery rules and procedures, to be implemented by U.S. districts courts and the U.S. Court of Federal Claims, that address whether and to what extent each party to the action is: (1)&nbsp;entitled to receive specified categories of core documentary evidence and is to be responsible for the costs of producing such evidence within its possession or control; and (2) permitted to&nbsp;seek any additional document discovery if the requesting party bears the reasonable costs, including reasonable attorney's fees, of the additional discovery. </p> <p>Provides for discovery of electronic communications (including emails, text messages, or instant messages) only if the parties determine that it is appropriate under procedures that address whether such discovery is to occur after the parties have exchanged initial disclosures and core documentary evidence. </p> <p>Directs the Judicial Conference to consider a prohibition that would bar additional document discovery unless: (1) the parties mutually agree otherwise; or (2) the requesting party posts a bond, or provides security, in an amount sufficient to cover the expected costs or shows that it has the financial capacity to pay such costs.</p> <p>Requires the Judicial Conference to consider whether courts, in response to a motion, may: (1) determine that a request for additional document discovery is excessive, irrelevant, or abusive; (2) modify discovery rules; or (3) include computer code in the discovery of core documentary evidence.</p> <p>Directs the Judicial Conference to study the efficacy of such rules and procedures during the four-year period after implementation by the courts. Specifies the circumstances under which the Judicial Conference is authorized to modify rules during and after such period.</p> <p>Requires the Supreme Court to eliminate the model patent infringement complaint form currently provided in the Federal Rules of Civil Procedure. Permits the Supreme Court to prescribe new model allegations that, at a minimum, notify accused infringers of: (1) the asserted claims, (2) the products or services accused of infringement, and (3) the plaintiff's theory for how each accused product or service meets each limitation of each asserted claim.</p> <p>Makes U.S. bankruptcy law, as it relates to intellectual property rights, applicable in cross-border bankruptcy cases under the Model Law on Cross-Border Insolvency. Specifies that if a foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract may elect to retain its right in such intellectual property. </p> <p>Expands the definition of &quot;intellectual property&quot; as it applies to federal bankruptcy code to include trademarks, service marks, or trade names (thereby providing for trademark licenses to be retained instead of voided in bankruptcy).</p> <p>Prohibits trustees, if a trademark licensee elects to retain such rights, from being relieved of a contractual obligation to monitor and control the quality of a licensed product or service.</p> <p>(Sec. 7) Requires the USPTO Director to develop educational resources for small businesses to address patent infringement concerns.</p> <p>Requires education and awareness on abusive patent litigation practices to be provided through existing USPTO small business patent outreach programs along with the Small Business Administration (SBA) and the Minority Business Development Agency.</p> <p>Directs the USPTO to notify the public on its website when a patent case is brought in federal court, including by providing patent ownership information with respect to each patent at issue in a manner that is searchable by patent number, art area, and entity. </p> <p>(Sec. 8) Requires the USPTO to study and report to Congress with recommendations regarding: (1) secondary market patent transactions, including transparency, accountability, licensing, and other oversight requirements; (2) patents owned by the U.S. government, including an examination of how such patents are licensed and sold, whether restrictions should be placed on patents acquired from the U.S. government, and whether agencies owning such patents maintain adequate records and a point of contact responsible for managing such portfolios; (3) the prevalence of patent demand letters (indicating that the recipient or anyone affiliated with the recipient is or may be infringing the patent) sent in bad faith and the extent to which such practices may, through fraudulent or deceptive practices, impose a negative impact on the marketplace; and (4) the economic impact of this Act on individuals and small businesses owned by women, veterans, and minorities.</p> <p>Requires reports from the Comptroller General (GAO) concerning: (1) technologies available to improve USPTO patent examination and patent quality, including an examination of best practices at foreign patent offices, procedures to prevent double patenting through applicant filings in multiple art areas, and prior art databases and search software; and (2) business method patents, including the volume and nature of litigation involving such patents and an examination of the quality of such patents asserted in suits alleging infringement. </p> <p>Directs the Administrative Office of the United States Courts to study and report to Congress with recommendations regarding the potential development of a pilot program for patent small claims procedures in certain judicial districts. </p> <p>(Sec. 9) Amends the Leahy-Smith America Invents Act (AIA) to:</p> <ul> <li>limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions (or certain U.S. International Trade Commission [USITC] proceedings) to only those grounds that the petitioner actually raised during post-grant review (currently, the petitioner is estopped from asserting claims that the petitioner raised or could have raised during such review);</li> <li>require claims of patent in post-grant and inter partes review proceedings to be construed in the same manner as a court would construe such claims in a civil action to invalidate the patent, including by interpreting the claim in accordance with its ordinary and customary meaning, as well as the prosecution history pertaining to the patent (currently, the USPTO construes claims by considering the broadest reasonable interpretation);</li> <li>codify judicial doctrine relating to the consideration of prior art in cases of double patenting for the purpose of determining the nonobviousness of a second patent's claimed invention, thereby specifying that such doctrine continues to apply under the AIA's first-inventor-to-file patent system;</li> <li>revise the transitional covered business method patent review program to expand the scope of prior art that may serve as the basis of a challenge and permit the USPTO to waive filing fees; and </li> <li>exclude any time consumed by an applicant's request for continued examination from the calculation of a patent term adjustment that is based on the USPTO failing to issue a patent within three years.</li> </ul> <p>Declares that the federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial federal issue that is important to the federal system as a whole.</p> <p>Extends by an additional 10 years the duration of the patent pilot program under which U.S. district court judges in designated judicial districts can request to be assigned to hear patent cases.</p> <p>Extends from 1 year to 18 months the time limit for the USPTO Director to commence a misconduct proceeding to suspend or exclude a person from practicing before the USPTO once the misconduct forming the basis for the proceeding is made known to a USPTO officer or employee.</p> <p>Repeals an amendment to USPTO procedures for receiving international applications, scheduled to become effective under the Patent Law Treaties Implementation Act of 2012, that would allow international applications to be filed with the USPTO in a language other than English, provided that the applicant subsequently filed an English translation (thereby retaining a requirement that international applications be filed in English).</p>

tv_txt: I 113th CONGRESS 1st Session H. R. 3309 IN THE HOUSE OF REPRESENTATIVES October 23, 2013 Mr. Goodlatte (for himself, Mr. DeFazio , Mr. Coble , Ms. Lofgren , Mr. Smith of Texas , Ms. Eshoo , Mr. Chaffetz , Mr. Bachus , Mr. Marino , Mr. Farenthold , and Mr. Holding ) introduced the following bill; which was referred to the Committee on the Judiciary A BILL To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes.

1. Short title; table of contents (a) Short title This Act may be cited as the Innovation Act . (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Patent infringement actions. Sec. 4. Transparency of patent ownership. Sec. 5. Customer-suit exception. Sec. 6. Procedures and practices to implement and recommendations to the Judicial Conference. Sec. 7. Small business education, outreach, and information access. Sec. 8. Studies on patent transactions, quality, and examination. Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act. Sec. 10. Effective date. 2. Definitions In this Act: (1) Director The term Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. (2) Office The term Office means the United States Patent and Trademark Office. 3. Patent infringement actions (a) Pleading requirements (1) Amendment Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following: 281A. Pleading requirements for patent infringement actions (a) Pleading requirements Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused apparatus, product, feature, device, method, system, process, function, act, service, or other instrumentality (referred to in this section as an accused instrumentality ) alleged to infringe the claim. (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality that, when used, allegedly results in the practice of the claimed invention. (5) For each accused instrumentality identified under paragraph (3), an explanation of— (A) where each element of each claim identified under paragraph (2) is found within the accused instrumentality; (B) whether each such element is infringed literally or under the doctrine of equivalents; and (C) with detailed specificity, how the terms in each claim identified under paragraph (2) correspond to the functionality of the accused instrumentality. (6) For each claim that is alleged to have been infringed indirectly, a description of— (A) the direct infringement; (B) any person alleged to be a direct infringer known to the party alleging infringement; and (C) the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. (7) A description of the right of the party alleging infringement to assert each— (A) patent identified under paragraph (1); and (B) patent claim identified under paragraph (2). (8) A description of the principal business of the party alleging infringement. (9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1). (10) For each patent identified under paragraph (1), whether such patent has been specifically declared as essential, potentially essential, or having potential to become essential to any standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. (b) Information not readily accessible A party required to disclose the information described under subsection (a) shall include with such disclosure a description of any information described under subsection (a) that is not disclosed, why such undisclosed information was not readily accessible, and the efforts made by such party to access such undisclosed information. (c) Confidential information For good cause shown by a party required to disclose the information described under subsection (a), the court may allow certain information that the court determines to be confidential to be filed under seal. (d) Exemption A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a). . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item: 281A. Pleading requirements for patent infringement actions. . (b) Fees and other expenses (1) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an award unjust. (b) Recovery If a nonprevailing party is unable to pay reasonable fees and other expenses awarded by the court pursuant to subsection (a), the court may make the reasonable fees and other expenses recoverable against any interested party joined pursuant to section 299(d). (c) Covenant not To sue A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure. . (2) Conforming amendment and amendment (A) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses. . (B) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. (c) Joinder of interested parties Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: (d) Joinder of interested parties (1) Joinder In a civil action arising under any Act of Congress relating to patents, the court shall grant a motion by a party defending against an allegation of infringement of a patent claim to join an interested party if such defending party shows that the party alleging infringement has no substantial interest in the patent or patents at issue other than asserting such patent claim in litigation. (2) Limitation on joinder The court may deny a motion to join an interested party under paragraph (1) if— (A) the interested party is not subject to service of process; or (B) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper. (3) Interested party defined In this subsection, the term interested party means a person, other than the party alleging infringement, that— (A) is an assignee of the patent or patents at issue; (B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or (C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include— (i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or (ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action. . (d) Discovery limits (1) Amendment Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section: 299A. Discovery in patent infringement action (a) Discovery in patent infringement action Except as provided in subsection (b), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement. (b) Discretion To expand scope of discovery (1) Timely resolution of actions If, under any provision of Federal law (including the amendments made by the Drug Price Competition and Patent Term Restoration Act of 1984 ( Public Law 98–417 )), resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court may permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely resolution of the action. (2) Resolution of motions When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a), the court may allow limited discovery in addition to the discovery authorized under subsection (a) as necessary to resolve the motion. . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item: 299A. Discovery in patent infringement action. . (e) Effective date Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 4. Transparency of patent ownership (a) Amendments Section 290 of title 35, United States Code, is amended— (1) in the heading, by striking suits and inserting suits; disclosure of interests ; (2) by striking The clerks and inserting (a) Notice of patent suits.— The clerks ; and (3) by adding at the end the following new subsections: (b) Initial disclosure (1) In general Except as provided in paragraph (2), upon the filing of an initial complaint for patent infringement, the plaintiff shall disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of the following: (A) The assignee of the patent or patents at issue. (B) Any entity with a right to sublicense or enforce the patent or patents at issue. (C) Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff. (D) The ultimate parent entity of any assignee identified under subparagraph (A) and any entity identified under subparagraphs (B) and (C). (2) Exemption The requirements of paragraph (1) shall not apply with respect to a civil action filed under subsection (a) that includes a cause of action described under section 271(e)(2). (c) Disclosure compliance (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership and the name and correspondence address of each partner or other entity that holds more than a 5-percent share of that partnership; (B) in the case of a corporation, the name of the corporation, the location of incorporation, the address of the principal place of business, and the name of each officer of the corporation; and (C) for each individual, the name and correspondence address of that individual. (d) Ongoing duty of disclosure to the Patent and Trademark Office (1) In general A plaintiff required to submit information under subsection (b) or a subsequent owner of the patent or patents at issue shall, not later than 90 days after any change in the assignee of the patent or patents at issue or an entity described under subparagraphs (B) and (D) of subsection (b)(1), submit to the Patent and Trademark Office the updated identification of such assignee or entity. (2) Failure to comply With respect to a patent for which the requirement of paragraph (1) has not been met— (A) the plaintiff or subsequent owner shall not be entitled to recover reasonable fees and other expenses under section 285 or increased damages under section 284 with respect to infringing activities taking place during any period of noncompliance with paragraph (1), unless the denial of such damages or fees would be manifestly unjust; and (B) the court shall award to a prevailing party accused of infringement reasonable fees and other expenses incurred to discover the updated assignee or entity described under paragraph (1), unless such sanctions would be unjust. (e) Definitions In this section: (1) Financial interest The term financial interest — (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds related to the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the plaintiff, direct or indirect ownership or control by a person of more than 5 percent of such plaintiff; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company, of a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest. (2) Proceeding The term proceeding means all stages of a civil action, including pretrial and trial proceedings and appellate review. (3) Ultimate parent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity has the meaning given such term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. (B) Modification of definition The Director may modify the definition of ultimate parent entity by regulation. . (b) Technical and conforming amendment The item relating to section 290 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 290. Notice of patent suits; disclosure of interests. . (c) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering subsections (b) through (e) of section 290 of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by such subsections, and to ensure the timely disclosure of such information to the public. (d) Effective date The amendments made by this section shall take effect upon the expiration of the 6-month period beginning on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after such effective date. 5. Customer-suit exception (a) Amendment Section 296 of title 35, United States Code, is amended to read as follows: 296. Stay of action against customer (a) Stay of action against customer Except as provided in subsection (d), in any civil action arising under any Act of Congress relating to patents, the court shall grant a motion to stay at least the portion of the action against a covered customer related to infringement of a patent involving a covered product or process if the following requirements are met: (1) The covered manufacturer and the covered customer consent in writing to the stay. (2) The covered manufacturer is a party to the action or to a separate action involving the same patent or patents related to the same covered product or process. (3) The covered customer agrees to be bound by any judgment entered against the covered manufacturer to the same extent that the covered manufacturer may be bound with respect to issues that the covered manufacturer and the covered customer have in common. (4) The motion is filed after the first pleading in the action and not later than 120 days after service of the first pleading in the action that specifically identifies— (A) the covered product or process as a basis for the alleged infringement of the patent by the covered customer; and (B) how the covered product or process is alleged to infringe the patent. (b) Applicability of stay A stay issued pursuant to subsection (a) shall apply only to the patents, products, systems, or components accused of infringement in the action. (c) Lift of stay (1) In general A stay entered pursuant to this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve a major issue in suit against the covered customer; or (B) the stay unreasonably prejudices and would be manifestly unjust to the party seeking to lift the stay. (2) Separate manufacturer action involved In the case of a stay entered based on the participation of the covered manufacturer in a separate action involving the same patent or patents related to the same covered product or process, a motion under this subsection may only be made if the court in such separate action determines the showing required under paragraph (1) has been met. (d) Exemption This section shall not apply to an action that includes a cause of action described under section 271(e). (e) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, or expand any stay granted pursuant to this section, if otherwise permitted by law. (f) Definitions In this section: (1) Covered customer The term covered customer means a party accused of infringing a patent or patents in dispute based on a covered product or process. (2) Covered manufacturer The term covered manufacturer means a person that manufactures or supplies, or causes the manufacture or supply of, a covered product or process or a relevant part of such product or process. (3) Covered product or process The term covered product or process means a product, process, system, service, component, material, or apparatus, or relevant part thereof, that— (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute. . (b) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by striking the item relating to section 296 and inserting the following: 296. Stay of action against customer. . (c) Effective date The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 6. Procedures and practices to implement and recommendations to the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the requirements described in paragraph (2) to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence. (2) Rules and procedures to be considered The rules and procedures required under paragraph (1) shall include each of the following requirements: (A) Discovery of core documentary evidence Each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party. Each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties determine that the discovery of electronic communication is necessary, such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and shall be in accordance with the following: (i) Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business. (ii) Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame. (iii) A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court. (iv) The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case. (v) If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery. (C) Additional document discovery (i) In general Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Limits on additional document discovery A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery. (iv) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (v) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope The parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful. (3) Definitions In this subsection: (A) Core documentary evidence In this subsection, the term core documentary evidence — (i) includes— (I) documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue; (II) documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue; (III) documents relating to potentially invalidating prior art; (IV) documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed; (V) documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue; (VI) documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed; (VII) documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed; (VIII) documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and (IX) documents sufficient to show any marking or other notice provided of the patent or patents at issue; and (ii) does not include computer code, except as specified in paragraph (2)(C)(v). (B) Electronic communication The term electronic communication means any form of electronic communication, including email, text message, or instant message. (4) Implementation by the District Courts Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures. (5) Authority for Judicial Conference to review and modify The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the first 4 years following the implementation of such rules and procedures by the district courts and the United States Court of Federal Claims. The Judicial Conference may modify such rules and procedures following such 4-year period. (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. (c) Revision of form for patent infringement (1) Elimination of form The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act. (2) Revised form The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms. (d) Protection of intellectual-Property licenses in bankruptcy (1) In general Section 1520(a) of title 11, United States Code, is amended— (A) in paragraph (3), by striking ; and and inserting a semicolon; (B) in paragraph (4), by striking the period at the end and inserting ; and ; and (C) by inserting at the end the following new paragraph: (5) section 365(n) applies to intellectual property of which the debtor is a licensor or which the debtor has transferred. . (2) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is pending on, or filed on or after, such date of enactment. 7. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small Business Patent Ombudsman The Patent Ombudsman Program established under section 28 of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 339; 35 U.S.C. 2 note) shall coordinate with the existing small business outreach programs of the Office to provide education and awareness on abusive patent litigation practices. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and with respect to each patent at issue in such case, the Director shall include— (A) information disclosed pursuant to subsections (b) and (d) of section 290 of title 35, United States Code, as added by section 4(a) of this Act; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 8. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Submission of study Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on patents owned by the United States Government (1) Study required The Director, in consultation with the heads of relevant agencies and interested parties, shall, using existing resources of the Office, conduct a study on patents owned by the United States Government that— (A) examines how such patents are licensed and sold, and any litigation relating to the licensing or sale of such patents; (B) provides legislative and administrative recommendations on whether there should be restrictions placed on patents acquired from the United States Government; (C) examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, assignment, and Government grants for technology related to such patents; and (D) provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency. (2) Report on study Not later than 6 months after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). (c) Study on Patent Quality and Access to the Best Information during Examination (1) GAO study The Comptroller General of the United States shall conduct a study on patent examination at the Office and the technologies available to improve examination and improve patent quality. (2) Contents of the study The study required under paragraph (1) shall include the following: (A) An examination of patent quality at the Office. (B) An examination of ways to improve quality, specifically through technology, that shall include examining best practices at foreign patent offices and the use of existing off-the-shelf technologies to improve patent examination. (C) A description of how patents are classified. (D) An examination of procedures in place to prevent double patenting through filing by applicants in multiple art areas. (E) An examination of the types of off-the-shelf prior art databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, and whether those databases and search tools could be used by the Office to improve patent examination. (F) An examination of any other areas the Comptroller General determines to be relevant. (3) Report to Congress Not later than 6 months after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws and regulations that will improve the examination of patent applications and patent quality. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act (a) Repeal of civil action To obtain a patent (1) Repeal Section 145 of title 35, United States Code, is repealed. (2) Conforming amendments (A) Federal Circuit jurisdiction Section 1295(a)(4) of title 28, United States Code, is amended— (i) in subparagraph (A), by striking except that an applicant or a party and all that follows through the end of the subparagraph and inserting the following: except that a party to a derivation proceeding may also have remedy by civil action pursuant to section 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to a derivation proceeding shall waive the right of such party to proceed under section 146 of title 35; ; and (ii) in subparagraph (C), by striking section 145, 146, or and inserting section 146 or . (B) Federal Circuit appeal Section 141(a) of title 35, United States Code, is amended— (i) by striking may appeal the Board’s decision to and inserting may appeal the Board’s decision only to ; and (ii) by striking the second sentence. (C) Adjustment of patent term Section 154(b)(1)(A)(iii) of title 35, United States Code, is amended by striking section 141, 145, or 146 and inserting section 141 or 146 . (D) Clerical amendment The table of sections for chapter 13 of title 35, United States Code, is amended by repealing the item relating to section 145. (3) Effective date The amendments made by this subsection shall apply to any proceeding in which a decision is made by the Patent Trial and Appeal Board on or after the date of the enactment of this Act. (b) Post-Grant review amendment Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . (c) Use of district-Court claim construction in post-Grant and inter partes reviews (1) Inter partes review Section 316(a) of title 35, United States Code, is amended— (A) in paragraph (12), by striking ; and and inserting a semicolon; (B) in paragraph (13), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (14) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (2) Post-grant review Section 326(a) of title 35, United States Code, is amended— (A) in paragraph (11), by striking ; and and inserting a semicolon; (B) in paragraph (12), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (13) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (3) Technical and conforming amendment Section 18(a)(1)(A) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 126 Stat. 329) is amended by striking Section 321(c) and inserting Sections 321(c) and 326(a)(13) . (4) Effective date The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, for which the petition for review is filed on or after such effective date. (d) Codification of the double-Patenting doctrine for first-Inventor-To-File patents (1) Amendment Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section: 106. Prior art in cases of double patenting A claimed invention of a patent issued under section 151 (referred to as the first patent ) that is not prior art to a claimed invention of another patent (referred to as the second patent ) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— (1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; (2) either— (A) the first patent and second patent name the same inventor; or (B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and (3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent. . (2) Regulations The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code. (3) Conforming amendment The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item: 106. Prior art in cases of double patenting. . (4) Exclusive rule A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground. (5) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (e) Covered business method patent reviews (1) Limitation; repeal (A) Limitation to first-to-invent patents Section 18(a)(2) of the Leahy-Smith America Invents Act is amended by striking shall not apply to a patent described in section 6(f)(2)(A) of this Act during the period in which a petition for post-grant review of that patent would satisfy the requirements of section 321(c) of title 35, United States Code and inserting shall not apply to a patent that is described in section 3(n)(1) of this Act (but is not described in section 3(n)(2) of this Act) . (B) Repeal of sunset Section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note) is amended by striking paragraph (3). (C) Effective date The amendments made by subparagraphs (A) and (B) shall take effect on the date of the enactment of this Act. (2) Definition; clarification (A) Definition For purposes of section 18(d) of the Leahy-Smith America Invents Act, the words used in the practice, administration, or management of a financial product or service shall be construed consistently with the institution decision of the Patent Trial and Appeal Board of the United States Patent and Trademark Office in SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012–00001, Paper 36 (January 9, 2013). (B) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act is amended by striking section 102(a) and inserting subsection (a), (d), or (e) of section 102 . (C) Effective date Subparagraph (A) and the amendment made by subparagraph (B) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (3) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note). (f) Clarification of limits on patent term adjustment (1) Amendments Section 154(b)(1)(B) of title 35, United States Code, is amended— (A) in the matter preceding clause (i), by striking not including— and inserting the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including— ; (B) in clause (i), by striking consumed by continued examination of the application requested by the applicant and inserting consumed after continued examination of the application is requested by the applicant ; (C) in clause (iii), by striking the comma at the end and inserting a period; and (D) by striking the matter following clause (iii). (2) Effective date The amendments made by this subsection shall apply to any patent application or patent that is pending on, or filed on or after, the date of the enactment of this Act. (g) Clarification of jurisdiction (1) In general The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole. (2) Applicability Paragraph (1)— (A) shall apply to all cases filed on, after, or pending on, the date of the enactment of this Act; and (B) shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act. (h) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another and inserting the inventor or a joint inventor or another . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29). (2) Inventor’s oath or declaration (A) Amendment Subsection (g)(1) of section 115 of title 35, United States Code, is amended— (i) by striking claims the benefit and inserting is entitled, as to each invention claimed in the application, to the benefit ; and (ii) in subparagraph (A), by striking meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application and inserting the following: executed by or on behalf of the individual was filed in connection with the earlier-filed application and meets the requirements of this section as effective on the date such oath or declaration was filed . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29). (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named and inserting that names the inventor or a joint inventor . (B) Benefit of earlier filing date in the United States Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor and inserting names the inventor or a joint inventor . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29). (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter, that is pending on, or filed on or after, the date of the enactment of this Act. (6) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 and inserting the petition under section 311 . (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (7) International applications (A) Amendments Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— (i) by striking paragraph (7); and (ii) by redesignating paragraphs (8) and (9) as paragraphs (7) and (8). (B) Effective date The amendments made by subparagraph (A) shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–21 ). 10. Effective date Except as otherwise provided in this Act, the provisions of this Act shall take effect on the date of the enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date.

tv_txt: IB 113th CONGRESS 1st Session H. R. 3309 IN THE HOUSE OF REPRESENTATIVES AN ACT To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes.

1. Short title; table of contents (a) Short title This Act may be cited as the Innovation Act . (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Patent infringement actions. Sec. 4. Transparency of patent ownership. Sec. 5. Customer-suit exception. Sec. 6. Procedures and practices to implement recommendations of the Judicial Conference. Sec. 7. Small business education, outreach, and information access. Sec. 8. Studies on patent transactions, quality, and examination. Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act. Sec. 10. Effective date. 2. Definitions In this Act: (1) Director The term Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. (2) Office The term Office means the United States Patent and Trademark Office. 3. Patent infringement actions (a) Pleading requirements (1) Amendment Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following: 281A. Pleading requirements for patent infringement actions (a) Pleading requirements Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality ) alleged to infringe the claim. (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality. (5) For each accused instrumentality identified under paragraph (3), a clear and concise statement of— (A) where each element of each claim identified under paragraph (2) is found within the accused instrumentality; and (B) with detailed specificity, how each limitation of each claim identified under paragraph (2) is met by the accused instrumentality. (6) For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. (7) A description of the authority of the party alleging infringement to assert each patent identified under paragraph (1) and of the grounds for the court’s jurisdiction. (8) A clear and concise description of the principal business, if any, of the party alleging infringement. (9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1). (10) For each patent identified under paragraph (1), whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. (b) Information not readily accessible If information required to be disclosed under subsection (a) is not readily accessible to a party, that information may instead be generally described, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information. (c) Confidential information A party required to disclose information described under subsection (a) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended complaint. (d) Exemption A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a). . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item: 281A. Pleading requirements for patent infringement actions. . (b) Fees and other expenses (1) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust. (b) Certification and recovery Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award. (c) Covenant not to sue A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure. . (2) Conforming amendment and amendment (A) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses. . (B) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 6-month period ending on that effective date. (c) Joinder of interested parties Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: (d) Joinder of interested parties (1) Joinder In a civil action arising under any Act of Congress relating to patents in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation. (2) Limitation on joinder (A) Discretionary denial of motion The court may deny a motion to join an interested party under paragraph (1) if— (i) the interested party is not subject to service of process; or (ii) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper. (B) Required denial of motion The court shall deny a motion to join an interested party under paragraph (1) if— (i) the interested party did not timely receive the notice required by paragraph (3); or (ii) within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (3) Notice requirement An interested party may not be joined under paragraph (1) unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that— (A) identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and (B) informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if— (i) fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a); (ii) the party alleging infringement is unable to pay the award of fees and other expenses; (iii) the party receiving notice under this paragraph is determined by the court to be an interested party; and (iv) the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (4) Interested party defined In this subsection, the term interested party means a person, other than the party alleging infringement, that— (A) is an assignee of the patent or patents at issue; (B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or (C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include— (i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or (ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action. . (d) Discovery limits (1) Amendment Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section: 299A. Discovery in patent infringement action (a) Discovery in patent infringement action Except as provided in subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement. (b) Discretion To expand scope of discovery (1) Timely resolution of actions In the case of an action under any provision of Federal law (including an action that includes a claim for relief arising under section 271(e)), for which resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court shall permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely resolution of the action. (2) Resolution of motions When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a) is issued, the court may allow limited discovery in addition to the discovery authorized under subsection (a) as necessary to resolve the motion. (3) Special circumstances In special circumstances that would make denial of discovery a manifest injustice, the court may permit discovery, in addition to the discovery authorized under subsection (a), as necessary to prevent the manifest injustice. (4) Actions seeking relief based on competitive harm The limitation on discovery provided under subsection (a) shall not apply to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale of any allegedly infringing instrumentality that competes with a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement. (c) Exclusion from discovery limitation The parties may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery provided under subsection (a) if at least one plaintiff and one defendant enter into a signed stipulation, to be filed with and signed by the court. With regard to any discovery excluded from the requirements of subsection (a) under the signed stipulation, with respect to such parties, such discovery shall proceed according to the Federal Rules of Civil Procedure. . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item: 299A. Discovery in patent infringement action. . (e) Sense of Congress It is the sense of Congress that it is an abuse of the patent system and against public policy for a party to send out purposely evasive demand letters to end users alleging patent infringement. Demand letters sent should, at the least, include basic information about the patent in question, what is being infringed, and how it is being infringed. Any actions or litigation that stem from these types of purposely evasive demand letters to end users should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive. (f) Demand letters Section 284 of title 35, United States Code, is amended— (1) in the first undesignated paragraph, by striking Upon finding and inserting (a) In general.— Upon finding ; (2) in the second undesignated paragraph, by striking When the damages and inserting (b) Assessment by court; treble damages.— When the damages ; (3) by inserting after subsection (b), as designated by paragraph (2) of this subsection, the following: (c) Willful infringement A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification identifies with particularity the asserted patent, identifies the product or process accused, identifies the ultimate parent entity of the claimant, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent. ; and (4) in the last undesignated paragraph, by striking The court and inserting (d) Expert testimony.— The court . (g) Effective date Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 4. Transparency of patent ownership (a) Amendments Section 290 of title 35, United States Code, is amended— (1) in the heading, by striking suits and inserting suits; disclosure of interests ; (2) by striking The clerks and inserting (a) Notice of patent suits.— The clerks ; and (3) by adding at the end the following new subsections: (b) Initial disclosure (1) In general Except as provided in paragraph (2), upon the filing of an initial complaint for patent infringement, the plaintiff shall disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of the following: (A) The assignee of the patent or patents at issue. (B) Any entity with a right to sublicense or enforce the patent or patents at issue. (C) Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff. (D) The ultimate parent entity of any assignee identified under subparagraph (A) and any entity identified under subparagraph (B) or (C). (2) Exemption The requirements of paragraph (1) shall not apply with respect to a civil action filed under subsection (a) that includes a cause of action described under section 271(e)(2). (c) Disclosure compliance (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership and the name and correspondence address of each partner or other entity that holds more than a 5-percent share of that partnership; (B) in the case of a corporation, the name of the corporation, the location of incorporation, the address of the principal place of business, and the name of each officer of the corporation; and (C) for each individual, the name and correspondence address of that individual. (d) Ongoing duty of disclosure to the Patent and Trademark Office (1) In general A plaintiff required to submit information under subsection (b) or a subsequent owner of the patent or patents at issue shall, not later than 90 days after any change in the assignee of the patent or patents at issue or an entity described under subparagraph (B) or (D) of subsection (b)(1), submit to the Patent and Trademark Office the updated identification of such assignee or entity. (2) Failure to comply With respect to a patent for which the requirement of paragraph (1) has not been met— (A) the plaintiff or subsequent owner shall not be entitled to recover reasonable fees and other expenses under section 285 or increased damages under section 284 with respect to infringing activities taking place during any period of noncompliance with paragraph (1), unless the denial of such damages or fees would be manifestly unjust; and (B) the court shall award to a prevailing party accused of infringement reasonable fees and other expenses under section 285 that are incurred to discover the updated assignee or entity described under paragraph (1), unless such sanctions would be unjust. (e) Definitions In this section: (1) Financial interest The term financial interest — (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds related to the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the plaintiff, direct or indirect ownership or control by a person of more than 5 percent of such plaintiff; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company or of a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest. (2) Proceeding The term proceeding means all stages of a civil action, including pretrial and trial proceedings and appellate review. (3) Ultimate parent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity has the meaning given such term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. (B) Modification of definition The Director may modify the definition of ultimate parent entity by regulation. . (b) Technical and conforming amendment The item relating to section 290 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 290. Notice of patent suits; disclosure of interests. . (c) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering subsections (b) through (e) of section 290 of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by such subsections, and to ensure the timely disclosure of such information to the public. (d) Effective date The amendments made by this section shall take effect upon the expiration of the 6-month period beginning on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after such effective date. 5. Customer-suit exception (a) Amendment Section 296 of title 35, United States Code, is amended to read as follows: 296. Stay of action against customer (a) Stay of action against customer Except as provided in subsection (d), in any civil action arising under any Act of Congress relating to patents, the court shall grant a motion to stay at least the portion of the action against a covered customer related to infringement of a patent involving a covered product or process if the following requirements are met: (1) The covered manufacturer and the covered customer consent in writing to the stay. (2) The covered manufacturer is a party to the action or to a separate action involving the same patent or patents related to the same covered product or process. (3) The covered customer agrees to be bound by any issues that the covered customer has in common with the covered manufacturer and are finally decided as to the covered manufacturer in an action described in paragraph (2). (4) The motion is filed after the first pleading in the action but not later than the later of— (A) the 120th day after the date on which the first pleading in the action is served that specifically identifies the covered product or process as a basis for the covered customer’s alleged infringement of the patent and that specifically identifies how the covered product or process is alleged to infringe the patent; or (B) the date on which the first scheduling order in the case is entered. (b) Applicability of stay A stay issued under subsection (a) shall apply only to the patents, products, systems, or components accused of infringement in the action. (c) Lift of stay (1) In general A stay entered under this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve a major issue in suit against the covered customer; or (B) the stay unreasonably prejudices and would be manifestly unjust to the party seeking to lift the stay. (2) Separate manufacturer action involved In the case of a stay entered based on the participation of the covered manufacturer in a separate action involving the same patent or patents related to the same covered product or process, a motion under this subsection may only be made if the court in such separate action determines the showing required under paragraph (1) has been met. (d) Exemption This section shall not apply to an action that includes a cause of action described under section 271(e)(2). (e) Consent judgment If, following the grant of a motion to stay under this section, the covered manufacturer seeks or consents to entry of a consent judgment relating to one or more of the common issues that gave rise to the stay, or declines to prosecute through appeal a final decision as to one or more of the common issues that gave rise to the stay, the court may, upon grant of a motion, determine that such consent judgment or unappealed final decision shall not be binding on the covered customer with respect to one or more of such common issues based on a showing that such an outcome would unreasonably prejudice and be manifestly unjust to the covered customer in light of the circumstances of the case. (f) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, expand any stay granted under this section, or grant any motion to intervene, if otherwise permitted by law. (g) Definitions In this section: (1) Covered customer The term covered customer means a party accused of infringing a patent or patents in dispute based on a covered product or process. (2) Covered manufacturer The term covered manufacturer means a person that manufactures or supplies, or causes the manufacture or supply of, a covered product or process or a relevant part thereof. (3) Covered product or process The term covered product or process means a product, process, system, service, component, material, or apparatus, or relevant part thereof, that— (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute. . (b) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by striking the item relating to section 296 and inserting the following: 296. Stay of action against customer. . (c) Effective date The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 30-day period that ends on that date. 6. Procedures and practices to implement recommendations of the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the issues and proposals described in paragraph (2) to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence. (2) Rules and procedures to be considered The rules and procedures required under paragraph (1) should address each of the following issues and proposals: (A) Discovery of core documentary evidence Whether and to what extent each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and whether and to what extent each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties determine that the discovery of electronic communication is appropriate, whether such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and whether such discovery shall be in accordance with the following: (i) Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business. (ii) Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame. (iii) A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court. (iv) The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case. (v) If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery. (C) Additional document discovery Whether the following should apply: (i) In general Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Limits on additional document discovery A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery. (iv) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (v) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope Whether the parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful. (3) Definitions In this subsection: (A) Core documentary evidence The term core documentary evidence — (i) includes— (I) documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue; (II) documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue; (III) documents relating to potentially invalidating prior art; (IV) documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed; (V) documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue; (VI) documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed; (VII) documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed; (VIII) documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and (IX) documents sufficient to show any marking or other notice provided of the patent or patents at issue; and (ii) does not include computer code, except as specified in paragraph (2)(C)(v). (B) Electronic communication The term electronic communication means any form of electronic communication, including email, text message, or instant message. (4) Implementation by the District Courts Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures. (5) Authority for Judicial Conference to review and modify (A) Study of efficacy of rules and procedures The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the 4-year period beginning on the date on which such rules and procedures by the district courts and the United States Court of Federal Claims are first implemented. The Judicial Conference may modify such rules and procedures following such 4-year period. (B) Initial modifications Before the expiration of the 4-year period described in subparagraph (A), the Judicial Conference may modify the requirements under this subsection— (i) by designating categories of core documentary evidence , in addition to those designated under paragraph (3)(A), as the Judicial Conference determines to be appropriate and necessary; and (ii) as otherwise necessary to prevent a manifest injustice, the imposition of a requirement the costs of which clearly outweigh its benefits, or a result that could not reasonably have been intended by the Congress. (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. (c) Revision of form for patent infringement (1) Elimination of form The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act. (2) Revised form The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms. (d) Protection of intellectual-Property licenses in bankruptcy (1) In general Section 1522 of title 11, United States Code, is amended by adding at the end the following: (e) Section 365(n) shall apply to cases under this chapter. If the foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract shall be entitled to make the election and exercise the rights described in section 365(n). . (2) Trademarks (A) In general Section 101(35A) of title 11, United States Code, is amended— (i) in subparagraph (E), by striking or ; (ii) in subparagraph (F), by striking title 17; and inserting title 17; or ; and (iii) by adding after subparagraph (F) the following new subparagraph: (G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 ) ( 15 U.S.C. 1127 ); . (B) Conforming amendment Section 365(n)(2) of title 11, United States Code, is amended— (i) in subparagraph (B)— (I) by striking royalty payments and inserting royalty or other payments ; and (II) by striking and after the semicolon; (ii) in subparagraph (C), by striking the period at the end of clause (ii) and inserting ; and ; and (iii) by adding at the end the following new subparagraph: (D) in the case of a trademark, service mark, or trade name, the trustee shall not be relieved of a contractual obligation to monitor and control the quality of a licensed product or service. . (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment. 7. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small Business Patent outreach The existing small business patent outreach programs of the Office, and the relevant offices at the Small Business Administration and the Minority Business Development Agency, shall provide education and awareness on abusive patent litigation practices. The Director may give special consideration to the unique needs of small firms owned by disabled veterans, service-disabled veterans, women, and minority entrepreneurs in planning and executing the outreach efforts by the Office. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include— (A) information disclosed under subsections (b) and (d) of section 290 of title 35, United States Code, as added by section 4(a) of this Act; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 8. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Report on study Not later than 18 months after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on patents owned by the United States Government (1) Study required The Director, in consultation with the heads of relevant agencies and interested parties, shall, using existing resources of the Office, conduct a study on patents owned by the United States Government that— (A) examines how such patents are licensed and sold, and any litigation relating to the licensing or sale of such patents; (B) provides legislative and administrative recommendations on whether there should be restrictions placed on patents acquired from the United States Government; (C) examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, assignment, and Government grants for technology related to such patents; and (D) provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). (c) Study on Patent Quality and Access to the Best Information during Examination (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on patent examination at the Office and the technologies available to improve examination and improve patent quality. (2) Contents of the study The study required under paragraph (1) shall include the following: (A) An examination of patent quality at the Office. (B) An examination of ways to improve patent quality, specifically through technology, that shall include examining best practices at foreign patent offices and the use of existing off-the-shelf technologies to improve patent examination. (C) A description of how patents are classified. (D) An examination of procedures in place to prevent double patenting through filing by applicants in multiple art areas. (E) An examination of the types of off-the-shelf prior art databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, and whether those databases and search tools could be used by the Office to improve patent examination. (F) An examination of any other areas the Comptroller General determines to be relevant. (3) Report on study Not later than 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws and regulations that will improve the examination of patent applications and patent quality. (d) Study on Patent Small Claims Court (1) Study Required (A) In general The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims procedures in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349 . (B) Contents of study The study under subparagraph (A) shall examine— (i) the necessary criteria for using small claims procedures; (ii) the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and (iii) the steps that would be taken to ensure that the procedures used in the pilot program are not misused for abusive patent litigation. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1). (e) Study on demand letters (1) Study The Director, in consultation with the heads of other appropriate agencies, shall, using existing resources, conduct a study of the prevalence of the practice of sending patent demand letters in bad faith and the extent to which that practice may, through fraudulent or deceptive practices, impose a negative impact on the marketplace. (2) Report to congress Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (3) Patent demand letter defined In this subsection, the term patent demand letter means a written communication relating to a patent that states or indicates, directly or indirectly, that the recipient or anyone affiliated with the recipient is or may be infringing the patent. (f) Study on business method patent quality (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on the volume and nature of litigation involving business method patents. (2) Contents of study The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant. (3) Report to congress Not later than 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study. (g) Study on impact of legislation on ability of individuals and small businesses to protect exclusive rights to inventions and discoveries (1) Study required The Director, in consultation with the Secretary of Commerce, the Director of the Administrative Office of the United States Courts, the Director of the Federal Judicial Center, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study to examine the economic impact of sections 3, 4, and 5 of this Act, and any amendments made by such sections, on the ability of individuals and small businesses owned by women, veterans, and minorities to assert, secure, and vindicate the constitutionally guaranteed exclusive right to inventions and discoveries by such individuals and small business. (2) Report on study Not later than 2 years after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). 9. Improvements and technical corrections to the Leahy-Smith America Invents Act (a) Post-Grant review amendment Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . (b) Use of district-Court claim construction in post-Grant and inter partes reviews (1) Inter partes review Section 316(a) of title 35, United States Code, is amended— (A) in paragraph (12), by striking ; and and inserting a semicolon; (B) in paragraph (13), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (14) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (2) Post-grant review Section 326(a) of title 35, United States Code, is amended— (A) in paragraph (11), by striking ; and and inserting a semicolon; (B) in paragraph (12), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (13) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (3) Technical and conforming amendment Section 18(a)(1)(A) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 126 Stat. 329; 35 U.S.C. 321 note) is amended by striking Section 321(c) and inserting Sections 321(c) and 326(a)(13) . (4) Effective date The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, as the case may be, for which the petition for review is filed on or after such effective date. (c) Codification of the double-Patenting doctrine for first-Inventor-To-File patents (1) Amendment Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section: 106. Prior art in cases of double patenting A claimed invention of a patent issued under section 151 (referred to as the first patent ) that is not prior art to a claimed invention of another patent (referred to as the second patent ) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— (1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; (2) either— (A) the first patent and second patent name the same individual or individuals as the inventor; or (B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and (3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent. . (2) Regulations The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code. (3) Conforming amendment The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item: 106. Prior art in cases of double patenting. . (4) Exclusive rule A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground based on a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (5) Effective date The amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (d) PTO patent reviews (1) Clarification (A) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note) is amended by striking section 102(a) and inserting subsection (a) or (e) of section 102 . (B) Effective date The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (2) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note). (e) Clarification of limits on patent term adjustment (1) Amendments Section 154(b)(1)(B) of title 35, United States Code, is amended— (A) in the matter preceding clause (i), by striking not including— and inserting the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including— ; (B) in clause (i), by striking consumed by continued examination of the application requested by the applicant and inserting consumed after continued examination of the application is requested by the applicant ; (C) in clause (iii), by striking the comma at the end and inserting a period; and (D) by striking the matter following clause (iii). (2) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application that is pending on, or filed on or after, such date of enactment. (f) Clarification of jurisdiction (1) In general The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole. (2) Applicability Paragraph (1)— (A) shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and (B) shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act. (g) Patent Pilot Program in Certain District Courts Duration (1) Duration Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows: (c) Duration The program established under subsection (a) shall be maintained using existing resources, and shall terminate 20 years after the end of the 6-month period described in subsection (b). . (2) Effective date The amendment made by paragraph (1) shall take effect on the date of the enactment of this Act. (h) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another and inserting the inventor or a joint inventor or another . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (2) Inventor’s oath or declaration (A) Amendment The second sentence of section 115(a) of title 35, United States Code, is amended by striking shall execute and inserting may be required to execute . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named and inserting that names the inventor or a joint inventor . (B) Benefit of earlier filing date in the United States Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor and inserting names the inventor or a joint inventor . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter that is pending on, or filed on or after, the date of the enactment of this Act. (6) Time limit for commencing misconduct proceedings (A) Amendment The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year and inserting 18 months . (B) Effective date The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. (7) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 and inserting the petition under section 311 . (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (8) International applications (A) Amendments Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— (i) by striking paragraph (7); and (ii) by redesignating paragraphs (8) and (9) as paragraphs (7) and (8), respectively. (B) Effective date The amendments made by subparagraph (A) shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–21 ). 10. Effective date Except as otherwise provided in this Act, the provisions of this Act shall take effect on the date of the enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date.

Passed the House of Representatives December 5, 2013. Karen L. Haas, Clerk.

tv_txt: IIB 113th CONGRESS 1st Session H. R. 3309 IN THE SENATE OF THE UNITED STATES December 9, 2013 Received; read twice and referred to the Committee on the Judiciary AN ACT To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes.

1. Short title; table of contents (a) Short title This Act may be cited as the Innovation Act . (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Patent infringement actions. Sec. 4. Transparency of patent ownership. Sec. 5. Customer-suit exception. Sec. 6. Procedures and practices to implement recommendations of the Judicial Conference. Sec. 7. Small business education, outreach, and information access. Sec. 8. Studies on patent transactions, quality, and examination. Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act. Sec. 10. Effective date. 2. Definitions In this Act: (1) Director The term Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. (2) Office The term Office means the United States Patent and Trademark Office. 3. Patent infringement actions (a) Pleading requirements (1) Amendment Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following: 281A. Pleading requirements for patent infringement actions (a) Pleading requirements Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality ) alleged to infringe the claim. (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality. (5) For each accused instrumentality identified under paragraph (3), a clear and concise statement of— (A) where each element of each claim identified under paragraph (2) is found within the accused instrumentality; and (B) with detailed specificity, how each limitation of each claim identified under paragraph (2) is met by the accused instrumentality. (6) For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. (7) A description of the authority of the party alleging infringement to assert each patent identified under paragraph (1) and of the grounds for the court’s jurisdiction. (8) A clear and concise description of the principal business, if any, of the party alleging infringement. (9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1). (10) For each patent identified under paragraph (1), whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. (b) Information not readily accessible If information required to be disclosed under subsection (a) is not readily accessible to a party, that information may instead be generally described, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information. (c) Confidential information A party required to disclose information described under subsection (a) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended complaint. (d) Exemption A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a). . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item: 281A. Pleading requirements for patent infringement actions. . (b) Fees and other expenses (1) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust. (b) Certification and recovery Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award. (c) Covenant not to sue A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure. . (2) Conforming amendment and amendment (A) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses. . (B) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 6-month period ending on that effective date. (c) Joinder of interested parties Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: (d) Joinder of interested parties (1) Joinder In a civil action arising under any Act of Congress relating to patents in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation. (2) Limitation on joinder (A) Discretionary denial of motion The court may deny a motion to join an interested party under paragraph (1) if— (i) the interested party is not subject to service of process; or (ii) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper. (B) Required denial of motion The court shall deny a motion to join an interested party under paragraph (1) if— (i) the interested party did not timely receive the notice required by paragraph (3); or (ii) within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (3) Notice requirement An interested party may not be joined under paragraph (1) unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that— (A) identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and (B) informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if— (i) fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a); (ii) the party alleging infringement is unable to pay the award of fees and other expenses; (iii) the party receiving notice under this paragraph is determined by the court to be an interested party; and (iv) the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (4) Interested party defined In this subsection, the term interested party means a person, other than the party alleging infringement, that— (A) is an assignee of the patent or patents at issue; (B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or (C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include— (i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or (ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action. . (d) Discovery limits (1) Amendment Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section: 299A. Discovery in patent infringement action (a) Discovery in patent infringement action Except as provided in subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement. (b) Discretion To expand scope of discovery (1) Timely resolution of actions In the case of an action under any provision of Federal law (including an action that includes a claim for relief arising under section 271(e)), for which resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court shall permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely resolution of the action. (2) Resolution of motions When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a) is issued, the court may allow limited discovery in addition to the discovery authorized under subsection (a) as necessary to resolve the motion. (3) Special circumstances In special circumstances that would make denial of discovery a manifest injustice, the court may permit discovery, in addition to the discovery authorized under subsection (a), as necessary to prevent the manifest injustice. (4) Actions seeking relief based on competitive harm The limitation on discovery provided under subsection (a) shall not apply to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale of any allegedly infringing instrumentality that competes with a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement. (c) Exclusion from discovery limitation The parties may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery provided under subsection (a) if at least one plaintiff and one defendant enter into a signed stipulation, to be filed with and signed by the court. With regard to any discovery excluded from the requirements of subsection (a) under the signed stipulation, with respect to such parties, such discovery shall proceed according to the Federal Rules of Civil Procedure. . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item: 299A. Discovery in patent infringement action. . (e) Sense of Congress It is the sense of Congress that it is an abuse of the patent system and against public policy for a party to send out purposely evasive demand letters to end users alleging patent infringement. Demand letters sent should, at the least, include basic information about the patent in question, what is being infringed, and how it is being infringed. Any actions or litigation that stem from these types of purposely evasive demand letters to end users should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive. (f) Demand letters Section 284 of title 35, United States Code, is amended— (1) in the first undesignated paragraph, by striking Upon finding and inserting (a) In general.— Upon finding ; (2) in the second undesignated paragraph, by striking When the damages and inserting (b) Assessment by court; treble damages.— When the damages ; (3) by inserting after subsection (b), as designated by paragraph (2) of this subsection, the following: (c) Willful infringement A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification identifies with particularity the asserted patent, identifies the product or process accused, identifies the ultimate parent entity of the claimant, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent. ; and (4) in the last undesignated paragraph, by striking The court and inserting (d) Expert testimony.— The court . (g) Effective date Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 4. Transparency of patent ownership (a) Amendments Section 290 of title 35, United States Code, is amended— (1) in the heading, by striking suits and inserting suits; disclosure of interests ; (2) by striking The clerks and inserting (a) Notice of patent suits.— The clerks ; and (3) by adding at the end the following new subsections: (b) Initial disclosure (1) In general Except as provided in paragraph (2), upon the filing of an initial complaint for patent infringement, the plaintiff shall disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of the following: (A) The assignee of the patent or patents at issue. (B) Any entity with a right to sublicense or enforce the patent or patents at issue. (C) Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff. (D) The ultimate parent entity of any assignee identified under subparagraph (A) and any entity identified under subparagraph (B) or (C). (2) Exemption The requirements of paragraph (1) shall not apply with respect to a civil action filed under subsection (a) that includes a cause of action described under section 271(e)(2). (c) Disclosure compliance (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership and the name and correspondence address of each partner or other entity that holds more than a 5-percent share of that partnership; (B) in the case of a corporation, the name of the corporation, the location of incorporation, the address of the principal place of business, and the name of each officer of the corporation; and (C) for each individual, the name and correspondence address of that individual. (d) Ongoing duty of disclosure to the Patent and Trademark Office (1) In general A plaintiff required to submit information under subsection (b) or a subsequent owner of the patent or patents at issue shall, not later than 90 days after any change in the assignee of the patent or patents at issue or an entity described under subparagraph (B) or (D) of subsection (b)(1), submit to the Patent and Trademark Office the updated identification of such assignee or entity. (2) Failure to comply With respect to a patent for which the requirement of paragraph (1) has not been met— (A) the plaintiff or subsequent owner shall not be entitled to recover reasonable fees and other expenses under section 285 or increased damages under section 284 with respect to infringing activities taking place during any period of noncompliance with paragraph (1), unless the denial of such damages or fees would be manifestly unjust; and (B) the court shall award to a prevailing party accused of infringement reasonable fees and other expenses under section 285 that are incurred to discover the updated assignee or entity described under paragraph (1), unless such sanctions would be unjust. (e) Definitions In this section: (1) Financial interest The term financial interest — (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds related to the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the plaintiff, direct or indirect ownership or control by a person of more than 5 percent of such plaintiff; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company or of a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest. (2) Proceeding The term proceeding means all stages of a civil action, including pretrial and trial proceedings and appellate review. (3) Ultimate parent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity has the meaning given such term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. (B) Modification of definition The Director may modify the definition of ultimate parent entity by regulation. . (b) Technical and conforming amendment The item relating to section 290 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 290. Notice of patent suits; disclosure of interests. . (c) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering subsections (b) through (e) of section 290 of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by such subsections, and to ensure the timely disclosure of such information to the public. (d) Effective date The amendments made by this section shall take effect upon the expiration of the 6-month period beginning on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after such effective date. 5. Customer-suit exception (a) Amendment Section 296 of title 35, United States Code, is amended to read as follows: 296. Stay of action against customer (a) Stay of action against customer Except as provided in subsection (d), in any civil action arising under any Act of Congress relating to patents, the court shall grant a motion to stay at least the portion of the action against a covered customer related to infringement of a patent involving a covered product or process if the following requirements are met: (1) The covered manufacturer and the covered customer consent in writing to the stay. (2) The covered manufacturer is a party to the action or to a separate action involving the same patent or patents related to the same covered product or process. (3) The covered customer agrees to be bound by any issues that the covered customer has in common with the covered manufacturer and are finally decided as to the covered manufacturer in an action described in paragraph (2). (4) The motion is filed after the first pleading in the action but not later than the later of— (A) the 120th day after the date on which the first pleading in the action is served that specifically identifies the covered product or process as a basis for the covered customer’s alleged infringement of the patent and that specifically identifies how the covered product or process is alleged to infringe the patent; or (B) the date on which the first scheduling order in the case is entered. (b) Applicability of stay A stay issued under subsection (a) shall apply only to the patents, products, systems, or components accused of infringement in the action. (c) Lift of stay (1) In general A stay entered under this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve a major issue in suit against the covered customer; or (B) the stay unreasonably prejudices and would be manifestly unjust to the party seeking to lift the stay. (2) Separate manufacturer action involved In the case of a stay entered based on the participation of the covered manufacturer in a separate action involving the same patent or patents related to the same covered product or process, a motion under this subsection may only be made if the court in such separate action determines the showing required under paragraph (1) has been met. (d) Exemption This section shall not apply to an action that includes a cause of action described under section 271(e)(2). (e) Consent judgment If, following the grant of a motion to stay under this section, the covered manufacturer seeks or consents to entry of a consent judgment relating to one or more of the common issues that gave rise to the stay, or declines to prosecute through appeal a final decision as to one or more of the common issues that gave rise to the stay, the court may, upon grant of a motion, determine that such consent judgment or unappealed final decision shall not be binding on the covered customer with respect to one or more of such common issues based on a showing that such an outcome would unreasonably prejudice and be manifestly unjust to the covered customer in light of the circumstances of the case. (f) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, expand any stay granted under this section, or grant any motion to intervene, if otherwise permitted by law. (g) Definitions In this section: (1) Covered customer The term covered customer means a party accused of infringing a patent or patents in dispute based on a covered product or process. (2) Covered manufacturer The term covered manufacturer means a person that manufactures or supplies, or causes the manufacture or supply of, a covered product or process or a relevant part thereof. (3) Covered product or process The term covered product or process means a product, process, system, service, component, material, or apparatus, or relevant part thereof, that— (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute. . (b) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by striking the item relating to section 296 and inserting the following: 296. Stay of action against customer. . (c) Effective date The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 30-day period that ends on that date. 6. Procedures and practices to implement recommendations of the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the issues and proposals described in paragraph (2) to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence. (2) Rules and procedures to be considered The rules and procedures required under paragraph (1) should address each of the following issues and proposals: (A) Discovery of core documentary evidence Whether and to what extent each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and whether and to what extent each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties determine that the discovery of electronic communication is appropriate, whether such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and whether such discovery shall be in accordance with the following: (i) Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business. (ii) Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame. (iii) A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court. (iv) The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case. (v) If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery. (C) Additional document discovery Whether the following should apply: (i) In general Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Limits on additional document discovery A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery. (iv) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (v) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope Whether the parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful. (3) Definitions In this subsection: (A) Core documentary evidence The term core documentary evidence — (i) includes— (I) documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue; (II) documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue; (III) documents relating to potentially invalidating prior art; (IV) documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed; (V) documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue; (VI) documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed; (VII) documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed; (VIII) documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and (IX) documents sufficient to show any marking or other notice provided of the patent or patents at issue; and (ii) does not include computer code, except as specified in paragraph (2)(C)(v). (B) Electronic communication The term electronic communication means any form of electronic communication, including email, text message, or instant message. (4) Implementation by the District Courts Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures. (5) Authority for Judicial Conference to review and modify (A) Study of efficacy of rules and procedures The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the 4-year period beginning on the date on which such rules and procedures by the district courts and the United States Court of Federal Claims are first implemented. The Judicial Conference may modify such rules and procedures following such 4-year period. (B) Initial modifications Before the expiration of the 4-year period described in subparagraph (A), the Judicial Conference may modify the requirements under this subsection— (i) by designating categories of core documentary evidence , in addition to those designated under paragraph (3)(A), as the Judicial Conference determines to be appropriate and necessary; and (ii) as otherwise necessary to prevent a manifest injustice, the imposition of a requirement the costs of which clearly outweigh its benefits, or a result that could not reasonably have been intended by the Congress. (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. (c) Revision of form for patent infringement (1) Elimination of form The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act. (2) Revised form The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms. (d) Protection of intellectual-Property licenses in bankruptcy (1) In general Section 1522 of title 11, United States Code, is amended by adding at the end the following: (e) Section 365(n) shall apply to cases under this chapter. If the foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract shall be entitled to make the election and exercise the rights described in section 365(n). . (2) Trademarks (A) In general Section 101(35A) of title 11, United States Code, is amended— (i) in subparagraph (E), by striking or ; (ii) in subparagraph (F), by striking title 17; and inserting title 17; or ; and (iii) by adding after subparagraph (F) the following new subparagraph: (G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 ) ( 15 U.S.C. 1127 ); . (B) Conforming amendment Section 365(n)(2) of title 11, United States Code, is amended— (i) in subparagraph (B)— (I) by striking royalty payments and inserting royalty or other payments ; and (II) by striking and after the semicolon; (ii) in subparagraph (C), by striking the period at the end of clause (ii) and inserting ; and ; and (iii) by adding at the end the following new subparagraph: (D) in the case of a trademark, service mark, or trade name, the trustee shall not be relieved of a contractual obligation to monitor and control the quality of a licensed product or service. . (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment. 7. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small Business Patent outreach The existing small business patent outreach programs of the Office, and the relevant offices at the Small Business Administration and the Minority Business Development Agency, shall provide education and awareness on abusive patent litigation practices. The Director may give special consideration to the unique needs of small firms owned by disabled veterans, service-disabled veterans, women, and minority entrepreneurs in planning and executing the outreach efforts by the Office. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include— (A) information disclosed under subsections (b) and (d) of section 290 of title 35, United States Code, as added by section 4(a) of this Act; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 8. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Report on study Not later than 18 months after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on patents owned by the United States Government (1) Study required The Director, in consultation with the heads of relevant agencies and interested parties, shall, using existing resources of the Office, conduct a study on patents owned by the United States Government that— (A) examines how such patents are licensed and sold, and any litigation relating to the licensing or sale of such patents; (B) provides legislative and administrative recommendations on whether there should be restrictions placed on patents acquired from the United States Government; (C) examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, assignment, and Government grants for technology related to such patents; and (D) provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). (c) Study on Patent Quality and Access to the Best Information during Examination (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on patent examination at the Office and the technologies available to improve examination and improve patent quality. (2) Contents of the study The study required under paragraph (1) shall include the following: (A) An examination of patent quality at the Office. (B) An examination of ways to improve patent quality, specifically through technology, that shall include examining best practices at foreign patent offices and the use of existing off-the-shelf technologies to improve patent examination. (C) A description of how patents are classified. (D) An examination of procedures in place to prevent double patenting through filing by applicants in multiple art areas. (E) An examination of the types of off-the-shelf prior art databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, and whether those databases and search tools could be used by the Office to improve patent examination. (F) An examination of any other areas the Comptroller General determines to be relevant. (3) Report on study Not later than 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws and regulations that will improve the examination of patent applications and patent quality. (d) Study on Patent Small Claims Court (1) Study Required (A) In general The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims procedures in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349 . (B) Contents of study The study under subparagraph (A) shall examine— (i) the necessary criteria for using small claims procedures; (ii) the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and (iii) the steps that would be taken to ensure that the procedures used in the pilot program are not misused for abusive patent litigation. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1). (e) Study on demand letters (1) Study The Director, in consultation with the heads of other appropriate agencies, shall, using existing resources, conduct a study of the prevalence of the practice of sending patent demand letters in bad faith and the extent to which that practice may, through fraudulent or deceptive practices, impose a negative impact on the marketplace. (2) Report to congress Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (3) Patent demand letter defined In this subsection, the term patent demand letter means a written communication relating to a patent that states or indicates, directly or indirectly, that the recipient or anyone affiliated with the recipient is or may be infringing the patent. (f) Study on business method patent quality (1) GAO study The Comptroller General of the United States shall, using existing resources, conduct a study on the volume and nature of litigation involving business method patents. (2) Contents of study The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant. (3) Report to congress Not later than 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study. (g) Study on impact of legislation on ability of individuals and small businesses to protect exclusive rights to inventions and discoveries (1) Study required The Director, in consultation with the Secretary of Commerce, the Director of the Administrative Office of the United States Courts, the Director of the Federal Judicial Center, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study to examine the economic impact of sections 3, 4, and 5 of this Act, and any amendments made by such sections, on the ability of individuals and small businesses owned by women, veterans, and minorities to assert, secure, and vindicate the constitutionally guaranteed exclusive right to inventions and discoveries by such individuals and small business. (2) Report on study Not later than 2 years after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). 9. Improvements and technical corrections to the Leahy-Smith America Invents Act (a) Post-Grant review amendment Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . (b) Use of district-Court claim construction in post-Grant and inter partes reviews (1) Inter partes review Section 316(a) of title 35, United States Code, is amended— (A) in paragraph (12), by striking ; and and inserting a semicolon; (B) in paragraph (13), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (14) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (2) Post-grant review Section 326(a) of title 35, United States Code, is amended— (A) in paragraph (11), by striking ; and and inserting a semicolon; (B) in paragraph (12), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (13) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (3) Technical and conforming amendment Section 18(a)(1)(A) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 126 Stat. 329; 35 U.S.C. 321 note) is amended by striking Section 321(c) and inserting Sections 321(c) and 326(a)(13) . (4) Effective date The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, as the case may be, for which the petition for review is filed on or after such effective date. (c) Codification of the double-Patenting doctrine for first-Inventor-To-File patents (1) Amendment Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section: 106. Prior art in cases of double patenting A claimed invention of a patent issued under section 151 (referred to as the first patent ) that is not prior art to a claimed invention of another patent (referred to as the second patent ) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— (1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; (2) either— (A) the first patent and second patent name the same individual or individuals as the inventor; or (B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and (3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent. . (2) Regulations The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code. (3) Conforming amendment The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item: 106. Prior art in cases of double patenting. . (4) Exclusive rule A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground based on a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (5) Effective date The amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (d) PTO patent reviews (1) Clarification (A) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note) is amended by striking section 102(a) and inserting subsection (a) or (e) of section 102 . (B) Effective date The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (2) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note). (e) Clarification of limits on patent term adjustment (1) Amendments Section 154(b)(1)(B) of title 35, United States Code, is amended— (A) in the matter preceding clause (i), by striking not including— and inserting the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including— ; (B) in clause (i), by striking consumed by continued examination of the application requested by the applicant and inserting consumed after continued examination of the application is requested by the applicant ; (C) in clause (iii), by striking the comma at the end and inserting a period; and (D) by striking the matter following clause (iii). (2) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application that is pending on, or filed on or after, such date of enactment. (f) Clarification of jurisdiction (1) In general The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole. (2) Applicability Paragraph (1)— (A) shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and (B) shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act. (g) Patent Pilot Program in Certain District Courts Duration (1) Duration Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows: (c) Duration The program established under subsection (a) shall be maintained using existing resources, and shall terminate 20 years after the end of the 6-month period described in subsection (b). . (2) Effective date The amendment made by paragraph (1) shall take effect on the date of the enactment of this Act. (h) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another and inserting the inventor or a joint inventor or another . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (2) Inventor’s oath or declaration (A) Amendment The second sentence of section 115(a) of title 35, United States Code, is amended by striking shall execute and inserting may be required to execute . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named and inserting that names the inventor or a joint inventor . (B) Benefit of earlier filing date in the United States Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor and inserting names the inventor or a joint inventor . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter that is pending on, or filed on or after, the date of the enactment of this Act. (6) Time limit for commencing misconduct proceedings (A) Amendment The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year and inserting 18 months . (B) Effective date The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. (7) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 and inserting the petition under section 311 . (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (8) International applications (A) Amendments Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— (i) by striking paragraph (7); and (ii) by redesignating paragraphs (8) and (9) as paragraphs (7) and (8), respectively. (B) Effective date The amendments made by subparagraph (A) shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–21 ). 10. Effective date Except as otherwise provided in this Act, the provisions of this Act shall take effect on the date of the enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date.

Passed the House of Representatives December 5, 2013. Karen L. Haas, Clerk

tv_txt: IB Union Calendar No. 200 113th CONGRESS 1st Session H. R. 3309 [Report No. 113–279] IN THE HOUSE OF REPRESENTATIVES October 23, 2013 Mr. Goodlatte (for himself, Mr. DeFazio , Mr. Coble , Ms. Lofgren , Mr. Smith of Texas , Ms. Eshoo , Mr. Chaffetz , Mr. Bachus , Mr. Marino , Mr. Farenthold , and Mr. Holding ) introduced the following bill; which was referred to the Committee on the Judiciary December 2, 2013 Additional sponsors: Mr. Chabot , Ms. McCollum , Mr. Huffman , Mr. Honda , Mr. Johnson of Ohio , and Mr. Larsen of Washington December 2, 2013 Reported with an amendment, committed to the Committee of the Whole House on the State of the Union, and ordered to be printed Strike out all after the enacting clause and insert the part printed in italic For text of introduced bill, see copy of bill as introduced on October 23, 2013 A BILL To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes.

1. Short title; table of contents (a) Short title This Act may be cited as the Innovation Act . (b) Table of contents The table of contents for this Act is as follows: Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Patent infringement actions. Sec. 4. Transparency of patent ownership. Sec. 5. Customer-suit exception. Sec. 6. Procedures and practices to implement and recommendations to the Judicial Conference. Sec. 7. Small business education, outreach, and information access. Sec. 8. Studies on patent transactions, quality, and examination. Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act. Sec. 10. Effective date. 2. Definitions In this Act: (1) Director The term Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. (2) Office The term Office means the United States Patent and Trademark Office. 3. Patent infringement actions (a) Pleading requirements (1) Amendment Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following: 281A. Pleading requirements for patent infringement actions (a) Pleading requirements Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following: (1) An identification of each patent allegedly infringed. (2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed. (3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality ) alleged to infringe the claim. (4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— (A) the name or model number of each accused instrumentality; or (B) if there is no name or model number, a description of each accused instrumentality. (5) For each accused instrumentality identified under paragraph (3), a clear and concise statement of— (A) where each element of each claim identified under paragraph (2) is found within the accused instrumentality; and (B) with detailed specificity, how each limitation of each claim identified under paragraph (2) is met by the accused instrumentality. (6) For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. (7) A description of the authority of the party alleging infringement to assert each patent identified under paragraph (1) and of the grounds for the court’s jurisdiction. (8) A clear and concise description of the principal business, if any, of the party alleging infringement. (9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1). (10) For each patent identified under paragraph (1), whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. (b) Information not readily accessible If information required to be disclosed under subsection (a) is not readily accessible to a party, that information may instead be generally described, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information. (c) Confidential information A party required to disclose information described under subsection (a) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended complaint. (d) Exemption A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a). . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item: 281A. Pleading requirements for patent infringement actions. . (b) Fees and other expenses (1) Amendment Section 285 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses (a) Award The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust. (b) Certification and recovery Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award. (c) Covenant not to sue A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure. . (2) Conforming amendment and amendment (A) Conforming amendment The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses. . (B) Amendment Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g). (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 6-month period ending on that effective date. (c) Joinder of interested parties Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: (d) Joinder of interested parties (1) Joinder In a civil action arising under any Act of Congress relating to patents in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation. (2) Limitation on joinder (A) Discretionary denial of motion The court may deny a motion to join an interested party under paragraph (1) if— (i) the interested party is not subject to service of process; or (ii) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper. (B) Required denial of motion The court shall deny a motion to join an interested party under paragraph (1) if— (i) the interested party did not timely receive the notice required by paragraph (3); or (ii) within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (3) Notice requirement An interested party may not be joined under paragraph (1) unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that— (A) identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and (B) informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if— (i) fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a); (ii) the party alleging infringement is unable to pay the award of fees and other expenses; (iii) the party receiving notice under this paragraph is determined by the court to be an interested party; and (iv) the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. (4) Interested party defined In this subsection, the term interested party means a person, other than the party alleging infringement, that— (A) is an assignee of the patent or patents at issue; (B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or (C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include— (i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or (ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action. . (d) Discovery limits (1) Amendment Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section: 299A. Discovery in patent infringement action (a) Discovery in patent infringement action Except as provided in subsection (b), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement. (b) Discretion To expand scope of discovery (1) Timely resolution of actions If, under any provision of Federal law (including the amendments made by the Drug Price Competition and Patent Term Restoration Act of 1984 ( Public Law 98–417 )), resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court shall permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely resolution of the action. (2) Resolution of motions When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a) is issued, the court may allow limited discovery in addition to the discovery authorized under subsection (a) as necessary to resolve the motion. (3) Special circumstances In special circumstances that would make denial of discovery a manifest injustice, the court may permit discovery, in addition to the discovery authorized under subsection (a), as necessary to prevent the manifest injustice. . (2) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item: 299A. Discovery in patent infringement action. . (e) Sense of Congress It is the sense of Congress that it is an abuse of the patent system and against public policy for a party to send out purposely evasive demand letters to end users alleging patent infringement. Demand letters sent should, at the least, include basic information about the patent in question, what is being infringed, and how it is being infringed. Any actions or litigation that stem from these types of purposely evasive demand letters to end users should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive. (f) Demand letters Section 284 of title 35, United States Code, is amended— (1) in the first undesignated paragraph, by striking Upon finding and inserting (a) In general.— Upon finding ; (2) in the second undesignated paragraph, by striking When the damages and inserting (b) Assessment by court; treble damages.— When the damages ; (3) by inserting after subsection (b), as designated by paragraph (2) of this subsection, the following: (c) Willful infringement A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification identifies with particularity the asserted patent, identifies the product or process accused, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent. ; and (4) in the last undesignated paragraph, by striking The court and inserting (d) Expert testimony.— The court . (g) Effective date Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. 4. Transparency of patent ownership (a) Amendments Section 290 of title 35, United States Code, is amended— (1) in the heading, by striking suits and inserting suits; disclosure of interests ; (2) by striking The clerks and inserting (a) Notice of patent suits.— The clerks ; and (3) by adding at the end the following new subsections: (b) Initial disclosure (1) In general Except as provided in paragraph (2), upon the filing of an initial complaint for patent infringement, the plaintiff shall disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of the following: (A) The assignee of the patent or patents at issue. (B) Any entity with a right to sublicense or enforce the patent or patents at issue. (C) Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff. (D) The ultimate parent entity of any assignee identified under subparagraph (A) and any entity identified under subparagraph (B) or (C). (2) Exemption The requirements of paragraph (1) shall not apply with respect to a civil action filed under subsection (a) that includes a cause of action described under section 271(e)(2). (c) Disclosure compliance (1) Publicly traded For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. (2) Not publicly traded For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— (A) in the case of a partnership, the name of the partnership and the name and correspondence address of each partner or other entity that holds more than a 5-percent share of that partnership; (B) in the case of a corporation, the name of the corporation, the location of incorporation, the address of the principal place of business, and the name of each officer of the corporation; and (C) for each individual, the name and correspondence address of that individual. (d) Ongoing duty of disclosure to the Patent and Trademark Office (1) In general A plaintiff required to submit information under subsection (b) or a subsequent owner of the patent or patents at issue shall, not later than 90 days after any change in the assignee of the patent or patents at issue or an entity described under subparagraph (B) or (D) of subsection (b)(1), submit to the Patent and Trademark Office the updated identification of such assignee or entity. (2) Failure to comply With respect to a patent for which the requirement of paragraph (1) has not been met— (A) the plaintiff or subsequent owner shall not be entitled to recover reasonable fees and other expenses under section 285 or increased damages under section 284 with respect to infringing activities taking place during any period of noncompliance with paragraph (1), unless the denial of such damages or fees would be manifestly unjust; and (B) the court shall award to a prevailing party accused of infringement reasonable fees and other expenses under section 285 that are incurred to discover the updated assignee or entity described under paragraph (1), unless such sanctions would be unjust. (e) Definitions In this section: (1) Financial interest The term financial interest — (A) means— (i) with regard to a patent or patents, the right of a person to receive proceeds related to the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and (ii) with regard to the plaintiff, direct or indirect ownership or control by a person of more than 5 percent of such plaintiff; and (B) does not mean— (i) ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or (ii) the proprietary interest of a policyholder in a mutual insurance company or of a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest. (2) Proceeding The term proceeding means all stages of a civil action, including pretrial and trial proceedings and appellate review. (3) Ultimate parent entity (A) In general Except as provided in subparagraph (B), the term ultimate parent entity has the meaning given such term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. (B) Modification of definition The Director may modify the definition of ultimate parent entity by regulation. . (b) Technical and conforming amendment The item relating to section 290 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 290. Notice of patent suits; disclosure of interests. . (c) Regulations The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering subsections (b) through (e) of section 290 of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by such subsections, and to ensure the timely disclosure of such information to the public. (d) Effective date The amendments made by this section shall take effect upon the expiration of the 6-month period beginning on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after such effective date. 5. Customer-suit exception (a) Amendment Section 296 of title 35, United States Code, is amended to read as follows: 296. Stay of action against customer (a) Stay of action against customer Except as provided in subsection (d), in any civil action arising under any Act of Congress relating to patents, the court shall grant a motion to stay at least the portion of the action against a covered customer related to infringement of a patent involving a covered product or process if the following requirements are met: (1) The covered manufacturer and the covered customer consent in writing to the stay. (2) The covered manufacturer is a party to the action or to a separate action involving the same patent or patents related to the same covered product or process. (3) The covered customer agrees to be bound by any issues that the covered customer has in common with the covered manufacturer and are finally decided as to the covered manufacturer in an action described in paragraph (2). (4) The motion is filed after the first pleading in the action but not later than the later of— (A) the 120th day after the date on which the first pleading in the action is served that specifically identifies the covered product or process as a basis for the covered customer’s alleged infringement of the patent and that specifically identifies how the covered product or process is alleged to infringe the patent; or (B) the date on which the first scheduling order in the case is entered. (b) Applicability of stay A stay issued under subsection (a) shall apply only to the patents, products, systems, or components accused of infringement in the action. (c) Lift of stay (1) In general A stay entered under this section may be lifted upon grant of a motion based on a showing that— (A) the action involving the covered manufacturer will not resolve a major issue in suit against the covered customer; or (B) the stay unreasonably prejudices and would be manifestly unjust to the party seeking to lift the stay. (2) Separate manufacturer action involved In the case of a stay entered based on the participation of the covered manufacturer in a separate action involving the same patent or patents related to the same covered product or process, a motion under this subsection may only be made if the court in such separate action determines the showing required under paragraph (1) has been met. (d) Exemption This section shall not apply to an action that includes a cause of action described under section 271(e)(2). (e) Consent judgment If, following the grant of a motion to stay under this section, the covered manufacturer seeks or consents to entry of a consent judgment relating to one or more of the common issues that gave rise to the stay, or declines to prosecute through appeal a final decision as to one or more of the common issues that gave rise to the stay, the court may, upon grant of a motion, determine that such consent judgment or unappealed final decision shall not be binding on the covered customer with respect to one or more of such common issues based on a showing that such an outcome would unreasonably prejudice and be manifestly unjust to the covered customer in light of the circumstances of the case. (f) Rule of construction Nothing in this section shall be construed to limit the ability of a court to grant any stay, expand any stay granted under this section, or grant any motion to intervene, if otherwise permitted by law. (g) Definitions In this section: (1) Covered customer The term covered customer means a party accused of infringing a patent or patents in dispute based on a covered product or process. (2) Covered manufacturer The term covered manufacturer means a person that manufactures or supplies, or causes the manufacture or supply of, a covered product or process or a relevant part thereof. (3) Covered product or process The term covered product or process means a product, process, system, service, component, material, or apparatus, or relevant part thereof, that— (A) is alleged to infringe the patent or patents in dispute; or (B) implements a process alleged to infringe the patent or patents in dispute. . (b) Conforming amendment The table of sections for chapter 29 of title 35, United States Code, is amended by striking the item relating to section 296 and inserting the following: 296. Stay of action against customer. . (c) Effective date The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 30-day period that ends on that date. 6. Procedures and practices to implement recommendations of the Judicial Conference (a) Judicial Conference rules and procedures on discovery burdens and costs (1) Rules and procedures The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the issues and proposals described in paragraph (2) to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence. (2) Rules and procedures to be considered The rules and procedures required under paragraph (1) should address each of the following issues and proposals: (A) Discovery of core documentary evidence Whether and to what extent each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and whether and to what extent each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure. (B) Electronic communication If the parties determine that the discovery of electronic communication is appropriate, whether such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and whether such discovery shall be in accordance with the following: (i) Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business. (ii) Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame. (iii) A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court. (iv) The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case. (v) If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery. (C) Additional document discovery Whether the following should apply: (i) In general Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. (ii) Requirements for additional document discovery Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. (iii) Limits on additional document discovery A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery. (iv) Good cause modification A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. (v) Computer code A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. (D) Discovery sequence and scope Whether the parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: (i) When the discovery of core documentary evidence should be completed. (ii) Whether additional document discovery will be sought under subparagraph (C). (iii) Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful. (3) Definitions In this subsection: (A) Core documentary evidence The term core documentary evidence — (i) includes— (I) documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue; (II) documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue; (III) documents relating to potentially invalidating prior art; (IV) documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed; (V) documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue; (VI) documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed; (VII) documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed; (VIII) documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and (IX) documents sufficient to show any marking or other notice provided of the patent or patents at issue; and (ii) does not include computer code, except as specified in paragraph (2)(C)(v). (B) Electronic communication The term electronic communication means any form of electronic communication, including email, text message, or instant message. (4) Implementation by the District Courts Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures. (5) Authority for Judicial Conference to review and modify (A) Study of efficacy of rules and procedures The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the 4-year period beginning on the date on which such rules and procedures by the district courts and the United States Court of Federal Claims are first implemented. The Judicial Conference may modify such rules and procedures following such 4-year period. (B) Initial modifications Before the expiration of the 4-year period described in subparagraph (A), the Judicial Conference may modify the requirements under this subsection— (i) by designating categories of core documentary evidence , in addition to those designated under paragraph (3)(A), as the Judicial Conference determines to be appropriate and necessary; and (ii) as otherwise necessary to prevent a manifest injustice, the imposition of a requirement the costs of which clearly outweigh its benefits, or a result that could not reasonably have been intended by the Congress. (b) Judicial Conference patent case management The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— (1) will identify any potential dispositive issues of the case; and (2) focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. (c) Revision of form for patent infringement (1) Elimination of form The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act. (2) Revised form The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms. (d) Protection of intellectual-Property licenses in bankruptcy (1) In general Section 1520(a) of title 11, United States Code, is amended— (A) in paragraph (3), by striking ; and and inserting a semicolon; (B) in paragraph (4), by striking the period at the end and inserting ; and ; and (C) by inserting at the end the following new paragraph: (5) section 365(n) applies to intellectual property of which the debtor is a licensor or which the debtor has transferred. . (2) Trademarks (A) In general Section 101(35A) of title 11, United States Code, is amended— (i) in subparagraph (E), by striking or ; (ii) in subparagraph (F), by striking title 17; and inserting title 17; or ; and (iii) by adding after subparagraph (F) the following new subparagraph: (G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 ) ( 15 U.S.C. 1127 ); . (B) Conforming amendment Section 365(n)(2) of title 11, United States Code, is amended— (i) in subparagraph (B)— (I) by striking royalty payments and inserting royalty or other payments ; and (II) by striking and after the semicolon; (ii) in subparagraph (C), by striking the period at the end of clause (ii) and inserting ; and ; and (iii) by adding at the end the following new subparagraph: (D) in the case of a trademark, service mark, or trade name, the trustee shall not be relieved of a contractual obligation to monitor and control the quality of a licensed product or service. . (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment. 7. Small business education, outreach, and information access (a) Small business education and outreach (1) Resources for small business Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement. (2) Small Business Patent Ombudsman The Patent Ombudsman Program established under section 28 of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 339; 35 U.S.C. 2 note) shall coordinate with the existing small business outreach programs of the Office, and the relevant offices at the Small Business Administration and the Minority Business Development Agency, to provide education and awareness on abusive patent litigation practices. The Director may give special consideration to the unique needs of small firms owned by disabled veterans, service-disabled veterans, women, and minority entrepreneurs in planning and executing the outreach efforts by the Office. (b) Improving Information Transparency for Small Business and the United States Patent and Trademark Office users (1) Web site Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include— (A) information disclosed under subsections (b) and (d) of section 290 of title 35, United States Code, as added by section 4(a) of this Act; and (B) any other information the Director determines to be relevant. (2) Format In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity. 8. Studies on patent transactions, quality, and examination (a) Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices (1) Study required The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study— (A) to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market; (B) to examine the economic impact that the patent secondary market has on the United States; (C) to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and (D) to examine the requirements placed on other markets. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (b) Study on patents owned by the United States Government (1) Study required The Director, in consultation with the heads of relevant agencies and interested parties, shall, using existing resources of the Office, conduct a study on patents owned by the United States Government that— (A) examines how such patents are licensed and sold, and any litigation relating to the licensing or sale of such patents; (B) provides legislative and administrative recommendations on whether there should be restrictions placed on patents acquired from the United States Government; (C) examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, assignment, and Government grants for technology related to such patents; and (D) provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency. (2) Report on study Not later than 6 months after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1). (c) Study on Patent Quality and Access to the Best Information during Examination (1) GAO study The Comptroller General of the United States shall conduct a study on patent examination at the Office and the technologies available to improve examination and improve patent quality. (2) Contents of the study The study required under paragraph (1) shall include the following: (A) An examination of patent quality at the Office. (B) An examination of ways to improve patent quality, specifically through technology, that shall include examining best practices at foreign patent offices and the use of existing off-the-shelf technologies to improve patent examination. (C) A description of how patents are classified. (D) An examination of procedures in place to prevent double patenting through filing by applicants in multiple art areas. (E) An examination of the types of off-the-shelf prior art databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, and whether those databases and search tools could be used by the Office to improve patent examination. (F) An examination of any other areas the Comptroller General determines to be relevant. (3) Report on study Not later than 6 months after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws and regulations that will improve the examination of patent applications and patent quality. (d) Study on Patent Small Claims Court (1) Study Required (A) In general The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims courts in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349 . (B) Contents of study The study under subparagraph (A) shall examine— (i) the number of and qualifications for judges that could serve on such small claims courts; (ii) how such small claims courts would be designated and the necessary criteria for such designation; (iii) the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and (iv) the steps that would be taken to ensure that the courts in the pilot program are not misused for abusive patent litigation. (2) Report on study Not later than 1 year after the date of the enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1). (e) Study on demand letters (1) Study The Director, in consultation with the heads of other appropriate agencies, shall conduct a study of the prevalence of the practice of sending patent demand letters in bad faith and the extent to which that practice may, through fraudulent or deceptive practices, impose a negative impact on the marketplace. (2) Report to congress Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1). (3) Patent demand letter defined In this subsection, the term patent demand letter means a written communication relating to a patent that states or indicates, directly or indirectly, that the recipient or anyone affiliated with the recipient is or may be infringing the patent. (f) Study on business method patent quality (1) GAO study The Comptroller General of the United States shall conduct a study on the volume and nature of litigation involving business method patents. (2) Contents of study The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant. (3) Report to congress Not later than 6 months after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act (a) Repeal of civil action To obtain a patent (1) Repeal Section 145 of title 35, United States Code, is repealed. (2) Conforming amendments (A) Federal Circuit jurisdiction Section 1295(a)(4) of title 28, United States Code, is amended— (i) in subparagraph (A), by striking except that an applicant or a party and all that follows through the end of the subparagraph and inserting the following: except that a party to a derivation proceeding may also have remedy by civil action under section 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to a derivation proceeding shall waive the right of such party to proceed under section 146 of title 35; ; and (ii) in subparagraph (C), by striking section 145, 146, or and inserting section 146 or . (B) Federal Circuit appeal Section 141(a) of title 35, United States Code, is amended— (i) by striking may appeal the Board’s decision to and inserting may appeal the Board’s decision only to ; and (ii) by striking the second sentence. (C) Adjustment of patent term Section 154(b)(1)(A)(iii) of title 35, United States Code, is amended by striking section 141, 145, or 146 and inserting section 141 or 146 . (D) Clerical amendment The table of sections for chapter 13 of title 35, United States Code, is amended by repealing the item relating to section 145. (3) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any proceeding in which a decision is made by the Patent Trial and Appeal Board on or after such date of enactment. (b) Post-Grant review amendment Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . (c) Use of district-Court claim construction in post-Grant and inter partes reviews (1) Inter partes review Section 316(a) of title 35, United States Code, is amended— (A) in paragraph (12), by striking ; and and inserting a semicolon; (B) in paragraph (13), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (14) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (2) Post-grant review Section 326(a) of title 35, United States Code, is amended— (A) in paragraph (11), by striking ; and and inserting a semicolon; (B) in paragraph (12), by striking the period at the end and inserting ; and ; and (C) by adding at the end the following new paragraph: (13) providing that for all purposes under this chapter— (A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and (B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. . (3) Technical and conforming amendment Section 18(a)(1)(A) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 126 Stat. 329; 35 U.S.C. 321 note) is amended by striking Section 321(c) and inserting Sections 321(c) and 326(a)(13) . (4) Effective date The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, as the case may be, for which the petition for review is filed on or after such effective date. (d) Codification of the double-Patenting doctrine for first-Inventor-To-File patents (1) Amendment Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section: 106. Prior art in cases of double patenting A claimed invention of a patent issued under section 151 (referred to as the first patent ) that is not prior art to a claimed invention of another patent (referred to as the second patent ) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— (1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; (2) either— (A) the first patent and second patent name the same inventor; or (B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and (3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent. . (2) Regulations The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code. (3) Conforming amendment The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item: 106. Prior art in cases of double patenting. . (4) Exclusive rule A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground. (5) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note). (e) PTO patent reviews (1) Clarification (A) Scope of prior art Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note) is amended by striking section 102(a) and inserting subsection (a) or (e) of section 102 . (B) Effective date The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. (2) Authority to waive fee Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note). (f) Clarification of limits on patent term adjustment (1) Amendments Section 154(b)(1)(B) of title 35, United States Code, is amended— (A) in the matter preceding clause (i), by striking not including— and inserting the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including— ; (B) in clause (i), by striking consumed by continued examination of the application requested by the applicant and inserting consumed after continued examination of the application is requested by the applicant ; (C) in clause (iii), by striking the comma at the end and inserting a period; and (D) by striking the matter following clause (iii). (2) Effective date The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application or patent that is pending on, or filed on or after, such date of enactment. (g) Clarification of jurisdiction (1) In general The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole. (2) Applicability Paragraph (1)— (A) shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and (B) shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act. (h) Patent Pilot Program in Certain District Courts Duration (1) Duration Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows: (c) Duration The program established under subsection (a) shall be maintained using existing resources, and shall terminate 20 years after the end of the 6-month period described in subsection (b). . (2) Effective date The amendment made by paragraph (1) shall take effect on the date of the enactment of this Act. (i) Technical corrections (1) Novelty (A) Amendment Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another and inserting the inventor or a joint inventor or another . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (2) Inventor’s oath or declaration (A) Amendment The second sentence of section 115(a) of title 35, United States Code, is amended— (i) by striking Except as otherwise provided and inserting Except for an application filed under section 118 or as otherwise provided ; and (ii) by striking shall execute and inserting may be required by the Director to execute . (B) Effective date The amendments made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). (3) Assignee filers (A) Benefit of earlier filing date; right of priority Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named and inserting that names the inventor or a joint inventor . (B) Benefit of earlier filing date in the United States Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor and inserting names the inventor or a joint inventor . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. (4) Derived patents (A) Amendment Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . (B) Effective date The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29). (5) Specification Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter that is pending on, or filed on or after, the date of the enactment of this Act. (6) Time limit for commencing misconduct proceedings (A) Amendment The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year and inserting 2 years . (B) Effective date The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. (7) Patent owner response (A) Conduct of inter partes review Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 and inserting the petition under section 311 . (B) Conduct of post-grant review Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . (C) Effective date The amendments made by this paragraph shall take effect on the date of the enactment of this Act. (8) International applications (A) Amendments Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— (i) by striking paragraph (7); and (ii) by redesignating paragraphs (8) and (9) as paragraphs (7) and (8), respectively. (B) Effective date The amendments made by subparagraph (A) shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–21 ). 10. Effective date Except as otherwise provided in this Act, the provisions of this Act shall take effect on the date of the enactment of this Act, and shall apply to any patent issued, or any action filed, on or after that date.

December 2, 2013 Reported with an amendment, committed to the Committee of the Whole House on the State of the Union, and ordered to be printed